Priority Claims in Issued Patents

Patent families continue to grow. With the increasing popularity provisional patent applications, most issued patents now claim priority to at least one prior patent filing. I created a database of all priority claims for non-reissue utility patents issued February 14, 2006 – February 17, 2009 (Pat. Nos. 7,000,000 – 7,493662). In fact, only 31% of the patents have no listed priority claims. For the graph below, I looked at the earliest listed priority date (one for each patent) and then categorized those according to the type of priority claim. 40% of the earliest claims were to foreign patent filings, and 18% claimed earliest priority to a provisional patent application. The remaining 11% earliest priorities reached back via US continuations, divisionals, and continuations-in-part (CIPs).

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22 thoughts on “Priority Claims in Issued Patents

  1. 21

    “does famoose = notorious? Do you understand the distinction?”

    I could only wish I was notorious. One is only notorious when one has actually done something worthy of notoriety. Your hyperbole doesn’t make it so :(

  2. 20

    “Do not suggest that you are also posting under my name. That is a lie.”

    I know, I’m so bad >:)

    “We can not wait until you leave to the other side. ”

    Like I said, you’ll have your fringe groups. They think they’re “edgy”.

  3. 18

    6,

    Do not suggest that you are also posting under my name. That is a lie.

    As I, and many other examiners here & elsewhere have said, your posts show the worst of examiners and attitudes. Rather than acting like a professional or trying to actually do the job correctly, you show yourself to fit in well with the reject mentality of so many newer examiners. We can not wait until you leave to the other side.

  4. 17

    “DC: Most patents now have “families.””

    I’m sorry, is this a newsflash? Patents have always been filed as part of families.

    With all due respect, it’s as if every time the good professor learns something new about patent law (that has existed long before he came on the scene) there is a pronouncement or a notion that somehow there is a discovery of a “new” behavior of patent law itself, e.g. patents “now” have “families.”

    Instead of thinking that newer is better, or thinking that your observations or idea about how things should be done has never been observed, thought of, or tried before, or that you are the first one to make an observation about patent law, remember that patent law has been around for a long time; smarter minds than any of ours have gone before us. Heck, they sent a man to the moon using slide rules…

    I am sometimes embarrassed at the amount of ignorance in the profession today and the arrogance that goes with it.

    Just look at 6.

  5. 16

    Incidentally, the PTO claimed (in the Final Rules) that 29.4% of all filings in 2006 were continuation filings, excluding divisionals. Whether or not that number is accurate, it is not inconsistent with Dennis’s figures. For what it’s worth, however, the Final Rules also included a claim that only about 3% of all applications and RCEs in 2006 would have been affected by the new continuation rules. Thus, even the PTO admits that the serial continuation problem is not that big.

  6. 15

    I’d be curious to see this broken down by technology (class or TC). I’m pretty sure I see a lot more than 40% of my cases with foreign priority claimed.

  7. 14

    Some folks are getting confused here – The graph relates to the earliest priority claim for each patent. Many of the foreign & provisional cases also contain continuations that do not appear here. I’ll do another run of the data later this week to try to capture that scenario.

  8. 13

    Les, are you sure you read the stats aright. I had thought the 11% figure was for those cip’s divls etc that lack any claim at all to a prio date which is Paris or pro. I suspect it is dwarfed by all those cip’s etc that do track back to a Paris or pro as earliest basis date.

  9. 12

    “So, 11 percent of 69 per cent of applications or call it 7 percent of all applications are continuations. With even fewer being second or beyond continuations.”

    That’s not even close to being correct. You might want to go back and read the post again, as well as the first two comments.

    Given the data above, the most we can conclude is that somewhere between 11% and 69% of all applications are CONs, CIPs, or DIVs.

  10. 11

    So, 11 percent of 69 per cent of applications or call it 7 percent of all applications are continuations. With even fewer being second or beyond continuations.

    Well, we can sure see why the “final rules” are necessary.

  11. 10

    Keeping at least “one still in the oven” [a longer-pending divisonal or continuation of the same spec] is particulary desirable because of an en banc CAFC decision some years ago holding that extensively re-writing original claims to cover later developed products of others [aka “cat bird seat” “late claiming” patenting] is perfectly OK [if you have 112 support for it, or the examiner does not check for that]. That is even more important in view of current CAFC claim-naorrowing trends. Whereas you can only do that AFTER a patent issues by a broadening reissue, ony within two years of issue, and subject to PTO delays.
    Of course this technique is greatly enhanced [exacerbated] by the PTO’s massive failures to examine applications in proper – priority date – order.

  12. 9

    6,

    does famoose = notorious? Do you understand the distinction?

    4Mark,

    Interesting thoughts – I know my clients believe a portfolio is more valuable when it has live applications, that can be mined for additional inventions within their disclosure. I would posit that “legal uncertainty” has less to do with the motivation than maximising protection of what has been disclosed.

  13. 8

    We learn that “most patents now have families” do we Dennis. Did we not know that before? If corporate filers are logical, they file what they’ve got at the start of the Paris year and then file again at the end of it, to cover what they’ve done in the meantime. I bet if you were to do the same survey on EPO filings you would get to the same result.

    What interests me is the proportion of patents that issue off of a divl, contn or c-i-p filing. I suspect that has gone up, in recent years. The EPO thinks so. It doesn’t do continuations and c-i-p’s, but it is currently engaged in a witchhunt against belatedly filed divisionals, seeing them as a burgeoning plague, against which stern counter-measures have to be taken. In years past, however, it took an increasingly benign view of divisionals. What has changed minds within the EPO is the perception that Applicants abuse the freedom to file divisionals, in order to “have something pending”, whenever possible all the way to the expiry date, and so maintain legal uncertainty, all the way through to the end of the 20 year term. Now where did that idea come from?

  14. 7

    What can I say NAL? I’m famoose. There’s always your fringe elements that take a dim view of you when you’re famoose.

    You might want to inform the poor schlob that he’s wasting his breath trying to convince you and Gene that there is a non-occult, non-conspiracy answer as to why the allowance rate went down. It was all Dudas’s fault! It was the horrible policies! Prior art was never an issue! Overhiring was never an issue! Etc. etc.

    By all means, don’t drop out of the conversation now that he bothered to cite some (weak?) evidence against your position. Surely you can overcome anything as insignificant and inconvenient as some pertinent facts. Lord knows you probably do it on a daily basis arguing against valid prima facie cases.

    Logan

    (lol)

  15. 5

    What do we learn by having these stats? I liked the one that showed if you have an interview with the examiner before the first office action, there’s a much higher acceptance rate (but maybe that’s because the client is willing to pay for more in general?), but I’m not sure what this one tells us…

  16. 4

    Dennis, this is interesting data, with the caviat noted by “Claimant.”

    I’m also glad to see more detailed legal factual rebuttals like those in the above hotlink by “Noise above Law” to some of the often reactionary allegations pontificated on that “IPWatchdog” blog, especially since it claims to be the number 2 IP blog. [Not that some of the comments on this blog do not, at times, rise above mere hostile childish ad hominum “shoot the messenger” attacks either].

  17. 3

    A little off topic, but you gotta love two examiners duking it out at the IPWatchdog and throwing insults by comparing one to 6:

    link to ipwatchdog.com

    “Lastly, PLEASE do NOT insult me by comparing be to 6K. He is an insult to examiners that know how to properly examiner cases, as well as the PTO as a whole.”

  18. 1

    Hmmmm. I’m betting that a significant portion of continuation and divisional claims got ignored because of an earlier foreign or provisional claim. Also, I assume PCT claims / national stage apps were all lumped into foreign claims?

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