Evidence Based Prosecution: The Status of Applications Filed 4 ½ Years Ago

This morning I created a dataset of prosecution information for 462 randomly selected utility patent applications filed in December 2004 and January 2005 to get a sense of where those applications stand after 4 ½ years of prosecution. Overall, 48% of the applications have issued as patents; 26% have been abandoned; and 26% are still pending. (Note – I excluded the 12% of cases from my sample that were never published as applications because data is not available for most of them).

Table 1 below shows the detailed status for each case as provided by the USPTO’s PAIR system. All but two of the pending cases have received at least an initial examination. The two still-unexamined cases are both software-related applications.

High-Level Status

Status

Percent of Cases

Patented

Patented Case

47.8%

Abandoned

Abandoned — Failure to Respond to an Office Action

25.2%

Abandoned

Abandoned — Failure to Pay Issue Fee

0.7%

Abandoned

Expressly Abandoned — During Examination

0.2%

Pending

Non Final Action Mailed

8.9%

Pending

Final Rejection Mailed

6.4%

Pending

Response to Non-Final Office Action Entered and Forwarded to Examiner

5.0%

Pending

On Appeal — Awaiting Decision by the Board of Appeals

1.0%

Pending

Notice of Allowance Mailed — Application Received in Office of Publications

1.0%

Pending

Notice of Appeal Filed

0.7%

Pending

Publications — Issue Fee Payment Verified

0.5%

Pending

Examiner’s Answer to Appeal Brief Mailed

0.5%

Pending

Docketed New Case – Ready for Examination

0.5%

Pending

Appeal Awaiting BPAI Docketing

0.5%

Pending

Withdrawn Abandonment awaiting examiner action

0.2%

Pending

Response after Final Action Forwarded to Examiner

0.2%

Pending

Appeal Brief (or Supplemental Brief) Entered and Forwarded to Examiner

0.2%

Pending

Advisory Action Mailed

0.2%

Table 1

   

An often frustrating aspect of application pendency is that abandoned cases can be kept alive by filing a continuation application. Of those cases that have been either patented or abandoned, 25% have one or more descendents in the form continuation or CIP applications. (I have not determined whether those continuations are themselves still pending.)

Of the cases already completed (no longer pending), the median patent took 2.6 years to issue while the median abandonment did not occur until 3.1 years into prosecution. Along this line, the longer a case was pending, the greater the likelihood that the case was abandoned. Thus, 71% of cases that were pending for fewer than three years were allowed while only 29% of cases that were pending for three to four and a half years were allowed.

The chart below shows the percentage of applications pending as a function of the number of years in prosecution. Although the average time in prosecution for this cohort cannot be calculated yet (because so many cases are still pending), the median time in prosecution – as seen in the chart – is 3.3 years.

The patent office examination corps is divided into various technology centers. In my sample, TC 2800 (Semiconductors, Electrical and Optical Systems and Components) had allowed the highest percentage of cases (70%) and had the lowest rate of applications still-pending after 4 ½ years (3%). TC 1600 (Biotechnology and Organic Chemistry) has the highest abandonment rate (36%) while TC 2600 has the highest percentage of cases still pending (48%).

35 thoughts on “Evidence Based Prosecution: The Status of Applications Filed 4 ½ Years Ago

  1. 35

    “Moatz, it’s your Examiners’ baseless double patenting rejections causing these problems.”

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    I threw in some extra ones because I laughed that much.

  2. 34

    Speaking of double patenting rejections, it seems we are seeing alot more of those types of rejections lately, and many of them are purley baseless. Nevertheless, those rejections of necessity force us to file a supplemental IDS between each case. When one family comes together with another, you can easily wind up with an 80 page IDS in each case in each family, even though we overcome the double patenting rejection. I don’t see how that is less work for Examiners. And, in the meantime, Moatz is threatening to punish us with ethics violations charges for filing a 1000 references in a case. Moatz, it’s your Examiners’ baseless double patenting rejections causing these problems. Make them stop.

  3. 33

    “TC 160 (Biotechnology and Organic Chemistry) has the highest abandonment rate (36%)”
    “Hmmmm, this seems consistent with biotech attorneys filing the most crap applications — right MM?”

    Actually, biotech inventions take time and a great deal of money to issue as patents, and cost a LOT to commercialize, and so many applicants tend to pull the plug on them earlier than in other fields.

  4. 32

    “The safest assumption is that, of the 26% still pending, 48% will issue and 26% will abandon.”

    I think a better assumption is that the easy allowances have already been milked and that significantly less than 48% of applications left in the queue are going to issue.

