<p> The purpose of this Paper is twofold: First, to explore the somewhat contradictory, and perhaps convoluted approaches by the Supreme Court and Federal Circuit to patentable subject matter since the early 1970&rsquo;s to the present; and Second, to investigate two theories of how to fix&mdash;if it can be considered to be broken&mdash;the current state of the law regarding patent eligibility. In regard to the second aspect, it is the Thesis of this Paper that the only practicable solution to the current quagmire is a legislative approach that will correct the legal definition of patentable subject matter under 35 U.S.C. &sect; 101. </p><p> In addition, it has become common, since the decision of <i>Alice </i> and others to state &ldquo;software patents are dead.&rdquo; This is not even remotely true. What has happened, as will be discussed, is that because of the expansion of the definition of the abstract idea exemption of patentable subject matter, it has become increasingly difficult&mdash;sometimes impossible&mdash;to get patents awarded for certain technology areas. One reason for this is because so-called abstract idea innovations can be best expressed in terms of algorithms and in software. Consequently, software patents have achieved a negative reputation&mdash;sort of a &ldquo;guilt by association&rdquo; narrative. The truly unfortunate result&mdash;the unintended consequence - is that perhaps many applications for innovations have either not been filed, or have been unfairly rejected and abandoned.</p><p>

Technologies that implement particular standards securing compatibility and interoperability govern our everyday lives. Given that on the one hand technical standards should be accessible to the largest possible extent and on the other hand intellectual property right (IPR) holders may restrict such access, a number of legal issues arise. This thesis primarily focuses on technical standards governed by standard-setting organizations and consequences of the inclusion of intellectual property rights (IPRs) in such standards for their proprietors from the EU competition law perspective. In this regard, the method adopted in this thesis firstly explores the underlying theoretical notions, then focuses on the current EU competition law position de lege lata and discusses possible adjustments thereof de lege ferenda. In the first chapter, technical standards are discussed along with their economic effects, particularly, compatibility, interoperability and network effects. Second chapter lays down the basic matters of interplay between technical standards, IPRs and EU competition law, namely standard-essential patents (SEPs) and fair, reasonable and non-discriminatory (FRAND) licensing terms. Current EU competition law issues are consequently outlined (patent ambush, hold-up) with emphasis on Commission's...

Patent documents are important intellectual resources of protecting interests of individuals, organizations and companies. These patent documents have great research values, beneficial to the industry, business, law, and policy-making communities. Patent mining aims at assisting patent analysts in investigating, processing, and analyzing patent documents, which has attracted increasing interest in academia and industry. However, despite recent advances in patent mining, several critical issues in current patent mining systems have not been well explored in previous studies. These issues include: 1) the query retrieval problem that assists patent analysts finding all relevant patent documents for a given patent application; 2) the patent documents comparative summarization problem that facilitates patent analysts in quickly reviewing any given patent documents pairs; and 3) the key patent documents discovery problem that helps patent analysts to quickly grasp the linkage between different technologies in order to better understand the technical trend from a collection of patent documents. This dissertation follows the stream of research that covers the aforementioned issues of existing patent analysis and mining systems. In this work, we delve into three interleaved aspects of patent mining techniques, including (1) PatSearch, a framework of automatically generating the search query from a given patent application and retrieving relevant patents to user; (2) PatCom, a framework for investigating the relationship in terms of commonality and difference between patent documents pairs, and (3) PatDom, a framework for integrating multiple types of patent information to identify important patents from a large volume of patent documents. In summary, the increasing amount and textual complexity of patent repository lead to a series of challenges that are not well addressed in the current generation systems. My work proposed reasonable solutions to these challenges and provided insights on how to address these challenges using a simple yet effective integrated patent mining framework.

