Percentage of Patents that were Initially Rejected

This relates to my statements regarding the percentage of applications that receive at least an initial rejection. The graph below shows the percentage of patents issued (2000-2006) that were initially rejected by the PTO broken up into groups of art-units. Thus AU 1630 group actually includes AU 1630 – 1639. Close to 95% of the patents issued through the AU 1630 group during that period were initially rejected before being eventually allowed.

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As with the design patent discussion yesterday, the rejection rate above is for applications that eventually issue as patents. For any given application, the effective rejection rate was likely higher because abandoned applications are probably more likely to have been rejected.

This data is now getting a bit old – but it is what it is. This data came from public PAIR before researchers were blocked from accessing it in any substantial way. Since 2006, applicants have complained of increased rejections. My perception that this change is not a shift toward more first office action rejections, but rather a shift toward sustaining more of those rejections in the second and subsequent office actions.

40 thoughts on “Percentage of Patents that were Initially Rejected

  1. Noise, the mantra in the EPO for a time was “Mastering the Workload”. That’s now passay. The new big thing is called “Raising the Bar”. It is all-pervasive, and hydra-headed.

    Having said that, don’t you agree, that it takes (or it ought to take) double the hours of examiner time to get to the point of a refusal (rather than an issue) Decision?

    Can’t see the EPO publicising “double points for any Examiner that writes a refusal decision” though. Can you? Imagine what the reaction would be, from the vested interests!

    Don’t be so negative. Filing activity and industrial activity are counter-cyclical, aren’t they? See Patent Prospector.

  2. “In the EPO, the points regime was tweaked recently, to give Exrs double points for writing a refusal decision. There’s another way to give points in proportion to actual graft.”

    MaxDrei, you have my interest in this comment, as I have not seen any dialogue on a doubling of points for refusal decisions. Has the EPO been infected with the USPTO’s mantra of reject-reject-reject?

  3. Question to Lionel, in reply to his “leaving meat on the table” point: Isn’t a first action acceptance Applicant’s best chance of getting the widest claim though to issue? If Applicant asks for a lot too much scope, Exr has no choice but to get to work, writing objections. But, if Applicant gauges it just right, asking for that which is reasonable, Exr has a real dilemma. By shutting his eyes and signing off, he gets a quick disposal point for relatively little work. There will never be a better chance for Applicant to squeeze through on matter of dubious patentability. But, even as I write this stuff, I am imaging that the PTO quality police are in fact screwing up this very efficient way of working, that puts a premium on “quality” drafting. In the EPO, the points regime was tweaked recently, to give Exrs double points for writing a refusal decision. There’s another way to give points in proportion to actual graft.

  4. “I still go back to what you said before – which is in contrast to the Wiseman case – The “prior art product” doesn’t exist except for a paper combination made by the Examiner with the help of applicant’s own invention as a roadmap (I added the last part). I agree inherency should be use with 102 art that shows everything but for a melting temp etc., but not for a combination rejection….”

    I don’t know man, the issue gets clouded by a lot of things. There are so many different types of cases with a different issue in each scenario that it is sickening. The more I think about it the more it makes my head hurt.

    You have simple issues such as:

    A bicycle comprising a frame made of a copper aluminum titanium alloy with a melting point of *melting point of the alloy* and a horn.

    Where we have to combine a reference for a bike horn and a bike having that kind of frame which will necessarily have that melting point. Plainly 103 still applies and the feature of the melting point is inherent.

    But when we turn our attention to the cases where only the combination will have that inherent feature:

    A bicycle comprising a copper titanium alloy with a melting point of *melting point of alloy*.

    We run into a bit of a problem when for instance we have reference one showing a titanium bicycle frame and reference two teaching the addition of some copper to titanium bike frames but where neither of the references mentions the melting point (which will presumably shift depending on the amount of copper added).

    My gut feeling is still that if you can make a reasonable case against the copper titanium alloy (and perhaps moreso a case against the alloy with the percent of copper corresponding to that melting point) then all limitations are met, but that there is perhaps evidence of non obviousness. Maybe seperate from unexpected results. Perhaps there is room for another secondary consideration. “Discovery of a feature only present in a combination of old elements”. But I don’t know man, that’s shaky. In the end I get the feeling the courts will smack it down. From what I can tell, I’m fairly sure that they consider all “obvious combinations” (the ones that exist only on paper) as still belonging to the category “old”. It is an interesting question, and one that I’m surprised isn’t more of a big deal to more people considering how often I run into it.

