Strategic Patent Management

Table of Content

Table of figures

List of attachments

List of tables

Abbreviations

1 Abstract

2 Introduction

3 Review of existing literature
3.1 The patenting process at the GPTO
3.2 Behavioral patterns inside the patenting process
3.2.1 Minimize examination lag / quick patent decision
3.2.2 Pending patent / delay patenting process
3.2.3 Defensive Publishing / early publication
3.2.4 Active withdrawal/no payment of annual fees
3.2.5 Summary of behavioral patterns
3.3 Motives of applicants
3.3.1 Block competitors, license to an already found licensee, patent troll,
improve bargaining position in (cross-) license negotiations
3.3.2 Secure Freedom-To-Operate
3.3.3 Insecure competitors / conceal technolgy strategy
3.3.4 Gaining time to find licensees
3.3.5 Gaining time to evaluate a potential exclusion right
3.3.6 Improve public corporate image
Lorenz Zehetbauer | Abstract page III of IX
3.3.7 Summary of motives
3.4 Connection of motives and behavioral patterns
3.4.1 Exclusion right <-> expedited patenting process
3.4.2 Securing FTO <-> DP / early publication
3.4.3 Gaining time to find licensees <-> pending patent
3.4.4 Gaining time to evaluate a potential exclusion right <-> pending patent
3.4.5 Conceal technology strategy <-> pending patent
3.4.6 Improve public corporate image <-> ?
3.5 Propositions

4 Methodology of empirical analysis
4.1 Stratified random sampling
4.2 Data collection
4.3 Data analysis

5 Procedure of empirical analysis
5.1 Dataset
5.2 Data collection (questionaire) and data logging
5.3 Data analysis - descriptive analysis

6 Results of empirical analysis

7 Conclusion

8 Bibliography

9 Appendix

Table of figures

Figure 1: Patenting process at the GPTO

Figure 2: Connection - Exclusion right <-> behavior of applicant

Figure 3: Connection - Secure FTO <-> behavior of applicant

Figure 4: Connection - Find licensees before high costs accrue <-> behavior of applicant

Figure 5: Connection - Asses value of exclusion right <-> behavior of applicant

Figure 6: Connection - Insecure competitors / conceal technology strategy <-> behavior of applicants

Figure 7: Empirical research process

Figure 8: Basic population <-> sample <-> results

Figure 9: Perl-script for preparing dataset of addressees of the survey

Figure 10: Process of creating an appropriate questionnaire

Figure 11: Process of conducting a survey and data logging

Figure 12: Rate of return bar chart

Figure 13: Planned and actual use of patents

Figure 14: Dispersion of company size (employees)

Figure 15: Results related to the motive "improve corporate public image"

Figure 16: Dispersion of motive "blocking competitors"

Figure 17: Plan to license

Figure 18: Dispersion of motive "improving bargaining position"

Figure 19: Dispersion of motive “securing FTO (third set of quesions)” -> Proposition 2 .

Figure 20: Dispersion of motive “securing FTO (fourth set of quesions)” -> Proposition

Figure 21: Dispersion of motive “securing FTO (third set of quesions)” -> Proposition 2.1

Figure 22: Dispersion of motive “securing FTO (fourth set of quesions)” -> Proposition 2.1

Figure 23: Dispersion of motive “securing FTO (third set of quesions)” -> Proposition 2.2

Figure 24: Dispersion of motive “securing FTO (fourth set of quesions)” -> Proposition 2.2

Figure 25: Dispersion of motive “gaining time to find licensees (third set of questions)” .

Figure 26: Dispersion of motive “gaining time to find licensees (fourth set of questions)”

Figure 27: Dispersion of motive “gaining time to evaluate potential exclusion right (third set of questions)”

Figure 28: Dispersion of motive “gaining time to evaluate potential exclusion right (fourth set of questions)”

Figure 29: Use after pending period -> use in own product

Figure 30: Use after pending period -> licensing to licensees

Figure 31: Dispersion of motive "conceal own technolgy strategy" (third set of questions)

Figure 32: Dispersion of motive "conceal own technolgy strategy" (fourth set of questions)

Figure 33: Dispersion of motive "use national application as basis for subsequent filings (3 strata)

Figure 34: Dispersion of motive "use national application as basis for subsequent filings (1 stratum)

List of attachments

- Questionnaire before Pretest
- Feedback of Pretest
- Cover letter and questionnaire after Pretest / Redesign
- Dispersion graphs based on results of analysis

