The Examination Effect: A Comparison of the Outcome of Patent Examination in the US, Europe and Australia

25 Pages Posted: 18 Nov 2016 Last revised: 5 Dec 2016

Andrew F. Christie

Melbourne Law School

Chris Dent

Murdoch University - School of Law

Johnathon E Liddicoat

University of Cambridge - Faculty of Law; University of Tasmania

Date Written: November 17, 2016

Abstract

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

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

Andrew F. Christie (Contact Author)

Melbourne Law School ( email )

University of Melbourne
Melbourne, Victoria 3010
Australia

HOME PAGE: http://www.andrewchristie.com

Chris Dent

Murdoch University - School of Law ( email )

United States

Johnathon E Liddicoat

University of Cambridge - Faculty of Law ( email )

10 West Road
Cambridge, CB3 9DZ
United Kingdom

University of Tasmania ( email )

French Street
Sandy Bay
Hobart, Tasmania 7001
Australia

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