Beating the Deadline: Timing the Responses to Non-Final Office Actions

PatentlyO060

I took a sample of 6,600 published patent applications whose prosecution files each included an initial non-final office action rejection and a response to that action that was submitted sometime between January 1, 2008 – June 10, 2010.  Based on the dates of the office action and response, I created the histogram shown above. (Note, the histogram is corrected for due-date shifts caused by weekends and holidays).  The data is an improvement on what I presented in 2008. [Link]

As the chart show, patent applicant responses are extremely deadline driven. A typical non-final office action allows three-months to respond, but that deadline can be extended for up to three more months (for a fee).  The current extension fees are $130, $490, and $1,100 for one, two, and three month extensions respectively. That fee is cut in half for qualified “small entities.”  About 2/3 of applicants respond within the original three-month deadline. An additional legal reason to meet the original three-month deadline is that it preserves potential patent term adjustment (PTA) created by patent office delays. PTA is reduced by one-day for each day of applicant delay beyond the three month date.

Hitting the Deadline: More than 26% of the responses were filed on the exact day of the three month deadline. For applicants that missed that date, 70% filed their responses within four-days of a deadline.

Compact Prosecution: One problem with long delays is that information regarding the invention, the business needs, and the prior art, and the attorney-examiner relationship all become stale in the course of three months.  Although this staleness is difficult to quantify, I did look at patent grant rate as a function of the timing of responses. In my study, I found a clear and significant negative correlation between grant rate and delay in responding to the non-final office action.  I.e., longer delays are associated with a lower grant rate. (Here, grant rate is calculated as the number of patents issued divided by sum of the number of patents issued and applications abandoned).  The chart below groups applications according to the earliest deadline met in their first OA response and reports the grant rate for each group.

PatentlyO061

Satisfied With Delay: A delay in applicant response more-likely-than-not will delay the eventual issuance of the patent.  These figures show that most applicants are not troubled by that delay. On that note, I found that applicants that claim priority to a provisional application tend to have longer delays in responding to office actions. That is not surprising since the filing of the provisional already indicates that the applicant is comfortable with delay.  As might be expected, applications relating to Biotechnology and Organic Chemistry (TC 1600) tend to have a longer delay as well.

 

73 thoughts on “Beating the Deadline: Timing the Responses to Non-Final Office Actions

  1. 73

    extensions can serve a purpose

    Sure. There’s almost always an exception to rules and maxims. Lots of tools in the tool kit. Gotta love the US system and the flexibility. Must be why it is the most highly coveted patent system in the world.

  2. 72

    For Cy and Ping:
    Oh I agree Cy – late responses (later than three months) are not good in and of themselves.

    Supposing you have obtained a narrow patent quickly, so investors are happy and you have basic coverage with little estoppel, but your client won’t get to market for a few years (and neither will infringers, due to government regulations). Maybe you also have obtained a broader patent. Eventually you want to pursue pie-in-the-sky broad claims, but that would be unwise early in process. In the mean time, you want to keep an open continuation on nibbly little alternative embodiments. Paying for extensions (with money and foregone PTA) makes sense, if necessary to maintain pendency until competitors show up, until secondary indicia is generated, until the client itself eventually understands the dividing lines between the prior art, the claims, and the commercial device. So, I suggest that, while extensions for extensions sake should be avoided, extensions can serve a purpose (for the applicant).
    I have a few cases where secondary factors sufficient to persuade the Examiner have become available six or seven years after filing a continuation. It would have been hard to do that without buying time.
    You added a nice wrinkle with the provisional damages: If one of my claims is published and I might be entitled to provisional damages, but I am in no rush to sue, than it would be advantageous to shift the issued patent term into the future, and preserve those B-Period delays.
    So I think amongst us all, we have raised enough issues to illustrate that use of extensions, or immediate response to an office action, which can both shorten patent term, should not be viewed with suspicion.
    To respond to “I think I’d rather have my patent issued,” how about this: I think I would rather have a notice of allowance and pay the issue fee, and have the PTO forget to issue the patent for a few years, in those many cases where it takes a few years to get product sales fully ramped up or get an infringer ramped up.

  3. 71

    – if the delay is after publication (and as you point out, this is highly likely), then loss of “useful” term may be mitigated.

    If you’re talking about provisional rights, then I hear you. Given that the expiration date isn’t different, however, I think I’d rather have my patent issued.