List of tables

Table 1: Patent applicants’ possible interventions during the patenting process

Table 2: Behavioral patterns of applicants

Table 3: Motives to patent

Table 4: Connection between motives and behavioral patterns

Table 5: Possible response errors

Table 6: Types of scales of measurement

Table 7: Scaling methods

Table 8: Example for a 5-ary Likert scale with 2 items

Table 9: Abbreviations used for the strata

Table 10: Excel filenames identifying the strata

Table 11: Overview on returned questionnaires / rate of return

Table 12: Results related to proposition 1

Table 13: Results related to proposition 2

Table 14: Results related to sub-proposition 2.1

Table 15: Results related to sub-proposition 2.2

Table 16: Results related to sub-proposition 3

Table 17: Results related to sub-proposition 3.1

Table 18: Results related to proposition 4

Table 19: Results related to proposition 5

Table 20: Summary of results

Abbreviations

Abbildung in dieser Leseprobe nicht enthalten

1 ABSTRACT

Die vorliegende Arbeit beschäftigt sich mit dem Patent System in Deutschland, mit dessen traditionellen Aufgaben und dem Patent Management von Unternehmen. Dabei werden im Besonderen moderne, neu hinzukommende Aufgaben und Ziele des Patent Systems untersucht. Traditionell hat das Patent System die Aufgabe, Erfinder zum Erfinden zu motivieren und im Gegenzug die gemachten Erfindungen der Öffentlichkeit zu präsentieren. Der Vorteil der gesteigerten Wertschöpfung einer Erfindung durch ein Exklusiv-Nutzungs-Recht (Patent) steht dabei in Konflikt mit dem Nachteil der Veröffentlichung, da damit eine Grundlage für Nachahmer und Wettbewerber geschaffen wird.

Diese Veröffentlichung hat, neben den hohen Kosten für ein Patent, in jüngerer Vergangenheit dazu geführt, dass andere Mechanismen zur Wertschöpfung aus der Erfindung (z.B. “lead time advantages” und “complementary assets”) vermeintlich wichtiger wurden. Nichtsdestotrotz ist die jährliche Anzahl an Patentanmeldungen annähernd gleichbleibend hoch. Dafür muss es also Gründe innerhalb des Patent Systems geben.

Diese Arbeit untersucht das Patent System, insbesondere den Patent-AnmeldungsProzess am DPMA^[1], um solche Gründe näher zu beleuchten. Dabei werden Verhaltensmuster von Erfindern innerhalb des Patent Prozesses, wie sie Henkel und Jell (2009) beschreiben, mit möglichen Motiven für ein solches Verhalten verknüpft. Durch diese Vorgehensweise soll Aufschluss darüber gegeben werden, warum diese Anmelder sich so verhalten und damit aus welchen Gründen sie ein Patent angemeldet haben.

Die Ergebnisse dieser Arbeit, die durch eine schriftliche Umfrage (Fragebogen) unter 1160 Erfindern gestützt werden, kommen zu dem Schluss, dass es neben den traditionellen Gründen ein Patent anzumelden, zusätzliche strategische Gründe gibt. Solche sind z.B. die Möglichkeit, mit Hilfe einer Vielzahl von Patentanmeldungen die eigene Technologie-Strategie Wettbewerbern zu verschleiern oder die Möglichkeit, die nationale Patentanmeldung als Grundlage für weitere Patentanmeldungen in anderen Ländern zu nutzen.

Diese strategischen Motive eines Erfinders, das Patent System zu nutzen, erklären die konstant hohe Zahl an Patentanmeldungen am DPMA.

2 INTRODUCTION

The contribution of this paper is to prepare and provide empirical evidence for the findings by Henkel and Jell (2009) on behavioral patterns and the corresponding motives of inventors during the patenting process at the German Patent and Trademark Office (GPTO).

Based on the conservative literature the patenting system has two main objectives incentive to innovate and diffusion of knowledge (Kaufer 2002). Innovators need to be incentivized in order to innovate. Therefore, innovators should profit from inventing and innovating. Under this directive they should be able to receive a certain amount of value the invention is able to generate. Thus, the patent system is one mechanism to assure these rents referring to the objective “incentive to innovate”. In contrast, the patenting system could have negative impacts, since the invention is published with the patent (“diffusion of knowledge”) which might enable competitors to imitate or invent around the original invention (Horstmann, et al. 1985) (Johnson and Popp 2003) (Anton and Yao 2004). Nevertheless, the patent system might be a valuable candidate for inventors to appropriate rents for the following reason. The incentivizing objective is supposed to be achieved by granting the inventor an exclusion right which excludes potential competitors from using the invention. Such an exclusion right is often stated as precondition to incentivize an inventor to innovate (Arrow 1962). In reality, the importance of excludability achieved by a patent is uniformly found to be less effective compared to aspects like lead time advantages and complementary assets (Teece 1986). (Levin, et al. 1987) (Harabi 1995) (Cohen, et al. 2000) (Arundel 2001) (Kaufer 2002) (Sattler 2003)