  5. Consistent with Dennis’s observations, biotech patents that do issue take an unusually large number of office actions before applicants and examiners reach agreement on allowable claims. 4 office actions is typical as compared to 2 office actions for patents as a whole.

    Suppose there was a way to reach agreement in 1 or 2 office actions with the same claim scope. Can anyone put a dollar value on what that would be worth to applicants in terms of time to market, licensing revenue etc?

  6. 6 – Thanks for keeping this discussion alive.

    (“It is not invention to perceive that the product which others had discovered had qualities they failed to detect.”); In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979)”

    I still go back to what you said before – which is in contrast to the Wiseman case – The “prior art product” doesn’t exist except for a paper combination made by the Examiner with the help of applicant’s own invention as a roadmap (I added the last part). I agree inherency should be use with 102 art that shows everything but for a melting temp etc., but not for a combination rejection….

  7. Apology accepted, BFPO. No, I’m not saying what you say I’m saying. That’s your prejudice affecting your powers of comprehension. Patent litigation in Europe is not a joke, as plenty of your countrymen will explain to you, but much of what arrives in the EPO is, I regret to say. Absence of binding precedent doesn’t get you all the way to “arbitrary and capricious”. There is something in between. Industry in Europe has just as much need of legal certainty (predicting the outcome) as you do. We don’t need to start lecturing each other about who has more respect for the Rule of Law, do we?

    Reverting to the point above, about what “handle” might mean, I gather that Mark Twain had something intelligent to say on the issue, namely “To the man with a hammer, most everything is a nail”. And you’re a man that likes to wield a hammer, right?

  8. ” your EPO prosecutor will nevertheless accurately predict the outcome? ”

    I’m sorry, are you saying that “predicting” that after some perfunctory hand waving and a couple of “grant of a patent on the papers on file is not to be expected” an eventual “patent” will issue is accurately predicting the outcome? Further the resulting “patent” truly does collect dust since patent litigation in EU is a sad joke as best I can tell. If EU courts are not guided by precedent as you say and make it up as they go along, we call that arbitrary and capricious and an abuse of discretion. But hey, that’s just how we roll. It is how things are supposed to work in a country of laws and not men. (Adams)

  9. Think about it folks. If EPO Examiners can “make it up as they go along” how come your EPO prosecutor will nevertheless accurately predict the outcome? Do you think that having a sane Statute might have something to do with it? Otherwise, lift your glasses to the EPO’s creation of genius, the structured invariable Problem and Solution Approach to what was objectively obvious, and what was not, which your advocate will be using, when doing that predicting step.

  10. MVS,
    Your comments up front are to the point. Much is missing from Dennis’ Work Group chart. However, I think his breakdown by Work Group is instructive.

    Results for the full corps are shown by office action sequence in my brief summary available at
    link to works.bepress.com

    As seen in my graphs, USPTO data on office action sequence shows that Dennis’ conjecture about increases in rejection rate at the second or later office action is essentially correct for the years he looked at. Unfortunately, no data past FY 2005 were available. I suspect that in recent years, increased rejections are across all action sequences when one looks at absolute numbers.

    Ron Katznelson

  11. “A competent EPO advocate, tuned to the way mainland Europe thinks, can predict, with a high level of confidence, what ought to succeed at the EPO, and what will not, and will then be able to deliver what has been predicted.”

    Max, I pretty much agree with you.

  12. BannedfromPatentlyO,

    “”Making it up at they go along,” …coming soon to a USPTO near you.”

    Way, way too late – see my comments related to examiner 6 and his USPTO trained mindset.

  13. “We don’t do Binding Precedent. So Examiners are relatively free to…”

    –decide for themselves– make it up as they go along

  14. To Znutar, in response to his question what to do when an EPO Examiner asserts that the claimed element “aircraft wing” is met in reference D1 by a “fender” (you mean a car component, I take it, and not an electric guitar).

    Answer:

    First, it won’t happen. Don’t worry about absurdities in the EPO examination process, cos there aren’t any. There exist bizarre opinions in the heads of individual Examiners, but not in two or more of the prescribed team of three, that signs off on any one app.

    Second, as all intelligent humans know (and especially trilingual humans) no word has any meaning until it is given a context. With the context comes meaning. Any acontextual “meaning” is not relevant. Maybe the British version of this principle helps here. The Brits call it “purposive construction”. Determine what is the function of the claimed element. That will enable you to construe it correctly. (Maybe you will want to amend the claim, to refine the function of the “handle” element. In your distorted world, means plus function is a big no no no, isn’t it? No such distortion at the EPO. try it sometime. It’s very liberating. It can set your claim free).

