“Approximately 35% of patent Examiners allow 60% of all U.S. patents; and approximately 20% of Examiners allow only 5% of all U.S. patents. In other words, few Examiners are allowing many patents, and many Examiners are allowing few.”
This article summarizes and expands upon the content of a series of articles written for IP Law360 between May and August of 2020, as well as webinars conducted with IPWatchdog.
Examiners at the U.S. Patent and Trademark Office (USPTO) can be categorized into three different “types,” namely, green, yellow and red Examiners. Knowing the type of patent Examiner assigned to a particular U.S. patent application can help in strategizing on prosecution tactics, crafting responses, and anticipating costs and timing needed to obtain a U.S. patent.
For each year from 2009 to 2019, data was gathered for Examiners in each of eight non-design Tech Centers at the USPTO from the LexisNexis PatentAdvisor® patent prosecution analytics database. Examiners are categorized into three different types (so-called green, yellow, and red Examiners), and the data show that certain types of Examiners allow and examine disproportionately more U.S. patents each year than other types of Examiners, resulting in few allowing many, and many allowing few. Further, the data show that the type of Examiner can cause an Applicant to at least double their efforts to obtain a patent. This doubling of effort, or even more, is evident in numerous metrics in the life cycle of a U.S. patent application, such as the allowance rate, the number of Office Actions needed per disposal, the time to disposal, applications with at least one Final Office Action, applications with at least one interview, and even in after final practice.
The Color Code Explained
The LexisNexis PatentAdvisor® database provides a quantitative measurement for each Examiner at the USPTO, known as the Examiner Time Allocation (ETA). The ETA measurement is a proprietary calculation based on several factors for each Examiner and is a unitless unbounded positive number with values starting at 0.1. Each Examiner is identified as either a green Examiner, a yellow Examiner, or a red Examiner based on their ETA measurement. Green Examiners have an ETA of 0.1 to 2.5, usually allow more than 150 U.S. patents per year and have applications with a shorter pendency. Yellow Examiners have an ETA of 2.6 to 5.9, usually allow between 15 to 150 patents per year and have applications with a medium pendency. Red Examiners have an ETA of 6.0 or more, usually allow less than 15 U.S. patents per year and have applications with a longer pendency.
The distribution of these three Examiner types at the USPTO was relatively constant for the decade-plus of data reviewed. Figure 1 illustrates the percentage of green, yellow, and red Examiners for each year from 2009 to 2019 for the eight non-design Tech Centers, where the total for each year is 100%. While the green and yellow Examiners have diverged from approximately 40% each to approximately 35% and 45% since 2015, the percentage of red Examiners has been relatively constant over these years at approximately 20%. Over the stated time period, the percentages of green, yellow, and red Examiners are 37%, 44%, and 19%. As the percentages of each Examiner type differ, an Applicant is most likely to receive a yellow Examiner, but an Applicant still has a considerable chance of receiving a red Examiner.
Figure 1 – Percentage of Examiners by Examiner type.
Applying the Code to Tech Sectors
Considering this data at the Tech Center level of the USPTO, the distributions of the Examiner types across the eight non-design Tech Centers is surprisingly similar for five Tech Centers and dissimilar for three Tech Centers. Figure 2 sets forth the percentages of Examiner types within each Tech Center, as well the total percentage of Examiners in each Tech Center comparatively. Five Tech Centers (1600, 1700, 2100, 2400, and 3700) have similar distributions of Examiner types, namely approximately 50% yellow Examiners and either an approximate split of 25%-25% or 30%-20% for green Examiners and red Examiners. Different from this pattern, Tech Center 2600 has an approximately equal percentage of 45% green and yellow Examiners and approximately10% red Examiners. Tech Center 2800, which has the largest percentage of overall Examiners in any Tech Center at 17%, has the highest percentage of green Examiners at approximately 70%, the lowest percentage of yellow Examiners at 25%, and the lowest percentage of red Examiners at 5%. Finally, Tech Center 3600 has nearly the same percentage of green, yellow, and red Examiners, and the highest percentage of red Examiners at 33%. Of note, Tech Center 3600 is also responsible for examining business method inventions, among other invention categories.
Figure 2 – Percentage of Examiners by Tech Center.
With this background on the distribution of the Examiner types, the contribution of each Examiner type to the number of patents issued by the USPTO can be considered but, surprisingly, the contributions are not directly correlated to the percentage of the Examiner types. Figure 3 illustrates the percentage of U.S. patents that each Examiner type issued over the period. The green Examiners issued over 50% of all U.S. patents. Over the period, the average percentages of patents issued by green, yellow, and red Examiners are around 60%, 35%, and 5%.
Figure 3 – Percentage of U.S patents allowed by Examiner type.
The Many and the Few
Considering the statistics in Figures 1 and 3, the differing impact on patents by green Examiners and red Examiners is evident. Combining this data shows the impact of the Examiner type on issuance of U.S. patents: approximately 35% of Examiners (the green Examiners) allow 60% of all U.S. patents; and approximately 20% of Examiners (the red Examiners) allow only 5% of all U.S. patents. In other words, few Examiners are allowing many patents, and many Examiners are allowing few patents.
The impact on the type of Examiner is evident not only in the percentage of U.S. patents but also in every measured metric in the life cycle of a U.S. patent application. Further, the differences between green Examiners and red Examiners result in at least a doubling of effort if an application is examined by a red Examiner instead of a green Examiner. For an Applicant, this doubling or more of effort results in expected additional expense and time when dealing with a red Examiner instead of a green Examiner.
