Quillen and Webster alive and well at Patently-O?
One finds the text Most notably, around ten percent of the published applications will never issue and would not have been otherwise published. within the Patently-O post titled Published Applications as Prior Art in the larger text:
In 2001, the USPTO published its first patent application. Since then, almost two-million patent applications have published. During this same time period, about 1.3 million patents issued. There are a couple of ways that the prior art created by patent applications change the prosecution game. First, published applications increase the sheer volume of prior art. Most notably, around ten percent of the published applications will never issue and would not have been otherwise published. And, even if published elsewhere at a later date, applicants would be faced with the later 102(a) effective date rather than the 102(e) effective date associated with a published application. This ties in with the second importance of published patent applications — they bring innovations to light more quickly and in a manner that patent examiners can readily use. Along these lines, the early publication of published applications triggers the clock for the statutory bar of 102(b).
IPBiz surmises this might have come from the 90% allowance rate suggested by Quillen and Webster. The allowance rate (factoring in continuing applications) at the USPTO has not been 90%. LBE has been publishing on that since 2005. MOREOVER, even if the allowance rate WERE 90%, the Patently-O statement would NOT follow from Quillen/Webster, who took overall allowance data and did NOT normalize to patent families. One would need to know "how many" publications were of the SAME specification (continuations, divisionals) and "how many" publications were not. Quillen and Webster didn't do this analysis.
A commenter wrote:
"""""Most notably, around ten percent of the published applications will never issue and would not have been otherwise published."""""
Um. 1) Doesn't tie in to Provisional misunderstanding and 2) is incorrect. The number of published applications that would never have otherwise seen the light of day is equivalent to 100%-(allowance rate). Give or take a few patents. In the old days, that means that about 25% fit your criterion. Today, about 75%.
therein recognizing the error at Patently-O but not grasping fully the above IPBiz point.
The same commenter also wrote:
"""""And, even if published elsewhere at a later date, applicants would be faced with the later 102(a) effective date rather than the 102(e) effective date associated with a published application."""""
Um. Really not sure what you're groping for here. A publication is 102(e) art the same as an issued patent was. What publication does is . . . put the 102(e) art in the public domain if the patent never issues, put the 102(e) art in the public domain earlier, create an earlier 102(a) art date relative to the patent publication, and create an earlier 102(b) art date relative to the patent publication.
"""""This ties in with the second importance of provisional patent applications — they bring innovations to light more quickly and in a manner that patent examiners can readily use."""""
Um. Not published, and the "readily use" thought is flat out odd. Why would provisionals, if they were published, be "readily used?"
"""""A long these lines, the early publication of provisional applications triggers the clock for the statutory bar of 102(b)."""""
True, but completely scattered to have this thought in this part of your paragraph.
"""""The evidence shows that examiners are using the patent applications."""""
Wow. Coffee.
EDIT . . .
"""""A long these lines, the early publication of provisional applications triggers the clock for the statutory bar of 102(b)."""""
FALSE - not published - but WOULD be true, and completely scattered to have this thought in this part of your paragraph, IF you were referring to 102(b) effect of non-prov publication.
Again, the commenter spotted flaws at Patently-O but didn't get the full story himself/herself.
***Paul Morgan wrote:
Just to add one more bit to what above commentators have already accurately noted:
40+% of U.S. applications have a foreign priority claim, their USPTO publication date runs from their foreign priority claim date [so is often only six months after their U.S. filing date], and that publication cannot be optionally avoided [unlike U.S.-only filers].
This is a HUGE increase in more EASILY searchable in ENGLISH prior art as compared to the pre-1999 U.S. AIPA statute situation.
I also do not think it is at all coincidental that the number of new interferences being declared is now also VERY much lower than before this statutory publication change and its associated 135(b)(1)&(2)change on both interferences and Rule 131 usage, and electronic application publication searching, all took full effect. [Notwithstanding the later, additional, In re Winter case law effect of now requiring "cross-reading" of claims for interferences.]
