Prelim: The Association Between Grant Rate and Pre-Filing Searches

In the not too-distant future, the PTO will likely re-invigorate its effort to force patent applicants to conduct pre-filing prior art searches. During his stint as IPO President, Marc Adler suggested that rational patent applicants should already be conducting pre-filing searches in order to assess patentability and define likely claim scope. Marc offered the then unsubstantiated comment that "if the initial search done by the applicant is as comprehensive as the one done by the patent examiner, it should follow that the pendency of the application will be shorter and the patent more likely will be valid." Despite Marc's suggestion, many applicants do not conduct pre-filing searches – largely because of the up-front cost of searching and analysis.

I wanted to test Marc's suggestion that pre-filing searches add value by leading to better patent applications and shorter application pendency. Although applicants do not ordinarily disclose whether a pre-filing search was conducted, this information can be teased-out by looking to see whether an information disclosure statement (IDS) was filed on the same day as the patent application itself. Of course, filing an IDS with the application does not necessarily mean that a pre-filing search was completed since the submitted art may have been obtained other ways. However, the IDS filing at least indicates that specific prior art was considered prior to filing, and I cautiously believe that such an early IDS filing does suggest the existence of a pre-filing search.

Yesterday, I created a set of 3000+ randomly selected patent applications filed in December 2004 and January 2005 and then divided those applications into three groups: Group 1 applications where no IDS was filed during prosecution; Group 2 applications where an IDS filing coincided with the filing of the patent application itself; and Group 3 applications where the first IDS was filed sometime after the application was filed. The data indicates the status of each application (abandoned, patented, or pending) as of June 26, 2009 – about 4 ½ years after filing. For this first pass, I simplified the data by excluding cases that (1) never published as applications (since data is kept secret for most of those cases); and (2) cases claiming priority to a "parent" patent application (since early IDS filing in the child cases provides little indication of whether a pre-filing search was conducted prior to the parent being filed).

Results: Looking 4 ½ years out from the application filing date, 25% of cases fell into Group 1 (No IDS); 26% into Group 2 (IDS filed with application); and 49% into Group 3 (First IDS filed after application). Table 1 shows these results.

   

Portion of All Cases

Group 1

No IDS Filed 

25%

Group 2

IDS Filed With Application

26%

Group 3

IDS Filed After Application Filing Date

49%

Table 1

 

±3% margin of error at 99% CI

In my sample, Group 1 applications were much more likely to be abandoned and less likely to be patented within 4 ½ years of filing than the Group 2 applications. Table 2 below shows this result. In particular, 40% of Group 1 (No IDS) applications were abandoned while only 26% of Group 2. Similarly, only 34% of Group 1 applications were patented compared with 46% of Group 2 applications. Pierson's chi-square test of independence results in P=0.000 – indicating that these differences as a whole are statistically significant.

 

 

Abandoned

Patented

Pending

Group 1

No IDS Filed

40%

34%

26%

Group 2

IDS Filed With Application

26%

46%

28%

Group 3

IDS Filed After Application Filing Date*

24%

40%

36%

Table 2

       

 

Table 2 shows that Group 3 (applications whose first IDS was filed after the application date) had an even lower average abandonment rate than Group 2. That number is likely skewed, however, because of the confounding relationship between keeping an application alive and filing a late IDS.

In looking at prosecution timing, I did not find a statistically significant difference in pendency between Groups 1 and 2. Group 3 applications did take significantly longer to patent/abandon. However, that result is likely skewed by the selection bias noted above.

Association Between Grant Rate and Pre-Filing Searches: These high-level results shown in Table 2 suggest a relationship between an applicant's success rate (patent vs. abandon) and the early filing of an information disclosure statement.

An alternative explanation for the relationship between higher grant rate and early IDS filing may be that both are indicators that applicants recognize higher-quality inventions and consequently work harder for valuable patent protection. In that scenario, there is no cause and effect relationship between a pre-filing search and a higher patent grant rate. If this quality-recognition theory were true, I would expect that applications filed by patent attorneys/agents (and larger law firms) to be more likely to include a pre-filing search. However to the contrary, my data comparing applications associated with one or more registered patent practitioners with applications not so associated shows very little difference in the rate of pre-filing searches. Rather, practitioners appear to focus on IDS filing more as a CYA burden as suggested by the greater likelihood of late-filed IDSs in practitioner filed cases. Practitioner-associated cases are also more likely to be patented and not abandoned.

Operation of the patent office as well as applicant behavior both vary depending upon the technology at issue. Table 3 shows IDS timing for each examination technology center. Applications in TC 1600 (Biotechnology and Organic Chemistry) are often seen as more valuable on a per-application basis. However, TC 1600's applications are less-likely than average to include an IDS filing with the original application. (χ2 P=0.000). Consistent with disclosure statements as merely CYA material, however is the fact that TC 1600 has the highest rate of later-filed IDS's.

 

IDS Timing

Tech Center

Group 1
No IDS

Group 2
With Application

Group 3
Later

1600

11%

24%

64%

1700

16%

24%

57%

2100

29%

26%

40%

2400

28%

22%

41%

2600

20%

33%

40%

2800

22%

27%

47%

3600

35%

27%

38%

3700

27%

28%

38%

Table 3

     

 

Notes:

  • Of course, this comes with the baggage of a retrospective study.
  • This is a continuing project – suggestions are welcome.
Dennis Crouch

About Dennis Crouch

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

64 thoughts on “Prelim: The Association Between Grant Rate and Pre-Filing Searches

  1. Student, I suggest (caution: only for everywhere in the world other than the USA) to include in the app as filed a nice set of dependent claims, that go in tiny steps from the broadest concept you can envisage, all the way to the central pin-point of the “Best Mode”. They you’re as ready as you can be, for dealing with that closer prior art you’re going to see, after your filing date.

