Law review article--> 58 Emory L.J. 181 (2008)
LENGTH: 8029 words
The Future of Law, Religion, and the Family A 25th Anniversary Symposium: sponsored by The Center for the Study of Law and Religion Emory University:
Article and Essay: Is the Patent Office a Rubber Stamp?
NAME: Mark A. Lemley* and Bhaven Sampat**
BIO: * William H. Neukom Professor, Stanford Law School; [formerly] of counsel, Keker & Van Nest LLP.
** Professor, Columbia School of Public Health.
We thank Patrick Crosby at xblabs.com for assistance in obtaining the data used in our analyses and John Allison, Ernie Beffel, Miriam Bitton, Colleen Chien, Chris Cotropia, Lawrence Ebert
, Jeanne Fromer, Bill Gallagher, Rose Hagan, Joe Miller, Roberta Morris, David O'Brien, Michael Risch, Kathy Strandburg, two anonymous reviewers, and participants in workshops at Stanford Law School, UMKC Law School, the IP Scholars' Conference, the NYU Conference on Empirical Legal Studies, Microsoft Corporation, and the Advanced Patent Law Institutes in Austin, Texas, and San Jose, California, for comments
on an earlier draft.
IPBiz: Is the Microsoft Corporation thanked for comments on an earlier draft?
LBE did not communicate to Lemley or Sampat about "Rubber Stamp."
An issue from the past was footnote 22 of an earlier law review titled ENDING ABUSE OF PATENT CONTINUATIONS which appeared in the Boston University Law Review [84 B.U.L. Rev. 63 (2004) ] and which said:Cecil D. Quillen, Jr. et al., Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office - Extended, 12 Fed. Cir. B.J. 35, 38 (2002). Quillen and Webster had originally estimated in earlier work that the grant rate was 95%. Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1 (2001). This earlier work was properly criticized for failing to take account of cases in which multiple patents issue from a family of continuation applications. On the other hand, some of the critics made equally unrealistic assumptions - for example, that every continuation filed results in a separate patent. See Robert A. Clarke, U.S. Continuity Law and Its Impact on the Comparative Patenting Rates of the U.S., Japan and the European Patent Office, 85 J. Pat. & Trademark Off. Soc'y 335, 338 (2003) (erroneously assuming that every continuation resulted in a patent and concluding that the grant rate was 75%). The 85% number provided in the revised Quillen et al. study is based on actual data about the applications that issue based on continuations, and reflects the best estimate we have of how often applications mature into patents.
Of course, Robert Clarke never said or wrote that that every continuation filed results in a separate patent.
In the Emory "Rubber Stamp", Clarke appears in footnote 16, which relates to the following text:Counting these multiple patents in the numerator overstates the grant rate. n14 Quillen and Webster, in their revised article, sought to correct for these biases, n15 but others have made the same effort and come out with very different numbers. n16
Because of these complications, no one can agree on how likely it is that an applicant can get a patent. The PTO reports that the rate historically has been about 66%, n17 and that the rate now is only 54%, n18 but their estimate doesn't account for continuations. Considering continuations, Quillen and Webster estimated the rate to be as high as 97% in their original article, n19 but after revising their calculations, dropped that number to 85%. n20 Others, taking account of continuations with different assumptions, find the number to be [p. 185] lower, around 75%. n21 The uncertainty and variation in numbers has led others to make wilder claims, such as that the grant rate is less than 50%. n22
The following footnotes in the Emory "Rubber Stamp" are relevant:
n14. For a nice analysis of the problem, see Bruce A. Kaser, Patent Application Recycling: How Continuations Impact Patent Quality & What the USPTO Is Doing About It, 88 J. Pat. & Trademark Off. Soc'y 426 (2006).
n15. See Quillen et al., Extended, supra note 4, at 38 (adjusting calculations resulted in a revised estimated grant rate of 85%).
n16. See Robert A. Clarke, U.S. Continuity Law and Its Impact on the Comparative Patenting Rates of the US, Japan and the European Patent Office, 85 J. Pat. & Trademark Off. Soc'y 335, 335 (2003) (finding a grant rate of 75%); see also Lawrence B. Ebert, How High Are the Grant Rates at the USPTO?, 86 J. Pat. & Trademark Off. Soc'y 568, 568-69 (2004) (arguing that Clarke's result of a 75% grant rate is more reasonable than Quillen and Webster's revised numbers).
n17. See E-mail to Cecil D. Quillen, Jr., Senior Advisor, Cornerstone Research, from Robert W. Bahr, Senior Patent Attorney, Office of the Deputy Comm'r for Patent Examination Policy (Apr. 22, 2006, 3:31 PM), available at http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp continuation/quillen.pdf (stating that the uncorrected grant rate for the PTO for its fiscal years 1993-1998 is 66%).
n18. See Harold Wegner, The USPTO's 54% Allowance Rate, ipFrontline, Dec. 30, 2006, http://www.ipfrontline.com/depts/article.asp?id=13796&deptid=5 (stating that the PTO announced a 54% allowance rate).
n19. See Quillen & Webster, supra note 4, at 3.
n20. See Quillen et al., Extended, supra note 4, at 38.
n21. See Clarke, supra note 16, at 335; Ebert, supra note 16, at 569; Ron D. Katznelson, Bad Science in Search of "Bad" Patents, 17 Fed. Cir. B.J. 1, 23 fig.2 (2007) (offering a running estimated grant rate of 59%-71% from 2000 through 2005).
n22. See, e.g., Craig Allen Nard, The Law of Patents 34 (2008) (asserting PTO grants patents on 39% of applications); Brief of the Boston Patent Law Ass'n as Amicus Curiae in Support of Genentech, Inc., on the Merits at 5, Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (No. 05-608) (stating that only about 50% of applications become patents); Erik Belt, Medimmune Licensing Wars, Dispatch (Bromberg & Sunstein LLP, Boston, Mass.), Winter 2007, at 1, available at http://www.bromsun.com/media/Medimmune EB.pdf (same).
One notes that footnote 4 refers to the first two Quillen/Webster papers, but not to the third, which, although published in 2006, is no where to be found in the 2008 Emory paper. Footnote 4-->See Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1, 13 (2001). Quillen and Webster did subsequent work that caused them to revise that number downward, however. See Cecil D. Quillen, Jr., Ogden H. Webster & Richard Eichmann, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office - Extended, 12 Fed. Cir. B.J. 35, 38 (2002) (lowering figures by 12% from earlier calculations) [hereinafter Quillen et al., Extended].
While Lemley and Sampat write --Even after accounting for continuations, the odds of an applicant getting a patent are pretty good, but it is an exaggeration to say that the PTO is a rubber stamp. --, it would have been helpful if they had managed
** to work through the timeline of the "patent grant rate debate", including Professor Lemley's incorrect assertions in 2004 in footnote 22 of "Ending Abuse..."
** to include the most up-to-date work on the topic. Is it too much to ask Lemley and Sampat, and the assembled commenters (including Microsoft Corp.) to include the 2006 paper of Quillen/Webster and the 2006 JPTOS by Ebert commenting thereon in a 2008 article? Any thoughts that law professors "shepardize" their sources in writing law reviews are clearly fanciful. Perhaps in an alternate universe...