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 a patent, leading to concerns about inadvertent infringement and hold-up. For researchers seeking to study this practice, a key challenge is the difficulty of linking patent applications to potentially infringing technology. We use the link created by disclosure of standard essential patents (SEPs) to analyze the relationship between standard publication — a key observable milestone in technology development — and continuation filing. More than half of the SEPs in our data are filed after standard publication. There is a substantial increase in continuation filings immediately after standard publication, and this increase is larger when the initial patent examiner is more lenient. We also find that claims in SEP continuations are more likely to be rejected for double patenting (indicating an effort to change the scope of previous patents), and that keywords in the claims of SEPs linked to the same standard become more similar after standard publication. Overall, these findings suggest widespread use of continuation procedures to opportunistically ”invent patents” that are infringed by already-published standards.
Comments welcome. Contact: firstname.lastname@example.org ; email@example.com. We thank Justus Baron, Rudi Bekkers, Lorenz Brachtendorf, Iain Cockburn, Jorge Contreras, Fabian Gaessler, Jeffrey Kuhn, 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 & Policy Research Initiative IP day and BU Questrom Strategy & 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.