The current patent system is by many scholars considered flawed regarding the intended positiveeffects on innovation, especially for small and medium-sized enterprises (SMEs). However, aneffective patent system requires possibilities for firms to enforce their patent rights to fulfil thebasic premise of inspiring innovation. The purpose of this study is to examine the challenges thatSMEs face in patent litigation and how it affects them and their innovation. 14 semi-structuredinterviews were conducted with Chief executive officers or research and development managersof Swedish SMEs to gain insights into the process of patent litigation and its effects on theinterviewed firms. Results showed that R&amp;D investments decreased after patent infringement inmany cases and that firms had a tendency to change the way new patents are written to createstronger patents. The main finding is that patent litigation had a negative effect on SMEs, due tothe high direct and indirect costs resulting from a patent case. This adds to previous researchwhich highlights the disproportionate effects of patent litigation on small firms compared tolarger firms.

Advances in data-driven digital innovations during Industrial Revolution 4.0 are the foundation for this patent discussion. In a shifting technological paradigm, I argue for an approach that considers the broader theoretical perspectives on innovation and the place of the term invention within that perspective. This research could inform the assessment of a patent for Machine Learning algorithms in Artificial Intelligence. For instance, inventions may have elements termed abstract (yet innovative) and not previously within the purview of patent law. Emergent algorithms do not necessarily align with existing patent guidance rather algorithms are nuanced, increasing support for a refined approach. In this thesis, I discuss the term algorithm and how a novel combination of elements or a cooperating set of essential and non-essential elements, can result in a patentable result. For instance, a patentable end can include an algorithm as part of an application, whether it is integrated with a functional physical component such as a computer, whether it includes sophisticated calculations with a tangible end, or whether parameters adjust for speed or utility. I plan to reconsider the term algorithm in my arguments by exploring some challenges to the section 27(8) of the Patent Act, “What may not be patented,” including, that “no patent shall be granted for any mere scientific principle or abstract theorem.” The role of the algorithm in the proposed invention can be determinative of patent eligibility. There are three lines of evidence used in this thesis. First, the thesis uses theoretical perspectives in innovation, some close to a century old. These are surprisingly relevant in the digital era. I illustrate the importance of considering these perspectives in innovation when identifying key contributing factors in a patent framework. For instance, I use innovation perspectives, including cluster theory, to inform the development of an approach to the patentable subject matter and the obviousness standard in AI software inventions. This approach highlights applications of emerging algorithmic technologies and considers the evolving nature of math beyond the basic algorithm and as a part of a physical machine or manufacture that is important in this emerging technological context. As part of the second line of evidence, I review how the existing Canadian Federal & Supreme Court cases inform patent assessments for algorithms found in emerging technologies such as Artificial Intelligence. I explore the historical understanding of patent eligibility in software, professional skills, and business methods and apply cases that use relevant inventions from a different discipline. As such, I reflect upon the differing judicial perspectives that could influence achieving patent-eligible subject matter in the software space and, by extension how these decisions would hold in current times. Further to patent eligibility, I review the patentability requirements for novelty, utility, and non-obviousness. As part of the third line of evidence, I reflect on why I collected the interview data and justify why it contributes to a better understanding of the thesis issues and overall narrative. Next, I provide detail and explain why certain questions formed a part of the interview and how the responses helped to synthesize the respective chapters of the thesis. The questions focus on patent drafting, impressions of the key cases, innovation, and the in-depth expertise of the experts on these topics. Finally, I provide recommendations for how the patent office and the courts could explore areas for further inquiry and action.

With the increase of awareness and focus on university research commercialization, much research had been conducted to investigate this subject. It was revealed that because universities were not traditionally built to serve the purpose of commercialization, many obstacles existed in the path of university research commercialization. Historically, research had largely focused on identifying critical factors that impacted the performance of commercialization. However, it was not clear how those findings could be systematically incorporated into the commercialization improvement plan of individual cases. This research intended to fill this gap and provide a framework that could be used by most universities to access and improve their research commercialization process. A case study of a U.S. land-grant university was conducted and a narrative approach was mainly used as the method of data analysis. Under the scope of a single-case study, four sub-studies were conducted to address the goals of this research. First, a framework was developed that incorporated theories of existing research and the value stream map of lean management. Interviews with the intellectual property office and faculty were conducted to determine if the theoretical framework was applicable. It was found that the framework fitted well with the current process of university research commercialization. After that, a survey that covered a sample size of 1110 researchers at the targeted university was conducted to investigate the importance of different resources at different stages of the process. Resources that were under investigation were grouped into four categories: technical, human, social, and financial resources. This research identified the most important resources for research commercialization were industrial connections (social resource) and assistance from the intellectual property (IP) office (human resource), with industrial connections playing a more importance role at the beginning of the process and the IP office from the stage of patent application. To assess organizational characteristics of the targeted university, interviews were conducted with 22 faculty, three representatives from the administration, one representative from the intellectual property office, and one representative from an external organization. Six criteria derived from previous research were used to guide the assessment: (1) expenditures on research and development (RandD), (2) intellectual property policy, (3) research field, (4) key individuals, (5) commitment to innovation, and (6) networking with external relations. It was found that the targeted university had strong evidence of the advantages of expenditures on RandD and research field, however, it was relatively weak in the other four characteristics. The last part of the research involved interviews with two companies for the purpose of developing a best practice for research commercialization with the examples from the industry. Recommendations to improve targeted university's research commercialization were developed based on findings of the research. / Ph. D.

