International Search Reports Research Articles

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

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.

Promoting the Progress and Ensuring Patent Quality Through Rigorous Policy Evaluation and Piloting

Article I, Section 8, Clause 8, of the United States Constitution grants Congress the power promote the progress of science and useful arts.” The core function of the US Patent and Trademark Office is to determine what inventions truly represent progress in view of the prior art. While to date most conversations about patent quality have centered on back-end measures, like inter partes review, or the use of weak patents over abstract ideas to get injunctions, in this testimony I make three arguments. First, more attention should be paid to the most important, front-end tool that the patent office has to issue valid patents: prior art vetting. While 11%-15% of office actions involve section 101, over 90% of patents are subject to a prior art rejection and my research suggests that there is a gap between the USPTO examiners and others and that this gap is correlated with outcomes. Second, the USPTO should use rigorous pilots to create hard evidence for hard decisions: There are many unknowns with respect to patent quality, and it would be premature to adopt wholesale some of the suggestions being made. However, the USPTO can fill these gaps in knowledge by being much more rigorous and deliberate in its evaluation of past and future policy pilots, using causal inference and other statistical tools to estimate, when it rolls out or pilots changes or interventions, their impact. Third, consider not only time, but team, fee and other quality levers: the USPTO and Congress should take an expansive view of rigorous piloting to ensure patent quality looking at a variety of levers including: a) Time: The USPTO already has tried giving examiners more time, for example, when it implemented various Second Pair of Eyes programs over the years, and more counts were given to examiners. It also tried and is currently trying a number of different approaches to improving access to prior art. These should be evaluated rigorously. b) Team: The USPTO has smartly worked to provide not just more time but more “team” to Examiners, with foreign examiners (through the Global Dossier), applicants and industry (through programs like STEPP, PETTP, SEE and the Crowdsourcing prior art, 3P prior art submission, Track One, Prior Art Partnerships), other US examiners (through collaborative search efforts). We must use rigor to learn from these interventions. c) Prior Art Curation/IDS Policies: Examiners need context and curation, not just references. Though both contain prior art, large IDS are much less useful than carefully crafted international search reports and PTAB petitions. More rigorous policy attention should be paid here. d) Defensive Only Patents/Maintenance Fees: Most patents are held for defensive reasons and don’t need to be “litigation grade.” It’s not always known upfront which patents these are, making front-end gold-plating proposals challenging to the point of being unworkable. As described in my Article, Opening the Patent System, the USPTO should pilot offering a “back-end lead plating” option, what I call a “defensive only” patent option. Though this idea may sound novel, it’s not, it’s a version of the License on Right patent option that Germany and England offer, in the form of a discount on maintenance fees in exchange for a disclosure that the patent is being held for defensive reasons only. We can learn from prior sector commitments like OIN and LOT to perfect the US version for piloting. e) Continuations Practice: The USPTO examination process has a high tolerance for examiner mistakes, because it allows applicants to refile their rejected applications, and in many cases, get these cases allowed. While the practice limits the negative consequences associated with any bad Examiner decision, it makes Examiner inconsistency and mistakes tolerable, in turn, driving lower patent quality and satisfaction. Let’s test out ways to not only encourage but compel compact prosecution, for example by publishing grant rates on continued applications or making sure information on repeat filings is available to examiners. f) Inclusion Pilots: The applications of women and small and micro entity inventors have a lower success rate, with perverse distributional consequences including the higher application, lower grant rates to discounted entities and a higher grant rate to Asian female vs. US female inventors, my research suggests (see figures below). My paper, Rigorous Policy Pilots the Patent Office Could Try, suggests pilots to get at the root causes of these issues.