  2. student,

    An awesome question. However, I’m not sure it is the right question. The initial writing of claims has less to do with your case cite than you might think, or what one on the surface might surmise.

    Since the Office is responsible for evaluating and examining an application, it is the Office that is responsible for making sure the claims, as written or amended meet the statutory requirements. The applicant or claim writer does not control what the examiner will use as a basis for “what went before”, and therefore cannot control the evaluation of meeting the statutory requirement.

    Of course, there are practices that promote the chances of successfully writing claims. Chief among these are extensive (and expensive – at least in the eyes of applicants) prior art searches.

    There have been several threads touching upon the subject of whether a practitioner should or should not perform such searches. Let it be sufficient to say that it is NOT a requirement for practitioners to do so.

  3. “The statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise.” United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942).

    Can one of the experienced practioners, like David Stein, explain to students how to write claims that “clearly distinguish what is claimed from what went before” when the prior art is not considered until after the examiner issues an office action?

  4. One thing that could be done to clean up the statistics a bit is to reject applications from the study that are part of a family, as evidenced by claiming priority to other utility applications, either as a divisional, continuation, or CIP.

    We have clients where we almost automatically cite all the prior art in the family whenever we file new applications in a family. And, because we have been through prosecution on related applications, it is unsurprising that we have a fairly high allowance rate for these applications.

    I also note here that we docket an IDS check for all applications awhile after they are filed, and often don’t file them until then, even if we have the art already available. It looks like there are others here that do the same. This keeps the IDS out of the critical path of getting the application filed, without losing anything for the client.

    Finally, I think that it would be interesting to see a two (or three) dimensional study done with the data you have there. I would be interested in seeing how the allowed/ abandoned/ pending ratios vary by art area by when and if an IDS was filed.

    My experience has been that prior art searches are done for our slower changing art areas, while it makes less sense for faster changing areas. This may have changed a bit since the PTO started publishing applications. Nevertheless, my experience with large semiconductor and computer companies has been that they see more of a downside to searching than an upside.

  5. David Stein wrote; “I’d bet safe money that if you took any two examiners, sat them both down at a table with the same case, and gave them the same amount of time and tools… they would likely come up with few or no references in common.”

    I have sure seen art groups that were fairly consistent. For example, I had two office actions on my desk a couple of weeks ago, from two different clients, and had the same art cited for the same proposition by separate examiners. (and, no, the inventions are not close enough together to be conflicting).

  6. Snake Fist–

    Yes, I am a solo.

    I don’t lose any money on any case, I simply have a different billing rate for a different service.

    A patent search is not a legal service, and so should (and does) have a different price tag.

    I also do some engineering consulting for clients when asked, and I have a different billing rate for that, too.

    As to turning down some potential clients, all business owners do that at some point, for various reasons. I’m guessing you’re neither a solo nor upper management.

    And finally, I never said that I “think other attorneys are overly concerned with malpractice liability.” I do, however, believe that many large firms are “underly” concerned with client service and management–understandably, as their clients are corporate and institutional entities with no particular person to whom to be consistently available, reliable, and helpful.

    I do note that while I have limited possibilities for growth, I get solicitations daily from the large firms trying to get hold of me and my book of business.

    “Paternalistic” is an interesting choice of word–it has taken on a distinctly derogatory connotation. However, given that my clients are small entities, they look for somebody who cares, who is genuinely helpful, and who looks out for them.

    When I was at a large firm, BELIEVE ME, I ABSOLUTELY DID NOT HAVE THIS ATTITUDE! I would have been eaten alive. I do understand that each practice has different demands on performance and style.

  7. Inviting Body Punches:

    You always perform searches and “take a bath on the search fee”, i.e., you lose money on every case; you’ve turned down “more than a couple” potential clients; and you think other attorneys are overly concerned with malpractice liability. I’m guessing you’re a solo practitioner.

    Seriously, I’m glad your system works for you but its way too paternalistic for me.

  8. Public Searcher DIP:

    I fully understand your sentiment, but that’s not the way our legal system works. We have an adversarial system under which an attorney is ethically required to zealously represent his client within the bounds of the law. If the patent system allows for too much abuse then Congress should fix it, but I would be committing malpractice if I took it upon myself to fix the system to the detriment of my clients’ interests. Sad but true; legal ethics don’t always follow societal ethics.

  9. Snake Fist–

    Yes, I do the searches myself.

    Yes, I retain all search records.

    I do charge for the searches, but a flat fee that amounts to a low hourly rate.

    Unlike most, I do not live in fear of liability arising from missed references–an appropriate engagement agreement goes a long way, as does erstwhile client counseling, and initial client selection. There are more than a couple of potential clients whom I have turned down. Also, I have an entirely separate engagement agreement for searching activities.

    In response to another point you made, the owner of a presumptively valid yet inferior patent has no commercial advantage until the patent is invalidated if during that time there is unfettered infringement.