Yes / In this paper we study the determinants of the strength of patent enforcement in 43 member countries of the World Trade Organization (WTO) between 1998 and 2011, a period after the signing of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement. We do so by building on and expanding the seminal work of Ginarte and Park (1997) on the pre-TRIPS determinants of patent rights in the years 1960-1990. We find that in the years after TRIPS was signed, the strength of patent enforcement of a country is positively determined by two variables that signify the usage of the patent and intellectual property system, and the number of patent and trademark applications. We also find that the level of research and development expenditure, the quality of human capital, and the level of development of a country have positive effects on the strength of the enforcement of patent law in practice. Intellectual property rights enforcement is one of the key investment-related policies included in the United Nations Conference on Trade and Development (UNCTAD) Investment Policy Framework for Sustainable Development. Identifying the determinants of strong patent systems will help policymakers at the national and supranational levels to design and implement effective policies that strengthen national patent systems, thereby enhancing economic benefits such as greater levels of commercialization of intangible assets and greater levels of international trade and investment.

Patents have become a direct source of revenue, apart from providing legal protections for inventions. A patent generates revenue in its patented form through licensing or sell-out. Three challenges confront this shift in use of patents as direct revenue generators especially in the context of patent sale. First, the challenge of estimating the price a patent fetches in a sale (referred as ‗patent value‘) remains scarcely addressed owing to the intangible nature of patents and lack of patent sale data in public domain. Secondly, the variations in price and the method used to estimate the price while selling a patent individually (called as a singleton) or in a group along with other patents (called as portfolio) are little understood. Thirdly, literature focus so far has been on the static dimensions of patent value determinants leaving scope for researching the time varying dynamic nature of potential value determinants. This thesis aims to systematically address the above challenges and research gaps through five specific research objectives pertaining to the following four aspects of patent sale: (1) Successful sale aspect of patent lots in an auction (Research objective 1) Research objective 1: To explore the determinants of successful sale of singletons and portfolios. (2) Selling strategy aspect of the sold patents (Research objective 2) Research objective 2: To characterize the singleton and portfolio patent lots successfully sold in an auction. (3) Time dynamic aspect of factors influencing price (Research objectives 3 & 4) Research objective 3: To investigate the effect of time dynamic nature of patent age on the selling prices of singletons and portfolios. Research objective 4: To understand the effect of time dynamic trend of technological importance (TI) and patent class trend on selling prices of singletons and portfolios. (4) Valuation aspect (Research objective 5) Research objective 5: To identify the determinants of selling prices of singletons and portfolios. In this thesis, we use a combination of patent bibliometric and market based approach to study various aspects of singleton and portfolio patent sale incorporating the time dynamic aspect. A set of US patents auctioned by an US auction firm, called Ocean Tomo, is used as sample. The sample was dominated by patents from Computer & Communication field. The research findings showed significant differences in the characteristics of sold and unsold lots both in the case of singletons and portfolios. Amongst the sold lots, singletons were found to include more novel (lesser patent backward citations) and technology specific (higher C&C technology scope) patents than the portfolios sold. Further investigation on the variation in selling prices fetched by singletons and portfolios showed portfolios fetching significantly higher prices than singletons at the lot level. Interestingly, at a granular level, the equation reversed with singletons showing significantly higher price compared to the average price per individual US patent member within the portfolio. Along the time dynamic aspect, the existence of an optimal age to sell patents for higher prices is evidenced especially in the case of singletons from C&C technology field. The optimal age was found to be around 10 year 2 months of age from grant of singletons. No such optimal age was identified for portfolios. The growth trend analysis of the forward citations (technological importance of patent) and the patent applications filed within the specific patent class of a patent (attractiveness of patent class) illustrated the significance of the patent class trend in explaining variation in selling price of singletons. Finally, the valuation models of singletons and portfolios showed singletons being valued more on the patent related characteristics unlike portfolios which were valued based on the all three aspects – patent, seller and bundling. In summary, the novelty of the thesis resides in the (1) incorporation of new set of variables namely forward citation diversity, forward citations trend, patent class trend, technology scope and portfolio type in understanding patent price (2) treatment of time dynamic variables in understanding patent value and (3) focus on portfolio analysis through independent analysis of singleton and portfolio selling prices.

