First Action Pendency

FirstActionPendency

The data released from the USPTO in its annual report shades the truth somewhat, but includes a number of important signals.  The chart above shows the average first-action pendency (filing date to first office action mailing) for patent applications — showing a significant decline from 2011 with the USPTO’s continued aggressive targets for FY2016 & 2017. An important note here is that the ‘first action’ pendency treates RCE and continuation refilings as ‘new.’  Those re-filed applications typically have a much shorter delay before the first action and, as such, the reported pendency is several months lower than you would expect for a newly filed application.  In addition, the report apparently includes design and plant applications (that also have a lower first action pendency than utility applications).  All that said, the year-over-year decline is impressive and the trend appears set to continue.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

11 thoughts on “First Action Pendency

  1. I’d be interested in seeing the time to First Action for the bottleneck cases filed on March 14, 2014.

  2. Any data available on the real first-action utility application pendency, ignoring RCEs and continuations?

  3. Dennis: the ‘first action’ pendency treates RCE and continuation refilings as ‘new.’ Those re-filed applications typically have a much shorter delay before the first action and, as such, the reported pendency is several months lower than you would expect for a newly filed application. In addition, the report apparently includes design and plant applications (that also have a lower first action pendency than utility applications).

    Dennis, do you have any opinion as to whether the inclusion of RCE and continuation refilings is driving the trend substantially? In other words, do you suspect that without including the data from RCE/con/plant/design data we’d be looking at a roughly flat line from 2011 to 2015 (no change in “first action pendency” for newly-filed applications)?

    Related to that, how is the RCE/con data proposed to shift the first-filed application data? Has the pendency of first actions in RCE/con filings decreased more than the pendency of first actions in newly-filed applications? Or has it remained roughly constant (and short) while the RCE/con filings have substantially increased relative to newly filed applications?

    Lastly, does this data include applications filed under any of the accelerated application regimes? If so, are the numbers of such applications being filed significant enough to impact the trend observed here (I suspect not …)?

    1. I’m working on getting new data that will answer your questions here.

      My guess is that think that RCEs and Design patents do impact trend (and not just the absolute values). The basis for this guess is that (1) there are a lot of RCEs and the PTO has changed its examination practices in a few instances over the past few years in ways that may seem to make the whole system go faster/slower; and (2) there has been a substantial increase in design patent filing over the past few years. The data does include plant patent applications, reissue applications, and accelerated applications. However, I would expect that those have little impact on the overall average because of their relative low numbers.

  4. Do people feel that the PTO has been shading the truth with respect to IPR statistics that it has been reporting?

    1. I heard mkl makes up the statistics on the spot in her super secret star chamber at the request of Google to prevent people from realizing that they’re destroying the patent system.

      However, we at po know better.

  5. This translates into nothing except the ability to move deck chairs.

    Keep in mind as well that restriction requests also “count,” and that the overall switch should be looked at in relation to where the deck chairs were moved to (including a potentially explosive backlog in RCE’s which were the ‘sacrificial lamb’ in the “re-prioritization” that occurred in 2011.

    Also keep in mind that if examiners are working to “the metric” as opposed to actually providing a full examination, the induced lack of quality will not be reflected in this “but we moved fast with the first action” bean counting here.

    This really is nothing to get that excited about when the complete picture is kept in mind. To the extent that this gives the false impression that the Office is “doing well,” it is in fact a disservice. Shoveling C R P faster does not change what is being shoveled.

    1. Keep in mind as well that restriction requests also “count,”

      This is really a non-issue, and it’s amusing that you would use the word “count”, because restrictions don’t earn the examiner any counts. There are really only two motivators for an examiner to do an improper restriction: one, a ridiculous number of claims; and two, because the case has been sitting as their oldest new case for a long time and they need to move it “or else”.

      In fact, pumping out large numbers of restrictions can be detrimental to an examiner, because on their new docket, they’re only responsible for moving their oldest case. On their amended docket – which is where it goes after the election is filed – every single case has a clock, not just the oldest. So, if they’ve done ten restrictions in a biweek for some reason, they can expect ten unexamined cases to land on their amended tab two months later. Not fun.

      1. Not exactly – as you presume that all avenues stemming from a restriction will be pursued by the applicant (notably rare).

        The game is afoot, and it very much is a gaming of the system (as the veracity of restriction practice is itself HIGHLY suspect).

        You are not yet holding a silk purse – in fact, that ear is still attached to the sow.

      2. Some art units request examiners restrict if you have method plus product claims, when the method claims are a lot more detailed than “provide the elements of the product”.

        Some for transfer reasons, some because the method steps usually require a lot more search and are more likely to have secondary considerations. I think method ppl get a bit more time.

        But honestly, if you can’t do the method and the product you’re probably not qualified to examine the product itself IMO.

        Also, if your method claims are “provide the elements of the product” just elect the product already and rejoin if allowable. No point in having someone waste time to copy paste the same thing. Shouldn’t ever send a written one like this out though IMO.

        Same with method/system/computer, but they don’t restrict in those art units. You’re just wasting paper and time during examination. Elect then ask for a rejoinder.

        Species: I’m okay with if they’re not obvious variants. Sometimes an attorney will say its improper bc they are obvious variants. Ok, then I’ll see your argue they aren’t in your response. SMH.

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