The Experts below are selected from a list of 192 Experts worldwide ranked by ideXlab platform
Timothy Simcoe - One of the best experts on this subject based on the ideXlab platform.
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Patent Examiner specialization
Research Policy, 2019Co-Authors: Cesare Righi, Timothy SimcoeAbstract:We study the matching of Patent applications to Examiners at the U.S. Patent and Trademark Office. The distribution of technology classes is more concentrated than would occur under random matching and F-tests reject the hypothesis that family size and claim scope are randomly distributed across Examiners. Using the application text, we show that Examiner specialization persists even after conditioning on technology sub-classes. Specialization is less pronounced in computers and software than other technology fields. More specialized Examiners have a lower grant rate. These findings undermine the idea that random matching justifies instrumental variables based on Examiner behaviors or characteristics.
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Patent Examiner specialization
National Bureau of Economic Research, 2017Co-Authors: Cesare Righi, Timothy SimcoeAbstract:We study the matching of Patent applications to Examiners at the U.S. Patent and Trademark Office. Using test statistics originally developed to identify industry agglomeration, we find strong evidence that Examiners specialize in particular technologies, even within relatively homogeneous art units. Examiner specialization is more pronounced in the biotechnology and chemistry fields, and less in computers and software. Evidence of specialization becomes weaker, but does not completely disappear, if we condition on technology sub-classes. There is no evidence that certain Examiners specialize in applications that have greater importance or broader claims. More specialized Examiners have a lower grant rate and produce a larger narrowing of claim-scope during the examination process. We discuss implications for instrumental variables based on Examiner characteristics.
W. Bruce Croft - One of the best experts on this subject based on the ideXlab platform.
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SIGIR - Transforming Patents into prior-art queries
Proceedings of the 32nd international ACM SIGIR conference on Research and development in information retrieval - SIGIR '09, 2009Co-Authors: W. Bruce CroftAbstract:Searching for prior-art Patents is an essential step for the Patent Examiner to validate or invalidate a Patent application. In this paper, we consider the whole Patent as the query, which reduces the burden on the user, and also makes many more potential search features available. We explore how to automatically transform the query Patent into an effective search query, especially focusing on the effect of different Patent fields. Experiments show that the background summary of a Patent is the most useful source of terms for generating a query, even though most previous work used the Patent claims.
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Transforming Patents into prior-art queries
Proceedings of the 32nd international ACM SIGIR conference on Research and development in information retrieval - SIGIR '09, 2009Co-Authors: Xiaoibng Xue, W. Bruce CroftAbstract:Searching for prior-art Patents is an essential step for the Patent Examiner to validate or invalidate a Patent application. In this paper, we consider the whole Patent as the query, which reduces the burden on the user, and also makes many more potential search features available. We explore how to automatically transform the query Patent into an effective search query, especially focusing on the effect of different Patent fields. Experiments show that the background summary of a Patent is the most useful source of terms for generating a query, even though most previous work used the Patent claims.
Shine Tu - One of the best experts on this subject based on the ideXlab platform.
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Patenting Fast and Slow: Examiner Rejections and Applicant Traversals to Non-Prior Art Rejections
SSRN Electronic Journal, 2020Co-Authors: Shine TuAbstract:It is no secret that some Patent and Trademark Office (PTO) Examiners operate more quickly than others. Previous studies have shown that an applicant’s ability to obtain a Patent is inexorably linked to the random assignment of a Patent Examiner. However, not all Patent Examiners are created equal. Some Patent Examiners allow Patent applications quickly within just one or two Office Actions resulting in only a few months of substantive Patent prosecution. In contrast, other Patent Examiners constantly reject Patents applications, which can result in unnecessarily delaying prosecution and years of substantive Patent prosecution. This study focuses on how different Examiners use prior art rejections to prolong or compact prosecution. This study demonstrates how two different populations of Patent Examiners (slow vs. fast) can achieve and even exceed their production goals by either an allowance or rejection strategy. The allowance strategy relies on granting a large number of applications with only a few rejections and usually within one or two office actions. The rejection strategy relies on rejecting a large number of applications using a wide variety of different rejection types. Unlike many studies, this is the first paper that evaluates Patent quality based on individual Examiner characteristics at the Patent prosecution level focused on non-prior art rejections. In particular, high volume biotechnology Examiners reject applications based mainly on obviousness type double Patenting and indefiniteness rejections, while issuing fewer obviousness or anticipation type rejections. In contrast, low volume Examiners reject applications based mainly on obviousness rejections. Furthermore, number of pages in the low volume Examiners’ office actions are more than three times more than high volume Examiners. Thus, low volume Examiners are writing longer office actions and rejecting based on a wide variety of statutory authorities, while high volume Examiners are writing shorter office actions based mainly on obviousness type double Patenting issues. We find that different types of Examiners use different strategies to maximize their “counts” in order to keep their production numbers high. Specifically, low volume Examiners will generally reject applications creating lengthy prosecution histories while forcing the applicant to narrow claims. In contrast, high volume Examiners will usually only make one rejection then allow the case, thus creating a small prosecution history with only small amendments to the claims. This results in a dramatic range of Patent prosecution times as well as a large difference in claim scope. Slow Examiners take approximately 5.85 years to issue a Patent while fast Examiner only take approximately 1.64 years. The added four years of prosecution greatly increases direct costs to the inventor (both in PTO and attorney fees) as well as indirect costs such as reduced growth in employment, sales and follow on innovation. Finally, there may be harms to not only the inventor, but to rivals in the form of diminished access to external capital and slower growth of follow on innovation.