For example, this doubling effect is evident in the allowance rate. Figure 4 illustrates the allowance rate for green, yellow, and red Examiners and all Examiners combined (the blue line). The green Examiners have a higher allowance rate than average, while the yellow and red Examiners are consistently lower than average. Over the period, the average allowance rates for green, yellow, and red Examiners are 81%, 64%, and 38%, with 70% for all Examiners. So, if an application is examined by a green Examiner instead of a red Examiner, the application is twice as likely to be allowed.
Figure 4 – Allowance rate by Examiner type.
As another example, the number of Office Actions to disposal is also affected by the Examiner type. Figure 5 illustrates the average number of Office Actions required to dispose (either patent or abandon) a U.S. patent application for each Examiner type, as well as all Examiners combined. For green Examiners, the number of Office Actions to disposal is lower than the average, while higher for yellow and red Examiners. Over the period, the average number of Office Actions for green, yellow, and red Examiners is 1.5, 2.4, and 2.9, where the average number for all Examiners is 2.0. So, if a patent application is examined by a red Examiner instead of a green Examiner, the application will have twice as many Office Actions.
Figure 5 – Office Actions to Disposal by Examiner type.
Impact on Timing
The doubling effect also appears in the time needed to obtain a patent. Figure 6 illustrates the average time to disposal (either patent or abandon) for a U.S. patent application for each Examiner type, as well as all Examiners combined. The disposal time for green Examiners is lower than the average, while higher for yellow and red Examiners. Over the time period, the average time to disposal for green, yellow, and red Examiners is 2.7, 3.5, and 4.2 years, and 3.2 years for all Examiners. However, in recent years, the time to disposal for each Examiner type has further diverged, with the averages in 2019 for green, yellow, and red Examiners of 2.1, 2.9, and 4.0 years. As such, if an application is examined by a red Examiner, the Applicant can expect the process to take twice as long compared to an application examined by a green Examiner.
Figure 6 – Time to disposal (years) by Examiner type.
The impact of the Examiner type is also evident in after final practice. For example, to continue prosecution after final, a Request for Continued Examination (RCE) can be filed, and the use of this costly strategy is also impacted by the Examiner type. Figure 7 illustrates the percentage of applications (patented or abandoned) with at least one RCE for each Examiner type, as well as all Examiners combined. Filing RCEs occurs less with green Examiners than with yellow and red Examiners. Over the period, the average percentage for green, yellow, and red Examiners is 20%, 38%, and 45%, and the average for all Examiners is 30%. So, on average, with a red Examiner instead of a green Examiner, an Applicant can expect to file an RCE approximately twice as often.
Figure 7 – Percentage of applications with at least one RCE by Examiner type.
Color Coding and Appeals
Another after final strategy available to an Applicant is to file an appeal to the Patent Trial and Appeal Board (PTAB) if the Applicant believes the Examiner’s rejection is unwarranted, and the impact of the Examiner type is evident here as well. Figure 8 illustrates the percentages of applications (patented or abandoned) with at least one appeal by Examiner type and for all Examiners combined. As may be expected given the prior statistics, green Examiners are appealed less than yellow and red Examiners. Over the period, the average percentage for green, yellow, and red Examiners is 4%, 9%, and 13%, and the average for all Examiners is 7%. As such, an Applicant can expect to appeal applications with red Examiners three times more often than with green Examiners. In 2019, however, the difference was even greater between green and red Examiners such that Applicants appealed applications with red Examiners six times more often than with green Examiners.
Figure 8 – Percentage of applications with at least one appeal by Examiner type.
Although red Examiners are appealed more than green Examiners, the success rate at the PTAB is opposite. Figure 9 illustrates the PTAB winning percentage for applications (patented or abandoned) by Examiner type and for all Examiners combined. Winning on appeal includes receiving either a Notice of Allowance or a new Office Action at any point immediately after a Notice of Appeal is filed until immediately after a PTAB decision. Over the period, the average winning percentage on appeal for applications examined by green, yellow, and red Examiners is 68%, 64%, and 59%, and the average for all Examiners is 65%. Although not a doubling in difference, an Applicant appealing a green Examiner is 15% more successful than when appealing a red Examiner.
Figure 9 – Percentage of winning on appeal by Examiner type.
As described above, the differences between green Examiners and red Examiners appear in the many metrics over the life cycle of a patent application. Figure 10 summarizes these differences.
Figure 10 – Differences between green Examiners and red Examiners.
Choose Your Color
Given all of these metrics, which Examiner type would an Applicant like to have? A green Examiner is the answer if an Applicant wants to have a better chance of receiving a patent and doing so in less time and with less expense. Comparing Examiner types, at least a doubling of effort is needed when a patent application is examined by a red Examiner instead of a green Examiner. As such, knowing the Examiner type can help an Applicant predict likely prosecution costs and times using the metrics in the life cycle of a patent application.
With a limited patent procurement budget, an Applicant needs to be as efficient and cost effective as possible, but a quality patent portfolio needs to be acquired. So, if an Applicant can be both cost effective and develop a quality patent portfolio, that would be a desirable result. Knowing the Examiner type can help achieve this. In particular, knowing the Examiner type can help with: strategizing on prosecution tactics (which path to take next?); crafting responses to Office Actions (how much to amend the claims to obtain a patent?); anticipating the time needed to obtain a patent (knowing the possible timing can be particularly helpful if the patent portfolio is closely tied to products in the marketplace); and anticipating prosecution costs (how many Office Actions will likely be needed, what are the chances of having Final Office Actions, or will an appeal likely be needed?).
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