Organizations have realized that they need to develop and strategically utilize their patent portfolios in order to maintain sustainable competitive advantage. This requires a change in the organization design and practice. Prior studies have addressed this in context of increasing patent productivity, i.e., process of filing patents (Shapiro, 1990; Berkowitz, 1993; Ransley and Gaffney, 1997; Chattopadhyay, 2003). But there have been lacunae in addressing issues in organization design and practice for ensuring patent utilization, which forms the focus of this thesis. Patent externalization is defined the process of translating embedded intellectual value of a patent into “externalized” knowledge and financial benefits. The objectives of the thesis have been to conceptualize a model and measure high and low variances in organizational patent externalization potential, to understand significant organization-level practices that differentiates between organizations having high and low patent externalization potential, to understand differences in organizational perceptions about knowledge and financial orientation of the patent externalization practices in organizations having high and low patent externalization potential and to suggest changes in practices that would enhance organizational patent externalization potential. Towards this purpose, prior literature related to patent productivity and organization change were studied and a conceptual model was developed. The conceptual model outlines that the organizational design components – organizational practices supporting patenting outcomes, competitive intelligence gathering practices and patent commercialization practices alongwith organization and individual moderating variables determine the organizational patent externalization potential. This model was initially verified through exploratory case studies across seven R&D intensive organizations. Variables identified from literature review and initial case studies, were operationally defined and measurement models for the thesis were developed. A questionnaire comprising of 160 items (validated items measuring the aforementioned variables) was designed for conducting the survey research. The measurement scale used was a 5-point Likert-type interval scale. . A Cronbach alpha of 0.82 was obtained for the questionnaire. The sample comprised of professionals from four sectors – pharmaceutical, IT, manufacturing and academia. The sample size was 56 organizations representing 208 professionals. To accommodate the influence of the moderating variables, data was collected from professionals having commercialized patents, whose patents were yet to be commercialized and those having no patent commercialization experience. The statistical techniques used for data analysis were: principal component analysis, hierarchical cluster analysis, discriminant analysis, F-test, t-test and chi-square tests. This thesis provides insights into various practices and perceptions that are essential design components in enhancing organizational patent externalization potential. These findings have implications for OD managers. The thesis contributes both to the theory of patent management and change management literature. Additionally, the questionnaire designed for this study has potential for being used as a diagnostic tool to assess potential for organizational change. Limitations and future areas of study are also addressed.

