A New Look at Patent Quality: Relating Patent Prosecution to Validity

32 Pages Posted: 16 Feb 2012

See all articles by Ronald J. Mann

Ronald J. Mann

Columbia University - Law School

Marian Underweiser

IBM Corporation

Multiple version iconThere are 2 versions of this paper

Date Written: March 2012

Abstract

The article uses two hand‐collected data sets to implement a novel research design for analyzing the precursors to patent quality. Operationalizing patent “quality” as legal validity, the article analyzes the relation between Federal Circuit decisions on patent validity and three sets of data about the patents: quantitative features of the patents themselves, textual analysis of the patent documents, and data collected from the prosecution histories of the patents. The article finds large and statistically significant relations between ex post validity and both textual features of the patents and ex ante aspects of the prosecution history (especially prior art submissions and the existence of internal patent office appeals before issuance). The results demonstrate the importance of refocusing analysis of patent quality on replicable indicators like validity, and the value that more comprehensive collection of prosecution history data can have for improving the output of the patent prosecution process.

Suggested Citation

Mann, Ronald J. and Underweiser, Marian, A New Look at Patent Quality: Relating Patent Prosecution to Validity (March 2012). Journal of Empirical Legal Studies, Vol. 9, Issue 1, pp. 1-32, 2012. Available at SSRN: https://ssrn.com/abstract=2006123 or http://dx.doi.org/10.1111/j.1740-1461.2011.01245.x

Ronald J. Mann (Contact Author)

Columbia University - Law School ( email )

435 West 116th Street
New York, NY 10025
United States

Marian Underweiser

IBM Corporation ( email )

IBM MACC Center
33 Maiden Lane
New York, NY 10038
United States

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