What can patent litigation tell us about patent …Strategy 1. Match litigated patents to...
Transcript of What can patent litigation tell us about patent …Strategy 1. Match litigated patents to...
What can patent litigation tell us
about patent examination?
Alan Marco and Richard Miller
September 2016
OFFICE OF CHIEF ECONOMIST
www.uspto.gov/economics
Patent litigation conditions
1. Valuable enough to make litigation profitable
2. Some degree of uncertainty so that there is a dispute
Patent value is a function of validity, scope, and the
underlying technology
Patent examination affects scope and uncertainty, but
not the underlying technology
Caution: litigated patents are highly selected, so one must
be careful generalizing the results
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Strategy
1. Match litigated patents to “similar” non-litigated
patents
2. Estimate how examination characteristics impact the
probability of litigation
Sample:
• Patents granted 2005-2011
• Patent litigation filings in federal district court, 2005-
2015 (source: RPX). Examine first filing only.
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Litigated Patents by Year of Issue and
Technology Area
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Methods
• Control group of non-litigated patents that match the
litigated patents on several characteristics
– Exact match on examination art unit & year of issue
– Exact match on maintenance history
– Nearest neighbor match on 3-year forward citations
– Random sample within that group
• Final sample is a 1-to-1 matched sample (>10,000
litigated patents)
• Conditional logit: Is the incidence of litigation correlated
with the examination characteristics?
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Variables included in the analyses
Application characteristics
• small entity status
• foreign priority & PCT
• number of US parent applications
• family pendency
Claims characteristics
• independent claim count
• independent claim length (shortest)
Examination characteristics
• examiner seniority
• examination pendency
• continuances (RCEs)
• interviews
• appealed?
• first-action allowance?
• applicant disclosures (IDS)
• backward citations
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Main Results
• Largest impact on litigation is from application
characteristics
• Incidence of litigation is impacted by characteristics
of examination to a much lesser extent
• Characteristics of the independent claims are
important
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Conditional Logit Results
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Odds Ratio Coefficient
Point Estimate 95% CI Point Estimate Standard Error
Examiner Signatory Authority
None** 0.821 0.763 0.884 -0.197 0.038
Partial* 0.843 0.722 0.984 -0.171 0.079
Missing 1.176 0.948 1.459 0.162 0.110
Small Entity** 2.474 2.312 2.648 0.906 0.035
Continuation History
Number of Domestic Parents** 1.238 1.210 1.266 0.213 0.012
Pendency from Earliest Parent to Docketing 1.000 0.998 1.001 0.000 0.001
Foreign Applications
Foreign Priority Claim** 0.414 0.378 0.452 -0.883 0.046
National Stage Entry** 0.779 0.662 0.917 -0.249 0.083
Examination Variables
Number of IDS Filings** 1.043 1.034 1.052 0.042 0.004
Number of Recorded Interviews** 1.215 1.162 1.270 0.195 0.023
Pendency Before Examiner** 0.898 0.874 0.924 -0.107 0.014
Number of RCEs** 1.130 1.075 1.187 0.122 0.025
At Least One Appeal** 1.973 1.515 2.570 0.680 0.135
First-Action Allowance** 0.853 0.774 0.939 -0.159 0.049
Patent Claims Variables
Number of Independent Claims** 1.068 1.052 1.083 0.065 0.007
Length of Shortest Independent Claim** 0.999 0.998 0.999 -0.001 0.000
Backward Citations
To US Patents and Applications** 1.001 1.000 1.002 0.001 0.000
To Foreign Patents or Applications* 1.004 1.001 1.007 0.004 0.002
To Non-Patent Literature** 1.002 1.001 1.003 0.002 0.001
** Coefficient is statistically significant at the 1-percent level.
* Coefficient is statistically significant at the 5-percent level.
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Od
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Note: effects calculated for a change
from the 25th percentile to the 75th
percentile for continuous variables
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Examination characteristics
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Claim characteristics
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Note: effects calculated for a change
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percentile for continuous variables
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Goodness of fit (ROC Curve):
Application characteristics drive the model
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