Patent Office Examiners Research Articles

Patent Screening, Innovation, and Welfare

Abstract Critics claim that patent screening is ineffective, granting low-quality patents that impose unnecessary social costs. We develop an integrated framework, involving patent office examination, fees, and endogenous validity challenges in the courts, to study patent screening both theoretically and quantitatively. In our model, some inventions require the patent incentive while others do not, and asymmetric information creates a need for screening. We show that the endogeneity of challenges implies that courts, even if perfect, cannot solve the screening problem. Simulations of the model, calibrated on U.S. data, indicate that screening is highly imperfect, with almost half of all patents issued on inventions that do not require the patent incentive. While we find that the current patent system generates positive social value, intensifying examination would yield large welfare gains. The social value of the patent system would also be larger if complemented by antitrust limits on licensing.

Patenting Fast and Slow: Examiner Rejections and Applicant Traversals to Non-Prior Art Rejections

It is no secret that some Patent and Trademark Office (PTO) examiners operate more quickly than others. Previous studies have shown that an applicant’s ability to obtain a patent is inexorably linked to the random assignment of a patent examiner. However, not all patent examiners are created equal. Some patent examiners allow patent applications quickly within just one or two Office Actions resulting in only a few months of substantive patent prosecution. In contrast, other patent examiners constantly reject patents applications, which can result in unnecessarily delaying prosecution and years of substantive patent prosecution. This study focuses on how different examiners use prior art rejections to prolong or compact prosecution. This study demonstrates how two different populations of patent examiners (slow vs. fast) can achieve and even exceed their production goals by either an allowance or rejection strategy. The allowance strategy relies on granting a large number of applications with only a few rejections and usually within one or two office actions. The rejection strategy relies on rejecting a large number of applications using a wide variety of different rejection types. Unlike many studies, this is the first paper that evaluates patent quality based on individual examiner characteristics at the patent prosecution level focused on non-prior art rejections. In particular, high volume biotechnology examiners reject applications based mainly on obviousness type double patenting and indefiniteness rejections, while issuing fewer obviousness or anticipation type rejections. In contrast, low volume examiners reject applications based mainly on obviousness rejections. Furthermore, number of pages in the low volume examiners’ office actions are more than three times more than high volume examiners. Thus, low volume examiners are writing longer office actions and rejecting based on a wide variety of statutory authorities, while high volume examiners are writing shorter office actions based mainly on obviousness type double patenting issues. We find that different types of examiners use different strategies to maximize their “counts” in order to keep their production numbers high. Specifically, low volume examiners will generally reject applications creating lengthy prosecution histories while forcing the applicant to narrow claims. In contrast, high volume examiners will usually only make one rejection then allow the case, thus creating a small prosecution history with only small amendments to the claims. This results in a dramatic range of patent prosecution times as well as a large difference in claim scope. Slow examiners take approximately 5.85 years to issue a patent while fast examiner only take approximately 1.64 years. The added four years of prosecution greatly increases direct costs to the inventor (both in PTO and attorney fees) as well as indirect costs such as reduced growth in employment, sales and follow on innovation. Finally, there may be harms to not only the inventor, but to rivals in the form of diminished access to external capital and slower growth of follow on innovation.

Patent, Screening, Innovation and Welfare

Critics claim that patent screening is ineffective, granting low-quality patents that impose unnecessary social costs. We develop an integrated framework, involving patent office examination, fees, and endogenous validity challenges in the courts, to study patent screening both theoretically and quantitatively. In our model, some inventions require the patent incentive while others do not, and asymmetric information creates a need for screening. We show that the endogeneity of challenges implies that courts, even if perfect, cannot solve the screening problem. Simulations of the model, calibrated on U.S. data, indicate that screening is highly imperfect, with about forty percent of all patents issued on inventions that do not require the patent incentive. While we find that the current patent system generates positive social value, intensifying examination would yield large welfare gains. The social value of the patent system would also be larger if complemented by antitrust limits on licensing.

