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The quest for expansive intellectual property rights and the failure to disclose known relevant prior art

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  • H. Kevin Steensma
  • Mukund Chari
  • Ralph Heidl

Abstract

type="main" xml:id="smj2279-abs-0001"> Expansive patent portfolios may be used by firms to fence off technological space for commercialization, impede the commercialization efforts of competitors, and enhance bargaining power in cross-licensing negotiations. Low quality patents with claims that overlap those of other patents contribute to these portfolios and patent strategies. By failing to disclose known relevant prior art during the patenting process, inventors and their firms may be granted low quality patents with intellectual property claims which would not otherwise have been granted. We find that the failure of inventors to disclose known relevant prior art increases as they gain experience with the patenting process. Such failure is also greater among inventors employed by relatively small, poorly performing firms that rely on outsourced legal counsel during the application process. Copyright © 2014 John Wiley & Sons, Ltd.

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  • H. Kevin Steensma & Mukund Chari & Ralph Heidl, 2015. "The quest for expansive intellectual property rights and the failure to disclose known relevant prior art," Strategic Management Journal, Wiley Blackwell, vol. 36(8), pages 1186-1204, August.
    • Handle: RePEc:bla:stratm:v:36:y:2015:i:8:p:1186-1204
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    File URL: http://hdl.handle.net/10.1002/smj.2279
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    1. Mark A. Lemley & Carl Shapiro, 2005. "Probabilistic Patents," Journal of Economic Perspectives, American Economic Association, vol. 19(2), pages 75-98, Spring.
    2. David J. Teece, 2008. "Firm organization, industrial structure, and technological innovation," World Scientific Book Chapters, in: The Transfer And Licensing Of Know-How And Intellectual Property Understanding the Multinational Enterprise in the Modern World, chapter 11, pages 265-296, World Scientific Publishing Co. Pte. Ltd..
    3. Ryan Lampe, 2012. "Strategic Citation," The Review of Economics and Statistics, MIT Press, vol. 94(1), pages 320-333, February.
    4. Julia Porter Liebeskind & Amalya Lumerman Oliver & Lynne Zucker & Marilynn Brewer, 1996. "Social networks, Learning, and Flexibility: Sourcing Scientific Knowledge in New Biotechnology Firms," Organization Science, INFORMS, vol. 7(4), pages 428-443, August.
    5. Mark A. Lemley & Bhaven Sampat, 2012. "Examiner Characteristics and Patent Office Outcomes," The Review of Economics and Statistics, MIT Press, vol. 94(3), pages 817-827, August.
    6. Alcácer, Juan & Gittelman, Michelle & Sampat, Bhaven, 2009. "Applicant and examiner citations in U.S. patents: An overview and analysis," Research Policy, Elsevier, vol. 38(2), pages 415-427, March.
    7. Todd R. Zenger & William S. Hesterly, 1997. "The Disaggregation of Corporations: Selective Intervention, High-Powered Incentives, and Molecular Units," Organization Science, INFORMS, vol. 8(3), pages 209-222, June.
    8. Kahneman, Daniel & Tversky, Amos, 1979. "Prospect Theory: An Analysis of Decision under Risk," Econometrica, Econometric Society, vol. 47(2), pages 263-291, March.
    9. Kyle J. Mayer & Deepak Somaya & Ian O. Williamson, 2012. "Firm-Specific, Industry-Specific, and Occupational Human Capital and the Sourcing of Knowledge Work," Organization Science, INFORMS, vol. 23(5), pages 1311-1329, October.
    10. Bhaven N. Sampat, 2010. "When Do Applicants Search for Prior Art?," Journal of Law and Economics, University of Chicago Press, vol. 53(2), pages 399-416, May.
    11. Atal, Vidya & Bar, Talia, 2010. "Prior art: To search or not to search," International Journal of Industrial Organization, Elsevier, vol. 28(5), pages 507-521, September.
    12. Greg Linden & Deepak Somaya, 2003. "System-on-a-chip integration in the semiconductor industry: industry structure and firm strategies," Industrial and Corporate Change, Oxford University Press, vol. 12(3), pages 545-576, June.
    13. Hall, Bronwyn H & Ziedonis, Rosemarie Ham, 2001. "The Patent Paradox Revisited: An Empirical Study of Patenting in the U.S. Semiconductor Industry, 1979-1995," RAND Journal of Economics, The RAND Corporation, vol. 32(1), pages 101-128, Spring.
    14. Jared Harris & Philip Bromiley, 2007. "Incentives to Cheat: The Influence of Executive Compensation and Firm Performance on Financial Misrepresentation," Organization Science, INFORMS, vol. 18(3), pages 350-367, June.
    15. Deepak Somaya & Ian O. Williamson & Xiaomeng Zhang, 2007. "Combining Patent Law Expertise with R&D for Patenting Performance," Organization Science, INFORMS, vol. 18(6), pages 922-937, December.
    16. Craig R. Fox & Amos Tversky, 1998. "A Belief-Based Account of Decision Under Uncertainty," Management Science, INFORMS, vol. 44(7), pages 879-895, July.
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    Cited by:

    1. Ji Youn (Rose) Kim & H. Kevin Steensma, 2017. "Employee mobility, spin-outs, and knowledge spill-in: How incumbent firms can learn from new ventures," Strategic Management Journal, Wiley Blackwell, vol. 38(8), pages 1626-1645, August.
    2. Jurgen Poesche & Taina Pihlajarinne & Anette Alén-Savikko & Timo Nyberg & Ilkka Kauranen, 2019. "Decentralized Production: The Need for Social Norms-Based Intellectual Property?," International Journal of Innovation and Technology Management (IJITM), World Scientific Publishing Co. Pte. Ltd., vol. 16(02), pages 1-18, April.
    3. Wang, Pengfei & Van De Vrande, Vareska & Jansen, Justin J.P., 2017. "Balancing exploration and exploitation in inventions: Quality of inventions and team composition," Research Policy, Elsevier, vol. 46(10), pages 1836-1850.

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