25 Pages Posted: 18 Nov 2016 Last revised: 5 Dec 2016
Date Written: November 17, 2016
The article provides an answer to a question that, rather surprisingly, has not been addressed in the academic literature to date: What is the practical effect of patent examination? It does so by undertaking an empirical analysis of the examination of nearly 500 patent applications, filed in identical form, in three patent offices – the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Australian Patent Office (APO). We find that the routine effect of patent examination is to produce meaningful change to – and, in particular, a narrowing of – the definition of the invention contained in claim 1 of the patent. Importantly, this effect occurs significantly more often in the USPTO than in the EPO, and significantly more often in both of those offices than in the APO. Surprisingly, given the commonly-expressed view that the USPTO issues many “bad” patents, our findings suggest that the quality of patents granted by the USPTO may be higher than those granted by the other two offices.
Keywords: patent examination, United States, Europe, Australia
JEL Classification: K00, K39
Suggested Citation: Suggested Citation
Christie, Andrew F. and Dent, Chris and Liddicoat, Johnathon E, The Examination Effect: A Comparison of the Outcome of Patent Examination in the US, Europe and Australia (November 17, 2016). John Marshall Review of Intellectual Property Law, Vol. 16, No. 1, 2016; U of Melbourne Legal Studies Research Paper No. 750; University of Cambridge Faculty of Law Research Paper No. 60/2016. Available at SSRN: https://ssrn.com/abstract=2871743