Can someone help me understand what’s going on with the rise in withdrawn patents? (FYI – since 2000 the numbers have been growing substantially faster than the rate of new patent issues). 
I posted last week about recently issued U.S. Patent No. 11,000,000. I should note though that the 50,000+ patents "withdrawn from issue." This messes up the count.
— Dennis Crouch (@patentlyo) May 21, 2021
I wonder if there is a connection with the USPTO getting stricter with the submission of 312 Amendments.
I’ve used them over the years to submit broader independent claims (that include the specific subject matter that the Examiner found allowable) and never had a problem until recently. One Examiner told me that he’ll get in trouble if he does anything more than enter a 312 that corrects typos.
Hate to say it. But the recent “quality” push has been focused on persons with the word “quality” in their title taking the position that a prior art rejection is “noncompliant”. Prior art searching has been de-emphasized to the point where SPEs tell examiners not to do a complete search to better their chances of not being criticized by “quality”. So, the examiner has to search less and not reject to navigate “quality”. When art comes in that must be used to reject claims, the patent is withdrawn.
When did the PTO implement the e-petition for withdrawal? This is automatically granted right up to the day before issuance. In the old days, you had to petition early enough that it wouldn’t publish before they looked at. Don’t know about the earlier surge. (Lot’s of comments before mine that I didn’t read so maybe this was discussed)
Still, in all this, we continue to see numbers that don’t account for the number of patent applications with no US inventor.
We went through these numbers several times and the number of patent applications with US inventors is declining.
We’d need to know whether most of the withdrawals are for applications filed first in the US. I suspect this is the case for the current spike and, as others have already noted, most withdrawals now are likely due to the several months time lag between Notice of Allowance, Payment of Issue Fee, and the Issue Date of the Patent, where new prior art comes in from abroad. Duty of disclosure continues right up to the date of issue, rather than stopping at either of the first two of the above-noted dates.
Still, quality comes first and it’s a waste of money to let a patent be granted that will surely be invalidated if litigated because of prior art that turns up elsewhere in the patent family. It’s better to withdraw it from issue and have the additional prior art fully considered before the grant. It’s also less expensive (both in terms of money and estoppels) than having to do a reissue.
Yes Mark I agree, but still we need to see the numbers split up between US inventions and foreign inventions where the US is being used as the first filing or a filing with a priority to a foreign provisional type of application.
The issue is that people continue to treat the patents where there are no US inventors as if this doesn’t matter and it does.
I agree – and it is an offshoot of the “too much power to juristic persons” that affects many other things.
Patent law is Sovereign-Centric law. Sure, comity may be a desired aspect between Sovereigns, but such does NOT change the fact that a Sovereign wants to benefit from innovation. Those who lean towards “Big Corp” and have a transnational view often belittle, or even flat out ignore that such is real.
Take Greg DeLassus as an example. He has often stated that it is innovation – regardless of Sovereign that is important. Given his Big Pharma proclivities, this is not surprising (nor is it surprising that he often has positions that align with Efficient Infringer mantra).
This is an interesting observation. It would have been informative to present these numbers in context –- normalized by the number of patents issued in the year.
The vastly separated time frames for the two peaks suggest different causes. For example, RCEs were not available during the 1990’s peak. For that matter, neither were Alice on Section 101, nor AIA trial risks. Potential theories are as follows.
1995-1998
Note the rise and sharp fall in patent withdrawals, which essentially tracks the prosecution durations of the pre-GATT application filing “spike” of more than 50,000 applications filed After April 25, 1995 and before June 8, 1995 in an effort to preserve the 17-years-from-issuance patent term rather than the 20 year from original effective filing date that applied to later filings. A larger fraction of those applications than usual were filed in haste. The problems applicants faced then were more acute for filing divisional applications for claims previously restricted in prosecuting a parent application. This was because unlike traditional prosecution practice, wherein an applicant waits to see what subject matter is ultimately allowed and only then files new divisional claims accordingly, pre-GATT applicants were essentially compelled to divine the scope of the claims they would receive and prematurely file all claims in their “inventory” prior to Jun 8, 1995. I have described this in my 2007 paper, showing a disproportionate “spike” and “depletion” of the divisional application inventory in 1995. See: link to ssrn.com. To a lesser degree, this also applied to continuation applications. Because these claims were prematurely drafted, many must have been useless or unworthy of a patent, as reflected in the withdrawal peak. The trend was reversed significantly after the pre-GATT application pipeline cleared at the PTO.