    I agree with you that a patent CAN have value regardless of prior art that was missed, but that value can vary greatly, from very much to very little or nothing at all. The costs of patent ownership and enforcement, and unmet expectations, can easily outweigh any such value.

    On a final note, I’ve been thinking about your assertion that no duty to search exists. I do not believe that is true in all cases–my duty as an attorney is to counsel the client effectively. If have a reasonable belief that there is good prior art that would be revealed in a search, I have a duty to at least strongly suggest that a search be performed. If I know that such prior art exists, I have a duty to disclose it to the client, which is a form of search in and of itself–a self-search.

    This may apply in only a narrow range of situations, but if you’ve ever worked for an unsophisticated but clever inventor, you’ll know what I mean. Or if you work for multiple clients in the same technology area, or if you move from one client to another in the same technology.

    For me, the bottom line is about serving clients effectively and efficiently–I always do searches, and I have nothing but satisfied clients.

  10. I think the quest for perfection in issued patents is the problem. Competitor’s are well equipped to easily and accurately judge the true value of the issued patent and act accordingly. They can obtain opinions and enter into cross-licensing agreements.

    And even though some claims of that patent might be invalid, there are usually some that survive reissue/reexam. I, for one, think that it is much better to let a patent issue with a few of the claims being too broad than for the patent to issue with claims that have been unjustifiably narrowed.

    The quest for certainty is such a white whale. The only thing that is certain is that error is going to occur. Erring on the side of the patentee is most certainly the lesser of two evils.

    Every era of American prosperity has coincided with an Intellectual Property arms race. When someone tells you that the PTO is only the first filter, he or she is bringing the wisdom.

  11. Snake,

    I understand the legal and economic rational behind your views (and David Stein’s), but aren’t these the very things that are causing the proverbial patent bubble?

    Who gains by this statement: “Even if a competitor requests a re-exam over prior art that clearly invalidates the patent, the patent won’t be invalidated until years after it issued during which time the owner has a huge commercial advantage” other than the litigators?

    At what point does ethics kick in with regard to a practioners contribution to low quality patents and wasted litigation costs? Do we not bear any burden until required by the exact letter of the law? If not, maybe the PTO’s strongly disliked AQS provisions should be enacted…

  12. Inviting:

    Since you’ve assumed a duty to search that doesn’t exist, I assume you’re at least using a third-party search service to minimize your own liability for missed references. But then again, I don’t know any firm that eats a $1500 search fee on every application, so you must be doing them yourself. I’m sure your insurance carrier hopes you never miss one. And make sure you keep those search results handy so you can produce them during discovery.

    An issued patent is presumptively valid. Defendants will always attack validity in their responses, but, as a rule, its always cheaper to settle than fight (yes, I know there are exceptions).

    Even if a competitor requests a re-exam over prior art that clearly invalidates the patent, the patent won’t be invalidated until years after it issued during which time the owner has a huge commercial advantage.

    So, yes, a patent has value, regardless of the prior art that may have been missed.

  13. Snake Fist–

    Yes, most litigation settles, but nobody knows how it settles, in the aggregate. And if settled, the claims have undergone interested scrutiny pre-settlement. The points you make are both confounded by selection effects, and eviscerated by a lack of settlement data.

    I ALWAYS do searches prior to filing, but I don’t charge $3k–I take a bath on the search fee. IMHO it is part of your professional responsibility to especially small- and solo-inventors to perform a pre-filing search, especially in the mechanical arts.

    Larger, more sophisticated clients who file regularly and who understand the costs and benefits of a search–that is another matter entirely.

    I have in fact had situations where clients have foregone filing in view of my pre-filing search results and consultation.

  14. Zak said: “[W]e find that examiners almost always disregard the references we cite and cite against the application irrelevant prior art.”

    I agree; in my experience, examiners avoid using art cited in an IDS. Others may have different experiences, but that’s been mine.

    Anon E. Moose said: “Do you really think there is value is issuing a claim that will not withstand interested scrutiny?”

    Yes, because most litigation settles, so the defendant’s opinion that the patent should not have issued doesn’t get tested. At most, it lowers the settlement amount.

  15. I agree with David Stein.

    Question to the posters who say they always or almost always conduct a prior art search: If the client doesn’t want a search performed, do you refuse to file the application? Or do you simply include it in the cost of preparing the application so that the client doesn’t have a choice?

    I’d love to tack on another $3000 to perform a search and render an opinion, but, like at least one poster said, most of my clients decline them, usually because of the cost but also because they feel they know enough about the prior art. IMO, its the client’s money and risk so its his decision, not mine.

    I disagree in part with the posters who think there’s value in using prior art to form the claims. Clearly, knowledge of prior art that helps avoid a 102 problem is very useful, but, given how subjective (or even arbitrary) 103 rejections have become, no amount of knowledge of the prior art will help avoid a 103 problem.

  16. Dear Mr. Six,

    Thanks for making my point when I said:
    I think I speak for everyone (except maybe Mr. Six…)

  17. Dear Mr. Six,

    Thanks for making my point when I said:
    I think I speak for everyone (except maybe Mr. Six…)

  18. I’ll sac the skull n bones for the better layout. I still feel like it might could be a bit better, but the remaining issues probably remains in everyone having different resolutions and using different browsers etc.

    And I still think only one sidebar on the right hand side would suffice. This whole double column thing just seems unnecessary.

  19. Dear Texas patent lawyer

    Re: “(never do today what you can put off until tomorrow).”