Measuring China's patent quality: Development and validation of ISR indices

Because China has become one of the largest applicants of PCT patents, it is of interest to compare the quality of Chinese and non-Chinese applications. We extend a quality index based on internationally comparable citation data from international search reports (ISR) to consider foreign, domestic, and self citations. Whereas foreign citations show that Chinese PCT patent applications reach only a third of the non-Chinese quality benchmark, the extension towards domestic and self citations suggests a higher quality level that converges to or even surpasses the benchmark. We investigate these differences based on firm-level regressions and find that in China, only foreign citations, but not domestic and self citations, have a significant and positive relation to R&D stocks. Using Germany as a representative country without policy support for patenting, we show that all three citation types may be used as economic indicators if policy distortion is not a concern. Our results show that domestic and self citations suffer from an upward bias in China and should be employed with caution if they are to be interpreted as a measure of patent quality.

Measuring China’s Patent Quality: Development and Validation of ISR Indices

Because China has become one of the largest applicants of PCT patents, it is of interest to compare the quality of Chinese and non-Chinese applications. We extend a quality index based on internationally comparable citation data from international search reports (ISR) to consider foreign, domestic, and self citations. Whereas foreign citations show that Chinese PCT patent applications reach only a third of the non-Chinese quality benchmark, the extension towards domestic and self citations suggests a higher quality level that converges to or even surpasses the benchmark. We investigate these differences based on firm-level regressions and find that in China, only foreign citations, but not domestic and self citations, have a significant and positive relation to R&D stocks. Using Germany as a representative country without policy support for patenting, we show that all three citations types may be used as economic indicators if policy distortion is not a concern. Our results show that domestic and self citations suffer from an upward bias in China and should be employed with caution if they are to be interpreted as a measure of patent quality.

Measuring Patent Quality Based on ISR Citations: Development of Indices and Application to Chinese Firm-Level Data

Considering China’s policy-driven patent expansion, we validate domestic citations in comparison to foreign ones, which are exogenous to China’s policy, as economic indicators. We derive internationally comparable citation data from international search reports. Whereas foreign citations show that Chinese PCT applications reach only a third of the non-Chinese quality benchmark, the extension towards domestic and self citations suggests an increasing quality level that is closer to the benchmark. We investigate these differences based on firm-level regressions and find that only foreign citations, but not domestic and self citations, have a significant and positive relation to R&D stocks. As Chinese citations appear to suffer from an upward bias, we confirm that indicators fail as reliable measures if they become the target of policy. Taking Germany as a counterexample, we show that domestic and self citations may be used as quality measures if policy distortion is not a concern.

Measuring patent quality in cross-country comparison

Our novel quality index is based on citations from international search reports and provides internationally comparable, quality-adjusted figures for applications made under the Patent Cooperation Treaty (PCT). We show that China’s recent patent expansion has taken place to the detriment of patent quality. Weighting national PCT counts with our index reveals a widening gap between the technological capacities of China and the leading USA.

Measuring Patent Quality and National Technological Capacity in Cross-Country Comparison

China recently surpassed the USA as the greatest global source of patent applications. However, without internationally comparable measures of patent quality it remains questionable whether China's patent expansion constitutes the rise of a new technological superpower. Our novel quality index is based on citations from international search reports and provides internationally comparable, quality-adjusted figures for applications made under the Patent Cooperation Treaty (PCT). We show that China’s patent expansion has taken place to the detriment of patent quality. Weighting national PCT counts with our index reveals a widening gap between the technological capacities of China and the leading USA.

Erratum to: Obstacles to prior art searching by the trilateral patent offices: empirical evidence from International Search Reports

Erratum to: Obstacles to prior art searching by the trilateral patent offices: empirical evidence from International Search Reports

Patent citations as determinants of grant and opposition: case of European wind power industry

ABSTRACTThe grant of a patent and filing of an opposition are important events in the lifecycle of a patent. This paper tests the influence of backward citations on the likelihood of a patent grant and, if any, an opposition. Since all citations are not alike, detailed analysis is done by assessing type, nature and origin of citations in European search reports and, where needed, international search reports. The nature of citations, blocking or non-blocking, is found to have a significant impact on the likelihood of a patent being granted. The effect of citations originating during different stages of patent pendency is also explored in this study. For practitioners, the study provides a landscape of the European wind industry that is characterised by popularity of the PCT route, dearth of non-patent citations and dominance of bigger actors. For academics, the study offers novel opportunities to utilise citation based indicators.

