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The United States patent system has become sand rather than lubricant in the wheels of American progress. Such is the premise behind this provocative and timely book by two of the nation's leading experts on patents and economic innovation.

Purpose In the intellectual property (IP) and management literature, the question of how external patent attorneys impact patent filings has been understudied. The purpose of this paper is to advance this area of research by examining how the use of external patent attorneys influences the patent filing strategies of firms and what impact firms’ level of experience with the exclusive use of in-house resources has on filing strategies. This study, thus, provides insights into the strategic dimension behind patent filing, a process which is affected by patent attorneys’ work and decision-making processes. Design/methodology/approach The econometric analysis is based on a patent database of 922,553 patents which is combined with an EPO patent database covering applications from 1990 to 2010. The authors test the hypotheses for this study using patent indicators addressing the impact of in-house firm experience vs the use of external patent attorneys on firm’s filing strategy. Findings This research finds empirical evidence that external patent attorneys’ work has an effect on patent scope, international scope, and patenting speed. Moreover, it can be shown that external patent attorneys have a positive impact on most filing dimensions, such as patent scope, international scope and the Patent Cooperation Treaty option, whereas the level of in-house firm experience has a negative impact on most filing dimensions. This implies that external patent attorneys seem to pursue a “maximization approach” while experienced firms seem to pursue a more differentiated approach to filing patents, for instance, drafting narrower and more focused patents. Practical implications The study suggests that effective filing strategies require an integrated approach between diverse IP stakeholders. More particularly, filing strategies should be communicated and aligned between all actors, including external patent attorneys in order to achieve the targeted patenting output. Originality/value The current study develops a patent filing typology, which accounts for patent attorneys’ decision options. In providing insights into patent attorneys’ work and their impacts on intellectual property rights management, the study is a useful complement to prior research, which has predominantly focused on applicants or examiners.

This study examined the experiential learning of professionals and empirically analyzed the learning effect. As many professional studies have pointed out, professionals must continue to learn and improve their expertise throughout their careers to deliver higher-quality services. Experiential learning is a crucial subject for understanding the construction of professional knowledge. However, not much research has been accumulated. This study categorized professionals’ experience into four subcategories, each exploring the specific effects, distinguishing from previous research conceptualizing experience as a bundle. These four categories are broad experience, task-specific experience, breadth of experience, and depth of experience. Utilizing a dataset of 722 Japanese patent attorneys who owned individual firms, we analyzed panel data from 2002 to 2010. Regression analysis was employed to investigate the effect of patent attorney experience on two performance measures: patent grant rate and grant lag (i.e., time to patent registration). The results show that broad experience and breadth of experience positively impact the rate of patent grants. Additionally, broad experience and depth of experience help reduce the time taken for patent registration. The results are generally consistent with existing studies. However, task-specific experience has a negative effect on patent grant rate, contrary to previous research. This study provided insight into a deeper understanding of the learning curve and the underlying mechanism of professionals’ individual experiential learning. Also, this study added new insights by conducting empirical research in the Asian context since most previous studies have focused on Western professionals.

In recent years, business leaders, policymakers, and inventors have complained to the media and to Congress that today's patent system stifles innovation instead of fostering it. But like the infamous patent on the peanut butter and jelly sandwich, much of the cited evidence about the patent system is pure anecdote--making realistic policy formation difficult. Is the patent system fundamentally broken, or can it be fixed with a few modest reforms? Moving beyond rhetoric,Patent Failureprovides the first authoritative and comprehensive look at the economic performance of patents in forty years. James Bessen and Michael Meurer ask whether patents work well as property rights, and, if not, what institutional and legal reforms are necessary to make the patent system more effective. Patent Failurepresents a wide range of empirical evidence from history, law, and economics. The book's findings are stark and conclusive. While patents do provide incentives to invest in research, development, and commercialization, for most businesses today, patents fail to provide predictable property rights. Instead, they produce costly disputes and excessive litigation that outweigh positive incentives. Only in some sectors, such as the pharmaceutical industry, do patents act as advertised, with their benefits outweighing the related costs. By showing how the patent system has fallen short in providing predictable legal boundaries,Patent Failureserves as a call for change in institutions and laws. There are no simple solutions, but Bessen and Meurer's reform proposals need to be heard. The health and competitiveness of the nation's economy depend on it.

Patent lawyer and blogger Stephen Albainy-Jenie asked whether Pfizer get punked by a nonprofit after the US Patent and Trademark Office ruled that a Pfizer patent for Lipitor, the $12-billion-a-year cholesterol drug, might be invalid. The decision was the latest in a string of successful initial rulings for Dan Ravicher, a 30-year-old attorney and crusader against those patents that he says are bad for the public welfare.

This chapter contains sections titled: Introduction Meeting with your Legal Advisors Submission of your Patent Application Prosecution of your Patent Applications Initial Screening by the Examiner Conducting a Prior Art Search Responding to an Office Action Rejections, Final Rejections, and RCEs Interviewing the Examiner and Filing Appeals Appealing a Decision and Abandoning an Application Final Comments

Purpose This paper aims to review the latest management developments across the globe and pinpoint practical implications from cutting-edge research and case studies. Design/methodology/approach This briefing is prepared by an independent writer who adds their own impartial comments and places the articles in context. Findings The increasingly complex issue of patent filing demands specialist knowledge and skills to identify appropriate strategies. Patent attorneys therefore have a critical role to play and can significantly influence a patent in terms of its breadth, international scope, and speed. Firms need to decide whether to use in-house capabilities or employ external patent lawyers who might have different motivations to their own. Originality/value The briefing saves busy executives and researchers hours of reading time by selecting only the very best, most pertinent information and presenting it in a condensed and easy-to-digest format.

It should not surprise anyone that the biggest growth in US patent filings last year came from the technology sector, including several players in the so-called smartphone wars. Google jumped from the 65th biggest filer in the US to the 21st, with a 170% increase in filings. Apple was up 68%. For the 20th consecutive year, IBM also remained the top filer overall. The company was granted 6,478 utility patents in 2012 - a increase of nearly 5% on 2011. These are the headline numbers. But which firms are handling the work for these big filers? How do companies distribute the work? And how is this going to change? IFI Claims Patent Services used data from the USPTO to find the top 50 companies by number of patent filings, and then dug deeper to identify the firms and individuals who filed those patents.

In the February issue Managing IP reveals the results of part one of the world's most detailed and authoritative survey of the IP market. Following five months' research we list the leading firms in patent prosecution and contentious work in Africa, the Middle East, Asia, Europe and Americas. Managing IP's exclusive survey of the world IP market, now in its 14th year of publication, provides a unique perspective on IP practice -- based on hundreds of conversations with clients and practitioners worldwide. In the following pages, we reveal which firms are recommended, as well as which are rated in the top tier, covering both prosecution and contentious work. The results of this research are detailed rankings of the leading firms practising intellectual property in each country. As in the past five years, the lists of the leading firms are presented in the form of tiers. The total number of firms listed in each jurisdiction varies according to the size of the market.