Nevertheless, the number of patents and patent applications increases and scientist try to explain why companies still patent en masse. They found and analyzed certain “strategic” aspects of patents and patent applications that expand the conventional objectives of a patent. (Kash and Kingston 2001) (Granstrand 2001) (Arundel and Pattel 2003) (Macdonald 2004) (Blind, et al. 2006) (Blind, et al. 2009)

These strategic motives can be summarized as “Blocking competitors”, “Enabling cross-licensing” and “Forearming against infringement suits”. (Cohen, et al. 2000)

Those motives have one thing in common. In order to keep with them a granted patent is needed. Thus, in the end these motives aim at the traditional objective of the patenting system of obtaining an exclusion right.

Consequently these “strategic” motives do not explain why there are many patent applications that lapse or are actively withdrawn even before the examination was requested or conducted, or which are simple kept pending for a long period. Do these patents turn out to have no actual value for the applicant or do these patent applications have another (maybe strategic) purpose? In order to have such a purpose, applications that do not result in a granted patent must still benefit the applicant in some kind of way. Hence, there might be additional strategic motives involved. These are supposed to be enlightened in this paper and backed with empirical evidence.

Henkel and Jell (2009) investigated several behavioral patterns inside of the patenting process that might lead to further abilities of rent extraction.

The Freedom-To-Operate (FTO)^[2] is one important point in order to generate value by using the patent in an own product or production process for instance. Thus, securing FTO might be another motive of patent applicants and an objective of the patenting system. If a competitor would be able to get a patent granted on the invention of the original inventor, he or she would be able to bar the inventor from using his or her own invention. Hence, FTO is a major issue an inventor has to keep in mind. As a result, the motive of securing FTO might be a reason for the constant high number of patent applications. (Henkel and Jell 2009) (Henkel and Pangerl 2008)

Furthermore, Henkel and Jell (2009) suggest the “pending status” to be a strategically important motive to file for a patent. Within the German patent system the applicant has the possibility to wait for a maximum of seven years after application until he or she requests for examination. This deferral is also called “examination lag” (Henkel and Jell 2009) in literature. During this period the patent is “pending”. Such a pending patent might lead to several strategic advantages since the applicant can control this “examination lag”. First, the time gained can be used to evaluate whether or not the invention is worth to run through the whole patent process, due to the high costs involved. The time could also be used to look for possible licensees. In addition, pending patents are often used by big companies for the following strategic reason. An enterprise might decide to apply for e.g. 200 patents in a field where one of theirproducts is located. However, only about two or three patents are really needed for the product’s next version. The other patents are used to confuse the competitors in order to not reveal the features, design etc. of the new version of the product and to insecure them (“spoofing patents”). Pending patents, however, cannot be ignored by the competitors since they still have the potential to be granted and thus represent a patent right. The pending patent can be a favorable instrument since during the “examination lag” there are no examination costs involved because no examination takes place. As a consequence, the pending patent might be another motive to patent that is not based on obtaining an exclusion right. (Henkel and Jell 2009) (Guellec and Van Pottelsberghe de la Potterie 2007) (Popp, et al. 2003)

These motives and the respective behavioral patterns might be a reason for the persistent high number of patent applications at the GPTO.

3 REVIEW OF EXISTING LITERATURE

This chapter is supposed to give an additional overview on existing literature related to this paper’s topic. It further provides a detailed review on the paper of Henkel and Jell (2009). Finally, it includes propositions that can be extracted from the prevailing literature. These propositions are attempted to be proofed within the empirical part.

