Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office as of Fiscal Year 2017

The chart above comes from the newest update on Continuing Patent Applications by Cotropia and Quillen. [LINK].  The article notes “Application Allowance Rates corrected for Refiled Continuing Applications have continued to increase, reaching 96% in FY 2017.”

29 thoughts on “Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office as of Fiscal Year 2017

  1. 8

    I would love to see any of these “academics” try to prosecute even one patent application.

  2. 7

    While the authors make a positive contribution by providing USPTO application filing data disclosed under the FOIA, they do not tabulate the breakdown by application type and their interpretation and analysis contain fundamental flaws.

    They insist on using counterfactuals and bad science – here they are at it again: “Application Allowance Rates corrected for Refiled Continuing Applications have continued to increase, reaching 96% in FY 2017, approaching the record 99% in FY 2001.” Really?

    “Corrected”? “Refiled”? — Really? Beware of data “corrections” as it should be a red flag. Under this “correction,” allowance rates can exceed 100% – what does that mean? The authors contend that “Refiled Continuing Applications (continuation and continuation-in-part applications (CIPs) pursuant to 35 U.S.C. 120 … claiming benefit of the filing date of a prior application” restarts “the examination process all over again.” No, it does not.

    First, filing new continuation claims is not “refiling” – it is not a new application attempt at the same claims. Rather, these new claims are distinct, and mostly patentably distinct, from the claims in the parent application. If not, examiners would require terminal disclaimers. Yet, as I note elsewhere, issued patents with terminal disclaimers make up less than 3% of all issued patents. Moreover, CIPs disclose new subject matter and would not be filed but for the applicant’s need to add claims drawn to that new subject matter.

    Second, lumping RCEs with continuations as if they are separate applications is an obfuscation and conflation. These filings are not newly serialized applications – they are simply continued examination of the same application (with the same serial number) because the exchange with the examiner exceeded two office actions without resolution and a final rejection was issued; the applicant chose not to appeal. Under this authors’ flawed logic, filing of appeals should also be added to the “refiling” count. More importantly, no clear definitions of ratios are presented and the author’s “corrected” allowance rate appears inflated further because it apparently includes the RCE count in the numerator but excludes the abandonments that preceded the RCEs in the denominator. Where no appeal is filed, RCEs can be entered only after their underlying case is abandoned. See 37 C.F.R. 1.114(2).

    In sum, this nonsensical narrative is not new: a decade ago, I pointed out this flawed “application recycling” theory of Quillen et al. I provided then detailed explanations of these issues in my papers:

    “Bad Science in Search of ‘Bad’ Patents”, Federal Circuit Bar Journal, Vol. 17, pp. 1-30 (2007). link to bitly.com. (See section I.B)

    “Patent Continuations, Product Lifecycle Contraction and the Patent Scope Erosion. – A New Insight Into Patenting Trends.” Southern California Law Associations Intellectual Property Spring Seminar (2007). link to bitly.com. (See Figure 5 and accompanying text).

    Those papers should be read by anyone who seriously considers the “refiling,” “recycling,”or “rework” narrative.

    1. 7.1

      Yeah I thought what they were saying didn’t make much sense and was du mb anyway. Don’t be too worried Ron, nobody cares about this paper.

    2. 7.2

      Thanks Ron.

  3. 6

    [I]f we are we satisfied with a system in which the USPTO ultimately grants a patent for virtually every Original (and Divisional) Application filed, the question then becomes why maintain an examination system at all?

    Are these guys serious? I suppose that if there were a 96% allowance rate for original claims, then this might be a worthy question. Somehow, however, I doubt that all of those CONs, CIPs, and RCEs end up with the same claim scope that was present in the original filing.

    Mark Summerfield has this one right. I should have stopped at the first sentence. The conclusion was no better than the beginning.

    1. 6.1

      Prof. Crouch clearly had the right idea when he drafted this blog post based on the linked paper. The data themselves are worthy of interest. The conclusion putatively based on the data is… less so. Skim the figures, skip the text.

      1. 6.1.1

        Why in the world would you trust any numbers from people like this?

        I would not trust a thing they write or say.

    2. 6.2

      “Are these guys serious? I suppose that if there were a 96% allowance rate for original claims, then this might be a worthy question.”

      They’re probably just re t arded.

  4. 5

    There is a conspiracy afoot to trap inventors who have fallen for the bait and switch. Professor Wasserman was pushing this claptrap at recent Brookings Institute conference. And Telebrands whined to the jury that my third patent eliminated their argument that their tubes did not extend from a “common face” of the housing, hoping to avoid liability for infringing my first patent on a bogus claim construction of that term. They think it’s not fair that their slimey lawyers can’t get away with twisting our claims and knocking out a few years of our patent term – they want all 20 years!

    These academics and their efficient infringement sponsors want to trick us into disclsosing our invention under first to file, publish it, then withhold the patent. Or destroy the patent right in the PTAB. They have not noticed that we are on to the scam. Go ahead eliminate continuations. We’ll keep our secrets or else get the Chinese government to protect us.