    You are so right. Put another way, nobody does nothing unless they absolutely have to, and that seems especially true for patent work.

    * * * * *

    Dear Prof. Crouch,

    Wow, posting has never been better! The extended columns are great. I think I speak for everyone (except maybe Mr. Six — he really liked his skull & crossbone) when I say, Thanks a bunch.

  20. There’s little point wasting cash on a pre-filing serach. Its very rare that actual 102 art comes up, inventors aren’t usually that much out of the loop that they are unaware of the relevant art. The rejections you end up fighting are 103. Who cares how you distinguished over your expensive prior art search results when the Examiner just makes up for the difference in his rejection by asserting it’s obvious.

  21. Dennis, Based on these comments and our own practice, I think it would make much greater sense to define Group II as IDS filed within 3 months. Nobody files an application and then performs a search but many put off filing the IDS until the deadline (never do today what you can put off until tomorrow).

  22. Dennis, I absolutely love this blog and it has been a tremendous help in keeping up with case law as well as sometimes providing practical tips. The studies are always interesting, even if (as in this case) they need some refinement–please keep it up. If there is public money going into this somewhere, I think it is very well spent.

  23. For an examiner, a great way to find references fast in EAST is while searching, if you see a ref that looks good, even if it is too new, do a forward/backward citation search. That will list all references cited in the particular case as well as all references that cited to that document. If I see a recent case that is relevant I also like to bring it up in eDAN to see what was submitted with that application. I would think that if most examiners are doing this it would lead to overlap of references among cases, because you are essentially piggy-backing someone else’s examination.

    Curious is right about the amount of art affecting the time to search. I find EAST and Google to be the most productive, and generally stick to those plus IEEE sometimes. But if I actually searched in every database for every case, I would have time to do a cursory 15 minute search in each at best.

  24. curious wrote: “I remember a patent practitioner telling me a year or so ago that he likes to make up his own technical terminology, which he then defines in his patent application. That way examiners will not be citing all sorts of nonanalogous art against him which they found using keyword searching.”

    Thank you, Curious. Informative remarks like that are one reason why I like this blog. Dennis might be in receipt of public monies. If, indirectly, they keep this blog vibrant, that seems to me a worthwhile use of public money.

  25. “Can you provide an example?”

    You can provide one to yourself! It’s easy. Pick a large manufacturer of pharmaceuticals. List all their patents. Select one. Look at the abstract. Pick out what appears to be the key terms. Now search the patent database for that manufacturer and those key terms. You should have a shorter list of patents. Look at the titles and see which appear to be the most similar. Then see which applications were examined by different Examiners. Look at the file histories of those patents and see what the different Examiners cited. Even though those applications are different, you’ll likely see the same refs cited because (drum roll) they share some of the same features.

    To put it another way: you really think Examiners do new searches for every limitation in a claim, even when they have a “go to” reference that they know works? Of course they don’t. To put it another way, for certain limitations, there are hundreds if not thousands of equally applicable prior art references that an Examiner could rely on. Does it matter at all if the references have different titles or authors?

    curious: “I remember a patent practitioner telling me a year or so ago that he likes to make up his own technical terminology, which he then defines in his patent application. That way examiners will not be citing all sorts of nonanalogous art against him which they found using keyword searching.”

    Yes, as we’ve seen, this is a tried and true method for getting claims past lazy examiners in overworked art units. When it comes to enforcing the patent, it is often the case that the patent is easily revealed to be a pile of crap.

  26. Applicants are paying the examiners to make prior art searches and the examiners are the expert searchers with accessible to the best search tools (supposedly).

    Examiners can also make the searches more economically than outside searchers and practitioners

  27. Public searcher DIP writes: “n increase in patent prior art from 5 million to 50 million references in only ten years.”

    Yes, the amount of prior art (and the amount of technical/scientific inventions) has exploded in the past ten years. And this means that if the examiner is going to do a good job, even with all of his computerized databases, that it is going to take him longer than in the past.

  28. Alun Palmer said: “Keyword searching may produce good art sometimes, but it produces a lot more irrelevant garbage”

    I remember a patent practitioner telling me a year or so ago that he likes to make up his own technical terminology, which he then defines in his patent application. That way examiners will not be citing all sorts of nonanalogous art against him which they found using keyword searching.

  29. Keyword searching may produce good art sometimes, but it produces a lot more irrelevant garbage. Worse yet, it produces garbage that contains the keywords, so an Examiner can argue that it reads on the claims when it is so remote in subject matter that no-one doing an old-fashioned manual search would ever have located it, or thought it relevant if they had. Sadly, there are some people out there in the private sector who do searches that are almost as bad as the ones done by the Examiners, by following the same technique.

    Nevertheless, I do recommend searches. However, I find that it is the large companies that forgo a search. Often lone inventors do want a search, as if the search shows that their invention is old they can cut their losses and move on, without spending all that money on prosecuting an application. Corporations seem to worry less about cost cutting and more about avoiding creating a record for discovery.

    However, presently I am doing mostly foreign origin work, and there are always IDSs filed at random times throughout prosecution, because there are always foreign office actions. Whether the foreign agents ever had a search done, nobody knows. Maybe studying the timing of the IDS can separate these out, but I suspect not. Probably you need to separate out domestic and foreign origin cases.