    Third: The “broadest reasonable construction” test in the EPO means what it says ie “reasonable”.

    Fourth: We don’t do Binding Precedent. So Examiners are relatively free to decide for themselves, and citing “precedent” won’t help you one jot. But reason will.

    I’m not an academic, just a coal face worker. Others will be able to explain it better than I can. But don’t worry. A competent EPO advocate, tuned to the way mainland Europe thinks, can predict, with a high level of confidence, what ought to succeed at the EPO, and what will not, and will then be able to deliver what has been predicted. That’s what you want, isn’t it.

  15. From another thread where MM brought to bear a viewpoint on inherency wherein your own application is used by the office to establish inherency.

    “Even if no prior art of record explicitly discusses the “wherein the polypeptide binds CD48” aspect of claim 73, the Kubin-Goodwin application itself instructs that CD48 binding is not an additional requirement imposed by the claims on the NAIL protein, but rather a property necessarily present in NAIL. See, e.g., ’859 Application at 1, 8 (describing CD48 as NAIL’s “counterstructure”).”

    Taken from the In Re Kubin decision. Man, it looks like MM was in sync with how the courts felt about inherency after all. Apparently, inherency by admission in your own specification can nail you to the cross.

    “(“It is not invention to perceive that the product which others had discovered had qualities they failed to detect.”); In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979)”

    “(rejecting the notion that “a structure suggested by the prior art, and, hence, potentially in the possession of the public, is patentable . . . because it also possesses an inherent, but hitherto unknown, function which [patentees] claim to have discovered. This is not the law. A patent on such a structure would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art.”).”

    Still, I do not think that these types of properties are useless to applicants, they are potentially available as unexpected results. If only attorneys would present them as such rather than present them as missing elements of a claim from the prior art and hence claim that the prior art doesn’t teach them so the claim is novel/nonobvious because of the missing elements.

    I chalk this up to yet another flub of accepted practice techniques of today. Where they get their misbegotten beginnings is anyone’s guess.

    In other news, I told you Kubin should have hired a man, and a seasoned gruff one at that, Rader tore that shrill voiced young girl a new one.

    If anyone can point out how this could be a mistaken viewpoint now would be a good time to do so.

  16. Hey stooge, that’s not my post you’re responding to. But I am glad to see that others think you’re as stoogey as I do. Now don’t you have some misspellings to insert into some form paragraphs?

  17. So Max, in th EPO how do you make the argument that a handle, as used in the claim, isn’t what a trucker called himself on a CB radio in the 70’s? That a wing in a claim to an aircraft design isn’t met by a fender?

  18. iggy (AKA johndarling), what in the bloody he11 are you talking about??

    About the only things of opinion in my post are that the reject = quality mentality is wrong and that we should be allowing things when they are patentable (which I have been saying here & elsewhere for years – you just don’t like to give me credit for saying it since it would make us appear to agree on something). What is wrong with that??

    MVS

  19. Most Valuable Stooge, whichever way the wind breaks, eh? Not whether it is the right thing to do. People like you make me puke on my own audience!

    Fire them all!

  20. Great theme opened above (Apr 04, 4 am) by Znutar, who reports difficulty with reliance on the specification and the file wrapper to limit the scope of a feature in a claim.

    I see this (once again) as a sign of globalisation, or the infection of the USPTO with ideas coming out of the EPO, perhaps via the trilateral initiatives. You see, in Europe, a claim has to be stand-alone clear, on its face, without resort to the spec or the wrapper. Try invoking the wrapper in any dispute. Utterly futile (except perhaps in NL).

    Say the term in dispute is “a handle”. As we all know, comparatively few things are intended to be the handle, but very many things have the capability to serve as a handle. Do we see “a handle” in the prior art device. Depends who’s looking.

    So, as USPTO Examiners implement what they’ve learned from their EPO mentors, their relationships with prosecuting attorneys are likely to get increasingly fraught.

    The good thing for me is that these days I don’t get so much abuse coming back at me from the USA, when I explain the content of an EPO action. I sympathise with the stresses being suffered in US prosecution, as the world moves beneath your feet.

  21. I would like to hear from examiners who have been examiners for 20 or more years. Do they prefer the old system or the new system? and why?

