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.
How many rejections does it take to get a patent?
About 15% of cases go straight through without any rejection, but some cases require more work. pic.twitter.com/s51wntcoKb
— Dennis Crouch (@patentlyo) February 5, 2022