    As for continuations, the chances are that a pre-filing search will have covered all likely continuations and divisionals, because it generally won’t have been based on the claims, probably having been done before they were written. OTOH, an IDS filed early in a continuation is probably just all the art known from the parent case. Ergo, the relevant inquiry to find out if there was a relevant search is probably whether an IDS were filed in the first three months in the parent case, not the continuation itself.

  30. Dennis,

    I really don’t know if you can draw any strong conclusions about what the timing of an IDS means relative to the filing on an application.

    It may be a reasonable assumption to conclude that an IDS filed at the time an application is filed would indicate that a pre-search was performed on the application (duh), but I would look to see if the application is coming into the US from a national stage application (with the benefit of an ISR) or is just a plain old US priority filing without an ISR.

    What would really be interesting would be whether to consider if a particular author of an ISR (Europe, US, Korea, etc.) impacts the timing between the filing of an application and when it issues. Also, one can look to see if a US case has been foreign file in other countries using Inpadoc. Presumably, the party who does that would be citing the art from the EPO, Japan, Korea, China, and the like, as prosecution is going forward. From this, you could test to see if a case that has foreign counterparts would issue faster because once could assume that the foreign cited art would be brought to the attention of the patent office.

    On a completely different note, one could argue that actually two searches should be done for an application by an Applicant: a search before filing an application and a search after 18 months of filing (to catch any recently published art). Obviously, this is unrealistic because there is not enough time, money, and energy in the Universe to support this approach.

  31. (This is an instance where an academic (Prof C) really needed to go to the practitioners to verify assumptions behind a theory. I applaud Prof C for doing this.)

    Two points in response to the above:

    (1) When I file an application, I just ask the inventors if there’s any art they’re aware of, and file that art w/ the IDS within a few months of filing the app. If the clients wants to pay us to do a search, we’d be happy to–it just so happens that not a lot of clients seem to want to do that. mtn’s post from 5:19 hits it right on. And clients like to say, That’s what the search fee is for!

    (2) I’d also like to offer some evidence to agree with a poster from above who states that two Examiners may find completely different references and come to different conclusions: It occurs frequently that you’ll file PCT using the USPTO as the ISA, and you get a ISR that goes one way. And then you go national phase in the US w/ a different Examiner, and they go another way. (Typically, the ISR was favorable but you still get rejected in the first US OA.) Those are examples of an instance where an earlier search (performed by a “professional” searcher, no less) doesn’t seem to help all that much in terms of getting an allowance.

  32. “The experiment has been done a zillion times and you’re wrong, at least with respect to the grown-up art units.”

    Can you provide an example?

    BTW — don’t confuse “grown-up art units” with technology having consistent phraseology and uncomplicated claims.

  33. I have a very vested interest in believing that a pre-filing search equates to faster grant rate, but I don’t think this is true anymore. I think it was very true 10-15 years ago when patents were basically US-only and the PTO was a fifth the size it is now.

    Back then, there was a relationship between the applicant/prosecutor and the examiner based upon decades of dealing with each other. You did your search, filed specific claims, received relatively quick issuances.

    Now, the courts and clients seemingly push prosecutors to forgo searches and file broad claims. Examiners have gotten used to this and respond accordingly. It’s the rare app with a good pre-filing search, so examiners just assume it’s business as usual. (There are exceptions of course, like boutiques with one main client who really know the art and deal with the same art unit over and over.)

    And another reason for a disconnect between pre-filing searching and quick grants is the quality of searching. It has gone down hill dramatically! While the advent of semantic engines, relevancy rankings and free online databases has made it easy for anyone to perform a search, it has also made it very easy to do a mediocre job. Type a few key words in from your disclosure document and you can have 10 decent references in less than five minutes. Job done, check deposited.

    And this loss of quality in searching is particularly true with regard to examiners who are under tight time budgets, an increase in patent prior art from 5 million to 50 million references in only ten years, and very little reward for doing more than a mediocre search.

  34. “David Stein wrote; “I’d bet safe money that if you took any two examiners, sat them both down at a table with the same case, and gave them the same amount of time and tools… they would likely come up with few or no references in common.”

    The experiment has been done a zillion times and you’re wrong, at least with respect to the grown-up art units.

  35. Gideon said “It’s crazy waiting for the ISR to file known art”

    Gideon, it seems we work with very different clients and have very different levels of sophistication in our docketing software. Our largest client files with Art Units routinely issuing FAOMs (well) after 2 years of pendency. We almost always have the ISR by the time the response is due. At any rate, everything we have gets filed in an IDS with the response to the FAOM (yes, a 180-dollar fee is not much to these clients). This allows us to do a one-cut, well-informed claim amendment in an attempt to get something allowable. (and it seems to be working much better recently…?$?$)

    Our docketing software easily tracks all references that have come in, so there is little chance that something “gets missed.” (Although occasionally I do accidentally resubmit a reference cited by the Examiner in the FAOM – I hope this doesn’t annoy Examiners).

    All of this is to say that DC’s generalizations probably don’t reflect reality accurately enough to draw conclusions.

  36. David Stein wrote; “I’d bet safe money that if you took any two examiners, sat them both down at a table with the same case, and gave them the same amount of time and tools… they would likely come up with few or no references in common.”

    Sounds like this would make for a very good study.

