Empirical Predictors of Patent Validity
Ralph D. Clifford
The problem of low patent quality continues. Too many patents are issued for claims that
are anticipated or made obvious by the prior art. Few believe that the AIA will have any
significant impact on this problem. Many commentators (including myself) have suggested that a
significant source of the problem is a result of the lack of competent prior art searching as neither
the applicant nor the PTO are doing an adequate job of screening applications. This paper is
designed to continue my research on how the patent bar contributes to this problem.
In the first paper written to address this topic1, a group of us established that members of the
patent bar are not properly trained in the technologies underlying the applications they are
submitting. This lack of competency results in more than nonoptimally drafted claims. Further, a
patent practitioner without training is not likely to be familiar with the fundamental scholarship
within the technology. Without knowledge, disclosure to the PTO is impossible.
In the next paper in the series2, the compounding problem of a lack of a requirement on
the patent attorney to search for prior art was explored. This second paper established that, rather
than requiring searching and disclosure by patent applicants, the PTO’s rules provide a
disincentive for the patent attorney to even attempt to find relevant prior art. All that need be
disclosed is what is known. If the patent practitioner is willfully ignorant of existing prior art —
or was ignorant because of training in a non-relevant discipline – the burden of discovery rests
exclusively with the PTO’s examiners who have not proven to be particularly competent
themselves. The purpose of this third paper will be to examine issued patents in an attempt to
develop empirically-based measurements that confirm the failures defined in the first two papers.
The fundamental question being posed is, “Are there empirical measurements that accurately
predict whether the claims within a patent would be ultimately found to be invalid?”
Consequently, measurements of the quantity and quality of the prior art searching done by the
applicant and his or her representatives will be the highest priority.
To derive predictors of patent quality, a database will be developed comprised of the
record of any patent that has had its validity litigated. To be included in the database, the
standards required for res judicata will be used — the patent has had one or more claims declared
by a court to be either valid or invalid.
Once this database is available, the individual patents involved will be examined as will
their prosecution history. Various quantitative values about each patent will be captured. A
primary measurement will be the number of prior art references contained in the application as
well as those disclosed during the prosecution. Other values which may be probative include the
type of prior art disclosed (prior patent, publication, etc.), the training of the patent attorney or
agent who drafted the patent, the number of claims contained in it, the duration of the
prosecution, as well as other measurable values that may prove predictive.
After the patent-specific data are derived, it will be possible to determine if the data
contained within the patent application provide methods of predicting when a patent will be
found wanting by a court. The primary hypothesis of the paper is that there will be a strong
relationship between the quantity and quality of pre-submission prior art disclosed and the
1
Ralph D. Clifford, Thomas G. Field, Jr., & Jon R. Cavicchi, A Statistical Analysis of the Patent Bar: Where Are
The Software-savvy Patent Attorneys?, 11 N.C. J. L.. & TECH. 223 (2010).
2 Ralph D. Clifford, Is It Time for a Rule 11 for the Patent Bar?, – IDEA – (2013).
ultimate validity of the patent. As the data are examined, other secondary hypotheses will be
articulated and tested. If the primary hypothesis is proven, the article will conclude with a call for
the strengthening of the requirements for prior art searching.