The charts below provide a pendency snapshot for utility patents issued in the past month. Each chart provides two curves – one counting pendency from filing date (or 371 Date for Nat’l Stage) to issuance and the other counting pendency from the earliest priority filing date to issuance. (Each dot represents a three-month period). Median pendency is now down to about 25 months from filing and only about 10% of these newly issued patents were pending for > 4 years.
One thing to note on this and related threads…
See: link to patentlyo.com
As can be seen in the measured results, the “bargain” contemplated by the guarantee of meaningful action prior to the designated publication time has NOT been met in a substantial portion of cases.
Even at its best point over the last 13 years, I would estimate the “area under the curve” at the 18 month publication date to be at most 5%.
Thus, the Quid Pro Quo has been unbalanced for upwards of 95% of applicants, and that is for those that even obtain a patent, and not taking into account at all those who suffer the imbalance of Quo being taken with NO Quid at all provided.
We should ALL consider returning to a Quid Pro Quo that reflects a strong patent system.
Why are the applications published on the below dates?
Quoted from above:
“Assume on 1/1/2010 I file a provisional. On 1/1/2011 I file an application claiming priority to the provisional. You file a regular application on 1/1/2011 with no priority. ”
“I suppose there is a small change in the publication date (since mine would be published right after the receiving office finishes with it maybe 3/2011, yours would be published 9 months after filing, 9/2011).”
Because publication is 9 months from the earliest priority
What’s the latest with Gil Hyatts apps? Are they officially going n the dumpster fire yet?
Last that I had heard was that HE had to sue the government in order to get the government moving on them.
If I understand these charts correctly, it gives the impression that the PTO still is operating with its prosecution priorities illogically reversed. That is, applications with longer true pendency are taking longer to be prosecuted and issue than those with shorter true pendency.
Yes, many applications being refiled are presumably being prosecuted more vigorously by applicants, and divisionals, continuations and CIPs not filed until more than 36 months of pendency of the parent cannot of course be immediately taken up by the PTO. But after 60 months why are these two lines here not a lot closer than they are?
the carrot to examiners for RCEs was reduced (due in large part to the gamesmanship of getting to the RCE level.
The answer to your question is merely one of the outcomes of that.
As to the “snapshot” nature here, I find the portrayal of the data to be less than satisfying. A snapshot in time tells very little. Better would be to compose a small clip of the same type of data (same indicia and same processing) but step through month-by-month a span of several years worth of time. With that presentation, the movement (if any, such as peak or median drift or thickness of the bell curve, or even NON-movement of the tail of the curve to the right) would be more pronounces and more meaningful.
> the carrot to examiners for RCEs was reduced (due in large part to the gamesmanship of getting to the RCE level.
Yep. This, right here.
One of the most significant changes I’ve seen from the PTO in the last five years is that examiners no longer phone in final rejections. They seem to put in just as much effort for finals as non-finals.
Five years ago, probably 60% of the final office actions I received read like this:
> Applicant’s arguments have been considered but are not persuasive because (copy and paste the non-final office action)
Even if I presented new arguments in my reply to the non-final. Even if I significantly amended the claims. Didn’t matter.
If I asked for an interview, examiners responded: “I won’t interview the case as it’s after a final rejection.” Even if I forced an interview, their answer was: “I’ll consider your arguments only if you file them in an RCE.”
So I file an RCE with exactly the same arguments that I presented in my reply to the non-final – and now I get a good office action, with responsive arguments and new art, and maybe even an allowance. Why couldn’t they do that the last time I presented them? Well… incentives.
There is a well-known principle in business: You get what you incentivize. That’s what we were seeing. Now that the perverse incentives have been adjusted, we’re seeing more efficient examination – which, I believe, helps to reduce pendency.
applications with longer true pendency are taking longer to be prosecuted and issue than those with shorter true pendency.