2012-2020
The potential explanation for this period probably involves a composite of reasons including those mentioned in the comments here. Still, other explanatory factors would depend on what Dennis considered a “withdrawn patent,” as he did not describe how these numbers were obtained. There is a significant difference between a patent withdrawn after its publication and one withdrawn before it publishes. For example, the PTO’s Official Gazette (“OG”) may refer to a patent assigned a patent number but withdrawn prior to publication by “Patent Not Issued For This Number.” See link to uspto.gov. In contrast, for withdrawn patents where the OG previously published patent information including front page information and a representative claim, the OG uses the “Errata” section a few weeks after publication to indicate withdrawals as follows:
“All references to Patent No. 9,198,652 to KYLE PILGERAM of San Jose, CA for SURGICAL INSTRUMENTS AND METHODS OF USE appearing in the Official Gazette of December 01, 2015 should be deleted since no patent was granted..”
Dennis should clarify whether both types of withdrawals are included in his count.
During this period, a growing number of patent applicants may have decided to forgo patent protection due to the increasingly hostile and costly environment for patents. Some may have been concerned that their patents, if issued, would be judged ineligible under Section 101. Others may have determined that they would be better off keeping their inventions as trade secrets. Included in this category are those applicants who understood the AIA’s absolute novelty provision in Section 102 and the repeal of pre-AIA Section 102(c) as permitting them to hoard secrets for years (avoid publication) and defer patenting until the legal pendulum swings back to protect patent rights. Still others may have decided that the mere issuance of a patent opens up a financial liability of having to defend it at the PTAB. The increasing withdrawal trend is consistent with all three explanations, amplified by non-publication of the withdrawn patents.
Additional evidence for testing these hypotheses
As to the 1995-1998 peak withdrawals, Dennis should compare the fraction of withdrawn applications having a filing date between April 24, 1995 and June 8, 1995 to that fraction for all patents issued in that period. A finding that the former fraction significantly exceeds that latter supports the pre-GATT “spike and depletion” being a significant cause for the observation.
As to the 2012-2020 period, it would be helpful to determine the fraction of withdrawn patents that did not publish as a patent, or a prior published application, that fraction in all issued patents in this period.
Interesting. I think that we need to know the number of these that are continuations and the number of these that are non-USA inventors. So much right now is being masked by continuations and non-USA inventor first filings.
But during the 2012-2020 period I think that a lot of this is PCT filings and the rise of USA companies filing in other countries. I have clients where the USA is no longer their primary country of interest as they feel they cannot enforce a USA patent. They like some EU countries like Germany and the Netherlands, JP, CN, and KR. I think the UK will become popular.
But what happens to me and something I have done this year is pay the issue fee and then get some giant office action from a foreign country. I think too part of this is that CN is starting to be more of a real patent prosecution entity where they sometimes actually find their own art and don’t just mimic the US or EP office actions.
Anyway, I also have clients that have been abandoning patents en masse as being just not worth it.
Examiner X below has a good point too. The time to allowance has been greatly reduced and it increases the likelihood of receiving a foreign office action after US allowance.
Typically the EP’s search reports are the ones that require an RCE and withdrawal because of their higher quality. I find almost always that CN, JP, and KR just copy the USA’s office action so you don’t really have to RCE it as they are using the same art and same arguments as the US case. They seem to just almost cut and paste. But not always. Sometimes they do their own independent searches where they come up with some pretty good art.
