Citizen examiners and novelty of problems

Over the years I have made two proposals for patent reform:

  1. Require those who apply for patents to serve as citizen-examiners on other patents in their field
  2. Allow patents on novel solutions to established problems, not the 1st obvious solution to a new problem

I never combined the two together, however. In the citizen examiner approach, when you apply for a patent you are also put into a pool of available experts in your field to assist examiners with other patents in the field. You need to do this several times (and get anonymously graded by your peers as having done a decent job) in order to get the patent you applied for.

While this helps the patent examination in so many ways, by providing an automatically scaling pool of skilled labour, I had not addressed how to deal with the novelty test.

I propose that when filing a patent, first the applicant must file a clearly written statement of the problem being solved by the patent. This would be public, and citizen examiners would be asked to consider it and see if any obvious solutions come to mind to them as those skilled in the art. In addition, they would grade the problem statement for clarity.

When the actual filing is disclosed, a second review would be done both by the examiner, an the citizen examiners as to whether the claimed invention really does solve the problem, and whether it had been a clear statement of the problem and not an attempt to obfuscate. I already plan for the citizen examiners to grade the patent itself on how clearly it teaches the invention. Patents which do not have cohesive problem statements and clear teaching of the invention would be returned in an office action for revision.

The idea behind the problem statement is a test both for obviousness and novelty of the problem. In many cases, experts in the field will come up with proposed solutions to the problem quickly. If they come up with the invention-about-to-be-disclosed, then it’s clear that it was obvious to one skilled in the art. If nobody comes close to the invention, it is evidence that it is not obvious, though there would still be general judgement of that, as well as prior art searching by examiners, citizen examiners and the public.

Today, patent lawyers earn their keep in part by writing patents in non-clear ways, to make them hard to find and understand. That is against the goal of the patent system, which is to reward those who disclose their inventions, teach how to build them and leave them after 17 years as a legacy to the world. While any one examiner may not make a good decision, a panel of experts in a field can provide some solid evidence on whether the problem is hard and the invention is novel.

Getting such proposals into patent reform is hard. Big patent holders want to make it easy to build up their patent portfolios. Many would fight meaningful reform like this. But perhaps there is a way to get it kickstarted. It might be interesting to see a web site where new patents are put forward and examined by ordinary citizens that care. Examiners could of course look at that, but they would not be obligated to. There are so many patents that a lot would pass by without attention. There are sites that report on new patents, but what we perhaps need is a site like “reddit” or “digg” for patents which takes the whole patent inflow and lets people vote up patents of interest for examination and comment by others. The most interesting ones would get more attention and more people searching for prior art and commenting. If a little money was involved they might even get prizes, though that would take a wealthy patron willing to spend money for patent reform.

To sum up the proposed patent process:

  1. Applicant files/publishes “statement of problem.” Also declares the discipline/areas of expertise.
  2. The public, and a set of citizen examiners chosen from the pool in that subject area write comments on the problem and propose solutions over the course of a few weeks.
  3. The patent filing is studied by the examiner. She picks some suitable citizen examiners without apparent conflict of interest, as well as one likely competitor, if available. Chosen examiners agree or beg off, if they beg off, alternates are selected.
  4. Examiner and citizen assistants consider the patent, how well it is written and do searches for prior art. The “adversarial” examiner does only prior art search.
  5. The patent is considered in the light of prior art. Novelty and how well it addresses the pre-stated problem are judged, as well as clarity. Obfuscated patents, as judged by the examiner based on views of the assistants, are rejected in office actions. The patents can be re-filed but the problem statement can’t.
  6. If a patent is found to be clear, novel and well tied to the problem, and non-obvious, including that nobody who examined the problem came up with too similar a solution, the patent can be granted.
  7. The examiner and other citizen examiners (including some who did not work on this particular patent) grade the work of the citizen examiners, to assure they were thorough, diligent and honest. Those who were earn a credit towards their obligation.

Re-examination

Citizen examiners are almost unlimited, in that we can ask each one to do multiple jobs to get their patent, within reason. Small inventors can get less duty than large ones, and anybody (but particularly large companies) can have another qualified expert do the work if the main inventor is too important. But I imagine the job as being about 2-3 days of work, researching, reading and commenting, and 5x of that is pretty tolerable for somebody wanting a patent.

As such we could also, more slowly, put citizen examiners on to re-examining other patents that are challenged. We would not revoke patents that met the rules of their day, but if further examination shows they had prior art or documented obviousness, that should be considered.

Obviously not obvious

If the problem has been around for, say, several years, then it should be impossible to deny a patent on the grounds that it is obvious. Is this actually the case in any country?

I can think of several

I can think of several counterexamples. For example, everyone might know a brute-force solution to a problem, but perhaps no one's implemented it so far because it's too expensive and hasn't been worthwhile yet. Maybe no one's published papers about it because they think it obvious and worthless. Now someone comes up with something else which requires some solution to the problem, and suddenly the brute-force solution becomes worth its cost. Should he be allowed to patent the brute-force solution?

Already covered

This is already covered by the existing system. The PTO examiner (and any citizen examiners and members of the public) would be making notes on prior art and obviousness. Obviousness is of course somewhat subjective and harder to judge after the fact. That’s why if somebody provides the claimed solution a short time after seeing the problem that you have a solid indicator of obviousness. But you can still just have the examination crew go “duh…”

Nonimplementability doesn't imply nonpatentability

If "everyone knows" something then isn't that a prior-art argument?

Conversely, the fact that a particular method is non-implementable isn't a reason that it can't be patentable. I'm pretty sure that there are any number of antigravity or telepathy or other woo-woo "patents" out there.

So what I'd say is that, in the case you describe, the solution A: should have been patented when it was suggested, even if it could not have been implemented, and B: is now unpatentable for prior-art reasons because "everyone knows" about it.

Setting it up

It might be good if the citizen examiners were networked and connected, such as being able to view and discuss patents in groups. Also, it might be be good if they can develop guidelines for the writing/layout of patents to be more clear, intuitive, organized, and keyworded for improved searches.

Another plus would be if the system were transparent, by making public the examination history and group discussions of citizen examiners soon after the patent has issued or been rejected.

(This is something I've been working on)

Suggestion #2

As you say yourself obviousness is a fluid concept, and whether a particular invention is or is not obvious in light of prior art and teachings in the field does indeed depend on looking at both the problem as defined and the proposed solution. If a problem is "new" in that it adds one trivial element (1) to an existing problem (X), then a solution is proposed that repeats the function of the solution to X but is now applied to X+1, that application should be denied as obvious.

But where do you draw the line? If a problem IS truly "new," IS there such a thing as the "state of the art" such that any solution would be obvious to a practitioner therein? In other words, with no practitioners solving that problem, who is the hypothetical one skilled in that field? I know--if the problem is a new one facing the aviation industry, then aviation experts should be the relevant skilled set, but still...when you posit the hypothetical "new" problem, the question is definitely begged.

Thanks for the exercise.

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