    Also, the assumption of a day-for day delay in issuance has no emperical support.

    Agreed. It could actually be worse. But unless you assume that your extra delay actually causes the patent to issue earlier than it would have otherwise, my point still stands. Now THAT assumption has no empirical support.

  4. 70

    Oh I agree Cy – late responses (later than three months) are not good in and of themselves.

    The distinction you make for “Useful” Term is suspect at best and will be greatly influenced by the art field. Don’t forget about the “gift” the Office provides for actually taking its Quo early – if the delay is after publication (and as you point out, this is highly likely), then loss of “useful” term may be mitigated. Also, the assumption of a day-for day delay in issuance has no emperical support.

  5. 69

    huh-what? You think that you lose term by answering late?

    This stuff makes my head spin if I think too much about it, but yes, I do. Useful term, that is, meaning the length of time between issuance and expiration. Now, I’m assuming that the application is pending for greater than 3 years (which is true for all of my cases these days). In this scenario, your delay after 3 months presumably causes a day-for-day delay in issuance. Your useful term is reduced.

    Like I said, my head spins when I do this. So please point out my errors, and I’ll admit them.

    And no, I never said that the client doesn’t deserve his PTA. But you can’t shift the expiration date further out by delaying PAST 3 months. (DC is correct that you CAN push it out by using the entire 3 months.) So while there may be some benefits to the client from delayed issuance, accomplishing this through late responses is costing your client useful term.

  6. 68

    but you’re not losing term. That makes this quite different from answering late.

    huh-what? You think that you lose term by answering late?

    That be new to me.

    Try again Cy – DC be precisely correct.

    No, it is not unethical, precisely because I’m not throwing away anything that my client is entitled to.

    DC be correct here too (at least in the hypo he sketched out). In that hypo you would be throwing away the full benefit of PTA – DC’s example is pretty clear. Last I checked, PTA is fully a benefit that the client deserves (unless you be one of those that thinkthe Office should be able to break its promises without penalty…).

  7. 67

    Roufousse T. Fairfly wrote, “At the EPO, applicants tend to use in most cases the legal maximum of sixth months for replying.”

    Actually what I see happening with fair frequency is applicants request the 2 month extension to get to the 6 month date, then fail to respond, wait until the EPO sends the notice of withdrawal (which may take a few months), then at the end of that next allowed 2 month period finally pay the required fee to resurrect the withdrawn application make their response to the Official Communication.

    Elapsed time is then nearly (and sometimes greater than) one year simply to the filing of the applicant response to the O.C.; and often 18 months or more between the 1st O.C. and the 2nd.

  8. 66

    DC, a thoughtful post. A few comments.

    If you answer, for example, on the day an office action appears on PAIR, you lose three months of B-Period delay.

    You’re losing delay, but you’re not losing term. That makes this quite different from answering late.

    According to your theory, that is unethical. The only ethical choice under your theory is to file on exactly the 3 month deadline, so you do not lose a day of B-Period delay.

    Now you’re putting words into my mouth. No, it is not unethical, precisely because I’m not throwing away anything that my client is entitled to. I might also note that you’re assuming that all clients want delay. That’s not true in my experience. For some of those that do, I have instructions to file near the 3-month deadline, but not after. If I can’t plan my schedule well enough to accomodate that, and it gets filed late, then I eat the extension fee and apologize profusely to the client. It’s happened once. I generally have no trouble hitting a one- to two-week window before the 3-month response deadline.

  9. 65

    it gives us all some confirmation that everyone is doing things the same way, in the aggregate.

    DC be right – thas just human nature.

  10. 64

    For Cy Nical and They are sharper than you think: There are many reasons for taking extensions, and many are beneficial to the client. If taking a three month delay might be unethical because is cuts some PTA, then answering early should be unethical because it cuts some PTA. B-Period delay is granted on the basis of delay in issuance beyond three years from the filing date. B-Period delay is good if you like to shift your patent term into the future (and who doesn’t, right?). But B-Period delay allows for a three-month response time. If you answer, for example, on the day an office action appears on PAIR, you lose three months of B-Period delay. According to your theory, that is unethical. The only ethical choice under your theory is to file on exactly the 3 month deadline, so you do not lose a day of B-Period delay. Only if it is clear that an application is proceeding so quickly that it will not have any B-Period delay would it be ethical to answer early, and only if an application has no A-period delay and no prospects of B-Period delay would it be ethical to file a response late. That would be awfully hard to manage in a real practice.
    I am going to answer an office action, now, if it is not too early or too late to suit your tastes.
    Anyway, it is a neat post just because it gives us all some confirmation that everyone is doing things the same way, in the aggregate.