What’s your logic in coming to this conclusion? You can’t compare the blue chart to the orange one, the orange one is obviously longer.
If you file a new case (blue chart) and file a continuation just before allowance (20 months is the most frequent allowance time) the orange bar can’t possibly be less than 22 months (20 months + processing of the continuation in the receiving office and docketing, even if I dropped everything and did the continuation immediately).
So lets assume some sort of priority prior to examination. Those come in three flavors – priority to a provisional (which isn’t examined), priority to a recently-filed application (i.e. file A and then file B as a continuation of A within the 12-18 month window before A gets picked up), or priority to a foreign application.
The first two put the continuation on the same footing as a new case, and the third may depending on whether there was a foreign search. Either way, there’s not enough foreign search cases which would credibly move the orange bar below the blue one.
I guess I’m asking why you think the orange pendancy should be below the blue one and how the office should get there? Are you saying we should allow an application to “jump the line” because it claims priority to a previous application?
But after 60 months why are these two lines here not a lot closer than they are?
I’m not sure I understand – The median pendancy time for new cases is 24 months, and the median continuation pendancy is not 47 months (assuming a continuation is filed just before allowance). How is that not a benefit to oranges? At virtually no point is orange twice as long as blue.
RG, I’m not sure I understand some of your points,* but as to “saying we should allow an application to “jump the line” because it claims priority to a previous application?” That is certainly more logical for the purposes of the patent system that letting later-filed applications “jump the line” ahead of applications with much earlier filing dates, which is what is happening now.
*E.g., is not a newly filed application less likely to have a foreign equivalent search than a re-filed application?
BTW it is the relative heights of the lines at the same extended dates, not their lengths, that is the subject here.
The basis of the problem is the misrepresentation that a patent application with the same specification become a “new” application every time it is re-filed.
“The basis of the problem is the misrepresentation that a patent application with the same specification become a “new” application every time it is re-filed.”
I “get” that THAT is a problem. Certainly, “counting” something as “new” that if** the examiners followed their mandate would certainly NOT be new is a an unwelcome fallacy.
**As I have pointed out to 6 awhile back now, examiners are tasked with examining the entirety of an application – and not merely tasked with some key word search of words from the claims.
35 U.S.C. 131 Examination of application.
The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
MPEP 704.01 Search
After reading the specification and claims, the examiner searches the prior art. The subject of searching is more fully treated in MPEP Chapter 900. See especially MPEP §§ 904 through 904.03. The invention should be thoroughly understood before a search is undertaken.
Applying (roughly) the Pareto principle, 80% of the work (understanding) is complete for any first go around and thus any continuation is already operating with AT MOST 20% work left.
Your quotes don’t support your argument. The invention is defined by the claims, not the specification. We should read the specification to understand the claims, and then search the invention, which is the claims.
There’s an entire section of the MPEP directed to restriction. Restriction takes away claims because they’re directed to a different invention and it would be burdensome to search both. If the invention was the spec and you had to search the entire spec in all cases, there would be no restriction practice.
But as usual, you are a master at misunderstanding a few sentences rather than thinking about how a proper construction fits into the entire scheme.
“Your quotes don’t support your argument.”
They absolutely do.
“The invention is defined by the claims, not the specification.”
The claims MUST be read in light of the specification.
If you do not understand the specification, how in the world do you think you understand the claims?
FURTHER, you are charted not just with understanding the claims as filed, but any reasonable amendment to those claims – and again – this is driven by understanding the specification.
FURTHER STILL, the concept of “no new matter” colors ALL of this.
AND YET FURTHER STILL, the concept of restriction DOES NOT HELP YOU, as you need to understand that which is desired to be restricted out. There is no such thing as “restrict because a word count has been reached.” If you do not understand the specification, how in the world do your reach a point of PROPERLY applying restriction? The fact of the matter is that proper restriction practice has NO effect on the arguments (and law) that I have presented.
