Intellectual Property Law Commons^™

The Federal Circuit As An Institution, Ryan G. Vacca

Law Faculty Scholarship

The Court of Appeals for the Federal Circuit is a unique institution. Unlike other circuit courts, the Federal Circuit’s jurisdiction is bound by subject area rather than geography, and it was created to address a unique set of problems specific to patent law. These characteristics have affected its institutional development and made the court one of the most frequently studied appellate courts. This chapter examines this development and describes the evolving qualities that have helped the Federal Circuit distinguish itself, for better or worse, as an institution.

This chapter begins with an overview of the concerns existing before creation of …

Three New Metrics For Patent Examiner Activity: Office Actions Per Grant Ratio (Ogr), Office Actions Per Disposal Ratio (Odr), And Grant To Examiner Ratio (Ger), Shine Tu

Law Faculty Scholarship

The current metric for examiner prosecution activity is allowance rate, which is calculated by dividing the total number of allowances by the sum of the allowances and abandonments (allowance rate = total allowance/(total allowances total abandonments)). Importantly, however, allowance rates do not consider an examiner’s pending docket. Specifically, allowance rates do not fully capture if the examiner is simply writing office actions thereby prolonging prosecution or allowing cases. This study rectifies this failure by creating and analyzing a dataset that captures every active examiner’s current docket. Calculating the Office Action per Grant Ratio (OGR = Total # of Office Actions/Total …

Invalidated Patents And Associated Patent Examiners, Shine Tu

Law Faculty Scholarship

This study attempts to determine whether there are common

characteristics between examiners who issue invalidated patents. This

study uses two new patent databases that code for nearly 1.7 million

patents and approximately one thousand patents that were litigated to

a 'final" judgment between 2010 and 2011. This study finds that

approximately one-third of patents that are litigated to final judgment

are found invalid. Most invalidated patents are found in technology

centers 1600, 2600, and 2700, which correspond to biotechnology and

organic chemistry, communications, and computer science, respectively.

Most patents are invalidated on prior art-type novelty and obviousness

grounds. This study …

Patent Examiners And Litigation Outcomes, Shine Tu

Law Faculty Scholarship

Conventional wisdom argues that unnecessary litigation of low quality patents hinders innovation, and that the PTO could play a role with its high grant rates. Accordingly, it is important to answer these questions: (1) which patent examiners are issuing litigated patents, (2) are examiners who are "rubber stamping" patents issuing litigated patents at a disproportionately higher rate, and (3) are examiners with less experience issuing more litigated patents? In sum, do patent examiners who issue litigated patents have common characteristics? Intuition would argue that those examiners who issue the most patents (approximately one patent every three business days) would exhibit …

Proposal For A Centralized And Integrated Registry For Security Interests In Intellectual Property, William J. Murphy

Law Faculty Scholarship

As the world economy enters the twenty-first century, job and wealth creation is increasingly based on innovation and creativity that, in turn, can give rise to important intellectual property rights. For many companies and individuals these intellectual property rights may represent their most valuable assets, or in some cases, their only valuable assets. As a result, intellectual property rights increasingly play a critical the role in financing.

Unlocking the job and wealth creating potential of intellectual property assets requires putting these assets into use, and that often requires a capital investment. Unfortunately, many entrepreneurs and innovators lack the capital necessary …