  22. ” I perceive the “quality” of the applications I prosecute has gone up over the years, while the overall qualify of office actions has gone down (there are exceptions). Perhaps I am simply an outlier.”

    I perceive the “quality” of your claims that you prosecute having gone down over the years :) You’re probably not an outlier.

    “”your rejection of a claim should never be shorter than the claim itself””

    Lol, way to waste time. I’m 100% through with that sht.

    “BannedfromPatentlyO”

    Just, simply recant your evil ways and come to the light already jebus.

    BTW ~7 out of a 70-80 F FOAMs sent out last year were all that got an allowance from me.

  23. MVS, the pto is finally going to start allowing applications again? Shocking. ;) They need to give people a reason to file, now that filings are down so much.

  24. Drone,

    As I’ve noted before, I’m not here to say that all patent practitioners are of the highest quality – I read prosecution histories, and appelate decisions, and I’m not looking for a tit for tat. I’m trying to support from personal observation that getting applications through the system is getting increasingly difficult, and not because the rejections are on average more thoughtful. I’ve seen some really well done rejections, too, but I can’t recall the last one. I’m documenting a slide in examination quality from my own personal point of view that seems to be a shared perception. As to whether a cabal is trying to run the system into the ground, you’re undoubtedly right that the thread is going to devolve into that discussion, but I personally believe that the system is running itself into the ground. The point system hands out extra cash for incomplete searches, and brief and poorly reasoned actions. I’ll go out on a limb here, but based on the sounds in the background in a number of telephone interviews, I’m dealing now with several examiners that are single women, raising families, glad to be working from home because otherwise they couldn’t afford the daycare, and they produce the worst replies because they depend on those bonuses to make rent. While I sympathize with the plight of these people, I’ve got clients who have spent millions of dollars to bring really clever and useful inventions to the market, and those inventions are at risk of being dedicated to the public unless the BPAI steps in, and although I’ve had a very good track record there, I’m losing confidence in them, too, though I was greatly heartened by ex parte Whalen which I don’t think has been noted on this blog to date. I’d probably be gaming the system, too, if I couldn’t make ends meet and I could make more income simply by doing a lousy job on more applications.

  25. “He said qualify [sic, quality] of *office actions* has gone down, not quality of examination.”

    I stand corrected, sir. He did say “overall quality of ofice actions.”

    “You could have a higher quality searches, and yet still have lower quality office actions justifying why the prior art found in the higher quality searches is invalidating”

    Yes, that’s theoretically true.

    Let’s just start over:

    “Prior to 2005, I would get first office action allowances in 15-20 of every 100 FAOMs. In 2008, I got zero (0!) out of 138 FAOMs.”

    And this indicates decreasing quality of office actions?

    LOL.

  26. As Dennis recognized, the statistics are impacted by the selection criteria. For example, in semiconductor arts, I see applicants less willing to invest in prosecution than in other arts. For many companies, if there is no allowance on the second action, the application is abandoned.

  27. Incidentally Mooney, to seasoned practitioners (which excludes you around the term “practioner”) first action allowances are nothing to celebrate…

  28. “many, if not most, will consider him a fool provocateur”

    And to many, maybe something much,much more pernicious…

  29. “This data came from public PAIR before researchers were blocked from accessing it in any substantial way”

    Kind of like before dissenting posters were blocked from commenting on PatentlyO in any meaningful way.

    Funny, greater than 25% First Action Allowances in the Semiconductor and Electrical Circuit Arts. Guess those electronic claims are not crap after all.

  30. “The good old days weren’t always good”. Let’s try and remember that before we go off on another long thread bashing everything about the current PTO and diving headlong into another conspiracy-theory tinged diatribe about how the last upper magaement was a criminal cabal of henchmen trying to ruin the system for some unseen, faceless industrial masters.

    Bottom line is, in the 15 years I’ve been at the PTO, as an examiner, SPE and QAS, I have seen some office actions that were downright horrendous, and some that were as well thought out and constructed as a supreme court brief. I have also seen amendments and arguments from attorneys that fit both categories. Antecdotal evidence is not statistically significant, but it is fun. Here’s some:

    I have had discussions with patent attorneys arguing with me about an examiner’s rejection using an intervening reference because they couldn’t understand why they had to perfect their priority (no translation ahd been filed).

    I have had to explain to irate attorneys why their declaration under 103(c) proving common ownership wasn’t good enough to overcome the examiner’s 102 rejection (or 103 where the art qualified as 102(a) art).

