Timing of the First Office Action on the Merits

The average US patent issues about 3 ½ years after filing. The bulk of that time can be assigned to the initial examination queue. When USPTO officials refer to the “backlog” of patent applications awaiting examination, they are typically referring to the 600,000 or so applications that have not yet received any substantive consideration. For any given patent application, the backlog delay ends when a patent examiner issues a first action on the merits (FAOM). In the vast majority of utility applications, that first action is an initial non-final rejection of the originally filed (or preliminarily amended) claims. However, in a small percentage of cases the first action is a notice of allowance.

Based upon USPTO reports in the Official Gazette, I created the following chart considers the timeline for receiving first-actions across the various technology centers and art-units within the USPTO.

The USPTO patent examination corps is divided into a number of technology centers, and each technology center is sub-divided into one or more art units. The technology focus of each tech center is listed below.

  • 1600 – Biotechnology and Organic Chemistry
  • 1700 – Chemical and Materials Engineering
  • 2100 – Computer Architecture, Software, and Information Security
  • 2400 – Computer Networks, Multiplex communication, Video Distribution, and Security
  • 2600 – Communications
  • 2800 – Semiconductors, Electrical and Optical Systems and Components
  • 2900 – Designs
  • 3600 – Transportation, Construction, Electronic Commerce, Agriculture, National Security and License & Review
  • 3700 – Mechanical Engineering, Manufacturing, Products

The chart above is a histogram that graphically represent the time from filing to first-action for each technology center and art unit. More particularly, it reports on the pendency of applications at FOAM for each art unit averaged over the months of June, July, and August 2012. You’ll note that only one art-unit has an average time-to-first-action of less than one year. That art unit is something of a cheat because it is the single Design Patent art unit (2900). As I have noted before, the USPTO’s examination of design patents is roughly equivalent to no substantive examination on prior art grounds. The second quickest art unit is 1660 – again a cheat because it is the unit responsible for plant patents. The slowest art unit here is 2190 (data processing). I should note that the “art unit” level that I discuss here are actually grouped by tens such that 2190 is a considered a single art unit for my purposes even though it includes art units 2192-2196.

One focus of the PTO under Director David Kappos and PTO Commissioner Peggy Focarino has been to focus on outliers within the organization and shift resources in order to bring all art units within a tighter sphere of activity. Thus, one of the PTO’s initiatives has focused on ensuring that all very old cases have received at least one office action on the merits. The PTO recently completed its second round of its COPA project (Clearing the Oldest Patent Applications 2.0). In each round, the Office has set a filing date cutoff and pushed examiners to ensure that all applications filed prior to that date had actually been examined. For COPA 2.0, the cutoff date was September 1, 2010. When the project began in at the end of September 2011 there were almost 300,000 applications filed prior to that date that had not yet received any action. At the end of the project in September 2012, there were only about 33,000 remaining in that subset of old cases.

Next time I make this chart, none of the art units should pass the 2.0 year mark for FAOM. Although not the focus of the post, the PTO offers an option for applicants to skip the queue by paying a $4,000 fee to accelerate the examination.

11 thoughts on “Timing of the First Office Action on the Merits

  1. 11

    As Courtenay Brinkerhoff wrote, this is a shell gave, a focus on a meaningless statistic. WHO CARES about how long it takes to get a first action? What matters is time to the last action.

    link to pharmapatentsblog.com

    By diverting resources to first examination, the PTO is starving the steps that conclude examination, and thus we see the RCE backlog climbing.

  2. 9

    That aside, there are other more common situations where applications can end up marooned for months or years in the CON/RCE pile even though they’re just a couple hours’ worth of refreshed search and paperwork, such as an IDS after allowance where a truthful 1.97(e) statement isn’t possible. I probably should have mentioned that one first.

  3. 8

    The examining corps’ addiction to RCE’s is never going to be broken if incompetent practitioners keep that up.

  4. 6

    “As a related example to the one given above, if your RCE takes an examiner up on an indication of allowable subject matter…”

    Why would anybody file an RCE just to accept allowable subject matter?

  5. 5

    This really requires a more in-depth discussion of how docketing occurs at PTO for different kinds of cases and responses. For instance, when RCEs were moved from requiring an office action four biweeks from the forward-to-examiner date to joining the same queue as continuations (where the case with the oldest effective filing date must be moved every two biweeks), it dramatically increased the wait time for actions after RCE for most examiners (i.e., those who have stockpiled continuing cases because they’re worth fewer counts than regular new cases).

    Most of the performance metrics for examiners have changed over the past three or so years, and attorneys might do well to take those changes into consideration when dealing with examiners. As a related example to the one given above, if your RCE takes an examiner up on an indication of allowable subject matter, a voice mail to the examiner to let them know about your case can prove helpful to them in terms of finding easy counts while getting the examiner to take your case up out-of-turn.

  6. 4

    Right – Historically the PTO issued a first action much more quickly on continuation applications and also following anRCE than it did on original filings.  Although there is still some difference between these categories it is currently much less than it used to be. 

  7. 3

    Thanks Prof. Crouch. One reason for my question was to see if the timeliness was biased low based on such items which generally will have much quicker first actions.

    I note too (as an companion to an earlier post), that it is likely – given the possible bias and the time buckets in the graph – quite easy to push the three year guarantee to be in effect prior to a Request for Continued Examination would be logged, and such action spans many of the art units (including non software-patent art units).

  8. 2

    The chart comes from PTO data found in the Official Gazette. My understanding is that the data does include continuations but does not include RCEs. Thus, the first action on a continuation application would be counted here but the first action on an application following the filing of an RCE would not be counted here.

  9. 1

    … so basically the USPTO is breaking its promise of a first action on the merits within 14 months to 75% of all applications?

    Does this include counting RCE’s and Continuations (wherein substantive searching has already been completed) in the calculation of timely response?

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