Determinants of patent citations in biotechnology: An analysis of patent influence across the industrial and organizational boundaries

The present paper extends the literature investigating key drivers leading certain patents to exert a stronger influence on the subsequent technological developments (inventions) than other ones. We investigated six key determinants, as (i) the use of scientific knowledge, (ii) the breadth of the technological base, (iii) the existence of collaboration in patent development, (iv) the number of claims, (v) the scope, and (vi) the novelty, and how the effect of these determinants varies when patent influence—as measured by the number of forward citations the patent received—is distinguished as within and across the industrial and organizational boundaries. We conducted an empirical analysis on a sample of 5671 patents granted to 293 US biotechnology firms from 1976 to 2003. Results reveal that the contribution of the determinants to patent influence differs across the domains that are identified by the industrial and organizational boundaries. Findings, for example, show that the use of scientific knowledge negatively affects patent influence outside the biotechnology industry, while it positively contributes to make a patent more relevant for the assignee's subsequent technological developments. In addition, the broader the scope of a patent the higher the number of citations the patent receives from subsequent non-biotechnology patents. This relationship is inverted U-shaped when considering the influence of a patent on inventions granted to other organizations than the patent's assignee. Finally, the novelty of a patent is inverted-U related with the influence the patent exerts on the subsequent inventions granted across the industrial and organizational boundaries

International Harmonization of Patent Law: A Proposed Solution to the United States\u27 First-to-File Debate

As trade barriers diminish and global economies continue to expand, harmonization and enforcement of international patent protection becomes increasingly important. This note compares the U.S. system with other countries. It argues that the U.S. should harmonize with the rest of the world. Part I discusses the different systems for determining priority of invention and the recent movement towards harmonization of patent law. Part I also sets forth the recommendations of the 1992 Advisory Commission on Patent Law Reform relating to first-to-file. Part II presents the various conflicting arguments both in favor of and against adopting a first-to-file system. Part III argues that the United States should adopt a first-to-file system under the conditions specified in the 1992 Report From the Advisory Commission on Patent Law Reform. This Note concludes that the Commission Report presents a favorable solution to the first- to-file debate that will allow the United States to participate in and benefit from the forthcoming patent harmonization treaty

James Fergason, a Pioneer in Advancing of Liquid Crystal Technology

James Lee Fergason (1934 - 2008) focused his research on the liquid crystals. His studies correspond to a relevant part of the history of soft matter science and technology of liquid crystals. Here a discussion of some of his researches.Comment: Soft Matter, Liquid Crystals, Cholesterics, Nematics, Smectics, Liquid Crystal Display

International Harmonization of Patent Law: A Proposed Solution to the United States\u27 First-to-File Debate

As trade barriers diminish and global economies continue to expand, harmonization and enforcement of international patent protection becomes increasingly important. This note compares the U.S. system with other countries. It argues that the U.S. should harmonize with the rest of the world. Part I discusses the different systems for determining priority of invention and the recent movement towards harmonization of patent law. Part I also sets forth the recommendations of the 1992 Advisory Commission on Patent Law Reform relating to first-to-file. Part II presents the various conflicting arguments both in favor of and against adopting a first-to-file system. Part III argues that the United States should adopt a first-to-file system under the conditions specified in the 1992 Report From the Advisory Commission on Patent Law Reform. This Note concludes that the Commission Report presents a favorable solution to the first- to-file debate that will allow the United States to participate in and benefit from the forthcoming patent harmonization treaty

How Courts Adjudicate Patent Definiteness and Disclosure

Section 112 of the Patent Act requires patentees to clearly explain what their invention is (a requirement known as claim definiteness), as well as how to make and use it (the disclosure requirements of enablement and written description). Many concerns about the modern patent system stem from these requirements. But despite the critical importance of § 112 to the functioning of the patent system, there is surprisingly little empirical data about how it has been applied in practice. To remedy the reliance on anecdotes, we have created a hand-coded dataset of 1144 reported court decisions from 1982 to 2012 in which U.S. district courts or the Court of Appeals for the Federal Circuit rendered a decision on the enablement, written-description, or claim-definiteness requirements of § 112. We coded validity outcomes under these three doctrines on a novel five-level scale so as to capture significant subtlety in the strength of each decision, and we also classified patents by technology and industry categories. We also coded for a number of litigation characteristics that could arguably influence outcomes. Although one must be cautious about generalizing from reported decisions due to selection effects, our results show some statistically significant disparities in § 112 outcomes for different technologies and industries—although fewer than the conventional wisdom suggests, and not always in the direction that many have believed. Just as importantly, our analysis reveals significant relationships between other variables and § 112 litigation outcomes, including whether a district court or the Federal Circuit made the last decision in a case, whether a patent claim was drafted in means-plus-function format, and whether a case was decided before or after Markman v. Westview Instruments. Our results showing how § 112 has been applied in practice will be helpful in evaluating current proposals for reform, and our rich dataset will enable more systematic studies of these critical doctrines in the future

