Stuart J.H. Graham

High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey

We offer description and analysis of the 2008 Berkeley Patent Survey, summarizing the responses of 1,332 U.S.-based technology startups in the biotechnology, medical device, IT hardware, software, and Internet sectors. We discover that holding patents is more widespread among technology startups than has been previously reported, but that the patterns and drivers of holding patents are industry and context specific. Surprisingly, startup executives report in general that patents are providing relatively weak incentives for core activities in the innovation process. Our analysis uncovers that the drivers of startup patenting are often associated with capturing competitive advantage, and the associated goals of preventing technology copying, securing financing, and enhancing reputation - although again these and other motives depend on firm and industry factors. We also find substantial differences in the roles played by patents for startups in the biotechnology and medical device sectors - where patents are more commonly used and considered important - as compared to those operating in the software and Internet fields - where they are less useful. Interestingly, venture-backed IT hardware startups tend to resemble those in health-related fields in terms of their use of and motives for patenting. We generally find a wide disparity between the patenting behavior of venture-backed technology startups and those that are not funded with venture capital. We also discover that, when choosing not to patent major innovations, startups often cite to cost considerations, although again the motives to forgo patenting differ according to firm and industry characteristics. The respondents to our survey also generally report that checking the patent literature and licensing patents from others is reasonably common, although there too results differ according to the context. Other findings are discussed.

Competing on Standards? Entrepreneurship, Intellectual Property, and Platform Technologies

Entrepreneurs often rely on intellectual property (IP) to earn a return on their innovations, and also compatibility standards, which allow them to supply specialized components for a shared technology platform. This paper compares the IP strategies of small entrepreneurs and large incumbents that disclose patents at 13 voluntary standard setting organizations (SSOs). These patents have a relatively high litigation rate. For small private firms, the probability of filing a lawsuit increases after disclosure to the SSO. For large public firms, the filing rate is unchanged. Although forward citations increase after disclosure for all firms, the size of this effect is the same for entrepreneurs and incumbents. These results suggest that standards increase the difference between large and small firms’ incentives to litigate, rather than the relative value of their patents. We conclude that because specialized technology providers cannot seek rents in complementary markets, they defend IP more aggressively once it has been incorporated into an open platform.

Balancing Innovation and Access: Patent Challenges Tip the Scales

Development of new but costly pharmaceuticals is put at risk by U.S. law that emboldens generics competition. Improvements in pharmaceutical research and development (R&D) depend on product innovation. But the number of new compounds approved annually by the U.S. Food and Drug Administration (FDA) has fallen from an average of 35 in 1996–2001 to 20 in 2002–07 (1). This decline stems from several factors (2); however, one particular U.S. regulation—the Paragraph IV patent challenge—is increasingly stifling new drug innovation and deserves our attention.

Prospects for Improving U.S. Patent Quality via Postgrant Opposition

The recent surge in U.S. patenting and the expansion of patentable subject matter has increased patent office backlogs and raised concerns that, in some cases, patents of insufficient quality or with inadequate search of prior art are being issued. At the same time, patent litigation and its costs are rising. This paper explores the potential of a postgrant review process modeled on the European opposition system to improve patent quality, reveal overlooked prior art, and reduce subsequent litigation. We argue that the welfare gains to such a system may be substantial.

Submarines in Software? Continuations in US Software Patenting in the 1980s and 1990s

This article examines the role of ‘continuations’ (procedural revisions of patent applications) in software patents and overall patenting in the United States during 1987–1999. The research represents the first effort of which we are aware to analyze data on continuations in software or any other patent class, providing information on the effects of 1995 changes in the US patent law intended to curb ‘submarine patenting’. The analysis of all US patents shows that the use of continuations grew steadily during 1987–1995, with particularly rapid growth in software patenting. Sharp reversals in these growth rates after 1995 suggest that changes in the US patent law were effective. Prior to the 1995 changes in the patent law, continuation applications were used more intensively by large packaged-software firms than by other patentees, and both software and non-software patents subject to continuation tend to experience longer examination delays and to be more valuable.

Productivity and the Role of Complementary Assets in Firms’ Demand for Technology Innovations

This article uses data on transactions in the pharmaceutical industry to examine the demand-side of technology outsourcing. By integrating a transaction--cost economics perspective with the analysis of internal R&D capabilities, we find that firms with relatively more cospecialized complementary assets or relatively strong internal R&D productivity have a lower propensity to source a technology from outside the firm. We show, however, that since downstream capabilities and internal R&D are complementary activities in the presence of asset specificity and transaction costs, a decrease in internal R&D productivity reduces the marginal value of the downstream assets within firm boundaries, thus stimulating the demand for external technology. Copyright 2010 The Author 2010. Published by Oxford University Press on behalf of Associazione ICC. All rights reserved., Oxford University Press.

