Pending Patent Applications: Delays in Prosecution and Patent Term Adjustments

The chart above shows the current patent application status for US utility patents grouped by patent application filing date (quarter). For applications filed in the first quarter of 2005 (almost eight years ago), about 61% of the applications have issued as patents, 34% have been abandoned, and 5% are still pending. Because examination takes time to complete, a greater percentage of more recently filed applications are still pending. The chart is helpful for some patent applicants to think about where their applications fit within the range of ordinary.

The chart itself is limited only to published applications because that is the only way to peek into the status of abandoned or still pending applications. Because of that limitation, ignored applications filed after March 2011 because many of those have not yet published. The patented data (in blue) was generated from a dataset that I created of all patents that have issued since January 2005. The abandoned and pending portion of the chart was created from a randomly-sampled subset of about 10,000 applications that were published but not yet patented during the appropriate time period. For applications claiming PCT priority, I used the US national stage filing date.

Although seemingly small, the 5% of applications that are still-pending after eight years in prosecution is concerning for a number of reasons. Most of these applications have been delayed by one or more appeals to the BPAI (now PTAB). Those patentees could have likely obtained earlier protection (with narrower scope), but the delay is often not a problem for the patentee because our generous patent-term-adjustment (PTA) scheme means that the term will keep being extended one day for each day in prosecution. For professionally prosecuted patents, the US patent term has largely reverted to one that is once-again based upon the patent issue date rather than the filing date.

19 thoughts on “Pending Patent Applications: Delays in Prosecution and Patent Term Adjustments

  1. Just saying,

    See the above case. It really is not difficult to reach that three year clearance date prior to needing to file an RCE.

    This may serve to shift some of the mounting deck chairs from the Appeal pile back to the RCE pile.

  2. On the contrary, this is a Federal Circuit case and until (if?) the USPTO does file an appeal, this decision is binding on the USPTO.

    After Wyeth, do you think Kappos will appeal this? The Office might not go there as I have personally heard Kappos indicate that one RCE could be considered a normal part of prosecution, and the legal reasoning here is pretty (but admittedly not completely) tight.

  3. I haven’t seen that one …. very, very interesting.

    However, it isn’t a Federal Circuit case, and it is assured to be appealed by the USPTO.

  4. “Since I’ve always been affirmed”

    … except those applications that have been kicked back at the appeal conference for which there have been several already.

  5. “For professionally prosecuted patents, the US patent term has largely reverted to one that is once-again based upon the patent issue date rather than the filing date.”

    Hardly. The filing of a RCE tolds type B Patent Term Extension (PTA), which is what you get if you don’t get an allowance after 3 years. Few applications are delayed 7 years and don’t have at least one RCE.

  6. Thanks for the Exelixis, Inc v Kappos decision.

    The summary of that decision (emphasis added):

    In sum, the plain and unambiguous language of subparagraph (B) requires that the time devoted to an RCE tolls the running of the three year clock if the RCE is filed within the three year period. And, put simply, RCE’s have no impact on PTA if filed after the three year deadline has passed. The PTO’s arguments to the contrary are not persuasive and, accordingly, the PTO’s interpretation of subparagraph (B) must be set aside as “not in accordance with law” and “in excess of [its] statutory . . . authority” pursuant to 5 U.S.C. § 706(2)(A) and (C).

    Given the backlog (and the ensuing fact that for a vast number of applications, first actions on the merits generally fails the three year guarantee), plus the new “put the RCE” on the back-burner doctrine of examiner queue management, the PTA “credit-card” is going to be severely over-charged.

  7. In the words of Marcus Cato at Utica as Julius Caesar approached, having won the civil war that Cato brought on the Republic by demanding that Caesar give up his command in Cisalpine Gaul, “Give me liberty or give me death.”

    link to en.wikipedia.org

    Words to inspire any true Republican.

  8. See the recent (November 1) decision in Exelixis, Inc. v. Kappos where the court found that filing an RCE after 3 years from filing date does not detract from PTA.

    * Lulz. Yeah, I love the “I’ve never lost” examiners. I’m sure 6 will tell you that even the appeals he re-opened were all winners, it’s just that it was too time consuming to actually hold a conference. Or there is the other explanation some of the stooges at the PTO offer: “Well, the Board wouldn’t understand the technology or the rejection, so just go ahead and allow it.” Lulz and lulz some more.

  9. Of possible interest to note is that RCE stops the PTA clock while appeal generally* does not.

    *can’t forget 6 and his perfect 1 for 1 all the way through appeal (and really cannot forget the boatload of times 6 has been forced to reopen prosecution before the appeal process is finished).

  10. “Those patentees could have likely obtained earlier protection (with narrower scope), but the delay is often not a problem for the patentee because our generous patent-term-adjustment (PTA) scheme means that the term will keep being extended one day for each day in prosecution. For professionally prosecuted patents, the US patent term has largely reverted to one that is once-again based upon the patent issue date rather than the filing date. ”

    You don’t have to worry about that for the apps I take care of, if I’m affirmed apparently the PTA doesn’t extend. Since I’ve always been affirmed, np.

  11. I forget too. Sorry. I had appreciated that PTA makes a reversion possible, to a “17 years from issue” term, but it was Dennis’s “largely” that caught my attention, suggesting to me that this reversion is not just a theoretical possibility but in fact by now a routine practical reality.

  12. I also forget if anon latched on to any of that as being “anti-patent”, because we all know that noticing things about the patent system means you disapprove of them.

    Nice and completely unfounded insult IANAE.

    Don’t blame me for your face hurting from all the Calvinball spikes you take.

  13. am very impressed.

    I forget if you commented when I posted a year or three ago that the PTA structure effectively maintains the patent term at 17 years from issue.

    I also forget if anon latched on to any of that as being “anti-patent”, because we all know that noticing things about the patent system means you disapprove of them.

  14. Wow. I read:

    “…. the US patent term has largely reverted to one that is once-again based upon the patent issue date”

    and am very impressed. Good provocative stuff Professor Crouch, sir.

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