How Long Do I Wait for a First Office Action

Based on the USPTO’s most recent numbers on examination, I created an updated table of the average delay until a first office action is mailed from the PTO. These numbers reflect an average for each technology center as it operates today. The 3.25 year delay in Electronic Commerce (TC 3620) means that the applications receiving first office actions during the past three months had been pending for 3.25 years ago on average — taking us back to applications filed around new-years 2007. One-year-ago, the delay for TC 3620 was 3.9 years from filing to FAOM. The numbers do not necessarily reflect how long it would take for an application filed today to make it through. (Although it is perhaps one of the better estimates that we have on hand.).

Tech Center

Area of Technology

Average Years Delay Before First Action on the Merits

2900

Designs

1.13

1660

Plants

1.40

1640

Immunology receptor ligands

1.95

3670

Wells earth boring

1.96

3610

Surface transportation

2.12

1620

Organic chemistry

2.17

3640

Aeronautics

2.19

1650

Fermentation microbiology

2.21

1630

Molecular biology

2.25

3630

Static structures

2.25

3720

Manufacturing devices

2.25

3760

Body treatment

2.41

3650

Material handling and

2.43

2180

Computer architecture

2.49

3660

Computerized vehicle

2.49

2160

Database and file management

2.55

2110

Computer architecture

2.56

3710

Amusement and

2.60

3740

Thermal and combustion

2.65

3750

Fluid handling and

2.68

1610

Pharmaceutical formulations

2.72

2120

Miscellaneous computer

2.76

3730

Bio and Organic

2.79

3780

Bio and Organic

2.79

3770

Respirators Therapeutic

2.83

2610

Digital Communications General

3.06

2620

Television and TV Recording

3.12

3620

Electronic Commerce

3.25

2190

Interprocess communications

3.98

64 thoughts on “How Long Do I Wait for a First Office Action

  1. damm near r tarded of me

    How does 6 put this? The judges were feeling generous that day?

  2. “and you still dont esplains why you don’t put the what’s wrong with the claims in writing likes you supposed to do. Mighty suspicious if it has to be off-record and voice only.”

    I didn’t say that I didn’t personally do such. My OA’s are quite lively.

    “Still don’t explain how if the rejection was overcome that a similar item can be trotted out for the same reason of rejection, brightboy.”

    /facepalm. Patent prosecution 101 can you help the man out here? I’m a fairly good teacher but I only have so much patience.

  3. “A 102 has every element – this should be like the Highlander – there can be only one. The numbers 2-11 should be 102′d against the first.”

    Apparently Ping thinks that examiners reject an applicant’s claims in view of the claims of other applications. Apparently Ping has never prosecuted or examined a patent application.

    Irrefutably spanked by 6! That’s something you don’t see every day.

  4. and you still dont esplains why you don’t put the what’s wrong with the claims in writing likes you supposed to do. Mighty suspicious if it has to be off-record and voice only.

  5. all NPL

    damm near r tarded of me not to specify that I thought all twelve were patents.

    Still don’t explain how if the rejection was overcome that a similar item can be trotted out for the same reason of rejection, brightboy.

  6. “why the Fn H an’t the examiner put what you would get froma a phone call into writing?”

    Because it involves saying fin h a lot of times?

    Go d ping, I’d thought I’d responded to your other post up above but apparently it didn’t take. I probably typed “you’re re tarded” without the space.

    “A 102 has every element – this should be like the Highlander – there can be only one. The numbers 2-11 should be 102′d against the first.”

    Just figured I’d cite that ridiculous nonsense for everyone’s lols.

    Maybe, just maybe, if I boil this down for you a bit more simply you’ll understand why 2-11 being a 102 against the first doesn’t matter. Maybe something will click in your retar ded brain that will allow you to comprehend what is going on.

