1 June 2011: UK IPO Launch Peer to Patent initiative

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Nick Reeve, Partner for Reddie & Grose LLP

On 1st June 2011, the UK Intellectual Property Office (UK IPO) launched its pilot Peer-to-Patent (P2P) initiative, an on-line review process that allows third parties to upload prior art for inclusion in the examination of pending patent applications. Versions of the initiative have already been trialled in the USA, Korea, Japan and Australia, where they have been found to be useful in improving the quality of examination and therefore the quality of any resulting granted patent.

Under UK patent law, third parties already have the right to file prior art relevant to a published patent application, under the Third Party Observation provisions of Section 21 of the UK Patents Act. The P2P system is in many ways a powerful enhancement of this provision, leveraging the power of the internet to source the initial third party observations, as well as filtering the observations and compiling them into a formalised report for the benefit of the Patent Office Examiner.

The P2P system is the brainchild of Professor Beth Noveck of the New York Law School (NYLS), who suggested it in her law blog in 2005. The idea was subsequently reported on and published by the magazine Wired, and caught the attention of the patent department at IBM, who were themselves eager to find ways to reduce patent office backlogs and reduce the number of patents of dubious quality under which they might be sued by have-a-go entrepreneurs. That interest began an avalanche, and by 2007 other large corporations were volunteering their patent applications to participate the pilot scheme run by the US Patent Office.

For the UK, only the 174 patent applications classified under section, G06F of the International Patent Classification, “Digital Data Processing”, and which have a priority date falling between January 2008 and September 2008, are included in the initial pilot scheme (PCT applications are not included). Further, unlike the US scheme, applications are included in the P2P system under the direction of the UKIPO, rather than by the request of eligible applicants. Letters informing applicants of inclusion in the process were sent out in May 2011.

Implementation Details

Between 1 June 2011 and October 2011, the UKIPO will upload published applications to the Peer-to-Patent website each week. For each application appearing on the website, the website will monitor a three month review window in which third parties can review the application and upload prior art that they believe is relevant. At the end of the three month period, no more prior art can be uploaded for inclusion in the project, though the details of the application remain on the website.

Once the three month review period is over, reviewers at the New York Law School will review the application and the uploaded prior art, and prepare a formal report, including annotations and commentary on the top ten prior art references submitted. The report is then referred back to the UKIPO Examiner handling the application.

The Examiner will still perform a search and examination for applications included in the P2P scheme in the normal way. However, for those applications included in the pilot project, the Examiner will also be able to consider the information included in the NYLS report on the prior art, and factor this into his or her analysis. As the NYLS report is effectively submitted to the Examiner under Section 21 of the Patents Act, neither the reviewers of the NYLS nor those who contributed prior art will be party to the Examination. A copy of NYLS report is forwarded to the applicant.

If the UK IPO program is considered successful, then like the USPTO, the UKIPO may consider following-up with a further trial on a larger scale. The results of the current UKIPO trial are expected to be known in May 2012.

Links

UKIPO information about the Peer to Patent program:
http://www.ipo.gov.uk/peertopatent.htm

The Peer to Patent website:
http://peertopatent.org.uk/

The UK IPO Peer to Patent system was introduced by the Prime Minister David Cameron under his Blueprint for Technology plan in November 2010. Commentary is available here:
http://www.bis.gov.uk/news/topstories/2010/Nov/blueprint-for-technology

The Blueprint for Technology is available here (approx 3MB):
http://www.bis.gov.uk/assets/biscore/innovation/docs/b/10-1234-blueprint-for-technology