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Saurabh Vishnubhakat - One of the best experts on this subject based on the ideXlab platform.
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when biopharma meets software bioinformatics at the Patent Office
Harvard Journal of Law & Technology, 2015Co-Authors: Saurabh Vishnubhakat, Arti K RaiAbstract:TABLE OF CONTENTS I. INTRODUCTION II. QUALITY IN THE Patent Office A. Improper Application of Patent Law Standards B. Lax Patentability Standards C. Quality and Technology-Specificity III. MEASURING Patent QUALITY A. Citations and Knowledge Transfer B. Private Value C. Legal Validity D. Examiner Characteristics IV. BIOINFORMATICS AT THE USPTO: AN EMPIRICAL VIEW A. Technology and Comparison Group B. Hypotheses About Examination C. Results: Applications D. Results: Examination E. Discussion 1. Subject Matter 2. Written Description: Impacts on Notice 3. Other Indicia of Notice 4. Enablement and Nonobviousness V. POLICY IMPLICATIONS FOR Patent QUALITY AND TEAM-BASED INNOVATION A. Patent Quality B. Team-Based Innovation VI. CONCLUSION In 1999, nine years after the National Institutes of Health's ("NIH") National Center for Human Genome Research had published its first joint research plan, the project to sequence the human genome was operating at full force. (1) The entire genome of a free-living organism, Haemophilus influenzae, had already been sequenced, (2) and the first full human chromosome sequence would be published that same year. (3) The joint announcement by President Bill Clinton and United Kingdom Prime Minister Tony Blair of the so-called rough draft human genome would be made the following year. (4) This burgeoning body of genomic knowledge required analytical tools for parsing and manipulating it productively. Though such tools had long existed in computer science and had even been applied to research problems in the life sciences under the designation of bioinformatics, they had not yet been systematized into a formal discipline. (5) The specialization of such tools to manage the peculiar scope and scale of genomic information marked the origin of bioinformatics as a distinct discipline. (6) Perhaps not surprisingly, the United States Patent and Trademark Office ("USPTO") had begun receiving a growing number of Patent applications for inventions in the field of bioinformatics. (7) Based on industry input, it projected many more in the coming years. (8) In response, by December of 1999, the USPTO had established a new art unit to examine all bioinformatics applications in a consistent way. [9] The art unit resides in USPTO Technology Center 1600, (10) which examines inventions in biotechnology and organic chemistry (11) and is designated art unit ("AU") 1631. (12) From its earliest days, the Patent examiners in AU 1631 had diverse expertise not only in the biological sciences, but also in physics and electrical engineering and, most importantly, computer science. (13) The USPTO considered the software and data processing Patent cases of the late 1990s (14) directly relevant to Patents on computing tools for analyzing biological systems, and accordingly advised bioinformatics inventors to draw lessons from the software invention guidelines in the Manual of Patent Examining Procedure ("MPEP"). (15) Thus the rapid expansion of software Patentability seen in that era directly affected AU 1631. However, the art unit was also located in Technology Center 1600, which had just announced important, new, relatively strict examination guidelines on the so-called written description and utility requirements. (16) This latter group of guidelines presumably also had some impact on the behavior of examiners in AU 1631. This Article analyzes these dual influences in an early cohort of Patent applications assigned to AU 1631. It first compares the characteristics of these applications with a comparison group of applications from a related but more traditionally software-oriented data processing art unit, AU 2123. Our analysis shows that on all conventional measures of technological importance, private value and quality, applications in AU 1631 were significantly different from and "better" than applications in AU 2123. …
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when biopharma meets software bioinformatics at the Patent Office
Social Science Research Network, 2015Co-Authors: Saurabh Vishnubhakat, Arti K RaiAbstract:Scholars have spilled much ink questioning Patent quality. Complaints encompass concern about incoming applications, examination by the U.S. Patent and Trademark Office (“USPTO”), and the USPTO’s ultimate output. The literature and some empirical data also suggest, however, that applications, examination, and output may differ considerably based on technology. Most notably, although definitions of Patent quality are contested, quality in the biopharmaceutical industry is often considered substantially higher than that in information and communications technology (ICT) industries.This Article presents the first empirical examination of what happens when the two fields are combined. Specifically, it analyzes the creation and early history of a USPTO examination art unit (AU 1631) that reviews interdisciplinary inventions at the intersection of