Tuesday, June 24, 2008

More RCEs --> lower allowance rate?

Within a post titled --Docs at BIO: Panel Discusses Impact of USPTO Rules Changes and Patent Reform Legislation on Biotech Patenting --, Patent Docs has some text discussing some gaming by the USPTO of patent grant rate in terms of RCEs:

Turning her focus to allowance rates, Ms. Kepplinger presented a graph (originally presented by Director Dudas) that clearly indicated that allowance rates had remained fairly constant between 1975 and 2000 (ranging from 60% to just over 70%), and had dropped significantly since 2000. Ms. Kepplinger primarily blamed increased RCE filings for the drop in allowance rate (noting that when RCEs are subtracted from the post-2000 totals, the allowance rate returns to pre-2000 levels). According to Ms. Kepplinger, other causes for the drop in allowance rate include:

1. The USPTO's goal to achieve a 3.5% error rate (Ms. Kepplinger noted that supervisor bonuses are keyed to this goal, and that the USPTO recently began including design applications in its error calculations – presumably to keep the rate at or below 3.5%);
2. The USPTO's desire to have a "second set of eyes" review applications prior to allowance;
3. Massive hiring of new (and inexperienced) examiners;
4. The reluctance of examiners to allow applications (Ms. Kepplinger noted that "you can't make a mistake if you don't allow"); and
5. The KSR Int'l Co. v. Teleflex Inc. decision.

IPBiz notes that, to some extent, this is a recycling of Quillen/Webster, who argued that numerous continuation applications made the allowance rate lower than it really was. At least with an RCE, one is talking about continued procecution on a given patent application.


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