Patent Statistics [Updated]

[Updated August 09, 2011 with data from all utility applications filed in ]

PatentlyO103I created a dataset of all 22,000 published patent applications that were filed in February 2006 (5 1/2 years ago).  Of those applications, about 54% have resulted in at least one patent being issued (either in original form or as a continuation or divisional); 29% are finally abandoned and have no pending child applications;* and the remaining 17% are still pending in some form.

Patent practitioners will be happy to note that all of the original still-pending applications have received at least one office action on the merits. In 79% of those pending applications, the patent applicants have also filed a request for continued examination (RCE).

For abandoned applications, the vast majority go through at least two rounds of prosecution on the merits.

Notes: * There are likely a small number of continuations that have been filed but that have not been made public yet and that therefore would not show up in this result.

 

41 thoughts on “Patent Statistics [Updated]

  1. Hmm. I think you should read again what I wrote. This company routinely files non-publication requests. It’s their default (now it is also default to accompany these with permission to access by trilateral office, even if they never file overseas). Sometimes they decide to file overseas, and then mostly they rescind non-publication. Sometimes, though, they have the problem that they are only rescinding for applications that directly result in foreign filing. If they have a family of applications, all related, and they use only one for foreign filing priority, only that one is published, although the subject matter in the others is fully disclosed in the published one. This violates 35 USC 122. I first discovered this for the very simple reason that I was the examiner assigned to a number of the related applications. It stroke me as odd that the disclosures are equivalent or identical, and one application is published while the others or not. And no, it is not fair quid pro quo. It is not simply a question of revealing technology or keeping it secret, but also of showing others what you intend to patent, which is defined in the claims. And about the applications being worthless, that will be assessed in litigation. A lot of people do not have the cash to litigate, worthless patent or not. An attorney in a previous post illustrated to me very clearly that sometimes a patent, worthy or not, is all they care about. You seem to assume a lot. Maybe it is because you yourself pay as little attention to 35 USC 122 as everyone else involved. It is not about claiming the same invention or about the foreign priority. It’s about an applicant using non-publication to allegedly protect trade secrets while publishing those secrets. Non publication is to protect trade secrets before making the trade between trade secret and patent, not to hide from the public what parts of the technology disclosed you intend to patent and what parts you don’t. And yes, it is a large number of applications that are not published, not a lot that are published and then abandoned. Read again. And there is a wave, mainly because I ended up helping the examiners doing these abandonments navigate the process, which is not as straightforward as it should be.

  2. Also, it would be prudent for me to attempt to fix the right spot of the busted tags.

  3. “Really? Which part of anon’s post do you believe is false, and why?”

    Let’s see, there’s the allegation that “[t]he biggest player in my art routinely files non-publication requests (sometimes accompanied with a permission to access the application by foreign offices”

    Routinely?

    And then there’s the fantasy that “there has been a wave of abandonments under 35 USC 122 prompted by examiners in my unit after finding corresponding foreign applications”

    A wave?

    “So there is a large number of applications never published from very large companies”

    IDK, I’m having a hard time believing that some “very large companies” are filing “waves” of applications with non-publication requests (that are subsequently foreign filed) simply to abandon them, and knowing that even those that might issue will be unenforceable.

    What’s the point of such an approach?

    “These guys want their quid pro quo, and then some.”

    Huh?

    Their technology is being disclosed through the publication of the corresponding foreign applications. Any US patent they filed with a non-publication request will be worthless.

    How is that quid pro quo, and then some?

  4. Malcolm,

    I think it far more prudent to evaluate what is posted than to care who is doing the posting.

    If you need to depend on the who, you had better spend more time developing your critical thinking skills.

  5. This company is national. They seem to be selective about what they file overseas. In a bunch of related applications, only the broadest (I guess) gets to be patented overseas. The funny thing, as I said, is not only that they file the non-publication by routine, but now they even file that together with a permission to access by trilateral office, right there next to the non-publication request.

  6. I should clarify that there appear to be two anons here. I am an examiner. The other anon appears to be an attorney. I am the same one that had a conversation with you regarding the new law and asking input from attorneys.

  7. You guys have no idea what the threshold is for that. My boss was clear when I suggested it. We don’t do that. When two of these applications were revived, they had been rubber-stamped. In neither of them there was any request for information regarding the delay. Both said that the delay in communicating foreign filing was unintentional. The policy of the Office is clear here. Kappos explicitly included revivals for failure to communicate foreign filing into those that are going to be computer processed. The Office really discourages examiners from reporting attorney conduct. I think that it is comprehensible, given how tense things can get between our two sides during prosecution. At any rate, I am a foot soldier here. That kind of question would be better answered by my SPE (and I am not inclined to ask, sorry). I assume it only follows the attitude of taking whatever the attorney states as true, and not questioning any further, lack of subpoena power and so on.

