Wednesday, September 13, 2006

More on patent grant rate in law review literature

Further to the patent grant rate saga, J. MICHAEL BUCHANAN has a piece Deference Overcome: Courts' Invalidation of Patent Claims as Anticipated by Art Considered by the PTO which appears in 2006 Stan. Tech. L. Rev. 2.

P38 has the text:

Although it is far less direct evidence of erroneously allowed
claims, the rate of allowance of patent applications may also be
circumstantially relevant. The probability that an application will be allowed has been hotly debated by scholars. Quillen and Webster touched off the debate by
asserting that the rate of allowance might be as high as 97%. n141 Subsequent
work by Quillen, Webster, and Eichmann applied a different estimation technique
and came up with an allowance rate of 85%. n142 Clarke used a different method
to estimate an allowance rate of 75%. n143 Other commentators have
weighed in in favor of either the later Quillen study n144 or the Clarke study.
n145 The debate seems to have focused the disputed range of allowance rates to
75-85%. Any figure in this range is significantly higher than the allowance
rates in Europe (60-68%) or Japan (57-65%) as estimated by the original Quillen
et al. method. n146 These studies thus suggest that patent examination may be
less rigorous in the United States than in Europe or Japan, and that the
United States may therefore issue more invalid claims.

Buchanan neglected to mention that the method of QW1 and QW3 yields grant rates in excess of 100% for several years, a nonsensical result. Buchanan's analysis here reminds one of certain examples given in Bob Park's "Voodoo Science." [Speaking of Park, his WN is still stuck on Sept. 1. Item 5 thereof states of the ACT work: Scientists have succeeded in growing colonies of embryonic stem cells using a technique that does not destroy the embryo from which the initial cell is taken.]

Buchanan also wrote:

The best evidence of erroneously issued claims is the high rate
at which issued claims are found invalid by federal courts. The Allison and
Lemley study of 300 patent validity decisions from 1989 to 1996 found that claims
were held invalid in 46% of decisions. n147

Buchanan didn't cite the work of Lunney, which reaches an opposite conclusion, so one is left to wonder what is meant by "best evidence."

For a different perspective on patent grant rate, see 88 JPTOS 726. Note that Buchanan successfully avoided citing every one of my papers that is cited in 88 JPTOS 726.

[IPBiz post 1972]


Blogger Lawrence B. Ebert said...

The "patent quality" debate has inspired proposed rules changes in continuation application practice. There have been arguments that by decreasing the number of continuations, throughput will go up. However, not everybody thinks that.

From ipnewsblog:

As a former Patent Examiner, I believe the proposed rule change on Continuation Applications does not adequately and soundly address the problem of the backlog crisis. Many Examiners rely on Continuation Applications to meet their production quotas as it is often more efficient to examine a Continuation Application than to examine a new application. Further, if by limiting the Continuation Applications, more Examiners have difficulty meeting their production quotas, those Examiners will not be retained by the Office, subsequently counteracting the hiring of any new Examiners. While the rule change on its face is a good solution, it may have rippling effects which would cause further backlog problems to arise.

10:57 PM  

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