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Abstract

This paper presents a normative study of patent prosecution by examining the role that invention-date-based novelty rights play in U.S. patent law. Three sources inform the primary results: the prosecution history files of 21,000+ patent applications filed in the past decade; a survey of 1,000+ patent practitioners regarding their use of the novelty provisions of the Patent Act; and a collection of 11,000,000+ prior art references cited in recently-issued patents. Additional compilations of prosecution file histories for patents identified as either (1) valuable or (2) worthless supplement these data sets and allow for an evaluation of the differential importance of the novelty rights. Finally, a set of opinions from the Board of Patent Appeals and Interferences (BPAI) evidences the difficulty of proving a prior invention date. SUMMARY OF THE RESULTS: During prosecution, most patent applicants contend with non-102(b) prior art that could be antedated. Yet, very few applicants actually attempt to assert prior-invention rights. A miniscule 0.1% of cases in my large cohort sample included an assertion of novelty rights that directly led to an issued patent. Claiming priority to a prefiling invention date requires that an applicant prove prior conception and due diligence or reduction-to-practice. The difficulty of attempting to prove these elements are laid-out in a set of administrative patent appeal decisions where 77% of attempts to antedate references were rejected by the administrative court. Given the difficulty of asserting invention-date-based novelty rights, it is unsurprising that applicants are more likely to assert such rights in cases of highly valuable inventions, choosing not to waste money in less valuable cases. Furthermore, and perhaps contrary to conventional wisdom, my findings suggest that individual inventors assert invention-date-based novelty rights relatively less often and less successfully than large, publicly traded companies. Lastly, a practitioner survey of 1000+ patent law professionals reveals, inter alia, a shared concern that attempts to antedate prior art leave patents open to challenge during litigation by providing "fodder" for validity challenges.

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