Can firms avoid tough patent examiners through examiner-shopping? Strategic timing of citations in USPTO patent applications

• 成果类型: Article
• 署名作者: Barber, Benjamin; Diestre, Luis
• 署名单位: IE University
• 刊物名称: STRATEGIC MANAGEMENT JOURNAL
• ISSN/ISSBN: 0143-2095
• DOI: 10.1002/smj.3386
• 发表日期: 2022
• 页码: 1854-1871
• 关键词: examiner-shopping; INNOVATION; patent strategy; property rights; regulatory systems

摘要

Research summary We claim that, because patent citations influence examiner selection, firms disclose citations strategically to influence which examiner is assigned to their application (examiner-shopping). Specifically, firms are more likely to cite patents reviewed by lenient examiners in their original information disclosure statement (IDS) (sent before the examiner has been selected), and delay citations to patents reviewed by tough examiners to subsequent IDS (sent once the examiner has been selected). We propose this strategy will be implemented by those firms who benefit the most (firms that face patent thickets and are developing high strategic-stakes technologies) but only when the costs are low (when firms face a low probability of patent litigation). We find support to our theory in a sample of 9,763 United States patent and trademark office (USPTO) patent applications during 2000 to 2006. Managerial summary We find that firms facing patent thickets and developing high strategic stakes technologies try to get more lenient examiners to increase the probability of patent approval. The cost of this strategy is that lenient examiners usually grant weaker patents that are more likely to be litigated and invalidated. Firms overcome this by using examiner-shopping mainly in fields where litigation is relatively infrequent. This behavior has relevant implications: fields where property rights are rarely challenged tend to become denser and populated by weaker patents. Our study's discussion of the limitations within the United States patent and trademark office (USPTO) that seem to provide the opportunity to implement examiner-shopping strategies provides a path to address this from a policy standpoint.