Changing a No to a Yes in the Patent System

by Dennis Crouch

Patent attorneys expect an initial office rejection, but clients often want to know: how long must this go on before we get our patent?  The chart below provides some data on how many office-action rejections you might expect before a patent issues.

To collect the data, I wrote a short bit of code to parse through the file histories of all the issued patents from the past several years and count the number of non-final and final rejections.  The histogram above is based upon the total number of rejections in each patent history.  You can see that most issued patents issue with either 0 or 1 rejection, but there are a sizeable number that require 3+ (this also typically involves an RCE and/or appeal brief).  Note that the applications that fly-through without any rejections may have also received some sort of notice, objection, or requirement that slows down the process.  Note also that the chart here does not consider patent families. In the past, I have seen that continuation applications following an issued patent tend to issue fairly quickly.  In those cases, the applicant and examiner have already agreed on an aspect of the invention that is novel, and the new claims often simply re-form those key components.

The process of going from No to Yes can vary.  By definition, the technology at issue should be new, and so the first office action response is often about educating the examiner and how it is different from the prior state-of-the-art. But, in most cases, the applicant also ends up amending claims either for clarity or in order to add limitations to avoid prior art identified by the patent examiner.  This is all part of the process, and perhaps exactly how it should work.

 

37 thoughts on “Changing a No to a Yes in the Patent System

  1. 7

    Most of those other cases don’t “require more work”. They “have more work put into them to acquire breadth to the claim”.

    That’s not really the same D. Most of the other cases could, if they wanted, come in the door ready to get a patent (get formalities out of the way, draft at least a bit narrow etc.)

  2. 5

    Overall statistics don’t give an answer, in my opinion.
    There are just too many variables. It’s not just about the Technology Center or Art Unit. There’s also whether you are dealing with a Primary Examiner or an Assistant Examiner. That breaks down further into what kind of Examiner you are dealing with. There are Primary Examiners who are complete dead wood and will allow anything they can minimally justify to allow. There are Primary Examiners who will give a low quality First Office Action they barely gave any effort to, but will then contact you as soon as you file your reply and suggest how to amend an independent claim in order to allow the application. Forget Assistant Examiners. If it is their first year at the USPTO, for the most part they are simply too terrified to allow an application.
    But, most important of all, who is the patent practitioner representing the Applicant? As a former Examiner and as an experienced patent practitioner who has taken over numerous applications from other practitioners over the years, I have seen my fair share of sow’s ears that I have had to try to transform into silk purses. I’m not saying that they were all instances of malpractice, but a good number of them were instances of an Applicant getting what they were willing to pay for, and a practitioner more than willing to oblige them. I am sure that I am not alone in having heard a potential client tell them that someone else had quoted them much less for drafting an application. We are all aware of various prosecutions shops that have a reputation as being “mills” for churning out cheap, low quality products.
    There are also the independent operators out there who advertise or respond to ads on Craigslist and elsewhere. With the proliferation of registration numbers in the last 15 years (thanks in part to the registration exam going online), there has been an increasing race to the financial bottom. I just can’t compete with someone offering to draft an electro-mechanical application for under $3000 or an Office Action response for $1000.

    1. 5.1

      “But, most important of all, who is the patent practitioner representing the Applicant?”

      It seems like inventors would be well served by raising registration requirements enough to cull the bottom 20-30% of patent prosecutors. Of course prosecution would become more expensive, but the people paying bottom dollar are already not getting their money’s worth.

      As this would also benefit the top 70-80% of the patent bar, I am surprised it’s not already happening.

    2. 5.2

      “I just can’t compete with someone offering to draft an electro-mechanical application for under $3,000 or an Office Action response for $1,000.”

      Nor should you. And thanks for providing actual dollar numbers.

      My fellow independent inventor readers, here me now: Do not — repeat, DO NOT– hire any patent attorney or patent agent who quotes you less than the costs ipguy quotes . . . for any type of patent. ANY TYPE.

      For by the time you realize that your penny-chasing was folly, it will be too late for you and your invention. TOO LATE.

