Patent Law

The article, of the above title, submitted for publication in December 2007 by Corinne Langinier and Philippe Marcoul states:

This paper examines the strategic non-revelation of information by innovators when applying for patents. In a model of a bilateral search of information, we show that innovators may conceal information, and that examiners make their screening intensity contingent upon the received information. We then analyze the effects of a double review policy and a policy in which examiners ex ante commit to screening efforts. The implementation of the former policy reduces strategic non-revelation, but its overall implication remains unclear. The latter policy involves equal screening intensity across all applications, requires a limited commitment power from the examiner and induces truthful revelation.

Performances within the U.S. Patent and Trademark Office (PTO) have been strongly questioned, and examiners are often accused of granting questionable patents. This may be due to their poor knowledge of relevant prior art - the existing set of related inventions - especially in new technological fields, as was the case in e-commerce at the beginning of 2000 or is now the case in nanotechnology (Sampat, 2005). Sampat (2005) finds strong evidence that supports the fact that examiners are less informed than innovators about relevant prior art in nanotechnology, and face particular challenges in searching for it. On the other hand, according to Alcacer and Gittelman (2006), over the period 2001-2003, forty percent of patents had all citations (i.e., prior art information) listed by examiners. In other words, innovators initially applied for patents with no prior art in less than half of the patents studied.These empirical observations suggest, in a non-exclusive way, that patent applicants may not have the proper incentives to search and reveal prior art, and examiners may also have a hard time finding the relevant prior art in some fields.

In this paper we investigate the determinants of patent quality by focusing on the processes employed both by innovators and patent examiners in gathering information. We analyze the patenting process as a sequential bilateral information gathering game in which players have different objectives. On the applicant side, innovators search for prior art information and, if discovered, decide whether or not to reveal it. On the other hand, from the PTO’s perspective, as there is often uncertainty on patent applications, the ultimate goal of the PTO is to reject non-patentable innovations and accept patentable ones.

Read the full paper here.