Although the topic of additional strategic motives to patent has only received little attention in literature with regard to empirical evidence, there are some scientists that put work in finding additional values of patents. Mostly they bear on data of the examination and post-examination phase (Harhoff and Reitzig 2004) (Harhoff and Wagner 2006). To assess the value of a patent, legal status data is interlinked with bibliographic data (e.g. citations) in these papers (Hall 2005). Some even provide value indicators for patents (Reitzig 2004). All of them argue that the value of the patent and thereby of the underlying invention depends on the decision of the GPTO whether or not the patent is granted. Thus, they argue on motives based on an exclusion right. In contradiction, Henkel and Jell (2009) argue that the applicants also benefit from refused or withdrawn applications. Hence, there might exist other advantages besides the exclusion right that generates value for the applicants. (Guellec and Van Pottelsberghe de la Potterie 2000) (Reitzig 2004)

Furthermore there are other studies that have been analyzing the patenting process at the GPTO itself in order to provide an explanation of the value of patents. However, these studies refer on data that is based on phases inside the process that lie after the examination decision or after the application exited the process. (Harhoff, et al. 2003)

In the first step of their study, Henkel and Jell (2009) empirically analyzed behavioral patterns of inventors applying at the GPTO. Behavioral patterns are, e.g., the extension of the examination lag or the request for early publication. In addition, they explored motives that could lead to those patterns by interviewing several inventors. Such a motive could be, e.g., to create prior art by using the patent system as an instrument for Defensive Publishing (DP). These motives might lead to further values of patent applications. A detailed review of the paper of Henkel and Jell (2009) and the connection to the present paper is provided in the next sections of this chapter.

3.1 THE PATENTING PROCESS AT THE GPTO

This section is supposed to describe the patenting process at the German Patent and Trademark Office (GPTO). The following figure illustrates the process flow and shows the events that occur during the process.

Abbildung in dieser Leseprobe nicht enthalten

Figure 1: Patenting process at the GPTO^[3]

The process starts with the application at the GPTO. The day the application is handed in is an important date for several reasons. First of all, after application no one else is able to file for the same invention at the GPTO and thus it is destroying novelty, however, only in Germany. This mechanism is also referred to as “first-to-file”. Second of all, if the patent is granted later on it is retrospectively valid from the application date on. Moreover the applicant has 12 months after the application where he or she can apply for other international patents (priority year), for instance at the European Patent Office (EPO) (PatG 2008, p. / § 40). Hence, the national application secures priority and the applicant has the possibility to file for patents at other patent offices covering the same invention. He or she gains time to clear up whether or not it is needed or worth to file subsequent applications. (Deutsches Patentamt 2009a) (PatG 2008) (Bosworth and Webster 2006)

In order to get a patent granted the patent needs to be examined by a patent clerk. To start this inspection the applicant has to request for examination (PatG 2008, p. / § 44). He or she can do so immediately when filing for the patent. However, it is also possible to wait with this request for a maximum of seven years. This waiting period is also called “examination lag” as stated in the introductory chapter. After the request for examination the patent is examined. Therefore, it takes again some time before a patent is granted or refused (“grant/refusal lag”). An interesting issue that needs to be mentioned at this point is the opportunity the applicant has to modify the application until the date of grant. The precondition for such a modification is that the subjectmatter of the original application will remain and will not be stretched (PatG 2008, p. / § 38). The request for examination occasions costs of 350 €.(Deutsches Patentamt 2009a) (Patentamt 2009ab) (Götting and Schwipps 2004) (Bosworth and Webster 2006) (Harhoff, et al. 2003)

Regardless of the examination lag the patent application is usually published after 18 months, except for patents that cover state secrets or patents that are actively withdrawn before publication (PatG 2008, pp. / § 50, § 32 (4)). With this publication the invention is no longer secret to the public. This has several impacts. First of all, prior art is created and thus nobody else is able to get a patent granted on this invention - neither in Germany nor somewhere else in countries of the PCT (Patent Cooperation Treaty). Second, however, competitors might be able to gather information on the invention and therefore on the technological strategy of the applicant. Problems such as imitation and inventing around might arise. Hence, the publication that is involved in the patenting process secures FTO for the applicant on the costs of disclosing the invention even to competitors. (Deutsches Patentamt 2009a) (Bosworth and Webster 2006) (Horstmann, et al. 1985) (Johnson and Popp 2003) (Anton and Yao 2004)

In any case the annual fees are due every year starting with the third year until the patent finally terminates in year 20 (or 25 in branches like pharmaceuticals and phytopharmaceutical). Thus, the fees have to be paid in time in order to sustain the application inside of the patent process respectively maintain the granted patent. As stated by the GPTO, “…the amount of the fee rises over time…” (Patentamt 2009ab). These annual fees are the same regardless whether the patent is granted or still pending.

