Thursday, November 19, 2009

Concerning citations, SSRN, oppositions and Graham

In a comment to the IPBiz post Does the US need European style oppositions? , Stu Graham correctly points out that the full article by Graham and Harhoff can be downloaded at the link provided by the 271Blog. An issue with things posted on SSRN is that they can be later removed ("Sikahema'd"), for example, if the authors publish in a journal that prohibits internet posting (recall Dan Hunter's "Walled Gardens," although in that specific case the journal later changed its policy. On open databases and SSRN, see for example, Pearl Goldman, Legal Education and Technology II: An Annotated Bibliography, 100 Law Libr. J. 415 (2008); Olufunmilayo B. Arewa, OPEN ACCESS PUBLISHING AND THE FUTURE OF LEGAL SCHOLARSHIP: OPEN ACCESS IN A CLOSED UNIVERSE: LEXIS, WESTLAW, LAW SCHOOLS, AND THE LEGAL INFORMATION MARKET, 10 Lewis & Clark L. Rev. 797 (2006) ).

Of relevance on the citation business is the list of references given by Graham and Harhoff, which is provided below. Also of relevance is Stuart Graham's individual interest as co-author.

Of the citation list, one will NOT find reference to papers UNFAVORABLE to the authors' position, such as "PAST AS PROLOGUE FOR PATENT REFORM: EXPERIENCE IN JAPAN WITH OPPOSITIONS SUGGESTS AN ALTERNATIVE APPROACH FOR THE U.S. (Dale L. Carlson and Robert A. Migliorini, 88 J. Pat. & Trademark Off. Soc'y 101, February 2006). One WON'T find papers unfavorable to post-grant review/opposition, such as "PATENT REFORM 2005: HR 2795 AND THE ROAD TO POST-GRANT OPPOSITIONS," (Christopher L. Logan, 74 UMKC L. Rev. 975 (2006)). One WON'T find published papers by lawyers unfavorable to oppositions, such as "Post-Grant Opposition: Building on Sand," (Joseph Hosteny, Intellectual Property Today, August 2004, page 8), "Dear AIPLA: Keep Our Message Consistent," (Joseph Hosteny, Intellectual Property Today, October 2004, page 24), or by LBE.

Of the citation list, one WILL FIND citations to earlier work of the authors, such as Graham, S.J.H., B.H. Hall, D. Harhoff and D.C. Mowery (2003). “Post-Issue Patent Quality Control:
A Comparative Study of US Patent Re-Examinations and European Patent Oppositions,” in: W.M.
Cohen and S.A. Merrill (eds.), Patents in the Knowledge-Based Economy. The National Academies
Press, Washington, D.C., 74-119.
Graham, S.J.H. and D.C. Mowery (2004). “Submarines in Software? Continuations in US Software
Patenting in the 1980s and 1990s,” Economics of Innovation and New Technology 13(5): 443-56.
Hall, B.H. and D. Harhoff (2004). “Post Grant Review Systems at the US Patent Office – Design
Parameters and Expected Impact,” Berkeley Law Technology Journal, 19 (3), 989-1016.
Hall, B.H., S.J.H. Graham, D. Harhoff and D.C. Mowery (2004). “Prospects for Improving US Patent
Quality via Post-grant Opposition,” in A.B. Jaffe, J. Lerner and S. Stern (eds.), Innovation Policy and
the Economy, 4, 115-143.


The point in the previous IPBiz post was that Mr. Zura did not mention the earlier advocacy by the authors ["Mr. Zura neglects to mention Professor Harhoff's PREVIOUS pushing of an opposition procedure for the US. " ], not that the authors themselves were not performing self-citation to themselves and assorted co-authors. The point in the previous IPBiz post ("where's the full paper?") was in major part an inquiry about where in the legal literature the paper appears. Just about anybody can put anything on SSRN. "It don't impress me much."

One does note that the reference list includes articles by Bessen, Quillen, and Lemley.