    By the way, I am the anon that posted about non-publications, not the one that replied below. I guess I’ll change pseudonyms.

  8. If that was the point of Shill’s post, then why all the xxxhole remarks to Paul, “anon”?

    All Paul was saying is that if a company files foreign applications on a regular basis, then a default non-publication request makes more sense than the alternative.

    You do understand what a default instruction is? It means: hey, counsel, if you don’t hear from us specifically instructing otherwise, please don’t request non-publication.

    Default instructions are useful. Are you going to argue with that now, “anon”?

    And try commenting with a regular pseudonym. It makes it easier for us regular readers to ignore your cxxxp comments and/or confusing your bxlxney with that of the ten other “anon” sockpuppets.

  9. Sorry Pill, Shill has a better read.

    Pub or not to pub should not be a default in either direction, and that is the point of Shill’s post.

  10. I believe Paul was saying that careful companies don’t instruct their counsel to request non-publication as a default procedure.

    Nothing controversial there.

    Take a pill, Shill.

  11. Paul,  If it was known violation of the statute such that the patent office would be required to deem the patent abandoned, it might IC might be found. 
     
    But, if so, the facts also show the real malefactors are a firm of lawyers practicing this way for all clients in all cases.  The clients may be entirely innocent.  Even if IC were proved in court, the court would be ill advised to impose any penalty on the patent owners unless there was some fault shown.
     
    As to counsel, they should be disbarred permanently if the fact show willful violations on this scale.  This is not a laughing matter, not at all.
     

  12. Careful companies have made it a policy not to normally ever request non-publication, so as to avoid ever accidentally…

    Paul, stop shilling – if a company is careful, they would have no need to act in such a blanket policy of “not… ever request non-publication”

    I don’t know what game you are playing, but non-publication requests are a meaningful tool and should not be belittled or dismissed as you appear intent on doing. It is not an option to be chosen universally – just as it is not an option to be dismissed universally.

  13. Ned, since ignorance of the law is no excuse, and this violation of it is for an improper beneficial purpose, and even meets the new “but for” test for IC, why is it also not grounds for an IC defense? I see no real difference between affirmatively petitioning to illegally obtain both U.S. and foreign patents without any U.S. application publication public benefit and, say, filing an application more than one year after a statutory bar date.

    Careful companies have made it a policy not to normally ever request non-publication, so as to avoid ever accidentally invalidating their U.S. patents when a prior decision not to foriegn file might be later changed and the prompt withdrawal of the non-publication request might be missed. Also, non-publication reduces the earlier 102(e) and start of bar date running defensive date value of the application.

  14. I would agree that the law firm(s) involved should be investigated by the OED. I think that every time an examiner finds one of these “events” he should make the referral. Let the OED accumulate the file on the malefactor(s).

    As to IC, I think not.

    If the application is filed abroad, it will be published on the same 18 month date as would have the US application. Whether an application is published in the US or abroad is not all that important from a prior art point of view.

    122(b) does not require the application to go abandoned because it allows one to explain any delay. Therefor, it is not a but-for matter of patentability, a necessary condition for IC.

  15. Too bad that people who bewail frivolous patents don’t know enough to look beyond the abstract or title.

    Stick around, Tom. There’s plenty of crxxxxp claims to “bewail.” Why, I’m quite certain there were some issued just this morning (happens every Tuesday).

  16. it would amaze me if it were really that common

    Why? Have you reviewed many prosecution histories?

  17. Sounds more like hyperbolic paranoid delusion to me.

    Really? Which part of anon’s post do you believe is false, and why?

  18. Also to wonder why an attorney or agent doing so repeatedly is not being turned in the PTO Office of Enrollment and Discipline when noted by an examiner?

    I assume this is a rhetorical question. anon already provided you with the answer in his/her comment: the prosecuting attorney/agent is a clueless rexxxrd, or claiming to be one.

  19. Since foreign filing of a U.S. patent application that has a non-publication request that is not withdrawn is expressly by statute an abandonment of the U.S. application, it would appear to be both client malpractice and PTO unethical conduct. Thus it would amaze me if it were really that common. Also to wonder why an attorney or agent doing so repeatedly is not being turned in the PTO Office of Enrollment and Discipline when noted by an examiner?

  20. @ Shilling…: I never did it as an examiner, but I might have been tempted to allow a claim that could have been infringed only under a full moon on the fifth Saturday of the month…, particularly if the inventor had been complaining to her congressperson(s). Too bad that people who bewail frivolous patents don’t know enough to look beyond the abstract or title.

    @ anon: Some don’t-publish requests amount to churning. One firm filed them repeatedly for a *foreign* assignee. Then, after the apps were filed abroad (surprise), they dropped the requests, so client paid to go up the hill and again to go back down. I don’t know if said firm still works for that company but suspect otherwise.

