Posts Tagged: "PatentAdvisor"

Since the Alice Corp. decision, rejections under 35 U.S.C. 101 have become substantially more common in business-method art units, and notices of allowance have become substantially more rare in these art units. Meanwhile, 101 rejections made even pre-Alice were amongst the poorest quality for business-method art units as compared to those from other computer-oriented art units. Thus, it appears as though the patent prospects for applications assigned to business-method art units are grim. Given that the United States has traditionally been a leader in software and that software applications are frequently assigned to business-method art units, it seems unfortunate that the patent office is so unwilling to grant protection to innovation in this area.

Knowing when to give up on a patent application is one of the most critical questions facing for any patent applicant… When faced with the decision regarding whether to file an RCE or file an Appeal, the desire to not give up and to hopefully obtain a patent can easily lead any application to elect to the file a Request for Continued Examination (RCE). This is true for the cost reasons already stated, but also because filing an RCE you will undoubtedly get treatment much faster than going on the appeal track, and there is always hope that additional time working with the patent examiner will yield patentable claims. Of course, sometimes filing that next RCE is going almost certainly accomplish nothing.

There is no way to know for sure whether the applicant could have achieved an allowance had they hung in, but it would have been helpful to know that the examiner was very experienced and likely had decision making authority. Such an observation would have given great insight into the fact that the examiner in question here has an overall allowance rate of nearly 70%. It no doubt would have also been helpful to know that after an interview in over 50% of cases, the next significant event following the interview was an allowance. In short, the statistical data shows that this was an experienced patent examiner who is interested in working with applicants and their representatives to identify allowable subject matter and issue patents where appropriate.

Are you drunk? No, seriously… are you drinking scotch and whiskey with a side of crack cocaine while you “examine” patent applications? (Heavy emphasis on the quotes.) Do you just mail merge rejection letters from your home? Is that what taxpayers are getting in exchange for your services? Have you even read the patent application? I’m curious. Because you either haven’t read the patent application or are… (I don’t want to say the “R” word) “Special.”

The problem of the RCE backlog is a function of the prosecution dynamic and lack of meaningful oversight into areas where RCEs are common and patents issue only after going on the appeal track. Still, in the press release issued by the USPTO recently discussing the RCE backlog and USPTO Outreach, Acting Director Teresa Rea said: “One of the purposes of this outreach effort is not to eliminate RCE practice, but to enable applicants to better understand the full range of alternative options we have available during the examination process.” This sounds a like the USPTO is blaming the patent community for the RCE backlog. Yes, there are ways to avoid filing RCEs but they all require patent examiners that are willing to participate in a meaningful way. What about the Art Units where examiners practically refuse to issue patents?

The backlog of unexamined patent applications was down over 15.1% in September 2012, compared with October 2010. At the same time, however, the number of unexamined RCE filings grew 95.56%, after peaking at 103.93% in August 2012. In the column above labeled “Totals,” I added the number of unexamined patent application with the number of unexamined RCE filings. When you consider all of these unexamined filings the progress of the USPTO is more modest. There is not a 15.1% dip, but rather a 8.05% dip in unexamined patent filings over this interval. It seems rather clear that the USPTO has traded an unacceptably high unexamined patent application backlog for a still unacceptably high but better unexamined patent application backlog PLUS a ridiculous RCE backlog.

This all means that the “business method Art Units” are not the only ones charged with examining applications covering computer-implemented methods. In fact, there are Art Units where from a patentee perspective you would really rather be assigned because they have allowance rates in excess of 70%. In fact, one cluster of Art Units identified as covering “Miscellaneous Computer Applications,” which by class is assigned to data processing, has an allowance rate of 72.2% according to data available via PatentAdvisor™.

Reed Technology and Information Services Inc., a part of the LexisNexis® family and a provider of content management services, announced earlier today that it has joined forces with PatentCore. You may recall that PatentCore is a publisher of online Patent Office analytics, which for the first time has given the patent bar and public a snapshot look at what goes on inside the Patent Office Art Unit by Art Unit and patent examiner by patent examiner.