This document discusses a case study of Peer to Patent Australia, a pilot program that tested using public participation to assist in the patent examination process. It allowed registered reviewers to submit prior art to be considered by patent examiners for applications in business methods and computer software. The goals were to improve patent quality and information available to examiners. Key lessons learned included the need for risk minimization, change management, and flexibility. While still conservative, the patent office was able to conduct an innovative trial, laying the foundation for more improvements to the intellectual property system through collaborative governance and open data sharing.

1. Moving from safe closed
data to open data sharing
between government and
citizens: a case study of Peer
to Patent Australia
3 November 2010
Paulette Paterson

2. My presentation
Background:
– IP Australia
– The IP system, knowledge sharing and collaborative governance
The ladder of citizen participation in government
– Using peer expertise to assist decision-making
˜ The ‘modest proposal’ of Peer to Patent - crowdsourcing plus Web 2.0
Peer to Patent Australia trial
– Identifying and managing opportunities to assist decision-making
– Risk and collaborative governance
– Lessons learnt

3. IP system in Australia

4. Responsible for administering Australia’s
intellectual property (IP) rights system,
specifically trade marks, inventions (patents),
designs and plant breeder’s rights.
Role:
 creating a safe and secure environment
in which to make the intellectual
investment necessary to innovate and
thereby encouraging research and
development;
 promoting the disclosure of discoveriespromoting the disclosure of discoveries
and follow-on generation of ideas;and follow-on generation of ideas;
 enabling firms to build brand value and
business reputation which in turn
contributes to improved consumer
confidence; and
 providing a legal framework in which to
trade ideas.
IP Australia

5. What is a patent?
A patent is a right granted for any
device, substance, method or
process which is new,
inventive and useful.
A standard patent gives long-term
protection and control over an
invention for up to 20 years.
In return, patent applicants must share their
know-how by providing a full description of
how their invention works.
This information becomes public and can
provide the basis for further research by
others -the generation of new and follow-on
ideas.
The Hills Rotary Hoist, launched in 1946.
Image courtesy of the Sydney Morning
Herald.

6. Some Australian inventions
 first full-length feature film (1906)
 surf lifesaving reels (1906)
 sunshine header harvester (1914)
 speedo swimwear (1929)
 rotary clothes line (1946)
 wine casks (1965)
 staysharp knives (1970)
 racecam live television broadcast (1979)
 wall-mounted Miniboil machines (1981)
 dual-flush toilets (1982)
 baby safety capsules (1984)
 smartmodem (1992)

7. Gov 2.0 and the Collaborative
Governance of the Patent System
Not a new idea - The Patent System is the
legislated route to bring Information to
Innovation
Law | Policy | Technology

8. "The fact is that one new idea leads to another, that to a third, and so
on through a course of time until someone, with whom no one of
these ideas was original, combines all together, and produces what is
justly called a new invention."
- Thomas Jefferson, Director of the 1st U.S. Patent Board
Building on existing knowledge

9. Opening up knowledge flows to drive innovation
People need to share
what they already
know, in order to
achieve more and to
innovate.
To do this they need
communication
channels, time and a
social system.
…..web 2.0 and 3.0
are helping to make
those connections

10. Crowdsourcing – calling in the cavalry
Ordinary people
possess
extraordinary
knowledge they
are willing to share
when it is easy to
do so.
….and sometimes
only if they are
asked to.

11. Gov 2.0
The first step towards a government that can cope
with the complexities of the modern world might
well be acceptance of the fact that it can’t do it
alone.
“Together we can accomplish what cannot be done
alone”
Beth Noveck, US Deputy Chief Technology Officer for Open and Transparent Government

12. Gov 2.0 and citizen expertise
From e-government to
collaborative government
Increasingly governments
broadcast a problem, issue or task
on an interactive website that
enables the community to
collaborate on coming up with the
best solution.

13. Citizen expertise and democracy
The information deficit as
a democratic deficit
Citizen participation and trust
From CIPAST citizen participation in
science and technology
http://www.cipast.org/cipast.php?
section=212&PHPSESSID=8c15a797
855d474b973c9a0f6a19387f

14. The scale of collaboration
Degree of collaboration What is involved?
Highest level: high normative commitment
to collaboration; often
highest political/managerial risks
Transformative interaction between network actors; substantive
engagement and empowerment; search for high degree of stakeholder
and inter-actor consensus and cooperation; coalition building by
government and non-government actors
Medium–high level: strong normative
orientation; high level of
political/managerial risk
Strong engagement of stakeholders in decisions or policy process
and implementation; devolving decision-making capacities to
clients; more complex innovations in policy-delivery processes
Medium–low level: operational forms
of collaboration to ‘get job done’; some
political/managerial risk
Forms of co-production; technical improvements in delivery chains;
assistance to comply with obligations; direct consultation with clients
over delivery and compliance systems; systematic use of evaluation
data; public reporting on targets informed by client preferences
Lowest level: marginal operational
adjustments, low levels of
political/managerial risk
Incremental adjustments using consultative processes; client
discussions and feedback mechanisms; gaining information on
needs/expectations of others
O’Flynn, J & Wanna, J, 2008, Collaborative government: a new era for public policy in Australia?, ANU Press, Canberra, p. 4