Good points all
” I find almost always that CN, JP, and KR just copy the USA’s office action”
Interesting. In my experience, CN, JP, and KR just copy the PCT search report, and ignore the US prosecution. Of course, in most of those situations, the PCT search report used the US as the searching authority, which translates into the search report having been prepared by Cardinal IP or whoever is the USPTO’s vendor for ISA search reports. The USPTO really needs to go back to using Examiners for preparing the Search Report. It’s far more efficient since the next step is for the Examiner to use that same art to send out an Office Action in the US counterpart.
Interesting ipguy. I guess I see that too where the PCT search report or extended search report is used. I think it depends on the timing and also if I have the claims allowed. It seems to me that the examiners in the foreign patent offices shop around.
I often see this mirroring of the US prosecution where I got the claims allowed and then CN comes along and rejects exactly like the US examiner did so I amend and present the same arguments as I did in the US and then the CN examiner allows just like the US examiner. And, in fact, I am fairly sure that the CN examiners look to make sure they aren’t allowing claims rejected in the US.
There was a day (not so long ago), that the PCT ISRWO always preceded any US counterpart.
Re NW’s “I also have clients that have been abandoning patents en masse as being just not worth it.” I can’t resist asking if some were among the many misguided clients who think they were saving money [or getting quality work] by filing patent applications without doing any pre-filing prior art search to determine what might be validly claimable?
It isn’t getting the claims allowed but the value of the patent once allowed.
Paul, you always have this snide loaded questions as if I would write a patent application without making sure I can get decent claims allowed.
Re NW’s “I also have clients that have been abandoning patents en masse as being just not worth it.” I can’t resist asking if some were among the many misguided clients who think they were saving money [or getting quality work] by filing patent applications without doing any pre-filing prior art search to determine what might be validly claimable?
You act as if that is a legal requirement.
By converting “saving money” into “a legal requirement?”
To mirror Night Writer’s impression, your comment comes across as nothing more than snide.
It is well known that a Best Practice is to obtain the most thorough prior art search as possible.
It is equally as well known that such is the express call of the client.
I have had clients that absolutely forbid any searching. These are (by and large) NOT small clients, but instead simply want what they want.
We go over this every once in awhile, as if you have stumbled upon something new.
You have not.
Anon’s been smacked down for pounding the table when he’s cornered and making stuff up about me, too. But he’s been pretty quiet since his “cyberstalking” debacle.
It is a deep case of the chuckles from my obsess1ve fan….
It only seems like forever ago that my pal Shifty was playing his ACME games.
I do note that he did manage to sprinkle in a post (ruining his 100% focus on me) before he left for a mini-sabbatical.
He posted link to patentlyo.com on April 2.
Prior to that though, he had posted in a 100%/0% mode for the entire year.
!00% to me.
0% on target or with anything meaningful.
He has returned to form, seemingly waiting for the right moment to broadcast his own inadequacies, project his deficiencies, and outright
L
I
E
To wit, he oddly choose a point that not only I, but Night Writer and Ron Katznelson rebut (Paul’s snide comment), but my pal Shifty does so with outright fabrication and the opposite day effect as to the smack down HE received on the exchange of cyber stalking.
See link to patentlyo.com
Here, Shifty is wrong on every point
I was not smacked down
I was not pounding any table
I was not cornered
I certainly was not making anything up about Shifty
Since the cyberstalking debacle — FOR SHIFTY, I have not been quiet, but have continued apace.
Could a single person stuff so much in error because of the obsess10n that person have with one person – other than Shifty obsess1ng over me?
Of course, no one could have predicted that Snowflake would become unhinged when reminded of his “cyberstalking” debacle.
The false assertions were old before.
They have not gotten any better.
On top of that, you seem to any to mistake thoroughness for “unhinged,” which I suppose is all that you have left.
It’s odd that you would pick here for a return to your obsess10n, but your cyber stalking has not changed one bit (other than losing that perfect 100% streak).
“Seem to any” ==> “seem to want”
Damm autocorrect
A. Lincoln:
I have to say watching the interaction between you and anon that you are definitely the stalker. You seldom make comments except when they are directed at anon and they usually include all sorts of epithets are at least aspirations on his character.