A comparative analysis of the Australian Patent Office's examination of biotechnology reach-through patent claims

In an earlier study we analysed how the United States Patent and Trade Mark Office, the European Patent Office and the Japan Patent Office (jointly referred to as the 'Trilateral Offices' or TOs) assessed reach-through patent claims in biotechnology, under the requirements of 'utility', 'written description' and 'enablement' (as they are referred to in the US). We found that any claim that was a reach-through claim was assessed to be invalid by the TOs, and therefore filtered out from grant. This study analyses how the same claims from the TOs' study are assessed by the Australian Patent Office (APO), under the equivalent Australian requirements of 'manner of manufacture and description of use', 'clarity, succinctness and fair basis', and 'full description and best method'. We find that under Australian practice not all types of reach-through claims are filtered out from grant of a patent. This suggests that one or other of the patent offices is applying the wrong standard in examination of these claims. In our view, the examination standard applied by the APO is too lenient. The Australian legislation should be reformed by adopting patentability requirements that mirror the utility, written description and enablement requirements of the TOs.

Why weak patents? Testing the examiner ignorance hypothesis

There is a widespread impression, reflected in recent legislation, that US Patent Office examiners issue many patents of dubious validity, and are insufficiently informed to distinguish these from other valid applications. We address this issue using related application outcomes at the European Patent Office as indicators for patent weakness. We create a proxy for potentially citable prior art using latent semantic analysis of US patent documents, and use this to construct a measure of examiner search effort. We find that US examiners tend to devote more search effort to weaker patents, implying that they can identify a substantial portion of the weak patents that they issue. Why the patent system fails to make better use of examiners' ability to identify weak patents is a question that merits further investigation.

Screening for Patent Quality: Examination, Fees, and the Courts

We develop an integrated framework to study how governments can improve the quality of patent screening. We focus on four key policy instruments: patent office examination, pre- and post-grant fees, and challenges in the courts. We show that there are important complementarities among these instruments, and identify conditions under which they can be used to achieve either partial or complete screening. We simulate the model to study the welfare effects of different policy reforms. We show that intensifying patent office examination, frontloading patent fees and capping litigation costs all generate welfare gains, while replacing examination with a pure registration system reduces welfare.

Canadian Inventors of U.S. Patents: An Empirical Study for the Canadian Ministry of Innovation, Science and Economic Development

In January 2016, the Canadian Ministry of Innovation, Science and Economic Development (the “Ministry”) commissioned this study to gain insight into technological innovation in Canada through the lens of the United States (“U.S.”) patent system. Comprehensive patent data of the sort required to make direct measurements of the Canadian patent system is not yet available in a form that lends itself to direct analysis, in particular patent data and metadata available as bulk downloads. In lieu of this, we use two massive data sets that we have assembled: (1) a dataset containing detailed information about patent prosecution in the U.S. from 1976 to the present, and (2) a dataset containing all federal U.S. patent litigations from 2000 to 2014 that resulted in a published opinion or order. We parsed these two datasets to derive a data subset containing all U.S. patents having at least one Canadian inventor (“Canadian-Contribution” or “CanCon” patents). The detailed information in the CanCon data subset has allowed direct analysis of such variables as inventor nationality (e.g., Canadian), numbers of inventors, application and issuance years, technology areas, assignees, prosecuting United States Patent and Trademark Office (“USPTO”) examiners, prosecuting attorneys, and/or prosecuting law firms. We constructed a comprehensive patent citation graph of all post-1975 patents, and used this graph to determine patent importance within this network using eigenfactor centrality methods. The results of our analyses offer new insights into the inventive behavior of Canadians and owners of patents that co-invent with Canadians. For example, in total there are 170,067 U.S. patents having at least one Canadian inventor. The mean importance of these patents is 1.133, which means that CanCon patents are, on average, 13% more important than the mean importance for all U.S. patents, which is 1.00. By comparison, the mean importance of all U.S. patents having at least one foreign inventor is 0.95, or of slightly below average importance. The technological fields having the largest numbers of CanCon patents tend to involve telecommunications, computers and computer software, pharmaceuticals, molecular biology, chemistry, land vehicles, and the design of furnishings. With respect to patents litigated in U.S. federal courts, CanCon patents are less likely to be the subject of a federal lawsuit, and, those CanCon patents that are litigated tend to be of lower importance than the average for litigated patents.

