Patent Analyses in the New Legal Regime of the US Patent Law (original) (raw)
Related papers
SSRN Electronic Journal, 2017
The United States is unique in permitting patent applicants to refile their patent applications as continuation and continuation-in-part applications claiming the benefit of the filing date of a prior application and restart the examination process all over again. Data provided by the USPTO concerning continuing application filings for its fiscal years 1993-1998 reveal that 28.4% of the utility, plant, and reissue (UPR) applications filed in those years were not new or original applications, but were continuing applications claiming the benefit of the filing dates of previously filed applications. Analysis of the data for continuing applications for the USPTO's fiscal years 1993-1998 in conjunction with the USPTO Annual Report statistics for the same fiscal years shows that the number of UPR applications allowed in fiscal years 1995-1998 was 95% of the number of original UPR applications filed in fiscal years 1993-1996. Comparable Allowance Percentages for the European and Japanese Patent Offices were calculated to be 68% and 65%, respectively. A study of the cohort of German patent applications claiming a 1977 priority date had found that only 41.7% of the 1977 German applications became patents. The Grant Rate (allowances divided by total disposals, i.e., the sum of allowances and abandonments) for the USPTO for its fiscal years 1993-1998, corrected for continuing applications, ranges from 87% to 97%, depending on the extent to which prosecution of abandoned applications was continued in refiled applications. Reported Grant Rates for 1995-1999 for the European and Japanese Patent Offices (averaged) are 67% and 64%, respectively. Policy questions resulting from the lack of rigor by the USPTO in its examination of patent applications are discussed. Note: This abstract was prepared by the authors and does not appear with the publication as printed. The text in this .pdf file is the final page proof and is identical to that as published, but the line count on some of the pages may differ.
Corporate science in the patent system: An analysis of the semiconductor technology
Journal of Economic Behavior and Organization, 2012
Corporate scientific publications are often presented as a strategic means for firms to create prior art with the objective to prevent rivals from patenting related inventions. This defensive disclosure strategy has attracted the attention of academic scholars in the field of law, economics and management science. The academic literature has developed different answers to the question why firms engage in defensive publishing at the costs of forgoing the right to exclude third parties from using the invention by applying for a patent. One stream of the literature, mainly put forward by economic scholars, analyzes defensive publishing in the context of patent race models. In these models, the laggard in the race has incentives to publish preliminary results that are not patentable in order to prolong the patent race. Scholars in law and management science consider open disclosure as a complementary strategy to patenting. The latter perspective finds partial confirmation in interviews with patent experts in the corporate sector, while the patent race model is largely rejected by practitioners. Both streams of the literature assume that corporate publications enter the pool of prior art which is relevant to judge the novelty of patent applications at the patent office and that they have the power to block or hinder patent applications. This proposed mechanism behind corporate publications as a means to preempt patents on related technologies so far lacked empirical evidence. This paper provides a first (large-scale) analysis of the effectiveness of corporate scientific publications regarding their power to block rivals' patents. With focus on the semiconductor technology we show that scientific publications by corporations challenge the novelty and the inventive step of patent applications at the European Patent Office (EPO) significantly more than other pieces of prior art. Hence, we show that the mechanism behind the concept of defensive publishing works. Further, detailed information from the EPO patent examination procedure allows us to show that corporate publications threaten the novelty of patent applications in combination with other pieces of prior art, like patents, rather than as standalone documents. This supports the view of practitioners and scholars in law and management science who argue that corporate scientific publishing can be an effective means for firms to protect their freedom to operate if used a complementary part of a firms' overall intellectual property protection strategy. Das Wichtigste in Kürze Wenn Unternehmen technische Informationen außerhalb des Patentsystems publizieren und damit darauf abzielen, Patente für verwandte Technologien zu verhindern, wird das in der einschlägigen Literatur als "defensives Publizieren" bezeichnet. Die wissenschaftliche Literatur gibt verschiedene Antworten auf die Frage, warum sich Firmen entscheiden, Erfindungen zu publizieren statt diese zu patentieren und damit ein temporäres Monopolrecht auf die Erfindung erhalten. Eine Erklärung beruht auf der Analyse des defensiven Publizierens im Kontext von Patentrennen. In solchen Modellen, in denen typischerweise zwei Akteure darum wetteifern, eine Innovation als Erster zu vollenden, um sie dann zu patentieren, stellt defensives Publizieren eine attraktive Strategie für den im Rennen zurückliegenden dar. Wenn dieser seine vorläufigen Fortschritte publiziert, kann der vorneliegende Wettbewerber seine Erfindung nicht als Patent anmelden, da sie nicht mehr innovativ genug ist, und damit verlängert sich das Patentrennen. Eine alternative Erklärung sieht defensives Publizieren als komplementäre Strategie zum Patentieren. Diese Erklärung findet Bestätigung durch Patentexperten aus der Privatwirtschaft sowie durch Wissenschaftler der Rechtswissenschaften und der Betriebswirtschaftslehre. Beide Erklärungen für defensives Publizieren postulieren, dass Publikationen relevant genug sind, um bei der Beurteilung eine Rolle spielen, und dass sie zudem die Macht haben, Patentanmeldungen zu blockieren. Diese Studie unternimmt die erste empirische Analyse, um den postulierten Mechanismus zu untersucht. Am Beispiel von Patentanmeldungen in der Halbleiterindustrie zeigen wir, dass wissenschaftliche Publikationen von Unternehmen dazu in der Lage sind, Patentanmeldungen am Europäischen Patentamt (EPA) zu behindern. Anhand detaillierter Informationen des EPAs zeigen wir weiterhin, dass Publikationen aus der Privatwirtschaft insbesondere in Kombination mit anderen technischen Dokumenten, wie beispielsweise anderen Patenten, Patentanmeldungen blockieren. Dieses Ergebnis stützt die Hypothese, dass das Publizieren von Erfindungen als komplementäre Strategie zum Patentieren Teil einer effektiven Strategie zum Schutz geistigen Eigentums darstellen kann.
