October 21, 2013
The modifications made to United States patent law by the 2011 America Invents Act include provisions that facilitate public input into the patent examination process. Those modifications make it easier for members of the public to provide information to patent examiners at the U.S. Patent and Trademark Office (USPTO). That public input process is now being used to help limit the scope of patents.
A critical part of the patent examination process is review of “prior art” relevant to the proposed invention. Patent examiners evaluate existing inventions that are relevant to the material presented in each patent application. Patent law requires that patents be granted only in those instances in which the new invention is “novel” and “non-obvious.” Review of relevant prior art is an important aspect of the determination of whether any given invention meets the requirements of novelty and non-obviousness.
It is a continuing challenge for patent examiners to identify and effectively assess the prior art for each new application. With limited resources and an ever growing body of existing work, the prior art evaluation is a daunting challenge for patent examiners.
In an effort to assist the examiners, U.S. patent law now encourages members of the public to provide prior art information to the examiners. Individuals can submit electronically up to three examples of prior art to examiners at the USPTO. The expectation is that this additional material describing relevant prior art will assist the examiners as they review new patent applications.
This process for public prior art input is available for patent applications in all fields. It seems that the process has to date been most actively used with regard to applications for software patents.
For example, the open source software community now reportedly makes active and effective use of the prior art submission process. Software developers in the open source community frequently submit examples of code constituting prior art to the USPTO as part of an effort to protect popular forms of open source software, such as Linux, from patent limitations.
It should be recognized that this public input regarding prior art is most effective at limiting the scope of new patents in specific fields. The process can seldom effectively provide a full barrier to new patents.
Active public input regarding prior art provides a valuable and significant resource for the USPTO. The process serves an important purpose by assisting patent examiners to conduct their prior art reviews more rigorously. This in turn helps to make the patent process more open, fair, and effective.
Ideally, communities interested in a wide range of technologies will adopt the strategy now being implemented by open source software advocates and will use the public submission process for prior art as a method to assist the USPTO to improve the quality and fairness of future patents. Policymakers should recognize that the digital networked environment now makes it feasible for public engagement to provide an important additional resource for the USPTO in support of more effective and appropriate patent management.