You may have heard of them, but as a rule I think it is safe to say that most patent attorneys and patent agents have never seen one, at least not in certain technology areas. They are called “first action allowances” and this happens when you file a patent application and the patent examiner does not reject any claims and instead finds that your submission is in order and allowable without amendment.
In some technical areas, such as class 705 – business method patents for example, first action allowances likely seem like the patent equivalent of a unicorn. Perhaps an even better analogy would be to Bigfoot! There are rumors of sightings but no hard proof to know that they exist for certain, or at least not proof that would stand up to true scientific scrutiny.
As a general rule patent examiners will always find something to reject, and, in fact, there is growing evidence to support the anecdotal stories about certain Art Units and Supervisory Patent Examiners simply refusing to ever issue a patent unless the applicant appeals. See Denial of Due Process. Obviously, such a refusal to award patents is troubling and evidence of an enormous problem facing the Patent Office. The data capable of being obtained by PatentCore is voluminous and eye-opening. I have no doubt that it will eventually lead to significant changes and the eradication of patent examiners who refuse to issue patents.
In any event, at the other end of the extreme from patent examiners who refuse to issue patents are those patent examiners who actually work for the Patent Granting Authority and do issue patents. They follow the policy of the Kappos Administration to find allowable subject matter where it exists and get patents that are deserving issued. Because the Office has significant pockets of resistance to issuing patents many patent attorneys and patent agents will never see a first action allowance even when they should.
[Varsity-1]
As hard as it is to believe I hear from junior examiners over and over again telling me that they are told by the SPE to reject all applications and if a valid reason cannot be found then one should be made up. These junior examiners are often discouraged, some leave the Office, but I hope that those who are offended by the “reject, reject, reject and make up a rejection” mantra of their SPEs stick around long enough to become primary examiners and SPEs themselves. If they do the Office will have a much brighter future.
Partly because it is fun and partly to provide evidence to junior examiners that there are patent examiners who work for the USPTO that are actually allowed to issued patents, even with a first action allowance, I thought it might be interesting to take a look at which firms receive the most first action allowances according to PatentCore data.
It is important for me to say that I ran this search at approximately 3:30pm today. PatentCore is continually adding more files to its database and there was an update right after I started, which changed the totals slightly. So what appears below are the Top 50 Law Firms with the most first action allowances according to PatentCore data as of this afternoon.
Law Firm Name | # of 1st Allowances | |
1. | Oblon, Spirvak, CClelland, Maier & Neustadt ¹ | 839 |
2. | Sughrue Mion ¹ | 544 |
3. | Oliff & Berridge ¹ | 525 |
4. | Birch Stewart Kolasch & Birch ¹ ² | 500 |
5. | Fitzpatrick Cella Harper & Scinto ¹ | 400 |
6. | McDermott Will & Emery ¹ | 376 |
7. | Foley & Lardner ¹ | 365 |
8. | Harness, Dickey & Pierce ¹ | 314 |
9. | Nixon & Vanderhye ¹ | 283 |
10. | Antonelli, Terry, Stout & Kraus | 244 |
11. | Staas & Halsey ¹ | 224 |
12. | Finnegan, Henderson, Farabow, Garrett & Dunner ¹ | 214 |
13. | Bacon & Thomas | 190 |
14. | Rosenberg, Klein & Lee | 178 |
15. | Knobbe Martens Olson & Bear ¹ | 169 |
16. | Kenyon & Kenyon ¹ | 166 |
17. | Buchanan, Ingersoll & Rooney | 165 |
18. | Greenblum & Bernstein | 161 |
19. | Westerman, Hattori, Daniels & Adrian ¹ ³ | 159 ³ |