      Great patent attorneys and agents are worth their weight in gold.

      Pay them and pay them well.

      1. 5.2.1

        [I]dependent inventor[s]…, he[ar] me now:… DO NOT– hire any patent attorney or patent agent who quotes you less than the costs ipguy quotes . . . for any type of patent.

        Good point. Independent inventors should not hire any patent attorneys at all, for any price. Independent inventors should walk away from the patent system. Go do something productive and/or enjoyable with the time and money that you might otherwise waste on patents.

    3. 5.3

      I would disagree that patent practitioner per se is “most important of all.”

      We must not forget that we patent practitioners must heed the directions of our clients (those self same clients driving that race to lowest cost).

      This is not — as Ben errantly puts it — a matter of putting the bar higher and culling the number of practitioners.

      As our section lead keeps on reminding us, the client has chosen to pay for a Chevy – not an Escalade. Clients are fully appraised of both mix of partner/associate and respective rates, and are generally savvy enough to do the math and get to an average time per action driven by what they have negotiated to pay.

      Mills exist because THAT is what certain clients want.

      1. 5.3.1

        “Chevy – not an Escalade.”

        “Chevy” is a make encompassing many different types of vehicles: cars, trucks, etc. On the other hand, an “Escalade” is a particular model of “Cadillac”. Perhaps your section lead should be saying the client has chosen to pay for a Yugo, not a Porsche. lol
        Then again, kids these days likely don’t have a clue as to what a Yugo is.

        I agree mills do exist because that is an economic model the client has chosen. I also understand that practitioners work in mills for certain reasons and that the conditions in those mills incentivize practitioners to churn out a Yugo and not have the time to even give an upgrade to a Honda Fit.

        Early on in my career, I would have gladly worked in a prosecution mill for the experience. But, discussions about prosecution mills are another topic.
        By the way, I’ve seen lousy work product from practitioners who did not work in mills.

  3. 4

    This is interesting information. Another factor with the zero rejection category is that some of those applications are surely national stage (likely filed under the patent prosecution highway) which received favorable review as PCT applications. I don’t know how easily that data could be scraped, but it may be insightful.

  4. 3

    Patent attorneys expect an initial office rejection, but clients often want to know: how long must this go on before we get our patent?
    Only unsophisticated clients ask this question. Moreover, if you (as the patent attorney) have done your job properly, that question should have already been answered before the application was even filed.

    The correct answer to this (and there are many different variations, but the general message stays the same) is something like the following:
    I’ve seen the occasional first action allowance, and I’ve seen prosecution that last over 10 years. The patent office is like a box of chocolates, you never know what you’re going to get.

    1. 3.1

      ” The patent office is like a box of chocolates, you never know what you’re going to get.”

      Except, of course, should your patent be challenged at the Death Squad PTAB . . . in which case any chocolate you get is very likely to be infused with patent-killing poison.

  5. 2

    From the Twitter feed:

    Crouch: “3620s and 3680s have the most OA rejections per patent. (These are the art units handling business methods and data processing).

    Is anyone (including Paul) surprised?

    1. 2.1

      Nobody is surprised because we’ve spent years listening to the least competent attorneys on earth (most of whom practice in those art units) complaining about how they can’t understand how patents are supposed to work because it’s all so unfair etc.

      1. 2.1.1

        Nice strawman, as I have never indicated that I do not know how patents are supposed the work.

        Quite the opposite. Your throw-away script should be thrown away.

        Which reminds me: feel free to abstain from any innovation that you feel does not deserve patent protection.

      2. 2.1.2

        MM bro, did you hear today that Big joe is spotting 30 milly for literal gubmit provided crack pipes? You know, instead of writing off student debt or whatever. I’m hearing that it’s disproportionally slated for the black community bro, but it is an ongoing “evolving” situation as his staff likes to say. I’m not sure if he’s just trying to go retro BAAAAAAACCCCCKKKKKKK to the 80’s or what. Do you know sup there?