    I have seen appeal briefs 20 pages long, beautifully written, both technically and legally, argue how the reference figure 5 does not read on the claimed invention, when the examiner used the embodiment of figure 1 to reject.

    I have seen numerous arguments against 103 rejections using the sole argument that the primary reference doesn’t teach all elements of the claims.

    I have seen attorneys file countless applications for perpetual motion machines.

    See, we can all do it, from both sides. Heck, I can be fair and say I have had the exact situation that Znutar brings up about a 102 for 20 claims being 4 lines long come across my desk. A quick “your rejection of a claim should never be shorter than the claim itself” usually does the trick.

    Neither side of the “struggle” is perfect, and there is no systematic attempt to ruin the system. Mostly, examiners are trying to do their job properly, according to the rules. If sometimes clarity is lacking, I cannot refute that. All I can say is that it can be lacking from the other side too.

  31. It used to be that you could explain why the examiner’s interpretation of a term was unreasonably broad in view of the specification. You were of course creating prosecution estoppel that would prevent the patentee from later arguing that the term should encompass what you were disclaiming, but at least the examiner would usually accept the distinction and allow the claim. Now, you make the same argument, create the same estoppel, and get back form paragraphs about the standard for claim interpretation and about not reading limitations from the spec into the claims, and some broken English half-sentence about how the term at issue wasn’t defined in the spec. Great examination.

    And increasingly, examiners are uneducated in their own art fields. I had to explain recently to an examiner examining a biotech application that RNA was a nucleic acid made from nucleotides, not a nucleotide itself. We went onto Google together…

    Let’s not forget the ever-popular each claim is a species, elect one. I never saw those 10 years ago. Is that because applications are more poorly written now than then? I don’t think so.

    Also rarely seen 10 years ago was the one sentence 102 rejection of 26 claims over one drawing. Again, I don’t think it’s the quality of the applications. It’s the fastest way to a point and a bonus.

  32. From the looks of it, MM is the perfect advocate who gets all of his claims allowed, every time. After reading hundreds of MM’s comments, one would think that someone so sure of his abilities would back up his would view by giving us some examples of his work. Not so. Thus, until he does so, many, if not most, will consider him a fool provocateur.

  33. He said qualify [sic, quality] of *office actions* has gone down, not quality of examination. You could have a higher quality searches, and yet still have lower quality office actions justifying why the prior art found in the higher quality searches is invalidating

    You tend to jump all over people when they do the same thing, yet you apparently are not immune to sparring with the strawman, MM.

  34. “Prior to 2005, I would get first office action allowances in 15-20 of every 100 FAOMs. In 2008, I got zero (0!) out of 138 FAOMs.”

    My statistics are about the same.

  35. “Prior to 2005, I would get first office action allowances in 15-20 of every 100 FAOMs. In 2008, I got zero (0!) out of 138 FAOMs.”

    And this indicates decreasing quality of examination?

    LOL.

  36. “My perception that this change is not a shift toward more first office action rejections, but rather a shift toward sustaining more of those rejections in the second and subsequent office actions”

    My perception does not match this. Prior to 2005, I would get first office action allowances in 15-20 of every 100 FAOMs. In 2008, I got zero (0!) out of 138 FAOMs. None for 2009 so far either. I am primarily a telecom and digital storage media guy (although my apps run the non-pharm gamut). I perceive the “quality” of the applications I prosecute has gone up over the years, while the overall qualify of office actions has gone down (there are exceptions). Perhaps I am simply an outlier.

  37. Dennis,

    While the data might be a little bit interesting, it is so incomplete and without context that very few accurate conclusions can be made from what you show.

    For starters, it appears to be rather selective. There are many art units that are not included. Heck, even a FULL TC (2600) is not covered by these stats.

    Secondly, to make any meaningful analysis, there would need to be more stats included. Stats like:
    types of rejections;
    when the cases were allowed (after 1st response, after a final, after an appeal, rce or how many, etc.);
    were the claims amended or not prior to allowance (a partial indicator if the rejections may have been reasonable); etc.

    While I agree that, in recent years, there has been WAY too much emphasis on rejection rather than on trying to get things allowed (something that thankfully sounds like is going to be changing rather quickly based on latest rumors going around), publishing incomplete, partial and out of context information does not help things. To the contrary it seems to just inflame the situation (particularly with certain posters here).

    Appreciate the info & blog, anyhow.

    MVS

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