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Patent Validity Challenges and The America Invents Act

Author

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  • Talia Bar

    (University of Connecticut)

  • Brendan Costello

    (Yale Law School)

Abstract

Patent reexamination or patent review systems can lower the cost of challenging patent validity and help improve patent quality. We empirically investigate post-grant patent validity challenges at the U.S. Patent and Trademark Office, and how the 2011 America Invents Act affected them. We compare the inter partes reexamination with the inter partes review procedure that replaced it after the reform. To identify the effect of the policy changes, we exploit the fact that patents filed before the act passed, but granted after the new inter partes review system took effect, are not eligible for reexamination in the old system. We find that more patent challenges end with a patentee win after the policy change. Still, at least one patent claim is canceled in more than 60% of the cases. Challenged patents issued to small entities more often had at least one claim canceled compared to other patents.

Suggested Citation

  • Talia Bar & Brendan Costello, 2017. "Patent Validity Challenges and The America Invents Act," Working papers 2017-21, University of Connecticut, Department of Economics, revised May 2018.
    • Handle: RePEc:uct:uconnp:2017-21
    Note: Talia Bar is the corresponding author
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    References listed on IDEAS

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    Cited by:

    1. Bar, Talia & Kalinowski, Jesse, 2019. "Patent validity and the timing of settlements," International Journal of Industrial Organization, Elsevier, vol. 67(C).

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    More about this item

    Keywords

    Patent; Inter Partes Reexamination; Inter Partes Review; The America Invents Act; Post Grant Challenge; Patent Validity;
    All these keywords.

    JEL classification:

    • O34 - Economic Development, Innovation, Technological Change, and Growth - - Innovation; Research and Development; Technological Change; Intellectual Property Rights - - - Intellectual Property and Intellectual Capital
    • K10 - Law and Economics - - Basic Areas of Law - - - General (Constitutional Law)
    • K23 - Law and Economics - - Regulation and Business Law - - - Regulated Industries and Administrative Law

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