Prosecution Data: Continuations

In 2006, PTO relations with the patent bar were near nadir because of a proposed set of rules that would radically change the practice of filing continuation applications. Although patent attorneys generally avoid public comment, the continuation proposal led to several hundred public submissions.(n1) 

Many of the comments argued that continuations only play a minimal role in increasing pendency. Using a sample of 10,000 recently issued patents, I wanted to see whether the technology areas with the largest pendency are flooded with continuation applications. A strong correlation would indicate that the PTO was correct in its assessment that continuations are a major cause of the ‘pendency crisis.’

For each technology classification, I calculated two primary statistics: (1) the average pendency of the issued patents (months from filing the application until issuance) and (2) the prevalence of continuations (as measured by the percentage of issued patents that had either one or more non-provisional parent or multiple provisional parents).

As it turns out, there does not appear to be much correlation at all.(n2) The lack of correlation is exemplified when looking at the technology areas on the extremes. For instance, there is no overlap between the top-ten-percent of classes with the highest pendency and the top-ten-percent of classes with the highest prevalence of continuations.

As can be seen in the linked Google Spreadsheet, technology areas of chemistry and drugs have the highest rates of patenting continuations. For those areas, over half of the issued patents are continuations.

 

Notes:

  • Spreadsheet of Results
  • Cite as Dennis Crouch, “Prosecution Data: Continuations,” Patently-O, February 23, 2007.
  • n1: At this point, the rules have neither been implemented nor discarded.
  • n2: I suspect that with a larger sample size, a small but statistically positive correlation would be identified.

13 thoughts on “Prosecution Data: Continuations

  1. I didn’t realize that the PTO would only rehire ex-primary examiners as assistant examiners. That’s insane.

    My idea was to hire licensed PTO practitioners, agents or attorneys, which might require a little more training than bringing back trained examiners, but surely less than a first year engineering school grad.

  2. Alan makes an interesting point about rehiring ex primary examiners. I am currently experiencing a family situation that is making it increasingly difficult to cope with the rigors of firm life. Recently, I considered returning to the PTO for a year or two until our crisis passes. Unfortunately, I found I am not eligible to apply for any quality assurance or training positions. Additionally, I would not be reinstated as a primary examiner. In fact, it appears I would only be given the opportunity to move backwards to a GS 11 examiner position.

    It seems to me the PTO only wants a corps of inexperienced examiners. I believe most prosecutors would agree that this would be undesirable because they would be forever training junior examiners in the law, not to mention pendency problems resulting from those unable to make decisions or efficiently search an invention. It would be nice if the PTO recognized and respected professionalism, both in its ranks of primary examiners and on the outside.

    Lawrence, I could not find a value for an average BD value on the PTO site. It does vary widely across the different arts.

  3. Lawrence-

    In my experience the PTO has never hired an examiner and made that examiner a primary right off the bat. It might be interesting to see if the PTO would consider hiring retired registered agents and attorneys, maybe part time, but if I’m not wrong the PTO feels that examiners still need alot of training (maybe to get the mindset of rejection instead of allowance???).

    It’s been along time since I was in the PTO, but primary examiners in my old art had about 14-16 hours/balanced disposal and junior examiners about 20-22. Since the percentage of examiners has GREATLY moved to assistant examiners since I was there, the 18-19 seems a little high, but is within the realm of possibility.

  4. Examiner H, I agree that there is a potential survivorship bias here because I only look at issued patents and thus ignore pending patent applications that never issue. My suspician is that the bias is the opposite of what you say — that the abandoned applications are less likely to be continuations.

  5. Thanks for the reply.

    Your words –As the number of assistant examiners increases, the primary examiners must take time from their own examination of cases to review the work of the assistant examiners, reducing the productivity of the most productive examiners.

    In theory, hiring a HUGE number of assistant examiners would solve the backlog. In that case, every primary examiner would do nothing but review the work of assistants, surely not a cost effective solution. In addition, quality of the office actions would probably go down since the primary examiners would be swamped with review work.–

    sounded almost like law firm practice, with –assistant examiner– being replaced by associate.

    You seem to imply that the only hiring done could be of assistant examiners. Can’t anyone else be hired?

    Also, what’s the difference in hours per case for an assistant examiner compared to a more senior person? Is an overall average of 18-19 hours per case an accurate estimate?