  5. 4

    “The United States is unique in permitting patent applicants to refile their patent applications…”

    Well, there’s a bad start, right there. The US is not even remotely ‘unique’ in this regard. In many jurisdictions, exactly the same effect can be achieved by filing a divisional application prior to abandonment of the parent. It is quite common practice in Australia, for example. Indeed, since it is permissible to add subject matter in a divisional (so long as at least one claim is wholly based on the disclosure in the parent) it is even possible, in many cases of practical interest, to obtain the same effect as a CIP.

    For the most part, the US is unique only in its explicit naming and treatment of different ‘species’ of continuing applications.

    Frankly, I can think of no reason why we should accept the more complex and contentious findings of ‘scholars’ who cannot even get their basic facts right in the first sentence.

    And there is nothing ‘bizarre’ about the practice. The very suggestion demonstrates an ignorance of commercial reality, and reflects an inherent bias in the authors’ assumptions. Why on Earth would an applicant elect *not* to use an available and legal mechanism to preserve their rights, if they believe those rights to be valuable?

    Note that if – as the paper seems to suggest – applicants are getting a different result upon refiling than they did on one or more earlier attempts, I would suggest that says a great deal more about the quality and consistency of examination at the USPTO then it does about the applicants. Of course, it is also always possible that scope of claims ultimately allowed is quite different from whatever scope the applicants had originally sought.

    1. 4.1

      Your comment is awaiting moderation.
      April 15, 2018 at 9:52 am

      Exactly right, Mark.

      One merely need look at the authors, the footnotes, the links (being anti-software patent from the likes of Cotropia, Quillen, Lemley, Bessen, patentprogress.org – the CCIA) and such to see that this “scholarly” effort is the very stuff of disrepute for academics.

      Frankly, that this type of “advocacy” is among the worst of the propaganda and spin that reminds me of ethical breaches that I think that all of us can do without (and certainly fails to comport with the desire of Iancu to reset the dialogue.

      Truly, v 0 m i t inducing stuff.

    2. 4.2

      This is exactly right Mark.

      And frankly the problem is ethics for the professors. Why did they get the basic fact at the beginning wrong about refiling an application? Almost every jurisdiction allows divisionals with the same effect, e.g., KR, EP, CN, JP, etc.

      So, we start off with something that should trigger an ethics investigation and we are expected then to spend our time figuring out how they have jiggered the numbers to suit them? Offensive and ridiculous. They face ethics violations at their universities for publishing this.

      Moreover, what kind of junk do you post on here? There is obviously no peer review and no consequence for misrepresenting in these “journal articles.”

      1. 4.2.1

        Night Writer,

        Perhaps you meant to say that they should face ethics investigations (as it is, no such ethics “violations” will be investigated).

        As I have pointed out, attorneys have created a code of ethics BECAUSE our actions intersect the formation (and preservation) of the law.

        Academics should have an even more stringent code.

        Academics should have an even more stringent code because NOT only do you see such direct attempts to influence the law (as here), you also have these self same people directly influencing tomorrow’s attorneys.

        How many minds-waiting-to-be-influenced go through law school absorbing this type of mantra, and think it to be gospel?

        None of this is new.

        Anyone “surprised” by the contamination of stories such as this post with an intersection of bias (an anti-software patent bias) is simply f 0 0 1 ing themselves.

        Shame on them.

        And shame on anyone willing to “look the other way” while this happens.

      2. 4.2.2

        Why don’t you guys write to the administration of the schools or the journals publishing these kinds of papers you think unethical?

        1. 4.2.2.1

          I’ve investigated this 6. What I found was full professors at top universities saying that they file complaints against law professors and nothing happens.

          1. 4.2.2.1.1

            Gotta follow up and see who it is that the buck stops with.

        2. 4.2.2.2

          Why don’t you guys write to the administration of the schools or the journals publishing these kinds of papers you think unethical?

          You have not been paying attention 6 – it is the entire structure of academia and its “peer” structure (read that as enforced doctrination to a captured narrative) that is part and parcel of the problem.

          Academia is NOT a meritocracy. Academia has long lost its primary mission of teaching critical thinking, and has descended into a cessp001 of “can you repeat back what those in power want you to repeat back.”

          No amount of “writing to” the powers to be will have those powers that be change the powers that they are clinging to.

          1. 4.2.2.2.1

            “You have not been paying attention 6 – it is the entire structure of academia and its “peer” structure (read that as enforced doctrination to a captured narrative) that is part and parcel of the problem.”

            I’ve heard the assertion, but I’ve not seen the evidence for this assertion in the patent field. Though in reference to leftism you are quite right that they are overrun by such in the unis and this could be affecting the patent fields along the lines which we are discussing here currently.

            “primary mission of teaching critical thinking”

            You keep making reference to critical thinking. But on the contrary, as I explained to you before, critical thinking is no longer any bulwark against leftism, if that is what is generally afoot. They have changed the morales and values that underlie and are inserted into the critical thinking equation when you or anyone critically thinks about x y or z (including public general policy/laws or patent policy/laws). As I explained this change in values and morales was and is currently being done for diversity and engineering the perfect society in a social manner.

