USPTO Update: Track One Has 50% Allowance Rate

I am in San Francisco today at the Practicing Law Institute California Center, which is located on Market Street. Today is the west coast version of the 7th Annual Patent Law Institute, which is also being simultaneously webcast. The room here at PLI is packed, and several hundred attorneys are viewing via the Internet.

The first presentation today is by Brian Hanlon, who is the Director of the Office of Patent Legal Administration at the United States Patent and Trademark Office. The topic of his presentation is simple — PTO Update.

Hanlon started with statistics relating to the variety of new procedures that were ushered in as part of either phase one or phase two implementation of the America Invents Act (AIA). He started with prioritized examination, which went into effect on September 26, 2011. Between inception and February 19, 2013, there have been 8,554 requests for prioritized examination, with 94% of requests granted. In those cases where the petition was granted there were only 55 days from petition grant to the First Office Action, and the average days to final disposition has been just 168 days. So far there have been 3,667 final dispositions mailed with 1,828 allowances mailed, which corresponds to an allowance rate of 49.9%, which isn’t bad, but didn’t initially strike me as great either.

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To put this in some kind of perspective I logged into the PatentAdvisor search tool, which provides intelligence on patent examiners and Art Units. PatentAdvisor also gives you the opportunity to search by law firm, which is where I focused. Hanlon did not provide a breakdown of what technologies were seeing the prioritized examination statistics, so looking directly at a representative set of Art Units didn’t seem to be a useful endeavor. Recently IP Today published its 2013 list of the top patent firms, which is based on volume of filings. So I figured I would look at the top three patent firms in PatentAdvisor. These are (1) Oblon Spivak; (2) Sughrue Mion; and (3) Birch Stewart.

With respect to Oblon Spivak, PatentAdvisor has 87,209 cases with electronic file histories represented in their system, with 49,010 granted applications, 18,198 abandoned applications and 20,001 pending applications. Focusing on those cases where there has been a final dismissal (i.e., grant or abandonment) the allowance rate for the cases is 72.9%. But that doesn’t tell the whole story really. According to PatentAdvisor 22.7% of applications that ultimately resulted in a patent required at least 1 request for continued examination (RCE), and 5.3% of allowed applications required two or more RCE filings.

With respect to Sughrue Mion, PatentAdvisor has 57,124 cases with electronic file histories represented in their system, with 28,319 granted applications, 14,701 abandoned applications and 14,104 pending applications. Focusing on those cases where there has been a final dismissal, the allowance rate is 65.8%. Out of those allowances 20.6% required at least 1 RCE filing, with 4.2% of allowed applications requiring two or more RCE filings.

With respect to Birch Stewart, PatentAdvisor has 52,162 cases with electronic file histories represented in their system, with 27,288 granted applications, 13,129 abandoned applications and 12,195 pending applications. Focusing on those cases where there has been a final dismissal, the allowance rate for the cases is 67.5%. Out of those allowances 23.2% required at least 1 RCE filing, with 5.5% of allowed applications requiring two or more RCE filings.

So what does this all mean? If you back out the cases that required an RCE filing from the above three firms the allowance rate according to PatentAdvisor becomes: (1) Oblon Spival = 50.2%; (2) Sughrue Mion = 45.2%; and (3) Birch Stewart = 44.3%.

Of course, this is not an apples to apples comparison, but it would seem that prioritized examination with an allowance rate of 49.9% is on the high side of normal. Thus, filing a prioritized examination doesn’t seem to give applicants any greater likelihood of having claims allowed, but it absolutely will get you to the decision faster.

Hanlon also provided some interesting statistics on other new processes. The data is for the time period September 16, 2013 through February 28, 2013.

• There have been 440 preissuance submissions filed.
• There have only been 9 requests for supplemental examination.
• There have been 150 inter partes reviews filed.
• There have been 15 covered business method reviews filed.

Interestingly, the last covered business method review filed was in November 2012. None were filed in December 2012, January 2013 or February 2013.

For those who are interested in statistics available via PatentAdvisor, sign up for a free 2-day trial of Patent Advisor and give it a whirl.