It’s tough to get a patent these days. All too often applicants and patent examiners lock horns and get stuck in an endless loop of rejection/response/rejection/response, etc. The applicant cannot convince the examiner to allow the patent and the examiner cannot convince the applicant to abandon the patent. It would be a lot easier to get a patent if there was a way to avoid this.
I have found in my own practice that each technology class at the USPTO is different. Some are easy. Some are hard. I have also found that this can change. Some of the easy ones suddenly get hard and some of the hard ones suddenly get, well maybe not “easy”, but at least better. You can see if a technology class is getting easier or harder by plotting the patent filing dates in that class versus patent issue dates. Here is an example for a “normal class”, semiconductor packaging, class/subclass 438/114.
Data is shown for all patents that were filed in class/subclass 438/114 since 1995 (i.e. Jan-95). I download the data from one of the paid services, www.delphion.com. I use the search string “438114nc and ad>19950101”, click on the “Data Extract” tab, and download a spreadsheet with the filing dates and issue dates of the patents. You can do the same thing with other paid services like LexisNexis. I don’t know of any free services that allow you to download spreadsheets of patent data. If anyone knows of one, please mention it in the comments below.
The data points look like a diagonal cloud. The width of the cloud indicates how fast patents are getting allowed once examination starts. The width is indicated by the green arrows labeled “prosecution time”. The width is about 3 years. That’s fairly reasonable.
There is a gap between the cloud and the diagonal grey line that indicates how long it took for applications filed in a given year to get their first office actions. This is indicated by the red arrows labeled “delay to first office action”. Delays to first office action are about one year. This looks fairly reasonable also.
From a patent drafting perspective, the above graph indicates that normal diligence in prior art searching and drafting is appropriate. There is no need for any special considerations.
The next graph shows data for the surgery instrumentation class/subclass 606/060. This class is having some serious difficulties. Special consideration is absolutely indicated if an inventor wants to get a patent in this technology in a reasonable amount of time and cost.
Up until 1999, the prosecution times for applications in this technology class were very low, only about 1 year (lower green arrow). Then abruptly in 2001, the prosecution times jumped to over 6 years and have remained high ever since (upper green arrow). For some reason, examiners and applicants have had a very difficult time reaching agreement on what is or isn’t patentable. Applications have been undergoing repeated cycles of rejection and response with little headway towards either abandonment or allowance.
When I see significant increases prosecution times like this, I know that extra care will be needed in drafting the patent application. I have a candid conversation with the inventor on what we need to do to get his/her case allowed in a reasonable amount of time. This may mean reviewing the file wrappers of recently issued patents to see why they were allowed, doing a more thorough prior art search so we can clearly identify the unique and nonobvious aspects of the invention, in-person interviews with the examiner with a demonstration of the invention to physically show why the invention is not obvious, and immediate preparations for an appeal if we can’t reach agreement by the first final office action. We also consider one of the USPTO’s accelerated examination programs, like Track 1, PCT patent prosecution highway, or 12 Month Accelerated Examination. USPTO management strongly supports these programs and examiners are encouraged to reach agreement quickly with applicants that participate in them.
All of these options require extra effort which means more cost up front. The data allows us, however, to compare the up front cost with a fairly good estimate of the downstream savings in reduced prosecution costs and delays.
The final graph shows data for a much maligned technology class that has actually shown a dramatic improvement over the past few years, business methods. The particular class/subclass illustrated is 705/002, health care management.
Contrary to popular belief, things are getting much better in business methods. Applications filed in 1999 had prosecution times of over 10 years (lower green arrow). These and subsequent applications jammed up the system leading to excessive delays to first office actions. Applications filed in 2004, for example, had delays to first office action of 6 years (middle red arrow). Sometime around 2010, however, things started to improve. A lot more patents started issuing and the delays to first office action dropped to around 2 years (upper red arrow). That’s not to say that it’s easy to get a patent in business methods, but at least examiners and applicants are making much better progress in reaching agreement on allowable claims in a reasonable amount of time.
In terms of preparing a patent application in business methods, greater care is still indicated even though things are getting better. You need to know why things are getting better and plan accordingly. A review of the file wrappers of recently issued patents to see how applicants and examiners are reaching agreement is worthwhile.
It can be very difficult to get a patent depending upon which technological class an invention is in. Making a plot of patent filing date versus patent issue date is an effective way to identify which technological classes are having difficulties and which ones are improving. This can be important information in helping applicants draft applications that have the best chance of early allowance, no matter what technology class their invention is in.