Declared essential patents : the US patent system in an international perspective
2016
Firms often collaborate to produce inter-operability standards so that independently designed products can work together. When this process takes place in a Standard Setting Organization (SSO), participants are typically required to disclose any intellectual property rights (IP) that would be infringed by a proposed standard, and asked for a commitment to license their essential IP on fair, reasonable and non-discriminatory terms. This paper describes the IP disclosure process, and provides an overview of a publicly available IP disclosure dataset that the authors have compiled using the archives of thirteen major SSOs. We use these new data to illustrate several major trends in standards development, and to show how “declared essential” patents di↵er from randomly matched patents from the same vintage and technology classes. Declared essential patents receive more citations and are much more likely to be litigated than a typical patent from the same technology class. However, these...
We report the results of the first comparative study of the determinants and effects of patent oppositions in Europe and of re-examinations on corresponding patents issued in the United States. The analysis is based on a dataset consisting of matched EPO and US patents. Our analysis focuses on two broad technology categories -biotechnology and pharmaceuticals, and semiconductors and computer software. Within these fields, we collect data on all EPO patents for which oppositions were filed at the EPO. We also construct a random sample of EPO patents with no opposition in these technologies. We match these EPO patents with the "equivalent" US patents covering the same invention in the United States. Using the matched sample of USPTO and EPO patents, we compare the determinants of opposition and of reexamination. Our results indicate that valuable patents are more likely to be challenged in both jurisdictions. But the rate of opposition at the EPO is more than thirty times higher than the rate of reexamination at the USPTO. Moreover, opposition leads to a revocation of the patent in about 41 percent of the cases, and to a restriction of the patent right in another 30 percent of the cases. Re-examination results in a cancellation of the patent right in only 12.2 percent of all cases. We also find that reexamination is frequently initiated by the patentholders themselves.
Innovation assessment through patent analysis
Technovation, 2001
Indian industry in the 1990s has had to cope both with the liberalization of imports into the country and rapid technological developments and innovations occurring in both product and process technologies. To come up with competitive new products and processes, Indian industry needs to have access to detailed information on technological innovations that it has to compete with. One major method of obtaining such information could be an analysis of Indian patent data. Since such data might signal the kinds of product and processes foreign companies are planning to introduce in India, an analysis of Indian patent data could provide firms with information that could help them with their strategic planning efforts. An analysis of patents accepted by the Indian patent office in the fields Electric Communication Techniques over the last five years is carried with the intention of assessing whether data available in these patent applications would enable Indian firms to accurately assess technological advances and innovations occurring in this sector. It is also compared with data on patents granted by the US Patent Office. Public policy measures that could make Indian patent data more useful for Indian firms are also suggested.
An approach based on patent data
2004
This paper presents three new patent-based indicators of internationalization of technology. They measure the extent of international co-operation in research and the international location of research facilities of multinational firms-i.e., cross-border ownership. These indicators are based on triadic patent data (patent families applied in the US, Europe and Japan), and on the patents granted by the USPTO. They witness both an increasing trend towards the globalization of technology and large cross-country differences in the extent of internationalization. The degree of technological internationalization is higher for small countries and for countries with low technological intensity. Two countries are more likely to collaborate if they are close to each other, if they have a similar technological specialization and if they share a common language.
John Marshall Review of Intellectual Property Law, 2018
See 35 U.S.C.A. § 282 (West 2012) (listing counterclaim of patent invalidity as a defense to a patent infringement action); Devon Curtis Beane, Whose Right Is It Anyway?: The Evisceration of an 7 See discussion infra notes 60-93 and accompanying text. S See How to Get a Patent, USPTO.GOV, http://www.uspto.gov/web/patents/howtopat.htm (last visited March 19, 2018) (discussing in simple terms the requirements to obtain a patent); Devon Curtis Beane, Whose Right Is It An Evisceration of the Infringer's Seventh Amendment Right in Patent Litigation, 2011 U. ILL. L. REV. 1853, 1859 (2011) (explaining the patent process). 9 See 35 U.S.C.A. § 101-123 (West 2012) (detailing the requirements for obtaining a patent); see also How to Get a Patent, USPTO.GOV, http://www.uspto.gov/web/patents/howtopat.htm (last visited March 19, 2018) (discussing in simple terms the requirements to obtain a patent). 10 See Gene Quinn, The Cost of Obtaining a Patent in the US, IP WATCHDOG (April 4, 2015) http://www.ipwatchdog.com/2015/04/04/the-cost-of-obtaining-a-patent-in-the-us/id=56485/ (discussing the intricacies and difficulties in obtaining a patent).
ISSN 1684–5315 © 2006 Academic Journals Review Internet: A place for patent retrieval
2006
Countries design patent laws according to their respective economic interest. Before one files intellectual property one should know the regimes under which his intellectual property is placed. Intellectual properties are always of intense debate. The basic reason for the controversies is due to lack of transdisciplinary approaches to address patent concepts. In this present mini-review, we are presenting some web links that will help any researcher to get acquainted with the rules and regulation of filling an intellectual property of some countries as internet is now viewed as the place form where retrieval of information is possible with in seconds.