15. Context, purpose, choices and motivations of collaboration
Context & purpose Choices or motivational possibilities
Power dimension Coercive and forced collaboration Persuasive and voluntary involvement in
collaboration
Commitment level Meaningful & substantive
collaboration
Meaningless & cosmetic collaboration
Strategic dimension Collaboration for positive &
beneficial purposes
Collaboration for negative/preventative strategies
Means-ends dimension Collaboration as a means and
process; stages, due process
Collaboration as an end and outcome;
shared results, outcome orientation
Goal dimension Shared objectives; mutual
intentions, consensual strategies
and outcomes
Competing objectives; different reasons for
participating
Visibility & awareness
dimension
Overt and public forms of
collaboration; awareness of
collaboration is high
Covert and behind-the-scenes collaboration;
unawareness of collaboration
Problem applicability Collaboration on simple problems;
simple objectives and responsibilities
Collaboration on ‘wicked’ problems,; defying
description and solutions
O’Flynn, J & Wanna, J, 2008, Collaborative government: a new era for public policy in Australia?, ANU Press, Canberra, p. 5

16. From
Wikino
mics to
Wikigov
ernment
From Wikinomics to Wikigovernment

17. Wikigovernment and Peer to Patent
 Connecting the scientific community to the
patent examination process
 An experiment in using the tools of the
social web to create models for
participatory government.
 The community is invited to augment the
work of the official patent examiner by
assisting with identifying “prior art”
 Goal: improve the quality of issued patents
by giving the patent examiner

18.  Access to better information by means of an
open network for community participation,
 Social software tied directly to the legal and
political process.
 Designed to channel the right information.
 Opportunity to engage directly with the
patent office and be heard.
 Final decision made by IP agency.
Rationale

19. Began November 2009
In association with QUT
Pilot program to test the effectiveness
of open, public participation in the
patent examination process
Business method/computer software
focus Based on the work of the
New York Law
School between 2007
and 2009
http://www.peertopatent.org.au
Peer to Patent Australia (P2P)

20. How Peer to Patent works

21. How Peer to Patent works

22. Patent
Applications
Posted
31
Registered
Reviewers
129
Prior Art
Submitted
106
•Trial conducted Dec 2009-Jun 2010
•Examiners surveyed Jul-Aug 2010
•Surveys evaluated Sep-Nov 2010
•Report to Minister Dec 2010

23. What are the opportunities?
 Applicants receive timely feedback from knowledgeable peers on
prior art pertinent to their published application for a patent.
 The burden of proof of inventive step is no longer on the patent
examiner or the inventor alone.
 Competitors see boundaries set by previously published
inventions early in the process and potentially avoid conflicts.
 Peer review gives more confidence that all prior art was
considered and reduces uncertainty (aka potential litigation).
 The global patent system potentially benefits from a more
collaborative examination community and improvements in the
global search environment.

24. What are the risks?
 Legislative underpinning and risk
mitigation (collaborative governance)
 3rd party issues
 Relationship with collaborative partner (s)
 Degree of community interest
 “Official” versions of applications
 Behaviour of peer community

25. What’s next?
 Further trial at USPTO (began
Oct 2010)
Post-Issue Peer-to-Patent (US)
 Open Patent (US)
Patent Commons
 WIPO initiatives
 Other IP rights

26. What’s next?

27. What have we learnt?
 Risk minimisation through
partnering, building on earlier trials
and collaborative governance.
 Change and communication
management.
 Even a conservative agency can
conduct a groundbreaking trial.
 Laying the foundation for more
improvements to the IP system –
from little things….

28. What have we learnt?
 Find the right people to
participate
 Allow for flexibility and evolution
in approach
 Focus on outcomes rather than
process
 Be prepared to be surprised

29. Questions?

30. Formore information visit
http://www.peertopatent.com.au/
Gov 2.0 showcase
Or contact:
Paulette Paterson
Manager, Strategic Planning and Corporate Reporting
IP Australia
47 Bowes St Woden ACT 2606
postal address PO Box 200 Woden ACT 2606
phone +61 2 62832749
0423847089 (mobile)
fax +61 2 6283 7999
email paulette.paterson@ipaustralia.gov.au