        1. 2.1.2.1

          A buddy of mine has had his direct citation of facts “Fact-Checked” to be “Mostly False” (by Snopes – and even as Snopes repeats the facts in its rather b0gus explanation).

          But one should not be surprised – given how the Liberal Left is handling “equity” crimes out in California.

          1. 2.1.2.1.1

            “even as Snopes repeats the facts in its rather b0gus explanation”

            Gotta love when that happens. It’s similar to how this dude I was dealing with in a patent case lately. He states that xyz part doesn’t touch abc part in a certain manner, and then argues that it is instead a different part edf that touches abc in that certain manner when that other part edf is itself able to being the limitation in the claim at issue in a slightly modified grounds of rejection, in his argument. It’s like, ok, maybe your argument is correct (or maybe not), but then that’ll just be a slightly modified grounds of rejection. People do this at least once or twice a year. I’m just not sure why they bother with it. Is it just the “need to be right” (recently being popularized and expounded upon as being a real thing all around the world by Kevin Samuels)? Who can tell? They practically never are getting a new non-f off that sort of argument, so I’m just not sure why it’s used, lotta money to pay for a tiny chance at getting a non-f slightly modified grounds of rejection.

            In any event, ol MM and anon and everyone might really enjoy this production. Quite a great tale from back in the day about MEXICO (AKA MEXICO CITY AKA TENOCHTITLAN, which I didn’t even know had that as its literal alt title till I saw it on a map in this very vid).

            link to youtube.com

            1. 2.1.2.1.1.1

              Meh, your counter example introduces differences and “slight” adjustments, whereas my point was to the exact same facts.

              Given how variable Your (and recognizing the Royal You nature of examiners) pulling out NEW references and merely asserting “minor” changes,… I would say that your counter does not fit the point presented.

              Further, your insertion of some “mental driver” as “need to be right” is simply out of place.

  6. 1

    Very useful info Dennis.
    Query if this chart counts as first actions mere restriction requirements? Or, is the number of restrictions? I also wonder if the PTO still delays decisions on petitions from improper restriction requirements so long that divisionals have to be filed anyway?
    I have been told that a major reason for not getting first or second action allowances [and increased RCEs] is applications filed with no pre-filing prior art investigation and thus unrealistically broad initial claims.

    1. 1.1

      Sorry, second sentence got cut off. I meant to ask: “Or, is the number of restrictions to small to affect these action counts?

      1. 1.1.1

        I didn’t count restriction requirements here, although they obviously do create work for the patentee. For this chart, I only looked at Non-Final and Final rejections.

    2. 1.2

      I have been told that a major reason for not getting first or second action allowances [and increased RCEs] is applications filed with no pre-filing prior art investigation and thus unrealistically broad initial claims.

      So you have been told, eh?

      Well, let me tell you as well that even applications with well-searched (that is, client prior art searches) ALSO face first, second and RCE actions, and it may well depend MORE on the examiner than on the application writer.

      Most all independent claims are meant to be as broad as possible WITH the expectation of some push-back.

      Your choice of “unreasonable” amounts to an emotive trigger word.

      Maybe stick to NOT commenting about prosecution, seeing as you have forsaken that as part of the service you provide clients long ago.

      1. 1.2.1

        “Most all independent claims are meant to be as broad as possible WITH the expectation of some push-back.”

        But most competent attorneys are not writing independent claims that capture the prior art or are merely obvious variations of that art. That would be foolish. Maybe also unethical, at least.

        This is why competent attorneys do an art search first and make sure they understand what is out there.

        Or you can just pound the table and screech at the Examiner and at your favorite patent blog about how unfair and difficult to understand everything is. That’s what you and most of your friends seem to enjoy doing.

        1. 1.2.1.1

          Another strawman from you — clearly you are an inferior prosecutor, which your penchant for exacting picture claims (that are most likely easy to design around).

          One wonders how much you have left on the table for those clients of yours.