It is strange. It is like you have some visceral hurt you are exposing each time you comment on his comments.
aspersions
Gaslight much, NW? Anon is a pretender who makes stuff up when he’s cornered. Period. Ask Paul.
Even Snowflake’s own designated expert finally concluded that he was, an exact quote, an incredibly sloppy reader, writer, and thinker.
Your assertions are false, Shifty – and there is NO sense at all in your accusation of Night Writer of gaslighting.
But hey, continue to use that Boundy statement even as I explained why he was so bu ttsore (having to do with my showing that he was WRONG on a point of law — that Void for Vagueness was NOT limited to criminal law matters).
Further – the offering of you of Boundy’s comment has ZERO to do with YOUR obsess10n over me.
What is up with that obsess10n?
And I don’t use the term pretender lightly. For example, in what came to be known as the Wikipedia debacle, Snowflake’s understanding of the doctrine of equivalents was shown to be based on an incorrect entry in Wikipedia.
Shifty,
Why are you still not answering the questions put to you? Too busy making false assertions?
And yet another false assertion from my pal Shifty.
The “wikipedia debacle” was about Shifty being shut down on the use of Wikipedia NOT for ‘doctrine of equivalents’ (to which HE was the one that falsely asserted that I had used – I had not), but instead was my use of Wikipedia for information on the Nobel prize – to which I used another, and direct, source to validate the information that I had obtained from Wikipedia.
For whatever reason, Shifty has an obsess10n over me that is unrivaled in the complete history of Patently-O.
NW, I never suggested anybody was a stalker. As for epithets, in one debacle Snowflake got so carried away with the insults (directed at me) that he accidentally called himself a liar. It’s in the written record.
Ah. My silly little friend, that ‘black and white’ is exactly the opposite of your (or course, false) assertion of:
“one debacle Snowflake got so carried away with the insults (directed at me) that he accidentally called himself a liar.”
It’s nice to see that cash flow start up again from your choices of gamery.
NW, did you ever hear about the time Snowflake Wahhh wahh wahhed to management because I was saying mean things and hurt his feelings? We’ll let him tell it.
Another false assertion from my pal Shifty.
It is well known that I have paraphrased John Maynard Keynes, and mere sharpness (or meanness) is clearly NOT the focus of my beat-down of you and the discussion of cyber-stalking.
Goodness knows I have refuted your assertion often enough.
Did you need a refresher link to cyber-stalking, Shifty?
Here it is: link to dictionary.thelaw.com
Note that I have remarked how it is your intent that is captured by this definition, as your posts show the earmarks of an obsess10n with me for no legitimate purpose.
And there’s the time Snowflake finally admitted he gets paid to post. We’ll let the Queen tell it.
My poor poor Shifty….
It really is nice of you to recap your false assertions so diligently, my Shifty Historical Pseudonym friend.
You manage to capture your odd “royalty” meme at the same time that you purposefully misconstrue that “paid to post” angle.
There is no “admission” aspect per se (like you had to work so hard to ‘get me to admit’ anything), as I patiently, completely, and repeatedly explained how it is that I have monetized off of YOUR obsess10n and your choices of the tells that you employ.
You cannot help yourself – so I helped myself to a nice tidy cash flow from your various game tactics.
Here is (at least one instance) of my providing the menu of my enterprising off of your choices:
link to patentlyo.com
This nice ‘flashback’ list of yours falls into the “retread worn-out memes” pop category.
Alas, even this “flashback” is a retread (from even earlier than the “menu” link):
link to patentlyo.com
Your retreads are being retread.
Sad for you – nice for me.
We think we are going to close comments on this thread. But before that we will allow Snowflake to ejaculate one (or two) of his mindless ad hominems.
Take it away, Snowflake!
Fill this room with your intelligence.
Shifty, you just do not ever seem to be able to “get” it…
Same ACME games….
“We think we are going to close comments on this thread.”