    Consider the case where references 1-12 are all NPL 102bs. Then, consider the concept of why them all disclosing, for instance, a standard child’s bike, doesn’t matter one whit when considering whether or not they all 102 any claim that was filed after all of them were published directed to nothing but a standard child’s bike. Then apply that same concept to the patent literature. They each anticipate, individually, and them all doing it doesn’t change that. The fact that ref one might also have a bell and ref two might also have a whistle and so on doesn’t change that.

    This is not “highlander”. There are several thousand references that will anticipate you if you claim nothing but a standard child’s bike. Likewise with any other blatant overclaim you wish to file. Indeed, I have had some cases like this. Admittedly, they did all amend rather quickly iirc. But then again, I wasn’t dealing with ping “there can be only one 102″ attorney at lawl in those cases.

  7. Or just phone up the examiner himself, and maybe he’ll tell you what’s wrong with your claims that no amount of arguing over specific references will fix.

    Except the business of the office is supposed to be in writing. why the Fn H an’t the examiner put what you would get froma a phone call into writing?

    Oh yeah, “cause I got a gut feeling this aint worthy” won’t hold up at the board.

    Splains everything.

  8. Dennis posted: “Note: These figures are updated by the PTO regularly and printed in the OG. link to uspto.gov.

    FYI: Scroll almost to the very bottom of this long, long page to find the referenced figures.

  9. I think after one grounds of rejection has been successfully travsersed and a second grounds of rejection has been successfully travsersed there ought to be some really good reason to keep pouring PTO resources down the same hole.

    There is. It’s called the “third rejection”.

    If you want to go up the food chain, phone the examiner’s supervisor or brief the Board.

    Or just phone up the examiner himself, and maybe he’ll tell you what’s wrong with your claims that no amount of arguing over specific references will fix.

  10. I’m not advocating a strict one-shot examination system, but I think after one grounds of rejection has been successfully travsersed and a second grounds of rejection has been successfully travsersed there ought to be some really good reason to keep pouring PTO resources down the same hole. Someone up the food chain should have to sign off, and explain why.

  11. Those posts shouldn’t necessarily be taken together.

    Yeah, there be problems with du_mm statements – they kinda interfere with each other and with reality.

    “How do you get 12 different 102’s on the same invention?”
    Overclaiming.

    Sunshine, ya miss the point – A 102 has every element – this should be like the Highlander – there can be only one. The numbers 2-11 should be 102′d against the first.

    It’s called being more or less familiar with what is known in an art

    Except that aint teh applicant’s job – it’s the examiner’s job to esplain this to the applicant. 50% may be a sky high aim for you, but it don’t cut it for the required audiance.

  12. Given that the Courts are even allowing us to provide an algorithm or detailed process flow diagram or mathematical equation for the structure in a means plus function claim, and all structural equivalents thereof are thus taught by the applicant, it would seem to me the Office would have to find after invented technology to support a 112 first rejection in such cases.

    Enjoy the revelry while it lasts darlin.

    “What I don’t think is correct, and what I think we are going to see a lot of, is 112 first rejections that simply allege that the originally filed claim tries to capture every way of achieving the functionality,”

    That would be more than appropriate. I would just eat that sht right up.

    “I don’t think a baseless allegation ought to be considered sufficient to establish a prima facie case, especially since it requires the applicant to respond by proving a negative, in that the solutions taught by the applicant are the only solutions for achieving the result or function.”

    How about when “technical reasoning” is provided?

  13. “Now hang on 6, if as you say there isn’t merit in the application then why can’t the examiner put together a rejection? In other words, if there isn’t merit to the application then I shouldn’t be able to make the examiner issue a second or third non final.”

    So far as I know I was just talking about my friend and so far as I know he doesn’t do a lot of 2nd action nonf’s. I can’t speak to your specific experience.

    ‘The obvious implication by 6’s posts is that since reject, reject, reject is mythical, quality is mythical too”

    Those posts shouldn’t necessarily be taken together. However, for the most part, yeah that’s pretty much right.

