Peer to Patent Program

The USPTO (PTO) and the New York Law School (NYLS) issued press releases on Tuesday, October 19 announcing that they would together launch a new Peer to Patent program. Beginning on October 25 and lasting one year, the program will accept patent applicants’ submissions to have members of the public provide pre-examination input on potential prior art references for the applications. Volunteer experts in the art will have the chance to submit relevant references and comment on the applications. The suggested references will then be sent to the examiner, who may also choose to read the peer comments. In this way, the Peer to Patent program hopes to take advantage of the mechanisms of peer review to aid examiners in locating relevant prior art.

In 2007, the PTO and the NYLS began an earlier Peer to Patent program, limited to software and business methods applications. In that program, volunteer peer reviewers submitted references for 189 applications. The PTO surveyed examiners who examined Peer to Peer applications under this earlier program, and 73 percent of responding examiners said the program would be helpful in regular practice. Examiners cited references that Peer to Patent reviewers submitted for 20 percent of the applications.

The new program offers increased size and scope over the previous program, covering patent applications for biotechnology, bioinformatics, telecommunications, and speech recognition technologies.

Peer review programs such as these would increase the amount of overall scrutiny given to each patent application. While they do not change the duties of the examiner, they provide the examiner with outside, expert ideas on issues of novelty and obviousness. Where an examiner would not have otherwise found a prior art reference, peer review may result in rejection of patents that might otherwise issue. However, patents that issue even with the existence of unexamined, relevant prior art are likely to face serious validity challenges if ever asserted in court. By alerting examiners to references that experts in the art view as relevant, peer review programs could prevent anticipated or obvious patent claims from issuing, avoiding costly litigation. Conversely, patents that issue after peer review and examination might be more likely to withstand validity challenges. This increased strength could raise the value of patents emerging from Peer to Patent programs.