1. The context: The European patent system has been affected by substantial changes over the past three decades, which have raised vigorous debates at different levels. The main objective of the present dissertation is to contribute to these debates through an exploratory analysis of different changes in patenting practices – in particular the way applications are drafted and filed to patent offices –, their drivers, association with the value of patents, and potential impact on the patent system. The coming essays are therefore empirical in their essence, but are inspired by economic motivations and concerns. Their originality is threefold: it resides in the novelty of the main questions discussed, the comprehensive database specifically built to address them, and the range of statistical methods used for this purpose. The main argument throughout these pages is that patenting practices have significantly evolved in the past decades and that these developments have affected the patent system and could compromise its ability to fulfil its economic purpose. The economic objective of patents is to encourage innovation and its diffusion through the public disclosure of the inventions made. But their exploitation in the knowledge economy has assumed so many different forms that inventors have supposedly developed new patenting and filing strategies to deal with these market conditions or reap the maximum benefits from their patents. The present thesis aims at better understanding the dimensions, determinants, and some potential consequences of these developing practices. 2. The evolution: Chapter 2 presents a detailed descriptive analysis of the evolution in the size of patent applications filed to the European Patent Office (EPO). In this chapter, we propose two measures of patent voluminosity and identify the main patterns in their evolution. Based on a dataset with about 2 million documents filed at the EPO, the results show that the average voluminosity of patent applications – measured in terms of the number of pages and claims contained in each document – has doubled over the past 25 years. Nevertheless, this evolution varies widely across countries, technologies and filing procedures chosen by the applicant. This increasing voluminosity of filings has a strong impact on the workload of the EPO, which justifies the need for regulatory and policy actions. 3. The drivers: The evolution in patent voluminosity observed in chapter 2 calls for a multivariate analysis of its determinants. Chapter 3 therefore proposes and tests 4 different hypotheses that may contribute to explaining the observed inflation in size: the influence of national laws and practices and their diffusion to other countries with the progressive globalization of patenting procedures, the complexification of research activities and inventions, the emergence of new sectors with less established norms and vocabularies, and the construction of patent portfolios. The econometric results first reveal that the four hypotheses are significantly associated with longer documents and are therefore empirically supported. It appears however that the first hypothesis – the diffusion of national drafting practices through international patenting procedures – is the strongest contributor of all, resulting in a progressive harmonization of drafting styles toward American standards, which are longer by nature. The portfolio construction hypothesis seems a less important driver but nevertheless highlights substantial changes in patenting practices. These results raise two questions: Do these evolving patenting practices indicate more valuable patents? Do they induce any embarrassment for the patent system? 4. Measuring patent value: If the former of these two questions is to be addressed, measures are needed to identify higher value patents. Chapter 4 therefore proposes a review of the state of the art on patent value indicators and analyses several issues in their measurement and interpretation. Five classes of indicators proposed in the literature may be obtained directly from patent databases: the number of countries in which each patent is enforced, the number of years during which each patent has been renewed, the grant decision taken, the number of citations received from subsequent patents, and whether it has been opposed by a third party before the EPO. Because the former two measures are closely connected (the geographical scope of protection and length of maintenance can hardly be observed independently), they have been subjected to closer scrutiny in the first section of chapter 4, which shows that these two dimensions have experienced opposite evolutions. A composite measure – the Scope-Year Index – reveals that the overall trend is oriented downwards, which may suggest a substantial decline in the average value of patents. The second section of chapter 4 returns to the five initial classes of measures and underlines their main patterns. It appears that most of them witness the well-known properties of patent value: a severe skewness and large country and technology variations. A closer look at their relationships, however, reveals a high degree of orthogonality between them and opposite trends in their evolution, suggesting that they actually capture different dimensions of a patent’s value and therefore do not always pinpoint the same patents as being the most valuable. This result strongly discourages the reliance on one of the available indicators only and opens some avenue for the creation of one potential composite index of value based upon the five indicators to maximize the chances of capturing all potentially valuable patents in a large database. The proposed index reflects the intensity of the signal provided by all 5 constituting indicators on the potential value of each patent. Its declining trend reflects a rarefaction of this signal on average, leading to different plausible interpretations. 