第9回特許庁審査官との意見交換会

第9回特許庁審査官との意見交換会

A proposed IPC-based clustering method for exploiting expert knowledge and its application to strategic planning

In order to exploit the professional knowledge of the patent office examiners (implied in the IPC assignment) in the clustering process, a modified method (IPC-based clustering) has been proposed and applied to strategic planning. The performance of the proposed method was evaluated by comparison with two existing methods: K-Means and TwoStep of SPSS Clementine using the DB index and Dunn index. Afterwards, the IPC-based clustering (accompanied by link analysis) was applied to a practical domain (strategic planning) using the patent data of thin-film solar cell, so as to understand the possibility of implementing it in the management areas. According to the experimental results, the technical topics have been identified, and suggested strategies for companies have been generated for assisting the decision-making of top management. Finally, in future work the proposed method will be employed to other kinds of patent data to test its performance and applied to other practical domains to examine its feasibility in different management areas.

Patent Term Extension in Japan: Challenges Still Lay Ahead Even After the 2011 Revision

Japan has a patent term extension (PTE) system similar to supplemental protection certificates in Europe and PTEs in the USA; however, the Japanese PTE system is different in many aspects. It is relatively known that it is not so difficult to obtain multiple PTEs, but as a matter of fact it can be challenging. Recently, the Supreme Court of Japan issued important decisions relating to multiple PTEs, followed by revision to the Japan Patent Office's Examination Guidelines. Further, calculation of an extended term is also an issue in obtaining a PTE in Japan, which is different from those of European supplemental protection certificates or US PTE systems. The Japanese court also held an important decision in this regard, particularly, how clinical trial outside Japan may be considered in the calculation of extended patent right. Additional recent court decisions issued in terms of PTE matter are introduced.

Patentability searching for biomaterial and related polymers

The understanding of the technical aspects of biomaterials as well as the understanding of the polymer structures and their characteristics are requirements for a searcher in the field of biomaterials and related polymers. Faced with an increasing number of sources of information, e.g. patents, non-patent literature, internet citations, internal databases, external databases, patent office examiners are challenged with the constant need to develop a search strategy in order to achieve the most efficient and complete search. Thoroughness and persistence are critical when it comes to search in this technical field. It is no exaggeration to say that a good searcher will have to use competitive intelligence tactics, checking new databases, new product announcements and technical literature for evidence or prior art. It is therefore crucial for patent office examiners to structure the way in which they develop their search strategy in the context of this broadening of available public information.

Gene patents: an update for pathologists

The patenting of genetic materials has become a matter of public concern and controversy in recent years, stemming particularly from the patent claims and practices of one company in relation to BRCA1 and BRAC2, the most common mutations for breast cancer. These concerns relate to the potential: (a) increased cost of testing—and the access and equity issues that flow from this; (b) restriction of testing to labs directly associated with the patent-holder; and (c) restrictions on further research and development. As a consequence, on 17 December 2002, the Australian Government asked the Australian Law Reform Commission (ALRC) to conduct an inquiry into the relevant laws, international obligations and practices relating to ‘Gene Patenting and Human Health’. After extensive professional and community consultation, the ALRC’s 700 page report, Genes and Ingenuity (ALRC 99, 2004) was completed in June 2004, and tabled in Parliament in August 2004. The ALRC made 50 recommendations for reform, including amendments to the Patents Act (Cth) to upgrade the burden of proving ‘usefulness’ (utility)—and thus to sharpen the distinction between mere ‘discoveries’ and patentable ‘inventions’—and to provide an express ‘experimental use’ exemption for researchers. The ALRC also recommended a significant upgrading of the skills and resources available to the Patent Office and patent examiners, and called for a far more active and strategic approach by federal and state Governments and Health Departments, in monitoring and challenging patents where appropriate, seeking to preserve the benefits of publicly-funded research, and using their existing legal powers more effectively (e.g., ‘Crown use’ rights and compulsory licences). The ALRC’s findings and recommendations in Genes and Ingenuity have been validated and adopted (expressly or coincidentally) by virtually all of the major international reports that have followed in the last five years, including the OECD’s 2006 Guidelines for the Licensing of Genetic Inventions, and the US Government’s Gene Patenting Task Force in 2009. Remarkably—and despite the topicality, media coverage and continuing public disquiet—the Australian Government has still not responded to the Genes and Ingenuity report. Besides the international reports mentioned above, several other significant developments have occurred in the years following ALRC 99, including the Senate Community Affairs Committee report on’the granting of patent monopolies in Australia over human and microbial genes and non-coding sequences, proteins and their derivatives’ in 2010; a major test of gene patents in the American courts; and a shift in the traditional approach by the US Government under President Obama from its support for the primacy of intellectual property rights towards a more access and equity-based policy.

