When do the USPTO examiners cite as the EPO examiners? An analysis of examination spillovers through rejection citations at the international family-to-family level

Tetsuo Wada

doi:10.1007/s11192-020-03674-4

Abstract

This paper empirically examines coincidences between “rejection citations” (i.e., those cited as grounds for rejections) added by the United States Patent and Trademark Office (USPTO) and “X/Y patent citations,” which are also added as grounds for rejections at the European Patent Office (EPO) within the same patent family, based on more than forty thousand families of triadic application sample. We consider the release timing of European search reports and the timing of rejection actions by the USPTO for the same family of patent applications. We find that the frequency of rejection (X/Y-equivalent) citation coincidences between the USPTO and the EPO according to family-to-family citation criteria increases after the release of search reports by the EPO. It suggests that the US examiners capture spillovers of search efforts from the EPO, namely, the USPTO examiners rely on prior art information collected and disclosed by the EPO. The results also reveal that International Search Reports (ISRs) prepared for Patent Corporation Treaty (PCT) applications, as well as applicant-submitted citations, play important roles for the convergence of rejection citations between the two patent offices. We furthermore find that the US examiners are less likely to add the same patent citations as the EPO examiners when rejections are persistently repeated at the USPTO. The methodology in this paper introduces the novel use of patent examiner citations to compare examiners’ citing behavior across jurisdictions.

Highlights

An internationally valuable patentable invention is often filed as international patent applications and examined in many jurisdictions
“Rejection citation,” namely, citations made by examiners to indicate specific prior arts to reject applications, are widespread to the extent that, for example, approximately only 20% of rejection citations employed at the United States Patent and Trademark Office (USPTO) coincide with those equivalent X/Y citations for rejections used at the European Patent Office (EPO), even after consolidating at family-to-family citation levels (Wada 2018)
This paper contains several research questions with regards to whether and how the convergence of rejection citation can exist, such as: (1) Is a USPTO office action after the release of search reports by the EPO more likely to reflect the same family-level patent citations added by the EPO, compared with pre-European search reports (ESRs) office actions at the USPTO? Put differently, do we observe a convergence of patent citations between the two offices?

Summary

Introduction

An internationally valuable patentable invention is often filed as international patent applications and examined in many jurisdictions. US examiners should indicate specific prior art on which they rely as the reason for rejections, if they reject, in particular, the US Code Title 35 “102” novelty rejections, “103” obviousness rejections, and statutory double patenting rejections. There is no official name for this category of citations, but recent work (Cotropia and Schwartz 2018) calls it as “rejection citation,” or “rejection patent” if a corresponding prior art is a patent. This data has been made available and draws attention by the recently released office action database of the USPTO (Lu et al 2017). To the best knowledge of the author, there has been no previous work that tries to combine examiner patent citation data across different jurisdictions, except the above-mentioned article (Wada 2018)

Methods

Results

Conclusion