Friday, November 18, 2005

Evidence of a recent drop in patent grant rates?

Statistics from the USPTO suggest that allowance rates have dropped steadily since 1999, when they were 70.8%. The following information suggests that there may have been a steeper drop that has started more recently.

From a board: Has anyone else noticed the sudden drop in the number of utility patents issued by the PTO? Over the past seven weeks, weekly issued utility patents has averaged 2141 +/- 261. This compares with the historic average (Jan 2003-Sept 2005) of about 3100 +/- 300. Even allowing for the usual variation in issuance rate and an apparent gradual decrease over the past year, this seems a significant and sustained decrease. There have also been some indications that something is up at the PTO: at a CLE I attended in September, a former assistant commissioner noted that the allowance rate was down 25 percent due to the current quality review efforts; in the examiner's union newsletter of april/may 2005 (at there is a table showing the "error" rate for examiners upon review of allowed cases for the period Oct 04-Mar 05. This follows a report from the PTO that the targets for quality are not being met [report.
My guess is the recent drop in the issuance rate about 6 months after the error report suggests that the hammer fell in April or so, examiners came under increased pressure to improve patent quality, since then they are reluctant to allow anything, and we are now seeing the decrease in patents allowed about 6 months later. During a phone interview one examiner told me that that supervisors are coming down on them, and this examiner wants unexpected results or advantages before allowing claims, apparently regardless of the validity of arguments over rejections. This all may help explain why over the past 6 months or so I have experienced a very high number of final rejections and advisory actions in cases where previously I would have expected allowance on second office action or after final. My use of RCEs and appeal briefs has definitely increased recently.

One notes that RCEs are now the most common form of "continuing" application. See "You only look twice," Intellectual Property Today, November 2005.

One poster suggested a remedy to a perceived increase in "obvious design choice" rejections:

The claims were also rejected on the reasoning that placement of part X in relation to parts Y1, Y2 and Y3 is a "design choice" (page 3 of the action). However, "design choice" is not a grounds for rejection under 35 U.S.C. §103.

As stated in the specification, parts X and Y function by ___________________ and [are therefore advantageous because _____] (specification, page __, lines __-__). Parts Y1, Y2 and Y3 are functional and do not present a "design choice." Design choices are discussed in the Manual of Patent Examining Procedure (MPEP) § 2144.04(VI)(C), but only insofar that they constitute a rearrangement of parts. Applicants' claims cannot represent a "rearrangement of parts," because the cited references fail to disclose all of the parts disclosed in applicants' claims.

(IPBiz post 999)


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