    “How do you get 12 different 102’s on the same invention?”

    Overclaiming. Try claiming:

    A product comprising:
    a pedal
    a wheel and
    a handlebar column.

    How many 102′s should you get?

    “Why? You overcame the rejection, so why expect more of the same?”

    Because particularities of similar references aren’t usually the same?

    ” Since you cannot read minds, how are you supposed to overcome other non-cited hip-pocket art items that the examiner doesn’t share?”

    Actually in some cases I’m sure he can “read minds”. It’s called being more or less familiar with what is known in an art and knowing that there are literally over 10000 bicycle references. If you overcame for instance, a 103 rejection utilizing one 2ndary ref that, for instance, had a horn on it, and you overcame the rejection because it had a horn on it, lots of times it doesn’t take a telepathic rocket genius to know that there will be a substitute reference showing a bicycle with no horn that will be combinable with the primary. Just because you scrapped by on some technicality the examiner may have missed while making a rejection far from clears your app. I know, I know, it’s a hard thing for some stupd people to grasp, but, gasp, it’s true!!!!!!!!!!!!!!!!!!!!11!!!!!!

    “IANAE, just think of 6, who has that awesome 50% understandability rate. ”

    I already told you that I have a very high understanability rate amongst those in my art. Just because you and your Mcdonalds associates can’t understand me doesn’t reflect on me, it reflects on you.

    “How is this the fault of anyone but the examiner?”

    Even assuming it were true it would be mostly the “fault” of the art being above your head.

  14. 6,

    To my knowledge there is no actual evidence of this that I’ve seen. Even anectdotal. Quality=reject was a figment of your imagination.

    There was also a post on what qualities quality and reject, reject, reject share. Turns out that the two are remarkably similar but not quite equal. Mathematical proofs are proffered to show that they are in fact slightly different in some special cases.

    The obvious implication by 6’s posts is that since reject, reject, reject is mythical, quality is mythical too.

    Makes sense from what I’ve seen.

    in some kind of financial stuff

    TMI (too much info) – and you forgot to say “hypothetically,…”

    IANAE,

    I realize that you got the back of examiner’s, but I have a few questions:

    (If he made twelve different 102 rejections in one action, you’d be complaining about that too.)
    How do you get 12 different 102’s on the same invention? Doesn’t this mean that there are 11 other “patents” out there that should be tossed?

    If you traverse based on some particularity of the reference he cited, you should fully expect that he’ll go find another similar reference and make essentially the same rejection
    Why? You overcame the rejection, so why expect more of the same?

    In those cases, you won’t get your claim past the examiner until you fix the actual problem with the claim
    Isn’t that what the examiner is supposed to be doing – pointing out with enough particularity the reason for non-patentability? Since you cannot read minds, how are you supposed to overcome other non-cited hip-pocket art items that the examiner doesn’t share? Further, you state “Exchange of information is far more productive than exchange of written correspondence.”, but the business of the Office must be conducted in writing. I can’t see how it is too much to ask that your “exchange of information” be the same as “written correspondence”, which it is supposed to be. Yet you fault the applicant and not the examiner – a bit puzzling.

    or find someone else (the Board, for example) who can be convinced that it’s not really a problem.
    Yeah, people know – see the whole Appeal explosion thingy and the Boundy/Katz guy tie in on the Office plot to rig the system there too.

    examiner should never allow your case if he has an apparently valid reason to reject it.
    The problem with this statement is in the word “apparently”. If the examiner can’t make that word actually happen – it’s not real. IANAE, just think of 6, who has that awesome 50% understandability rate. That means that fully half of his (great) office actions are not comprehensible to his target audience. How is this the fault of anyone but the examiner?

