Study: Applicant-Submitted Art is Largely Ignored by Examiners
Patent law both imposes a duty on patent applicants to submit relevant prior art to the USPTO and assumes that examiners use this information to determine an application's patentability. In a recently-published paper, Christopher Cotropia, Mark Lemley and Bhaven Sampat tested the validity of these assumptions by studying the use made of applicant-submitted prior art by delving into the actual prosecution process in over a thousand different cases.
In short, the findings are quite disturbing:
We find, to our surprise, that patent examiners effectively ignore almost all applicant-submitted art, relying almost exclusively on prior art they find themselves. This is not simply because the applicant has “drafted around” the art they submitted. Even late-submitted art is ignored by examiners. Either applicants submit uniformly weak prior art, or examiners simply ignore what they receive and focus on the art they find themselves. Based on our further examination of the data, the latter explanation seems more likely.These findings have significant implications on a number of important legal and policy disputes:
(1) Outsourcing patent searches - if examiners only pay attention to the art they find for themselves, the effectiveness of outside submissions may be questionable.
(2) Presumption of validity - should the law presume a patent valid over art that the examiner has not given much consideration?
(3) Inequitable conduct - the findings suggest that the most common form of inequitable conduct - the willful failure to submit prior art to the USPTO - may be less of a problem than previously thought; not because applicants don't try to deceive the USPTO, but because any effort to do so seems wasted.
(4) Patent valuation - "citation counts" are often used as a prominent measure of a patent's strength. If counts become inflated due to repeated submissions by an applicant, the strength (i.e., value) of the patent may become overstated.
Other findings from the study:
- Over three-quarters of the submitted art against which patentability is evaluated comes from applicants. Most of the art (63%) is previous U.S. patents.
- Examiners account for a much larger share of citations to U.S. patents versus other types of art. Examiners account for 34% of citations, versus 6.2% for non-patent art and 6.1% for foreign patents. This is consistent with prior suggestions that patent examiners primarily search prior U.S. patents.
- 17 % of the patents in the sample were issued with no rejections.
- Of the references examiners use to reject claims, only 12.7% come from the applicants, while 87.2% come from examiners.
- Over 90% of the U.S. patents used in rejections emanate from examiner searches, rather than from applicants.
- Examiners used only 2.9% of the applicant-submitted foreign patents and 1.1% of the applicant-submitted non-patent art.
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I can assure him that me and the examiners I know do not "ignore" or "largely ignore" the references cited.
I can confirm that applicants cite outright plain not related to the claims at all references 95% of the time. Whether or not that is "bad" art or whatever is up for discussion, but that's how it goes down.
I also routinely use the remainder of the references that are actually applicable to something in claims in rejections all the time.
I'd love to read the paper but the SSRN site just kicks me back to the abstract page when I say download anonymously and it doesn't pop up the little download tab at the top like it used to. We just changed to IE8 or something here so that is probably the issue, all kinds of web pages respond wrong now.
Either way, no amount of "findings" by these academics can counter the fact that is plain on its face from review of any number of patents and their art cited that applicants are submitting plainly irrelevant art waaaaaaaaaaaaaaaaaaaaaaaaaaaaaaaaayyyyyyyyyyyyyyyyyyyyyyyyy too often.
Gee, an attack on the patent system and one of its strengths - the assumption of validity.
Who is it by? An academic named Lemley - well that's a surprise - NOT!
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With quite a number of years of experience for the EPO which I have now left, I can agree with anonymous....one could count oneself already lucky when art cited by applicants was more or less related to the application itself (often the EPC or IPC wasn´t even close!). Of course there were the "serious" applicants who cited really relevant art, art that was most often then cited by myself and colleagues in the search report, although not always with the same appreciation as intended by the applicant, but that is part of the whole process....Such applicants were, however, rare and we knew very well who they were and appreciated their input a lot. Please, when examining "habits", try to be honest and look at the problem from various points of view; that is, after all, also the work of an examiner....and - at least at the EPO - we tried to do that correctly!
Newsflash -- Academic and Examiner fail to agree!
Actually, the reason that this is not remotely surprising is that there could not be two parties whose interests and concerns in relation to the patent system are further apart.