The references of the paper on SSRN titled Separating Patent Wheat from Chaff: Would the U.S. Benefit from Adopting a Patent Post-Grant Review? -->


Adamo, K.R. (1981). “Patent Reexamination.” Chicago-Kent Law Review, 58, 59-88.
American Intellectual Property Law Association (2004). AIPLA Response to the October 2003
Federal Trade Commission Report: 'To Promote Innovation: The Proper Balance of Competition and
Patent Law and Policy.' AIPLA: Washington, D.C., 1-4.
American Intellectual Property Law Association (2009). Report of the Economic Survey 2009. AIPLA:
Washington, D.C, 4.
Allison, J.R. and M.A. Lemley (1998). “Empirical Evidence on the Validity of Litigated Patents.”
AIPLA Quarterly Journal 26(3), 185-275.
Allison, J.R., M.A. Lemley, K.A. Moore, and R.D. Trunkey (2004). "Valuable Patents."
Georgetown Law Journal, 92, 435-479.
Barton, J.H. (2000). “Reforming the Patent System.” Science 287: 1933-1934.
Baxendale, S.E. (1995). “Growing Pains for the Board of Patent Appeals and Interferences: A Plan
for Resorting Judicial Independence.” The John Marshall Law Review, 29, 171-202.
Bessen, J. and M.J. Meurer (2006). “Patent Litigation with Endogenous Disputes.” American
Economic Review, 96(2), 77-81.
Bessen, J. and M.J. Meurer (2008). Patent Failure: How Judges, Bureaucrats, and Lawyers Put
Innovators at Risk. Princeton University Press: Princeton, NJ.
Chin, R. (2002). “Youngster Gets into the Swing of the Patent Process.” St. Paul Pioneer Press, May
5.
Chu, C.A. (2001). “Empirical Analysis of the Federal Circuit's Claim Construction Trends.” Berkeley
Technology Law Journal (16), 1075-1100.
Cooter, R. and D. Rubinfeld (1989). “Economic Analysis of Legal Disputes.” Journal of Economic
Literature, (27), 1067-97.
Farrell, J. and R.P. Merges (2004). “Incentives to Challenge and to Defend Patents: Why Litigation
Won’t Reliably Fix Patent Office Errors and Why Administrative Patent Review Might Help,”
Berkeley Technology Law Journal, 19 (3), 943-970.
Farrell, J. and C. Shapiro (2008). How Strong are Weak Patents?, American Economic Review 98 (4),
1347-1369.
Gilbert, R. and C. Shapiro (1990). "Optimal Patent Length and Breadth." The RAND Journal of
Economics, 21(Spring), 106-112
Graham, S.J.H., B.H. Hall, D. Harhoff and D.C. Mowery (2003). “Post-Issue Patent Quality Control:
A Comparative Study of US Patent Re-Examinations and European Patent Oppositions,” in: W.M.
Cohen and S.A. Merrill (eds.), Patents in the Knowledge-Based Economy. The National Academies
Press, Washington, D.C., 74-119.
Graham, S.J.H. and D.C. Mowery (2004). “Submarines in Software? Continuations in US Software
Patenting in the 1980s and 1990s,” Economics of Innovation and New Technology 13(5): 443-56.
Hall, B.H. and D. Harhoff (2004). “Post Grant Review Systems at the US Patent Office – Design
Parameters and Expected Impact,” Berkeley Law Technology Journal, 19 (3), 989-1016.
Hall, B.H., S.J.H. Graham, D. Harhoff and D.C. Mowery (2004). “Prospects for Improving US Patent
Quality via Post-grant Opposition,” in A.B. Jaffe, J. Lerner and S. Stern (eds.), Innovation Policy and
the Economy, 4, 115-143.
Hall, B.H., A. Jaffe, and M. Trajtenberg (2001). "The NBER Patent Citations Data File: Lessons
Insights and Methodological Tools." NBER Working Paper 8498.
Harhoff, D. and M. Reitzig (2004). “Determinants of Opposition against EPO Patent Grants – The
Case of Biotechnology and Pharmaceuticals,” International Journal of Industrial Organization, 22 (4),
443-480.
Harhoff, D., F.M. Scherer, and K. Vopel (2003). "Citations, family size, opposition and the value of
patent rights." Research Policy, 32(8), 1343-1363.
Heller, M.A. and R.S. Eisenberg (1998). "Can Patents Deter Innovation? The Anticommons in
Biomedical Research." Science, 280(5364), 698-701.
Jaffe, A.B. and J. Lerner (2004). Innovation and Its Discontents: How Our Broken Patent System is
Endangering Innovation and Progress, and What to Do About It. Princeton, NJ: Princeton University
Press.
Jensen, P.H., Palangkaraya, A. and Webster, E. (2006). “Disharmony in international patent office
decisions”, Federal Circuit Bar Journal, 15(4), 679-704.
Jolls, C., C.R. Sunstein, and R. Thaler (1998). "A Behavioral Approach to Law and Economics,"