    Why does an examiner get an infinite amount of attempts to do what he should be doing on the first round.
    Measuring quality on a first time through correctness standard. I’ve seen this concept before…

    There’s absolutely no reason why a patent should issue as of right… “in some way the examiner might not have been able to foresee.
    Why should the examiner not foreseeing an answer matter at all? This sounds an awful lot like the applicant having to prove that he deserves a patent even after the examiner has completed a search and examination based on soem unstated gut feel, instead of “A person shall be entitled to a patent unless

    “he’ll get it eventually.”
    AMEN bro – we got the quo already, stall as long as possible on giving out the quid.

  15. Imagine if AI was an examiner, and there were 6000 of him.

    Patent pendency would be drop to about 2 months, on average.

  16. Personally, I think it is probably almost always incorrect for the Office to use 112 first against originally filed claims that are allegedly “overreaching.”

    112 first comes up at trial to invalidate originally filed claims because the allegedly infringing product used after invented technology to accomplish the claimed function or result in a way not taught by the applicant.

    I think you have to have evidence of the after invented technology to reject the claim under 112 first, and not just a baseless allegation that the applicant appears to be claiming all ways of obtaining it, when they have only disclosed one way or a thousand ways or ten-thousand ways.

    If the Examiner has art that shows a way of accomplishing the function or result that is not taught by the applicant, then there should be a 102 or 103, not a 112 first.

    Given that the Courts are even allowing us to provide an algorithm or detailed process flow diagram or mathematical equation for the structure in a means plus function claim, and all structural equivalents thereof are thus taught by the applicant, it would seem to me the Office would have to find after invented technology to support a 112 first rejection in such cases.

    So, if the Examiner produces a reference that teaches a solution not taught by the applicants, but that has a later filing date than the application, then a 112 first rejection might be appropriate.

    What I don’t think is correct, and what I think we are going to see a lot of, is 112 first rejections that simply allege that the originally filed claim tries to capture every way of achieving the functionality, without producing any reference that demonstrates that the applicant has not taught every solution in the application.

    I don’t think a baseless allegation ought to be considered sufficient to establish a prima facie case, especially since it requires the applicant to respond by proving a negative, in that the solutions taught by the applicant are the only solutions for achieving the result or function.

  17. In other words, if there isn’t merit to the application then I shouldn’t be able to make the examiner issue a second or third non final.

    Final/non-final practice has less to do with the merits of the “application” than with the merits of the claims and the rejection.

    A bad rejection of bad claims, expertly argued or sworn behind by applicant, will result in a second (hopefully better) non-final rejection of claims that are no better for it.

    When claims are truly awful, I prefer the examiner to say so in his rejection. Not in so many words, but at least let me know that claim 1 as filed is clearly doomed and the art was only cited as a courtesy. Exchange of information is far more productive than exchange of written correspondence.

  18. >>Also, he states that 75%+ of his rejections >>are over the Quicken expanded manual iirc.

    Now hang on 6, if as you say there isn’t merit in the application then why can’t the examiner put together a rejection? In other words, if there isn’t merit to the application then I shouldn’t be able to make the examiner issue a second or third non final.

  19. ping, I have to second you. On the basis of his posting at 11.08 above, IANAE is THE man to go to.

  20. “I’m pretty sure it’s one of the four digit ones. ”

    It is a 4 digit one.

    “I am seeing a lot of this as well in financial applications. Since the examiner isn’t getting any reward for issuing a new non final, I assume there is a strong guidance not to allow anything.”

    I don’t know what kind of “financial applications” you’re talking about but I have a friend that works in some kind of financial stuff and he hardly gets to allow anything. Not because of pressure but because of lack o merit. Also, he states that 75%+ of his rejections are over the Quicken expanded manual iirc.

  21. The state only gets one shot.

    Yes, but that’s a quirk of constitutional law that only exists because a person’s freedom is at stake and that’s generally held to be a pretty sacred thing. It may surprise you to learn that in some civilized jurisdictions an appeal lies from a criminal acquittal, and the accused can be retried after a mistrial or remand on appeal (but not after a final acquittal).

