United States: USPTO Explores Crowdsourcing Prior Art

In a Federal Register Notice dated November 12, 2014, the USPTO solicited public comments on the "use of crowdsourcing to identify relevant prior art," and announced a related roundtable to be held on December 2, 2014 at the Benjamin N. Cardozo School of Law, in New York, NY. (The November 2014 Federal Register Notice and December roundtable follow a March 2014 Federal Register Notice and April 2014 roundtable.) This is another initiative that stems from White House executive actions aimed at "strengthening" the U.S. patent system.

The Big Picture

As set forth in the November 12, 2014 Federal Register Notice, "[t]he USPTO wants to ensure that the best prior art is available to the examiner during examination," but "[b]ecause this information often resides with the technical and scientific community, crowdsourcing may be a promising way to uncover hard-to-find prior art, especially non-patent literature." The Notice explains that "[c]rowdsourcing involves leveraging the knowledge of a large group of people, such as from an online community, to obtain needed information." Of course, "any use of crowdsourcing tools must comply with applicable patent laws .... For example, any USPTO crowdsourcing activities would need to preserve the ex parte nature of patent examination and be in accordance with the provisions of 35 U.S.C. 122(c)" which places restrictions on any "protest or other form of pre-issuance opposition ... after publication of the application."

Perhaps the White House needs this reminder?

The Questions

The USPTO seeks input on the following points in particular:

  1. In what ways can the USPTO utilize crowdsourcing to identify relevant prior art that would be available for use in the examination of published applications while maintaining the ex parte nature of patent examination?
  2. If the USPTO were to post a question relating to the technology of a published application on a crowdsourcing Web site, what follow-up communications, if any, could someone from the USPTO have with parties on the Web site?
  3. What appropriate precautions, if any, could the USPTO employ to ensure that the use of crowdsourcing tools does not encourage a protest or other form of preissuance opposition to the grant of a patent?
  4. If the USPTO cites in an application prior art obtained via crowdsourcing tools, to what extent, if any, should the USPTO document the crowdsourcing activities used to identify the prior art?
  5. For each published patent application, if the USPTO gave the patent applicant the option to opt-in or opt-out of the USPTO's use of crowdsourcing, would applicants choose to participate in the crowdsourcing program? What considerations would inform the applicant's decision?

The USPTO will consider written comments received by December 9, 2014, sent by

electronic mail addressed to CrowdsourcingRoundtableNY uspto.gov

postal mail addressed to:

Mail Stop Comments—Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Attention: Jack Harvey, Director, Technology Center 2800.

The Roundtable

According to the Notice, "[a] growing number of organizations from a wide range of industries have expressed a willingness to help the USPTO with its crowdsourcing efforts by pledging to provide public product documentation, educational materials, and other forms of non-patent literature." In this context, the Notice refers the USPTO's October 9, 2014 "Request for Information" (RFI) titled "Crowdsourced Non-Patent Literature Hosting" in which the USPTO sought "information from qualified firms capable of electronically receiving and potentially hosting the materials that have been pledged to the USPTO through the above-described crowdsourcing effort." The USPTO hopes the roundtable will help it "build on information received in response to the RFI to further explore ways the USPTO can leverage existing private sector solutions for the electronic receipt and hosting of crowdsourced materials as a means to provide prior art to examiners."

The roundtable will be held at the Benjamin N. Cardozo School of Law, in New York, NY, on December 2, 2014, from 1 – 5 pm EST. Requests to participate as a speaker are due by November 18, 2014, while registration to attend is required by November 25, 2014. More information can be found at the USPTO Crowdsourcing Roundtable webpage.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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