WVU College of Law
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 also determined that: (1) litigated patents mainly
come from primary examiners (those examiners with more experience),
and (2) primary examiners that grant between thirty and sixty patents
per year are issuing a higher number of invalidated patents.
Interestingly, the highest volume primary examiners (examiners who
on average grant more than one hundred patents per year and have
more than seven years of experience) issue very few litigated patents
that are later found invalid. Most of the patents that were invalidated
in this data set were done so via the prior art language of 35 U.S.C. §§ 102-103. Approximately 77 percent of the prior art references used
to invalidate patents were not found by the US Patent and Trademark
Office (USPTO) during examination. Additionally, 38 percent of the
prior art references used to invalidate patents were US patents or US
patent applications. Of those invalidating references that were US
patents or patent applications, approximately 89 percent were not
found by the examiner. These data imply that improving PTO
searching could improve patent quality.
Original Publication Title
Vanderbilt Journal of Entertainment & Technology Law
Digital Commons Citation
Tu, Shine, "Invalidated Patents and Associated Patent Examiners" (2015). Law Faculty Scholarship. 28.
18 Vanderbilt Journal of Entertainment & Technology Law 135