    There’s absolutely no reason why a patent should issue as of right just because the examiner muffed the first rejection, or the applicant overcame it in some way the examiner might not have been able to foresee. The public has an interest in preventing invalid patents from issuing, and there’s no countervailing public interest analogous to not imprisoning people who don’t clearly deserve it. If the applicant deserves his patent, he’ll get it eventually.

    I reiterate that good drafting and good argument are also important in speeding up the process, and their absence is the cause of a lot of these “bad” rejections.

  22. “The bottom line is that the examiner should never allow your case if he has an apparently valid reason to reject it. Yes, they’re often not awesome at articulating what the underlying problem with your claim is, but it’s still your job to fix it or argue it directly.”

    Well a person who robs a bank should never go free, but if the state fails to make its case, the bank robber goes free. The state only gets one shot. Not five shots, not four, not three, not two, but one. And if the state fails to prove its case the first time, the robber goes free. forever.

    Why does an examiner get an infinite amount of attempts to do what he should be doing on the first round. The best way to prevent lousy rejections is to hold examiners accountable for making lousy rejections. One lousy rejection should be the max.

  23. “Reject-reject-reject is still going strong in art units 26xx, those with some of the longest backlogs in your table.

    Does this scenario square with other practitioners’ experiences?”

    An examiner in a 21** group informed me recently that his and his group’s practice is to not allow anything until at least a second RCE. He indicated that he did not want to be embarassed by allowing something by mistake.

  24. If you can’t make a rejection stick well enough to go final on the second attempt, shouldn’t that be enough?

    Only if the rejection is based on three or more references.

    To me, a first OA followed by arguments that are not deemed pursuasive followed by an after-final amendment followed by an Advisory Action followed by a Notice of Appeal and Appeal Brief followed by a Notice of Allowance is three substantive responses to get to allowance, but essentially only one rejection was traversed, or one “round of prosecution.”

    To your client, you filed three substantive responses but essentially only one of them was persuasive to its intended audience.

    The point is, the supposedly “best art” was found and cited, the rejection was successfully traversed, so why are we back to, “well, I did another search and here’s another reference.”

    Sometimes it’s clear to the examiner that his interpretation of your claims is invalid. Maybe he has a dozen references that support the rejection, but he won’t bother citing them all when one or two will get the file off his docket. (If he made twelve different 102 rejections in one action, you’d be complaining about that too.)

    If you traverse based on some particularity of the reference he cited, you should fully expect that he’ll go find another similar reference and make essentially the same rejection. In those cases, you won’t get your claim past the examiner until you fix the actual problem with the claim, or find someone else (the Board, for example) who can be convinced that it’s not really a problem.

    The bottom line is that the examiner should never allow your case if he has an apparently valid reason to reject it. Yes, they’re often not awesome at articulating what the underlying problem with your claim is, but it’s still your job to fix it or argue it directly.

  25. Note: These figures are updated by the PTO regularly and printed in the OG. link to uspto.gov.

    The delay actually understates the wait for “original” applications because continuation and divisional applications are taken-up more quickly on average.

  26. “6, if you don’t mind telling us, which of the art units do you work in?”

    I’m pretty sure it’s one of the four digit ones.

  27. Since the examiner isn’t getting any reward for issuing a new non final

    The bell rings.

  28. >>well, yes, you’re right, the rejection was >>meritless, I’m withdrawing the rejection. OK, >>here’s another.

    I am seeing a lot of this as well in financial applications. Since the examiner isn’t getting any reward for issuing a new non final, I assume there is a strong guidance not to allow anything.

  29. 6, if you don’t mind telling us, which of the art units do you work in?

  30. It tells me that I should be advising clients to expect no fewer than three responses on average, and not just because this has been my experience.

    Good point.

  31. Wow!

    I always thought that the mechanical arts still had first actions on the merits in less than 18 months, but according to these numbers the shortest average delay is for wells earth boring and that is nearly 2 years. Is it possible a few really long pending applications are skewing the data? Dennis, when you say “average” do you mean the mean? Can you let us know what the median pendencies are as well?