A Review of Patent Validity Jurisprudence

For over a century, the U.S. patent system has held a presumption of patent validity, based largely on the belief in the quality of the U.S. Patent Office examination system. There are several appellate processes to assert patent invalidity, including the patent reexam process, the federal district courts and the Court of Appeals for the Federal Circuit. Because of the presumption of validity in a patent, a standard that has been held since the time of the Civil War, and because of the adversarial nature of litigation, the bar for challenging patents in the courts has been to provide “clear and convincing” evidence. This standard has provided consistency in the U.S. patent system.A group of patent critics, however, has argued that the bar to show patent invalidity with the “clear and convincing” standard is too high. This group, led by technology industry incumbents, has argued that the “preponderance of evidence” standard should be applied in the courts to invalidate patents, particularly if evidence is introduced after the Patent Office examination process.The present essay critiques the view of the patent critics and argues that the “clear and convincing” standard evolved from a coherent and consistent patent jurisprudence that is important to maintain a healthy functioning patent system. The Patent Act of 1952 maintains that patents have a presumption of validity. The case law from 1874 to the present is consistent on this issue of requiring a higher bar to attack patents. Lowering the burden of proof to challenge patent validity would bias the patent system to the infringer and challenge the presumption of validity. This would have the effect of devaluing patents and harming incentives to innovate. The argument is made that the infringer should have a duty to obtain an “opinion of counsel” to justify an assertion of patent invalidity. In the absence of such a requirement, the infringer has no good faith belief that the patent is invalid and, in fact, no defense from the assertion that the patent is not willfully infringed.The adverse consequences of maintaining a lower standard of proof in patent validity cases are substantial, with infringers and Asian manufacturers as beneficiaries and pharmaceutical companies, universities, market entrants and innovators adversely affected. In combination with a set of recent judicial opinions unfavorable to patent holders, lowering the bar for asserting patent invalidity would provide a sea change in patent law that may hurt the U.S. economy.

Third‐Party Patent Challenges in Europe, the United States and Australia: A Comparative Analysis

Third parties are now playing a key role in the processes leading to the grant, and validation, of patents. This article looks at the key differences between three systems of third‐party challenge, which have the common goal of providing patentees and their competitors with a forum, other than the courts, where issues of patent validity may be challenged and resolved. Those systems are post‐grant opposition before the European Patent Office, pre‐grant opposition in Australia and re‐examination in the United States. Various aspects of the systems are looked at, including an overview of the procedures, avenues of appeal and statistics on their use. Insufficient empirical evidence is available to permit a comprehensive assessment of which system is the most effective; however, the data available do allow some conclusions to be drawn—including the suggestion that one reason for the differences in levels of use of the three systems may be the perceptions of US Patent and Trademark Office examiners and the culture that has built up within the US patent attorney profession. The degree of divergence in the three systems further indicates that more work needs to be carried out if reforms to the procedures are to be based on need rather than supposition.

The Patent Quality Control Process: Can We Afford an (Rationally) Ignorant Patent Offices?

