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A Patent Bigfoot? The Mythical First Action Allowances DO Exist!


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: March 7, 2012 @ 5:50 pm
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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.

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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Posted in: Attorneys, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

21 comments
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  1. As 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.

  2. I 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.

  3. Gene,

    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.

  4. I 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

  5. The 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.

  6. MVS-

    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

  7. I 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.

  8. AAA 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

  9. Dear 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

  10. Gene,

    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.

  11. Sami-

    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

  12. Dear Gene,

    02-29-2012 Issue Notification patent No US8140433 ==> ISSUE DATE 03-20-2012

    Thanks
    Sami

  13. Hi 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.

  14. Atig,

    Your reference at 12 – that much PTA AND a non-publication request?

    I await in anticipation.

  15. Here’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.

  16. Oops, I mean ’118 patent.

  17. Dear 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

  18. Sami,

    Congratulations. It’s been a long time coming.

    Mark

  19. Thanks a Lot. Mark.

  20. Dear 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

  21. [...] A patent can be granted on all of the claims sought, which is rare but not unprecedented. See Patent Bigfoot: The Mythical First Action Allowances. The applicant can give up and not respond to a final rejection for one reason or another, perhaps [...]