          And speaking of client, you (hopefully) know that in regards to your quip of, “This is why competent attorneys do an art search first and make sure they understand what is out there. that ALL such searching is under the direct control of the client, and that it would be unethical to violate the express directions of the client in this regard, eh?

          Certainly one guides the client to the best level of application preparation (including vetting any ideations) — which unfortunately for your desired narrative IS a position that I have always advocated. But go ahead and you be you and pretend that somehow prior art searches are required under the law.

        2. 1.2.1.2

          “But most competent attorneys are not writing independent claims that capture the prior art or are merely obvious variations of that art. That would be foolish. Maybe also unethical, at least.”

          I mean, you say that, but it is obviously not true in my cases. They’re just trying to draft a claim that isn’t completely ludicrous but which is generally drafted towards the device/method in the app. You can literally verify this by looking over my docket at any given point in time. Most of the drafters know what they’re drafting against (the BRI) and how the claims will be interpreted by the office, but they use certain drafting styles that routinely get snagged on art that they “lol don’t intend”, even though they already know what the BRI is going to turn their claim’s scope into aforehand (verifiably, they know this and knew it at time of drafting, it’s almost always intentional, but they always want that particular app to leik tots be different n stufffff).

    3. 1.3

      I have been told that a major reason for not getting first or second action allowances [and increased RCEs] is applications filed with no pre-filing prior art investigation and thus unrealistically broad initial claims.
      I have a major client that performs pre-filing prior art investigation on EVERY SINGLE APPLICATION — this is even before the application is even drafted. Our claims are drafted based upon the disclosure and prior art that was uncovered. Our first action allowance rate is probably <5%. Examiners are loathe to allow an application without a rejection.

      On the other hand, I have filed many continuation applications that received first action allowances. However, I'm dealing with the same examiner and similar subject matter. However, even then they like to issue an initial office action. There are been far more than one occasion when I've pointed out to an examiner: you said feature XYZ is not disclosed by the prior art in the (allowed) parent application, feature XYZ is in the current claims, and your new reference also doesn't have feature XYZ.

      1. 1.3.1

        This jibes with my experience as well. Honestly, the phrasing “… reason for not getting first or second action allowances…” is odd—as if first and second action allowances are the same thing.

        A second action allowance bespeaks a client and examiner who are serious and engaged. A first action allowance bespeaks a prosecutor who has not claimed as broadly as the client is entitled. These are not the same thing.

        1. 1.3.1.1

          A first action allowance bespeaks a prosecutor who has not claimed as broadly as the client is entitled. These are not the same thing.

          Careful there Greg, as you may well end up in Malcolm’s “single bucket” with me.

        2. 1.3.1.2

          “bespeaks a prosecutor who has not claimed as broadly as the client is entitled.”

          Idk about that, most of the ones I allow on first action are scrapping by on one limitation that just isn’t in the art or a combo of limitations that cannot be 103’ed.

          1. 1.3.1.2.1

            Lol – let me guess 6, you have “perfect quality” (along both Type I and Type II error modes), eh?

            Do you (would you ever) know if any of your allowances have been “corrected” by the patent office in any of the post grant review mechanisms?

            1. 1.3.1.2.1.1

              “let me guess 6, you have “perfect quality” (along both Type I and Type II error modes), eh”

              Officially yeah, tho I had to do a 2nd action non-final the other day thanks to a depending claim that was down a long chain I didn’t think I could get with one obscure combo, but when I ended up making the rejection of the parent claims in an action it was quite apparent that indeed those limiations could be addressed (the actual issue was I didn’t think I could get one of the parent claims with that combo previously, probably due to claim construction issues etc). So it’s not 100%.

              1. 1.3.1.2.1.1.1

                translation: I thought I made an error once, but I was wrong about that…”

                How is the view on your Mount S?

            2. 1.3.1.2.1.2

              “Do you (would you ever) know if any of your allowances have been “corrected” by the patent office in any of the post grant review mechanisms?”

              I do not, and I doubt I ever would. Would be nice to know tho. Frankly I should prob be involved as I’m like 1 out of 8 billy people that is literally closest to the case.

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