In 2009, the United States Patent & Trademark Office (USPTO) issued 167,349 utility patents at an average rate of 3,218 per week. Since then, the PTO has significantly picked-up-the-pace. The chart below shows the average number of patents issued per week for January-April 2010. In April 2010, the USPTO issued an average of 4385 patents per week. The April figure represents a more-than 35% increase from the 2009 weekly average. If the April 2010 figures hold for the rest of 2010, we should expect about 220,000 issued utility patents for the year. That 50,000 year-to-year increase in patent grants for 2010 would represent the largest single-year jump in history.
89 thoughts on “USPTO News: Patent Grants up 35% over 2009”
Whether the increase in patent grants is due to Kappos’s strenuous efforts to improve efficiency, the economic upswing, or other factors, this is good news. However, let’s hope that the jump doesn’t come at the expense of quality patents. All the progress made toward improving the patent law system will suffer a setback, if a glut of junk patents ties up the system with patent enforcement lawsuits over bad patents.88
If the claim is to a true combination, the number of references should normally not exceed 1 (or 2 given US requirements to prove everything.)
Why? If there’s a clear rationale in the prior art for combining seventeen references, isn’t your claim just as obvious?
B-b-but my method provides a s-s-store with th-th-thirty-two flavors!
Dang. And I found every last one in the prior art too, except for Cinna-gistic Effects.87
We should respect otehrs and stop violating patent laws.86
B-b-but my method provides a s-s-store with th-th-thirty-two flavors!85
Paul, excellent post that about combinations. If the claim is to a true combination, the number of references should normally not exceed 1 (or 2 given US requirements to prove everything.) If, however, one aggregates a number of elements that do not cooperate in any unexpected manner, then the number of reference could grow to match. But the real problem with claims to what I call a “parts list” is not novelty, but a failure to particularly point out an invention under Section 112, p. 2.
It would be nice if the Office could force applicants to place the “old” elements into a preamble so that the novel elements could be as few as possible. I suggest to the interested examiner that such a use of Section 112, p. 2 could reduce the number “novel” elements and thereby the number of references needed to reject.
Just for the example, consider a claim to a novel combination of A + B, where for the sake of making it difficult on the examiner, I add in conventional elements C, D, E, F, and G; and perhaps add in I, J, and K new elements that have nothing to do with A + B. If the examiner is on his toes, he could say the additional disassociated or conventional elements will be treated as if they were old and old in that combination for the purpose of examination of the prior art; and add in a Section 112, p. 2 rejection for good measure.84
Can’t speak for other areas, but in the financial area–business methods patents, Class 705–the increase has contained a substantial amount of trash. Methinks the patent examiners in the 705 area (1) have not read Bilski and (2) have little feel for the enormous amount of pertinent prior art.83
B-b-b-but IANAE, at l-l-l-least you l-l-l-listen.82
B-b-but the nuts in m-m-my ice cream are cut into h-h-exagons!
Hex nuts in your ice cream? That’s actually pretty inventive.
IANAE, if the examiner goes over two, I would suggest that the additional references must internally suggest their use in combination with one of the two main references. No KSR’ing all the additional references. But this is what Gorman actually stated, did it not?
That is not at all what Gorman stated. Gorman stated that the number of references is not relevant at all. It follows, I would think, that the reason for modifying/combining is independent of how many other references you’re combining it with.81
Thanks Paul. Good idea to use the notation “n”. I suspect that it provides a good defence for most of the instances when a USPTO Exr cites a plurality of references against a single claim, and you point out that this has been good law in the US for a hundred years or more.
But perhaps, ladies and gentlemen, I am missing something here.80
Since there is not enough information to answer the question with certainty, then E is probably the best answer. I’ll give you an example to illustrate.
Presume the product is a widget consisting of A+B+C+D+E+F+G and the claim in the product peddler’s patent that “literally covers” the product is for a widget comprising A+B+C+D+E. The patent does not disclose F or G, and F and G were added to the product later. Consider that another patent is filed after the product peddler’s patent was filed and that it issues with a claim to a widget comprising C+D+E+F+G. This is an example where the product can infringe another’s patent even though another patent that was filed earlier “literally covers” that product.
