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Strategic Citation: A Reassessment

By Jeffrey M. Kuhn, Kenneth Younge, and Alan Marco

Review of Economics and Statistics, forthcoming.

Abstract: The United States patent system is unique in that it requires an applicant to cite documents they know to be relevant to the examination of their patent application. Lampe (2012) presents evidence that applicants strategically withhold 21-33% of relevant citations from patent examiners, suggesting that more than one in ten patents are fraudulently obtained. We challenge this view. We examine the institutional details of how courts identify strategic withholding and find that Lampe’s empirical design is inconsistent with both legal standards and standard operating procedures. We then compile a more up-to-date and detailed set of data to reassess the empirical basis for Lampe’s main claim. We find no evidence that applicants withhold citations from examiners. Read Full Article.



The Track One Pilot Program: Who Benefits From Prioritized Patent Examination?

By Jeffrey M. Kuhn and Mike Teodorescu

Strategic Entrepreneurship Journal, Vol. 15, Issue 2, pp. 185-208, 2020

Abstract: Speed is often critical for successful commercialization of a new technology, and patents help entrepreneurs secure funding, enter the market, and avoid expropriation of their ideas. In this article, we employ a recent change to U.S. patent law—the introduction of an elective program accelerating patent examination—to investigate the role of patent examination speed in strategic entrepreneurship. We find that small firms with limited patent portfolios are the most likely to expedite their patent applications. Moreover, accelerated patents are cited and litigated at higher rates than other patents, and these outcomes are more sensitive to exogenous changes to patent scope. Our results suggest that providing the option to accelerate patent examination may help increase incentives for innovation by strategic entrepreneurs.


Does Winning a Patent Race Lead to More Follow-on Innovation?

By Neil Thompson and Jeffrey M. Kuhn

Journal of Legal Analysis, Vol. 12, pp.183-220, 2020

Abstract: Competition between firms to invent and patent an idea, or “patent racing,” has been much discussed in theory, but seldom analyzed empirically and never at scale. This article introduces an empirical way to identify patent races, and provides the first broad-based view of them in the real world. It reveals that patent races are common, particularly in information-technology fields. The article then analyzes the effect of winning a patent race, showing that patent race winners do significantly more follow-on innovation, and their follow-on research is more similar to what was covered by the patent. Read Full Article.


The Right to Exclude: Property Rights and Frictions in the Sale of Patents

By Jeffrey M. Kuhn

Status: Working Paper, University of North Carolina (UNC) at Chapel Hill - Kenan-Flagler Business School, Written November 6, 2016, posted November 13, 2016, 50 pages
Abstract: Patent scope is central to the sale of ideas, which can spur economic growth and provide significant gains from trade. Awarding an inventor a patent on a new idea partially solves a commitment problem that would otherwise prevent the inventor from selling the idea. (Arrow, 1962). In the absence of a patent, a prospective buyer cannot credibly promise not to steal the idea should the inventor reveal it, while the inventor cannot credibly promise to reveal the idea should the prospective buyer pay for it. A firm's ability to use a particular patent to overcome this transactional hurdle derives from two factors: (1) the scope of the patent's legal right to exclude and (2) the effectiveness of that legal right in providing market exclusivity. I first show that a broader patent is more likely to be sold by employing a causal instrument that provides a plausibly exogenous shock to the scope of a patent's legal right to exclude, holding fixed the underlying idea. I then examine variation in the effectiveness of the right by interacting the instrument with endogenous firm, industry, and market characteristics. These results shed light on how firms profit from innovation and also connect the important but understudied market for patents, widely believed to be illiquid and inefficient, with fundamental research about how markets function in other contexts.  Read Full Article.