Who is this “we?” And what power do you think that you have to close comments?
Do you mean that you are just going to stop playing your game?
“we will allow Snowflake to ejaculate one (or two) of his mindless ad hominems.”
Well, at least you went for some graphic imagery in your usual game of projecting your own actions onto another…
“Take it away”
You mean like how I have thoroughly refuted every attempt of your game-playing on this thread, showing that every one of your mindless ad hominems has been a retread of a retread?
The thoroughness of your obsess10n with me has been matched with my thoroughness of showing how your posts serve zero meaningful or legitimate purposes, and can only exist to serve your attempt to harass one single person.
What do you think that that sounds like?
That is your effort? Do you really think that is the best you can do?
In our discretion, we will allow you to ejaculate one (or two) more attempts at your mindless ad hominems before we close this thread.
Take it away !!!
You wait nearly two weeks to ask me if that was my effort….?
You really just cannot help yourself, can you?
We know that even you is disappointed with that effort.
One last chance for another attempt at a mindless ad hominem before we close comments.
Don’t blow it ! Take it away !
“We know that even you is disappointed with that effort.”
‘that effort’ being your effort, Shifty.
Is it a tell or a meme when you engage in this projection habit of yours?
Maybe both?
How come everybody ignores you, Snowflake?
We’ll give you one more attempt at one of your mindless ad hominems before we close comments.
Make it good.
How many times are you going to “close comments?”
I suppose after your hundreds upon hundreds of posts dedicated to me that the progress you have shown of late** (with attempts at constructive engagement — in which Greg has been ignoring YOUR attempted point – politely), won’t be perfect and your old habits will show themselves.
Having one’s solid observations ignored comes with the territory and has long been captured by the adage, “you can lead a horse to water but you cannot make him drink.”
** did you happen to notice just how much your attempts with Greg reflect my stated views on that thread? Funny isn’t it how when you attempt to take a cognitive position, you sound more like me.
Of course, no one could have predicted that Snowflake would become unhinged when reminded of his “designated expert” debacle.
Another false assertion with the “designated expert” bit.
You confuse the fact that I do give Boundy credit when credit is due and I also wreck him when he is wildly off.
The dude has an ego (easy to see why), but I simply had the better of a legal point, and he was unable to handle it.
No “unhinged” from me — and quite the opposite.
You also did not answer the question put to you: what is up with your Obsess10n of me?
Of course, no one could have predicted that Snowflake would become unhinged when reminded of his “Wikipedia” debacle.
Lol – your latest meme/tell of “no one could have predicted” falls exactly in line with all of your other ACME plans, Mr. W. E. Coyote.
Interesting theories RK, especially as to the spike in divisionals rush filed before before June 8, 1995 to avoid their no longer being able to obtain substantial patent term increases beyond that of the parent patent. But as to withdrawing patents from issue in order to retain trade secrets, in recent years is not that contradicted by the very high percentage of patents that have already been published as applications before the patent issues?
Hence, my often reminders of the value of always starting out with the non-publication request.
Paul: “But as to withdrawing patents from issue in order to retain trade secrets, in recent years is not that contradicted by the very high percentage of patents that have already been published as applications before the patent issues?”
No “contradiction” here. Pay attention to the precise text of my comment; it is a matter of relative degree:
I said “it would be helpful to determine the fraction of withdrawn patents that did not publish as a patent, or a prior published application, to that fraction in all issued patents in this period.
That both fractions are small is known; but my conjecture is that the fraction of unpublished withdrawn patents is significantly larger than that fraction for all issued patents in the period.
My educated guess is that these are patents that the patentee asked to withdraw from issuance too close to the issue date to hold up publication of the issued patents. A few times, I have requested a patent to be withdrawn from issuance only a day or two before the issue date (usually due to some late-arriving prior art that I want to get before the Examiner), my request is granted, but the “patent” still publishes on its “issue date” with its assigned patent number, even though that patent is really null and void. The application will later be assigned a second patent number when it actually issues.