5. The links with patent value: Based upon the six indicators of value proposed in chapter 4 (the five classical ones plus the composite), the question of the association between filing strategies and the value of patents may be analysed. This question is empirically addressed in chapter 5, which focuses on all EPO patents filed between 1990 and 1995. The first section presents a comprehensive review of the existing evidence on the determinants of patent value. The numerous contributions in the field differ widely along three dimensions (the indicator of value chosen as dependent variable, the sampling methodology, and the set of variables tested as determinants), which have translated into many ambiguities across the literature. Section 2 proposes measures to identify different dimensions of filing strategies, which are essentially twofold: they relate to the routes followed by patent filings toward the EPO (PCT, accelerated processing), and to their form (excess claims, share of claims lost in examination), and construction (by assembly or disassembly, divisional). These measures are then included into an econometric model based upon the framework provided by the literature. The proposed model, which integrates the set of filing strategy variables along with some of the classical determinants, is regressed on the six available indicators separately over the full sample. In addition, the sensitivity of the available results to the indicator and the sampling methodology is assessed through 18 geographic and 14 industrial clustered regressions and about 30 regressions over random samples for each indicator. The estimates are then compared across countries, industries and indicators. These results first reveal that filing strategies are indicative of more valuable patents and provide the most stable determinants of all. And third, the results do confirm some classical determinants in their positive association with patent value, but highlight a high degree of sensitivity of most of them to the indicator or the sample chosen for the analysis, requiring much care in generalizing such empirical results. 6. The links with patent length: Chapter 6 focuses on one particular dimension of patent value: the length of patents. To do so, the censored nature of the dependent variable (the time elapsed between the filing of a patent application and its ultimate fall into the public domain) dictates the recourse to a survival time model as proposed by Cox (1972). The analysis is original in three main respects. First of all, despite the fact that renewal data have been exploited for about two decades to obtain estimates of patent value (Pakes and Schankerman, 1984), this chapter provides – to the best of our knowledge – the first comprehensive analysis of the determinants of patent length. Second, whereas most of the empirical literature in the field focuses on granted patents and investigates their maintenance, the analysis reported here includes all patent applications. This comprehensive approach is dictated by the provisional rights provided by pending applications to their holders and by the legal uncertainty these represent for competitors. And third, the model integrates a wide set of explanatory variables, starting with the filing strategy variables proposed in chapter 5. The main results are threefold: first, they clearly show that patent rights have significantly increased in length over the past decades despite a small apparent decline in the average grant rate, but largely due to the expansion of the examination process. Second, they indicate that most filing strategies induce considerable delays in the examination process, possibly to the benefit of the patentee, but most certainly to the expense of legal uncertainty on the markets. And third, they confirm that more valuable patents (more cited or covering a larger geographical scope) take more time to process, and live longer, whereas more complex applications are associated with longer decision lags, but also with lower grant and renewal rates. 7. Conclusions: The potential economic consequences and some policy implications of the findings from the dissertation are discussed in chapter 7. The evolution of patenting practices analysed in these works has some direct consequences for the stakeholders of the patent system. For the EPO, they generate a considerable increase in workload, resulting in growing backlogs and processing lags. For innovative firms, this phenomenon translates into an undesired increase in legal uncertainty, for it complicates the assessment of the limits to each party’s rights and hence of the freedom to operate on a market, which is precisely what the so-called ‘patent trolls’ and ‘submariners’ may be looking for. Although empirical evidence is lacking, some fear that this may result in underinvestment in research, development or commercialization activities (e.g. Hall and Harhoff, 2004). In addition, legal uncertainty is synonymous with an increased risk of litigation, which may hamper the development of SMEs and reduce the level of entrepreneurship. Finally, for society, we are left with a contrasted picture, which is hard to interpret. The European patent system wishes to maintain high quality standards to reduce business uncertainty around granted patents, but it is overloaded with the volume of applications filed, resulting in growing backglogs which translate into legal uncertainty surrounding pending applications. The filing strategies that contribute to this situation might reflect a legitimate need for more time and flexibility in filing more valuable patents, but they could also easily turn into real abuses of the system, allowing some patentees to obtain and artificially maintain provisional rights conferred by pending applications on inventions that might not meet the patentability requirements. Distinguishing between these two cases goes beyond the scope of the present dissertation, but should they be found abusive, they should be fought for they consume resources and generate uncertainty. And if legitimate, then they should be understood and the system adapted accordingly (e.g. by adjusting fees to discourage some strategies, raising the inventive step, fine-tuning the statutory term in certain technologies, providing more legal tools for patent examiners to reject unpatentable applications, etc.) so as to better serve the need of inventors for legal protection in a more efficient way, and to adapt the patent system to the challenges it is or will be facing.