Monday, January 08, 2007

More on patent grant rate

Harold Wegner talks about the relatively low patent grant rate for the last fiscal year:

Several folks have shared their reactions to the PTO’s announcement of a 54 % allowance rate for this past fiscal year which is an indication of a vast improvement over the earlier higher rates that some had estimated at over 90 % and many others had estimated at over 70 %. This is still far above the 29 % allowance rate in Japan that has remained constant over the past three years, but considerably lower than at the EPO.

One notes the 54% number is a raw, unadjusted number, but that the 90% numbers (e.g., the 95% and 97% of Quillen and Webster) are corrected numbers, as is the 75% number of Clarke. The corrected numbers can't really be compared to the raw number.

Wegner reaches two preliminary observations:

(1) There is a noticeable toughening of examination at the PTO

(2) Real Improvement or Two Steps Forward, Three Steps Back.

Of the second point, Wegner states: Whether there is a long term improvement in the system will largely depend upon whether patent applicants consider the toughening standards to be a temporary matter or not, which is best measured by the rate of continuation and RCE filings.

IPBiz notes that one has to distinguish between continuation filings (which may be used to get claims on a new invention, supported by the disclosure of the specification) and RCE filings (which may not be directed to a new invention and which are generally made to continue a dialog between examiner and applicant on previous claims). For the last two fiscal years, RCE's have been much more abundant than continuations, undercutting much of the Lemley/Moore conjecture about continuations.

Wegner also noted:

Statistics to back up the 54 % conclusion have not been obtained: Everything stated here is based upon assumptions without the numbers. There is reason to question some of the statistics, including a roughly 31 month average pendency for applications. To the extent that this is a net pendency from the priority filing date, this does not square with some recent calculations that have been made over admittedly limited samples.

Churning -- The Number One Enemy to Quality and Pendency: To the extent that the PTO 54 % number is a real number without significant continuation/RCE filings, this is very significant. To the extent that there is any indication that the tougher examination that is real is viewed as a short range measure, then there will be massive churning that will only flood the system with additional work without real disposal of cases. While a curtailment of continuations (which should be done through a statutory fix) may seem like an answer, it is in reality simply fools gold as other stop-gap measures will be taken to prolong the pendency of patent applications until a kindler, gentler regime is instituted toward applicants: The higher rate of appeals is one manifestation of the tougher policy. To the extent that the Board gets flooded with appeals, the several years backlog of appeals that was the norm in the 1980's will surely return so that this alternative to continuation/RCE filings will return as a normative measure.

IPBiz notes that patent grant rate has been one of the issues in the patent reform movement.


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