This paper considers patent granting as a two-tiered process, which consists of patent office examination (public enforcement) and court challenges (private enforcement). It argues that, when the patent-holder has private information about the patent validity, (i) a weak patent is more likely to be settled and thus escape court challenges than a strong patent; and (ii) when the economy is suffered from low patent quality problem, a tighter examination by the patent office may strengthen private scrutiny over a weak patent. Both work against Lemley (2001)’s hypothesis of a “rationally ignorant” patent office. The paper also considers other policy instruments. It shows that (i) application fees, used as a tool to deter opportunistic patenting, may crowd out private enforcement but cannot replace public enforcement; and (ii) the usefulness of a pre-grant challenge procedure is subject to several restrictions, including the private challenger’s timing

Ants, Elephant Guns, and Statutory Subject Matter

The U.S. Patent and Trademark Office has been rejecting an increasing number of patent applications in the area of computer-related arts for lack of statutory subject matter under 35 U.S.C. ? 101. Despite the broad definitions of patentable subject matter provided by the Constitution, Patent Act, and Supreme Court, the examining corps of the Patent Office has at various times in the past grafted additional requirements onto the ? 101 determination, including the mental steps inquiry, the machine implementation requirement, the tangible result requirement, and most recently the requirement that the invention be within the technological arts. In an effort to clarify the official Patent Office position on the issue of statutory subject matter in the computer-related arts, an expanded panel of the Board of Patent Appeals and Interferences recently quashed the notion of a separate technological arts inquiry, and the Patent Office subsequently issued interim Guidelines for examination of patent applications for patentable subject matter, paying particular attention to computer-related inventions. The issue is not as complex as the Patent Office's activity suggests. Instead, this paper will demonstrate that the Patent Office is trying to kill an ant with an elephant gun. I will first explain why the question of patentable subject matter for computer-related inventions should be viewed as an ant, or perhaps an anthill. Second, I will explain why the Patent Office's examination Guidelines approach the problem of software patents with a rather unnecessary elephant gun. The examining corps, and even some commentators, often use ? 101 rejections as a way to avoid tackling other policy or practical issues that should be handled through other means. A more interesting and appropriate way to look at these subject matter rejections is as proxies for inquiries that should more appropriately be made under other statutory patentability requirements. Although the Guidelines have explicitly removed the various tests added by the examining corps from the examination analysis, there still remain unnecessary layers of inquiry bound to lead to unsupported rejections. By firing these tests at statutory subject matter, the Patent Office is truly firing an elephant gun to kill an ant. The only way to protect computer-related inventions is to disarm the Patent Office and remove any computer-related invention-specific inquiry from the determination of patentable subject matter.

Decision - Making and Quality in the Patent Examination Process: An Australian Exploration

The quality of patents granted by national patent offices is currently the focus of significant investigation worldwide. The vast majority of this work examines the quality of the end-product of the examination process - the patents themselves. This Working Paper is founded upon the perception that it is equally important to explore the quality of the process that precedes the patent grant - the examination of patent applications by patent office examiners. The Paper argues that an effective way to assess the quality of the process is to consider the decision-making practices adopted by examiners. This perspective rests on the recognition of the importance of decision-making in the patent examination process - decisions made range from establishing search strategies for prior art to the final assessments with respect to novelty and inventive step. This aspect of the process is considered here in the context of work on decisionmaking theories found in psychology. Various models of decision-making are explored in this Paper that may be applied to the patent examination process in order to deepen our understanding of the granting of patents. This Paper represents the start of a decision-focused approach to assessing the quality of the patent system. The models presented here provide a grounding for future, empirical, research into the minutiae of the examination process. A number of approaches for such research rounds out this Paper. Although the discussion of is founded on a description of the processes within IP Australia, any research based on this work will contribute to the optimisation of the patent system globally.

The Case for Registering Patents and the Law and Economics of Present Patent-Obtaining Rules

