“Peer to Patent”: Community Patent Review

1. “Peer to Patent”: Community Patent Review Prof. Beth S. Noveck, New York Law School Director, Democracy Design Workshophttp://dotank.nyls.edu/communitypatent http://dotank.nyls.edu

2. Bureaucratic Expertise Based on Outdated Technological Assumptions Our legal administrative structures have been constructed around certain key beliefs: • Centralized administrators have the best access to information • Expert bureaucrats are the only way to produce dispassionate decisions • Making decisions in the public interest requires keeping the public at bay • Public consultation is difficult, time consuming and produces little • Innovation demands secrecy

3. Congress may not “enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby.” -Graham v. John Deere (1966)

4. The Challenge • Patent examiners • labor under 600,000 application backlog • have fewer than 18-20 hours for initial application review • lack time for training in new and advanced scientific subjects • do not have access to a wide-enough array of informational resources • must contend with poorly drafted applications and often uncooperative applicants • Cannot leverage the community of experts to promote the progress of useful arts

5. What if, instead of one examiner, an application had “1000 examiners”? • What if the community collaborated on developing repositories of prior art for its area of expertise? • What if persons skilled in the art could comment on how novel and non-obvious an invention actually was? • What if a wider array of people had a simple way to put forth prior art before the patent was approved? • What if we could review applications faster and better?

6. A Solution: Exploit New Technology to Tap Collective Intelligence of the Community of Experts We have arrived at a moment when it is possible to explore the option of “peer review” for patents Why Now? Four factors converge: • Citizen consultation practiced by all agencies; peer review in widespread use in government (e.g. NIH, EPA, NSF) • Most US patents applications are published after 18 months • Social reputation and collaborative filtering software make it manageable and scaleable • Political and technological moment is ripe

7. Design and Pilot an Online System for Peer Review of Innovation http://dotank.nyls.edu/communitypatent

8. Proposal Basics: “With Many Eyeballs All Bugs are Shallow”Community submission of prior art Phase I: Novelty Determination and Locating Prior Art Ideally-suited to peer review because it enunciates a clear goal, requires only minimal participation and lends itself to self-selection on the basis of expertise. An expert knows instantly whether an invention is reminiscent of earlier work. Designed right, the software can make participation for a network of scientific and innovation experts clear and easy. • Create online system to publish patents to expert peer reviewers • Enable participants to sign up for specific categories of art • Solicit wide array of expert participation • Use visualization tools to make participation quick and easy • Use collaborative filtering to structure and manage feedback to examiner

9. Proposal Basics: Citizen JuriesConsult the community jury as a proxy for the PHOSITA Phase II: Obviousness Determination The obviousness determination could be aided by a small group of relevant experts acting as a consultative citizen jury to aid the examiner. Members of the expert community evaluate and rate each other’s participation. The patent examiner coordinates the back-and-forth colloquy with the inventor. • Allow experts to self-assign participation based on expertise and interest • Use reputation software to enable the community to rate its own experts • Use slides and other simple feedback tools to enable faster participation • Use visualization tools to build innovation maps

10. New Technologies to Assist Patent Examiner Easier, cheaper, faster and more manageable to coordinate information-sharing among a group and to create and sustain productive groups. All readily available, open source tools: • Access Really Simple Syndication (RSS), Listservs, Email, Tags and Tag Clouds • Review Reputation software, content management systems • Feedback Information visualization and collaborative filtering tools

11. This proposal is too radical. How can we put the fate of innovators and national competitiveness in the hands of the public? Participants will game the system. How can you ensure that people with conflicts of interest won’t place stumbling blocks in the path of their competitors? Giving decisionmaking authority to non-governmental persons degrades impartiality in the system? Competitors will steal information and use this system to misappropriate confidential business information. How do we ensure that this doesn’t become a hunting ground for foreign competitors to pillage American innovation? Inventions will be excessively scrutinized. Won’t the level of patenting decrease? There are too many patents. Won’t the workload be too great for non-professional participants? There will be procedural hurdles. Would the Federal Advisory Committee Act (FACA) prohibit this? Won’t peer review decrease certainty and stability in the system? Isn’t there a lack of incentive to participate? Responding to Objections:Questions Asked and Answered

12. Next Steps: The “Peer to Patent” Community Patent Workshops Spring 2006Small-Group, Interdisciplinary Design Sessions • Harvard University, Berkman Center for Internet and Society (Feb 28) - Prof. Terry Fisher • New York Law School (March 17) - Prof. Beth Noveck • University of Michigan, Socio-Technical Infrastructure for Electronic Transactions Seminar (March 23) - Prof. Paul Resnick • Yale Law School, Information Society Project (April 10) - Prof. Jack Balkin and Yochai Benkler • Institute for Public Policy Research, London (May 5) - Dept. of Treasury • Stanford Law School, Center for Internet and Society (May 8) - Prof. Mark Lemley • Berkeley IPPR - Prof. Steven Weber (TBD)

13. Prof. Mark Lemley, Stanford Law School Prof. Terry Winograd, Stanford Computer Science Prof. Robert Merges, Boalt Law School Prof. Arti Rai, Duke Law School Prof. Yochai Benkler, Yale Law School Prof. J.M. Balkin, Yale Law School Prof. Terry Fisher, Harvard Law School Prof. John Palfrey, Harvard Law School Prof. Rochelle Dreyfuss, NYU Prof. Eli Noam, Columbia University Prof. Paul Resnick, Michigan Prof. Steven Weber, Berkeley Prof. Adam Jaffe, Brandeis Prof. Josh Lerner, Harvard Business School Prof. Judith Donath, MIT Prof. Clay Shirky, NYU Representatives from various law firms, technology companies and patentees: Amazon eBay Digital Universe IBM Davis Polk Institute for Knowledge Management Red Hat Novell Monitor Consulting AIPLA Pfizer Merck Xerox-Parc Wilson Soncini Microsoft Tapping the Community of Experts: Among the Workshop Invitees….

14. Workshop Goals: Moving from Proposal to PrototypeBreak down the problem into manageable questions. Embed the process in design. • • Expertise - how to identify expertise? ePHOSITA? • • Managing Inputs - how to make participation and feedback manageable? • • Incentives, Abuses and Impediments - how to create incentives for participation ? • • Translating Statutory Standards into Online Practices - how to design the review process? • • Addressing the Examination Process - how to adapt examination to outside input? • • Steps to Implementation - how to design a pilot? how to evaluate?

15. Timeline Realize Opportunities for Expert Consultation From Proposal to Prototype: Spring/Summer 2006 Solicit input via WIKI and Web Solicit input through workshops and consultation Workshops Feb-May 2006 Pilot Fall 2006 Draft Posted Jan 2006 Refining Proposal April-June 2006 Evaluation

16. Peer to Patent Website and Wiki dotank.nyls.edu/communitypatent bnoveck@nyls.edu