The article provides an answer to a question that, rather surprisingly, has not been addressed in the academic literature to date: What is the practical effect of patent examination? It does so by undertaking an empirical analysis of the examination of nearly 500 patent applications, filed in identical form, in three patent offices: the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Australian Patent Office (APO). By comparing the form of claim 1 as granted with claim 1 in the patent application, we can identify whether there is any meaningful difference between the two and, if so, what is the type of difference. Any identifiable difference will show both the extent to which, and the way in which, the examination process within each office has a practical effect. Furthermore, by comparing the frequency with which each office effects meaningful change to claim 1, we can identify in which of the offices the process of examination has the greatest practical effect. We find that the routine effect of patent examination is to produce meaningful change, specifically a narrowing, to the definition of the invention contained in claim 1 of the patent. Importantly, this effect occurs more often in the USPTO than in the EPO, and more often in both of those offices than in the APO. Notably, our findings suggest that the quality of patents granted by the USPTO is higher than those granted by the other two offices despite its reputation for issuing many bad quality patents.
Andrew Christie, Christ Dent & John Liddicoat, The Examination Effect: A Comparison of the Outcome of Patent Examination in the US, Europe and Australia, 16 J. Marshall Rev. Intell. Prop. L. 21 (2016)
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