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Patenting Fast and Slow: Examiner and Applicant Use of Prior Art
SSRN Electronic Journal, 2020Co-Authors: Shine TuAbstract:Previous studies have shown that an applicant’s ability to obtain a Patent is inexorably linked to the random assignment of a Patent Examiner. However, not all Patent Examiners are created equal. Some Patent Examiners allow Patent applications quickly within just one or two Office Actions resulting in only a few months of substantive Patent prosecution. In contrast, other Patent Examiners constantly reject Patents applications, which can result in unnecessarily delaying prosecution and years of substantive Patent prosecution. This study focuses on how different Examiners use prior art rejections to prolong or compact prosecution. Prior art rejections are one of the most important hurdles to obtaining a Patent. Specifically, the use of prior art rejections directly impacts the time and effort it takes to obtain a Patent. Overcoming anticipation and obviousness rejections are usually the most important and difficult obstacles to overcome before obtaining a Patent. This empirical study focuses on how different types of Examiners (i.e., fast/high volume versus slow/low volume) use prior art rejections to either compact or delay prosecution. Since Patent examination is dependent on both Examiner and applicant behavior, this study also evaluates how applicants respond to these prior art rejections to also prolong or compress prosecution. Unlike many studies, this is the first paper that evaluates Patent quality based on both individual Examiner characteristics as well as applicant behavior at the Patent prosecution level. In sum, high volume, average volume and low volume Examiners issued a Patent in approximately 1.64 years, 3.07 years, and 5.85 years respectively. Thus, high volume Examiners issue Patents almost twice as quickly as average volume Examiners and more than three times as fast as low volume Examiners. This large difference in time can represent a huge investment in both capital and time for the applicant as well as the PTO. Additionally, this study finds that low volume Examiners reject applications based mainly on obviousness, issuing over four times as many obviousness rejections per office action compared to high volume Examiners. Furthermore, low volume Examiners issue five times as many 102(a)/(g)/(e) rejections and two times as many 102(b) rejections. And applicants most commonly make a “missing element” argument to traverse a slow Examiner’s 102(a)/(g)/(e) rejection at three times the rate of a fast Examiner. This type of traversal strategy relies on the Examiner’s misunderstanding of either the art or the claimed invention. Similarly, applicants also use the “missing elements” argument to traverse a slow Examiner’s 103 rejection at five times the rate of a fast Examiner. Finally, applicants are also three times more likely to use a “teaching away” or “unexpected results” argument to traverse a slow Examiner compared to a fast Examiner. Both of these arguments can again rely on either the Examiner’s misunderstanding of the prior art or a misunderstanding of the claimed invention. This study demonstrates that different types of Examiners use different strategies to maximize their “counts.” Specifically, low volume Examiners will generally reject applications creating lengthy prosecution histories while forcing the applicant to narrow claims, while showing a misunderstanding of either the prior art and/or the claimed invention. In contrast, high volume Examiners will usually only make one rejection then allow the case, thus creating a small prosecution history with only small amendments to the claims.
