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Abstract:
At the time patent applications are reviewed, the Patent and Trademark Office has no way of identifying the small number of applications that are likely to end up having real economic significance. Thus patent applications are for the most part treated alike, with every application getting the same - and by necessity sparse - review. In this short magazine piece, we urge in response three basic reforms. First, we would weaken the presumption of validity that today attaches to all issued patents. The modern strong presumption simply does not reflect the reality of patent review; presumptions, in short, should be earned. Second, because legitimate inventors need as much certainty as the law can provide, we would give applicants the option of earning a presumption of validity by paying for a thorough examination of their inventions. Put differently, applicants should be allowed to "gold-plate" their patents by paying for the kind of searching review that would merit a strong presumption of validity. Third and finally, because competitors also have useful information about which patents worry them and which do not, we support instituting a post-grant opposition system, a process by which parties other than the applicant would have the opportunity to request and fund a thorough examination of a recently issued patent. As we explain in the piece, these reforms would together allow the Patent Office to focus its resources on patents that might actually matter, and it would also both reduce the incentive to file patents of questionable validity and reduce the harm caused by such patents in any event.

patent law, patent reform, patent, post-grant, gold-plate

Abstract:
A growing chorus of voices is sounding a common refrain - the U.S. Patent and Trademark Office (PTO) is issuing far too many bad patents. These criticisms are complicated by the rather surprising fact that we don't actually know what percentage of patent applications actually issue as patents. In this paper, we use a novel dataset of all published patent applications filed in January 2001 to estimate the grant rate. These data also allow us to examine the uses of continuation applications, and to assess dynamics of applicant-examiner interaction over the patent prosecution process. We find that the PTO rejects a surprisingly high percentage of patents. 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. We also find that the likelihood of obtaining a patent varies significantly by industry, but in surprising ways. Finally, despite a variety of reforms that might be thought to reduce the use and abuse of continuation applications, we find a high use of continuation applications of various types.

patent, patents, USPTO, intellectual property

Abstract:
Software patents and university-owned patents represent two of the most controversial intellectual property developments of the last twenty-five years. Despite this reality, and concerns that universities act as "patent trolls" when they assert software patents in litigation against successful commercializers, no scholar has systematically examined the ownership and litigation of university software patents. In this Article, we present the first such examination. Our empirical research reveals that software patents represent a significant and growing proportion of university patent holdings. Additionally, the most important determinant of the number of software patents a university owns is not its research and development ("R&D") expenditures (whether computer science-related or otherwise) but, rather, its tendency to seek patents in other areas. In other words, universities appear to take a "one size fits all" approach to patenting their inventions. This one size fits all approach is problematic given the empirical evidence that software is likely to follow a different commercialization path than other types of invention. Thus, it is perhaps not surprising that we see a number of lawsuits in which university software patents have been used not for purposes of fostering commercialization, but instead, to extract rents in apparent holdup litigation. The Article concludes by examining whether this trend is likely to continue in the future, particularly given a 2006 Supreme Court decision that appears to diminish the holdup threat by recognizing the possibility of liability rules in patent suits, as well as recent case law that may call into question certain types of software patents.

Abstract:
The USPTO receives more applications today than it ever has before. What happens to those applications? Patent prosecutors all have stories and personal experiences. Until quite recently, however, this sort of “anecdata” was all that was available, because the law prevented anyone from every finding out what happened to patent applications that did not ultimately issue as patents.

That changed in 2001, when the PTO began publishing data on pending applications, and when the PAIR system allowed the public to track the fate of those applications in real time. In this paper, we use those changes to report – for the first time ever – systematic data on the fate of applications in the PTO. We are able to confirm much received wisdom, but also to offer some surprising results.

Abstract:
In this paper, we show that there are important differences across patent examiners at the U.S. Patent and Trademark Office (USPTO), and that these relate to the most important decision made by the USPTO: whether or not to grant a patent. We find that more experienced examiners, and those who systematically cite less prior art, are more likely to grant patent applications. These results are not encouraging as a matter of public policy. But they do point to human resource policies as potentially important levers in patent system reform.

Abstract:
There has recently been a resurgence of interest in how institutions affect economic performance. A review of this literature reveals that the concept of an 'institution' means different things to different scholars, both within economics and across the social sciences. This paper discusses what factors unify the different definitions of institutions, and develops a concept of institutions useful for the analysis of economic performance, and economic growth in particular. Specifically, it develops the notion of institutions as standard 'social technologies'. Economic growth results from the co-evolution of physical and social technologies.

institutions, economic growth, rutines, social technologies, physical technologies

Abstract:
Researchers studying innovation increasingly use indicators based on patent citations. However, it is well known that not all citations originate from applicants - patent examiners contribute to citations listed in issued patents - and that this could complicate interpretation of findings in this literature. In 2001 the US Patent and Trademark Office (USPTO) began reporting examiner and applicant citations separately. In this paper, we analyze the prior art citations of all patents granted by the USPTO in 2001-2003. We show that examiner citations account for 63 per cent of all citations on the average patent, and that 40 per cent of patents have all citations added by examiners. We use multivariate regression and analysis of variance to identify the determinants of examiner shares. Examiner shares are highest for non-US applicants and in electronics, communications, and computer-related fields. However, most of the variation is explained by firm-specific variables, with the largest patent applicants having high examiner shares. Moreover, a large number of firms are granted patents that contain no applicant prior art. Taken together, our findings suggest that heterogeneity in firm-level patenting practices, in particular by high-volume applicants, has a strong influence on the data. This suggests that analysis of firm-level differences in patenting strategies is an important topic for future research.