  21. Just curious – any data regarding technology on the 15% that are still pending? Are the majority of those in a certain art, or is the technology profile generally reflective of the applications that are filed?

  22. Not necessarily so. The biggest player in my art routinely files non-publication requests (sometimes accompanied with a permission to access the application by foreign offices, the irony). So much so that there has been a wave of abandonments under 35 USC 122 prompted by examiners in my unit after finding corresponding foreign applications (and not filing a single IDS, of course). These guys want their quid pro quo, and then some. Not surprisingly you will see this company’s attorneys adding the same limitations in all their applications, related or not, to things they already have a patent for after receiving a rejection. The thing is that the law firms involved end up applying the same technique to all their clients. So there is a large number of applications never published from very large companies, and most units do not pay attention to 35 USC 122. Had it not been for how obvious the behavior of this entity is, and how much of our work comes from them, we probably would not be paying attention either. I would not be surprised if others are doing the same thing, without adverse consequences. To give you an idea, every such abandonment is an ordeal for the Examiner because there is no procedure for it at the office, and everyone that has to be contacted for this needs to be shown the law, because they’ve never heard of it.

  23. MaxDrei,

    You have glommed onto the nomenclature and missed the point:

    if [scope of claims] is narrow enough

    This has nothing to do with the idea that you are trying to revive that false idea that applicants through shear repetiviness can break an examiner and get the claims they want.

  24. If others are mostly filed pro se (true?)

    Baseless supposition.

    More likely it is that non-publication requests come from earnest small entities that seek to preserve whatever they can of the original Quid Pro Quo (and no link whatsoever to pro se status).

  25. Tom, do I understand your “cave” right: that the phenomenon of Examiner wear down is very much fact?

    I ask only because some here contend that there is no such thing.

  26. @ NL: Good point, but the description indicates that only published applications were considered. If others are mostly filed pro se (true?), I’d expect a higher abandonment rate.

    @ 4 of 7 prior posts: I find the lack of apparent relevance to the topic appalling.

  27. L_ies, d_amned l_ies, and statistics.

    I will bet that the underlying data will also be “conveniently” unavailable.

  28. These statistics don’t indicate whether the person gathering them had access to non-published applications. Presumably not. So any application which was not published and abandoned is presumably not counted. Similarly, any application not published and still pending or with a pending child is not counted. That suggests that the number of abandoned applications reported here is undercounted but it’s impossible to tell how much undercounted.

  29. I have no idea what this means, but 28% abandonment does not seem high, particularly when many skip prior art searches. See link to ssrn.com

    As for the rest, I’m reminded of Learned Hand’s famous observation about “ant-like persistence,” Lyon v. Boh, 1 F.2d 48, 50 (S.D.N.Y. 1924). And that doesn’t consider scope of claims. If that is narrow enough, examiners tend to cave.

  30. And this leads me to believe that JS and RL are the main players… Where does KT fit in if he was the one that answered the phone.. DO I HAVE A TRIANGLE? JS is gone… KT remains? Why would the July 19 th showing of it being put on His desk be out there, if the evidence was not?
    Obstruction? How can a person figure out what has happened without the Evidence? They can’t. And how can the Evidence be kept from them? I don’t think legally it can be.
    And after my Trademark SOU’s I am sent letters to pay fees for an ITU that I never filed. and the checks are cashed at THE BANK?

  31. So now they let me see that my Case was never even filed for Me. That all the monies that were stolen from me were even faked. And if that info is all new..? Does that mean the Statute starts there. Or does it end in October of this year and that is why they extended my Bankruptcy? I would think if all things were kept from me that new info would create a new Statute.. no?
    Any way on another note, you know that Bank that just took a hit.. Let it stay that way! There are plenty of Banks out there that are fiscally responsible. The Country is too big to Fail. There are plenty of Banks, let it be a lesson to the Banks and not the country this time.

  32. A patent owner has the right to prevent others from making, using or selling a product or process covered by an issued and valid United States patent. Likewise, a patent owner can prevent the importation of products covered by an issued and valid United States patent. In order to enforce these patent rights it is necessary for the patent owner to bring an action in either a United States Federal District Court, or an action in the International Trade Commission (ITC). The ITC, however, only has limited jurisdiction; the ITC may issue either a exclusion order to prevent importation or a cease and desist order. Federal District Courts have the ability to issue orders prohibiting further infringement and issue monetary awards to compensate for damages suffered by the patent owner as the result of patent infringement. Increasingly patent owners will simultaneous file a lawsuit in Federal District Court and file an action at the ITC, forcing an alleged infringer to fight the same battle in multiple forums.

  33. 28% abandonment sounds high; bet a large percentage were abandoned due to the Great Recession and would not have been abandoned in normal economic times.

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