***See also
Ta-tah to Quillen/Webster/Lemley?
http://ipbiz.blogspot.com/2008/06/paul-h-jensen-citing-quillenwebster-in.html
Patent reformers take the last train for the coast
http://ipbiz.blogspot.com/2009/06/ssi-17.html which notes:
Hot off the press: the paper by Cecil D. Quillen, Jr. and Ogden H. Webster, Continuing Patent Applications and
Performance of the U.S. Patent and Trademark Office—One More Time, The Federal Circuit Bar Journal, 379 (2009)
which begins: This Article is the fourth by the authors reporting the effect of continuing
patent applications on performance of the United States Patent and Trademark
Office (“USPTO”) and updates our earlier studies through the USPTO’s 2008
fiscal year (“FY”) and through 2007 for the European and Japanese Patent
Offices (“EPO” and “JPO,” respectively).1
manages not to cite the variety of papers criticizing the first three papers in the series.
For example, PATENT GRANT RATES AT THE UNITED STATES PATENT AND
TRADEMARK OFFICE , 4 CHI.-KENT J. INTELL. PROP. 108 (2004):
In recent proposals for patent reform made by the Federal Trade Commission and by the National Academy
of Sciences, there has been discussion of the possibility that the grant rate of patents by the United States
Patent and Trademark Office [USPTO] is high compared to that of other industrialized countries, including
that of Japan and those of Europe. This discussion began with papers of Quillen and Webster that
suggested that the grant rate might be as high as 97% and more reasonably is at least 85%. Although the
actual grant rate at the USPTO is typically in the range 62% to 68%, Quillen and Webster suggested the
higher numbers based on an analysis of continuing applications (including continuations, divisionals, and
continuations-in-part). The present paper suggests that the analysis of Quillen and Webster is flawed both
legally and methodologically, and that recent work by Clarke, which places the corrected grant rate at less
than 75%, is more accurate.
AND
The need to be "up to date" in Shepardizing cases is well recognized within the legal community.14 In the
present situation pertaining to patent grant rates, the impact of the first paper by Quillen and Webster,
which asserted a 97% patent grant rate, extended later in time than the second paper by Quillen and
Webster which withdrew the 97% patent grant rate and posited (among other numbers) an 85% patent grant
rate. Thus, the Harvard Law Review15and the chief patent counsel of Intel16 referred to the conclusions of
the first Quillen and Webster paper in the year 2003, after the conclusions had been modified in 2002.17
AND
The patent grant rate studies of Quillen and Webster are flawed and the published grant rate numbers
should not be relied upon in making arguments about patent reform. The models of Quillen and Webster
erroneously assume that all continuing applications are repeated attempts to patent the invention of the
parent application. The methodology of Quillen and Webster, even as modified in 2002, involves double
counting of patents and artificially inflates the patent grant rate. The approximations of Clarke are more
reliable than those of Quillen and Webster.
See also 4 CHI.-KENT J. INTELL. PROP. 186
While Quillen and Webster based grant rate on applications
"allowed," Clarke based his studies on applications "issued." In this paper, we use data
from the USPTO to show that the difference between "allowed" and "issued" applications
is not the reason for the divergence in grant rates. Instead, we suggest that Quillen and
Webster's elevated grant rates arise from a flawed numerical approach.
AND
John R. Allison and Emerson H. Tiller, The Business Method Patent Myth, 18 Berkeley Tech. L.J. 987,
at footnote 139 of QWII: "adjusting assumptions from previous study to correct a probable flaw, but still
producing an estimated allowance rate much higher than reported, and higher than in Japan and Germany."