Now you might argue that “literally covers” has some special meaning that every single feature of the product is recited in the claim. But I am not aware of any such settled definition for that phrase, and it’s an unrealistic situation in my experience. So I am interpreting “literally covers” in view of the way we look for “literal infringement,” in that every element recited in the claim is present in the allegedly infringing product without having to resort to an equivalence argument.
However, there are circumstances in which one of your answers might be correct, such as if the claim in the product peddler’s patent used “consisting of” instead of “comprising.” In that case, assuming the product peddler’s patent claim is fully enabled, and the claim “literally covers” the product, and the claim is valid, then one of your answers A or B might be correct. However, those are an awful lot of unstated assumptions one would have to make to get to one of those answers as being correct.79
“No KSR’ing all the additional references.”
B-b-b-but you c-c-c-hanged the r-r-rules.78
In reply to your question, Max the legal consequences of absence of a new result flowing from the features of the claim, as explained by Lord Hoffmann, are that:
(a) evidence of new result to support a finding of non-obviousness is not available; and
(b) novelty and non-obviousness of the claimed elements can be considered individually or in groups because those elements do not form a true combination.
There are many US Supreme Court opinions going back more than 100 years that support this analysis.
So if the claimed subject matter is not a true combination and merely associates n inventions or groups of inventions (n > 1) then it is legitimate to cite at least n references. But if we have a true combination then the position is as explained in earlier postings.77
“I’m not arguing that. I’m arguing the opposite.”
It sure doesn’t seem that way. I’m all for claims that should be rejected being rejected, and claims that should be allowed being allowed. However, many comments from you seem to indicate that you want more patents rejected, and you really don’t care about the means.76
Paul what about “partial problem” situations, like the cooking hob case, SABAC or something. I would think that citing more than one reference is proper then.75
Go to the Official Gazette and click on “Patent Technology Centers.” There you will find the current average date that the various Tech Centers are acting on (it’s not a pretty site). I don’t know if I can post a link but I will try:
Unfortunately, it is only the AVERAGE so your actual mileage may vary…(I know I have applications pending BEFORE those published dates, in one case more than a year before…)
A friend just advised me that he had an application go through 12 Office Actions (without any RCE’s) before receiving a Notice of Allowance73
Claim, ice cream selected from a group consisting of [thirty one flavors, listed].
To reject this claim, the examiner needs but one of the flavors.
IANAE, if the examiner goes over two, I would suggest that the additional references must internally suggest their use in combination with one of the two main references. No KSR’ing all the additional references. But this is what Gorman actually stated, did it not?
So the Guidance would be to strictly construe Gorman.72
B-b-but the nuts in m-m-my ice cream are cut into h-h-exagons!71
One reference at a time plus common general knowledge.
Cite one or more patents in support of the common general knowledge, and you more or less have the US system.
It’s pretty rare that the US examiner actually needs to cite the second or subsequent references other than to satisfy the agent’s insistence that every feature be clearly shown in the art. At least, in my experience. But cite he must, and if the applicant claims 31 flavors of ice cream he will act suitably surprised when the examiner must combine 30 references to render his claim obvious. Deliciously obvious.70
Paul Thou shall not count to two. Three is way out. I still think that three or more is pushing things even in the US.
It depends on the claim. Please don’t make me spend time proving this to you.69
Combining references is an interesting thing.
It seems from KSR that the Supreme Court has given approval to combining references, at least in some circles.
So does the EPO, the JPO and many other examining offices.
But the UK courts will not let you do that. One reference at a time plus common general knowledge. Not two references in combination unless it can be proved that it was obvious that those references could be combined (which in practice is almost impossible to prove). Still does not prevent the courts from finding a fair proportion of patents invalid. I have spoken to senior judges and the idea of combining references is anathema to them.
In Australia statute law now substantially coincides with practice in the UK.
So in England to one shalt thou count. Thou shall not count to two. Three is way out. I still think that three or more is pushing things even in the US.68
Seems to me the question was worded such that an answer requiring a “but only if” qualifier is a wrong answer. The exercise was to identify at least one “but only if” condition for each of A, B, C.67
Even post-Dudas I have had an Examiner tell me that her SPE won’t let her allow anything. Obviously I won’t name names, as a SPE like that would probably find some way of firing her.