  11. 63

    I think the point being expressed is that it is merely a correlation, not a causation. Correlation simply means that OA response times and patent grant rates are dependent on one or several other factors – that there is some relationship between those two but that the relationship depends on other variables. The reasons provided here by some for the lack of a correlation are more likely indications of those other factors at play.

  12. 62

    Three months for receiving a reply is quite good. At the EPO, applicants tend to use in most cases the legal maximum of sixth months for replying. A time limit of four months is normally set for replying to a communication according to Art. 94(3), and the applicant can request without any cost a supplementary two month extension, which is automatically granted. To these must be added another ten day allowance for postal delivery delays.

    If 193+ days are not enough, the applicant can always request further processing, globally resulting in 3 to 5 months additional time depending on the workload of the formalities officers. (The EPO must first issue a communication by registered mail indicating that a delay has been missed. The fee for reprieving the missed delay is somewhat lower than in the US).

    Representatives will practically always consult with their customers before drafting a reply, adding delay, and in cases originating from overseas (e.g. US, JP) the foreign patent attorney will have his say.
    Some representatives I know nevertheless manage to draft their replies ahead of time, but file them at the last possible moment. It is arguably good practice from the practitioners point of view, but for the examiner the whole setup results in an approximately one-year cycle for an office action+reply. It’s quite frustrating to have a file returning after all that time to see that nothing really improved and that you must have another go at it (i.e., summon Oral Proceedings or write another communication).

    In any case, it is against the applicant’s interest to respond too quickly to the EPO:
    If there is a good prospect for a grant, then the applicant will have to pony up some serious money starting from the moment the Rule 71 Communication is issued. In the unfavorable case, it is better to leave the public in doubt as long as possible as to whether a patent will ever issue, and to its scope – and then, there’s that (theoretical) US duty of candour lurking. In either case it is better to drag things out. The system therefore has built-in major disincentives for any quick action on the part of the applicant. But EPO management prefers to blame its staff for the delays.

  13. 61

    Meh, I don’t care one way or the other how quickly the response comes back to me. If you’ve got stuff that blows the doors off my rejection, that’s all I need.

  14. 60

    Ned,

    Still sport ‘o kings even with reduced fees for small fries (6, small fries still a buck, right?). Ya still miss the point that tieing things of impact to increacing costs to the applicant aint a workable solution for what the Office mandate is (try to remember that). Your answer of “charge more” is just not an answer.

    Ya gotta put the limit on claims together with the families to get the big picture Ned – it simply wasn’t an attempt to put the claims in one app like you be on about. Dufas tried to clamp down on applications per se, not caring if he violated the law or not.

  15. 59

    ping, Dudas wanted to limit the number of claims. To do this, he had to prevent filing of related applications where the spec was the same. The rules he proposed allowed the examiner to have all the claims presented in one patent application so that as a whole they could be evaluated to see if they were over 25.

    Now it is also true that he wanted to cut off prosecution of essentially the same claims, but that is another topic, not exactly the same.

    As to expense, that can be handled by reduced fees for small fry. You seem to equate an excess claim fee per se with oppression of the small folk even before considering the reduced fees they are charged.

  16. 58

    Ned,

    Cost aint no automatic. You just suggestin sport ‘o kings again. Someone else also pointed this out to you – Why you don’t listent to me when I say the same thing, I don’t get.

    As to defer examinations. You be walking down the wrong path. Delaying the examination don’t mean didly to continuations, as long as they are filed when the parent is alive (in fact, deferring examination keeps the parent alive longer keeping the con avenue open – not closing it.

    The consequences of the above would be to incent applicants to file all their claims in one application, which is what Dudas was after.

    Now I know you were asleep during the claims and continuation fiasco. Dufas didn’t want all claims filed in one application. He wanted the applicants’ rights sharply curtailed by both cutting out additional applications and limiting claims in applicaiton families. It was not a “gee I want all the claims in one app” sentiment. Dufas would have nailed your divisional option.

