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Cardozo Arts & Entertainment Law Journal

Abstract

Because a patent is a license for a monopoly affecting the public good, the process of patent prosecution deserves close scrutiny. Yet, significant aspects of this process remain unexplored. In particular, two central thresholds for patent eligibility, "novelty" and "nonobviousness," regarded as the bedrock of patent law worldwide, have rarely been examined on an empirical basis. Investigating how these requirements are invoked during the patent prosecution process is critical to understanding how the application of patent law's central tenets affects the quantity and quality of the resulting patents and, ultimately, the public interest.

In this empirical study, we examine a representative sample of utility patent applications filed with the Israeli Patent Office (ILPO) between 2012 and 2019 and quantify the occurrence of various grounds the examiner asserted for rejecting the applicants' claims. We further investigate the patent office's reliance on "non-novelty" and "obviousness" as grounds for restricting or rejecting patent claims, and we examine the progression of patent applications subject to such determinations.

Our results are thought provoking in two, interrelated respects: First, we found that obviousness-a mixed question of law and fact-was by far the most common basis for office action rejections, a result we observed consistently when controlling for variables such as the field of invention, the characteristics of the applicant, and the final disposition of the application. Second, we found that while office action rejections often lead to the narrowing or abandonment of claims in ensuing exchanges between the applicant and the examiner, at the end of this process, most applicants overcome the rejections and a patent, even if narrowed, is granted. These findings reveal that the interplay between the applicant and the patent office is akin to a negotiation-and that this negotiation generally culminates in at least some measure of success for the applicant.

licant. These observations have important implications for patent policy and practice. The predominance of obviousness as a ground for office action rejections, and the ensuing negotiations between the examiner and the applicant, underscore that patent prosecution involves significant legal analysis in addition to technological expertise. The frequency with which disputes over obviousness arise in the course ofpatent prosecution suggests that clarification of the standard is imperative. This requires further development of the doctrine by courts; yet in practice, the patent office's decisions are rarely subject to judicial review. Therefore, there is a pressing need to encourage greater judicial oversight ofpatent office decisions. The need for doctrinal clarity is particularly acute in view of efforts to integrate advanced computational technologies (such as artificial intelligence systems) into the patent prosecution process. It is questionable whether these technologies may be used to support examiners' legal analysis, especially considering its uncertainty.

Moreover, our study suggests that patent examiners-whose role is to grant or reject patent applications in an objective manner that reflects interpretations of the law made by courts-may find it difficult to exercise their function consistently due to the individualized give-and-take that occurs in case-by-case negotiations with applicants. Accordingly, policymakers may wish to consider whether to impose limits on such negotiations to ensure that decisions by the patent office are free from the influence of applicant "bargaining" and produce predictable results that maximize the public good.

Disciplines

Entertainment, Arts, and Sports Law | Intellectual Property Law | Law

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