Quick path IDS to cite art from corresponding foreign application after receiving issue notification.
Totally off topic, but Missouri-resident netizens of this blog might want to write to the appellate judicial commission to recommend that they include Prof. Crouch in the list of candidates for Gov. Parson to nominate to fill the present vacancy on the MO supreme court. 😉
Dennis is pretty anti-patent (at least compared with ipwatchdog) so maybe he would qualify for the CAFC.
Maybe Dennis just needs to write some papers with Lemley and make all sorts of anti-patent judicial activism noises and he’ll get appointed to the CAFC.
Although come to think of it, his sex and skin color render him ineligible for appointment under the Biden Administration.
Just saw this:
link to thehill.com
I do not comment on the qualifications of the person (she may be the best possible choice), but if this were the result of an “Equity” first filter, then more the shame.
I am not sure why. I can tell you what I see from large clients.
Withdrawing and filing an RCE because the foreign associate took so long to report a foreign office action.
I think this is more common when the patent is filed claiming a foreign priority. Not sure but it seems like I’ve seen this more and more where we get an email from an FA with art that we simply have to put in the record.
A lot of it is the rise of the PCT and then the different patent offices take different amounts of time to prosecute the patent, which leads to getting an office action that you want in an IDS at the USPTO but it comes after you’ve paid the issue fee.
I can tell you what I am seeing. In the last six months I have seen several instances where the following sequence of events occurred: 1) the examiner calls to suggest amendments that will put the case in shape for allowance; 2) the applicant accepts the proposed amendments; 3) a notice of allowance issues; 4) the issue fee is paid; & 5) after all that, the PTO pulls the case back from allowance and sends a rejection.
In other words, I am sure that some of these pull-backs are instances of the applicant filing an RCE to get art on record from ex-US phases of prosecution. Some of the pull-backs however, are not applicant initiated. I have seen this happening often enough in the last six months that I figure it must be some new TQAS initiative.
Interesting Greg.
I’ve only seen one of those in the last few years.
That and the 101 chum machines are humming again. I have colleagues reporting a sharp increase in 101 rejections.
Yes I’ve seen some of that.
You know, people forget that Lee’s grand plan was to train people in the 3600 AUs and then propagate that “learning” to the other AUs with 101 rejections.
It wouldn’t take much to start rejecting 90 percent of patent applications under 101.
If Biden appoints one of these vile people at the USPTO, we could have a disaster. Chien is all for trade secrets to enslave the SV workers and to help big tech keep their monopolies. I can only imagine what she/it will want for a director of the USPTO.
For someone who has set a record likely NEVER to be broken for taking unilateral Executive actions, the lack of even a hint of filling the Iancu void screams out more than the Liberal Left may care to acknowledge.
I agree. I suspect that part of it is an increase in international prosecution, as others have suggested, and part of it is an emphasis on “patent quality.” I had quality control pull a patent from issue recently. What was surprising was how weak the resulting rejection was. I wonder if there’s been increasing pressure on quality control in the last decade to start kicking back more allowances.
What about the spike in the late 1990s?
In the 1990’s, we (at Motorola) were told someone got a hold of an SPE’s stamp (or another approval mechanism) and was allowing applications (bypassing the SPE). Some of the applications may have been withdrawn from issue or, if issued as a patent, subject to reexam at the request of the Commissioner. I was told we had a few affected applications or patents. I do not know if this would explain such a high number as seen in the graph in the late 1990s.
Regarding the post-2000 numbers, my firm has many applications that are withdrawn from issue to have references from foreign applications considered. The US applications have related technical subject matter but are outside the priority chain of the foreign applications (certification under Rule 97 not possible or practical).
Possibly a reaction to McKesson v. Bridge Med.? In 2007, Fed. Cir. effectively told practitioners to get procedures in place to prevent McKesson from occurring with them.
Therasense did not overrule McKesson.
Just a guess. I hope this helps.
Thanks!
Plus, when was it the PTO sent a whole bunch of allowed applications back for 101 evaluations?