the biological and information sciences. We explore private value and quality metrics in an early cohort of incoming applications assigned to AU 1631, comparing the applications’ performance on these metrics to a group of applications assigned to a related art unit for more traditional software. We then explore the marginal value of the examination process by comparing examination in AU 1631 with that of a matched set of applications assigned to the traditional software art unit.Our results show that, on almost all conventional measures of Patent value and quality, incoming bioinformatics applications were substantially different from, and “better” than, traditional software applications. Moreover, when we compared examination of applications in the two art units that had been matched on these dimensions of private value and quality, applications in AU 1631 experienced significantly more rejections, particularly notice-related rejections, than the conventional software applications. The notable exception was in the area of nonobviousness, where the prevailing law at the time made interdisciplinary, or “recombinant,” inventions presumptively nonobvious. Potential causal explanations for the higher rejection rates in areas other than nonobviousness include “biotechnology-specific” guidelines then in place at the USPTO as well as the higher educational attainment of examiners in AU 1631.Our results contribute to the empirical literature on factors that affect Patent examination quality, particularly with respect to notice. They suggest that technology-specific examination guidelines and educational level not only have an impact, but that this impact can “spill over” into other technologies. The results also demonstrate, at the level of the art unit (an important but relatively understudied unit of analysis), the empirical theme of substantial variation in what the USPTO receives and how it processes what it receives. We conclude by discussing potential policy implications, including a link to the literature on how examination should be conducted when (as is increasingly the case) the art in question is an interdisciplinary, team-based field.
Arti K Rai - One of the best experts on this subject based on the ideXlab platform.
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when biopharma meets software bioinformatics at the Patent Office
Harvard Journal of Law & Technology, 2015Co-Authors: Saurabh Vishnubhakat, Arti K RaiAbstract:TABLE OF CONTENTS I. INTRODUCTION II. QUALITY IN THE Patent Office A. Improper Application of Patent Law Standards B. Lax Patentability Standards C. Quality and Technology-Specificity III. MEASURING Patent QUALITY A. Citations and Knowledge Transfer B. Private Value C. Legal Validity D. Examiner Characteristics IV. BIOINFORMATICS AT THE USPTO: AN EMPIRICAL VIEW A. Technology and Comparison Group B. Hypotheses About Examination C. Results: Applications D. Results: Examination E. Discussion 1. Subject Matter 2. Written Description: Impacts on Notice 3. Other Indicia of Notice 4. Enablement and Nonobviousness V. POLICY IMPLICATIONS FOR Patent QUALITY AND TEAM-BASED INNOVATION A. Patent Quality B. Team-Based Innovation VI. CONCLUSION In 1999, nine years after the National Institutes of Health's ("NIH") National Center for Human Genome Research had published its first joint research plan, the project to sequence the human genome was operating at full force. (1) The entire genome of a free-living organism, Haemophilus influenzae, had already been sequenced, (2) and the first full human chromosome sequence would be published that same year. (3) The joint announcement by President Bill Clinton and United Kingdom Prime Minister Tony Blair of the so-called rough draft human genome would be made the following year. (4) This burgeoning body of genomic knowledge required analytical tools for parsing and manipulating it productively. Though such tools had long existed in computer science and had even been applied to research problems in the life sciences under the designation of bioinformatics, they had not yet been systematized into a formal discipline. (5) The specialization of such tools to manage the peculiar scope and scale of genomic information marked the origin of bioinformatics as a distinct discipline. (6) Perhaps not surprisingly, the United States Patent and Trademark Office ("USPTO") had begun receiving a growing number of Patent applications for inventions in the field of bioinformatics. (7) Based on industry input, it projected many more in the coming years. (8) In response, by December of 1999, the USPTO had established a new art unit to examine all bioinformatics applications in a consistent way. [9] The art unit resides in USPTO Technology Center 1600, (10) which examines inventions in biotechnology and organic chemistry (11) and is designated art unit ("AU") 1631. (12) From its earliest days, the Patent examiners in AU 1631 had diverse expertise not only in the biological sciences, but also in physics and electrical engineering and, most importantly, computer science. (13) The USPTO considered the software and data processing Patent cases of the late 1990s (14) directly relevant to Patents on computing tools for analyzing biological systems, and accordingly advised bioinformatics