USPTO Extends and Expands Patent Application Peer Review Program

The U.S. Patent and Trademark Office has announced an additional one-year pilot of its "Peer To Patent" pilot program, which invites public participation in the patent application process.  The new program launches on October 25, 2010 and will be available through September 30, 2011.

The Peer-to-Patent program is a collaboration between the USPTO, the New York Law School, and others in which participating patent applications receive public scrutiny through comments and prior art submissions on the Peer-to-Patent website.  The peer review period begins approximately one month after the patent application is published, and it lasts for three months.  After the peer review period, the project sends the prior art and comments to the USPTO, and the USPTO advances the application earlier in its queue for examination.  Both the USPTO and the applicant can consider the public comments and submitted prior art during the examination. 

Applications that participate in the program can receive the benefit of quicker examination than they would have received if they had merely waited their ordinary turn at the USPTO.  This is especially useful for technologies such as software and telecommunication inventions where the typical wait time to first Office Action often is several years.  In addition, many commenters have suggested that the fact that a patent was peer reviewed patent could be useful in situations such as challenges to validity in litigation -- in order words, the fact that a patent went through the program may make a jury less likely to find the patent invalid.

According to the USPTO, the Peer to Patent Program "opens the patent examination process to public participation in the belief that such participation accelerates the examination process and improves the quality of patents. Under the pilot program, inventors can opt to have their patent applications posted on the www.peertopatent.org website. . .. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination."

Changes in the new pilot include:

• eligible technology classes have expanded to include software, telecommunications, and others;
• peer review time is reduced to three months (from the previous four months);
• up to 1,000 applications will be accepted into the program; and
• peer reviewers may submit up to six items of prior art per application (down from the previous limit of 10).

The original Peer To Patent pilot ran from June 2007 until June 2009.  The original pilot included 189 patent applications, and it received over 600 items of prior art from peer reviewers.  To participate in the program, a pending application must not have published more than 30 days before filing a consent form, and it must fall into an eligible technology class.  Eligible classes include, among others:

• 260 (certain subclasses) - chemistry of carbon compounds,
• 380 - cryptography,
• 424 (certain subclasses) - drug, bio-affecting and body-treating compositions,
• 702, 703, 705-715, 717 and 718, which relate to certain types data processing and computers, and
• 726 - information security.

The full list of technology classes eligible for the 2010 pilot is listed at www.uspto.gov/patents/init_events/class_subclasses_for_2010pilot.jsp.  For more details about the Peer to Patent program, visit the Peer to Patent website at www.peertopatent.org.