Reinventing Patent Prosecution

Document Type

Working Paper

Publication Date

2025

Language

en-US

Abstract

Many, if not most, patents are granted in error: they do not meet standards of patentability. Why? We argue that outdated procedures at the Patent Office—burdens for producing information for examination, standards for relevance, the format in which information is produced, and so on—are often responsible.  The Patent Office’s information procedures have not changed much since the enactment of the Patent Act of 1836 despite revolutions in technology, and the evolution of procedures for producing information elsewhere in the law. As other agencies have shifted more of the information burden on to the parties that come before them, the Patent Office continues to impose too much of the burden on examiners. Moreover, patent applicants enjoy a presumption that their applications cover patentable inventions.

This is bad policy. Applicants are typically the lowest-cost source of information. Given limited resources for examination, much of the attainable information about patentability is not available to the agency. This information deficit results in frequent errors during examination and concomitant social costs.

We draw from information and regulatory economics to create a 3-part framework to guide procedural reform at the Patent Office—who should provide information; how should it be provided; and when should this provision occur. We apply our framework to various legal settings to show that its principles are used widely. We then apply it to the Patent Office to suggest reforms that would require applicants to provide better information in three domains: prior art, disclosure of the invention, and the meaning and scope of the claims. These reforms will modernize procedure at the Patent Office and thereby improve patent quality.

Finally, our information economics framework pulls together disparate strands of patent scholarship. We posit that several of the biggest scholarly debates about patent quality and Patent Office reform are, at their root, dependent on the who, how, and when of examination procedures. Answering these questions helps show the aspects of the patent system for which each scholarly camps’ arguments are most persuasive.

Comments

Draft available on SSRN. 

DRAFT—DO NOT CIRCULATE

This document is currently not available here.

Find on SSRN

Share

COinS