Dan Whalen is a JD candidate at Osgoode Hall Law School.
As of June 1, 2011, the UK has become the latest franchise state for Peer to Patent, the online system that allows interested observers to contribute to the patent examination process. The pilot program will follow the same process as it has in other countries, though the unique laws surrounding software patentability in the UK may make for a shaky adjustment.
Judith Wilcox, Baroness in the House of Lords and UK Minister of Intellectual Property, recently announced the launch of the program. “Patent applications granted after using the Peer to Patent website review will be potentially stronger, giving businesses better protection to grow their innovative ideas,” asserted the Baroness. “This will give the [U.K. Intellectual Property Office (IPO)] access to a wider body of knowledge when deciding whether a patent should be granted.”
Essentially, the Peer to Patent model – discussed in an earlier IPilogue post – functions by inviting members of the public to find prior art to be considered in the evaluation of patent applications. Once an application is uploaded for assessment, registered contributors have 90 days to review it and submit their comments. Anyone with a name and an e-mail address can sign up to contribute. The most relevant information, as rated by the reviewers, is then compiled and sent to the patent examiner responsible for the case. Patent applicants must voluntarily submit to the pilot program for their applications to be so reviewed.
Peer to Patent was conceived in the US as early as 2005 by Professor Beth Noveck of New York Law School (NYLS). As the program heads boast, the program has been a largely student-driven project. Beginning in NYLS’s Center for Patent Innovations, the US initiative has also engaged students from Albany School of Law, University of California Berkeley Law, and Duke Law. Students work to recruit peer reviewers of the program’s available patent applications, as well as reviewing applications and suggesting prior art themselves. This interesting approach seems to engage the most knowledgeable of possible contributors, thereby maximizing the benefits that the program’s inventors undoubtedly envisioned.
Peer to Patent made its official debut in June, 2007 as a pilot program undertaken with the United States Patent and Trademark Office (USPTO). Following that program’s success, it was announced in late 2010 that it would be renewed through to September, 2011. In addition to shortened timeframes and a greater volume of applications to be considered, the renewed program has also expanded in scope to consider applications relating to biotechnology, bioinformatics, telecommunications and speech recognition.
The UK pilot program will start as the US did, however; it will focus solely on computer-related technologies. UK IPO spokesperson Matthew Navarra explained that it was a “natural” choice given that Peer to Patent is an online system. Further, he claimed, “there has been a call from the computing community that they want to have input into the [patent application] process.”
Not everyone is so thrilled by this focus, particularly the many opposed to software patents in principle. At least one group argues that we ought not to “legitimize” software patents with programs such as Peer to Patent, “to [which] the issue is the quality of patents, not software patents in general.” This debate may prove especially problematic in adapting the original US model to European states, like the UK. Article 52 of the European Patent Convention (EPC) excludes “programs for computers” as patentable subject matter. UK law on the subject is confusing, to say the least; recent jurisprudence seems to have established that computer programs making a “technical contribution” are patentable – though exactly what this entails is unclear.
Such details aside, the fact remains that there is perhaps naturally greater resistance to software patents in the UK than elsewhere in the world. While the UK program’s backers undoubtedly seek to expand it into other subject areas as the US program has, it may thus face a greater barrier in doing so by way of expert participation or more active forms of protests.
Another interesting difference from the US program is that the UK initiative has not employed law students or other groups to attract reviewers. Rather, contributors are sought primarily through general publicity, direct e-mails, and use of social media. It is too early to evaluate a difference in the results of the two approaches, and intuition seems split on the matter. Comparisons and adjustments are sure to ensue when the UK pilot program releases its first review report.
Whether or not Peer to Patent evolves into the comprehensive system that its inventors might have imagined, the program’s momentum shows no sign of dissipating as it charges into its fourth continent in as many years. They have already spread to Australia and Japan, and the World Intellectual Property Organization (WIPO) has recently announced interest in joining the fun.
Marking the June 1 launch, the first batch of 20 applications has been uploaded to the Peer to Patent UK website for review, with approximately 10 to be added every week going forward. The pilot program will end in December, 2011.