Contributed by Organizations or Campuses; Articles, Papers, and Reports; Patents; and Federal Copyright Law

A federal jury in Texas recently awarded the learning services giant Blackboard $3.1 million in its patent infringement lawsuit against a much smaller competitor, adding a new layer of complexity and uncertainty to a complex, uncertain market for higher education learning management systems.

Tougher examination of patent applications reduces anti–commons effects while reducing the frequency and costs of litigation. Modelled after open source/free software collaborations, the “Peer to Patent” initiative seeks to improve the quality of patents by developing a Web–based infrastructure whereby volunteer experts external to the PTO’s review applications, assemble prior art information, and submit the results of their collective work back to the Patent Office examiner. This paper endorses the spirit and goals of the “Peer to Patent” initiative, but questions its reliance on the open source model. A discussion of the functions of peer review, the meaning of peer, and the motivations of the reviewers in different contexts indicates that editorial peer review — not open source — can provide a more effective model for integrating peer review of patent applications into PTO practices.

This article presents a survey of responses to patent thickets. The first group involves efforts to either keep questionable patents from ever issuing or removing them from patent space after they have issued — in particular, the “Peer–to–Patent” project, also known as “Community Patent Review.” Proposed by Professor Beth Noveck (2006) and subsequently incorporated into a pilot project by the U.S. Patent and Trademark Office (USPTO), Peer–to–Patent will use distributed online communities to assist in the review of patents for questions of novelty and obviousness and by enabling a virtual community of practice in a field to suggest prior art to the patent examiner. Its success will depend on the ability to leverage developments in cyberinfrastructure in the areas of Computer Supported Collaborative Work (CSCW) and information retrieval. This article also suggests extending Peer–to–Patent into the realm of patent reexamination and post–grant opposition, which are mechanisms that can remove invalid patents once they have been issued.

The authors provide evidence that software patents have more severe boundary problems and generate greater litigation costs than most other patents. Software patents tend to perform badly because the associated property rights are often expressed quite abstractly. The problem of mapping words to technology is difficult for any kind of technology, but it is especially difficult for software inventions because of the abstract nature of the technology. The problem has been made worse because when the courts have considered software inventions they have relaxed patent law doctrines that work to limit abstraction in other areas of technology. As a result, patent–based property rights to software inventions are not tethered to a specific device or to a specific physical or chemical process. Ironically, verbal descriptions corresponding to precise mathematical representations may be ambiguous; this is because of the inherent abstraction of the mathematical representations.

"How publicly funded research will be brought to market for the next quarter-decade was the topic of a House of Representatives hearing on Tuesday (July 17th), with panelists representing research institutions, universities and high-tech industries. None of them disputed the impact of the law, and in fact no one giving testimony seemed to like the idea of changing the legislation (or passing more of it). But they didn’t say it was perfect. "