  17. 57

    ping: re: automatically: Cost

    ping: defer examination of related applications:

    Why not, if the have the same spec? I think the commissioner has full control over timing of examinations. The justification here would be the need to prevent double patenting. I have actually had applications fully examined be held up pending the grant of a related application just in order for him to enter a double patenting rejection or a rejection under 102(g) if the other application is not by the same inventor. So, if they have the authority to do this, they also have the authority to suspend prosecution of related applications having the same spec.

    If the claims were restricted, however, they could be filed in a divisional and examined in the ordinary course.

    The consequences of the above would be to incent applicants to file all their claims in one application, which is what Dudas was after. The examiner would restrict and the applicant would have the benefit of 121 against a double-patenting rejection.

  18. 56

    automatically limited the number of claims

    Um, like how?

    Regarding related applications, he could have delayed examination of any of them until the the first filed issued. That would put a break.

    Reds, greens and blues – a tragedy when they get mixed up.

  19. 55

    You know, 6, Dudas could have accomplished a lot more with a much simpler plan. For example, he could have required applicants file, in a separate paper, a cross reference of claim limitations to both reference numerals and paragraph numbers. He could have enforce it by entering Section 112, p. 1, rejections of any claim not cross referenced properly.

    The above would have helped examination and automatically limited the number of claims, etc.

    As to endless RCEs and continuations, the examiner has inherent authority to say the applicant is delaying willfully. He should just have issued guidelines.

    Regarding related applications, he could have delayed examination of any of them until the the first filed issued. That would put a break.

  20. 54

    This article draws some imaginative and baseless conclusions. That is my biggest criticism of PatentlyO.

    I wish Dennis would provide a greater variety of organic snacks.

  21. 53

    I prefer to receive a response exactly five weeks from the time I issue a final. Anything less, they get the works from me. After five weeks, its curtains for that application. Sorry, it is just the way it is.

  22. 52

    I propose that it is unethical to bill a client for an extension of time fee when the lateness was due to the practitioner’s actions.

    I agree, unless there’s some other pre-existing agreement. Plus, there is the negative impact on PTA. Routinely giving away your clients patent term for no good reason probably falls afoul of an ethical obligation or two. I’ve been assuming that those who say that they need more than 3 months to polish the argument/evidence are doing so with the informed consent of their clients. Surely that’s the case?

    And how many 131/132 affidavits are you guys (Josh) preparing? I’ve filed maybe two in the last 3 years.

  23. 51

    This article draws some imaginative and baseless conclusions. That is my biggest criticism of PatentlyO.

  24. 50

    RE: “The grouping at deadlines does seem to suggest the attorneys are trying to avoid the delay fees, which does suggest that clients are insisting the procrastinating attorneys pay for them.”

    I propose that it is unethical to bill a client for an extension of time fee when the lateness was due to the practitioner’s actions. Even if the client does not insist the procrastinating attorneys pay for them, I would think that practitioners run a serious risk of USPTO Disciplinary Action in view of standard practice of not billing clients for an extension of time fee when the lateness was due to the practitioner’s actions.

    If you are a client and your procrastinating patent practitioner bills you for an extension of time fee, contact the practitioner to resolve the matter. If that doesn’t work, try link to uspto.gov

  25. 48

    RE: “I file within minutes of receiving it. That shows them how crazy you can get, and then you really scare them by asking for a personal interview the next day.”

    One time, a former co-worker filed a response to an OA on the same day the OA appeared in PAIR. Her response filing date had the same date as the OA, but was arranged in PAIR to appear BEFORE the OA.

    Naturally, being a Government agency, she eventually received a Notice of Abandonment from the USPTO for failing to file a response to the OA becaues her same-dated response was arranged in PAIR BEFORE the OA.

    She had a lot of fun spending her time to get the USPTO to recognize that her same-dated response was filed after and in response to the OA.

  26. 47

    To: Alan McDonald,

    Since a quick turn around time to filing a response is out of the ordinary (as per the above charts), filing a response within two weeks of an Office Action shows the examiner that you are desperate, have no other work to sustain your patent practice, and unlikely to appeal the matter since you probably have clients who can’t afford to appeal.

    File a response within two weeks of an Office Action is an open license to an examiner to do what ever they want, e.g., sluff off articulating how the prior art teaches the claimed features, not addressing some features and not addressing some dependent claims.