AND
In a different area, in the context of the plagiarism issue involving Professor Laurence Tribe
of Harvard Law School,20 Professor Allan Dershowitz suggested there was a “cultural
difference” between sourcing in the legal profession and other academic disciplines.21
One would hope that there is no cultural between law and other academic disciplines as
to the correction of published text which is indisputably wrong.22
***
http://ipbiz.blogspot.com/2009/05/uspto-examiners-told-to-allow-more.html
In 2001, the USPTO published its first patent application. Since then, almost two-million patent applications have published. During this same time period, about 1.3 million patents issued. There are a couple of ways that the prior art created by patent applications change the prosecution game. First, published applications increase the sheer volume of prior art. Most notably, around ten percent of the published applications will never issue and would not have been otherwise published. And, even if published elsewhere at a later date, applicants would be faced with the later 102(a) effective date rather than the 102(e) effective date associated with a published application. This ties in with the second importance of published patent applications — they bring innovations to light more quickly and in a manner that patent examiners can readily use. Along these lines, the early publication of published applications triggers the clock for the statutory bar of 102(b).
IPBiz surmises this might have come from the 90% allowance rate suggested by Quillen and Webster. The allowance rate (factoring in continuing applications) at the USPTO has not been 90%. LBE has been publishing on that since 2005. MOREOVER, even if the allowance rate WERE 90%, the Patently-O statement would NOT follow from Quillen/Webster, who took overall allowance data and did NOT normalize to patent families. One would need to know "how many" publications were of the SAME specification (continuations, divisionals) and "how many" publications were not. Quillen and Webster didn't do this analysis.
A commenter wrote:
"""""Most notably, around ten percent of the published applications will never issue and would not have been otherwise published."""""
Um. 1) Doesn't tie in to Provisional misunderstanding and 2) is incorrect. The number of published applications that would never have otherwise seen the light of day is equivalent to 100%-(allowance rate). Give or take a few patents. In the old days, that means that about 25% fit your criterion. Today, about 75%.
therein recognizing the error at Patently-O but not grasping fully the above IPBiz point.
The same commenter also wrote:
"""""And, even if published elsewhere at a later date, applicants would be faced with the later 102(a) effective date rather than the 102(e) effective date associated with a published application."""""
Um. Really not sure what you're groping for here. A publication is 102(e) art the same as an issued patent was. What publication does is . . . put the 102(e) art in the public domain if the patent never issues, put the 102(e) art in the public domain earlier, create an earlier 102(a) art date relative to the patent publication, and create an earlier 102(b) art date relative to the patent publication.
"""""This ties in with the second importance of provisional patent applications — they bring innovations to light more quickly and in a manner that patent examiners can readily use."""""
Um. Not published, and the "readily use" thought is flat out odd. Why would provisionals, if they were published, be "readily used?"
"""""A long these lines, the early publication of provisional applications triggers the clock for the statutory bar of 102(b)."""""
True, but completely scattered to have this thought in this part of your paragraph.
"""""The evidence shows that examiners are using the patent applications."""""
Wow. Coffee.
EDIT . . .
"""""A long these lines, the early publication of provisional applications triggers the clock for the statutory bar of 102(b)."""""
FALSE - not published - but WOULD be true, and completely scattered to have this thought in this part of your paragraph, IF you were referring to 102(b) effect of non-prov publication.
Again, the commenter spotted flaws at Patently-O but didn't get the full story himself/herself.
***Paul Morgan wrote:
Just to add one more bit to what above commentators have already accurately noted:
40+% of U.S. applications have a foreign priority claim, their USPTO publication date runs from their foreign priority claim date [so is often only six months after their U.S. filing date], and that publication cannot be optionally avoided [unlike U.S.-only filers].
This is a HUGE increase in more EASILY searchable in ENGLISH prior art as compared to the pre-1999 U.S. AIPA statute situation.
I also do not think it is at all coincidental that the number of new interferences being declared is now also VERY much lower than before this statutory publication change and its associated 135(b)(1)&(2)change on both interferences and Rule 131 usage, and electronic application publication searching, all took full effect. [Notwithstanding the later, additional, In re Winter case law effect of now requiring "cross-reading" of claims for interferences.]