Starting with 70 € for the year three the fees are less than, e.g., the 350 € for the request for examination. Hence, leaving a patent pending (not requesting for examination) is at the beginning less costly than submitting the request for examination immediately. (Patentamt 2009ab) Several strategies concerning intellectual property management can be derived from the above described patenting process. Chapter 3.4 illumines these strategies and respective motives. The opportunity to profit from granted patents as an exclusion right is de facto relevant. Information papers exist that give an overview on the patenting process and that should help inventors to find their way in the patenting system (Berufsbildungsund Technologiezentrum (HWK Schwerin) 2009). That clearly indicates the practical importance of strategic patent management.

Another important issue that needs to be mentioned here is the question where and how the applicant can influence the patenting process. Possible interventions/interactions the applicant has are shown in the following table and will be depicted in detail below.

Abbildung in dieser Leseprobe nicht enthalten

As already stated above the applicant has the opportunity to delay the request for examination up to seven years. Hence, the examination lag is controlled by the applicant solely. If the GPTO receives no such request after seven years the application is deemed to be withdrawn. (Götting and Schwipps 2004) (PatG 2008, p. / § 44)

The time of publication can also be influenced by the applicant. The patent application is usually published after 18 months. However, the applicant can run for early publication. Therefore, he or she needs to agree on access to records and needs to nominate the inventor. (PatG 2008, p. / § 31 (2) [1])

If the applicant has no interest in continuing the patenting process the application can be withdrawn actively which would finally terminate the process. In addition, the applicant can simply reject to pay the annual fees that are due as from the beginning of year three. With not paying the fees in time the application is deemed to be withdrawn by the GPTO which will also terminate the process. (PatG 2008, pp. / §§ 17, 20)

The option to file for subsequent patents will last for a period of 12 months after application. This does not necessarily have an impact on the process at the GPTO. However, the applicant might concentrate on subsequent filing instead of running the whole GPTO patenting process. (PatG 2008, p. / § 40)

With regard to the information about the patenting process and the opportunities of influence, the following chapters enlighten several behavioral patterns of applicants during the patenting process at the GPTO. Furthermore, possible motives for these behaviors will be depicted.

3.2 BEHAVIORAL PATTERNS INSIDE THE PATENTING PROCESS

Based on the opportunities to affect the patenting process depicted in paragraph 3.1, four behavioral patterns of applicants can be identified. These patterns are not completely disjunct. That means, for instance, the pattern “withdrawal of application” can go together with another such as “defensive publishing”. Hence, the applicant’s behavior might consist of a combination of the categorized behavioral patterns illustrated below.

3.2.1 MINIMIZE EXAMINATION LAG / QUICK PATENT DECISION

This pattern describes a behavior of the applicant that deals with advancing the patenting process. As shown in chapter 3.1, the first step in the process is the application at the GPTO. Independent from the application the inventor needs to request for examination. For the purpose of reducing the duration of the patenting process the applicant minimizes the examination lag^[4]. To do so, he or she requests for examination as soon as possible, for instance at the application date. Hence, the examination lag is reduced to a minimum; it can even be reduced to zero. With such a behavioral pattern the applicant expedites the patenting process and thereby achieves a quick patent decision. In addition, the inventor is eager to pay all the fees in time. Furthermore, the application contains as much information as the applicant can provide and complies with all formal requirements in order to make the patent more likely to be granted. (Henkel and Jell 2009)

This behavioral pattern is independent from potential subsequent filings. As a result, with the focus on Germany, the duration of the patenting process at the GPTO is not influenced by submitted subsequent filings.

Since the patent runs through the whole process, the costs for this behavioral pattern arehigher compared to others. Therefore, companies assess in advance whether or not the invention is worth to pass through the whole patenting process. Another important issue to be mentioned here is the attitude of the enterprise towards the patentability. The full process is carried out only for patents that are likely to be granted. (Henkel and Jell 2009) (Van Pottelsberghe de la Potterie and François 2006)

Henkel and Jell (2009) found that 47.8 % of all GPTO direct filings were requested for examination before the application was published. In most of these cases the application and the request for examination were submitted at the same date. (Henkel and Jell 2009)

3.2.2 PENDING PATENT / DELAY PATENTING PROCESS

In order to gain time the applicant can try to slow down the patenting process. This can be done, for instance, by stretching the examination lag resulting in a pending patent. Between the application date and the day the applicant requests for examination the patent is called “pending”. Thus, as stated in paragraph 3.1, the patent can be pending for a maximum of seven years. In addition to that deferred request for examination, the applying company pays the annual fees in time so as to maintain the “pending-status” of the application and to make sure that it is not deemed to be withdrawn. During this “pending” period the applicant still has the option of getting the patent granted. The costs at that point in time are lower in contradiction to the expedited process since fees for the examination are not accrued yet. (Henkel and Jell 2009)

This pattern is independent from a potential later request for examination. The pending status of the application is also not affected by patent applications in other countries. No matter whether or not the applicant applies for subsequent filings, the patent at the GPTO can still be pending.