    Examiner’s know the game presented above by Dennis and they are not fooled into believing that an applicant is serious and willing to pay to fight for a patent by a quick turn around on the response.

  27. 46

    “Paul, the grouping at deadlines counter-indicates delay caused by intra-company procrastination.”

    I diagree. Many companies provide instructions to outside counsel on schedules driven by avoidance of PTO fees. Very few of my clients seem sensitive to delays in patent issue caused by responding in three months rather than one month to a non-final.

  28. 45

    “All that praise given to Kman should be accompanied by a statement that he obviously hasn’t been here long enough to recognize the largest enemy of his plans: hordes of barbarian dependent claims.”

    Yeah. Dependent claims are the culprits. Must be because they are so hard to examine after an independent claim has been found to be allowable.

    Makes perfect (Patent Office) sense to me.

  29. 44

    Maxie,

    That was 6 that made the comment about substance – don’t that tell you enough?

  30. 43

    Dudas knew his enemy, faced him on the field of battle and all but completely won.

    Which winning battle was that, 6?

    Ya might want to see the doctor about that Michael R Thomas syndrome you be developing.

    instead focused more on things that don’t really matter to them so much.

    …like examiners. Better reinvent POPA before the storm.

  31. 42

    I’m interested in the observations from a PTO Examiner that there is a difference between importing a “limitation” to the claim and responding with “substance”. The former gets less respect and attention than the latter.

    But aren’t all claim limitations substantial? Do Applicants really amend claims, supposing that it is nothing of substance?

  32. 41

    “I no longer comment here regularly because of the zoolike atmosphere fomented by Mooney and now 6. Both you guys/gals are obviously smart and capable of good points and comments. But it’s obscured by your attack style and playing for the “lulz” as at least 6 would put it. And of course everyone feeds the trolls.

    Geebus. Cut it out.”

    Mark man, seriously, cut the srsness out a bit man. Just chill. These are the internets, not your local AIPLE or whatever meeting.

    “So why are RCE’s now put on the slow pile instead of the fast pile where they are fresh in everyone’s mind (and less likely to be assigned to a new examiner because of turnover)?”

    I think the stated goal was to get people to stop filing them (I’m actually being srs here). They really wanted applicants to try to wrap up prosecution faster as well as examiners trying to wrap it up faster. Even though Kman didn’t have the balls to continue with the Dudas plan he still recognized the kink that large use of RCE’s for infinite do-overs was putting in his plans for patent utopia. So he wanted something to discourage the use of RCE’s while still allowing people all their claims etc. As well as lifting some of the workflow burden off of examiners. But even so curious, RCE’s will also get acted upon fairly swiftly due to the nature of getting credit for the work and at least having a little bit of familiarity with the case. Usually.

    All that praise given to Kman should be accompanied by a statement that he obviously hasn’t been here long enough to recognize the largest enemy of his plans: hordes of barbarian dependent claims. Dudas knew his enemy, faced him on the field of battle and all but completely won. Now while the great warrior retires to children’s games Kman will live to regret his tucking tail and snatching defeat from the jaws of victory.

    By the by guys, word from Kman is that he is not satisfied with the workflow system as currently implemented and it is due for a change shortly. As he notes, it isn’t in line with what management actually wants to accomplish and is instead focused more on things that don’t really matter to them so much.

  33. 40

    AnotherJuniorExaminer writes: ” When you wait 6 months the case is no longer fresh in mind, requiring me to do extra work to refresh my memory.”

    So why are RCE’s now put on the slow pile instead of the fast pile where they are fresh in everyone’s mind (and less likely to be assigned to a new examiner because of turnover)?

  34. 39

    I no longer comment here regularly because of the zoolike atmosphere fomented by Mooney and now 6. Both you guys/gals are obviously smart and capable of good points and comments. But it’s obscured by your attack style and playing for the “lulz” as at least 6 would put it. And of course everyone feeds the trolls.

    Geebus. Cut it out.

  35. 38

    Speaking of unintentional comedians:

    “We know there are jobs locked up in our backlog; well, I’m sure there are lots and lots of jobs riding on the patents we have in reexamination.”

    From Kman’s new blog.

    It took all my self-control to not make a posting telling him that I’ve never seen any jobs locked up in my backlog on my docket. Then making another post asking him where the jobs were being locked up in the backlog and who we should ask to release them.

    Jobs, locked up in the backlog, LOLOLOLOLOLOLOLOLOLOLOLOL!!!

