Patenting Inventions or Inventing Patents? Strategic Use of Continuations at the USPTO / Cesare Righi, Timothy Simcoe.

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Righi, Cesare

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Material type: Text

TextSeries: Working Paper Series (National Bureau of Economic Research) ; no. w27686.Publication details: Cambridge, Mass. National Bureau of Economic Research 2020.Description: 1 online resource: illustrations (black and white)Subject(s):

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Abstract: Continuations allow inventors to claim technology developed after the original filing date of a patent, leading to concerns about inadvertent infringement and hold-up. For researchers seeking to study this practice, a key challenge is the difficulty of linking patent applications to potentially infringing technology. We use the link created by disclosure of standard essential patents (SEPs) to analyze the relationship between standard publication -- a key observable milestone in technology development -- and continuation filing. More than half of the SEPs in our data are filed after standard publication. There is a substantial increase in continuation filings immediately after standard publication, and this increase is larger when the initial patent examiner is more lenient. We also find that claims in SEP continuations are more likely to be rejected for double patenting (indicating an effort to change the scope of previous patents), and that keywords in the claims of SEPs linked to the same standard become more similar after standard publication. Overall, these findings suggest widespread use of continuation procedures to opportunistically "invent patents" that are infringed by already-published standards.

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Item type	Home library	Collection	Call number	Status	Date due	Barcode	Item holds
Working Paper	Biblioteca Digital	Colección NBER	nber w27686 (Browse shelf(Opens below))	Not For Loan

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August 2020.

Continuations allow inventors to claim technology developed after the original filing date of a patent, leading to concerns about inadvertent infringement and hold-up. For researchers seeking to study this practice, a key challenge is the difficulty of linking patent applications to potentially infringing technology. We use the link created by disclosure of standard essential patents (SEPs) to analyze the relationship between standard publication -- a key observable milestone in technology development -- and continuation filing. More than half of the SEPs in our data are filed after standard publication. There is a substantial increase in continuation filings immediately after standard publication, and this increase is larger when the initial patent examiner is more lenient. We also find that claims in SEP continuations are more likely to be rejected for double patenting (indicating an effort to change the scope of previous patents), and that keywords in the claims of SEPs linked to the same standard become more similar after standard publication. Overall, these findings suggest widespread use of continuation procedures to opportunistically "invent patents" that are infringed by already-published standards.