  6. It appears your results have a hefty (survivorship?) bias. To me the bugaboo is with those cases which have no patentable subject matter – it often takes three-four continuations for applicants to realize there is is nothing patentable. Whereas your data only counts those cases where something is allowable.

  7. Here’s why I think the PTO believes it cannot hire its way out of the backlog problem

    It takes 4+ years before an assistant examiner can even sign a first action on the merits and 5+ years before an examiner can sign final actions and allowances.

    Also, assistant examiners are far less productive than primary examiners.

    As the number of assistant examiners increases, the primary examiners must take time from their own examination of cases to review the work of the assistant examiners, reducing the productivity of the most productive examiners.

    In theory, hiring a HUGE number of assistant examiners would solve the backlog. In that case, every primary examiner would do nothing but review the work of assistants, surely not a cost effective solution. In addition, quality of the office actions would probably go down since the primary examiners would be swamped with review work.

    Also, given that there is about a 50% turnover rate for examiners in years 1-3, most of the time spent on training is wasted.

    Finally, the PTO would have to build another complex as big as the one it just completed that took over 20 years to get approved and built. (They were talking about building when I was an examiner in 1974!).

  8. Of the comments by johnq, I was curious to know the average value of (time spent) per work product over all applications. I have seen numbers presented in the range of 18 or 19 hours.

    Separately, is it not true that junior examiners don’t get to work on continuations until about 18 months of experience? [See
    link to uspto.gov

    Provided there are enough experienced examiners in a given unit, it would not seem that continuations would be the origin of the backlog problem.

    On the issue of “retention rate,” does anyone know why the PTO said they could not hire their way out of the backlog problem? Why would not hiring more and more examiners resolve the problem?

  9. This is a complex statistic to analyze in terms of cause. The number of examiners per tech area is important, but also important is the number of hours allotted per work product (called a balanced disposal, or “BD” in PTO lingo). This value can be as little as 15 or less hours and greater than 35 depending on the area of technology. For example, an area with low BD value and a relatively high number of examiners can process a dynamic mix of new and continuation applications, whereas a low examiner number in the same area can quickly fall behind.

    The BD requirement increases somewhat linearly with years in service, and levels off after an examiner reaches the primary examiner position (usually after five or six years). Experienced examiners, like those that have been around for six or more years in one tech area, usually must process almost twice as many BDs as a new examiner.

    I believe places in the PTO where you will discover higher relative application pendency are areas having the lowest retention rates (and accordingly, a large percentage of inexperienced examiners with high BDs) and an increasingly higher application number per examiner.

    Another way to look at this would be the percentage of primary examiners to non-primary examiners in a tech area. A high percentage would generally show that examiners are somewhat happy in these areas and may indicate greater efficiency in processing applications.

  10. Continuation practice has always imposed some measure of a “burden” by applicants on the PTO. Importantly, though, is it really the “burden” so many profess it to be given what transpired when then terms of patents were changed to basically measure patent terms from filing dates and not issue dates?

    Under the “issue date” standard a long string of continuations could be filed by those intent on delaying the date of issue as long as possible. Under the “filing date” standard I tend to view continuation practice in an entirely different light, its “tactical” significance being markedly reduced.

    Would it not be a more instructive effort to compare pendency times under each standard?

  11. I think counting anything other than RCE’s by the earliest priority date will improperly weigh the evidence in favor of the proposition that continuations slow down prosecution. After all, some (I think many) of the continuations reflect the reality that applicants take claims of narrower scope than they think they are entitled to, to obtain a patent and then pursue the broader claims in the continuation. The “pendency” of the broader claims is really then from the continuation date, since the applicant has “obtained” something (a narrower patent) for the pendency reflected in the time from the earliest filing date to the continuation date.

    It would also be interesting to do the comparison with divisional applications, which are instances where the PTO is creating (rather than reacting to) the problem.

  12. Hmm. This doesn’t take into account RCE’s. I bet there are a bunch of them in the long pendency classes.

    Funny thing is, I bet most continuations and continuations-in-part themselves have relatively short pendency, regardless of art unit because, as noted elsewhere, the Examiner typically has already done all the “heavy lifting.”

    The really meaningful statistics would have to include RCE’s and count from original US priority date as opposed to continuation or c-i-p filing date.

  13. I’m not convinced this is enough to make a judgment. I would think that we need to know:
    1. How many examiners are in the class (easy)
    2. What effect the class has on pendency (hard) – that is, do certain technologies take longer to process

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