  32. Mark,

    I see where you’re coming from, but I don’t think we’re quite talking the same thing, and perhaps my original post was ambiguous in that respect. To me, a first OA followed by arguments that are not deemed pursuasive followed by an after-final amendment followed by an Advisory Action followed by a Notice of Appeal and Appeal Brief followed by a Notice of Allowance is three substantive responses to get to allowance, but essentially only one rejection was traversed, or one “round of prosecution.”

    A first OA followed by a response that successfully overcomes the OA followed by a second non-final followed by a response that overcomes the second OA resulting in allowance is only two responses, yet two “rounds of prosecution.” Or call it two rounds of examination, if you’d like. The point is, the supposedly “best art” was found and cited, the rejection was successfully traversed, so why are we back to, “well, I did another search and here’s another reference.” I call it super-examination – overcoming rejections leads to more searches and more rejections. And each new ground of rejection tends to be shoddier than the last, and eventually the cases get allowed, but I’ve had to show patentability over three separate references to get there.

    Mark, I find your tally interesting, nevertheless. It tells me that I should be advising clients to expect no fewer than three responses on average, and not just because this has been my experience.

  33. “The utter ridiculousness of the average comments. Imagine if AI was an examiner, and there were 6000 of him.”

    Sadly that is pretty much true.

  34. “Why does the Director have an “Only Examiners Allowed Version” blog? What information is there that should not be shared with the public?”

    The utter ridiculousness of the average comments. Imagine if AI was an examiner, and there were 6000 of him.

  35. I think what I’m looking for in a Dennis-style data crunch is not what percent of responses lead to allowance, but how many mountains did one have to scale to get to the last one.

    Percentage of allowances after a response gives you that. If the percentage of allowances after a response is 33%, then the average number of mountains to climb (i.e. rejections that will have to be responded to) is 3.

  36. Mark -

    I’d start with the table at the top of this post. I don’t work much in 2190 or 3620 but I see a lot of 26xx and 21xx. No surprise that Finance [read:business methods] is lowest.

    I think what I’m looking for in a Dennis-style data crunch is not what percent of responses lead to allowance, but how many mountains did one have to scale to get to the last one. I’m going through one application after another where the dialog is “well, yes, you’re right, the rejection was meritless, I’m withdrawing the rejection. OK, here’s another.” How many bites does the examiner get at the apple? If you can’t make a rejection stick well enough to go final on the second attempt, shouldn’t that be enough? Where’s the compact prosecution? These are cases that are getting allowed, eventually, but at great expense to my clients and to the examiners that aren’t getting points for the nth non-final, and the wasted cycles add to the backlog.

  37. I think an internal blog is a great way for the Examiners to keep each other in the loop with respect to new claiming “paradigms” and other trends. The more internal communication there is, the better. And the more focused it is on actual issues and facts, the better. The key is to get everyone on the same page, and comfortably so. Obviously these discussions can not be made public (although I assume they could be accessible under the FOIA if one had a compelling reason).

  38. fish bones: “Why does the Director have an “Only Examiners Allowed Version” blog? What information is there that should not be shared with the public?”

    Examiners are allowed to post comments there in response to Kappos’s posts. I’ll let you connect the dots as to why those are kept private, because I don’t want to inadvertently misrepresent Office policy.

  39. There was also a post on what qualities quality and reject, reject, reject share. Turns out that the two are remarkably similar but not quite equal. Mathematical proofs are proffered to show that they are in fact slightly different in some special cases.

  40. Mark: We’ve been looking at that data. The key variable is “% notice of allowance after response to a rejection”. Or in other words, how effective is your response in overcoming an examiner’s rejection.

    Highest rate we’ve found so far: Biochem with a 30% rate of allowance after a response to a rejection.

    I assume this includes Responses with and without claim amendments (and mostly the latter).

