Patent Examination Research Articles

Aspects of the examination of patents relating to medical inventions

Keywords: selection invention; medical inventions; examination; patentability criteria
 The article contains an analysis of approaches to the examination of selectioninventions for medicines. Selection inventions are inventions created in theprocess of selecting an optimal compound from a group of known compounds or in theprocess of selecting parameters from an interval of known parameters related to thecompounds. Selection inventions must demonstrate an unexpected result that is unknownin the prior art. Selection inventions can potentially be a means of obtaining amonopoly on an already known compound or a medicinal product containing thatcompound, or a method of producing the compound, etc. Therefore, the examination of criteria of patentability for selection inventions is important for maintaining the balanceof interests between the patent holder and the society. The article contains informationabout the difference between the examination of inventions in the patent officeand the forensic examination. The analysis of approaches to examination includesthe law of Ukraine for invention, which provides for the means of combating evergreen(secondary) patents, as well as the opinion of experts of the Patent Office abouta patentability of selection inventions. The article contains the approaches to examinationaccording to the regulations of the European Patent Office and other nationaljurisdictions, as well as the opinion of forensic scientists practising in this field. Apractice example of examination of a selection invention is given. The summary includesrecommendations on approaches to the examination of selection inventions:the subject of the selection invention should not have been specifically disclosed earlier;the subject should exhibit previously unknown and unexpected advantages; thedescription of the selection invention should contain reasonable evidence of non-obviousnessof the selection; the selection invention should meet the condition of inventivestep according to the general requirements as for all the inventions. If unexpected advantagesof existing products were deemed patentable under the applicable law, thepatentability of a selection could be considered when an inventive step is present.

Corporate Patenting, Customer Capital, and Financial Market Outcomes

AbstractWe study how patenting enhances customer capital and creates financial value in a product market characterized by information asymmetry between firm insiders and customers. We find that firms with more and higher quality patents develop greater customer capital, as measured by more positive customer perceptions of product novelty and quality. To establish causality, we exploit the exogenous variation in the random assignment of patent examiners to review applications and use the average examiner leniency as an instrument for patent grants. Our mediation analysis documents a positive impact of patenting on firm performance and financial market valuation through enhanced customer capital.

The Effect of Motivation and Competence Factor for Improving Patent Examiner Employee Performance

The human resources who have motivation and competence are success determinants in achieving organizational goals, and those goals will be achieved if the employees demonstrate high performance at work. Several factors that affect performance are motivation and competence. The performance of Patent Examiners at the Directorate General of Intellectual Property DGIP – Ministry of Law and Human Rights (KEMENKUMHAM) tends to decline. The purpose of this study is to analyze the effect of motivation and competence on improving the performance of Patent Examiners in the Directorate of Patent, Layout Design of Integrated Circuit, and Trade Secret – DGIP. There were 92 Patent Examiners as respondents, and the method used in this study was sampling technique using proportional random sampling. The data analysis descriptive analysis of respondents, validity and reliability tests, and Structural Equation Modeling (SEM) analysis with Partial Least Square (PLS). The variables are motivation, competence, and performance. The results of the study show that motivation and competence variables are factors that affect the performance improvement of Patent Examiners in the Directorate of Patent, Layout Design of Integrated Circuit, and Trade Secret – DGIP. The results of this study comprises : 1) motivation influences the performance of Patent Examiners, 2) competence influence on the performance of Patent Examiners, 3) motivation affects the competence of Patent Examiners, 4) competence influences the motivation of Patent Examiners, 5) motivation and competence together affect the performance of Patent Examiners, 6) the main priorities on improving the performance of Patent Examiners are training and quality development of the employees. Keywords: competence, motivation, performance, performance improving, Patent Examiner employee

Innovation Success and Capital Structure

This paper analyzes the relationship between firms’ innovation success and their capital structures. I hypothesize that firms’ innovation success reduces the extent of information asymmetry facing them in the equity market, leading to a greater propensity of firms to issue equity rather than debt to raise external financing. Supporting these hypotheses, I show empirically that firms with higher levels of innovation success have lower leverage ratios and a greater propensity to issue equity rather than debt. Further, these firms face a lower extent of information asymmetry in the equity market. I establish causality using instrumental variable analyses, instrumenting for patent grants with patent examiner leniency.