“But as usual, you are a master at misunderstanding a few sentences rather than thinking about how a proper construction fits into the entire scheme.”
You are doing that Malcolm-Accuse-Others thing again….
The basis of the problem is the misrepresentation that a patent application with the same specification become a “new” application every time it is re-filed.
In my experience there are a small number of applications that abandon but have a continuation filed, largely to avoid prosecution admissions or to try and get a different examiner (which rarely works btw). The vast majority of continuations arise from:
1) A jumbo specification where the claims are directed to a different invention (i.e. Claim 1 of the continuation would have been restricted from the claims of the parent)
2) An allowed parent who wants different dependents or an independent in a missing statutory category.
3) Two applications which are filed essentially at the same time (which is just a variation of (1) above) directed to similar subject matter.
2 is definitely not contributing to long pendancies. The easiest examination I can do is when a claim is as limited or more limited than a parent I allowed. 1 and 3 are in fact “new” cases, because their subject matter hasn’t been tested in back-and-forth argumentation. The fact that its the same document isn’t really relevant from an examiner’s standpoint. In my mind, these all skew the orange line.
Now lets talk about what I think you’re getting at: Assume on 1/1/2010 I file a provisional. On 1/1/2011 I file an application claiming priority to the provisional. You file a regular application on 1/1/2011 with no priority. The way the system works, my application and your application will be put in the same hopper and subject to docketing in the same way. If the applications are in the same field, the same examiner might get the applications at the same time and even do them right after each other. Since the backlog is 12-18 (lets call it 15 as an average) both examinations would begin in September of 2012.
What you want is for my application to be processed and then inserted into the line as if it had been filed on 1/1/2010, right? This means that my application would probably be examined in June of 2011, while yours would be in September of 2012.
As an examiner that’s fine by me. I mean from my standpoint I don’t care either way what the priority date of what I’m examining is. But it’s also not any easier for me to examine, the existence of the provisional has no bearing on anything. I suppose there is a small change in the publication date (since mine would be published right after the receiving office finishes with it maybe 3/2011, yours would be published 9 months after filing, 9/2011).
I dunno why it’s a huge deal to prefer one docketing mechanism over the other, as I assume different clients do either? But either way, the hypothetical above isn’t driving the data that is showing the difference on the blue/orange lines. If the hypothetical is what upsets you, I certainly agree it happens, but it’s not supported by the data above. The data above is too skewed by filings after long prosecution histories.
“The fact that its the same document isn’t really relevant from an examiner’s standpoint.”
It is if you are following the law. See my post above.
Also,
your hypo goes from a Prov, which is not examined (and is likely NOT what he was getting at).
Yes, a formal application based on a provisional is not the re-issue issue here.
I know nothing about reissues and they have their own set of examiners is my understanding. A reissue is treated entirely different from a new, a new with a provisional priority, or a new continuation.
Also there’s so few reissues compared to provisions/continuations/foreign priorities they are not driving the orange line above.
Again, I don’t deny it happens (in this case because I don’t know) but I’m sure the line above isn’t support for your argument.
Sorry, typo, this was about re-filed applications, not reissues of issued patents.
P.S. Unlike applications, reissues have a statuary deadline running from the patent’s issue date for any claim broadening, and a claim recapture rule limitation.
Yes, I understand reissues are now handled by the CRU rather than the regular Examining Corps.
It’s about as ethical as a used car salesman putting a new registration number on a used car, turning the odometer back to zero, and calling it a new car.
Paul,
For what it’s worth, in my experience continuation applications still frequently receive a first action much quicker than original applications, and it is generally much easier to get an allowance if a prior application was already allowed. CIP applications are a bit of an odd duck, and frequently actually seem to take LONGER than an original application to get a first action, but I do not file that many CIPs (does anyone?), so take my anecdotal experience with a grain of salt.