As for Huey, there is a reasonable argument that the answer should be A, but only if the patent application disclosed everything about the product, and I’m not sure it was worded that way. Did you repeat the question verbatim?66
Some examiners under the prior administration were hesitant to allow clearly allowable cases. I guess things have changed.65
Their combination was completely and totally obvious, according to hindsight.
We already know hindsight is not a valid reason to combine.
That doesn’t mean that there’s anything wrong with combining 27 references, just that you can’t use hindsight to do it.64
Yeah, the electric light was obvious, was it not? An evacuated chamber, two supporting electrodes and a filament strung between made of tungsten. All of these existed in the prior art. Their combination was completely and totally obvious, according to hindsight.
Here is a reference that shows how to evacuate a chamber — if that is what one wanted to do.
Here is a reference that shows two electrodes. But why make them long and rigid? Uh? Let me see if I can find that.
Here is a reference that shows tungsten does not easily oxidize. But why is that important?
Ah, lets now combine them according to the claim, and voilà, you have proven the claim obvious.
Ned: Now read the Gorman case, cited by the MPEP, and see if there is anything in there inconsistent with “ordinarily.”
Well, there’s the bit where they say the number of references is not the criterion: “The criterion, however, is not the number of references, but what they would have meant to a person of ordinary skill in the field of the invention.”
And also this: “In other instances, on other facts, we have upheld reliance on a large number of references to show obviousness.”
The general rule is that the number of references is not relevant at all to patentability. It’s pretty clear that combining numerous references does not make a rejection “ordinarily” unfounded, especially if the examiner has articulated a reason for combining them.
Ned: What happens when the examiner is combining more than one reference he is using the claim itself as a roadmap. He is using hindsight.
If he’s using hindsight, say so. Gorman makes it very clear that hindsight reconstruction is not allowed, and the reason for combining the references must exist in the prior art.
Which kind of makes me wonder why you’re reaching back to 1935 to support some sort of presumption that combining references (even “more than one”) implies hindsight.62
IANAE, what is it about the English language that stumps you and ping. I said, “ordinarily.”
Now read the Gorman case, cited by the MPEP, and see if there is anything in there inconsistent with “ordinarily.”
What happens when the examiner is combining more than one reference he is using the claim itself as a roadmap. He is using hindsight.
See, e.g. B.G. Corp. v. Walter Kiddie & Co., 79 F.2d 20, 22 (2nd Cir. 1935)(Hand, J.)61
“There are lots of wrong ways to arrive at an answer of “none of the above”.”
Ahhh, but there is only one way to arrive at F. And it is the true path to knowledge.60
But he already said he thought it was E so I’ll give him the benefit o the doubt.
Yes, but I don’t think a “yes, it’s E” is going to teach him anything. Had he explained how he concluded it was E, it would have been far more instructive to be able to discuss his actual reasoning. There are lots of wrong ways to arrive at an answer of “none of the above”.59
“If he doesn’t know how to arrive at the answer, he’s going to have problems this evening.”
That actually is the real issue. But he already said he thought it was E so I’ll give him the benefit o the doubt.58
xmnr, two things:
1. Just because the board upholds it doesn’t mean it’s over.
2. You’re right, the substance matters most. The problem is when the Ex throws out 5 unrelated references each showing one of your five elements, then writes, “It would be obvious to combine references 1, 2, 3, 4, and 5 for the purpose of (insert the purpose/benefit of the invention here).” That’s clearly canned dudas to anyone with half a brain, and that’s what we’ve been seeing for a long time now. Obviously, if you have a spork with a knife edge, it would be proper to combine knife, spoon, and fork references. However, a spoon reference with a knife reference with a reference using the word fork in the context of the front fork of a bicycle doesn’t cut the mustard but would surely be issued in a heartbeat.57
shhh Malcolm, we really should feel sorry for poor Ned. At one time I am sure he was a great lawyer.56
Ned It would be nice if the commissioner would issue some guidance that if it takes three or more references to reject a claim, it should ordinarily be allowed.
