Patent Policy and Innovation
Show Less

Patent Policy and Innovation

Do Legal Rules Deliver Effective Economic Outcomes?

Hazel V.J. Moir

This empirical study uses a scientifically selected sample of patents to assess patent quality. The careful evaluation of the assumptions in alternative economic theories about the generation and diffusion of new knowledge demonstrates that the height of the inventive step is critical to effective and efficient patent policy.
Buy Book in Print
Show Summary Details
You do not have access to this content

Chapter 5: Finding and avoiding existing knowledge

Do Legal Rules Deliver Effective Economic Outcomes?

Hazel V.J. Moir


A major strand in the literature on business method patenting suggests that the reason so many obvious patents are granted in this field is that much of the knowledge and know-how in business is not documented. This issue is explored in Section 5.2. Where the examiner does identify existing written knowledge and uses this to reject an application on novelty or inventiveness grounds a common response is for the applicant to make minor amendments to the claims and then argue that this overcomes such objections. In Australia the ability to endlessly amend specifications was introduced in the Patents Act 1953. The economic (and administrative) impact of this policy change has never been assessed. Continual amendment is also a feature of the US system. In contrast the EPO procedures provide less open-ended opportunities for amendment. Cases where amendment was critical to gaining grant of a patent are discussed in Section 5.3. Examination procedures at the EPO, the UKIPO, the USPTO and at IP Australia set up a process whereby the examiner must disprove the eligibility of the application rather than the applicant demonstrating novelty and inventiveness. Cases where applicants use this reverse onus of proof presumption to challenge inventiveness objections are discussed in Section 5.4.

You are not authenticated to view the full text of this chapter or article.

Elgaronline requires a subscription or purchase to access the full text of books or journals. Please login through your library system or with your personal username and password on the homepage.

Non-subscribers can freely search the site, view abstracts/ extracts and download selected front matter and introductory chapters for personal use.

Your library may not have purchased all subject areas. If you are authenticated and think you should have access to this title, please contact your librarian.

Further information

or login to access all content.