The chart below shows a histogram of the total number of references per patent. (Utility patents issued in 2021) with the mode, median, and average noted.
The chart below shows a histogram of the total number of references per patent. (Utility patents issued in 2021) with the mode, median, and average noted.
Is this chart showing total cited references of patents issued in 2021 rather than [more interestingly] the number of applicant-cited references? I assume the former, as otherwise there would logically be more zero cited references from the many applications now filed without any pre-filing prior art search, rather than the miniscule number of zero-reference patents shown on this chart?
Interestingly Paul,
Examiners tend to cite more references in situations where the applicant submits nothing. That phenom deserves more thought.
Excellent point Paul, and Crouch’s response does nothing to explain why the “zero” point is so low (in fact, it raises even more questions as to just where this data comes from).
We have typically four types when it comes to prior art searches:
1) medium to large entities that do a prior art search
2) large entities that do not do a prior art search
3) university and university spin-off types that would not dream of NOT having a prior art search (and often have white papers with tons of references); and
4) small entities that choose not to spend on prior art searches (and have a spectrum of known prior art that they know of).
Thanks Dennis — great chart.
9% with more than 100 references?
Hide-the-ball shameful.
Without an on-the-record explanation of why more are needed; and then only with the approval of the Examiner (or perhaps the Examiner’s SPE), the PTO should limit applicant-supplied references to a maximum of 25 – 50.
Most of the cases with very large number of citations involve a family of international patent applications — that leads to lots of imported cross-citations.
Max, I had never seen an EPO or UK prior art search citing more than 20 references. Do you think that occurs very often?
More than 20 references? At the EPO or UKIPO? Does it occur “very often”, you ask. My answer: I doubt it occurs more than once in a blue moon.
As you know, references under the PCT and EPO are categorized X or Y. Background art is categorized A. Given that at the EPO search and examination are separate sequential acts, and that the Examiner isn’t supposed to go back and search again after Applicant amends during examination, the initial EPO search report has to cover not just what Applicant is already claiming but also what it might amend to, in response to the search report. So you would expect the list to be relatively long.
Even so, the number of EPO search reports with a total of more than 20 X, Y and A references in aggregate more than 20 is, I suspect, a rare ocurrence.
Who wants to disagree?
Good point. Hmm . . . then perhaps there’s a way for the PTO to account for such apps. Say, by making the 25 – 50 cap apply to just US patents and apps. Or . . . ?
Pro Say,
Your “cap idea” was B A D on the prior thread.
It has not gotten any better.
” that leads to lots of imported cross-citations.”
Literally always useless and a waste of time 100% of the time in my own experience. Just ridiculous. Although you are correct that is where a lot of it comes from.
6, always “useless” you aver. So I’m curious. When an Examiner in the USPTO prepares a search report during the international phase of a PCT application, is the set of references going to be different than if the same claims were to be searched in a domestic US national patent application?
Always. The examiners handling the non-provisional are USPTO employees, but ISRs are done by contractors. The full time staff appears to regard it as a point of pride to find “better” (in reality, usually just different) art than the contractors.
I’m pretty sure he’s talking about cross cites from “related” cases, not from the parent application which contains the same claims as the application being examined.
Although as we have discussed the ISR reports are often useless as well. Am doing two such cases this week. Both reports say “X ref 1 has ABC features but doesn’t show DE features. BUT the DE features are “virtuallylolsuggested” by X ref 1’s features FGH (lol), so it lacks inventivenesslol”.
6, thanks for that. Are you at liberty to say which ISA routinely issues an ISR in which the curious “virtually suggested” language is to be found?
I hope it isn’t the EPO. Perhaps the Patent Office in Korea?
Mind you, what I often say to clients is that what I want from the Office is a first class search report (which features are disclosed in which references). You too, perhaps?
What I don’t need (perhaps you too) is the Examiner’s attempts to argue obviousness (because I will do that bit for myself, once I have the pertinent references to hand). So, “virtually suggested” is good enough for me. For you too, perhaps. For some Applicants 8the ones paying for all this prosecution), perhaps even preferable, precisely because on validity the ISR doesn’t really say anything penetrating. (Perhaps, in the Far East, that’s what Applicants want from the ISA).
But then I’m operating in a jurisdiction with no presumption of validity. So I have to anticipate whatever obviousness attacks will be made post-issue, when it’s too late to re-write the claims or file a reissue, continuation, divisional or whatever.
I should say that for me it is when comparisons are made between the USPTO and the rest of the world that these threads get specially interesting.
As you continuously make excuses like “I don’t practice in the US,” when YOU make comparisons, your, “I should say that for me it is when comparisons are made between the USPTO and the rest of the world that these threads get specially interesting.”
come across as very much the shilling of EPO Uber Alles.
“Are you at liberty to say which ISA routinely issues an ISR in which the curious “virtually suggested” language is to be found?”
Tbh I cannot say it’s limited to just the one or the other. Happens kind of a lot regardless. Don’t see it from JP/KR/TW often however. CN is getting a bit ridiculous w it (just from my exp). EU offices EPO etc. often seemed to do it (tho not DE). But overall it happens quite a bit, and I don’t usually pay much attention to the exact office that seemed to have issued it, or keep exact nums.
