Do Applicant Patent Citations Matter? Implications for the Presumption of Validity

Mapping the global influence of published research on industry and innovation

“…The invention must be placed in the context of relevant knowledge at the time of filing. The applicant and the examination process find and disclose documentary evidence of science and technology that preceded the work and are relevant or necessary to evaluate the work under review for patent 14 . This prior art can also comprise enabling literature, which lays the technical groundwork for the subsequent invention.…”

The quest for expansive intellectual property rights and the failure to disclose known relevant prior art

“…If the claims, justified or otherwise, are granted, their presumed validity can generally only be overturned with convincing evidence (Sampat, 2010). Courts are often reluctant to second-guess the judgment of examiners, who are perceived to be experts at what they do (Cotropia, Lemley, and Sampat, 2012). Prior art disclosed in a patent can also provide an unintended roadmap for competitors on how to work around the patent (Conigliaro, Greengberg, and Lemley, 2001).…”

“…Not all examiner-added prior art necessarily leads to the rejection of claims, reducing the scope of a patent(Cotropia et al, 2012). Some examiner-added prior art lead to modifications of existing claims or are deemed "pertinent" to the patent without claim modification (http://www.bitlaw.…”

A New Look at Patent Quality: Relating Patent Prosecution to Validity

“…The most obvious effects are the strong relations between validity on the one hand and IDS filings (a positive relation) and examiner‐added references on the other (a negative relation). The significance of those findings is underscored by the evidence about the high share of examiner‐added references presented in Cotropia et al (2010). The applicant is much better situated to locate and understand the relevance of prior art related to the applicant's invention.…”