Is anyone still waiting for a first office action? If you have applied for patents that relate to financial services (business methods) then the chances are that your application has not yet felt the flow of a patent Examiner's red ink. A Patently-O Blog newsletter reader recently wrote in:
Would you be willing to do a post on the ridiculous pendency (even to first office action) for financial services business method patents? We are seeing something like 42 months to first OA. Rumors (from sources inside TC 3600) are that the allowance rate is less than 10%. The process is totally broken!
Technology Center 3600 is the USPTO department that handles business method patents such as those classified as Class 705.
Class 705 involves Financial, Business Practice, Management, or Cost/Price Determination. This is a "generic class" for inventions that perform data processing operations uniquely designed for processing financial data, calculating the charge for a good or service, or cryptography.
The popularity of business method patent applications exploded after the famous State Street decision and the dot-com explosion. In response to a perceived lack of quality in issued patents (i.e., Amazon's One-Click), the PTO instituted several measures to improve the examination to ensure that bad patents did not issue. One measure is the ''second pair of eyes'' review of all allowed patents, this second review has come at a cost—the cost of ever longer pendency of business methods patent applications.
I poked around for about five minutes on the USPTO's Patent Application Information Retrieval (PAIR) site and was easily able to find a number of business method type applications that have been pending for +/- 4 years without seeing a single office action or substantive response from the PTO. Essentially, the queue has outpaced the system. Here is a table of five applications that I found with their filing date and the number of months they have been pending without receiving an examination:
Publication Number Filing Date Months On File Without First Office Action 20020087455 February 20, 2001 47 Months 20020087428 May 25, 2001 44 Months 20010051890 March 19, 2001 46 Months 20010049668 June 5, 2001 43 Months 20040215582 December 8, 2000 49 Months
Months On File Without First Office Action
February 20, 2001
May 25, 2001
March 19, 2001
June 5, 2001
December 8, 2000
We would all like to see patents move more quickly through the system. At the same time, no one wants patents to be passed through the system without a substantive and critical review by a skilled examiner. The PTO's increased budget and new leadership may help focus energy on the issue as a whole.
However, in the short term, there are a number of strategies that may help you improve your place in the queue. See parts II, III, and IV throughout the week for the details. I am not promising a panacea, or to release all my secrets, but I'm sure that you will find the hints helpful.
Feel free to add your comments!
To be continued ...