  36. 36

    I support e99’s method of examining applications. I personally act preferentially to applicants that display 1. a grasp of the art and 2. a resonable grasp of how they are attempting to distinguish from the prior art in terms of substance as opposed to claim limitations. It makes me feel like I’m working in a professional environment and I don’t feel as bad about allowing something in those cases as I might in other cases.

    I act slowly in cases where the applicant’s representative has adopted a bogus view of the lawl and decides that he doesn’t believe or doesn’t understand a reasonable view of the lawl. Except for when I detect the possibility of substantial LOLs during the drafting of my response. Then I act very quickly. Immediately even.

  37. 35

    “So any monkey of an examiner who uses late filing against applicants — whether as a bias against their response or to push the applicant further back in the queue — ought to have his banana peeled.”

    How can there not be some sort of bias in terms of when I respond to you? When you wait 6 months the case is no longer fresh in mind, requiring me to do extra work to refresh my memory. If I have two amendments come in at the same time, one that I just did the FAOM and the other from a 6 month old case, I’m going to do the one that is fresh in my mind when it hits my amended docket and the old one will wait until it’s due. It’s a more efficient use of my time, so that is how I’m going to treat your application. Now I’m off in the rain storm to buy some bananas.

  38. 33

    “The data is an improvement on what I presented in 2008.”

    Jeez, Louise. Not you too, Dennis. You sound like one of those words-as-a-second-language computer nerds. You can always point them out because they don’t know that “data” is plural. True academics never miss the chance to shove their noses in the air with “data are.”

    As to filing at the deadline — if any examiner is adjusting his response or his procedures based on whether the applicants respond at 6 days or 6 months, they ought to be boiled in cabbage juice or forced to read all of the posts from IQ=6 for the last year, whichever brings a more painful death.

    As many people have said here, there are plenty of good reasons to wait until the last minute. If for no other reason, writing the response and letting it sit for 8 weeks before you do the final proof can do wonders for quality.

    So any monkey of an examiner who uses late filing against applicants — whether as a bias against their response or to push the applicant further back in the queue — ought to have his banana peeled.

    If I may add one more opinion, having just received an OA 3 weeks after filing a response to the prior one, I find that a quick examiner turn-around is a sure sign of abject laziness and a certain harbinger of an appeal. They just cut and paste the last rejections without even reading your carefully thought out and worded response.

    Which is likely the way some prosecutors do their own 2-week responses.

  39. 32

    Well there is a possibility that the message was recorded and just sent to the whole corps pingerdoodle.

  40. 31

    Dennis, this is crunching number numbness… Agree with poster above noting that many times “easy” responses (terminal disclaimer, simple amendment to correct 112 issue) are filed quickly and result in allowance. Yawn

  41. 30

    6, the unintended comedy…

    “called me on the phone today…I believe he has my phone number”

    Really? You think he has your number, giventhat he called you today? Oh, the powers of your perception.

    How’s your mom?

  42. 29

    Some applicants respond within a week. These are usually the most diligent applicants and I usually give preference to their amendments/remarks over other applicants who respond after 3 months. From my own personal experience, early responders provide the most persuasive arguments and I will call them (for an examiner-initiated interview) if I find that the claims still must be rejected.

  43. 28

    Kappos called me on the phone today and left me a message saying what a great guy I am and asking me to participate in a leadership developement program. He also thanked me for something, I’m not sure what.

    I called him back and left him a message saying that I appreciated his gracious words and thanks but no thanks on the leadership development program since I’m already the best leader they have here. I also told him that if he ever needs any pointers he can call anytime and I believe he has my phone number.

  44. 27

    I still think it makes sense to take the number abandoned out because apps can be abandoned for lots of reasons that have little to do with the trouble they have with rejections.

    I think the assumption is that those abandonments would be uncorrelated with the delay, and therefore would cancel out to a certain extent.

    Including abandonments is a way to consider only those applications that have been finally disposed of. It might also be interesting to see whether extensions of time correlate with pendency, but the focus here was apparently on the ultimate fate of these applications.

  45. 26

    But maybe I misunderstood what the graph was supposed to be showing.

    Maybe, since your interpretation would suggest that a remarkable 280%+ of all issued patents are issued.

    I still think it makes sense to take the number abandoned out because apps can be abandoned for lots of reasons that have little to do with the trouble they have with rejections.