Understanding the Backlog Problems Associated with Requests for Continued Examination Practice

One of the greatest problems facing the current patent administration is a long patent pendency period. This study focuses on Request for Continued Examination (RCE) practice, and its effects on the current patent application backlog problem. RCEs are used to continue prosecution after a patent examiner has issued a final rejection. However, now that RCEs are placed on an examiner’s special docket, some examiners may pick up prosecution one to two years after the last action. Accordingly, there are great inefficiencies that may be created by this delay, such as relearning issues and questions from the previous action, diminished value of examiner interviews, and a higher likelihood of transfer to a new examiner. This study suggests that the RCE problem may be much worse for some art units compared to others. Specifically, the RCE problem is unevenly distributed between certain art units with technology center 1600 (biotechnology and organic chemistry) suffering the most from unexamined RCEs, while technology center 2800 (semiconductors, electrical and optical systems and components) remain unaffected. This RCE backlog can result in a delay of approximately three years for some art units. Possible solutions to the RCE problem include creating a two-track examiner specialization program: one track focusing on drafting office actions and a second track focusing on finding relevant prior art. Another possible solution would be to create a new type of request to reopen prosecution after final to allow applicants to enter new narrowing amendments or add new declarations without adding new arguments. A final solution may be to place the RCE back in the examiner’s normal docket and not in the examiner’s special new docket

NASA patent abstracts bibliography: A continuing bibliography. Section 1: Abstracts (supplement 35)

Abstracts are provided for 58 patents and patent applications entered into the NASA scientific and technical information systems during the period January 1989 through June 1989. Each entry consists of a citation, an abstract, and in most cases, a key illustration selected from the patent or patent application

Checking the Staats: How Long Is Too Long to Give Adequate Public Notice in Broadening Reissue Patent Applications?

A classic property rights question looms large in the field of patent law: where do the rights of inventors end and the rights of the public begin? The right of inventors to modify the scope of their claimed inventions, even after the patent issues, is in direct tension with the concepts of public notice and the public domain. The Patent Act currently permits broadening of claims so long as a reissue application demonstrating intent to broaden is filed within two years of the original patent issue. Over the years, however, this relatively straightforward statutory provision has sparked numerous disputes over its meaning and application. On September 8, 2011, the Court of Appeals for the Federal Circuit heard oral arguments or In re Staats. In this case, Apple Computer, Inc. appeals the rejection of a continuation reissue patent application. The U.S. Patent & Trademark Office and the Board of Patent Appeals and Interferences rejected the application on the grounds that Apple attempted to broaden the scope of its patent claims in a manner not “foreseeable” more than eight years after the patent first issued. Apple contends that the language of the statute and prior case law permit its interpretation, and the application should be allowed in the interest of innovation. This issue is hardly a new one—this submission highlights nearly 140 years of case law, legislative history, and statutory shaping pertaining to broadening reissues. We analyze the issues raised in the briefs from Staats, as well as the oral arguments. Finally, we discuss from a practitioner’s perspective what the Federal Circuit could do—and should do—in the field of broadening reissues

Does Environmental Economics lead to patentable research?

In this feasibility study, the impact of academic research from social sciences and humanities on technological innovation is explored through a study of citations patterns of journal articles in patents. Specifically we focus on citations of journals from the field of environmental economics in patents included in an American patent database (USPTO). Three decades of patents have led to a small set of journal articles (85) that are being cited from the field of environmental economics. While this route of measuring how academic research is validated through its role in stimulating technological progress may be rather limited (based on this first exploration), it may still point to a valuable and interesting topic for further research.Comment: 10 pages, 4 table

Using Valuation-Based Decision Making to Increase the Efficiency of China\u27s Patent Subsidy Strategies

[Excerpt] “The Chinese government has grown concerned that its patent fee subsidy programs have not funded the most deserving patents, and thus they no longer wish to spend public resources to promote low-value patents. Instead, the government would prefer subsidy programs that encourage the most deserving patents. The Patent Strategy reflects this desire, as the fourth strategic focus of the Patent Strategy recognizes the need to “[o]ptimize [China’s] patent subsidy policy and further define the orientation to enhance patent quality.”19 This Article explains how a disciplined and transparent valuation-based decision making process can help the Chinese government design patent fee subsidy programs that allocate funds more consistently to deserving patents. In addition, this Article offers the outline of a practical valuation model the Chinese government could use to filter patent fee subsidy requests.