  5. 31

    The safest assumption is that, of the 26% still pending, 48% will issue and 26% will abandon. Having said that, I don’t know any attorney in any art who has had a 48% allowance rate (let alone a 65% allowance rate!) on utility applications over the last few years. Either these numbers aren’t all that random, include design application allowances, or represent the last gasp of allowances before the PTO imploded into a black hole.

  6. 30

    “Transfer them to examiners still in the academy or fresh out of the academy. They get almost all their counts from new cases.”

    But only if these newbies are being very closely supervised and mentored. (Otherwise their Office Actions are usually nonsensical and a waste of everyone’s time.)

  7. 29

    I based it on
    allowances = 47.8 (allowed) + 1.0 (NOA sent) + 0.5 (Issue fee paid) = 49.3%

    abandonments = 25.2 (no response) + 0.7 (failure to pay issue fee) + 0.2 (express abandonments) = 26.1%

    49.3 / (49.3 + 26.1) = 65.4% of the cases that are disposed of at this point have been allowed.

    It doesn’t make sense to say that the allowance rate is 49.3% unless you believe that all of the 24.6% still pending will eventually go abandoned. Otherwise I could just as easily say that the abandonment rate is only 26.1%, which I’m sure you wouldn’t buy.

  8. 28

    “Any thoughts anyone as to how the non-RCE, non-cherry cases can be picked up sooner?”

    Transfer them to examiners still in the academy or fresh out of the academy. They get almost all their counts from new cases.

  9. 27

    ” Depending on your docket that might be the only non-RCE that gets done each month and with an average of 20 cases per docket one case could sit on an examiners docket for 20 month’s without being penalized (although unlikely)” Any thoughts anyone as to how the non-RCE, non-cherry cases can be picked up sooner? Maybe there should be stiffer penalties for not doing (or bigger rewards for doing) these cases? The system as now constituted is not working.

  10. 26

    I would wager [to the extent legal on the internet] that if you did the kind of comparative study you are suggesting that you would find that individual inventors with patents on games, mouse traps, tools, toilet seats, fishing lures, and the like, are actually getting considerably faster first actions on their applications, on average, than almost any large company gets on their applications, on average.
    Furthermore, even if one did find an examiner willing to expidite a patent application in return for a favor of some kind, even just asking is a federal crime that will draw a fast trip to federal prison in the N.D. VA Rocket Docket. What kind of fool is going to destroy their entire career for a lifetime just to get an application of one client issued just a bit faster?

  11. 25

    In reply to curious
    Yes, there is a penalty for not working on your oldest case. Depending on your docket that might be the only non-RCE that gets done each month and with an average of 20 cases per docket one case could sit on an examiners docket for 20 month’s without being penalized (although unlikely). And of course there is transferring cases between art units which is another whole can of worms…

    In reply to the Dude,
    No I am most definitely not 6. Provisional double patenting, PCTs and cases with a PCT search report are related in only the fact that they require less work on average and so are highly sought after.

    Big companies generally have a lot of provisional double patenting cases and these case usually get done all at the same time (it saves work), even if some of the double patenting casse have a much later filing date.

  12. 24

    #9 said:
    “I love applications with PCT’s, a short number of claims and double patenting.”

    MPEP 804 says
    “Double patenting does not relate to international applications which have not yet entered the national stage in the United States.”

    I’m struggling to see your connection between PCT’s and double patenting. Would you explain?

    Also, sure, there are always shortcomings in statistical analyses, but if some large company has a mean patent pending time of 18 months as opposed to a 40 month mean for the same TC as a whole over the same time period, somebody would have some explaining to do.

    BTW, are you, by chance, #6 who “misspelled” his/her name?

  13. 21

    As an examiner of course there is cherry picking, all cases in the same are are worth the same ( If given the same money would you pick drafting a complex multiplexing system or a simple cell phone housing).

    Any statistical advantage proven by the big bucks may also be due to other factors. I for one know, I love applications with PCT’s, a short number of claims and double patenting.

  14. 20

    Well, Paul,
    My only point in the dishonesty discussion with Quinn is that in any given population of employees the size of the PTO, there is inevitably going to be a sub-population of dishonest employees. That holds for doctors, lawyers (NO, NOT TRUE!!! you say), butchers, bakers, and candlestick makers — and PTO employees. It’s a statistical argument based on human nature.

    Quinn’s position is that there is no such thing as a dishonest PTO employee and it is an insult to all of them to even suggest that.

    I think your point that the examiners have some discretion in the order of examining applications is not too reassuring unless Quinn is right.

    There is a lot of money at stake in getting a patent and getting it quick, and where there’s big money there is inevitably a bad smell.

    It would be fairly easy for a statistical wizard like Dennis to determine whether the big bucks like IBM have a statistical advantage in getting a quick examination than the rest of us.