            Further, they do teach critical thinking at the university, you (and those like you) just don’t recognize their critical thinking as critical thinking because it is currently based upon morales and values you, as as white cis hetero christianish capitalist patriarchial do not share (save with some small overlap). Remember comrade, diversity is your strength and the Greatest Good Thing (TM) and your morales and values have to be changed to have all your critical thinking pop that answer out, every single time, no matter the question. Upon penalty of racism, sexism, ism ism ism obia charges. Then you or any college student turns to other questions with your changed morales and values in hand, say patent lawls and policy, and you get different results out of your critical thinking than you would if you had evil white cis hetero christianish capitalist patriarchial morales and values.

            So I have to disagree with you, they do teach critical thinking, they merely instill the critical thinkers with non- white cis hetero christianish capitalist patriarchial values/morales and the end result of the critical thinking the engage in is different than what you arrive at.

            “No amount of “writing to” the powers to be will have those powers that be change the powers that they are clinging to.”

            True, but once you find out who they are (they are real people), you can begin to discuss them with your fellows and smear their names as rac ists, saxists, homophones, or whatever you like (e vil, lefti sts, com mies, pinkos, post-mo dernists etc. etc.). Eventually through social means the bulk of the bar could bring pressure. If they have the bal ls.

            1. 4.2.2.2.1.1

              reply stuck in moderation…

              Bottom line 6, your past view of “critical thinking” was beyond flawed.

              You attempted to equate critical thinking to some “value” notion that may or may not pass away as a fad. THAT is most definitely NOT what critical thinking means.

    3. 4.3

      Well, there’s a bad start, right there. The US is not even remotely ‘unique’ in this regard.

      Yikes! No joke. That is an embarrassingly bush-league mistake to make right in the first substantive sentence of the article.

      Frankly, I can think of no reason why we should accept the more complex and contentious findings of ‘scholars’ who cannot even get their basic facts right in the first sentence.

      Indeed. It is hard to keep reading with a straight face after that howler.

  6. 3

    I can’t quite figure out how the corrected allowance rate is calculated. It says “The number of Net Disposals, however, corrects for Refiled Continuing Applications”, but then there is a “corrected for all Refiled Continuing Applications” allowance rate distinct from the “based on Net Disposals” allowance rate (the later basically being the PTO’s RCE adjusted allowance rate). If the net disposal is the correction, what corrects the net disposal rate to the corrected rate?

    1. 3.1

      It is “calculated” based on the no peer review and no consequence for unethical conduct rule, i.e., just pick whatever number you want and write an incomprehensible article around it to justify it (and probably take Google bucks).

  7. 2

    Re: “Application Allowance Rates corrected for Refiled Continuing Applications have continued to increase, reaching 96% in FY 2017, approaching the record 99% in FY 2001.”
    Even though those asserted percentages represent only percentage allowances for only those applications which their applicants considered important enough to refile rather than abandon, they seem surprisingly high? [Especially with all the complaints here and elsewhere about the extent of PTO 101 application rejections these days, plus the reported increase in PTO 112 rejections.] If correct, they do not seen to support policy arguments that allowed applications do not deserve further examinations.
    Are RCE’s included?

    1. 2.1

      I’m still not sure I fully understand the metric being presented – the only though I have, and from my examining experience, is that these are continuations of allowed applications where Applicant is trying to adjust the scope. Most of those that I see are pretty quickly allowed, either as a method tracking an allowed apparatus claim, or a claim with some of the extraneous limitations removed, but the core of the allowable subject matter kept intact.

      96% still seems high, though, as a gut response.

      1. 2.1.1

        If I remember correctly several years ago there was a published article by the same Cecil Quillen [with _?_ Webster] in which some indicated statistics were corrected in a later article?

        1. 2.1.1.1

          Lots of “indicated statistics” are in need of correction from the entire cabal.

          Think Bessen (for starters).

          How is this stuff not vetted prior to publication?

          Oh wait – that’s right, there is no ethics code for academics (leastwise one that matters much, eh? Nice when the peers doing the reviewing are the same ones that want the particular narratives that are being ginned up).

          1. 2.1.1.1.1

            Well, one problem with “peer” review is that you don’t want to be harsh on “peers” who will later being reviewing you.

            1. 2.1.1.1.1.1

              There is a HUGE problem with “peer review” when the entire structure of “peers” lacks meritocracy and is instead based on how well you spit back the desired narratives.

  8. 1

    This bizarre practice leads to elevated Patent Allowance Rates and is identified by scholars as a source of much abuse of the U.S. patent system and adds to the reputation of the U.S. Patent & Trademark Office (USPTO) for issuing low quality patents.2

    Footnote 2 is a Lemleyism –

    This is the same old claptrap of the attempted Tafas debacle.

    Nothing new here – move aloing now.

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