Patenting Inventions or Inventing Patents? Strategic Use of Continuations at the USPTO
Continuations allow inventors to claim technology developed after the original filing date of their patent, leading to concerns about inadvertent infringement and hold-up. We use the link between patents and standards created by the disclosure of standard essential patents (SEPs) to analyze the relationship between standard publication - a key observable milestone in technology development - and continuations. More than half of the SEPs in our data are filed after standard publication. Consistent with opportunistic behavior by patentees, there is a large increase in continuations immediately after standard publication. Keywords in the claims of SEPs linked to the same standard also become more similar after that standard is published.
We thank Justus Baron, Rudi Bekkers, Lorenz Brachtendorf, Iain Cockburn, Jorge Contreras, Fabian Gaessler, Mark Lemley, Michael Meurer, Earl Nied, Valerio Sterzi, Emanuele Tarantino and Andrea Vezzulli for helpful comments and conversations. We thank Justus Baron for access to the Searle Center Database on technology standards and standard setting organizations, and Evgeny Klochikhin for access to the PatentsView patent applications database. We also thank conference and seminar participants at the BU Technology and Policy Research Initiative IP day and BU Questrom Strategy and Innovation department brown bag seminar. The authors also thank Google, Inc. and Intel Corp. for financial support. The views expressed herein are those of the authors and do not necessarily reflect the views of the National Bureau of Economic Research.
I have consulted and served as an expert witness on several legal matters related to Standard Essential Patents.