***See also
Ta-tah to Quillen/Webster/Lemley?
http://ipbiz.blogspot.com/2008/06/paul-h-jensen-citing-quillenwebster-in.html
Patent reformers take the last train for the coast
http://ipbiz.blogspot.com/2009/06/ssi-17.html which notes:
Hot off the press: the paper by Cecil D. Quillen, Jr. and Ogden H. Webster, Continuing Patent Applications and
Performance of the U.S. Patent and Trademark Office—One More Time, The Federal Circuit Bar Journal, 379 (2009)
which begins: This Article is the fourth by the authors reporting the effect of continuing
patent applications on performance of the United States Patent and Trademark
Office (“USPTO”) and updates our earlier studies through the USPTO’s 2008
fiscal year (“FY”) and through 2007 for the European and Japanese Patent
Offices (“EPO” and “JPO,” respectively).1
manages not to cite the variety of papers criticizing the first three papers in the series.
For example, PATENT GRANT RATES AT THE UNITED STATES PATENT AND
TRADEMARK OFFICE , 4 CHI.-KENT J. INTELL. PROP. 108 (2004):
In recent proposals for patent reform made by the Federal Trade Commission and by the National Academy
of Sciences, there has been discussion of the possibility that the grant rate of patents by the United States
Patent and Trademark Office [USPTO] is high compared to that of other industrialized countries, including
that of Japan and those of Europe. This discussion began with papers of Quillen and Webster that
suggested that the grant rate might be as high as 97% and more reasonably is at least 85%. Although the
actual grant rate at the USPTO is typically in the range 62% to 68%, Quillen and Webster suggested the
higher numbers based on an analysis of continuing applications (including continuations, divisionals, and
continuations-in-part). The present paper suggests that the analysis of Quillen and Webster is flawed both
legally and methodologically, and that recent work by Clarke, which places the corrected grant rate at less
than 75%, is more accurate.
AND
The need to be "up to date" in Shepardizing cases is well recognized within the legal community.14 In the
present situation pertaining to patent grant rates, the impact of the first paper by Quillen and Webster,
which asserted a 97% patent grant rate, extended later in time than the second paper by Quillen and
Webster which withdrew the 97% patent grant rate and posited (among other numbers) an 85% patent grant
rate. Thus, the Harvard Law Review15and the chief patent counsel of Intel16 referred to the conclusions of
the first Quillen and Webster paper in the year 2003, after the conclusions had been modified in 2002.17
AND
The patent grant rate studies of Quillen and Webster are flawed and the published grant rate numbers
should not be relied upon in making arguments about patent reform. The models of Quillen and Webster
erroneously assume that all continuing applications are repeated attempts to patent the invention of the
parent application. The methodology of Quillen and Webster, even as modified in 2002, involves double
counting of patents and artificially inflates the patent grant rate. The approximations of Clarke are more
reliable than those of Quillen and Webster.
See also 4 CHI.-KENT J. INTELL. PROP. 186
While Quillen and Webster based grant rate on applications
"allowed," Clarke based his studies on applications "issued." In this paper, we use data
from the USPTO to show that the difference between "allowed" and "issued" applications
is not the reason for the divergence in grant rates. Instead, we suggest that Quillen and
Webster's elevated grant rates arise from a flawed numerical approach.
AND
John R. Allison and Emerson H. Tiller, The Business Method Patent Myth, 18 Berkeley Tech. L.J. 987,
at footnote 139 of QWII: "adjusting assumptions from previous study to correct a probable flaw, but still
producing an estimated allowance rate much higher than reported, and higher than in Japan and Germany."
AND
In a different area, in the context of the plagiarism issue involving Professor Laurence Tribe
of Harvard Law School,20 Professor Allan Dershowitz suggested there was a “cultural
difference” between sourcing in the legal profession and other academic disciplines.21
One would hope that there is no cultural between law and other academic disciplines as
to the correction of published text which is indisputably wrong.22
***
http://ipbiz.blogspot.com/2009/05/uspto-examiners-told-to-allow-more.html
posted by Lawrence B. Ebert at 8:45 AM
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