    Okay, but what has that to do with Dennis’ point.

    The way to do that is to divide the number that issued after no extensions, one extension, etc. by the total number that issued.

    Which would show you the proportion of cases that fall into each of the categories that Dennis defined. It wouldn’t tell you a thing about whether the likelihood of issuance for any given application is correlated to the delays introduced by the patentee.

    Now I see why you’re not doing that science thing anymore.

  46. 25

    Okay wise guys, I assumed that the “No. Patented” in the denominator was a sum of the total number issued, not simply the number issued within each group. But maybe I misunderstood what the graph was supposed to be showing.

    I still think it makes sense to take the number abandoned out because apps can be abandoned for lots of reasons that have little to do with the trouble they have with rejections. The way to do that is to divide the number that issued after no extensions, one extension, etc. by the total number that issued.

    I can’t tell whether the drops would be more or less dramatic because I don’t know whether the “No. Abandoned” is the number abandoned for each group, or the total number abandoned for all groups.

  47. 24

    It would be less dramatic. Much less dramatic.

    Indeed. And slightly less informative, as well.

  48. 23

    If the denominator excluded abandoned apps, would the drop with extensions be more or less dramatic, I wonder.

    It would be less dramatic. Much less dramatic.

  49. 22

    Why include the number abandoned in the denominator of the last graph? If the denominator excluded abandoned apps, would the drop with extensions be more or less dramatic, I wonder.

  50. 21

    “I found a clear and significant negative correlation between grant rate and delay in responding to the non-final office action. I.e., longer delays are associated with a lower grant rate. ”

    Simple and easy responses which place the application in condition for allowance are more likely to be done quicker than those which are less likely to result in allowance and thus are often more difficult and challenging.

  51. 20

    I am not ready to buy into a correlation between response time for office actions and grant rate.. Not sure about everyone else, but when I receive an Office Action with allowable subject matter (ASM), it is usually the clients decision to amend claims to incorporate the ASM without providing arguments (keeps record clean); therefore a faster/easier response approach and usually filed within 3 months. However, when the OA does not contain ASM, we require more time to prepare arguments, amendments, 131/132 evidence; therefore a slower/more complicated response usually requiring one or more Extensions. It would be interesting to see a similar study taking into consideration Allowable Subject Matter, whether or not present in the subject OA..

  52. 19

    In my practice I don’t have to deal with in-house counsel, just inventors and business owners.

    I personally wait until the last possible moment to file in order to accommodate newly-emergent information coming from court decisions, much as people are now doing with Bilski.

    In the recent past, it has seemed like there was always some big decision pending that could affect some issues in an office rejection.

    Heck, for KSR, I even advised a client to wait 6 months and eat the fee. It worked out fine.

  53. 18

    “Methinks Roger Karp has a bone to pick with the implied contention that the applicants/representatives are too lax in the prosecution of their applications.”

    In my own practice, I can tell you that the problem is the in-house counsel I must report to. I’ll send a draft response to an office action within a couple weeks of receiving the office action, and the in-house guy will sit on it for 2 months before giving me the go-ahead to file it.

  54. 17

    the grouping at deadlines counter-indicates delay caused by intra-company procrastination. If that were the predominating factor, the distribution would be more random.

    A distribution heavily weighted to task completion right at the deadline is completely consistent with procrastination. You’re much less likely to procrastinate if it’s due today, and much more likely if it’s due in 1-29 days.

    A more random distribution would be consistent with applicants/agents waiting for more information, but not procrastinating at all and simply responding as soon as the response is complete.

    If you gave any in-house or outside counsel a response that is completely ready to file, on the day after the 3-month date, with instructions to file but without specific instructions as to when it should be filed, when do you think it would actually get filed at the PTO? In practice, I think you’d get pretty much the same graph as you see above.

  55. 16

    Paul, the grouping at deadlines counter-indicates delay caused by intra-company procrastination. If that were the predominating factor, the distribution would be more random.

    The grouping at deadlines does seem to suggest the attorneys are trying to avoid the delay fees, which does suggest that clients are insisting the procrastinating attorneys pay for them.

  56. 15

    Dennis, how about a correlation between allowable subject matter being indicated in the Office Action and applicants filing by the initial 3-month deadline? Applicants may be less likely to procrastinate with allowable subject matter on the table, which would skew the first 3-month period’s allowance numbers.