“(Perhaps, in the Far East, that’s what Applicants want from the ISA).”
That could be correct.
“But then I’m operating in a jurisdiction with no presumption of validity. ”
Yeah they really should probably give you guys one. Or a little something.
Generous of you 6, but had you been paying attention, MaxDrei not only does not want that (for him), but he wants ours taken away.
“Although as we have discussed the ISR reports are often useless as well.”
This is my experience as well, except in my field they just totally ignore the differences.
Claim “A computer programmed to: determine A using B and based on C and D where B is constrained by E.”
ISR: “Document D1 discloses a computer determining A. As document D1 discloses all features of the claim, it not new.”
“Literally always useless and a waste of time 100% of the time in my own experience.”
Your thought/s on why this is the case.
Thanks 6.
Relatedly, have you ever had (a) case(s) where bang-on 102 prior art was “hidden” among a very large number of other applicant-submitted references?
“Your thought/s on why this is the case.
Thanks 6.”
He’s talking about related cases, they’re not really “the same”. And generally they’re so far away from the claims as to have none of the references be any good to use in rejecting the claims. Sure sometimes some of the refs are “in the same field” and make decent “A” references (as the Euros call it) that establishes some background for the app under examination but that’s about it.
“Relatedly, have you ever had (a) case(s) where bang-on 102 prior art was “hidden” among a very large number of other applicant-submitted references?”
I’ve had 102’s that meet the independent claim entirely so buried. Though usually it is not crystal clear and/or “in your face”, it’s buried down in the ref somewhere. So that kind of thing never really bothers me. What happens more often with IDS refs is that they draft the claims in some manner that the BRI makes some ref in the IDS be a 102/nice primary ref/great secondary ref (in combo with basic tier primary ref).
We have inherited items IN prosecution in which this is the case (albeit “buried” is a bit of a loaded word with connotations that rarely apply).
For our IDS process, I was instrumental in setting the strict “same” process of always submitting in “number order.”
As I posited on a prior thread, the caveats of what is represented (and what is NOT) with an applicant’s submission is critical to keep in mind.
Two quick points in reaction:
1. It isn’t “the Euro’s” who dub a background reference “A”. It is the PCT’s Implementing Regulations. Nearly every Patent Office in the world has signed up to them which, BTW, include curious provisions unique to prosecution in the USA and nowhere else (for example the prohibition of multiple-dependent claim itself dependent on a multiple-dependent claim).
2. Does the patent family include the earlier patent application from which priority is claimed? Under the Paris Convention (that’s everybody in the world) priority is only possible for the “same invention”. So the search report on the priority filing is a search report on the “same invention” as all the national phase ex-PCT filings being prosecuted in parallel.
… curious provisions unique to prosecution in the USA and nowhere else (for example the prohibition of multiple-dependent claim itself dependent on a multiple-dependent claim).
That particular rule is hardly unique to the U.S. The same rule applies in CN & KR.
Good to know. Thanks Greg. On this blog, one can learn a lot.
Ever true – and especially for learning things outside of your comfort zone – had you a mind willing to understand.
As it is, your “learning” is limited to those things that do not threaten your narrative (overly) and said to you from your small circle of ‘politeness.’
This discussion is very prosecution focused. Might we also consider that these reference are submitted to stave off IPR institution, claims of inequitable conduct in litigation?
In truth, xtian, prosecution is the only rationale for this.
If you are submitting for other reasons, that may be your druthers, but that is not what the system is for.
Anon – you mean to tell me attorneys don’t look at a reference and determine its cumulative to prosecution. They wouldn’t include it in an IDS, but for the thought in the back of their mind that if it is not on record, it could be more easily used to institute an IPR? Whether it is better to suffer a charge of prosecution misconduct by “burring a reference” or that this reference is used to institute an IPR, which the prosecution attorney had in hand, but didn’t submit to the PTO?
It’s not “burying” if you provide things in any given consistent structured order, and precisely because there is NO “evaluation” for cumulative or other “examiner-like” calls being made.
In other words, submit everything.
An example of that cumulative issue from years ago: I caught an attorney in a patent litigation evaluation suggesting that a certain U.S. patent reference had not been disclosed to the USPTO, ignoring the fact that its much earlier-granted and identical-disclosure UK equivalent patent had been timely cited.
Not on point Paul (you are in the ‘druthers’ zone OUTSIDE OF prosecution).
You are also talking about what what litigators may be doing — definitely a step down from the Patent Attorney plateau.
Re: “what litigators may be doing — definitely a step down from the Patent Attorney plateau.”
That’s quite amusing, considering the well documented reductions in P&P patent attorney incomes, especially as compared to patent litigation billings.
LOL – that you want to peg this at income (and then crow incessantly at the expense of litigation) is an irony that I am more than certain that you do not grasp.
No Paul, I am staking the plateau at KNOWLEDGE – not what litigators may charge.
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