Wednesday, July 14, 2010

Examining Patent Examination

In the article Examining Patent Examination, 2010 Stan. Tech. L. Rev. 2, Lemley and Sampat give acknowledgements:

We thank Patrick Crosby at 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.

LBE wishes to clarify that LBE has never spoken with Lemley or Sampat. He has never met Lemley or Sampat. Although it is nice to be acknowledged, LBE notes any comments by LBE would have to be considered oblique.

Separately, the appearance of -- Microsoft Corporation -- in the list is a bit puzzling. Was it the host of a workshop?

As a different matter, P11 of the paper states:

Why do patents result from applications which received "final" rejections? Sometimes this change of outcome reflects a change of heart--the applicant has persuaded the PTO to issue the same claims that it initially rejected. Other times, it is because the patentee has amended the claims, generally but not necessarily narrowing them to avoid prior art. Many of these applications were amended after the initial rejection, so the PTO process may have the effect of narrowing unduly broad claims. To study this, we determined whether the applications were amended before issuance. Based strictly on the PAIR classification data, it appears that quite a few patents--significantly more than half of those issued--issued without any amendment. But we worried that these fields may have understated the number of amendments, n10 particularly those after non-final office actions. The transaction history also includes information on "Response After Non-Final Office Action," and many of those responses involve amendments. However, this field could indicate other responses too, in addition to amendments. To check this we examined the file wrappers for a random sample of 100 transactions coded in PAIR as involving a "Response to Non-Final Office Action" but where PAIR did not list an amendment. It turns out that 94 of those 100 in fact included amendments. If we include the "Responses to Non-Final Office Actions" in the list of applications amended, the numbers change dramatically, as Table 4 illustrates.

LBE did write in a post titled Patent Grant Rate Lower Than Many Academics Think about a different paper by Lemley and Sampat:

However, in July 2007, Lemley and Sampat placed on SSRN a paper entitled "Is the Patent Office a Rubber Stamp?" which stated:

We find that the PTO rejects a surprisingly high percentage of patents [sic]. While more than two-thirds of all applications result in at least one patent, a significant number of applications are rejected and then finally abandoned by the applicant.
The PTO is doing a better job than many people seem to think.

This alteration in understanding of the patent grant rate issue requires changes in how patent reform is addressed and, furthermore, undermines certain arguments that were made on behalf of restrictions in continuing application procedure at the USPTO.

See also IPBiz posts:

As a minor point, there was an email exchange about a certain footnote in a Lemley paper in BULR
about continuations, relating to something Lemley attributed to Clarke, which Clarke never said.

**Footnote 10 in the above Lemley text states:

n10 We thank Lawrence Ebert for raising this concern. Lawrence Ebert, More on Patent Grant Rate; the USPTO Is NOT a Rubber Stamp, IPBIZ, Aug. 2, 2007,

which post includes:

The patent grant rate numbers disclosed therein are more in accord with those of Robert Clarke in JPTOS in 2003 than with those of Quillen and Webster, or with those of John Thomas quoting Crouch/Patently-O in 17 Fordham Intell. Prop. Media & Ent. L. J. 875 (2007)).

Nevertheless, the manuscript has a puzzling sentence at page 25: Nonetheless, it is notable that quite a few patents -- significantly more than half of those issued--issued without any amendment, as Table 11 shows. IPBiz suspects that the idea that more than half allowed patents issue WITHOUT any amendment might be questioned. [There are other puzzling statements in the manuscript, but that's another story.]

**Of the acknowledgement, from Abraham Lincoln:

“I feel like the man who was tarred and feathered and ridden out of town on a rail. To the man who asked him how he liked it, he said: ‘If it wasn’t for the honor of the thing, I’d rather walk.’”


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