  57. 14

    I think the correlation Dennis mentions is absolutely not a cause-and-effect relationship, but rather two indicators of the quality of the patent application. Those applicants and practitioners who have a quality filing and a quality invention tend not to wait until the 6-months (or even 3-months) date to respond because they have their [stuff] together. An applicant filing for a patent on a marginal improvement on a known invention with no real innovation or legal arguments to be made will tend to drag their feet more, while trying to come up with some argument, or while pursuing other projects that are simply more important to them.

    The argument about attoney-examiner relationship going stale is not really valid (in my opinion), unless you have no real specialty in your practice. In most cases I’ve seen, the same examiners will examine multiple cases from one practitioner. Obviously that varies depending on what your specialty is, but it would be very unusual that all the applications you have pending will be divided evenly among different examiners, in my experience.

  58. 13

    Methinks Roger Karp has a bone to pick with the implied contention that the applicants/representatives are too lax in the prosecution of their applications.

  59. 12

    Sorry folks. Of the 4 decisions published this morning as of10:30 EDT, Bilski was not among them.

    Will more be published? Don’t know. This number of opinions published this morning did grow this morning.

  60. 10

    Dr. Zaius,

    I refuse to type lol in an earnest manner, so I will just say keep it up.

  61. 9

    As I assume that I’m likely only one of some thousands of others also waiting for the Bilski decision before responding to a non-final, I wonder what the percentages are and will be; due only to this “Bilski factor.”

    How close will the 4th, 5th, and/or 6 month date percentages get to the 3rd month % then?

  62. 8

    I think the delay:issuance correlation has many more factors… for example, if a response is later than 6 months, it might have nothing to do with attorney-examiner relationship, but more to do with the client who doesn’t want to spend money and is taking the patent prosecution less seriously and is more likely to abandon.

  63. 7

    Dennis,

    (1) “Responses” is spelled incorrectly in your title.

    (2) Could you also do a chart showing how long an Examiner takes to respond after they have received the Applicant response to a FOAM? If possible, break out showing where Applicant (i) simply amended to take indicated allowable subject matter and (ii) amended/argued/generated a final rejection.

    Thanks.

  64. 6

    I file within minutes of receiving it. That shows them how crazy you can get, and then you really scare them by asking for a personal interview the next day.

  65. 5

    It’d be interesting to see corresponding statistics collected from the period before the economy turned south (2006-2007 or so).

  66. 4

    Having worked with many inherently procrastinating in-house patent attorneys who had to be constantly reminded by their admins of amendment deadlines, this is a nice confirmation of its continuing universiality.
    [I do not think the stress of doing almost everying at the last minute is either healthy or quality-enhancing either.]
    TIP: when we stopped paying outside counsels for response time extension fees, and started tracking excessive internal attorney delay costs, the same attorneys were able to respond within three months most of the time, unlike the huge numbers of much longer delays shown in the above data.
    This data also supports my prior comment that the [further] three months of issue delays from delaying paying the issue fee for a full three months could be reduced if it had similar response time extension fees.
    Faster U.S. prosecution can reduce expensive prosecution and maintenance or abandonment of foreign equivalent applications. Especially in the EPO, which has pending application maintenance fees.
    I fully appreciate that there can be very good reasons for delayed actions on many cases, but not to the extent shown in the above data.

  67. 2

    My favorite procedure is to file a response within two weeks of an Office Action.

    Putting the case right back on the examiner shows you are serious and willing to fight for the patent.

  68. 1

    I think that the “negative correlation” from the grant rate as a function of response delay is inaccurate and based upon a false premise… the false premise being that all things are equal. The analysis doesn’t take into account that significantly more applications in which responses are filed after three months may be situations in which prosecution is more challenging and/or clients are taking the time to determine whether they are still interested in pursuing patent protection because it is likely a loser case. I would also argue that the grant rate can’t accurately be an indication of “staleness”. More often than not the reason I file a response after the 3 month date is because I am working closely with the client to obtain additional evidence and arguments which will likely increase the chances of success. I would say the more interesting analysis would be the grant rates between the responses filed before the 3 month date, the responses filed on the 3 month due date and the responses filed a few days after the 3 month due date… then do the same for the 4 month and 5 month dates… might show some tendency that could be correlated to the time and thoughtfulness an atty put into a response.

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