Saturday, June 24, 2006

Application recycling and patent quality?

Some thoughts on the paper "Application Recycling" which appears in the May 2006 JPTOS.

p. 433
So how does patent recycling relate to patent quality? If quality is judged purely by USPTO grant rates, then the USPTO's report of grant rates is systematically flawed, due to failure to account for the impact of continuation filings, and quality is much poorer than what the USPTO historically reports.

IPBiz: This is a purely contrived argument. Patent examination quality relates to how well the USPTO is conforming to the requirements of the patent statute. If every applicant submitted claims that met the requirements, the patent grant rate could be 100%, and there would be patent quality. Thus, one can't judge patent quality purely by USPTO grant rates.

p. 435
The irrational result is that RCEs enable patent applicants to be more successful but, at the same time, they cause the USPTO to report grant rate statistics that suggest to the public that applicants are being less successful.

IPBiz: If the resultant claims allowed AFTER the RCE were the SAME as in the parent, this might be a good argument. HOWEVER, most of the time the resultant claims are narrower in scope. So one asks "successful AT WHAT"? If the ALLOWED claim is of the proper scope, but the initial claim was not, the applicant got what he deserved, neither more nor less. The applicant did NOT succeed in obtaining the INITIAL claim scope.

p. 435
All one needs to do is keep time while reading a typical patent or prosecution file and it is likely to result in the conclusion that 18.9 hours is a remarkably short time to grant a right that might lead to a company-breaking injunction.

IPBiz: A company-breaking permanent injunction is not going to issue UNTIL AFTER a court has found patent validity and infringement. To blame the USPTO for something that occurs after hundreds of hours of legal review in litigation is silly. It is likely true that the USPTO should get more resources to review patent applications, but there is plenty of time and money allocated to patent litigations.


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