inventors to draw lessons from the software invention guidelines in the Manual of Patent Examining Procedure ("MPEP"). (15) Thus the rapid expansion of software Patentability seen in that era directly affected AU 1631. However, the art unit was also located in Technology Center 1600, which had just announced important, new, relatively strict examination guidelines on the so-called written description and utility requirements. (16) This latter group of guidelines presumably also had some impact on the behavior of examiners in AU 1631. This Article analyzes these dual influences in an early cohort of Patent applications assigned to AU 1631. It first compares the characteristics of these applications with a comparison group of applications from a related but more traditionally software-oriented data processing art unit, AU 2123. Our analysis shows that on all conventional measures of technological importance, private value and quality, applications in AU 1631 were significantly different from and "better" than applications in AU 2123. …
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when biopharma meets software bioinformatics at the Patent Office
Social Science Research Network, 2015Co-Authors: Saurabh Vishnubhakat, Arti K RaiAbstract:Scholars have spilled much ink questioning Patent quality. Complaints encompass concern about incoming applications, examination by the U.S. Patent and Trademark Office (“USPTO”), and the USPTO’s ultimate output. The literature and some empirical data also suggest, however, that applications, examination, and output may differ considerably based on technology. Most notably, although definitions of Patent quality are contested, quality in the biopharmaceutical industry is often considered substantially higher than that in information and communications technology (ICT) industries.This Article presents the first empirical examination of what happens when the two fields are combined. Specifically, it analyzes the creation and early history of a USPTO examination art unit (AU 1631) that reviews interdisciplinary inventions at the intersection of the biological and information sciences. We explore private value and quality metrics in an early cohort of incoming applications assigned to AU 1631, comparing the applications’ performance on these metrics to a group of applications assigned to a related art unit for more traditional software. We then explore the marginal value of the examination process by comparing examination in AU 1631 with that of a matched set of applications assigned to the traditional software art unit.Our results show that, on almost all conventional measures of Patent value and quality, incoming bioinformatics applications were substantially different from, and “better” than, traditional software applications. Moreover, when we compared examination of applications in the two art units that had been matched on these dimensions of private value and quality, applications in AU 1631 experienced significantly more rejections, particularly notice-related rejections, than the conventional software applications. The notable exception was in the area of nonobviousness, where the prevailing law at the time made interdisciplinary, or “recombinant,” inventions presumptively nonobvious. Potential causal explanations for the higher rejection rates in areas other than nonobviousness include “biotechnology-specific” guidelines then in place at the USPTO as well as the higher educational attainment of examiners in AU 1631.Our results contribute to the empirical literature on factors that affect Patent examination quality, particularly with respect to notice. They suggest that technology-specific examination guidelines and educational level not only have an impact, but that this impact can “spill over” into other technologies. The results also demonstrate, at the level of the art unit (an important but relatively understudied unit of analysis), the empirical theme of substantial variation in what the USPTO receives and how it processes what it receives. We conclude by discussing potential policy implications, including a link to the literature on how examination should be conducted when (as is increasingly the case) the art in question is an interdisciplinary, team-based field.
Stefan Sorg - One of the best experts on this subject based on the ideXlab platform.
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the disciplinary effect of post grant review causal evidence from european Patent opposition
Research Policy, 2020Co-Authors: Markus Nagler, Stefan SorgAbstract:Abstract We study the causal impact of invalidating marginally valid Patents during post-grant opposition at the European Patent Office on affected inventors’ subsequent Patenting. We exploit exogenous variation in invalidation by leveraging the participation of a Patent’s original examiner in the opposition division as an instrument. We find a disciplinary effect of invalidation: Affected inventors file significantly fewer Patent applications in the decade after the decision. The effect is entirely driven by a reduction in low-quality filings, i.e., filings that examiners associate with prior art that threatens the application’s novelty or inventive step. We do not observe shifts into national Patenting.
