Sunday, March 25, 2007

More on NAS report as to "patent grant rate"

To focus on the "patent grant rate" component of the NAS report on patent reform, note the text on page 52:

A second reason for concern about changes in quality is that patent approval rates may be significantly higher than officially reported by the USPTO. For a number of years the USPTO has reported that approximately two-thirds of patent applications result in patent grants. In a recent study Quillen and Webster (2001) argued that calculations of allowance rates from USPTO reported numbers of applications filed, abandonments, and total allowances or issued patents have led to a consistent underestimate of actual allowance rates because the calculations did not take into account the effect of U.S. continuation practice.

At page 53 of the NAS report:

Quillen and Webster noted the possibility that more than one patent could issue from a single disclosure, but because they did not have the data to correct for such occurrences, they based their calculations on the assumption that “parent” patent applications are abandoned when a continuation application is filed.

[IPBiz note: the misdirection here is that the NAS discussion is about "continuation" applications, which do not include divisional applications. It is not reasonable to assume that the parent of a divisional is abandoned when a divisional is filed. In most cases, that is untrue. However, the elevated grant rate of 97% found was as to "continuing" applications, which do include divisionals. Even excluding the continuing/continuation sophistry, it is not true that only one patent can issue from a family of only continuation applications.]

The relevant text of the first Quillen Webster paper appears at page 4:

A continuation application is a second application for the same invention claimed in a prior copending nonprovisional application that claims the benefit of the filing date of the prior application. n16 Since the second application is for the same invention as the prior application, the prior application is normally abandoned after the second application is filed. n17

Footnote 17 stated:

n17 The authors have been told that in some circumstances it is possible to file a continuation application without immediately abandoning the parent application, and for the unabandoned parent application subsequently to mature into a patent, even though the continuing application and the parent application (which subsequently becomes a patent) are for the same invention. It is not possible to tell the number of such patents, if any, from the PTO data. To the extent there may be such patents, the Allowance Percentages and Grant Rates, as calculated in Tables 2 and 6 respectively, could be affected. See infra tbl. 2, tbl. 6.

[IPBiz: it is possible in ALL circumstances to file a continuation application without immediately abandoning the parent application, as should be apparent to ANY registered patent attorney or agent. Because the continuation application would have different CLAIMS, it would not be for the SAME invention. (the claims define the invention.)]

The 97% number reflects data on CONTINUING applications, which comprise continuations AND CIPs AND DIVISIONALS:

Calculations that do correct the PTO Grant Rates for continuing applications are in Table 6. n77 And, as can be seen from this table, the corrected Grant Rates are quite different from the uncorrected Grant Rates. For [p. 13] example, if it is assumed that all of the continuing applications represent a renewed attempt to patent the subject matter of their parent applications, then the number of net abandonments is the total number of abandonments less the total number of continuing applications filed. The overall Grant Rate for the 1993-1998 fiscal years on that assumption is 97%.

**"The first reason" **

In case you were wondering about "the first reason"-->

One reason for suspecting that quality has suffered is that even before taking examiner qualifications and experience into account, the number of patent examiners in recent years has not kept pace with the increase in workload represented not only by the enormous growth in the number of applications (doubling in 10 years, between 1991 and 2001) but also by the growing complexity of applications as represented by the growth in the number of claims and prior art citations per application (Allison and Lemley, 2002).30 The number of examiners per 1,000 patent applications is down about 20 percent over the last four or five years (see Figure 3-1) in part because of congressional reluctance to increase personnel.

At page 54, one has the text:

The committee believes that high acceptance rates, especially if increasing over time relative to comparable rates in other industrialized countries would be reason to look more closely at examination quality.

Curiously, this "conclusion" comes AFTER the text:

Acceptance rates by themselves ignore how patent claims are modified, nearly always by narrowing their scope, in the course of the examination, surely a key determinant of quality. Moreover, rigor of examination is only one of several factors that may affect allowance rates. The fact is that the examination procedure, allowing an applicant multiple attempts to persuade a critical examiner to approve a patent (see Appendix A), is designed to yield a high “success” rate, at least for persistent applicants.34 The predictability of the standards in a particular technology and the perceived economic value of the patent are some of the factors that affect motivation to pay the costs associated with that iterative process.

IPBiz notes that it is the claim, not the application, which is the currency of the realm. It is MEANINGLESS to compare the "acceptance" rates of applications from different countries without knowing the contents of the claims.


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