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What is patent quality?

I'd like to explore patent quality more formally rather than just posting numbers to a blog. More importantly, I'd love to hear your feedback, and, in particular, any way I can improve my understanding of patent quality. If you have a lot of feedback or interest, please stop by the Technology Patent Network conference tomorrow in San Francisco, where I'll be talking about patent quality from 4:15 to 4:45.
Patent quality has received a bit of attention recently as patent systems around the world continue to self-evaluate with respect to others, as the case law continues to clarify that not all patents are created equal, and as patent tool vendors successfully push value-added insights. Still, there seems to be quite a bit of disagreement on the subject.
In 2017, former Chief Judge Paul Michel stated: "I think at the end of the day, patents are either valid or invalid as a legal instrument and therefore it's not very helpful to talk about quality or 'good' o…

Guest Lecture on "AI Patent Quality: Avoiding Flaws Inherent In Human-Performed Work" at Stanford Law

I would like to thank Jason Du Mont and his students for inviting me to speak today at Stanford Law on "AI Patent Quality: Avoiding Flaws Inherent In Human-Performed Work," as part of the Law, Science, and Technology LLM Colloquium. I was impressed by their thoughtful and challenging questions.

To summarize the presentation, most of what patent attorneys do today can be done better by machines using existing technology as applied to patent law. Because AI can optimize strategies based on tens of thousands of data points simultaneously, I believe AI will make better decisions, on average, than the human patent attorney counterparts. The underlying algorithms and technology might be ready to take us there, but the patent-specific tools are not yet fully developed. In the meantime, we can make use of as much data and stats-based analytics as possible. Based on wisdom gained from studies outside of patent law, I think we should defer decisions to AI or stats-based analytics when…

Best Practices on IP Portfolio Management and Bulk Patent Quality Evaluation (as presented at PATINEX in Korea and IP Business Journal Conference in Japan, Sept. 2018)

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I am honored to be a guest at PATINEX in Korea and IP Business Journal Conference in Japan this week, where I am presenting the slides below entitled, "Best Practices on IP Portfolio Management and Bulk Patent Quality Evaluation." I wanted to provide an introduction to data-driven patent prosecution in the software realm, particularly for companies that do not yet understand the variance between art units and examiners at the U.S. Patent and Trademark Office (USPTO).
To introduce the topic, I defined a set of "software patent applications," and analyzed what happened to those applications as they transitioned through the USPTO. Not surprisingly in light of my prior studies, the allowance rates are high for software patent applications filed in 2015 with priority in 2015. There are, of course, limitations in this dataset. That said, the data is in line with the all-time high 76% allowance rate at the USPTO. 
Also not surprisingly, the odds in some art units are sig…

Patent Quality Markers From IPRs, District Courts, and Examination at the Patent Office

There are about 600,000 utility patent applications filed in the U.S. each year, feeding into over 8,000 patent examiners at the U.S. Patent and Trademark Office. Each of these patent applications reaches an end-of-life, by being granted, by being abandoned, or by having the patent term expire before grant, which is equivalent to abandonment but much more expensive. Typically, these final dispositions are reached by the patent owners and patent examiners without the involvement of third parties. With all of this data, there are a lot of significant lessons that can be learned by looking at statistics from patent examination. In fact, as indicated in my prior posts and presentations, I think these lessons learned can help us decide where to focus our claims, what to add to our specifications, and even in what spaces we should be inventing more often.

In contrast, there are about 4,000 patent cases filed in district courts each year, with about 10-14% reaching a decision on the merits (…

Are Applicants ALWAYS Able To Survive Art Unit 2138?

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Art Unit 2138 has issued patent applications for "Computer Architecture, Software, and Information Security: Memory Access and Control" at a clip of 87.5% (1626 out of 1859 cases) post-Alice.


That said, are applicants ALWAYS able to survive AU 2138? Not quite. 4.4% (82 out of 1859) of AU 2138 cases finally disposed post-Alice had at least one Request for Continued Examination (RCE) but were still abandoned. Yes, that means 95.6% of cases in AU 2138 were either issued, or the applicant gave up in the first round of prosecution.


Taking a slightly different approach in comparison to my previous post on how to successfully navigate AU 3689, I hope to explain or at least hypothesize in this post how the remaining 4.4% of applications became abandoned in AU 2138 post-Alice. Where did it go wrong? Here are some data-driven tips to avoid the identified pitfalls.

1. Be Willing To Continue Examination In AU 2138

As suggested, 95.6% of cases in AU 2138 were either issued, or the applica…