Patenting can be a long and costly process, and the uncertainty of the outcome can greatly impede the patentee’s ability to budget and plan effectively. In an ideal world, a practitioner (and by extension, their client) would have a roadmap to chart the probable actions of the examiner at the patent office responsible for each of their applications in prosecution. Knowing that the future course of prosecution is more likely to be negative and/or lengthy could make all the difference for applications assigned to more challenging examiners.
The good news is much more hard data on patent examination are available today than ever before, and the data contain a wealth of useful detail. TurboPatent has analyzed approximately 100 gigabytes of data compiled on public PAIR. From all cases filed in the last 10 years, we filtered for all final dispositions in all of 2015 and 2016. Taking this data, we examine TC-2800 at three levels of detail: the overall statistics; a breakdown of the allowance rate by stage of prosecution; and finally, all the way down to the extremes of variation exhibited by individual examiners. The deepest investigation exposes a range of patterns unobserved in a focus on allowance rates alone. Relatively small changes in allowance rates, for example +/-15%, correlate to a 2x change in the effort and cost of an allowance.
TC-2800 is the largest of the eight technology centers responsible for utility patent applications, disposing 21% of all utility applications and 40% more than the runner-up tech center, TC-3700. TC-2800 examines applications in a broad range of physical science related subject matter: semiconductors, electronic memories, electrical circuits, optics, printing, measurement and test equipment, and related topics.
The average prosecution road map of TC-2800
TC-2800 exhibits extreme characteristics relative to its peers by several measures. TC-2800 features the:
– shortest pendency at 29 months;
– lowest percentage of granted cases involving an RCE at 22%;
– lowest percentage of allowances with interviews at 20%;
– Lowest percentage of allowances by appeals at a mere 2%.
For the all-important allowance rate, TC-2800 stands alone at 82%, 9% above the overall rate for utility applications of 73%.
Breaking down the allowances by stages of prosecution reveals the pattern depicted in Figure 1. Examiners in TC-2800 allow over a 5th of cases without an office action, higher by a factor of 2 than 6 of the 7 other tech centers. The exception is TC-2600 at 13%. The largest share of allowances come after one office action. The tail of two, three, and four or more office actions collectively have an allowance rate of 26%.
The summary statistics for TC-2800 obscure the particulars of the 1867 unique combinations of examiner and art unit. (If the same name is associated with different art units, we count those as distinct, though they may or may not be the same person). The deeper story in the data lies in just how far individual examiners can vary from the average pattern, how many examiners vary, and how those variances are obscured by the simple allowance rate, only to be revealed in the richer details of the underlying patterns.
The 10 examiners in TC-2800 with the most compressed prosecution
For analysis of examiners at the extreme ranges of prosecution patterns, we restrict the data to the 1083 examiners disposing at least 50 cases in the 24 month period of the study, a group which still accounts for 87% of the dispositions. We identify a set of “easy” examiners, those with a compressed pattern of prosecution, by sorting along the probability of receiving an allowance after exactly two office actions. Table 1 summarizes the data for the ten easiest examiners by this measure.
The 10 examiners hail from 9 different art units. Collectively, they disposed 1100 cases at an average allowance rate of 96% and pendency of 20 months. Not only do these examiners have an extraordinarily high allowance rate on average, their allowance rate on the first examination, without even a first non-final rejection, is 69%, almost equal to the overall allowance rate for utility applications across the entire patent office.
Whether this foreshortened pattern of prosecution is “good” for the applicant is a subject for further research. Were the root cause to be insufficient diligence, that would by no means be a favor to an applicant. A second possible explanation is selection bias in assigning easily allowable cases to a small set of examiners, also a topic for further research. A third possibility is that enough easy cases were assigned to these examiners by random chance to create this pattern. This last hypothesis we explored by randomizing the names on each case (keeping the art unit the same). Instead of 10 examiners with at most 1% of their allowances after the first office action, we found not a single examiner below 10% on that score.
Another way to characterize the variation in prosecution on the short end is to take the total probability of allowance after the second action (26% in the average) and ask, how many examiners fall at or below half that? The answer is 207 examiners, which accounts for 20% of dispositions with an average pendency of 22 months, allowance rate of 94%, and 0.7 office actions.
The 10 examiners in 2800 with the most lengthy prosecution
Turning to the other end of the spectrum of prosecution difficulty, we identify a set of “hard” examiners, those with a pattern of prolonged prosecution, by sorting along the probability of receiving an allowance only after four or more office actions and extracting the highest ranking 10. Table 2 summarizes the data for all 10 “hard” examiners.
In this instance, the 10 examiners are spread across 10 art units. They disposed 726 cases at an average allowance rate of 67% and average pendency of 47 months. The average allowance rate is far from being alarmingly low. It is only 6 points below the USPTO average and equal to or above the allowance rates of four other entire tech centers (1600, 1700, 3600, and 3700).
If one were only focused on the allowance rate, one might be inclined to dismiss the low end of TC 2800’s allowance rate as being of little consequence. However, the additional 18 months of pendency over and above the TC-2800 average begins to hint at the practical effect, and cost, of extra rounds of prosecution and RCEs. This group of examiners trickle out their allowances only over the course of many office actions, such that the majority of granted patents won come only on or after the fourth round. Assuming a ballpark cost of an office action at $4,000, being assigned to one of these examiners could increase the cost of prosecution by $10,ooo over an average case in TC2800. Given that a client’s budget for new IP production and maintenance is likely to be a zero-sum game, such variations in examiners’ patterns can have practical consequences.
As on the short end, the long end of prosecution patterns in TC-2800 is a fair share of all dispositions. Given that on average in TC-2800, 5% of allowances occur after the fourth office action, how many examiners fall at twice that percentage or above? The answer is 224 examiners, which accounts for 15% of dispositions with an average pendency of 37 months, allowance rate of 73%, and 2.3 office actions.
Taking the long and short together, in TC-2800 one has a greater than 1/3rd chance of being assigned an examiner either half as hard or twice as hard as the average. What examiners are you corresponding with currently in your prosecution of utility applications? Do you know their typical patterns of prosecution? Thanks to the transparency of the USPTO and its efforts to publish large data archives in machine readable form, answers to such questions are now firmly in the realm of technical and commercial feasibility for every active examiner, and consequently open to study by every practitioner and client.