Another law professor fails to shepardize
The persistent failure of legal academics to shepardize their sources is manifested in a paper by Lee Petherbridge, who apparently hasn't checked on current papers about the patent grant rate approach of Quillen and Webster. The irony of course is that the legal academics criticize the USPTO for not finding (and applying) prior art when the legal academics themselves demonstrate their inability to find prior art.
Footnote 45 of "Positive Examination," 46 Idea 173, states:
n45 Because patent examination procedure is effectively structured
such that an applicant is entitled to a patent unless the office can prove that
the statutory standards are not met, the reality is perhaps less like
haphazardness or randomness an more like an automatic green light to patentability
reminiscent of a registration, rather than examination, system. Recent studies
indicate that where applicants vigorously pursue applications, patents are highly
likely to issue. One recent study reports that when applicants are prepared to
pursue applications all the way, that is they are prepared to file
continuation applications, continuations-in-part, and divisional applications, the
Patent Office eventually issued patents at least 85 percent and perhaps as
high as 97 percent of the time. Cecil D. Quillen & Ogden H. Webster, Continuing
Patent Applications and Performance of the U.S. Patent and Trademark Office,
11 Fed Cir B.J. 1, 12, 17 (2001). In a follow up study, designed to refine the
number of issues by accounting for patents that issue from the same disclosure,
e.g. where a patent issues from both a parent application and a continuing
application, the authors found the issue rate to be 83 percent. Cecil D. Quillen, Ogden H. Webster, & Richard Eichman, Continuing Patent Applications and
Performance of the U.S. Patent and Trademark Office, 12 Fed. Cir. B.J. 35, 38, 54
(2002).
**
An email was sent to Professor Petherbridge on June 20 at 8am (eastern:
I am curious why your footnote 45 cites the second paper by Quillen et al., but not the various papers showing why the approach in the second paper is incorrect.
No response has been by Professor Petherbridge as of June 23.
Separately, other papers on "patent grant rate" that also bear watching:
88 JPTOS 426 (May 2006)
15 (4) Fed. Cir. Bar J. 635 (2006)
Footnote 45 of "Positive Examination," 46 Idea 173, states:
n45 Because patent examination procedure is effectively structured
such that an applicant is entitled to a patent unless the office can prove that
the statutory standards are not met, the reality is perhaps less like
haphazardness or randomness an more like an automatic green light to patentability
reminiscent of a registration, rather than examination, system. Recent studies
indicate that where applicants vigorously pursue applications, patents are highly
likely to issue. One recent study reports that when applicants are prepared to
pursue applications all the way, that is they are prepared to file
continuation applications, continuations-in-part, and divisional applications, the
Patent Office eventually issued patents at least 85 percent and perhaps as
high as 97 percent of the time. Cecil D. Quillen & Ogden H. Webster, Continuing
Patent Applications and Performance of the U.S. Patent and Trademark Office,
11 Fed Cir B.J. 1, 12, 17 (2001). In a follow up study, designed to refine the
number of issues by accounting for patents that issue from the same disclosure,
e.g. where a patent issues from both a parent application and a continuing
application, the authors found the issue rate to be 83 percent. Cecil D. Quillen, Ogden H. Webster, & Richard Eichman, Continuing Patent Applications and
Performance of the U.S. Patent and Trademark Office, 12 Fed. Cir. B.J. 35, 38, 54
(2002).
**
An email was sent to Professor Petherbridge on June 20 at 8am (eastern:
I am curious why your footnote 45 cites the second paper by Quillen et al., but not the various papers showing why the approach in the second paper is incorrect.
No response has been by Professor Petherbridge as of June 23.
Separately, other papers on "patent grant rate" that also bear watching:
88 JPTOS 426 (May 2006)
15 (4) Fed. Cir. Bar J. 635 (2006)
posted by Lawrence B. Ebert at 7:57 AM
1 Comments:
As a followup on Oct. 17, 2006, Professor Petherbridge never did respond to my query.
Although he mentioned the idea of refinement: In a follow up study, designed to refine the number of issues by accounting for patents that issue from the same disclosure, e.g. where a patent issues from both a parent application and a continuing application, the authors found the issue rate to be 83 percent. Cecil D. Quillen, Ogden H. Webster, & Richard Eichman, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 12 Fed. Cir. B.J. 35, 38, 54 (2002) Petherbridge did NOT mention that QW published grant rates in excess of 100% in the 2006 article in Fed. Cir. B.J.
Separately, IPBiz has not found the article on continuations by Debra Koker mentioned in Quillen's comments to the USPTO on the proposed rule change for continuing applications.
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