Alice v. CLS Bank: Patent Examination, Patent Assertion Entities, and Startups

Alice v. CLS Bank: Patent Examination, Patent Assertion Entities, and Startups

Integration of the USSR into the International Patent-Licensing System in the Context of International Technological Cooperation (1950s – early 1970s)

In the 1950s, as the world entered an era of scientific and technological revolution, the leadership of the Soviet Union chose a new economic course based on scientific knowledge, which could enable the USSR to secure technological leadership, a competitive advantage over Western countries and closer integration with the CMEA. A key indicator of the success of this policy has been the country’s incorporation into the evolving system of international patenting and licence selling. In previous years, these processes had not been covered in historical academic publications. The purpose of this study is to explore the Soviet Union's entry into the international patent licensing system and related organizational, legislative and information measures drawing on the archival documents, including the All-Union Research Institute for State Patent Examination (VNIIGPE), introduced into the academic circuit for the first time, as well as on the published reports of the 1965 meeting of the Committee of Experts on Author's Certificates and the Washington Conference of 1970. The author demonstrates that in the 1950s and 1960s the USSR made the transition from a model of institutional and legal incorporation into international patent-licensing activity to an integration model based on patent cooperation and standardisation, in accordance with international norms. The reason for the slow development of technological cooperation, which hindered the achievement of ambitious goals, was the inertia and internal costs of the Soviet economic and administrative system, which fully affected the development of both models. Ultimately, changes in the international environment and the slowdown of economic development in the USSR in the early 1970s prevented the country from gaining even modest benefits from integration.

Accelerating Patent Examination for Fourth Industrial Revolution Technologies

Accelerating Patent Examination for Fourth Industrial Revolution Technologies

Let’s Talk About Patent Act, 1970

The Patent Act of 1970 is a pivotal legislation that has shaped India’s intellectual property landscape and played a significant role in fostering innovation, technological advancement, and economic growth. This abstract provides an overview of the Patent Act, its historical context, key provisions, and its impact on various stakeholders. The Patent Act, enacted in India in 1970, replaced the outdated and restrictive Patents and Designs Act of 1911. It aimed to align the Indian patent system with global standards while addressing the unique needs and challenges of the Indian economy. The Act provided legal protection for new inventions, encouraging inventors to disclose their innovations and contribute to the public domain in exchange for exclusive rights. One of the pivotal features of the Patent Act, 1970 was the introduction of a “process patent” system, which allowed for the patenting of manufacturing processes, thereby stimulating domestic innovation and entrepreneurship. This system also supported the growth of the pharmaceutical industry by facilitating the production of affordable generic drugs. The Act also introduced certain safeguards and limitations to ensure that patents did not hinder public welfare or create barriers to technological progress. It included provisions for compulsory licensing, enabling the government to authorize the use of patented inventions in specific circumstances, such as ensuring access to essential medicines. This provision balanced the interests of patent holders with the public interest. Furthermore, the Patent Act, 1970 established the Indian Patent Office, responsible for granting and administering patents in the country. It provided a framework for patent examination, opposition, and revocation, ensuring a fair and transparent patent granting process. Over the years, the Patent Act, 1970 has had a profound impact on various stakeholders. It has encouraged domestic research and development, leading to technological advancements and increased competitiveness in sectors such as pharmaceuticals, biotechnology, and information technology. The Act has also facilitated technology transfer and collaboration between Indian and foreign entities, fostering innovation ecosystems and attracting foreign investment. However, the Act has not been without its challenges. Critics argue that certain provisions, such as Section 3(d) related to patentability criteria for pharmaceuticals, may restrict access to essential medicines or discourage innovation. There have been ongoing debates regarding the balance between incentivizing innovation and ensuring affordable access to patented technologies.