Technology, patents, patent examiners, prior art, citations

Abstract:
The efforts of a number of OECD governments to emulate the Bayh-Dole Act of 1980, which permitted United States institutions receiving government research funds to patent their inventions, are critiqued.This critique is based on a review of recent research on the characteristics of the university-industry knowledge exchange and technology transfer.Following this review, the effects of the Bayh-Dole Act on patenting are discussed. Although many observers have argued that Bayh-Dole facilitated university-industry technology transfer, the effects of the measure are not wholly positive: increased university patenting could hinder downstream research and product development.It could also encourage academic researchers to pursue "open science," which could in turn lead to publication delays and withholding of data and materials.Even though the supposedly catalytic effects of the Bayh-Dole Act are perhaps overrated, OECD countries such as Denmark, Canada, Germany, Sweden, and Japan have adopted policies similar to Bayh-Dole; ironically, these policies often differ from one another and from Bayh-Dole itself.OECD countries wishing to generate higher levels of university-industry interaction would do well to stop attempting to emulate Bayh-Dole and to focus on reforms that support inter-institutional competition, as well as the external contributors to business creation and technology commercialization.(SAA)

OECD countries, R&D, Technology transfer, University-industry relations, Bayh-Dole Act of 1980, Licensing strategies, Patent law, Patents

Abstract:
The Bayh-Dole Act of 1980 facilitated the retention by universities of patent rights resulting from government funded academic research, thus encouraging university entry into patenting and licensing. Though the Act is widely recognized to be a major change in federal policy towards academic research, surprisingly little empirical analysis has been directed at assessing its impacts on the academy and on university-industry research relationships. An important exception is the work of Henderson et al. [Rev. Econ. Stat. 80 (1998) 119-127] which examined the impact of Bayh-Dole on the quality of university patents, as measured by the number of times they are cited in subsequent patents. The authors found that the quality of academic patents declined dramatically after Bayh-Dole, a finding that has potentiallyimportant policy implications. Inthis paper, we revisit this influential finding. By using a longer stream of patent citations data, we show that the results of the Henderson et al. study reflect changes in the intertemporal distribution of citations to university patents, rather than a significant change in the total number of citations these patents eventually receive. This has important implications not only for the evaluation of Bayh-Dole, but also for future research using patent citations as economic indicators.

O3

Abstract:
Links between R&D in U.S. industry and research in U.S. universities have a long history, but recent developments in this relationship, especially the growth in university patenting and licensing of technologies to private firms, have attracted considerable attention. The effects of the Bayh-Dole Act of 1980 on U.S. research universities have been the focus of several empirical studies. This paper examines "university learning" in greater detail, seeking to understand whether and why the importance (based on citations to these patents) of the post-1980 patents issuing to less experienced academic patenters has improved during the 1980s and 1990s. Our results indicate that the importance of entrant institutions' patents improved during the 1980s and 1990s, closing the gap with incumbents during a period in which the average importance of overall academic patents improved relative to nonacademic patents. We find little evidence of strong "learning curve" effects, as neither cumulative patenting nor the (relatively) early establishment of a technology transfer office explain these improvements. Links with the Research Corporation during the "pre-Bayh-Dole" era also exercise little influence over changes during the 1980s and 1990s in these characteristics of incumbent or entrant institutions' patents. Inasmuch as these observable sources of learning exercise little influence, we conclude that a broader process of learning based on spillovers among universities may account for the convergence in importance between the patents of incumbent and entrant universities.

Patents, Universities, Technology Transfer, Learning

Abstract:
Growth during the 1980s and 1990s in patenting and licensing by American universities is frequently asserted to be a direct consequence of the Bayh-Dole Act of 1980. However, there has been little empirical analysis of the effects of this legislation. This paper uses previously unexploited data to consider the effects of Bayh-Dole at three leading universities: the University of California, Stanford University, and Columbia University. Two of these universities (California and Stanford) were active in patenting and licensing before Bayh-Dole, and one (Columbia) became active only after its passage. The evidence suggests that Bayh-Dole was only one of several important factors behind the rise of university patenting and licensing activity. Bayh-Dole also appears to have had little effect on the content of academic research at these universities. A comparison of these three universities reveals remarkable similarities in their patent and licensing portfolios 10 years after the passage of the Bayh-Dole Act. The concluding section raises several questions about the effects of Bayh-Dole and related policy shifts that are not addressed by this analysis but that deserve attention in future research.

Bayh-Dole Act, University Research, Technology Transfer, Patenting, Licensing

Abstract:
There has recently been a resurgence of interest in how institutions affect economic performance. A review of this literature reveals that the concept of an "institution" means different things to different scholars, both within economics and across the social sciences. We discuss what factors unify the different definitions of institutions, and develop a concept of institutions useful for the analysis of economic performance, and economic growth in particular. Specifically, we develop the notion of institutions as standard "social technologies". Economic growth results from the co-evolution of physical and social technologies.

Keyword(s): Institutions, Economic growth, Evolutionary economics