Patent Prosecution Overview

Principles

Definition

Patent prosecution is the academic field or conceptual domain concerned with the process by which applicants seek to obtain patent rights from a governmental authority. It investigates the interactions, strategies, arguments, and procedural steps involved in the examination and negotiation phases of patent applications, analyzing the interplay between legal frameworks, technical subject matter, and strategic decisions made by applicants and examiners. This field is significant for understanding the mechanisms of intellectual property acquisition, their impact on innovation ecosystems, and the dynamics of legal practice in technology and law.

Ontological type

Core Procedures

Examination Standards

Prosecution Strategies

Key developments

Key Figures

Strategic Patent Portfolios era

Jean O. Lanjouw [1] was active at University of California, Berkeley [3] and Yale University [4] during the Strategic Patent Portfolios era (2002-2008). His key contributions in this era are exemplified by the 2004 paper Patent Quality and Research Productivity: Measuring Innovation with Multiple Indicators [6], which proposed multi-indicator measures of patent quality to improve the assessment of innovation and inform portfolio strategy. Mark Schankerman [2] was affiliated with London School of Economics and Political Science [5] during the same period. Together with Lanjouw on the 2004 paper Patent Quality and Research Productivity: Measuring Innovation with Multiple Indicators [6], he helped demonstrate how measuring patent quality with multiple indicators supported empirical methods and shaped defense, licensing leverage, and bargaining power in strategic patent portfolios.

Patent Prosecution Thickets era

James Bessen [1], affiliated with Boston University [3], is a central figure in patent policy debates during 2009-2015. In this era, his 2009 paper Sequential innovation, patents, and imitation [5] demonstrates how patent regimes shape sequential invention and imitation, influencing entry barriers and diffusion that help explain the formation of technology thickets. Rosemarie Ham Ziedonis [2] is affiliated with Stanford University [4] and Boston University [3], illustrating cross-institutional engagement during this era. Her 2009 paper Reputations for toughness in patent enforcement: implications for knowledge spillovers via inventor mobility [6] shows how reputational signaling can deter enforcement and alter inventor mobility, with implications for knowledge diffusion and thicket persistence.

Examination Quality Signals era

Deepak Hegde[1] conducted research across New York University[3] and Stockholm School of Economics[4] during this era. His key contributions center on evaluating patent value signals through What Is a Patent Worth? Evidence from the U.S. Patent Lottery[7] and Patent Publication and the Market for Ideas[8], which illuminate how publication timing and perceived worth shaped examination quality dynamics in this period. Alan C. Marco[2] worked across Georgia Institute of Technology[5] and Vassar College[6] during this era. His work on Patent citations reexamined[9], Patent transactions in the marketplace: Lessons from the USPTO Patent Assignment Dataset[10], and The USPTO Patent Examination Research Dataset: A window on patent processing[11] provided a framework to measure processing efficiency, transaction activity, and disclosure-based signals shaping credibility of examination quality signals in this era.