Evidence Based Prosecution: The Status of Applications Filed 4 ½ Years Ago
Table 1 below shows the detailed status for each case as provided by the USPTO's PAIR system. All but two of the pending cases have received at least an initial examination. The two still-unexamined cases are both software-related applications.
|
High-Level Status |
Status |
Percent of Cases |
|
Patented |
Patented Case |
47.8% |
|
Abandoned |
Abandoned -- Failure to Respond to an Office Action |
25.2% |
|
Abandoned |
Abandoned -- Failure to Pay Issue Fee |
0.7% |
|
Abandoned |
Expressly Abandoned -- During Examination |
0.2% |
|
Pending |
Non Final Action Mailed |
8.9% |
|
Pending |
Final Rejection Mailed |
6.4% |
|
Pending |
Response to Non-Final Office Action Entered and Forwarded to Examiner |
5.0% |
|
Pending |
On Appeal -- Awaiting Decision by the Board of Appeals |
1.0% |
|
Pending |
Notice of Allowance Mailed -- Application Received in Office of Publications |
1.0% |
|
Pending |
Notice of Appeal Filed |
0.7% |
|
Pending |
Publications -- Issue Fee Payment Verified |
0.5% |
|
Pending |
Examiner's Answer to Appeal Brief Mailed |
0.5% |
|
Pending |
Docketed New Case - Ready for Examination |
0.5% |
|
Pending |
Appeal Awaiting BPAI Docketing |
0.5% |
|
Pending |
Withdrawn Abandonment awaiting examiner action |
0.2% |
|
Pending |
Response after Final Action Forwarded to Examiner |
0.2% |
|
Pending |
Appeal Brief (or Supplemental Brief) Entered and Forwarded to Examiner |
0.2% |
|
Pending |
Advisory Action Mailed |
0.2% |
|
Table 1 |
An often frustrating aspect of application pendency is that abandoned cases can be kept alive by filing a continuation application. Of those cases that have been either patented or abandoned, 25% have one or more descendents in the form continuation or CIP applications. (I have not determined whether those continuations are themselves still pending.)
Of the cases already completed (no longer pending), the median patent took 2.6 years to issue while the median abandonment did not occur until 3.1 years into prosecution. Along this line, the longer a case was pending, the greater the likelihood that the case was abandoned. Thus, 71% of cases that were pending for fewer than three years were allowed while only 29% of cases that were pending for three to four and a half years were allowed.
The chart below shows the percentage of applications pending as a function of the number of years in prosecution. Although the average time in prosecution for this cohort cannot be calculated yet (because so many cases are still pending), the median time in prosecution – as seen in the chart – is 3.3 years.
The patent office examination corps is divided into various technology centers. In my sample, TC 2800 (Semiconductors, Electrical and Optical Systems and Components) had allowed the highest percentage of cases (70%) and had the lowest rate of applications still-pending after 4 ½ years (3%). TC 1600 (Biotechnology and Organic Chemistry) has the highest abandonment rate (36%) while TC 2600 has the highest percentage of cases still pending (48%).


I compiled a list of the over five hundred thousand reference citations in the almost eighteen thousand utility patents issued in the past two months. (Jan 1, 2009 – Feb 18, 2009, excluding reissues and reexaminations). In this sample, the average patent issued with 31 cited references. This is a skewed average – the median patent only cites 15 references. The vast majority of references (77%) are introduced by the applicant during prosecution while less than a quarter (23%) are cited by the examiner.





ABA Top Legal Blogs: For two years in a row, the ABA Journal has chosen Patently-O as one of the top 100 legal blogs. (Only 50 blogs made the cut both years). In addition, Patently-O has been honored in 2008 as the top legal blog focusing on a niche area of law. Thank you to everyone who voted during this process! In time for Patently-O's fifth anniversary in April, I expect that the website will record its ten-millionth visit in addition to the 16,000+ readers who receive their updates via the daily e-mail feed.
In two earlier posts, I discussed the BPAI reversal rate (
Although dramatic, the reported filing increases pale in comparison to those seen in the past four months. The BPAI reports that in the period of Sept-Dec 2008, it received an average of 954 ex parte appeal cases per month. That value is well more than double the monthly average for the same span in 2007.






Director.
Last week I spoke with Yale Professor
The patent laws promote an early filing doctrine.
On Friday, I will be speaking at the Seton Hall Law Review's Health Law Symposium. This year's topic is focused: Preparing for a Pharmaceutical Response to Pandemic Influenza. [





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