Stanford Law Review, May: 1530-1531.
Kahn, A. (1940) "Fundamental Deficiencies of the American Patent Law." The American Economic
Review, 30(3), 475-491
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empirical literature,” Annales d’Economie et de Statistique, 49/50, 223-246.
Lanjouw, J.O. and M. Schankerman (2001), ''Characteristics of patent litigation: a window on
competition.'' RAND Journal of Economics, 32(1), 129-151.
Lemley, M.A. and C. Shapiro (2004). "Probabilistic Patents." Journal of Economic Perspectives,
19(2), 75-98.
Levin, J. and Levin, R. (2004). “Patent Oppositions,” in ed. R. Arnott, B. Greenwald, R. Kanbur, and
B. Nalebuff (eds.), Economics for an Imperfect World: Essays in Honor of Joseph Stiglitz. MIT Press:
Cambridge, MA.
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Merges, R.P. (1999). "As Many as Six Impossible Patents before Breakfast: Property Rights for
Business Concepts and Patent System Reform." Berkeley Technology Law Journal (14), 577-603.
Meurer, M.J. (1989). “The settlement of patent litigation,” Rand Journal of Economics, 20(1), 77-91.
Mowery, D.C. and N. Rosenberg (1993). "The U.S. National Innovation System." In R.R. Nelson, ed.
National Systems of Innovation. Oxford: Oxford University Press.
National Research Council (2003). Patents in the Knowledge-Based Economy. S.A. Merrill and W.
Cohen, eds. Washington, D.C.: National Academies Press.
National Academies (2004). A Patent System for the 21st Century. S.A. Merrill, R.C. Levin, and M.B.
Myers, Eds. Washington, D.C.: National Academies Press.
Orey, M. (2006). “The Patent Epidemic: It's wasting companies' money and slowing the development
of new products.” BusinessWeek, January 9.
Quillen, C. (2006). “Innovation and the U.S. Patent System,” Virginia Law & Business Law Review,
1(2), 208-237.
Shang, R. (2009). “Inter Partes Reexamination and Improving Patent Quality.” Northwestern Journal
of Technology and Intellectual Property, 7, 185-209.
Shapiro, C. (2004). “Patent system reform: economic analysis and critique.” Berkeley Technology Law
Journal, 19:3, 1017-1047.
Somaya, D. (2003). "Strategic determinants of decisions not to settle patent litigation." Strategic
Management Journal, 24(1), 17-38.
US Patent and Trademark Office (2003). The 21st Century Strategic Plan. USPTO: Washington, D.C.,
6-14.
US Federal Trade Commission (2003). To Promote Innovation: The Proper Balance of Competition
and Patent Law and Policy. Federal Trade Commission: Washington.
Ziedonis, R.H. (2004). "Don't Fence Me In: Fragmented Markets for Technology and the Patent
Acquisition Strategies of Firms." Management Science, 50(6), 804-820.

***Also

Electronic Frontier Foundation (EFF) Advisory Board Edition: 19 men, 2 women.

***Also

Gallagher's Book Review on SSRN of Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk

1 Comments:

Blogger Stu Graham said...

Mr. Ebert is correct on several points here - the problem of SSRN downloads is one that vexes the free flow of scholarship, but it is often the case that once a piece is published, and restricted, a working paper can often be found in some depository, somewhere, by using Google Scholar. Ebert also points correctly to what is included and not included in our references. I intend to read the citations to which he points (thank you), and if relevant they will find their way into the final published version. While I cannot speak for Harhoff, I can say that I do not consider myself an "advocate" for an opposition system. That said, my study of the topic has convinced me that, on balance, a relatively inexpensive system would do more good than harm. Are there individuals and groups that would be worse off - certainly. But, as said, my conclusion is based on the wider social welfare. We have a unitary system, and for better or worse the moving of any policy lever will have differential effects. But will the innovation system as a whole be better off? My study has led me to believe that it could be - but note the caveats in the paper, and the circumstances under which it would be undesirable and, in balance, more harmful. I would certainly not be an advocate of that outcome.

12:09 PM  

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