Thursday, August 07, 2008

Sarnoff citing Quillen/Webster numbers in 2008 article

In an article titled BILCARE, KSR, PRESUMPTIONS OF VALIDITY, PRELIMINARY RELIEF, AND OBVIOUSNESS IN PATENT LAW ( 25 Cardozo Arts & Ent LJ 995 (2008)), Joshua Sarnoff writes:

As Professor John Thomas recently remarked, there are two general types of errors at the Patent Office, wrongful grants and wrongful denials, and we currently "have only the first sort of error in the patent system." n258 Although the statement may be hyperbolic, given the existence of appeals of a small percentage of rejected applications to the Board of Patent Appeals and Interferences n259 and from there to the Federal Circuit, n260 it may be [page 1051] true in spirit given the extremely high rate of granting patents on continuations where the patent holder persists in seeking the grant. According to two studies, the Patent Office ultimately issues patents from 85% of all applications, which is a rate much higher than in either the European Patent Office (72.5% of corresponding United States applications) or the Japanese Patent Office (44.5% of same). n261 As discussed below, there is little reason to think that the American patent examiners are doing a better job than their international colleagues, n262 although some of the difference may be accounted for by more stringent patentability legal standards applied overseas. The current rates of judicial invalidation of patents after they have been granted (even considering the heightened presumption of validity) seem extremely high. n263

Sarnoff's footnote 261 states:

See, e.g., Ravicher, supra note 19, at 8 (citing Cecil D. Quillen, Ogden D. Webster & Richard Eichman, Continuing Patent Applications and Performance at the U.S. Patent and Trademark Office-Extended, 12 Fed. Cir. B.J. 35 (2002), and Paul H. Jensen, Alfons Palangkaraya & Elizabeth Webster, Disharmony in International Patent Office Decisions, 16 Fed. Cir. B.J. 679 (2006)). See also Buchanan, supra note 19, at 37-38 (additional studies provide similar results, ranging from 75% to 97% of applications are ultimately issued, and the Patent Office's own analyses concluded that at least 4% to 6% of issued patents subjected to a performance review had at least one invalid claim) (citations omitted). Cf. U.S. Patent and Trademark Office Working to Improve System, Pinkos Says, Virginia Law News and Events, Apr. 11, 2007, spr/pinkos.htm (noting comments from the Patent Office Deputy Director that in the last year there was "about a 52 percent approval rate"). But see Lawrence B. Ebert, On Patent Quality and Patent Reform, 88 J. Pat. & Trademark Off. Soc'y 1068, 1074-75 (2006) (noting that, since claims define the invention, use of continuing applications to measure grant rates is suspect).

LBE notes that the 2006 JPTOS article (and earlier articles uncited by Sarnoff) gave reasons why the mere arithmetic of Quillen and Webster was wrong, apart from the legal analysis of Quillen/Webster being wrong. LBE notes that Ravicher, in his amicus brief on Tafas, cited only the first Quillen/Webster paper, and did not cite ANY of the criticisms of Quillen/Webster (unlike Sarnoff).

Footnote 19 of Sarnoff's article states:

See, e.g., FTC INNOVATION REPORT 2003, supra note 13, at 8-10 (discussing the lack of Patent Office facilities for evaluating inventions and the lack of resources for examination, as compared to the increasing volume of applications); American Innovation at Risk: The Case for Patent Reform: Hearing Before the Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 110th Cong. 38-40 (2007) (statement of Daniel B. Ravicher, Exec. Dir, Public Patent Found.) (noting a 35% invalidity rate in litigation in 2005 and a 90% rate of finding a "substantial new question of patentability" in regard to reexamination requests) (citing Patstats, [hereinafter Patstats], available at (last visited Dec. 24, 2007); J. Michael Buchanan, Deference Overcome: Courts' Invalidation of Patent Claims as Anticipated by Art Considered by the PTO, 2006 Stan. Tech. L. Rev. 2, 39-40 (discussing data from Patstats, indicating invalidation rates from 29% to 58% during the years 2000 to 2003). See generally John R. Allison & Mark A. Lemley, Empirical Evidence on the Validity of Litigated Patents, 26 AIPLA Q.J. 185 (1998) (finding that 54% of challenged patents in a sample of 300 litigated were held valid).


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