It should come as no surprise that allowance rates vary widely among art units. After all, certain factors affect certain applications more than others. One need only consider Alice Corp. and its impact on software-related business methods. Nevertheless, practitioners may be surprised by the size of the spread. These are the 20 art units with the highest and lowest allowance rates:
For these lists, we considered only art units with at least 100 disposed applications. We also limited our analysis to those art units in which the most recent application was filed after January 1, 2013. Finally, we excluded design art units. Let’s take a closer look.
Art Unit 3689 has the lowest allowance rate at 7.7%. Art Unit 3659 has the highest at 98.3%. Oddly enough, these two art units are from the same technology center. It’s worth noting, however, that the 3600s deal with a variety of inventions, including transportation, e-commerce, and national security.
Of the 20 art units with the lowest allowance rates, eight are in the 3600’s. This is not surprising. After all, the 3600’s host many business-method art units. In Alice Corp., the Supreme Court rejected claims describing a method for mitigating settlement risk. According to the Court, the claims did not contain an “inventive concept” sufficient to “transform” the abstract idea into a patent-eligible application. Since that case, and particularly after the June 25, 2014 USPTO memo, there has been a significant jump in section 101 rejections, especially with regard to software-related business methods. This increase is well documented.
Outside of the 3600’s, another five of the hardest art units come from the 1600’s – biotech and organic chemistry. Again, this is not surprising, especially in light of Mayo and Myriad. In Mayo, the Court found that a process for determining the proper dosage of a drug was patent ineligible as it was directed at a law of nature. In Myriad, the Court similarly held that naturally occurring gene sequences were not patentable. On March 4, 2014, the UPSTO issued new guidance in response to these cases. As a result, art units dealing with biotech and organic chemistry have seen a significant increase in section 101 rejections. While the more recent “2014 Interim Guidance on Subject Matter Eligibility” supersedes the March 4 guidance, we expect Mayo and Myriad will continue to play a significant role.
If we turn our attention to the easiest art units, we see that six hail from the 2800s – semiconductors, circuits, optics, and printing. Another five are found in the 2600s, dealing with communications. Finally, four of the highest allowance rates come from the 3600s, making it the most represented technology center between the two lists.
To break things down even further, four of the most difficult art units deal specifically with electronic commerce (the 3620s). On the other hand, three of the easiest art units cover digital communications (the 2630s). Another three of the easiest art units come from the 3640s. According to the USPTO’s website, this group is responsible for a wide range of subject matter, from vermin destruction to nuclear systems.
Represented graphically, the distribution of allowance rates among all art units at the USPTO looks like this:
The graph is skewed right, with a plurality of art units allowing between 70-75% of applications. Nevertheless, it’s clear that art unit plays a significant role in patent prosecution. An application assigned to 3689 is 90.6% less likely to receive an NOA than an application assigned to 3659.
Not surprisingly, if we consider only first office action allowance rate, the graph looks entirely different:
A vast majority of art units allow fewer than 10% of applications at the first office action, with a plurality of art units allowing only about 2% of applications at this stage. That’s not necessarily a bad thing. While it would certainly save time and money if more applications were accepted at this point, an immediate NOA often means the applicant is underselling his or her invention. As Jeffrey Schox states in his book Not So Obvious: “[B]ecause the prosecution process is considered a negotiation with the USPTO, patent applications that have been accepted without any rejections are often suspected of having too narrow of patent scope.” A colleague of mine put it this way: if one’s new employer immediately accepts the employee’s first salary demand, the employee should’ve asked for more money.
We expect to see changes as cases like Bilski, Alice Corp., Mayo, and Myriad continue to affect the examination process. We will continue to update the list as new cases and guidances come down.