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Emergence of Essential Patents in Technical Standards: Implications of the Continuation and Divisional Application Systems and the Written Description Requirement

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  • Omachi, Masayoshi
  • 大町, 真義

Abstract

The present paper looks into the intersection between technical standard development activities and patenting activities from the perspective of patent prosecution. Specifically, attention is paid to the tendency that the obtainment of patents related to technical standards is often done through the utilization of the systems allowing patent applicants to file new applications (collectively called continuing applications under the US patent system) enjoying the benefit of the filing dates of earlier-filed patent applications. After presenting some empirical evidence to show the tendency (in other words, the relevance of the continuing application system to patenting technical standards), this paper focuses upon the written description requirement as an important factor affecting the patentability of such continuing applications. In this paper, I make concrete proposals for the enhancement of the capacity of the written description requirement to suppress the abusive use of the continuing application system to cover technical standards as well as competitors' products and processes, without prejudice to innovative inventors' opportunities to mine their original disclosure in patent specifications for the exclusive rights they deserve. These proposals of mine include the reduction of burden of proof, to the patent challenger's side, of incompliance of a claim in a continuing application with the written description requirement, when certain conditions are met, and some examples of ways to achieve such reduction of burden of proof. This paper also presents comparative review of the continuing application systems under the European and Japanese patent systems as well as the US patent system. Based upon the review, relevant international harmonization considerations are discussed as well.

Suggested Citation

  • Omachi, Masayoshi & 大町, 真義, 2004. "Emergence of Essential Patents in Technical Standards: Implications of the Continuation and Divisional Application Systems and the Written Description Requirement," IIR Working Paper 05-02, Institute of Innovation Research, Hitotsubashi University.
  • Handle: RePEc:hit:iirwps:05-02
    Note: Presented to the Conference on IT Innovation, Tokyo, December 2004.
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    Citations

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    Cited by:

    1. Byeongwoo Kang & Rudi Bekkers, 2013. "Just-in-time inventions and the development of standards: How firms use opportunistic strategies to obtain standard-essential patents (SEPs)," Working Papers 13-01, Eindhoven Center for Innovation Studies, revised Feb 2013.
    2. Kang, Byeongwoo & Bekkers, Rudi, 2015. "Just-in-time patents and the development of standards," Research Policy, Elsevier, vol. 44(10), pages 1948-1961.
    3. Brachtendorf, Lorenz & Gaessler, Fabian & Harhoff, Dietmar, 2020. "Truly Standard-Essential Patents? A Semantics-Based Analysis," Rationality and Competition Discussion Paper Series 265, CRC TRR 190 Rationality and Competition.
    4. Kang, Byeongwoo & Bekkers, Rudi, 2022. "The determinants of parallel invention : Measuring the role of information sharing and personal interaction between inventors," IIR Working Paper 22-06, Institute of Innovation Research, Hitotsubashi University.

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