  37. I agree with the above comment that an IDS filed with an application is often just citing the prior art art that the attorney or inventors were already aware of, NOT necessarily from a prior art search.
    Also, I agree with the comment that whether the IDS is filed with the applcation or filed a few months later is largely just a matter of corporate or firm practice, certainlly not due to POST-filing searches.
    [A later and SUPPLIMENTAL IDS is a different story altogether – chances are it is material art found after filing, and your stats need to take that into consideration,]
    As to the impact of an IDS on prosecution speed, I not only doubt it, I regret to say that on way too many occasions I have seen that the examiner has obviously ignored the IDS cited art because they instead cited art that is FAR LESS relevant or material to the claims than art in the IDS. That also leaves the applicant’s attorney in a quandry as to whether to try to point that out or not.

  38. Public funds were no doubt used to pay Dennis to have performed whatever work he performed on this study.

    It is beneath amateurish. He is a university law school professor, after all, with a science or engineering degree, and presumably some knowledge of research design.

    How could he, in good conscience, spend public funds on a project that yields no useful, or even accurate, conclusions? He knows or should know the obvious shortcomings, and to any ethical researcher, to waste valuable time and money on activites like this is unconscionable.

    Dennis, please refrain from wasting the public’s money, and engage in some scholarly work instead.

    This is a perfect example of one of the plurality of reasons the USA is falling further behind the ROW.

  39. I have been doing this for a couple of decades and I think you need to re-think your underlying assumptions about your data. Maybe with a lot of filtering, granularization, and metadata you can get to something more statistically relevant. The assumptions you have here just don’t work.

    The following are just a few larger examples of filers who fall into a bunch of categories that completely undermine your basic assumptions.

    For example, big tech co. with microinventions (insert memory manufacturer, software co, semicon processing co, routing co, spinal screw manuf., turbine blade co., amplifier co, etc. here) has a library of relevant material by the time they file. Some of it is from previous cases, some is from their inventors, some is from elsewhere. Most of them do not do a pre-filing search or do a cursory one. So their decision of when to file an IDS has nothing to do with search date.

    At the other end of the spectrum is the academic or high tech startup. They live and breathe the technology, know the latest papers, and can be a better source of art than any search. So you have to discount their data as well since the IDS date is not driven by search or no search.

    Next you have your “better mousetrap” company. They have a newer, better, improved whatsit (e.g., bicycle, transmission, transistor, catalyst, etc.). To know that it is better, they must know about the art that is not. A search might help but they should file an IDS even with no search.

    There are dozens more examples that show that an early IDS doesn’t mean a search was done.

    I’d say that of several hundreds of applications I’ve seen with an initial IDS, it is more likely that no search was done than that a search was done.

    The same goes for your post-filing IDS = no search assumption. Others have made this point. I’d add that a lot of the post-filing IDSs come from foreign searches, things provided in response to publications, product clearance searches, and information received in the inventors’ other applications – e.g., Office Actions. So the post-filing assumptions are off as well.

  40. Wow, I suppose I should have read the thread before posting!!

    Stein is correct about searches.

    OLD HAND wrote: “”””We often do a pre-filing search or know of art when drafting the app, but we never file the IDS until we at least have the ISR off the PCT. This allows us to file a single IDS and amend the claims in light of everything at once (if necessary).”””””

    Dude, how the heck old IS your hand?

    I’ve had more than one case ISSUE before we got the ISR back!

    Please tell me that, at least, you’re first-filing in the PCT! Even then, you could still be looking at 1 year to the ISR.

    It’s crazy waiting for the ISR to file known art, whether for the purpose of “filing only one IDS” or for “amending the claims if needed.” You’re telling me that you’re in the habit of filing a preliminary amendment 1 to 2 years after filing and after filing an IDS on the heels of the ISR? !!!!

    As a further matter, I very frequently already have a 1st Office Action in hand when the ISR arrives – that would apply to PCT 1st filings in various art units as well.

    Your theory is that you want the Examiner to prepare an entire 1st office action without knowing about art of which you are aware because the Examiner might issue new rejections over the ISR art?

    Oh brother!!

    And the main practice is to not file the IDS at the time of filing why? Because “there’s a lot going on?”

    For all of you young pups out there, I’ve got some great advice for you (i’ll be gone soon, so get it while you can!): ALWAYS file IDSs as soon as you are able. Endeavor NEVER to allow art to sit around. There are 100 reasons why a mistake can happen and that art you’ve left laying around for 12 months doesn’t get properly filed, or, worse in some ways, gets remembered after an allowance.

    If you let art sit around you are asking for a problem – it’s tough enough dodging bullets as it is – don’t give thow ammo toward the shooter!!

    File all known art at the time of filing. Prepping an IDS of fewer than 30 docs takes hardly any time at all given the EFS system and your ability to use PDFs to organize the art. If you can’t get it done with the filing, you probably need to reduce your docket size.

    If you don’t file with the original, in RARE cases, then file immediately thereafter. DO NOT let the art sit around.

    All of these “old hands” who have gotten into the lazy habit of “doing it later” are rationalizing why they are doing it – “more time, more organized later, more art comes up.” – it’s all smoke and mirrors.

    IDSs don’t cost fees unless you screw up. The practitioner time for prepping them is the same, or close, whether or not the references are filed in one IDS or in 3 separate filings.

    This is much like the folks who draft the description before they draft the claims – they’re doing it poorly, but they rationalize why it’s not a poor way of doing it, and, after all, that’s the way it’s always been done.

    Patent attorneys do a lot of things poorly because it’s the industry norm.

    One last thought – when you get the ISR in the mail, file the IDS in all related U.S. cases the same day.

