USPTO to modify patent reviews

Editor's Note: This story was updated at 10:20 a.m. Jan. 11, 2006, to add a comment from Jason Schultz, a staff attorney at the Electronic Frontier Foundation.

The U.S. Patent and Trademark Office has agreed to work with the open-source community to ensure that patent examiners have access to prior inventions related to software code. The open-source community has long criticized USPTO for not reviewing software in the public domain before issuing software patents.

The open-source group, led by IBM, agreed to collaborate on three projects after meetings with USPTO beginning in December 2005. The first project will give patent examiners access to open-source inventions, known as “prior art,” during the initial patent examination process. That project will entail developing a system for storing and searching millions of lines of publicly available computer source code. Participants include IBM, Open Source Development Labs, Novell, Red Hat and VA Software’s SourceForge.net.

Conventional sources of prior art don’t include open-source code, said Brigid Quinn, deputy director of USPTO’s public affairs office. “Most of the open source related code doesn’t have patents and isn’t readily available in software-related technical journals and other conventional sources of prior art,” Quinn said. “It is difficult for USPTO examiners to find it when searching for prior art to determine if a software-related invention is new or non-obvious.”

In addition to creating the database, members of the USPTO partnership agreed to develop an e-mail alert system to notify the public when USPTO publishes new software patent applications. That system will let interested parties submit references to prior art that a patent examiner or applicant may not have discovered.

Finally, the USPTO partnership will work on developing a patent quality index for evaluating the quality of software patents. It could include criteria besides the prior art test that examiners now use.

“We have been hearing concerns from the software community about the patent system,” said Jon Dudas, the Commerce Department’s undersecretary for intellectual property. Dudas hailed as significant the open-source community’s decision to provide prior art resources that are critical to the review of software-related applications.

USPTO officials will hold a Feb. 16 public meeting at USPTO headquarters in Alexandria, Va., to discuss the initiatives. Officials said they would post a meeting agenda on the USPTO Web site later this month.

In a statement about the USPTO partnership, John Kelly, IBM senior vice president of technology and intellectual property, said patents should be granted only for ideas that embody genuine scientific process and technological innovation.

“Raising the quality of patents will encourage continued investment in research and development by individual investors, small businesses, corporations and academic institutions, while helping to prevent overprotection that works against innovation and the public interest," Kelly said.

Jason Schultz, a staff attorney at the Electronic Frontier Foundation who specializes in intellectual property issues, described the open source partnership and initiatives as positive developments. “The open-source and open-access communities have proven that there are successful models for getting the public involved in research,” Schultz said. “There's no reason the USPTO shouldn't benefit from the same.”

“If even half the people who contribute to other open-source projects contribute to this one, you can expect to see a significant impact on patent quality for software and the Internet,” Schultz said.