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Using Experiments to Improve

the Patent System

Colleen V. Chien

Santa Clara University School of Law | Stanford

Computational Policy Lab | @colleen_chien |
colleenchien@gmail.com
Summary

The PTO should leverage its tradition of learning,

iterative improvement and innovation to carry
out controlled experiments to improve the patent
system.
Why

Need for innovation in administration of the law in

general; High failure rate of policy ideas

The PTO has a strong tradition and culture of

ideating, refining, iterating:
Tradition of pilots, inquiry (Edison
Scholars, RFCs)
Good data/data infrastructure
Limited if any PII concerns
Four Experiments the PTO Could
Consider

- Deferring 101
- Measuring Examiner-Cited NPL
- Team/Time on Demand
- Applicant Readiness & Error Correction
Framework for Proposing an Experiment

1. M Select a question that matters to the agency

2. A Work within the limits of agency authority
3. T Identify a treatment and theory of change
4. T Propose a testing strategy (Power, Randomization,
Inference, Methods, Ethics, Resources (“PRIMER”))
5. E Specify the evidence
6. R Reflect, revise, and repeat
Examples of Agency Experiments

HHS EITC
USPTO Post Trademark Registration
Proof-of-Use Pilot Program
CFPB Disclosure testing via field and
lab pilots
DOD Servicemember savings
SEC Short-sale restrictions pilot

and many more

4 Patent Quality Experiments the PTO
Could Try

A APA requires agency action to be procedurally

proper, consistent with the law, and
representative of a permissible policy
judgment.

Quality pilots/testing are precedented, to gain

information. Formal rulemaking not necessarily
required. (T) Randomize among customers who
opt-in or select participant examiners as with
limited rollouts.
Problem #1 - 101 has had a growing and significant impact on a
subset of cases at the PTO
Problem #1 - for these groups, 101 issues are lasting through
abandonment
Problem #1 - and overall, 101 contributes to a growing share of
disagreements (PTAB appeal decisions)

*Based on sampling cases decided in September of each year

Proposal #1 - 101 Deferral
101 issues are increasingly costly. The PTO
could (T) permit examiners (R)applicants to
defer subject matter issues until all others
have been exhausted,(T)assuming that 101 issues
would rarely be decisive or addressing other
rejections will resolve 101 SM. (T)Using an
intent-to-treat approach and based(E)on a
reduction in 101 rejections (particularly pre-
abandonment)and appeals, deferring 101 issues
could save political capital, resources and
time(M).
Proposal #2 - 102/103 Ex-Cited NPL
Examiners often do not consider relevant
non-patent literature(NPL).

Chien,
Comparative
Patent
Quality
Ariz L. Journ.
(2018)
Proposal #2 - 102/103 Ex-Cited NPL
Examiners often do not consider relevant
non-patent literature(NPL).

Chien,
Comparative
Patent
Quality
Ariz L. Journ.
(2018)
Proposal #2 - 102/103 Ex-Cited NPL
Examiners often do not consider relevant
non-patent literature(NPL)(Chien,
Comparative Patent Quality 2018). The PTO
could(E)make examiner-cited NPL, as a
proxy for robustness, a metric to measure
and manage to as it carries out
randomized (T,R)pilots to enhance search
and quality(M)and test the assumption
that enhanced access leads to enhanced
robustness (T).
Problem #3 - Mistakes
~30% of office actions contain
112b/ojections, smaller entities make
more mistakes.
Proposal #3 - 112/other error correction
30% of office actions include objections,
and the rate is higher among small and
micro entities who also attrite
more.(M)To increase application readiness
and decrease examiner time spent
correcting errors, the PTO could make
(T)error correction tech available to
applicants using an intent-to-treat
design(T)and measure (E)objection and 112
(b) rejections.
Problem #4 - Time pressure
Seniority is correlated with less time,
less team, less IPR survival (Love et
al), and higher allowances (Wasserman &
Frakes).
Proposal #4 - team/time examination on
demand
Seniority is correlated with less time,
less team, less IPR survival, and higher
allowances. Give (T) senior examiners
time credits that they can allocate on
demand as they wish, (T) assuming they
know best which cases are hard or need
more time, in order to (M)increase
consistency and quality as (E) measured
through objective measures
* Bonus Tests!
- Default to open upon application
- Forms for pro se applicants
- Maintenance fees yearly
- Gender-blind examination
- Tech inclusion
- For more, look for Redesigning Patent
Law, by Chien, Posner, and Cotter

Want to work with me on a patent experiment?