    Once you get in the habit, and everybody around you understands that it’s the norm and expected, you’ll be surprised at how easy it is and you’ll look back and wonder why you did it any other way.

    And another thanks to the “old hands” out there for making it so easy for me to look good to clients.

  41. David Stein:
    “So what would happen if I take the “high road” and do a thorough search before filing? I’ll likely find some prior art that I *think* an examiner *might* consider relevant, and I steer well clear of it. But, as per the above, it’s examiner may well have not found that reference or regarded it as relevant.

    So what’s the upshot? I have just wasted a bunch of my client’s money AND written narrower claims for him than were necessary.”

    Do you really think there is value is issuing a claim that will not withstand interested scrutiny? I’m not thinking of getting a claim by the Examiner, I’m considering the motivated search of an accused infringer, whether in litigation or in the opinion they surely commissioned in response to a C&D letter. There may be a little heat to by derived from the friction of uncertainty – having a claim that should be narrower in view of some uncited prior art reference. But to a level or economic practicality, I’d much rather know what’s out there than not know.

  42. This is another easy one . . .

    Pro-se guys and, I’d guess, many of the “You invent it and we’ll get you a patent!” bottom-feeders don’t file IDSs because they don’t understand the value, if any, they don’t even know about them, or they don’t want to pay an attorney to do it.

    In my practice, most solo clients I have taken on are all shoestring guys who can barely pay the darn bill anyway, so they’re not going to go for the cost of a search and an IDS. The also don’t file PCT apps with foreign ISA designated, so no ISR with new refs for a 2nd IDS are required.

    The larger the client, the more likely they are to file IDSs.

    I think that the data can likely be explained in large part, if not entirely, by that trend.

    When the poop hits the fan, the solo inventor is going to fold much quicker than the institutional inventor, who will pay to have 3 RCEs filed on a dead or dying invention.

    In any event, the institutional inventor generally is aware of art even without a search, so an IDS would be generated without a search.

    It’s not so much about a practitioner covering his arse.

    IMO paying for a search is usually throwing your money away.

    In any case, if the client says he doesn’t have any relevant art and he doesn’t want to pay for a search, then my arse is completely covered anyway, so why would I care about an IDS?

  43. I believe that further granularization is required from the data in order to obtain draw conclusions with any meaning. For example, the analysis should provide data for intially filed patent applications for which no pre-existing parent application existed in which a search was conducted by any patent office on the globe. I would suspect that many of the applications identified as being filed with searches are children of parent applications in which an examination had already been conducted by a competent examining authority. These applications should be viewed differently from applications that are newly filed with only an applicant search being conducted.

  44. As with many of the posters above, it is my company’s standard practice to do a pre-filing search and to use the results of that search to adjust the claims accordingly. However, we find that examiners almost always disregard the references we cite and cite against the application irrelevant prior art. Prosecution then becomes dominated by rejections based on the examiner cited irrelevant art. We will not stop doing pre-filing searches as they do improve patent quality, but it has been the experience of my company that they do not lead to a better quality of prosecution.

  45. “Does anyone disagree with my conclusion that a pre-filing search was likely conducted in original applications with a same-day IDS filing; and that it is likely that no pre-filing search was conducted in original applications where no IDS was filed.”

    I disagree.

  46. Just because an examiner doesn’t find a reference, or doesn’t believe it to be relevant, does not mean that such a reference is in fact not relevant.

    Practitioners who stick their heads in the sand and advise clients to do the same will find that such an attitude will come back to bite them on the a$$ during litigation, actual or threatened.

  47. I have to add my voice to the chorus of those practitioners who do pre-filing searches but who wait until after filing to submit the IDS.

  48. “But, as per the above, it’s examiner may well have not found that reference or regarded it as relevant.

    So what’s the upshot? I have just wasted a bunch of my client’s money AND written narrower claims for him than were necessary.

    I love how the examiner not having found the reference helps, in the attorney’s mind, to justify claims reading thereon.

    Stein, if your moma knew anything about patent law she’d tan your hide.

  49. :shakes head: They still don’t get it, do they?

    “Many applicants do not conduct pre-filing searches – largely because of the up-front cost of searching and analysis.”

    Well, yes, there’s the fact that may billable rate is much higher than the working rate of the examiner. After all, the client is already paying for the search as part of the filing fee.

    But there’s a more important reasons why our searches tend to be scant.

    One of the great mysteries of patent law is the process that occurs between an examiner’s ears while searching. Frankly, I haven’t a clue. The stuff that examiners often come up with as anticipatory, obviating, or even “relevant” is just mind-boggling. I’d never have thought to look in such arcane places, leaps of logic about equivalents that I never would have made… it’s usually pretty random.

    I’d bet safe money that if you took any two examiners, sat them both down at a table with the same case, and gave them the same amount of time and tools… they would likely come up with few or no references in common.

    So what would happen if I take the “high road” and do a thorough search before filing? I’ll likely find some prior art that I *think* an examiner *might* consider relevant, and I steer well clear of it. But, as per the above, it’s examiner may well have not found that reference or regarded it as relevant.

    So what’s the upshot? I have just wasted a bunch of my client’s money AND written narrower claims for him than were necessary.

    – David Stein

  50. Dennis writes “Does anyone disagree with my conclusion that a pre-filing search was likely conducted in original applications with a same-day IDS filing; and that it is likely that no pre-filing search was conducted in original applications where no IDS was filed.”

