Patenting Inventions or Inventing Patents? Strategic Use of Continuations at the USPTO

50 Pages Posted: 17 Aug 2020 Last revised: 24 Feb 2021

See all articles by Cesare Righi

Cesare Righi

Universitat Pompeu Fabra; Barcelona Graduate School of Economics

Timothy Simcoe

Boston University - Questrom School of Business; NBER

Multiple version iconThere are 2 versions of this paper

Date Written: August 2020

Abstract

Continuations allow inventors to claim technology developed after the original filing date of a patent, leading to concerns about inadvertent infringement and hold-up. For researchers seeking to study this practice, a key challenge is the difficulty of linking patent applications to potentially infringing technology. We use the link created by disclosure of standard essential patents (SEPs) to analyze the relationship between standard publication — a key observable milestone in technology development — and continuation filing. More than half of the SEPs in our data are filed after standard publication. There is a substantial increase in continuation filings immediately after standard publication, and this increase is larger when the initial patent examiner is more lenient. We also find that claims in SEP continuations are more likely to be rejected for double patenting (indicating an effort to change the scope of previous patents), and that keywords in the claims of SEPs linked to the same standard become more similar after standard publication. Overall, these findings suggest widespread use of continuation procedures to opportunistically ”invent patents” that are infringed by already-published standards.

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Suggested Citation

Righi, Cesare and Simcoe, Timothy S., Patenting Inventions or Inventing Patents? Strategic Use of Continuations at the USPTO (August 2020). NBER Working Paper No. w27686, Available at SSRN: https://ssrn.com/abstract=3675238

Cesare Righi (Contact Author)

Universitat Pompeu Fabra ( email )

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Barcelona Graduate School of Economics ( email )

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Timothy S. Simcoe

Boston University - Questrom School of Business ( email )

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