Speaking of making stuff up and not following the law …55
I DID know how to arrive at the answer (I said the answer was E), and simply wished to check my result.54
7: Don’t argue for having examiners ignore the law so as to not issue patents.
I’m not arguing that. I’m arguing the opposite.
This is why I refuse to believe you’re a lawyer
This is why I know you’re a dumbxss.53
“So each of them is now allowing about 1.5 applications per biweek, up from about one per biweek last year?”
More like one allowance per quarter to one allowance per month for me. Reasons for allowance? Nothing really, except that claims spanning multiple pages are too cumbersome and RCEs yield dimishing returns for counts.
Chris is spot on with the production system change allowance blip.
I’d be quite worried about the end of quality=reject regime, since those Examiners and AUs that mail out crap rejections are now issuing crap allowances.
Also, who cares how many references are used in a rejection? The board has affirmed 10+ reference 103s. It’s the content of the rejection that matters most, not form.52
By the by the answer is E hands down.
The answer is no help to someone studying for an exam. If he doesn’t know how to arrive at the answer, he’s going to have problems this evening.51
It would be nice if the commissioner would issue some guidance that if it takes three or more references to reject a claim, it should ordinarily be allowed.
The MPEP currently states the exact opposite, and relies on Federal Circuit caselaw in support of the proposition.50
“Thanks for all the comments guys/ sorry to hijack the discussion. I am a student, not a teacher, and I am reviewing or my exam which is today at 6 pm.”
By the by the answer is E hands down. Anyone telling you differently is retarded.
However, if you had: F. on the other end of their gun. Then F would be the correct answer 99% of the time.49
The point above about numbers of references being needed to reject a claim is a good one. It would be nice if the commissioner would issue some guidance that if it takes three or more references to reject a claim, it should ordinarily be allowed.48
Thanks for all the comments guys/ sorry to hijack the discussion. I am a student, not a teacher, and I am reviewing or my exam which is today at 6 pm.47
ping likes to run, but he can’t hide.
Can you, ping, actually demonstrate that you know something about patent law? Please answer the question posed in the Therasence thread:
Solely using Rule 56, please give me the elements of proof necessary to prove a non disclosed reference is material.
[From the Therasence thread discussing Avid.]
I will give you a little help. Here is the rule itself. What are the elements?
- “(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim.
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.”46
“That’s too bad. We don’t more shxtty patents.”
If you want stricter standards on patentability, argue for that. Don’t argue for having examiners ignore the law so as to not issue patents. This is why I refuse to believe you’re a lawyer — I can’t imagine a lawyer caring only for the ends and not the legal means.
By the way, do you think that only “shxtty” patent applications suffered under Dudas? To quote 6, LOLOLOLOLOLOLOLOLOLOLOLOL.
I had some narrowly drafted claims directed to cutting edge technology (not software) repeatedly wrongly rejected over and over for a certain client. The examiner would twist references quite unfairly and stitch together 4-5 references to make the rejections. Then they’d stick with them. Appeal, re-open, send new crap rejection, repeat.
Those cases have all since been allowed under the new administration.45
“Any fees overages go into the general fund.”
What about fee SHORTFALLS ya tard? Maybe you didn’t hear, but we had a bit of a budget crunch here at the office last year.
How many times do you need this explained to you ya rere?
“The bump is a reflection that examiners are now actually allowed to allow cases, and aren’t punished for doing so. ”
To my knowledge there is no actual evidence of this that I’ve seen. Even anectdotal. Quality=reject was a figment of your imagination.44
The bump is a reflection that examiners are now actually allowed to allow cases, and aren’t punished for doing so.
That’s too bad. We don’t more shxtty patents.43
“Maybe the bump in issuances reflects all the applications with better claims that were filed in the immediate wake of KSR.”
No. The bump is a reflection that examiners are now actually allowed to allow cases, and aren’t punished for doing so. The “quality = reject” culture of Dudas is finally fading, thank god.42
Paul, I have had the experience you describe. Now that they’re allowed to allow cases, I’ve had some of my continuous prosecution cases go to allowance with few changes.
