Thursday, August 19, 2010

The citations found in patents: do references cited by the applicant matter?

Patently O has a discussion of a manuscript by Mark Lemley et al [ “Do Applicant Patent Citations Matter? Implications for the Presumption of Validity. ] with implications noted to be:

(1) That it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway);
(2) That the presumption of validity associated with patents may be too strong; and
(3) That studies based on patent citations likely lack merit.

IPBiz notes that (1) does not follow from the findings. First, 13% of the prior art used in office action rejections was applicant-submitted. Second, normalizing to percentage of art isn't the issue. It's how much of the applicant art leads to rejections, not what percentage of the art is applicant art. Further, the examiner does do a search, so the examiner will pick up at least some of the most apparent references, and all things being equal, will likely use the results from his/her search for the most apparent references. Third, there is going to be some art that is hard for the examiner to find, and the applicant, who presumably knows the invention better than the examiner, likely (but not always) has found it.

Of (2), what does this have to do with the presumption of validity?

Of (3), Lemley et al should have been reading "grapes and watermelons" which reached the same conclusion over 15 years ago. Glad to see Lemley is finally catching up to the literature, tho!

For example:

Edlyn S. Simmons and Nancy Lambert. "Patent Statistics: Comparing Grapes and Watermelons" In Recent Advances in Chemical Information, Proceedings of the 1991 Montreux International Chemical Information Conference & Exhibition, H. Collier, Ed, (Royal Society of Chemistry, Cambridge; CRC Press) pp 33-78 (1992).

Simmons, Edlyn S.; Lambert, Nancy. "Comparing grapes and watermelons." ChemTech 23 (6), 1993, p. 51-59. ]

**On inequitable conduct, see
Power Integrations v. Fairchild on Google Scholar. [JOSEPH J. FARNAN, JR., District Judge. ]


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