  41. “Why does the Director have an “Only Examiners Allowed Version” blog?”

    Because he wants one version to go out on the intranet homepage that pops up anytime examiners open IE.

    “What information is there that should not be shared with the public?”"

    The Answer to Life, the Universe, and Everything.

  42. “Dennis, please direct your attention to how many rounds of prosecution applications go through before allowance “.

    Znutar,

    We’ve been looking at that data. The key variable is “% notice of allowance after response to a rejection”. Or in other words, how effective is your response in overcoming an examiner’s rejection.

    Highest rate we’ve found so far: Biochem with a 30% rate of allowance after a response to a rejection.

    Lowest rate so far: Finance with a 10% rate of allowance after a response to a rejection.

    Any other areas we should look at?

  43. Why does the Director have an “Only Examiners Allowed Version” blog? What information is there that should not be shared with the public?

  44. “(1) There is no copyright in the Director’s blog (internal or external). Of course, you could lose your job for disclosing private information.

    (2) In looking at 3000 BPAI decisions from the first half of 2009, I found that every time (100%) an original claim was successfully rejected on written description, the BPAI also affirmed a rejection of the claim for either indefiniteness or enablement. ”

    1. Well then I guess I can’t say anything more then. As I understood it though, this isn’t “private” information as the director himself had stated that he was simply posting here and there until he could combine the two into one blog. He just wanted one copy that would go out on our intranet and couldn’t do that with a version on the internet because our IT people are dmb. Iirc that is. Other than that, and the fact that the intranet version always goes live first, the two versions are the same as far as I know.

    Beyond that, I’m pleadin’ tha 5zith. Especially if this is deemed a national securitylol breach by the Dept of Lock Your Homeland Up.

    Also, I’d be interested to hear more about your novel legal theory that there is no copyright in the Director’s blog. If Lexus can copyright page numbering and layout then I’d certainly think that his novel legal analysis of Ariad is copyrightable. But that can be a discussion for a different day.

    2. I don’t know much about it man. Imo it should be available for use on all claims at all times as was held in Ariad regardless of how often it is currently used.

  45. Dennis writes “I found that every time (100%) an original claim was successfully rejected on written description, the BPAI also affirmed a rejection of the claim for either indefiniteness or enablement.”

    Does that mean that written description rejections are unnecessary, merely duplicative?

  46. Dennis: what is your process for obtaining, sampling, and analyzing this First Office Action data? Thanks.

  47. (1) There is no copyright in the Director’s blog (internal or external). Of course, you could lose your job for disclosing private information.

    (2) In looking at 3000 BPAI decisions from the first half of 2009, I found that every time (100%) an original claim was successfully rejected on written description, the BPAI also affirmed a rejection of the claim for either indefiniteness or enablement.

  48. “Can you forward that e-mail? ”

    It’s in the director’s (Only Examiners Allowed Version) blog. I don’t think he’s posted it to his public blog yet. It’ll probably be up soon. And no, I can’t put up the whole thing, or send it in an email. I don’t wanna be infringin’ on his copyrightlols.

    “I have found that Written Description is most often used against amended claims to police priority and new matter issues rather than functional claiming. ”

    That issue was brought up in the comments on his blog. He hasn’t responded or been more specific about his 9.7% number. That could be the number of cases at first action that involved a 112, or it could be all of them at final, or all of them total. Who knows? He might not know himself.

    “In almost every case where written description was used against an original “functional” claim, the examiner also asserted a parallel rejection of either (1) indefiniteness or (2) enablement. I.e., without written description, those claims would have still been rejected.”

    Could be, he hasn’t said anything about that. Regardless, what if they overcame the indefiniteness/enablement rejections and WD was the only valiant defender left standing? Also, I notice you stated “almost every case” implying there are some where WD is the only one presented. You may have told us the numbers behind that statement already but I can’t be bothered to remember.