If so, hit me up: colleenchien@gmail.com
Four Experiments the PTO Could
Consider

Deferring 101
Measuring Examiner-Cited NPL
Team/Time on Demand
Applicant Readiness & Error Correction

Which one gets your vote? What other

experiments are worth trying?
Thank You To Our Sponsors!
 CIPSC: SEP/Patent Pools
Charles Koole, Senior Patent Counsel, VIZIO
Isaac Peterson, IP & Litigation Director, Netflix
Leah Poynter Waterland, Director, Legal, IP Litigation, Cisco
Roger Kennedy, Associate General Counsel of Patents, Disney

ROPES & GRAY LLP

SEP Suits: A Global Forum

26 ROPES & GRAY

Key U.S. Cases
• Microsoft Corp. v. Motorola, 2013 WL 2111217
(W.D. Wash. 2013) (Robart, J.)
• In re: Innovatio IP Ventures, LLC Patent
Litigation, 2013 WL 5593609 (N.D. Ill. 2013)
(Holderman, J.)
• Ericsson, Inc. v. D-Link Systems, Inc., 2013 WL
4046225 (E.D. Tex. 2013) (Davis, J.)
• TCL Technology Telecommunications Holdings
LTD v. Telefonaktenbologet LM Ericsson, Case
No. 8:14-cv-00341 (C.D. Cal. 2016) (Selna, J.)
27 ROPES & GRAY
Recent FTC v. Qualcomm Decision

Federal Trade Commission v. Qualcomm Inc., Case No. 17-CV-00220-LHK

(N.D. Cal. Nov. 06, 2018) (Koh, J.) (granting FTC’s motion for partial
summary judgment):

• “The FTC’s instant motion for partial summary judgment does not seek
to prove that Qualcomm violated § 5 ...”

• “[T]he Court agrees with the FTC that as a matter of law, the TIA and
ATIS IPR policies both require Qualcomm to license its SEPs to
modem chip suppliers. Because after considering the language of the
contract and any admissible extrinsic evidence, the meaning of the
contract is unambiguous, the Court GRANTS the FTC’s motion for
partial summary judgment.”

28 ROPES & GRAY

Key European Cases

• Huawei Technologies Co. Ltd. v. ZTE Deutschland

GmbH, (2015) Case C-170/13 (ECJ)
• Unwired Planet v. Huawei, [2017] EWHC 711 (Pat) (UK)
(Birss, J.), affirmed in Unwired Planet v. Huawei, [2018]
EWCA Civ 2344 (UK)

29 ROPES & GRAY

 U.S. v. UK Royalty Calculations

TCL v. Ericsson (C.D. Cal. 2016) Unwired Planet v. Huawei (UK 2017)
Top-down approach; adjustments to Comparator licenses – main basis for
reflect comparator licenses FRAND rate calculation; top-down rate
as cross check
Expired patents included in the total Doesn’t directly deal with the question
number of SEPs in a standard, but of value regarding expired patents
does not in Ericsson’s share
Final judgment in form of injunction FRAND injunction (enforced only if a
imposing license license isn’t entered into)

30 ROPES & GRAY

Source: USA v. UK – a united approach to FRAND?, Lexology, https://www.lexology.com/library/detail.aspx?g=03350291-ad18-4e57-a45a-9b6cbbf08a91
Key Chinese Cases

• Huawei v. InterDigital (2013)

• Iwncomm v. Sony (2017)
• Huawei v. Samsung (2018)

31 ROPES & GRAY

Anti-Suit Injunctions

• Microsoft Corp. v. Motorola, Inc., 871 F.Supp.2d 1089

(W.D. Wash. 2012) (Robart, J.), affirmed in Microsoft
Corp. v. Motorola, Inc., 696 F.3d 872, (9th Cir. 2012)
• Huawei Technologies, Co, Ltd v. Samsung Electronics
Co, Ltd, 2018 WL 2187773 (N.D. Cal. 2018) (Orrick, J.)

32 ROPES & GRAY

 Patent Pools (E.g., HEVC)

33 ROPES & GRAY

Source: Unified Patents
Alliance For Open Media

34 ROPES & GRAY

Source: https://aomedia.org/membership/members/
Thank You To Our Sponsors!
Lessons Learned From
Leading IP Strategy at
Lessons for IP Strategy
• Be clear about goals…and non-goals
• Embrace other perspectives
• Know where you stand
• Invest in bold ideas
• No surprises
• Don’t let risk paralyze you
Lessons for IP Strategy
• Be
B clear about goals…and non-goals
E
• Embrace other perspectives
K
• Know where you stand
• Invest
I in bold ideas
•NNo surprises
•DDon’t let risk paralyze you
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