Allowance Rates for Art Units Examining Business Methods
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course Posted: January 8, 2013 @ 10:15 am
One of the criticisms of the PatentCore database in the past was that the database was not a complete representation of the case files at the USPTO and gave a false impression. I never personally found that persuasive given that even when the database first became public there were approximately 1.5 million application files within the database. Still, many patent examiners scoffed at the notion that this data was accurate.
If I were a patent examiner that hadn’t issued patents for years I wouldn’t want anyone to know that either. Similarly, if I were a Supervisory Patent Examiner (SPE) in an Art Unit that routinely only issued patents after a long drawn out appeal process that resulted in the Board overturning the rejections I wouldn’t want the public to know about that either. Sadly, this type of gaming exists at the Patent Office. There are examiners who only rarely issue patents and Art Units that openly tell patent attorneys that they don’t issue patents unless ordered to do so by the Board. Knowing that this happens, which is supported by hard data, makes it impossible to tolerate the anti-patent zealots who routinely opine about just how easy it is to get a software or business method patent issued. Really? You have to be kidding!
Anyone who knows anything about how the Patent Office operates knows that there are many places within the Patent Office that it is virtually impossible to obtain a patent even on a truly new and exceptional invention. For crying out loud, sometimes it is even difficult to get examiners to look at the pictures int he application. On an application in the business method space where I am an inventor I am facing a bogus 112 rejection for inadequacy of disclosure for something that is shown (and labeled) specifically in 2 different figures and discussed at length in 2 different paragraphs. Really? I realize that examiners don’t have a lot of time to examine patent applications, but when you wait for many years to even get to the front of the line for examination it is truly disheartening to have to tolerate the games played at the USPTO.
Thanks to a more complete PatentCore database it will now it will be exceptionally difficult for patent examiners, or anyone for that matter, to challenge the adequacy of the data or conclusions drawn therefrom. For a very long time statistical analysis of Art Units and patent examiners had to through necessity rely on at most several hundred randomly selected files. But now PatentAdvisor includes coverage of 6,472,046 published pending, granted and abandoned applications extending back to the date patent applications began to publish under the American Inventors Protect Act of 1999. The database also has many thousands of applications from before that time as well.
Given this greatly expanded coverage of cases I thought it might be interesting to once again take a look at Class 705 to compare the data today with the data available during the winter of 2012.
The information in the table below was published on February 22, 2012. See Is there a Systematic Denial of Due Process at the USPTO? The percent allowed was reached by taking the number of cases allowed and dividing by number of cases allowed plus the number of cases abandoned (which is represented in the “Total” column). Pending cases were not considered.
The PatentCore database is far more complete than it was even just 12 months ago. The table below shows data acquired by search run on January 7, 2013. Again, the percent allowed is reached by taking the number of cases allowed and dividing by number of cases allowed plus the number of cases abandoned (which is represented in the “Total” column). Pending cases were not considered.
Art Unit 3689
With more data the overall allowance rate of most of the Art Units in the business method area rose, some significantly. For example, based on the cases then in the PatentCore data base in February 2012, the allowance rate of Art Unit 3622 was 5.6%. With much more complete data, the same search run on January 7, 2013, shows that the overall allowance rate of Art Unit 3622 is 51.8%.
Art Unit 3689, however, continues to lag significantly behind the others in Class 705 in terms of allowance rate. In February 2012, based on the then available cases loaded into the system the allowance rate was an abysmal 4.5%. Now with three times the number of cases the overall allowance rate is a slightly less abysmal 6.3%.
The extremely low allowance rate in Art Unit 3689 is exceptionally difficult to reconcile with an overall allowance rate of 59.8% in the Art Units assigned to examine business method patents. The next lowest allowance rates go to Art Unit 3685 at 24.2% and Art Unit 3688 at 25.0%, which themselves seem to be outliers but still allow patents at a rate that is 4 times that of Art Unit 3689.
It is even more difficult to reconcile the outlier status of Art Unit 3689 when you factor in the entities that dominate Art Unit 3689. We are not talking about your average independent inventor here. The top assignees with applications in 3689 according to PatentAdvisor are:
- International Business Machines
- Microsoft Corporation
- Fujitsu Limited
- American Express
- General Motors Corporation
- Oracle International
- SAP AG
- Bank of America
These are not small companies. These companies know how to obtain patents. IBM is year after year the top patenting company in the world, yet they have the same issues obtaining patents from Art Unit 3689 as everyone else.
Obviously, what is going on inside of Art Unit 3689 needs deeper review.
The data available via PatentAdvisor is voluminous. You can break it down beyond Art Unit to look at the statistics for each individual examiner. In fact, the database has information on 14,087 different patent examiners, which is rather remarkable since according to the Patents Dashboard there are currently 7,789 patent examiners.
It is unfortunate, and hard to believe, but there are places within the USPTO that seem extraordinarily reluctant to issue patents. According to the data available through PatentAdvisor, of the 128 cases that proceed to appeal beyond simply filing a Notice of Appeal, 75 cases result in an applicant victory and only 53 result in an applicant loss, which means applicants are successful on appeal 58.6% of the time. Armed with that information I suspect you would probably approach prosecution differently.
PatentAdvisor allows for more strategic prosecution and management of patent applications and patent portfolios. If you are faced with a patent examiner who never issues a patent without the filing of an RCE that would be useful information. If you are dealing with an Art Unit that will require you to appeal to have any realistic chance of obtaining a patent then filing those sequential RCEs to make the examiner happy will only lead to unnecessary expensive and many years of delay.
In any event, whether you are a company trying to develop a better prosecution strategy or a law firm that wants to better be able to represent clients, you should at least take a look and see how you might be able to use the information. Sign up for a free 2-day trial of PatentAdvisor and give it a whirl.
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Prosecution, Patents, USPTO
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.