  49. Dennis, please direct your attention to how many rounds of prosecution applications go through before allowance. In my world it’s bifurcated, either they’re allowed on first action (infrequently) else it’s a merry-go-round of non-finals. Nothing in this second group seems to gain allowance on anything less than three Office Actions. Most recently, the rejections in a first OA were overcome and withdrawn, we argued a second set of rejections, the examiner went final, but in an after-final interview those rejections were withdrawn. Now, here’s a third non-final rejection over yet another reference. Reject-reject-reject is still going strong in art units 26xx, those with some of the longest backlogs in your table.

    Does this scenario square with other practitioners’ experiences?

  50. why begrudge “big” pharma a few xtra PTA days here and there?

    Sure, let’s give everybody more patent term. After all, some of the things I buy aren’t patented, so who could it possibly harm?

  51. why begrudge “big” pharma a few xtra PTA days here and there?

    How else are the CEO’s supposed to get paid? C’mon. They work harder than pretty much everybody in the world except maybe the hedge fund managers at Gold Mansacks.

  52. “powerful generic getting shafted”

    75% of the prescriptions dispensed last year were for generics. a remarkable number compared to only a few years ago. why begrudge “big” pharma a few xtra PTA days here and there?

    link to online.wsj.com

  53. 6 – Can you forward that e-mail?

    I have found that Written Description is most often used against amended claims to police priority and new matter issues rather than functional claiming. In almost every case where written description was used against an original “functional” claim, the examiner also asserted a parallel rejection of either (1) indefiniteness or (2) enablement. I.e., without written description, those claims would have still been rejected.

  54. This just in:

    “The Office recently conducted a survey of 6,865 final rejections issued over a 4.5 year period between 2005 and 2010. A written description rejection was made in about 9.7 percent of all applications during this time period. ”

    “Even if some would consider 9.7 percent to be little used, “little used” should not be conflated with “useless.” Far from it, the written description requirement is an essential “backstop” against overclaiming. And the written description doctrine is particularly useful in examining claims that employ functional language, or that merely set forth a desired result without any indication of what achieves that result. I call these “result-orientated” or “results obtained” claims, and strongly support our examiners using the written description requirement to prevent issuance of such vastly overbroad recitations. Unless an applicant has devised every solution to a problem, the applicant is not entitled to patent every solution. ”

    From the Kman himself.

    Lets discuss.

    One could easily take away from this that the Kman wants (nearly?) all Beauregard/programmed gen purpose comp claim rejected for 112 1st paragraph lack of WD.

    Does the Kman want all Beauregard/programmed gen purpose comp claim rejected over 112 1st paragraph?

  55. “and the PTO administration did fight that interpretation if I recall correctly.

    Threw a fight is more like it. Maybe you don’t watch much boxing, but they have terms for instances like this.

    “What matters is that pretty much every applicant is getting free extensions of patent term at the expense of the public”

    Not to mention patent attorneys getting fatter pocketses correcting all these silly mistaksies eh Precious?

  56. judicial fiat and administrative spinelessness

    It’s the court’s job to interpret the statute, and the PTO administration did fight that interpretation if I recall correctly.

    It doesn’t matter why it exists. What matters is that pretty much every applicant is getting free extensions of patent term at the expense of the public because the PTO is woefully under-equipped to deal with the volume of applications in a timely manner.

  57. “you’re still comfortably into Wyeth double-extension territory.”

    That’s because Wyeth double-extension territory never really existed nor does it now save by judicial fiat and administrative spinelessness. I cannot wait to see some sht go down from some powerful generic getting shafted here shortly. Feel free to take part in the revelry while it lasts.

  58. What’s sad is that the statute implicitly promises that all of those numbers in the right-hand column will be 1.17 or lower – even designs can only barely meet that standard.

    Also, about half of those delays are so long that even with a prompt response and a second-action allowance (probably a rare circumstance in and of itself), you’re still comfortably into Wyeth double-extension territory.

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