The role of academics is to study the workings of the system from a legal and economic perspective. Their interests lie appropriately in matters such as policy settings. They have no particular interest in whether the system is "working" for specific applicants, or for examiners, or for any other special interest groups. Theirs is a global and holistic view, and it is an important one because it can provide useful input to policy-making, which can have a significant impact on economic outcomes.
Examiners, on the other hand, spend every day at the coal-face of the system, assessing each individual application. There is no reason to suppose that most are not doing this to the best of their ability. But like not seeing the forest for the trees, it must be almost impossible for examiners to see the system from an outside perspective.
Personally, I expect that a major factor in most disclosed art not being applied, and examiners complaining about its lack of relevance, is because most applicants (on advice of their attorneys) fear charges of inequitable conduct. It is safe to disclose "too much" art (ie pretty much everything, even if it is not relevant), but dangerous to risk disclosing too little. Examiners are therefore inundated with irrelevant documents, which is harmful to the system.
Whether you like it or not, this is a systemic issue. The intentions are good: place the onus on the applicant to be candid; hold them to what they say in prosecution; require them to disclose "material" prior art; and in return, they get a strong presumption of validity for their granted patent.
This is fine, so long as it works. The point of this research is surely that the system is not working as well as intended. It would work better if applicants only submitted truly material art, so that examiners could feasibly review all of it in sufficient detail. But that is not what happens, thanks at least in part to the state of the law on inequitable conduct.
I know everyone is hoping that TheraSense will fix this problem, but I am not holding my breath.
Outside the US, not many of us have prosecution history estoppel to trouble us, nor do we have a duty of disclosure, nor even a particularly strong duty of candour. It is sufficient that we do not engage in actual fraud or misrepresentation to obtain a patent. On the other hand, we have no automatic presumption of validity, either.
I know that those of you from the US tend to think that your ways are always better, and you might be right. But I am not aware of any evidence to suggest that the patent system works any less well in those countries that ave adopted the alternative approach.
Looking in from the outside, I have long had the feeling that the way the courts do "equity" distorts the US patent system, to the detriment of everybody except patent litigators.
Thus, clearance searches are driven primarily to protect against IC rather than to find and thoroughly analyse the biggest threats. Patentability searches, if they happen at all, are desultory. Then, the closest art is cited to the PTO, sure, but well-buried in a near endless list of barely relevant art.
In Europe, without equity, it is quite different. If a European cites art to the EPO, it is close art and (out of pure self-interest) Applicant wants it thoroughly overcome before issue, rather than afterwards.
Study is accurate, Examiner will rarely use the applicant cited prior art to make a rejection--and even if you do--you will support the rejection with art from an examiner search. No examiner is allowed to simply use the applicant cited prior to make a rejection without a search. If an Examiner finds a reference to combine with prior art cited, it guarantees there is better art out there than cited prior art.
So, why do we need a duty of disclosure? Is it tied to the presumption of validity? The "clear and convincing" standard for invalidating a patent?
Many foreign patent offices that used to have a duty of disclosure have eliminated it. I think we are down to the US, Canada and Israel. Canada focuses on references that were cited by by other patent offices. Israel used to be like Canada, but recently has broadened its duty of disclosure.
What if the U.S. limited the duty to references cited by foreign patent offices, and non-prior art information (on-sale bar, etc.)?
Or, given the low level of non-patent publications cited by examiners, what if the U.S. limited the duty to non-patent documents?
"So, why do we need a duty of disclosure? Is it tied to the presumption of validity? "
The duty of disclosure is to make sure that the Office has any and all items so that it can make the examination decision. It is a mechanism to preent applicants from hiding the ball.
It is not (nor is it meant to be)tightly tied, or to put another way, it is not meant to drive any level of presumption - this is evident in the IDS rules that explicitly waive any such inference.
What this is is another academic attack on the strength of patents.
The presumption of vlalidity is an anchor of the value of patents. If on ecannt simpy get rid of patents altogether, on ecan at least try to emasculate them.
These findings could have a measurable impact on patent litigation. Any strong evidence like this that could potentially reduce the frequency of inequitable conduct charges is more than welcome.
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