Increasing Inventor Diversity: U.S. Public Policy Recommendations

Research has found that women, people of color, and individuals with lower incomes patent inventions at significantly lower rates than their representation in the population. Less than 13 percent of all inventors listed on U.S. patents are women, Black individuals are three times less likely to become inventors than white individuals, and children in families in the top one percent of income are 10 times more likely to patent in their lifetimes than children in the entire bottom half of family income. Research has also found that increasing participation in invention and patenting by under-represented groups would increase annual U.S. gross domestic product by up to $1 trillion, quadruple the number of American inventors, and result in new and different inventions. Public policy can promote equity, inclusion, and diversity in inventing and patenting. In a 2018 article in this journal, we discussed the existing research on disparities in invention and patenting and the role of the U.S. government, educational institutions, and private industry in ensuring women, people of color, and individuals with lower incomes can participate fully in the innovation economy. This article updates and expands on that article by providing specific public policy recommendations to increase equity, inclusion, and diversity in invention and patenting. These recommendations include improving data collection and research to measure and advance equity in patenting; supporting historically under-represented inventors by providing education, legal, and technical assistance and promoting workplace equity; and spotlighting historically under-represented inventors and promoting diversity among patent counsel and patent examiners.

Administrative and Legal Mechanisms of Patent and Licensing Work in the USSR in the First half of the 1960s (on the Materials of the GANO)

The subject of the study is the insufficiently studied problem in the historical and legal science of the state-legal regulation of the processes of patent and licensing activities in the USSR, and especially the administrative and legal mechanisms of the formation of this activity in the first half of the 1960s. It was during this period that the Soviet State began to actively pay attention to the issues of patent protection of industrial products exported and the organization of patent business within the country. The paper investigates archival materials of the Novosibirsk region, which allow describing administrative and legal ways of organizing patent work on the example of the West Siberian State Farm. The purpose of the study is the analysis of administrative and legal acts of state authorities of the USSR of 1961-1965, which allows to expand the range of knowledge about the organization of patent and licensing activities in the USSR, to identify its rational elements, which in the future could be used in modern conditions in an updated form. In the course of the study, the formal legal method, traditional for historical and legal science, was used, which allowed interpreting the content of the legal prescriptions under study by describing the norms of law, establishing legal signs of patent and licensing activities in the period under study. System-structural methods of analysis made it possible to isolate the elements of the organizational and legal structure of patent and licensing work in the USSR in the first half of the 1960s. The analysis of the sources allowed the author to conclude that in 1960-1965 in the USSR there was the formation of a system of patent and licensing work, the main purpose of which was the protection of state interests in the field of invention. The organizational basis of the activity consisted of patent divisions of research institutes, patent examination groups, as well as patent divisions of enterprises and organizations. The main mechanisms of the organization of patent and licensing activities were based on the directive and instructional provisions of the Committee for Inventions and Discoveries of the USSR.

IP dLedger - Decentralized ledger for intellectual property administration

With the rapid growth of big data, the applications of intellectual property (IP) rights and prior art documents are increasing rapidly. Patent examiners are usually overworked to evaluate inventions referring to a large volume of prior arts in a short period. Such increasing workloads and documents may cause administrative inefficiencies and generate low-quality IPs that hamper technological innovation. Moreover, today's centralized IP administration system is inefficient in processing speed, security, and cost. Inefficiencies of IP administration in each national IP office impede speedy and efficient cooperation for international application and registration. This study proposes an IP decentralized ledger (IP dLedger) based on the blockchain to significantly reduce IP administration costs and improve IP use. IP dLedger connects the on-chain (blockchain) to the off-chain (centralized database) systems using IP codes that combine hash values and timestamps. Similar to the web hypertext method, this connective feature of IP dLedger enables users who click on identification information registered in a blockchain network to access, through a hyperlink, a centralized database of enormous volumes of related IP information. Therefore, IP dLedger can reduce IP administration costs, increase IP usage, and facilitate safe and convenient use of the IP data.

