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Patents in the Knowledge-Based Economy
increase in empirical detail and analyzes its impact on the quality of patent examination.
Drafting a patent application is a rigorous exercise in technical language that must accommodate the technology underlying the invention, its commercial significance, and relevant statutory and case law. Patent examiners, who read the applications and ultimately decide whether to allow a patent award, must have at least a basic understanding of these and other factors. A skilled staff of patent examiners with adequate training and resources is essential to maintain the validity of patents that issue according to their decisions. The recent rise in patenting activity raises the question of whether patent examiners have adequate resources to fulfill their increased examination responsibilities in a thorough and timely way.
The main contribution of this study is to present data that quantitatively assess the effect of increasing application workloads on the recent examination performance of the U.S. Patent and Trademark Office (USPTO). The study presented in this chapter provides descriptive data about various features of patent examination, largely drawn from detailed Time and Activity Reports of examiners maintained by the USPTO. This data set and information about patent institutions allow inferences about changes in the quality of patent examination. Allison and Lemley (1998) and Jaffe (2000) discuss trends in increasing patenting activity over the past two decades, and Merges (1999) discusses the possible ramifications on patent litigation and incentives to innovate when patent examination standards are unevenly applied. This study extends the empirical analysis of patenting trends in a way that directly addresses issues raised in connection with standards of patent examination.
In addition, this chapter presents results of multivariate regression analysis indicating the correlation between measures of examination quality and areas of policy concern, such as patent litigation and incentives for inventors. Although patent examination is only one element in the complex landscape of intellectual property rights, it is a subject with important implications and one that is amenable to empirical analysis.
Careful patent examination reduces the need for courts to review patent agency decisions in the eventuality of a patent dispute. Hypothetically, a “perfect” patent agency would never issue a patent that was later found invalid in a court of law. In addition, the scope of issued patents would be extremely clear, providing an easy test—and strong deterrent—for infringement should a dispute arise. Approved claims would be broad enough to reward inventors of significant discoveries but sufficiently narrow to allow patents on competing inventions or further improvements. Conversely, factors that constrain the quality of patent examination cause a divergence of patent agency decisions from the determination a court would make if presented with the same facts. This divergence obscures the true strength of a patent in court. A reduction in the quality of patent