Henkel and Jell (2009) recognized 16.9% of all GPTO direct filings that could be related to the “pending patent”-pattern. Furthermore, they found that most of these fillings submit the request for examination as late as possible, particularly at the end of year seven. In that case the time gained is maximized. (Henkel and Jell 2009)

3.2.3 DEFENSIVE PUBLISHING / EARLY PUBLICATION

Another interesting behavioral pattern was found by Henkel and Pangerl (2008). Applications exist which are withdrawn or deemed to be withdrawn in year three when the first annual fees are due. Moreover, many of these applications do not have subsequent filings. A reason for that might be that applicants can utilize the patenting system to defensively publish the invention underlying the application. With the publication prior art is created. In general, all patent applications are published after 18 months (PatG 2008, p. / § 31 (2.2))^[5]. Thus, the date prior art is created is clearly defined. In Germany the filing date is the date were state of the art is created whereas in other countries this date is when the application is published. In order to defensively publish using the patenting system the only thing the applicant thus has to do is to apply for the patent. Additionally, to create prior art as fast as possible the applicant has the opportunity to request for early publication (see paragraph 3.1) (PatG 2008, p. / § 31 (2.1)). (Lazaradis and van Pottelsberghe de la Potterie 2007) (Parchomovsky 2000) (Henkel and Pangerl 2008)

It has to be mentioned that the patent application is likely to be cheaper than publishing in a magazine since the application is only 60€^[6] and the adjacent publication does not involve any further fees (Patentamt 2009ab). (Henkel and Pangerl 2008)

This pattern is independent from a potential request for examination, subsequent filings or (deemed) withdrawals after the application is published. However, applicants whose sole behavioral patterns is to defensively publish are likely to not file for subsequent applications and they probably do not pay the fees in time since when the first fees are due the publication is already done. As a result, these applications might be withdrawn or deemed to be withdrawn in year three. (Henkel and Pangerl 2008) (Parchomovsky 2000) (Johnson J. P. 2004) (Lazaradis and van Pottelsberghe de la Potterie 2007)

3.2.4 ACTIVE WITHDRAWAL/NO PAYMENT OF ANNUAL FEES

Besides the patterns depicted above, the applicant can of course actively withdraw his or her own application. The same effect is achieved by not paying the fees in time or if there is no request for examination submitted until the end of year seven, since the application is then - by the GPTO - deemed to be withdrawn. If the withdrawal takes place before publication the filing is not published. As a consequence of the withdrawal, the patent office always terminates the patenting process and so there is no patent grant possible anymore. (PatG 2008, p. / § 20) (Henkel and Jell 2009)

Henkel and Jell (2009) identify many deemed withdrawals in the years three and seven. This might have two reasons. First of all, in year three the initial annual fees are due. Thus, applicants that have decided in the first three years not to pass through the whole process do not pay these first fees. As a result, their application is deemed to be withdrawn. Second, in year seven there is the latest point in time where a request for examination can be submitted. Applicants that run for a pending patent might not have an interest to get a patent granted. Therefore they do not want to start the examination and as a result they do not submit any request. Consequently, these applications are also deemed to be withdrawn. (Henkel and Jell 2009)

The withdrawal itself does not involve any fees. However, there might be accrued some fees, such as the annual fees due, until the (deemed) withdrawal takes place. (Patentamt 2009ab)

Potential subsequent filings at other patent offices are not influenced by a (deemed) withdrawal at the GPTO nor have subsequent application an impact on a potential (deemed) withdrawal at the GPTO.

3.2.5 SUMMARY OF BEHAVIORAL PATTERNS

The following table gives an overview and summarizes the behavioral patterns depicted above.

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3.3 MOTIVES OF APPLICANTS

This section describes several motives that inventors could have when running through the patenting process. The qualitative results of Henkel and Jell (2009) are illustrated and some further deliberations are added. Hence, six general motives to file for a patent are depicted.

Henkel and Jell (2009) interviewed 22 inventors and analyzed their motives to patent. One result of their study is that in most cases there is not only one motive prevailing. In fact, a combination of motives with different importances to the applicant was found.