I think it is an increasingly common practice to just keep filing continuations to keep an application family pending, which I think tends to drastically increase the total pendency of priority applications. For example, if you file a new CON which claims priority five years back, then even if it issues the next day it is still going to have a pendency of 60 months if computed from its earliest priority date. This can really inflate the numbers.
In order to get a more accurate picture of what you are curious about it would likely be interesting to see a graph with ( [issue date] – [filing date] ) on one axis and ( [filing date] – [priority date] ) on the other axis.
I was curious so I pulled the bulk data for January from the PTO website and wrote a quick program to calculate the average pendency (from filing date to issue date) for applications based on the number of months they claim priority (e.g. an application filed on 01/01/2017 claiming priority to an application filed on 01/01/2016 would claim 12 months of priority). I had the program group applications with 25+ months of pendency together.
Here’s what it spit out:
0 months priority: 31 months average pendency (from filing date)
1 months priority: 28 months average pendency (from filing date)
2 months priority: 29 months average pendency (from filing date)
3 months priority: 27 months average pendency (from filing date)
4 months priority: 27 months average pendency (from filing date)
5 months priority: 24 months average pendency (from filing date)
6 months priority: 23 months average pendency (from filing date)
7 months priority: 27 months average pendency (from filing date)
8 months priority: 33 months average pendency (from filing date)
9 months priority: 32 months average pendency (from filing date)
10 months priority: 35 months average pendency (from filing date)
11 months priority: 37 months average pendency (from filing date)
12 months priority: 40 months average pendency (from filing date)
13 months priority: 42 months average pendency (from filing date)
14 months priority: 45 months average pendency (from filing date)
15 months priority: 26 months average pendency (from filing date)
16 months priority: 29 months average pendency (from filing date)
17 months priority: 20 months average pendency (from filing date)
18 months priority: 50 months average pendency (from filing date)
19 months priority: 23 months average pendency (from filing date)
20 months priority: 15 months average pendency (from filing date)
21 months priority: 19 months average pendency (from filing date)
22 months priority: 14 months average pendency (from filing date)
23 months priority: 38 months average pendency (from filing date)
24 months priority: 42 months average pendency (from filing date)
25+ months priority: 24 months average pendency (from filing date)
It seems accurate from my quick sanity check, but I can’t guarantee I didn’t make a mistake somewhere. It looks like there is a lot of noise in the data, as some of the variance does not make a lot of sense. In theory I could grab additional data sets if anyone is interested to see it smoothed out.
I also threw all the data into an excel sheet formatted to include pendency, total pendency, and months of priority. If anyone wants the excel sheet or the code, just let me know.
Typo: the program grouped patents with 25+ months of priority, not pendency.
You are such a geek.
(that’s a compliment
)
Thanks JCD. I think that most of the “..noise in the data, as some of the variance does not make a lot of sense” you noted is likely due to PTO management apparently having little control over examiners taking up applications from their dockets to work on irrespective of how old their priority dates [true filing dates] are. Plus some effects of art unit backlog differences? It is hard to explain extreme pendency “submarine” applications like those from Lemelson and Hyatt otherwise.
You are correct that some applicants deliberately keep at least one family member pending by repeated serial re-filings. That can insure that some of their claims can be much later “amended from the catbird seat,” as one CAFC case described, to cover later commercial products of others with long delayed issuance patents with such late amended claims. But that is another good reason why PTO failure to examine applications in true filing date order is contrary the intent of the patent system.
Part of what “allows” this type of “meh, we’ll get to it later” is the notion that the Government has already obtained its part of the bargain (the Quo), and is under no driver to relinquish the other side of the bargain (the Quid).
As so often happens, people concerned with a “Stick” aspect seek to remove the “Stick” aspect and the old adage comes to bear: spare the rod and spoil the child.
Yes, “submarines” had “B A D” aspects and did get abused. But the “fix” for that problem went F A R to the other side and created its own endemic problems. Problems that upon objective and critical reasoning, show to be more pernicious.
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