Careers 2022

Physics careers are often spoken of as a binary—academia or industry. But the public sector offers many rewarding careers: national lab researcher, patent examiner, policy adviser, and more. This year Physics Today highlights physicists’ opportunities and experiences in government. Scroll down to see the best of our past content on other career paths. Featured online […]

Knowledge contribution from science to technology in the lithium-ion battery domain based on a genetic model

Lithium-ion batteries' scientific and technological innovation is a hotspot in the energy storage field. Scientific knowledge has a significant effect on technology innovation in lithium-ion batteries. Understanding how science contributes to the technology in the lithium-ion battery domain could make better use of scientific knowledge to promote technology innovation. Previous studies about lithium-ion battery innovation have provided valuable suggestions while they did not explore how science contributes to the technology in the lithium-ion battery domain. Moreover, most previous studies about relationships between science and technology ignored multi-step indirect citations, which might have caused information loss. Therefore, this study uncovers the knowledge contribution from science to technology in the lithium-ion battery from a more comprehensive view by proposing a paper-patent knowledge genetic model and related indexes which could measure the knowledge contribution effect of both direct and multi-step indirect citations. The findings are: (1) In the lithium-ion battery domain, the indirect citation relationships from science to technology contain information, and they should be noticed. The total knowledge contribution range of science to technology is twice the direct knowledge contribution range, and the total knowledge contribution strength is five times the direct knowledge contribution strength; (2) In the lithium-ion battery domain, the knowledge contribution of science to technology is mainly concentrated within five steps of the knowledge flow. When consulting relevant materials related to scientific papers, patent applicants or patent examiners can obtain data collections of relevant papers through the five-step snowball sampling method to avoid information redundancy and guarantee relatively sufficient reference materials; (3) This study unearthed the top ten papers ranked by total knowledge contribution strength. Most papers are generally highly recognized by the academic community, and most are easily ignored by the traditional method. The knowledge contribution strength index can be used to evaluate papers and predict significant award winners in the lithium-ion battery domain.

A quantitative metric for research impact using patent citation analytics

A new metric for Research Impact index is presented using only X-type and Y-type patent examiner citations cited during prosecution of patents where the patent family must have at least one US patent family member, where the citations are de-duplicated (to remove double counting associated with duplicate Patent Examiner citations from different jurisdictions when examining the same invention), and where the citations are for both non-patent publications and patent publications, where academics are, respectively, the authors and inventors. The quantitative outcomes are demonstrated using a 10-year dataset of 22,255 publications from the Faculty of Engineering and IT at the University of Technology Sydney.

Priority procedures for medicaments: a demonstrated tool to expedite the examination of relevant patents to public health

The delay in analyzing patent requests from the pharmaceutical area in Brazil and some vagueness in Brazil's Intellectual Property Law lead to a longer validity of many medicine patents, inhibiting generic drugs from being available in Brazil. Therefore, this investigation aims at: a) analyzing the effectiveness of priority procedures in patent processes requested by the Ministry of Health (Ministério da Saúde, MS) as a tool to make analyses faster; and b) assessing any synergy in the co-operation of MS, the National Institute of Industrial Property and the National Health Surveillance Agency, which decreased the necessary time to finish the analysis in both institutions.

The Tenuous Relationship Between Working From Home and Job Performance

The COVID-19 crisis has led to massive increases in working from home (WFH), compelling many individuals to telecommute in challenging circumstances. Further, the strong emphasis on WFH is likely to continue after the pandemic. In this study, we examine the impact of WFH on job performance before and during the COVID-19 crisis. Using longitudinal data on patent examiners at the United States Patent and Trademark Office, we assess the WFH efficacy under various conditions, such as self-selection into WFH, degree of WFH, transition to a WFH mandate, and the passage of time during that mandate. Results show an overall detrimental impact of the WFH mandate on job performance. Even individuals who initially opted into WFH can suffer job performance reduction when circumstances worsen and presumably due to prior expectations for the WFH setting being unmet. However, we also find that such performance decline begins to recover over time, suggesting individual and organizational learning. Although the pandemic is an extreme example of unfavorable circumstances, our study suggests a more tenuous relationship between WFH and job performance than emerges in literature generally focused on voluntary WFH and favorable context.