3.3.1 BLOCK COMPETITORS, LICENSE TO AN ALREADY FOUND

LICENSEE, PATENT TROLL, IMPROVE BARGAINING POSITION IN (CROSS-) LICENSE NEGOTIATIONS

The reason to patent most people would think of first is to obtain “… an exclusion right as fast as possible” (Henkel and Jell 2009, p. 4). The motives behind such an exclusion right that applicants might have are as follows. First of all, the exclusion right can be used to block competitors. Thus, it assures that no one else but the applicant is permitted to use the invention which might result in a competitive advantage. A second motive someone can think of is to license the invention to already found licensees based on the exclusion right. That means inventors can only license their invention if they have an exclusion right. Otherwise everybody could already use the invention. The inventor benefits from licensing the own invention and thereby receiving licensing fees. Another motive that should also be mentioned here is the one of a patent troll. With an exclusion right the patent troll tries to extort money from potential infringers. Furthermore, exclusion rights can also be used to improve the bargaining position in (cross-) license negotiations. Moreover, the time when an exclusion right is granted plays an important role. The earlier the applicant receives the exclusion right the more he or she benefits since the faster the applicant is able to obtain the exclusion right the earlier, e.g., licensing fees can be received. (Henkel and Jell 2009) (Harabi 1996)

3.3.2 SECURE FREEDOM-TO-OPERATE

Another motive would be to assure that applicants are allowed to use the invention on their own. This is often referred to as securing FTO. In many cases it is not necessary to block competitors by using an exclusion right because, for instance, the company of the inventor has complementary assets that competitors do not have. However, it would be harmful if a competitor can exclude the applicant from using the own invention by patenting itself. Hence, the applicant would benefit from assuring that no one else is able to get a patent on his or her invention. Not only the risk of being excluded but the risk of being extorted money by patent trolls has to be mentioned here. Thus, securing FTO also includes the protection against infringement suits. Securing FTO is one of the two main motives to file for patents (besides the above depicted motive related to the exclusion right). (Henkel and Pangerl 2008) (Barrett, et al. 2008) (De Rassenfosse, et al. 2008)

In many cases, however, obtaining an exclusion right and securing FTO go hand in hand since usually only blocking competitors for instance and not using the invention in own products or production processes would not be that valuable. It would only make sense to solely block competitors if the patent is e.g. part of a patent thicket which should prevent competitors from inventing around, if the inventor is e.g. a patent troll or if the invention should be licensed only. (Henkel and Jell 2009) (Reitzig, et al. 2007)

3.3.3 INSECURE COMPETITORS / CONCEAL TECHNOLGY STRATEGY

A motive that is principally used by big enterprises is to try to insecure competitors. Big companies benefit from hiding their own technology strategy especially in fields that are seen as strategically important. Thus, they try to keep it secret from competitors. This has several impacts from which the inventor benefits. Competitors do not know what potential product improvements the applicant works on or towards which direction the technology roadmap actually points. This might guarantee a time advantage with regard to a potential market launch. Hence, this motive is a strategically important one. Nonetheless, it has not received much attention in literature with regard to the patent system, yet. (Henkel and Jell 2009)

3.3.4 GAINING TIME TO FIND LICENSEES

A potential exclusion right can be used to license the invention to licensees charging licensing fees. However, these licensees need to be acquired. This often cannot be done in advance. Thus, at the time of application there are not necessarily already licensees found. A small engineering office, for instance, that has developed something, thinks of how to treat the new invention and how to profit from it. Such an engineering office is a candidate for licensing the invention since they are not able to use it in their own production. Even if the search for licensees is started immediately, however, it could require some time to convince potential licensees. Thus, it would be beneficial if costs do not accrue too fast until a licensee is found. The applicant hence benefits from reducing costs involved in the patenting process and from gaining time for the search for licensees. Chapter 3.4 describes potential behavioral patterns that such an engineering office might show to gain time for searching for licensees. (Henkel and Jell 2009)

3.3.5 GAINING TIME TO EVALUATE A POTENTIAL EXCLUSION RIGHT

The motive of evaluating the invention before costs increase is very similar to the preceding one. The applicant benefits from evaluating the invention not before but within the patenting process before costs accrue. Thus, the applicant profits from deciding whether the invention is worth to run through the whole process or not. The earlier such a decision for or against the full process can be made the better it is. However, such an evaluation requires time. Hence, it would be favorable for the applicant if costs do not accrue too quickly. The motive of the applicant therefore is to gain time to evaluate the invention. Chapter 3.4 depicts potential behavioral patterns that applicants whose motives are to gain time for evaluating the invention before costs accrue might have. (Henkel and Jell 2009)