    At one point the PTO ran a program where companies could make “donations” to an examiners’ training fund. It sounded to me like an invitation to graft. I don’t know whether or not the program is still active; the OED refused to provide me with any information when I asked. Can you imagine an analogous program where stock brokers can make “donations” to SEC training programs?

  15. 19

    Dude,

    Regarding US 7,228,226, the case only had 6 claims and cases with few claims are likely to be cherry-picked by Examiners. That being said, this Examiner still hasn’t acted on cases filed in 2005 (US 7,228,226 was filed 11/06 and issued 3/07).

    Yes, that’s cause for concern.

  16. 18

    “There are no dishonest employees at the PTO is what Quinn states, not as a belief but as a fact. Talk about delusional Pollyannas.”

    He posts some interesting things, but a “delusional Pollyanna” is a great description.

    Awhile back, he posted on his blog about his own application — 20070055560.

    I originally looked at it regarding 101 issues, and then determined it was the poster child for what Mooney describes as “crap patent applications.” Here is claim 1:

    1. A document creation and review method comprising:
    providing a questionnaire to a do-it-yourself individual;
    receiving the completed questionnaire with answers;
    using the answers to completed questionnaire to create a first draft;
    a trained professional reviewing the first draft and inserting comments;
    the trained professional returning the first draft containing comments to the do-it-yourself individual.

  17. 17

    The reason you got fairly attacked for accusing the PTO of some kind of favoritism in application backlog processing [other than a few high profile reexaminations], is that besides the great variations in backlogs between assigned examining groups [one’s own choice of what claim to make claim 1 can sometimes affect that assignment], is an incorrect assumption that there is some rigid rule that prevents examiners from ever taking up applications for examination out of their true [original] filing date order just on their own whim, such as being easier to dispose of.

  18. 16

    “At worst, the “reject reject reject” mentality of the PTO has led to a 65% allowance rate, hardly the “sky is falling” scenario claimed by many. *** cough *** Gene Quinn *** cough *** Hawk *** cough ***”

    No doubt. Even a 50% Allowance rate is absurd at the current level of filing. And a 70% Allowance rate is beyond disgusting, especially when one considers what was being filed in the “golden age” of the Internet.

    The obvious reason that Quinn and Hawk are bully for patent bubbles is that their pocketbooks get fatter in such an environment. Of course, that’s true for most of us.

    But for non-trolls it’s not all about personal gratification and money.

  19. 15

    RCE’s are NOT “refiled applications” [except in the spin-doctoring of recent non-practitioner PTO management]. RCE’s are simply immediately continued prosecution of the SAME application. RCE’s were not even invented until years after Kodak managers Cece Quillen & Slim Webster retired, much less had their last personal PTO prosection experiences many years before that. That can excuse their papers confusions on this point, but not the PTO’s.

  20. 14

    What I find most shocking is that only 0.5% of the total filed cases over the last 4.5 years are currently docketed, awaiting examination (DAE).

    Most of my DAE’s have been sitting there for more than a year, and a couple cases have passed the 3-year mark. Of all the cases I’ve filed in the last 4.5 years, I’ll bet 10% are still DAE.

    “A” observes that Jacko’s case was pending for only 16 months. And Gene Quinn at IP Watchdog recently commented on this same issue. Here’s what he said:

    “But what favoritism is the Patent Office showing? In some areas at the Patent Office if you were to file a patent application today you would not anticipate hearing from the Patent Examiner for the first time with respect to a substantive review for about 120 months. For those doing the math, yes, that is 10 years. Notwithstanding, I recently learned of a patent that the Patent Office has issued on a business method at near light speed. The patent in question, US Patent No. 7,228,226, was filed on November 29, 2006 and issued on June 5, 2007, and the assignee was Lehman Brothers, Inc., the now defunct Wall Street giant that filed for bankruptcy in September 2008. It would seem that somehow the patent application was classified in a technology area that is not very active, and issued in just 7 months. ” link to ipwatchdog.com

    When I suggested to Quinn that everyone at the PTO may not be, uh . . . totally honest, be blew a plug. There are no dishonest employees at the PTO is what Quinn states, not as a belief but as a fact. Talk about delusional Pollyannas.

    Nevertheless, the stats are indicating that if you know how to get your case “advanced”, you can. It might be interesting to check Microsoft’s, Cisco’s, or IBM’s average pendency, for instance. I wonder whether Gates or Kappos have had any better luck in getting a quick examination than the rest of us.

  21. 12

    One of the more frustrating aspects of this situation are the 0.5% of cases that are still listed as docketed new cases awaiting examination after 4 1/2 years.

