A Patent Bigfoot? The Mythical First Action Allowances DO Exist!
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course 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|
|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|
|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|
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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About the Author
Gene Quinn 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.