CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent

Can Your Patent Examiner Increase Your Likelihood of Litigation?

A New Study Finds
Examiners Have Impact
On Litigation

Recently, Shine Tu completed a study correlating the likelihood of patent litigation to characteristics of the patent’s primary examiner. Professor Tu is an Associate Professor of Law at the West Virginia University College of Law and a shareholder in PatentCore.

Tu’s study attempted to answer three questions: (1) which patent examiners are issuing litigated patents, (2) are examiners who are “rubber stamping” patents issuing litigated patents at a disproportionately higher rate, and (3) are examiners with less experience issuing more litigated patents?  Specifically, the study found that primary examiners with 3-5 years of experience have higher than expected rate of litigated patents.

Professor Tu speculates that this is related to the USPTO’s internal scrutiny of patents.  In the early years of a patent examiner’s career, the patent examiner does not have fully signatory authority, and the patents under their dockets are heavily scrutinized. During this time, easier patents are disposed of (either via acceptance or rejection), while patents with questionable validity remain on the examiner’s docket.  Once a primary examiner obtains permanent full signatory authority (usually years 3 and above) the patents in their docket are no longer heavily scrutinized. This may allow for those patents with questionable validity to be issued at a higher rate during this period of an examiner’s career.

Despite these findings, professor Tu’s study cautions that there may be certain limitations to the study.  Specifically, Professor Tu points out that there may be data selection issues given that the study only includes patents issued after 2001.  Nevertheless, the finding remains that a patent is more likely to be litigated if it was issued by a primary examiner with between 3 and 5 years of experience.

Related Articles

Just Because It’s on the Internet Doesn’t Mean It’s “Publicly Accessible”

The Patent Trial and Appeal Board (PTAB or Board) has denied institution of a petition for inter partes review (IPR) because the petitioner failed to ...
Read More

Trademark Denied for “ChatGPT”

The US Patent and Trademark Office (USPTO) has denied OpenAI’s applications to trademark “ChatGPT” and “GPT.” The Final Office Action states, “Registration is refused because the applied-for mark ...
Read More

Federal Circuit: “Improving User Experience” Isn’t Patentable

The Federal Circuit has affirmed a lower court decision that patent claims for methods and systems for improving how search results are displayed to users ...
Read More

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

SERVICES

PROTECT

DEAL

DEFEND