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A CASE STUDY OF INOPERABLE INVENTIONS: WHY IS THE USPTO PATENTING PSEUDOSCIENCE? - page 36 / 39

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WISCONSIN LAW REVIEW

are specialists in the relevant field and who then submit their opinions as to an article’s merits.284 The referees are generally professors or researchers who review articles out of a sense of professional obligation and who generally receive no compensation for their efforts.285 Moreover, referees are often not only experts, but the premiere experts

in their field.286

By contrast, the patent system pits applicants with

significant time and resources against an examiner whose knowledge of the field may be broad but insufficiently deep.287

Although it would be impractical to populate the USPTO with experts in every field, it may be possible to incorporate a peer-review system into the examination process. A list of outside experts could be kept at the USPTO for use in outsourcing selected patent applications. For the limited reforms contemplated in this Comment, examiners would select only those applications for peer review which, in their judgment, would be candidates for an inoperability rejection.288 Examiners could then get an expert opinion as to whether or not a case for rejection is worth pursuing. In addition, the reviewer could assist the examiner by providing the expert testimony necessary to make a prima facie case for rejection.

One serious objection to this scheme would be that the outside reviewers are members of a group, including academics and researchers, who often apply for patents.289 An expert reviewing a confidential patent application may be tempted to misuse that privileged knowledge to gain an advantage in the race to patent a lucrative idea.290 However, similar temptations already exist for examiners and patent attorneys. There are laws currently in place that attempt to prevent such abuses of confidentiality.291 For employees of the USPTO, 35 U.S.C.

Einstein had to suffer the occasional criticism of his peers. See Daniel Kennefick, Einstein Versus the Physical Review, PHYSICS TODAY, Sept. 2005, at 43, 43.

284.

See, e.g., Physical Review Letters, Editorial Policies and Practices,

http://prl.aps.org/info/polprocl.html (last visited Nov. 1, 2006).

285.

Charles Jennings, The True Purpose of Peer Review: What You Can’t

Measure, You Can’t Manage: The Need for Quantitative Indicators in Peer NATURE, http://www.nature.com/nature/peerreview/debate/nature05032.html.

Review,

  • 286.

    Id.

  • 287.

    See supra Part III.A.

  • 288.

    The pros and cons of using a peer-review system to address other needed

reforms in the patent system are beyond the scope of this Comment.

289.

For

a

discussion

of

the

perceived

incompatibility

of

the

academic

peer-

review system and the patent system, see Troy, supra note 284, at 63-64.

290.

See id. at 56-59 (describing a misappropriation that allegedly occurred as

a result of the peer-review process).

291.

The

ABA

MODEL

RULES

OF

PROFL

CONDUCT

(2003)

already

provide

significant protection to clients of patent attorneys. There is, for example, a conflict of

interest

rule

for

current

clients,

id.

R.

1.8(b),

a

conflict

of

interest

rule

for

former

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