(Note: this is a substantially revised version of Harvard Olin Working Paper # 415 of May 2003, SSRN Abstract ID # 392202, and includes more detailed discussion of issues including the DOE, willfulness and the Knorr decision, and the FTC Report on patents and antitrust). Critics of the patent system suggest the rules for determining patentability should be stricter, subjecting patents to more scrutiny during Patent Office examination. This Article offers a counterintuitive model system under which patent applications are registered, not examined, to elucidate a new normative view that sees present positive law rules for obtaining patents as primarily operating to minimize social cost, and that accounts for otherwise puzzling aspects of the patent system. This “registration” theory for patentobtaining rules is a companion to the “commercialization” theory for patent-enforcing rules by the same author. This Article shows how these theories together offer a more coherent view of the patent system than the “reward,” “prospect,” and “rent dissipation” theories. This Article further identifies those patentability rules that are essential and those that should be reformed, while revealing inherent registration aspects of our present system and reasons for eschewing reforms presented elsewhere. * The author is 2003-2004 W. Glenn Campbell & Rita Ricardo-Campbell National Fellow and Robert Eckles Swain National Fellow at Stanford University’s Hoover Institution and Associate Professor and 2003-2004 Israel Treiman Faculty Research Fellow at Washington University School of Law. At the time this essay was first presented, he was 2001-2002 and 20022003 John M. Olin Senior Research Fellow in Law, Economics, and Business at Harvard Law School. The author gratefully acknowledges the financial support of the John M. Olin Foundation and the Washington University School of Law. He also gratefully acknowledges contributions from participants in the Fall 2003 Hoover Economics Lunch Seminar, American Law and Economics Association 2003 Annual Meeting, the Harvard Law School Visiting Scholars and Visiting Researchers 2002–2003 Colloquium, the Federal Trade Commission and Department of Justice Antitrust Division 2002 joint hearings on Competition and Intellectual Property, the 2001 Workshop Series of the John M. Olin Program in Law and Economics at the University of Chicago Law School, and the 2002 and 2001 National Lawyers Conventions of the Federalist Society for Law and Public Policy Studies, as well as the more detailed comments provided by Michael Abramowicz, John R. Allison, Kenneth Arrow, John Barton, Bernard Black, Bruce Bueno de Mesquita, Chris Bracey, Lisa English, Richard Epstein, Paul Goldstein, Wendy Gordon, Joseph Grundfest, Robert Hall, Kenneth Judd, Jay Kesan, Edward Lazear, Mark Lemley, Doug Lichtman, Clarissa Long, Jerry Marr, Rob Merges, Michael Meurer, Arie Michelsohn, Pauline Newman, Troy Paredes, Tom Pasternak, Richard Posner, Marco Quina, Randall Rader, Arti Rai, Michael Schwartz, Steve Shavell, Henry Smith, Jay Thomas, Polk Wagner, and John Witherspoon. Please send correspondence to fskieff.91@alum.mit.edu (permanent address).

The Case for Registering Patents and the Law and Economics of Present Patent-Obtaining Rules

The legal rules for determining whether an inventor is entitled to a patent are presently enforced in the first instance by the Patent Office through ex parte examination of patent applications. Critics of various aspects of the patent system suggest that these rules should be ratcheted up in some way, subjecting patents to more scrutiny during Patent Office examination. Departing from existing literature, this paper offers a hypothetical model system under which patent applications are merely registered, not examined, to show how hard look approaches like examination increase social costs over soft look approaches like registration. The paper presents a new normative view of present positive law rules for obtaining patents that sees these rules as primarily operating to minimize social cost, and accounts for otherwise puzzling aspects of the patent system. This theory for the patent-obtaining rules is a companion to the commercialization theory for the patent-enforcing rules presented in prior work by the same author and these together are shown to offer a more coherent view of the patent system than other theories in the literature, such as the so-called prospect and rent dissipation theories. Far from defending the status quo of the present system, the registration theory identifies those rules that are essential and those that should be reformed. The registration theory reveals inherent registration aspects of our present system; and elucidates reasons for eschewing reforms presented elsewhere in the literature and adopting those presented here.

Higher pay urged for patent, FDA examiners

The Pharmaceutical Manufacturers Association urges Congress to enact pay increases for patent examiners and medical reviewers to help cope with growing numbers of biotechnology patent filings and applications for testing new drugs. More resources are needed at the Patent & Trademark Office and at the Food & Drug Administration, Gerald J. Mossinghoff, president of PMA, told attendees of a press briefing held last week in Washington, D.C. There is currently a backlog of about 7600 biotechnology-related patent applications at PTO. In addition, the number of biotechnology patent applications is growing at the rate of about 18% per year. The agency has increased the number of examiners working on biotechnology patent applications, but the processing time for these patents is still about 26 months, compared with an average of about 20 months for all patents. Pay for patent office examiners— particularly senior examiners—is inadequate, says PMA, a situation that has led to frequent departures of biotechnology ...