In a prior post, I wrote about third party prior art submissions, but that post was only looking at issued patents. I have gone back and pulled-in data from all publicly-available applications, including those that have been abandoned or are still pending. The results: third parties have submitted prior art in about 7,000 applications over the past decade. This is about 0.2% of all the applications in my dataset.
I have uploaded the listing of all the applications with third-party submissions (and current status of each application) at the link below. Dennis Crouch, Third Party Submissions, Harvard Dataverse (Feb. 4, 2022), https://doi.org/10.7910/DVN/M5JK3Y.
I pulled up a recent case. U.S. App. No. 16/824,815 focusing on a vehicle heads-up display owned by Visteon. A third party (James D. Busch) submitted his own published patent application (US Pub. No. 20180217429) as prior art and included a 30-page “concise description of relevance.” At that point, the examiner issued an anticipation rejection and the patentee abandoned. Note here that Busch is both a prolific inventor and a patent attorney. He has an interesting article suggesting that patentees may want to use 3rd party submissions in order to seed forward citations of your patent.
I see in the linked table that successful third party submissions tend to use complete claims charts.
Of the three 3rd party IDSs that I’ve filed, one explained relevance in paragraph form and was rejected as non-compliant, although the examiner did use my non-patent reference, and combined it with a reference from the applicants’ IDS to make a strong rejection.
In another, I tried to be brief by pointing out in three paragraphs where elements from all the claims were found in three references. This examiner tends to issue first-action allowances, and he did so in this case, citing the first limitation that I had not pointed out explicitly (even though I had pointed to the relevant section in the reference).
I think that a statement-of-relevance consisting of a complete claim-chart in tabular form, and nothing more, would have avoided these problems.
The cited James D. Busch article states that: “We found that forward citations (later patents that cite the subject patent) were the most significant factor in identifying patents that were likely to be purchased. In fact, the patents that were sold—or even highlighted by brokers, e.g. the representative patent—in a brokered patent package exhibited an even more extreme number of forward citations than litigated patents.”
That may well be true because the number of citations of prior patents in later patents has been a commonly used “patent valuation tool” by “patent evaluators” for a long time.
This may well impress some lay patent buyers, but as I have noted before that this “patent valuation tool” is flawed with a flawed presumption. Unlike academic publication authors, patent examiners and other patent prior art searchers do NOT usually look for or need to credit and cite “pioneer” patents in later patents of others. Rather, they look for prior patents with disclosures closest to the improvement now being claimed in the application being examined. Later-filed patents often have more such relevant details, and thus are often much better references to cite in later patents.
“Rather, they look for prior patents with disclosures closest to the improvement now being claimed in the application being examined.”
Accurate, but I believe there’s another factor that encourages examiner citation to follow-on applications over pioneering applications.
Say Alice invents something, and Bob makes some marginal modification or application of Alice’s technique. Because Alice’s invention is prior art that Bob must distinguish from, Bob’s applications will likely go into much greater detail about implementation than Alice’s application. So Bob’s application will likely make a much better reference to demonstrate Alice’s invention.
Yes, the need to distinguish prior art is one reason why I had said that later filed patents may “often have more such relevant details” and thus be better prior art and more likely cited. Another is that by the time such later patent applications are filed on a technology that technology may have been implemented in actual products, and/or a “best mode” determined, providing for more detailed prior art disclosures.
I could not agree more. Economists, in particular, have promulgated various dubious measures of ‘patent value’ or ‘patent scope’. Mostly, they seem to be motivated by the ready availability of certain metrics, and their amenability to incorporation into econometric models, rather than any rational justification for the validity of such metrics. Forward citations is a ‘nice’ metric because it is numerical and easy to extract from patent office data, but it doesn’t stand up to scrutiny as a measure of scope, significance, or value. It seems that economists don’t consult patent attorneys in these matters. The last thing they want is a reality check!
Mark,
I know more than a few anti-patent “patent attorneys” that your statement of, “The last thing they want is a reality check” applies to.
Comments are closed.