Patent Claims and Patent Scope

Marco, Alan C.; Sarnoff, Joshua D.; deGrazia, Charles

doi:10.2139/ssrn.2825317

Cited by 12 publications

(9 citation statements)

References 29 publications

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“…That is likely due to the fact that examiners search for prior art with a particular goal in mind-finding references to support a rejection. Patent examiners are evaluated and promoted primarily on their throughput (Marco, Sarnoff, and deGrazia, 2019). However, they are evaluated in part based on the quality of their examination, and therefore the quality of their search.…”

Section: Lorenz Curves Of Cumulative Proportion Of Patents By Backwarmentioning

confidence: 99%

Patent citations reexamined

Kuhn

Younge

Marco³

2020

The RAND J of Economics

135

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Many studies rely on patent citations to measure intellectual heritage and impact. In this article, we show that the nature of patent citations has changed dramatically in recent years. Today, a small minority of patent applications are generating a large majority of patent citations, and the mean technological similarity between citing and cited patents has fallen considerably. We replicate several well‐known studies in industrial organization and innovation economics and demonstrate how generalized assumptions about the nature of patent citations have misled the field.

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Section: Lorenz Curves Of Cumulative Proportion Of Patents By Backwarmentioning

confidence: 99%

Patent citations reexamined

Kuhn

Younge

Marco³

2020

The RAND J of Economics

135

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“…A patent's strategic value hinges on the nature of the exclusionary right that it provides, which is defined by the patent's claims (Marco, Sarnoff, & Charles, 2019). Holding fixed the underlying idea, a patent that is granted broader claims provides an exclusionary right that encompasses a greater swath of the competitive landscape.…”

Section: Theorymentioning

confidence: 99%

The Track One Pilot Program: Who benefits from prioritized patent examination?

Kuhn

Teodorescu

2020

Strategic Entrepreneurship

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Research Summary 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. Managerial Summary Patents are essential to high‐tech businesses, helping them to secure funding and exclude competitors from the marketplace. We evaluate a USPTO pilot program that allowed patent applicants to accelerate patent examination, yielding a patent in less than 1 year when typically 3 or more years are required. We find that entrepreneurs are more likely to use the program than large firms. Moreover, patents examined under the program tend to be strategically important. They are litigated and cited at higher rates than other patents, and the scope of the patents' claims plays a key role in these outcomes. Collectively our results suggest that multi‐track patent examination programs are likely to have a positive effect on generating new ideas, increasing value capture for entrepreneurs, and facilitating the growth of small businesses. Our results also suggest that the USPTO has implemented the program successfully by accelerating examination without sacrificing quality.

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“…However, the relationship between claim counts and quality is ambiguous because the effect of addition claims depends on its type-independent claims and dependent claims have very different functions (Marco et al, 2019). Independent claims are written in broad terms and serve to delineate the distinct components of an invention and stand on their own.…”

Section: B31 Claimsmentioning

confidence: 99%

“…On the other hand, dependent claims generally specify the precise embodiment of the independent claims such that the scope of each associated independent claim is well-defined. As such, we count these two claim types independently and differently: as independent claims (CIN) and dependent claims per independent claim (CDE) (de Rassenfosse and Jaffe, 2018; Marco et al, 2019). The separation of claims into these two categories is an attempt to roughly distinguish the claims that narrow technological breadth from those that broaden it, and as the total number of claims is simply the sum of the independent and dependent claims, we can only gain information via this separation.…”

Section: B31 Claimsmentioning

confidence: 99%

“…Generally, a dependent claim will narrow a single independent claim; as such, we calculate the number of dependent claims per independent claim to capture the average amount of narrowing present in each patent. Recent work has also found that independent claim length may also play an important role in determining both the scope and pendency of a patent (Kuhn and Thompson, 2019;Marco et al, 2019). Specifically, as independent claim length (and particularly the length of the first claim) increases, the more specific the claim becomes, and the narrower the patent may be, and the faster it can be granted.…”

Section: B31 Claimsmentioning

confidence: 99%

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