Does the outsourcing of prior art search increase the efficiency of patent examination? Evidence from Japan

Yamauchi, Isamu; Nagaoka, Sadao

doi:10.1016/j.respol.2015.05.003

Cited by 17 publications

(10 citation statements)

References 14 publications

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“…In Japan, outsourcing the prior art search component of patent examination is already practiced. Yamauchi and Nagaoka (2015) observe that, when given a choice, Japanese patent examiners were more likely to choose to outsource prior art search for less complex technologies. The examined applications that had the search outsourced had significantly fewer appeals against both rejection and grant decisions, and final decisions were reached more quickly when compared to similarly complex applications for which search was conducted internally.…”

Section: Contracting Out Examinationmentioning

confidence: 98%

“…34 The contracting out of government services is not a new idea, and the piece-wise nature of patent examination makes this a particularly suitable application of this process-the examination of a single patent application may constitute a discrete contract. Blueprints for contracting out prior-art search to qualified third parties already exist in multiple jurisdictions (Kazenske, 2003;United States Patent and Trademark Office, 2003;Yamauchi and Nagaoka, 2015). In the case of the USPTO, patent examiners often leave to become patent attorneys (Drahos, 2010;Tabakovic and Wollmann, 2018) and are therefore very familiar with the patent examination process, perhaps more experienced than many of the examiners at the patent office.…”

Section: Contracting Out Examinationmentioning

confidence: 99%

“…After this technical foundation is put in place, an initial opt-in system could be designed to take up patent office slack and could be restricted to particularly non-controversial or non-complex technology fields. Using the outsourcing of prior art search by the Japanese Patent Office as a model (Yamauchi and Nagaoka, 2015), examiners themselves could have discretion as to which patents can easily be examined by third parties. Further testing of third-party examination may even involve other national offices that may be better resourced or have particular areas of technological specialty.…”

Section: Small-scale Experimentationmentioning

confidence: 99%

“…https://www.uspto.gov/learning-and-resources/newsletter/inventors-eye/usptoyear-review-and-look-forward 27 Note that this proposal is distinct from outsourcing prior art searches as practiced in some jurisdictions(Yamauchi and Nagaoka, 2015) and discussed in Section 4.2.3. However, both outsourcing and the current proposal serve a common purpose: to widen the scope of the prior art search and attempt to optimise patent quality with limited examiner resources.…”

mentioning

confidence: 99%

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Decentralising the Patent System

Rassenfosse

Higham

2019

SSRN Journal

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This paper proposes a substantive rethink of the modern patent system. The patent system has come under intensive criticism in the past, and many scholars have proposed ways to improve it. Ideas for improvement include, e.g., prior-art bounties, contracting out examination and dynamic fee setting. However, many of these ideas have gone unheeded due to the cost of administering them and the rigidity of the patent system. We explore how distributed ledger technologies enable these major changes.

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Section: Contracting Out Examinationmentioning

confidence: 98%

Section: Contracting Out Examinationmentioning

confidence: 99%

Section: Small-scale Experimentationmentioning

confidence: 99%

mentioning

confidence: 99%

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Decentralising the Patent System

Rassenfosse

Higham

2019

SSRN Journal

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“…The main rationale is to give applicants an opportunity for a "second look" at the value of patent, as well as early withdrawal of unpromising applications. Ultimately, this will save social costs by alleviating the workload of examiners and improving the quality of granted patents (Thomas, 2010;Yamauchi and Nagaoka, 2015).…”

Section: Introductionmentioning

confidence: 99%

How do firms utilize the deferred patent examination system? Evidence from Korea

Cao

Lei²,

Junbyoung

2019

EJIM

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Purpose The purpose of this paper is to investigate firm behaviors on patent examination request under the deferred patent examination system in Korea. The authors examine firm decisions on whether and when to request patent examinations when they face both uncertainty about invention’s value and market competition. Design/methodology/approach The authors provide a simple theoretical model and test a couple of hypothesis using Korea patent data. The authors employ KIPO (Korean intellectual patent office) patent applications data during 2006–2009 and incorporate it with firm financial data retrieved from1 Korea investor service-financial analysis system (KIS-FAS) database in Korea. The authors use the variation in the probability of lapsed patent applications filed in the same year and in the same technology field (at the four-digit IPC class level) of a patent application i as a proxy for the value of uncertainty, and further use one minus a firm’s market share (at the three-digit SIC industry level) as an indicator of the market competition faced by the firm/applicant. Findings The authors find that the examination requests of firms in Korea have interesting bipolar distribution, and both uncertainty about an invention’s value and market competition have significant impacts on firm’s decision for examination request. Applicants tend to utilize option value of waiting when uncertainty is high, but market competition attenuates the option value: the higher the competition, the less likely applicants are to delay or forego examination. Originality/value The authors’ study makes interesting contributions to the literature on the optimal design of the patent system in general and the deferred patent examination request system in particular. By considering the roles of both uncertainty and market competition in firm decisions, it provides a more comprehensive perspective on the deferred patent examination system. The study also provides empirical evidences on the broader research topic regarding firm decision for irreversible investment when faced with both uncertainty and competition, for which a strand of theoretical literature exists but empirical literature is largely limited. This study, which explicitly takes into account uncertainty and market competition, extends this line of empirical literature and fills the gap in the literature.

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