Comparing Patent Litigation Across Europe: A First Look

Although patent litigation has become increasingly global, with litigants earning billion-dollar verdicts and seeking judgments in many different jurisdictions around the world, scholarship has been almost completely silent on how such litigation develops outside the United States. This void in understanding is particularly glaring in Europe, where U.S. and other litigants are increasingly drawn, and to which policy makers interested in harmonizing the U.S. patent system look in vain for answers. Courts, litigants, commentators and policy makers speculate about how litigation and judicial outcomes differ, but have no factual basis for comparing or understanding what really transpires. With a view to settling this uncertainty and allowing for the emergence of a more robust body of scholarship, this Article sets forth the results of an empirical study of a database including nearly 9,000 patent suits from seven of the largest and most judicially-active countries in the European Union during 2000 to 2010. In the process, it shows that the incidence of litigation and the bases of judicial outcomes diverge radically across the different countries and varying patented technologies in Europe. Accordingly, the Article for the first time provides an empirically grounded, factual basis for examining stubborn questions relevant to those needing clarity about the legal environment in Europe, and to comparatively study the United States’ system. The results unveiled in this Article are profound, bringing clarity to a legal environment that has been heretofore shrouded in shadow. The results shows that the frequency of patents reaching a judgment in litigation varies widely across European countries, in ways that belie the simple differences associated with the quantity of domestic stocks of enforceable patents. By demonstrating that disputes are much more frequent in some countries (e.g. the Netherlands and France) compared to others, the Article uncovers that practitioners’ estimates – the sole previous source – are incorrect. In showing how litigation varies widely across technologies, this Article provides critical insights on the likelihood of different kinds of patents reaching a judgment in diverse European courts. It also offers surprising evidence on how litigants’ raising patent validity and infringement claims differs from one European court to another, and that outcomes too are starkly different. The main policy implications of the Article are derived from the patterns reported concerning patent litigation across technologies and countries. The findings highlight both the fragmentation and variation within the European patent system, and the fundamentally different dynamics that will continue to shape patent enforcement across technology sectors and industries. The patterns also underline the variation in predictability, and differences in legal certainty, that innovators, patent holders, and their technology competitors experience in the fragmented European system. These cross-country differences highlight institutional variation among the jurisdictions, which in turn drives the costs and incentives to use the courts, helping to provide critical evidence as Europe implements a move to a continent-wide Unitary Patent and Unitary Patent Court in 2015. Moreover, the Article’s teaching is relevant to current U.S. policy debates about reforms intended to address perceived problems in patent litigation, since several of the changes proposed in Congress closely resemble rules already in place in the several European jurisdictions, about which this Article presents important trends and outcomes.

Research Note---The Impact of Intellectual Property Rights Enforcement on Open Source Software Project Success

We investigate how intellectual property rights (IPR) enforcement against developers and users of open source software (OSS) affects the success of related OSS projects. We hypothesize that when an IPR enforcement action is filed, user interest and developer activity will be negatively affected in two types of related OSS projects — those that display technology overlap with the OSS application in dispute and business projects that are specific to the disputed OSS platform. We examine two widely publicized lawsuits — SCO v. IBM and FireStar/DataTern v. Red Hat — using data from SourceForge.net. Our difference-in-difference estimates show that in the months following the filing of SCO v. IBM, OSS projects that exhibit high technology overlap with the disputed OSS experienced a 15% greater decline in user interest and 45% less developer activity than projects in the control group; OSS projects that are intended for business and specific to the disputed OSS platform had a 34% greater decline in user interest and 86% less developer activity than the control group. We find similar results following the filing of FireStar/DataTern v. Red Hat. Our results are also robust to a variety of robustness checks, including a falsification exercise and subsample analyses.

Nanotechnology and the Emergence of a General Purpose Technology

This article examines how closely nanotechnology resembles a general purpose technology (GPT). Using patented nanotechnology inventions during 1975-2006, we test for characteristics of GPTs identified in the prior literature, and find evidence that nanotechnology shows both “pervasive” adoption and “spawning” of follow-on innovation. Offering a methodological contribution, we employ concentration indexes such as the Gini index and Lorenz curve to construct “knowledge dissemination curves” for different technologies, thereby providing evidence that nanotechnology shares relevant characteristics with other GPTs. Using an entirely new dataset, we use three different definitions of a “nanotechnology patent” and calculate patent generality indexes, finding that nanotechnology patents are significantly more likely to be referenced across technology space than are patents in information technology, another widely-adopted GPT. In another contribution, we suggest that innovative materials may demonstrate the characteristics of a GPT, and provide a historical parallel between the advancement of steel technology in the 19th Century with that of nanotechnology in the present day.

Why Do Start-Ups Patent

Numerous scholars have proposed many different explanations for why inventors and innovative companies patent. Few scholars, however, have conducted empirical studies seeking to confirm or deny these theories. Furthermore, there are only a handful of studies examining how entrepreneurs and start-up companies use and are affected by the U.S. patent system, and none answers the question presented in our title. We first briefly survey the dominant theories of why innovators file for patents and why they forgo patenting, focusing on how well, if at all, these theories apply to start-up companies. Next, we examine the existing empirical data on the topic and find it generally inconclusive. Last, we describe the 2008 Berkeley Patent Survey, the first survey in the United States examining patents and entrepreneurship, which is currently underway at the direction of the authors and other investigators. In particular, we discuss the survey questions designed to answer why entrepreneurs and start-ups patent (or choose not to do so) and offer some hypotheses based on previous research.