The Dolcera Blog

Professors Mark Lemley, Chris Cotropia, and Bhaven Sampat recently released a draft of their new article titled “Do Applicant Patent Citations Matter? Implications for the Presumption of Validity.” [Download Here.]

For the article, the trio analyzed the file histories of 1,500+ utility patents issued in 2007 and compared references used in office action rejections with the list of references cited on the patent cover-pages.  The objective was to figure-out the role of applicant-cited prior-art in the examination process.

Findings: Patent examiners rarely rely on applicant-submitted prior-art when making rejections.  Only 13% of the prior art used in office action rejections was applicant-submitted (despite the fact that 74% of cited references are applicant-submitted). Generally, the study found that examiners “effectively ignored” applicant-submitted prior art regardless of how few or how many references were cited; regardless of the timing of the IDS filing; and regardless of whether the submission included an EPO search reports identifying the references as “X-references.”

Implications: The authors suggest several implications of their findings: (1) That it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway); (2) That the presumption of validity associated with patents may be too strong; and (3) That studies based on patent citations likely lack merit.
There are several rational reasons for examiners to cite their own prior art. Because of the backlog, PCTs, and provisional applications, US examination often begins several years after the application was originally filed.  During that interim, many references become available that were not known at filing.  Thus, it is not surprising that applicants rarely cite 102(e) prior art, but examiners cite loads of it.  There is some reason to think that this “newer” prior art is probably better because of technological developments.  It may also be true that the applicant and examiner references are cited for different purposes — namely, applicants cite references that are generally relevant to the invention while examiners are looking for references that teach each particular element in the filed claims.  A third issue is that applicants tend to modify their claims during prosecution. That modification may make their originally cited art less relevant.

Conclusion: Most of the applicant cited references are ignored by the examiners. So, dont really trust on the citations.

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While BP and the government are still floundering in dealing with the catastrophe, we think that a certain look at the patent landscape might guide Mr. Tony Hayword, CEO - BP with a promising business strategy for the future. More often than not, the business decisions involving the patent due diligence / strategic IP kind have had a desired effect on the final outcome.

In addition to the $20 Billion fund dedicated to oil spills, it would also be prudent to look at the intellectual property of companies with deep sea oil capping technology. The immediate steps could also dwelve into mapping its own patent portfolio for potential synergy.

The following graphs shows the top patents assignees companies holding relevant patents of interest to BP at this juncture to seek deep sea oil capping technologies and one of them could be a potential target for BP to acquire or to in-license.

Top IPC Classes with their definitions

Note: The above IP analysis is only a sample derived from the respective IPC classes and we have withheld the comprehensive data for data security purposes. Please contact us for more information while we will be glad to help you.

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