The allowance rate will drop back after this bolus passes.41
6, you’re still talking nonsense. The office has a BUDGET SET BY CONGRESS. Any fees overages go into the general fund.
Let me know how many more times you need this explained to you. Maybe you’ll pick up on it eventually.40
Maybe the bump in issuances reflects all the applications with better claims that were filed in the immediate wake of KSR.
TJ, on reflection, I am sure you are right. What fooled me was:
1. the opening words: “Question for my patent law class:” instantly gave me the impression that the class belonged to the writer
2. the suspicion that the demand from students for a basic grounding in patent law is outstripping the supply of competent persons already employed to teach law or business.
So, student huey90, if you are still tuned in, was it worth checking in this blog? If it’s any consolation, it is well-known to be difficult for those new to patent law to distinguish reliably and confidently between what a claim “covers” and what a document “discloses”.38
“Wonder why no Bilski decision yet.”
Maybe ’cause every Justice is writing a seperate concurrence or dissent?37
“How many applications does an examiner examine every two weeks?”
How much wood does a woodchuck chuck sir?36
Let’s be absolutely clear guys, I’m saying that it is bogus that the office’s allowance rate swings based hugely upon its need for $.
Furthermore, another reason for this swing is the rush for people to get allowances out before the new count system started. It seems (from the POPA vote) that around 35% of examiners actually understood the changes the new count system would bring before it went into effect (more and more of them begin to realize, after the fact, how it screws em lol, they’re all rather funny to listen to). Those 35% all knew to get out any allowances on their docket ASAP before the system went into effect. If you look at the actual numbers for bi-weeks I bet you 10000$ that there is a HUGE jump in allowances immediately before the count system changes took effect.
There will also be a small increase due to the being able to initiate interviews and take an hour for doing so as well as the new count system’s pressure now to not let a case go to RCE and instead rush it through.35
If we assume that there were applications held up in the USPTO on somewhat flimsy pretexts because of examiner concerns about the review process, it is natural that with a change of regime there could be a rush of the better cases through the examination system towards grant.
If that theory is correct, it does not follow that the increse will be maintained indefinitely.
It is understood that revised examination guidelines are in the course of preparation. It is hoped that these will make it easier for the USPTO examining staff to distinguish between the good and the bad cases.34
There are about 6000 utility examiners, right? So each of them is now allowing about 1.5 applications per biweek, up from about one per biweek last year?
How many applications does an examiner examine every two weeks?33
Wonder why no Bilski decision yet. Makes you think perhaps it isn’t going to be a quick “affirmed, MoT is the only test.”32
This is pretty basic stuff. Examiners would get less credit for allowing a case today than they did get for allowing a case in February. Notice how the biggest jumps are from Jan to Feb and Feb to March.
It only makes sense for the examiners to push out any case that is near allowance in Feb. to get more credit for it. Then the patent issues in March. OR, the PTO corrects the examiners mistake in the action, or the attorney files new papers and corrects the oath, corrects the drawings, files a new IDS or 312 or whatever other minor tasks need to be done, and the patent issues in April or May.
It will be interesting to see how the number of allowances changes over the course of 2010. The change in RCE counting policy should definitely tend to increase prosecution times – but will it also increases allowances? Time will tell.31
“That 50,000 year-to-year increase in patent grants for 2010 would represent the largest single-year jump in history.”
Would also be worthwhile to know whether 50k would also represent the largest percentage single-year jump in history.30
No Bilski today.29
The April figure represents a more-than 35% increase from the 2009 weekly average.
I don’t suppose there’s any seasonality to patent grants? There probably isn’t, but you never know.28
Who wins during this “highest issue rate in history” time?
@alternativeview said attornys are making less money
examiners are getting less counts (less counts = more cases needed = more allowances. If we thought Examiners made bad rejection before, are we confident they all of a sudden are making good allowances?)
applicant’s are paying for allowances that might not have been an allowance under Dudas (some might not be worth the bandwidth required to electronically file)
other inventors are now at greater risk with more patents being issued (possibly some that are borderline??)