    The same-day IDS filing could be simply the prior art of which the Applicant was aware (such as from related applications) and not be based on a search.

  51. “Does anyone disagree with my conclusion that a pre-filing search was likely conducted in original applications with a same-day IDS filing; and that it is likely that no pre-filing search was conducted in original applications where no IDS was filed.”

    Neither agree or disagree. It might be reasonable to conclude that for the purposes of this study, but it isn’t actually necessarily true. When I get same day IDS’s which include only the patent applicant’s work I’m not too sure how much I would believe that they did a search. Especially when I google the ind.

    “http://www.law.com/jsp/ca/index.jsp”

    Could someone with a sub send me an all text of that article? I’ll totally not squeal on you for copyright issues.

    examiner6k@yahoo.com

  52. I also seldom file the IDS with the application, regardless of whether a pre-filing search was conducted. There are enough things going on trying to get the application prepared for filing without taking on that additional step. Better to organize our thoughts and file a comprehensive IDS a few months later. Also, there are differing levels of pre-filing searches. Even if the applicant doesn’t authorize a pre-filing search, I typically at least do a brief on-line search to identify relevant patents, because it helps me in drafting the claims and actually saves the client money, in my opinion.

    As for the questions:

    1. Yes, I would think this is a reasonable conclusion. I can’t imaging a pre-filing search that did not turn up any references citable in an IDS;

    2. I think it is reasonable to assume that if an IDS was filed within three months of filing, some sort of pre-filing search was probably conducted. Alternatively, the application might be related or in the same field as other commonly owned or invented applications, in which case the IDS may be a citation of the prior art cited in that other application.

    I must admit that I do not always file the IDS within three months. IDS submittals often occur in bunches as workloads permit, particularly since pendency rates currently pose little risk of getting surprised by a first office action within the first year after filing.

  53. Thanks for these comments. I have a few questions.

    I want to form groups that distinguish between applications with pre-filing searches and those without pre-filing searches.

    Does anyone disagree with my conclusion that a pre-filing search was likely conducted in original applications with a same-day IDS filing; and that it is likely that no pre-filing search was conducted in original applications where no IDS was filed.

    For the pre-filing search group – Would the group retain its integrity if I looked for an IDS submitted within 3 months of the filing of the original application?

  54. I agree these groupings are not going to be correllated to pre-filing searches. We often do a pre-filing search or know of art when drafting the app, but we never file the IDS until we at least have the ISR off the PCT. This allows us to file a single IDS and amend the claims in light of everything at once (if necessary).

  55. I love the idea. But, like Mark and others, we nearly always search, and we seldom file the IDS at the time of filing. Thus, I think that the underlying issue with this analysis is going to be getting accurate data to crunch. I suspect there are too many variations in IDS/search practice that will render the conclusions inappropriate since they are premised on unwarranted assumptions.

  56. Like Mark, we also often file an IDS after the application is filed, even if we did a search.

  57. I’m not sure if our firm is one that would skew your data. We nearly always conduct a pre-application search, but while we always file our IDS within 3 months of filing, it hardly ever gets filed on the same day as the application itself. Does that mean we are in group 3 instead of group 1?

    If in group 3, I don’t see why our, perhaps unusual, practice would affect the timing of the outcome since we use the material we find in our pre-application search to craft the application, and the examiner has full access to the IDS info when he/she begins the examination process. My guess is we are being grouped with those who file IDS’s after examination has already begun.

    Perhaps, the data in group 3 should be divided into those with IDS filings after first action (group 3 proper) and those with IDS filings prior to first action; or group 1 should include cases where the IDS is filed within 3 months from filing and not solely those filed on the exact same day as the filing date.

  58. Like most statistical methods, the validity of a chi-squared analysis is dependent on the adequacy of the underlying data.

    Here, you are providing two chi-squared measures based on what appear to be two-point data sets.

    Although I respect the quality of your commentaries overall, and even agree with your conclusions based on intuition, your statistical analysis looks bogus and detracts from the rest of the post.

  59. Meanwhile:

    link to law.com

    “Reed Smith’s Craig Opperman has crunched some numbers and concluded that the real problem with low-quality patents comes from companies cutting back on both R&D and legal budgets.”

    Shocking!

  60. Since you requested suggestions, mine is as follows:

    Using your groupings of (1) no IDS; (2) IDS w/ application; and (3) IDS after application, identify the frequency of:

    (1) First action allowances
    (2) First Office Action including allowable claims
    (3) Actions that used the art cited in the IDS

    The question that you want to determine is “does a pre-search accurately gauge the state of the art so that an applicant can draft allowable claims at the time of filing?”

    If applicant’s search was able to accurately gauge the state of the art, then the claims should be allowable at the very beginning. However, if applicant’s search missed a key reference, then the claims would be still be rejected (although perhaps being allowable sometime after further prosecution).

    A pre-filing search that dissuades a potential application is good, for both the applicant and the USPTO. However, such a search need not (and would not) be submitted to the USPTO.
    A pre-filing search that leads to a first action allowance is a good (albeit not perfect) indicator that the search helped applicant draft allowable claims.
    An Examiner using art cited in an IDS is a good indicator that the search produced the “best” art.
    However, if an IDS is cited, and (i) the claims were not initially allowed and/or (ii) the cited art was not used by the Examiner, then this is a very good indicator that the search was not helpful to the USPTO in determining patentability.

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