20. | Young & Thompson ¹ | 157 |
Dickstein Shapiro | 157 | |
22. | Arent Fox | 152 |
23. | Blakely Sokoloff Taylor & Zafman ¹ | 139 |
Wenderoth, Lind & Ponack ¹ | 139 | |
25. | Posz Law Group | 134 |
26. | Altis Law Group | 130 |
Crowell & Moring | 130 | |
28. | Kratz, Quintos & Hanso | 122 |
29. | Kilpratrick Townsend & Stockton ¹ | 119 |
30. | Brinks Hofer Gilson & Lione ¹ | 113 |
31. | Thomas, Kayden, Horstemeyer & Risley | 103 |
32. | Pillsbury Winthrop Shaw Pittman | 102 |
33. | Merchant & Gould | 98 |
Banner & Witcoff | 98 | |
McGinn Intellectual Property Law Group | 98 | |
36. | Morgan Lewis & Bockius ¹ | 96 |
37. | Holtz, Holtz, Goodman & Chick | 94 |
38. | Rader Fishman & Grauer | 89 |
39. | Schwegman, Lundberg & Woessner ¹ | 88 |
40. | Lerner Greeberg Stemer | 86 |
41. | Ladas & Parry | 85 |
42. | Sterne, Kessler, Goldstein & Fox | 84 ³ |
43. | Volentine & Whitt | 82 |
Rabin & Berdo | 82 | |
45. | Jianq Chyun Intellectual Property Office | 79 |
Myers Bigel Sibley & Sajovec | 79 | |
47. | Perkins Coie | 78 |
Frommer Lawrence & Haug | 78 | |
49. | Lowe Hauptman Ham & Berner | 76 |
50. | Colpe & Koenig | 74 |
¹ An IP Today Top 25 Patent Firm for 2011
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Of course, there are a lot of reasons why a patent examiner might allow an application with a first action allowance, assuming of course the patent examiner works for the Patent Granting Authority. In the table above I provided an indication of those firms that were also in the IP Today Top 25 list for 2011. The IP Today list ranks those firms based on number of patents obtained, so it is no surprise really when 21 of the 25 from the IP Today 2011 list are also listed above. More patents granted certainly raises the likelihood that you will have more first action allowances. There are other factors though, not the least of which is whether the client will actually allow you to file a patent application that contains narrowly tailored claims that are likely to be allowed as submitted. Thus, while there are some truly excellent firms on the list above I would caution against the use of this list as a “best patent law firms list.”
But where are these first action allowances coming from? All over the Patent Office really. They occur with plants (1661), organic compounds (1621, 1625, 1626), batteries (1725), active solid state devices (2818), electrical generators or motors (2834), optical systems and elements (2873), optics measuring and testing (2877), vehicle fenders (3612), data processing (3661), aeronautics and astronautics (3662), internal combustion engines (3748), valves (3751, 3753) and elsewhere throughout the USPTO.
Here are the Top 50 Art Units listed by the number of first action allowances according to PatentCore data as of this afternoon.
Art Unit | # of 1st Allowances | |
1. | 2901 | 3,456 |
2. | 2902 | 3,257 |
3. | 2818 | 2,441 |
4. | 2903 | 2,411 |
5. | 2904 | 2,291 |
6. | 1661 | 2,241 |
7. | 2824 | 2,106 |
8. | 3747 | 1,857 |
9. | 2873 | 1,774 |
10. | 2819 | 1,765 |
11. | 2821 | 1,626 |
12. | 2838 | 1,588 |
13. | 2833 | 1,466 |
14. | 2817 | 1,444 |
15. | 2812 | 1,229 |
16. | 2816 | 1,184 |
17. | 2827 | 1,144 |
18. | 2837 | 1,143 |
19. | 2627 | 1,120 |
20. | 2834 | 1,120 |
21. | 2624 | 1,056 |
22. | 1621 | 1,055 |
23. | 2874 | 1,034 |
24. | 2832 | 1,008 |
25. | 3744 | 978 |
26. | 2839 | 970 |
27. | 2852 | 969 |
28. | 2881 | 953 |
29. | 2835 | 942 |
30. | 3661 | 933 |
31. | 1626 | 933 |
32. | 3612 | 893 |
33. | 2831 | 890 |
34. | 2861 | 867 |
35. | 2829 | 858 |
36. | 2877 | 837 |
37. | 2855 | 830 |
38. | 2814 | 805 |
39. | 2612 | 801 |
40. | 2872 | 788 |
41. | 2813 | 785 |
42. | 3751 | 783 |
43. | 2878 | 772 |
44. | 3745 | 759 |
45. | 2822 | 747 |
46. | 3662 | 734 |
47. | 3723 | 716 |
48. | 2871 | 711 |
49. | 3748 | 705 |
50. | 1625 | 705 |
First action allowances are not mythical, they do and can happen, at least if you are working with a patent examiner that is willing to allow patents.
