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Graham, Stuart J.H. --- "The Determinants of Patentees’ Use of ‘Continuation’ Patent Applications in the United States Patent and Trademark Office, 1980–99" [2006] ELECD 371; in Andersen, Birgitte (ed), "Intellectual Property Rights" (Edward Elgar Publishing, 2006)

Book Title: Intellectual Property Rights

Editor(s): Andersen, Birgitte

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845422691

Section: Chapter 7

Section Title: The Determinants of Patentees’ Use of ‘Continuation’ Patent Applications in the United States Patent and Trademark Office, 1980–99

Author(s): Graham, Stuart J.H.

Number of pages: 26

Extract:

7. The determinants of patentees' use
of `continuation' patent applications
in the United States Patent and
Trademark Office, 1980­99
Stuart J.H. Graham

ABSTRACT
This chapter describes and examines the use of the `continuation' patent
application procedure available in the United States but not generally
elsewhere in the world. The continuation procedure allows a US patent
applicant to postpone the issue of a patent, affording inventors several
strategic opportunities, among which are delay and secrecy. The chapter
also demonstrates the perverse effects of so-called `submarine patents',
continuation patents that surface in a marketplace in which the patented
technology has been widely embraced by adopters unaware that a valid
patent was pending and hidden from view. In addition to examining several
specific cases of submarine patents ­ cases in which the patentee was able
to extract extraordinary economic rents ­ the chapter investigates through
negative binomial regression the determinants of patentees' use of the
continuation procedure. Continuations are shown to be significantly more
likely when the resulting patent is held by an organization, is held by a
domestic (US) entity, is comprised of more patent claims, or is drawn from
a wider breadth of technologies. The chapter also examines how and why
innovators in the semiconductor and pharmaceutical technologies have
employed the continuation patent application procedure, demonstrating
that in each of these important sectors the continuation procedure has been
widely used, and may offer strategic benefits.

Keywords: Patents, Submarine patents, Patent continuation applications,
Intellectual property strategy



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