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the disciplinary effect of post grant review causal evidence from european Patent opposition
Research Papers in Economics, 2019Co-Authors: Markus Nagler, Stefan SorgAbstract:We study the causal impact of invalidating marginally valid Patents during post-grant opposition at the European Patent Office on affected inventors’ subsequent Patenting. We exploit exogenous variation in invalidation by leveraging the participation of a Patent’s original examiner in the opposition division as an instrument. We find a disciplinary effect of invalidation: Affected inventors file 20% fewer Patent applications in the decade after the decision. This effect is entirely driven by a reduction in low-quality filings, i.e., filings that examiners associate with prior art that threatens the application’s novelty or inventive step. We do not observe shifts into national Patenting.
Justine Pila - One of the best experts on this subject based on the ideXlab platform.
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Software Patents, Separation of Powers, and Failed Syllogisms: A Cornucopia from the Enlarged Board of Appeal of the European Patent Office
Cambridge Law Journal, 2011Co-Authors: Justine PilaAbstract:The decision of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) in G_0003/08 regarding the Patentability of computer programs under the European Patent Convention (EPC) is considered, and the grounds for the EBA’s rejection of the President’s referral on the computer programs exclusion of Article 52(2)(c) & (3) analysed. An argument is made that the basis for that rejection is an interpretation of the President’s power of referral under Article 112(1)(b) EPC that is inconsistent with Articles 31–33 of the Vienna Convention, and that offends the constitutional principles on which the EBA relied. The EBA’s support for the EPO’s narrow interpretation of Article 52(2)(c) & (3) is also criticized on doctrinal, theoretical, and other grounds.
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Software Patents, Separation of Powers, and Failed Syllogisms: A Cornucopia from the Enlarged Board of Appeal of the European Patent Office
Social Science Research Network, 2010Co-Authors: Justine PilaAbstract:The focus of this article is Case G_0003/08 (President’s Reference/Computer programs exclusion), in which the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) rejected as "inadmissible" the EPO President’s referral on the meaning of the computer programs exclusion from Patentability contained in Art 52(2)(c) of the European Patent Convention (EPC). The basis for its decision was a restrictive interpretation of the President’s power of referral under Art 112(1)(b) EPC, justified with reference to “current constitutional thinking”, including particularly the EPC’s separation of powers. In this article I suggest that the EBA’s interpretation of Art 112(1)(b) is inconsistent with both the literal terms of that provision and the intent of its drafters. The result is a reading which offends “current constitutional thinking”, including the EPC’s separation of powers and the interpretive principles of Articles 31-33 of the Vienna Convention. I also criticize the EBA’s support for the EPO Boards’ “technical character” theory of Article 52(2)(c) & (3) on doctrinal, theoretical and other grounds, including that it reflects the same faulty logic for which the EBA criticized the President's referral.
Elena M. Tur - One of the best experts on this subject based on the ideXlab platform.
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Examiner trust in applicants to the European Patent Office: country specificities
Scientometrics, 2018Co-Authors: Joaquín M. Azagra-caro, Elena M. TurAbstract:Indicators based on the probability of applicant citations in Patents have been used to emphasize the importance of distinguishing applicant and examiner citations. However, the interpretation of these indicators and of the presence of applicant citations in European Patent Office (EPO) examiner reports is still uncertain. Based on interviews with Patent examiners and Patent applicants, we develop the idea that applicant citations in EPO examiner reports indicate examiner trust in applicants, and that this trust varies according to national patterns. Using EPO data for over 3,500,000 citations during 1997–2007, we verify that examiner trust in applicants is higher in granted Patents. Examiners trust applicants from scientifically or economically strong countries, from member states of the European Patent Organization, and from the same country of the examiners.
