The choice of examiner patent citations for refusals: evidence from the trilateral offices
Utilizing a novel methodology based on international family-to-family patent citation data, this paper directly compares X/Y patent citations (i.e., those cited as grounds for rejections, equivalent to “blocking patents” in the US) between major patent offices. Remarkable discrepancies between the offices were revealed, despite the common patentability criteria of novelty and inventive step to generate citations. This paper then introduces a simple cosine similarity measurement between a family of X/Y patent citations and all citations added globally to the same original application. How the discrepancies of X/Y patent citations at the European Patent Office (EPO) and the US Patent and Trademark Office (USPTO) relate to the characteristics of applications and longitudinal aspects of office actions were also examined. X/Y patent citations from both the EPO and USPTO commonly show that the range of patent application classes is positively correlated with divergent reasons for refusal, suggesting that costly examinations lead to diversified X/Y patent citations. One novel methodological feature of this paper is that examiner citations across jurisdictions are comparable if we employ family-to-family citations and common criteria for the X/Y citation category. Furthermore, unlike the normal citation-generating process where a citing document adds citations to prior art only once, this paper represents the first attempt to analyze a citation network with multiple citing opportunities from separate parties. We find that the variance of citation linkages has a negative relationship with the ease in which different citers evaluate prior art in the same way, thereby providing a new perspective on the notion of breadth in citation impact.
KeywordsExaminer citation X/Y citations DOCDB patent family Family-to-family citations Blocking patents Trilateral offices Triadic patent
Mathematics Subject Classification91D30
JEL ClassificationK29 O33 O34
The present study is an extended version of an article presented at the 16th International Conference on Scientometrics and Informetrics, Wuhan (China), 16–20 October 2017 (Wada 2017). This study was conducted as a part of a project for the Research Institute of Science and Technology for Society (RISTEX) and the Japan Science and Technology Agency (JST). This study also benefited from a research project, “Study on Industrial Innovation Capability and Innovation Infrastructure,” undertaken at the Research Institute of Economy, Trade and Industry (RIETI). The author is grateful for helpful comments and support from Setsuko Asami, Stuart Graham, Alan Marco, Sadao Nagaoka, Yoshimi Okada, Alfons Palangkaraya, Andrew Toole, the seminar participants at RIETI, and the audience at the 12th Annual Conference of the European Policy for Intellectual Property (EPIP).
- Dernis, H., & Khan, M. (2004). Triadic patent families methodology. OECD Science, Technology and Industry Working Papers, No. 2004/02. Paris: OECD Publishing.Google Scholar
- Graham, S. J. H., Marco, A. C., & Miller, R. (2015). The USPTO patent examination research dataset: A window on the process of patent examination. Georgia Tech Scheller College of Business Research Paper, No. WP 43.Google Scholar
- Jaffe, A. (1986). Technological opportunity and spillovers of R&D: Evidence from firms’ patents, profits, and market value. American Economic Review, 76(5), 984–1001.Google Scholar
- Jensen, P. H., Palangkaraya, A., & Webster, E. (2005). Disharmony in international patent office decisions. Federal Circuit Bar Journal, 15, 679.Google Scholar
- Kuhn, J. M., Younge, K. A., & Marco, A. C. (2017). Patent citations reexamined: New data and methods. SSRN. https://ssrn.com/abstract=2714954. Accessed 15 Jan 2018.
- Lu, Q., Myers, A. F., & Beliveau, S. (2017). USPTO patent prosecution research data: Unlocking office action traits. USPTO Economic Working Paper, No. 10.Google Scholar
- Marco, A. C., Sarnoff, J. D., & deGrazia, C. (2016). Patent claims and patent scope. USPTO Economic Working Paper, 2016-04.Google Scholar
- Thompson, N., & Kuhn, J. (2017). Does winning a patent race lead to more follow-on innovation? SSRN. https://ssrn.com/abstract=2899088. Accessed 15 Jan 2018.
- Wada, T. (2017). The choice of examiner citations for refusals: Evidence from the trilateral offices. In: Proceedings of ISSI 2017: The 16th international conference on scientometrics and informetrics (pp. 950–957). Wuhan University, China.Google Scholar
- World Intellectual Property Organization. (2017). World intellectual property indicators 2017. WIPO Publication, No. 941E/17.Google Scholar