Obstacles to prior art searching by the trilateral patent offices: empirical evidence from International Search Reports.

Despite many empirical studies having been carried out on examiner patent citations, few have scrutinized the obstacles to prior art searching when adding patent citations during patent prosecution at patent offices. This analysis takes advantage of the longitudinal gap between an International Search Report (ISR) as required by the Patent Cooperation Treaty (PCT) and subsequent national examination procedures. We investigate whether several kinds of distance actually affect the probability that prior art is detected at the time of an ISR; this occurs much earlier than in national phase examinations. Based on triadic PCT applications between 2002 and 2005 for the trilateral patent offices (the European Patent Office, the US Patent and Trademark Office, and the Japan Patent Office) and their family-level citations made by the trilateral offices, we find evidence that geographical distance negatively affects the probability of capture of prior patents in an ISR. In addition, the technological complexity of an application negatively affects the probability of capture, whereas the volume of forward citations of prior art affects it positively. These results demonstrate the presence of obstacles to searching at patent offices, and suggest ways to design work sharing by patent offices, such that the duplication of search costs arises only when patent office search horizons overlap.

Measuring Patent Quality in International Comparison Index Development and Application to China

We develop an index that compares the quality of Patent Cooperation Treaty (PCT) applications by considering citations generated by International Search Reports (ISRs). In its most restrictive variation, i.e. excluding citations from the home country and self-citations, the ISR index is not biased by selectivity in filing strategies, differences in citations due to varying national examination procedures, or domestic economic policies. Against the background of strong increases in Chinese patenting between 2001 and 2009, we compare the quality of Chinese PCT applications with those from high-income countries. Chinese PCT applications achieve only 34% of the quality level of international PCT applications. In addition, their quality is decreasing over time. We find that the patent quality of firms increases in R&D stocks but decreases with the introduction of PCT subsidies. Our results confirm that China’s expansion of international filings was achieved to the detriment of quality.

Statistics and analysis of relevant citations in international search reports in the CPO

Since China acceded to the PCT in 1994, the Chinese Patent Office has been establishing examination search files to meet the requirements of the PCT minimum documentation. In order to have a basis for future work, this paper gives statistics and analysis by categories of the relevant documents cited in 159 PCT international search reports which the CPO finished in 1994 and 1995, including countries, number of documents and technical fields. The conclusions are as follows: 1. (1) the technical fields of the majority of Chinese patents seeking protection outside China in 1994 and 1995 claimed medical apparatus and instruments, and health care medicines; 2. (2) at present, the starting year for search files should be fixed temporarily at 1920; 3. (3) in PCT international search reports made in the CPO, US patents were cited most often, followed by Chinese documents, then European documents. Japanese documents were fourth and PCT documents fifth; and 4. (4) the most common languages used by the examiners carrying out these searches were English and Chinese.

La recherche et l'information en matière de brevets dans les années 90

Since China acceded to the PCT in 1994, the Chinese Patent Office has been establishing examination search files to meet the requirements of the PCT minimum documentation. In order to have a basis for future work, this paper gives statistics and analysis by categories of the relevant documents cited in 159 PCT international search reports which the CPO finished in 1994 and 1995, including countries, number of documents and technical fields. The conclusions are as follows: 1.(1) the technical fields of the majority of Chinese patents seeking protection outside China in 1994 and 1995 claimed medical apparatus and instruments, and health care medicines;2.(2) at present, the starting year for search files should be fixed temporarily at 1920;3.(3) in PCT international search reports made in the CPO, US patents were cited most often, followed by Chinese documents, then European documents. Japanese documents were fourth and PCT documents fifth; and4.(4) the most common languages used by the examiners carrying out these searches were English and Chinese.