IP portfolio vs IP portfolio litigation costs everyone $$$
Should more attorneys look toward careers in litigation?? Seriously, whats the positive side here? (can both sides comment without having a pissing contest?)27
I really think its E, but wanted to double check…
Can you come up with counterexamples for A, B, C? Remember, they can be as contrived as you like, and you must bear in mind the difference between what is disclosed and what is claimed (and what is in the product).26
… and the pendulum swings the other way … back and forth it goes.25
Where am I going wrong here?”
That’s easy Maxie, you are a blimey Brit.
You sound like the mysteriously MIA NAL with “the classic scope of patent rights DO NOT give you the right (you forgot to say (r)ight) to practice” as opposed to the negative rights of exclusion.
Hey 6, NAL is coming for you again.23
It’s a trick question. The “therefore the product cannot infringe” portion is an overstated assumption that is not supported. One can obtain a patent which literally covers its product, and still infringe the claims of a patent owned by another party. The better question would be explain how.
Only the answer C addresses this and the others are geared to other concepts such as absolute priority and the on-sale bar. Just an observation.
And while I would tell you to not worry about TJ huey, he is right about both the honor code and accepting blog advice. You might confuse IMHO-Ned law with the real stuff (and you don’t even have the benefit of the reds, the greens and the blues).22
“Your client has a patent which literally covers its product, and therefore the product cannot infringe the claims of a patent owned by another party”
Wrong assumption. Just because your patent literally covers your product doesn’t necessarily mean that the product doesn’t infringe someone else’s product.
This is a classic example of a misunderstanding regarding the scope of patent rights, which DO NOT permit someone the right to practice a patent — only to exclude others from practicing the patent for the same reason — just because you have a patent doesn’t mean the practice of your patent doesn’t infringe someone else’s patent.21
“How exciting it must be for everyone involved.”
Not really, that means a lot of patent attorneys are losing revenue because they don’t get a chance to appeal/response to lousy office actions.
A LOT more money can be made responding to office actions than paying issue fees.20
MaxDrei, I find it surprising that you automatically assume that huey90 teaches the “patent law class.” I would have expected that the much more plausible assumption is that he is a student in that class. You seem a little too eager to indulge in your anti-professor bias.19
Is it just me, or do I detect in huey90’s question an inability to distinguish between what is disclosed and what is claimed, ie, novelty and infringement? Now if this were a new trainee in a patent law firm, that would be unremarkable. But I gather that huey actually teaches patent law.
If that is so, then huey, teach me please. Where am I going wrong here?18
kappos ftw. 6 and MM ftl.17
Now I get it Ned.16
Given only these choices, E is the best answer.15
huey90, I am sure every law school in the country deems getting online help for a take home exam a violation of the honor code. More importantly, can you really trust anonymous comments on a blog? As an aside, the question is rather ambiguously drafted, since I cannot tell whether “filed after . . . ” refers to the filing date of the other party’s patent or the claims in that patent.14
Question for my patent law class:
Your client has a patent which literally covers its product, and therefore the product cannot infringe the claims of a patent owned by another party:
A. filed after the filing date of your client’s patent
B. filed more than one year after the filing date of your clients patent, but before your client began selling its product
C. since your client has a patent covering its product, it cannot infringe the patent owned by another
D. All of the above.
E. None of the above.
I really think its E, but wanted to double check…13
I told you guys, PTO needs $, PTO grants patents. So bogus.
I’m sorry six, you’ll just have to pass that claim to issue, even though you found all the limitations strewn across four references (except for two limitations you could only get by inherency and one that you ignored because it was functional language). Oh the humanity, to have such an obvious junk patent floating around out there.12
…if you are trying to say something other than the obvious that quality does not equal either a pass or fail rate.11
That 50,000 year-to-year increase in patent grants for 2010 would represent the largest single-year jump in history.
How exciting it must be for everyone involved.10
Peterlin’s wiser older sister.
Please explain. I do not understand what you are trying to say.9
anon, I know the contrary was popular during the Dudas administration, but actually:
quality =/= allowance rate
or, if you like:
quality =/= rejection rate8
4) How much of this can be traced to RCE’s that “would have been” had the incentive system not been changed?7