    If the analysis regarding the link between pendency time and abandonment is correct, many of these still unexamined cases are obsolete and the applicant paid the PTO for nothing except to have their trade secrets published and have got nothing back in return.

  22. 11

    bbh

    I’m having a problem seeing where your allowance figure of 65% comes from.

    I see 48.8% patented and 1% allowance notice sent. My calculator thinks that’s 49.8% allowance, which would be down from about 70% a few years ago.

  23. 10

    I don’t know if any of you are familiar with US20020091564, Uri “Spoonbender” Geller’s app for “Method and system for enabling viewer polling and election of prospective parents in broadcast child adoption proceedings”.

    It got rejected early this year (having been pending since 01/11/2001 – see: on topic!), when the BPAI affirmed the examiner’s finding of obviousness.

    Representative claim1:
    A method for selecting adoptive parents, comprising:
    providing a plurality of parent contestants;
    broadcasting to multiple receiving units, each comprising a video display, images of said parent-contestants; and
    awarding at least one child available for adoption to at least one winning parent-contestant.

    At the end of some 15 pages of discussion of obviousness, there is the statement: “Additionally, claim 1 fails to recite statutory subject matter under S. 101”. No reasoning given.

    “multiple receiving units, each comprising a video display” – tied to a particular machine?

  24. 9

    There are those who are frustrated by continuations and RCEs. For example, Quillen & Webster have a new article out that’s full of frustration about exactly this point.

    I’m not sure that all continations and CIPs are properly considered “refiled applications” in the sense that RCEs are. Sorting that out would require an in depth analysis of the relationship between the claims in the continuation and the claims of the parent.

  25. 8

    Dennis, thanks for these interesting statistics, not otherwise available. Your random sample size here is large enough to be quite statistically acurate.

    On one important issue, the prior PTO management chose to deliberately confuse and combine statistics on RCE’s with those of old-fashioned continuations, even though their effects on pendancy, and applicant & PTO efficiency, are very different, often in fact opposite, as repeatedly pointed out in rulemaking public comment periods. RCE’s are filed in the same appplication file and merely buy another immediate amendment and prompt office action in the same application by [normally] the same examiner.
    So should not your studies consistently identify and treat RCE’s as such, rather than following the erronous PTO practice of treating them as if they were the same as old fashioned whole-new-application-prosecution-delaying continuations?

  26. 7

    Here’s a sample letter that readers can send to their Congressional representatives to try to rectify this situation.

    Dear Sir / Madam:
    As you are no doubt aware, the plummeting allowance rate at the US Patent and Trademark Office has led to a crisis where merely most, rather than nearly all, applicants are being issued patents for their inventions. This is unacceptable. I can tell you from firsthand experience that the sideways swing, restroom reservation, and cat exercise industries have been devastated. I urge you and your colleagues to enact legislation modifying USC 103 to replace the term “one of ordinary skill in the art” with “an ordinary arrestee on the TV show ‘COPS’.” God speed, God bless, apple pie, baseball, etc.

    Sincerely,
    Your name here

  27. 6

    That’s an allowance rate of 65%. It’s funny how the word “plummeting” is permanently attached to “allowance rate” on most of the patent blogs, yet the numbers don’t show it at all without some creative cooking. The alleged low allowance rate is usually attributed to aggressive rejections on the part of the PTO, but these numbers don’t show that either. To gauge the portion of abandonments truly due to PTO rejections, the “Abandoned — Failure to Respond to an Office Action” category would need to be broken out because almost all abandonments due to non-response to election/restriction requirements and a large portion of abandonments for failure to respond to the initial office action aren’t a direct result of examiner rejections. That is, they are cases that the applicant had already decided to not pursue and would have gone abandoned regardless of the quality of the work done by the PTO.

    At worst, the “reject reject reject” mentality of the PTO has led to a 65% allowance rate, hardly the “sky is falling” scenario claimed by many. *** cough *** Gene Quinn *** cough *** Hawk *** cough ***

  28. 5

    What does this mean:

    “An often frustrating aspect of application pendency is that abandoned cases can be kept alive by filing a continuation application.”

    Why is that frustrating? It is a requirement to be able to file CONs and RCEs when before an Office filled with uneven prosecution and inexperienced Examiners.

  29. 4

    “An often frustrating aspect of application pendency is that abandoned cases can be kept alive by filing a continuation application”

    I find that a relief, not a frustration.

  30. 2

    How often was prosecution reopened after filing a pre-appeal request for review? (as a percentage of requests)

    How often was prosecution reopened after filing an appeal brief (before begin acted on by the Board)? (as a percentage of briefs filed)

    How often was a case allowed after appeal?(as a percentage of briefs filed)

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