A New Look at Patent Quality: Relating Patent Prosecution to Validity

Authors

  • Ronald J. Mann,

    1. Columbia Law School
    Search for more papers by this author
  • Marian Underweiser

    Corresponding author
    1. IBM
      Ronald Mann, Columbia Law School, 435 W. 116th St., New York, NY 10027; email: rmann@law.columbia.edu. Mann is Professor of Law and Co-Director of the Center for Transactional Studies, Columbia Law School; Underweiser is Intellectual Property Counsel at IBM.
    Search for more papers by this author

  • We acknowledge comments on presentations at workshops at the law schools at Columbia and Michigan, as well as the 2008 American Law and Economics Association Annual Meeting, a 2009 RSA Conference held at Columbia Law School, presentations at the Patent and Trademark Office, and a workshop at the law firm of Woodcock Washburn. We thank Rochelle Dreyfuss, Marc Ehrlich, Hal Edgar, Clarisa Long, Manny Schecter, David Schwartz, and John Weresh for comments of noteworthy value, and Jim Carlson, Arka Chatterjee, and Greg Odegaard for exemplary assistance with the collection and organization of the prosecution history data set. This article does not reflect the views of IBM.

Ronald Mann, Columbia Law School, 435 W. 116th St., New York, NY 10027; email: rmann@law.columbia.edu. Mann is Professor of Law and Co-Director of the Center for Transactional Studies, Columbia Law School; Underweiser is Intellectual Property Counsel at IBM.

Abstract

The article uses two hand-collected data sets to implement a novel research design for analyzing the precursors to patent quality. Operationalizing patent “quality” as legal validity, the article analyzes the relation between Federal Circuit decisions on patent validity and three sets of data about the patents: quantitative features of the patents themselves, textual analysis of the patent documents, and data collected from the prosecution histories of the patents. The article finds large and statistically significant relations between ex post validity and both textual features of the patents and ex ante aspects of the prosecution history (especially prior art submissions and the existence of internal patent office appeals before issuance). The results demonstrate the importance of refocusing analysis of patent quality on replicable indicators like validity, and the value that more comprehensive collection of prosecution history data can have for improving the output of the patent prosecution process.

Ancillary