Information Overload at the U.S. Patent and Trademark Office: Reframing the Duty of Disclosure in Patent Law as a Search and Filter Problem

By Jeffrey Kuhn

Yale Journal of Law and Technology, Vol. 13, pp. 90-139, 2010
Abstract: The United States Patent and Trademark Office (USPTO) receives more prior art submissions by patent applicants than its patent examiners have the capacity to process. Although applicant prior art submissions are highly likely to contain references material to prosecution, evidence suggests that overburdened examiners often fail to utilize references submitted by applicants in their examination of patent applications. The information overload suffered by patent examiners has deleterious effects on patent quality, since examiners fail to identify and apply the references most relevant to the examination of patent applications. The vision of patent examiners as perfect filters of patentability and of information as always benefiting the public good is both idealistic and unrealistic. Despite their expertise, patent examiners are human and fallible, vulnerable to the effects of information processing overload and the cognitive biases attendant to decision-making by a boundedly rational actor. Failing to address these problems will likely result in frustrated applicants, overburdened patent examiners, and reduced patent quality. This article proposes to solve both the plague of inequitable conduct allegations in litigation and the administrative burdens of complying with the duty of disclosure by reframing disclosure obligations for the information age. Reframing the duty of disclosure in this fashion would require no modifications to statutory provisions, few alterations to administrative rules and regulations, and only modest changes to existing case law. Thus, the approach suggested in this article is both legally conservative and administratively feasible.  Read Full Article.

An Estoppel Doctrine for Patented Standards 

By Robert Merges and Jeffrey Kuhn

California Law Review, Vol. 97, No. 1, 2009
Abstract: Technical standards, such as interface protocols or file formats, are extremely important in the network industries that add so much value to the world economy today. Under some circumstances, the assertion of patent rights against established industry standards can seriously disrupt these network industries. We have in mind two particularly disruptive tactics: (1) the snake in the grass, whereby a patentee intentionally keeps a patent quiet while a standard is being designed or adopted, and then later, after the standard is entrenched, asserts the patent widely in an attempt to capitalize on its popularity; (2) the bait and switch ploy where a patentee encourages adoption by offering royalty-free use of standard-related patents, and then, after the standard has gone into widespread use, begins to enforce its patents against adopters of the standard. We propose to counteract these tactics with a simple solution: over time, adopters of a standard ought to build up a reliance interest in the standard. Under our approach – which we call standards estoppel – non-assertion of a patent right in the presence of widespread adoption should create immunity from patent infringement. The fundamental idea behind this doctrine is to prevent strategic assertions of patents that exploit the logic of network lock-in. As we explain, though this is a simple doctrine based on deeply held common law principles, various gaps in the current doctrinal structure make this a necessary addition to the contemporary legal arsenal. In particular, standards estoppel plugs some dangerous conceptual holes in current rules relating to laches, waiver, estoppel, implied licensing, and patent misuse/antitrust. With this modest addition to the doctrinal fabric, patent law can more effectively guard against the risk of illegitimate leverage, thus more effectively fostering innovation in network industries.  Read Full Article.

Patentable Subject Matter Matters: New Uses for an Old Doctrine

By Jeffrey Kuhn

Berkeley Technology Law Journal, Vol. 22, No. 89, 2007
Abstract: Patentable subject matter historically constituted a significant bar to patentability. However, technological growth coupled with the expansion of patent law under the Federal Circuit has left patentable subject matter largely irrelevant for practical purposes. Although presenting easily surmountable drafting difficulties, subject matter has rarely presented a difficult hurdle to obtaining a patent in recent years. This changed with the Supreme Court’s grant of certiorari in Lab. Corp. v. Metabolite. Although certiorari was ultimately dismissed as improvidently granted, the Supreme Court’s renewed interest in patent law coupled with Justice Breyer’s dissent from dismissal suggests that the Court is ready to take a new look at subject matter doctrine. This Article analyzes the history of the subject matter doctrine and examines in detail the subject matter issues presented by modern technological developments. Ultimately the Article highlights a proposed test for patentabity in the biotechnology space and suggests a new formulation of the patentable subject matter doctrine to deal with patents on abstract technologies. New technology makes patentable subject matter more important, not less, but courts need new tools to enforce patent law efficiently for the latest technological advances. Read Full Article.

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