3.3.6 IMPROVE PUBLIC CORPORATE IMAGE

The last motive that is described at this point is often relevant in medium to large enterprises. The public corporate image of companies becomes more and more important nowadays. Thus, firms benefit from a positive reputation. An innovative, positive image lets a company profit in several ways. First, the company is able to attract better/the best employees on the market since people like to work for companies that are “innovative”. Second, it might strengthen the bargaining position with local politicians. The more innovative the company is in ecological fields, for instance, the easier might be negotiations with politicians. There are many other positive impacts such as customer retention and acquisition of new customers. Schwaiger (2004) deals with intangible assets, in particular with corporate reputation as a driver for success. In this paper it is stated that corporate reputation is “…scarce, valuable, sustainable, and difficult for a competitor to imitate.” (Schwaiger 2004). For these reasons enterprises benefit from improving the public image; and thus, this might become a motive in the patenting process. (Schwaiger 2004)

3.3.7 SUMMARY OF MOTIVES

The following table summarizes the above depicted motives.

Abbildung in dieser Leseprobe nicht enthalten

3.4 CONNECTION OF MOTIVES AND BEHAVIORAL PATTERNS

This chapter is supposed to depict the connection of behavioral patterns and the motives described in the preceding sections. Henkel and Jell (2009) interviewed 22 applicants in order to come up with their findings. The aim of this paper is to back these qualitative results with empirical evidence. This section prepares the present study for the empirical analysis and therefore summarizes the findings by Henkel and Jell (2009) and illustrates what motives drive the applicant to behave in a certain way.

3.4.1 EXCLUSION RIGHT <-> EXPEDITED PATENTING PROCESS

Applicants whose motive to patent is to obtain an exclusion right as fast as possible because they want to block competitors, license the invention, extort money from potential infringers (patent trolls) or improve the bargaining position in (cross-) license negotiations try to expedite the patenting process. The following figure shows this connection between motive and behavior.

Abbildung in dieser Leseprobe nicht enthalten

Figure 2: Connection - Exclusion right <-> behavior of applicant^[7]

With an expedited process the applicant might be able to get a patent granted as fast as possible. The applicant is confident of the patentability and estimates the value of the exclusion right to be higher than its costs. Besides of the advantages depicted in chapter 3.3 this is why applicants that have the above motives^[8] favor a fast patenting process. (Henkel and Jell 2009)

3.4.2 SECURING FTO <-> DP / EARLY PUBLICATION

In order to “secure FTO” disclosing the invention and consequently creating prior art is one instrument. Henkel and Pangerl (2008) explored the patent system’s ability of “Defensive Publishing (DP)” (Henkel and Pangerl 2008, p. 1) to ensure FTO for German companies. Their qualitative study came to the conclusion that the patent process is and can be utilized for DP to create prior art. Furthermore, the application at the GPTO is cheaper than other publication mechanisms and the date prior art is created is clearly defined. The publication of an invention is often seen as a risk since it might enable competitors to imitate or invent around (Horstmann, et al. 1985) (Johnson and Popp 2003) (Anton and Yao 2004). Looking at the publication aspect in a more positive way, it can be used to secure FTO. Therefore the patent process is a persuasive candidate for DP and consequently for guaranteeing FTO. Another study (Lazaradis and van Pottelsberghe de la Potterie 2007), focusing on patents at the European Patent Office (EPO), came to a similar result. They detected patents that were withdrawn even before they were completely examined which could suggest that the function of these patents was to defensively publish the invention. Depending on whether or not the applicant needs to secure FTO as fast as possible and therefore benefits from it, the applicant additionally has the opportunity to requests for early publication or simply waits 18 months until the application is published anyway. The following figure shows the connection of the motive of securing FTO and the related behavioral patterns. (Henkel and Pangerl 2008) (Henkel and Jell 2009)

Abbildung in dieser Leseprobe nicht enthalten

Figure 3: Connection - Secure FTO <-> behavior of applicant^[9]

[...]

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^[1] Deutsches Patent- und Markenamt

^[2] FTO describes the right of the inventor to use the invention on his/her own.

^[3] self-made figure based on Deutsches Patentamt (2009)

^[4] Time between application and request for examination.

^[5] PatG is the abbreviation for the German Patentgesetz (“patenting law”)

^[6] 60€ for paper filings, 50€ for online filings (Deutsches Patentamt 2009a)

^[7] self-made figure

^[8] Block competitors, license the invention or extort money from potential infringers (patent trolls)

^[9] self-made figure