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Join the Discussion
20 comments so far.
Atig
March 22, 2012 08:23 amDear Gene,
My patent http://bit.ly/US8140433B2 granted on March 20, 2012 that received 3,114 days of PTA.
Thanks,
Sami
Twitter @card4net · http://www.card4net.com
Atig
March 11, 2012 08:02 pmThanks a Lot. Mark.
Mark Nowotarski
March 11, 2012 05:06 pmSami,
Congratulations. It’s been a long time coming.
Mark
Atig
March 10, 2012 02:35 pmDear Anon,
Your reference at 14, We can file a non-publication request if the subject of the invention has not be the subject of a foreign filing. ==> Under MPEP § 1122
French patent application and granted by European Patent Office but first published by Patent Cooperation Treaty. ==> WO0195272 13/12/2001 A1 Priority number FR0007393 09/06/2000
The USPTO Board of Patent Appeals and Interferences :
http://www.card4net.com/resources/bpai.pdf
Thanks,
Sami
Twitter @card4net · http://www.card4net.com
Mark Nowotarski
March 10, 2012 10:46 amOops, I mean ‘118 patent.
Mark Nowotarski
March 10, 2012 10:45 amHere’s a couple more that belong to the 3000+ PTA club.
8122118
8125902
8126959
8127015
8122114
8131879
The ‘119 patent has a PTA of 3465 days.
Anon
March 10, 2012 08:44 amAtig,
Your reference at 12 – that much PTA AND a non-publication request?
I await in anticipation.
PTOExaminer
March 8, 2012 08:55 pmHi Gene, I have noticed an interesting pattern at the PTO.
While most examiners and applicants will place blame on SPE’s for forcing examiners to work for the Rejection Office, I strongly believe this SPE behavior is (generally) in response to pressure from their supervisors (the TC Directors).
About a month ago many TC directors were shuffled around and 6 new TC directors were hired. Unfortunately, my workgroup ended up getting a domineering director who clearly suffers from megalomania (if this TC director is reading this, you know exactly who you are). My workgroup SPEs went on a frenzy trying to show this new TC director how rough and tough they are with their examiners in an effort to “please” the TC director. In just one month many SPEs in my workgroup went from being generally reasonable with signing off on junior examiners’ allowances to pretty much kicking them all back because “it just doesn’t look allowable.” I now have junior examiners coming to me begging for help on how to write rejections for stuff that just can not be rejected… and they all started to come to me at the same time – when the new boss came to town a month ago. It is clear to me that there is a direct relationship between a TC director’s policies and how unreasonable SPEs can be with their examiners.
Atig
March 8, 2012 06:40 pmDear Gene,
02-29-2012 Issue Notification patent No US8140433 ==> ISSUE DATE 03-20-2012
Thanks
Sami
Gene Quinn
March 8, 2012 06:01 pmSami-
Do you have a patent that received 3,114 days of PTA? If you really do can you give us the patent number? That is the longest I have heard of and absolutely needs to be written about.
Thanks.
-Gene
AAA JJ
March 8, 2012 03:25 pmGene,
I have an application being rejected by an examiner who insists that it would be obvious to modify the reference to operate in the exact opposite manner that is disclosed. The rationale is, “One of ordinary skill in the art would at least try it.” That’s a quote from the OA. Verbatim.
I’ve argued that such a modification is simply ridiculous. The examiner responds, “There’s nothing to indicate that the apparatus wouldn’t work just as well as modified.” Final rejection.
I respond that the examiner is required to provide substantial evidence supporting a conclusion of a reasonable expectation of success. The rejection is, by the examiner’s own admission, premised on the complete absence of evidence.
Advisory action. Not persuasive.