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three new metrics for Patent Examiner activity office actions per grant ratio ogr office actions per disposal ratio odr and grant to Examiner ratio ger
2018Co-Authors: Shine TuAbstract:The current metric for Examiner prosecution activity is allowance rate, which is calculated by dividing the total number of allowances by the sum of the allowances and abandonments (allowance rate = total allowance/(total allowances total abandonments)). Importantly, however, allowance rates do not consider an Examiner’s pending docket. Specifically, allowance rates do not fully capture if the Examiner is simply writing office actions thereby prolonging prosecution or allowing cases. This study rectifies this failure by creating and analyzing a dataset that captures every active Examiner’s current docket. Calculating the Office Action per Grant Ratio (OGR = Total # of Office Actions/Total # of Grants), this study’s new metric for measuring Patent Examiner activity captures not only pending cases, but also helps decipher which Examiners are spending their time allowing cases or writing Office Actions. This new metric indirectly helps determine if specific Examiners are prolonging prosecution compared with peers within their Art Unit, Workgroup and Technology Center. Using the OGR score, this study elucidates how Examiners in certain art units and Workgroups behave- specifically, which Examiners in certain art units are more likely to write office actions or allow cases. To calculate the OGR, this study captures 8,537,660 office actions, 2,812,177 granted Patents and 1,255,552 abandonments from 9,535 Examiners from January 1, 2001 to June 8, 2017. This study finds that, overall, there is a wide range of OGR scores across the United States Patent & Trademark Office (USPTO), commonly ranging from approximately 0.2 to 23. Furthermore, overall, most Examiners have an OGR of 3.0 or below, which means that most Examiners write 3 Office Actions before granting a Patent. These OGR scores roughly correlate to allowance rates, but there are a significant number of Examiners that do not have an allowance rate that corresponds with OGR scores. There are more Examiners with high OGR scores in Technology Centers 1600 and 1700, which may reflect the complex nature associated with biotechnology and chemical Patents. In contrast, there are a higher number of Examiners with low OGR scores in Technology Center 2800, which corresponds to Semiconductors, Electrical and Optical Systems and Components. Interestingly, when broken down into Workgroups, this study finds that there can be large variation in OGR scores. For example, in Technology Center 1600, workgroups 1610 and 1620 have a disproportionate number of Examiners with high OGR scores. Similarly, in Technology Center 3600, Workgroups 3620 and 3680 have many Examiners with high OGR scores, which is unsurprising since both Workgroups encompass “Data Processing: Financial, Business Practice, Management, or Cost/Price Determination” or business methods type applications.
Marc De Vleeschauwer - One of the best experts on this subject based on the ideXlab platform.
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The canadian Patent Examiner continuous training program
World Patent Information, 2014Co-Authors: Marc De VleeschauwerAbstract:The Canadian Intellectual Property Office (CIPO) is the Government of Canada organization responsible for granting Patent rights. In 2009, the Patent Branch formalized the continuous training and professional development of Patent Examiners by creating the Patent Examiner Continuous Training Program. This paper presents an overview of the program: factors that influence training needs, categories of training offered, training providers, training medium used and also examples of recent training activities. CIPO's experience may be useful for other intellectual property offices developing a training program for their Examiners.
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The Canadian Patent Examiner qualification program
World Patent Information, 2013Co-Authors: Marc De VleeschauwerAbstract:The Canadian Intellectual Property Office (CIPO) is the Government of Canada organization responsible for granting Patent rights. From 2001 to 2011, the number of Patent Examiners working at CIPO increased more than three-fold. To efficiently and uniformly train this large influx of new employees, the Patent Examiner Qualification Program was developed and implemented in 2003, and improved upon during the last decade. This paper presents a synopsis of the two-year training program, which combines classroom training with on-the-job training where trainees work on Patent applications while being coached by a senior Patent Examiner. At the end of the second year, trainees who meetall the requirements are promoted to the working level. CIPO's experience may be useful for other intellectual property offices, and IP sections of other organizations, developing a training program for their own Examiners or other IP staff. © 2013.
Cesare Righi - One of the best experts on this subject based on the ideXlab platform.
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Patent Examiner specialization
Research Policy, 2019Co-Authors: Cesare Righi, Timothy SimcoeAbstract:We study the matching of Patent applications to Examiners at the U.S. Patent and Trademark Office. The distribution of technology classes is more concentrated than would occur under random matching and F-tests reject the hypothesis that family size and claim scope are randomly distributed across Examiners. Using the application text, we show that Examiner specialization persists even after conditioning on technology sub-classes. Specialization is less pronounced in computers and software than other technology fields. More specialized Examiners have a lower grant rate. These findings undermine the idea that random matching justifies instrumental variables based on Examiner behaviors or characteristics.
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Patent Examiner specialization
National Bureau of Economic Research, 2017Co-Authors: Cesare Righi, Timothy SimcoeAbstract:We study the matching of Patent applications to Examiners at the U.S. Patent and Trademark Office. Using test statistics originally developed to identify industry agglomeration, we find strong evidence that Examiners specialize in particular technologies, even within relatively homogeneous art units. Examiner specialization is more pronounced in the biotechnology and chemistry fields, and less in computers and software. Evidence of specialization becomes weaker, but does not completely disappear, if we condition on technology sub-classes. There is no evidence that certain Examiners specialize in applications that have greater importance or broader claims. More specialized Examiners have a lower grant rate and produce a larger narrowing of claim-scope during the examination process. We discuss implications for instrumental variables based on Examiner characteristics.