Optimization of channels and I-shaped bended closed profiles with perforated walls

The article presents a continuation of the optimization of channel and I-shaped bended closed profiles (BCP) with tubular flanges and perforated walls made of rolled sheet products of both equal and different thicknesses. Such profiles are designed for light steel thin-walled structures (LSWS), which are distinguished by improved technical and economic indicators and mass demand in industrial and civil construction, which confirms the relevance of their further development. The purpose of the study is to show that the characteristics of LSWS can be further improved by shaping profiles, combining straight and round outlines of closed and open contours in a composite section, including their perforation. Through experimental design studies, solving optimization problems and variant design of the BCP, their design sections with a maximum margin of bending strength with a minimum mass have been refined. The originality of technical solutions is confirmed by patent examination. The channel BCP has extreme weight and strength with a relative height of cutouts in the wall of 1/1.87 and a ratio of width and height dimensions of 1/4.32. When the thickness of the shelves is 2 times the wall thickness, the strength and mass of the I-shaped BCP are extreme at a relative height of cutouts of 1/1.23 and a ratio of dimensions of 1/4.17, and when the thickness of the shelves is 0.6 of the wall thickness, the strength and mass of the BCP are extreme with a cutout height of 1/1.73 and a size ratio of 1/5.22. If the thicknesses of the shelves and the wall are equal, then the strength and mass of the BCP is extreme at a cutout height of 1/1.46 and a size ratio of 1/3.17.

Overcoming inefficiencies in patent licensing: A method to assess patent essentiality for technical standards

The market for patent licenses, despite its paramount importance for technological innovation, has various inefficiencies. A particular problem with widely used technical standards such as LTE and Wi-Fi is the lack of information regarding which patents are “essential” to implement the standard. This information is crucial because it simplifies determining infringement and implies specific “FRAND” licensing rules. While many standards-developing organizations stipulate that such patents are explicitly declared, little is known about which are actually essential. The absence of publicly available information on essentiality incurs significant social costs due to the resulting friction in the licensing market. With the growing use and importance of standards to mobility and energy markets, and to the Internet of Things, these costs are likely to rise. Responding to calls from industry, courts and policymakers, commercial and academic studies have attempted to assess essentiality, but they all have limitations. This paper reports on the technical feasibility of a system of expert assessments for patent essentiality. Based on a factorial design, we conducted a field experiment with 20 patent examiners performing over 100 assessments. Comparing the outcomes to a high-quality reference point shows that sufficiently accurate expert assessments, at a price level that allows large scale testing, are technically feasible, and we identify routes to further improvement.

An Empirical Analysis of Patent Citation Relevance and Applicant Strategy

Patent examination should ensure that only novel and nonobvious technologies are patented. This evaluation requires comparing the invention to technologies described in public documents—called “prior art.” Examiners and applicants have obligations to cite known prior art that is material to whether the patent is issued. Beyond documenting examination, citations are used as metrics in a significant body of research. The importance of citations as a predictive metric rests on the assumption that they provide evidence of continued development in the relevant field. Research indicates that some citations are, however, made for reasons beyond technological similarity. This undermines the notion that citations show continued growth of a technology. We analyze this assumption—and correct for inaccuracies—by employing similarity metrics to characterize the “relatedness” of technologies described in two patent documents (i.e., citing and cited references). To this end, we use a “Jaccard Index” to quantify textual similarity—and thus technological relatedness—of two documents. Using this method, we empirically analyze strategic behaviors in patent law that were previously only theoretically described in the literature. For example, some patent applicants “bury” relevant references—submitting many irrelevant references and a few relevant ones to hinder review of the important ones. Our Jaccard Index analysis is the first to empirically evaluate whether this practice benefits the applicant. Moreover, we improve upon patent value and grant rate analyses and demonstrate that citation relevance has a significant impact above and beyond a count of citations made.

화상디자인 특허 심사를 위한 분류체계 현황과 개선방안 연구

화상디자인 특허 심사를 위한 분류체계 현황과 개선방안 연구