And this is from an examiner who is in the third year of law school.
More record breaking outstanding quality work from the examining corps.
Atig
March 8, 2012 03:17 pmDear Gene,
It can be pretty comical to see my patent in business method with PTA 3114 days.
The first action allowances was my dream.
Thanks,
Sami
Gene Quinn
March 8, 2012 03:16 pmAAA JJ-
Sadly, you are correct. The 180 degree structurally different rejection is too common. What is hard to believe, or hard to swallow, is that it happens at all. Extremely difficult for clients to accept. It just demonstrates that the examiner didn’t spend much, if any, time on the application. Wait all that time and get inferior consideration.
Representatives and Senators should have to go through the USPTO process and see some of the rejections given by patent examiners. Even in simple areas that even a Member of Congress could understand without a technical degree the waiting for a bad first action is very real.
For a long time I thought this was just because examiners were over worked and had to rush. Increasingly I think it is the fact that junior examiners who are the worker bees are being forced by SPEs who work for the Rejection Office.
Cheers.
-Gene
AAA JJ
March 8, 2012 01:54 pmI like to see a first action allowance. It lets me know the examiner is not of the “reject, reject, reject” or “build a record” school of thought. If I get a first action allowance, I’ll file a continuation with broader claims.
“…we were rejected on something that was 180 degrees structurally different? Hard to believe…”
No it’s not. Happens routinely.
Gene Quinn
March 8, 2012 01:05 pmMVS-
Personally when I draft a patent application I am not worried about a first action allowance. I know by the time the patent application gets examined there will be more prior art findable than when we filed. What I want is a full and fair first office action, which unfortunately we do not always see.
In any set of claims we submit we ask for broad protection, but there will also be claims there that are quite narrow and very specific. I always file at least some claims that should be allowed right away, objected to because they depend on previously rejected claims. But what happens is we frequently get nonsense rejections. Recently I had a reference and feature cited against us that was actually the inverse of what was in the claimed invention and if it had been incorporated the invention would not have worked at all. That feature was critical to patentability and we were rejected on something that was 180 degrees structurally different? Hard to believe, but it happens.
I am praising first action allowances because it shows that there are patent examiners who are actually engaged in allowing patents, which is something that in certain areas of the PTO you just don’t see. Generally speaking a first action allowance isn’t necessary or required, but if you are working in a narrow field or the client needs a quick patent and will take whatever initially claims can be drafted for a first action allowance if the examiner is willing to issue patents. It all depends on the situation and needs of the client.
Thanks for your comment.
-Gene
DaveR
March 8, 2012 12:25 pmThe data presented would be much more revealing if additional data indicating the percentage of first action allowances were included relative to the number of office actions issued with respect to each examining group or technology area, and relative to the number of applications filed in reference to the respective listed law firms.
mvs
March 8, 2012 12:17 pmI have been told (off the record) by various attorneys that they really do not want to see a 1st action allowance. If they get one they believe that they didn’t draft the claims broad enough. Interesting that you are apparently praising 1st action allowances. As a practitioner, do you really like to see 1st action allowances? Or do you rather see some allowed & some rejected?
FWIW, my AU is in the top half of the list & I have no problem allowing cases when there is no proper & reasonable grounds of rejection. That is what we are here for,
MVS
Mark Nowotarski
March 8, 2012 10:16 amGene,
If you really want to see an impressive track record on getting allowances on first office action, you might want to look at Hon Hai’s patents (aka Foxconn). They get 2000+ patents issued per year, many of them in electrical connectors. Last time I looked, 15% of those were allowed on first office action and 35% were allowed after their first response to a rejection. That’s about twice the allowance rate of their direct competitors.
Ted Weisz
March 8, 2012 07:43 amI got a first allowance early in my career, My boss at the time came to my office and said “If you ever do this again, you will be fired!” Getting partial allowance is not that uncommon but a first allowance for all the claims may be an indication that the claims are too narrow.
Alton Hare
March 7, 2012 08:10 pmAs a patent examiner extern in 2800 last summer, the second action I wrote was a first action allowance. My first action was a total rejection, which went abandoned a few months later.