Posts Tagged: "Juristat"

Several questions every patent attorney should be asking before responding to an Alice rejection are: (1) How many Alice rejections has the examiner issued? (2) What does he or she consider to be the sticking points of the decision? (3) How many applications that received an Alice rejection were eventually allowed? Once an attorney has the answers to these questions in hand, the path to success in responding to an Alice rejection is considerably clearer.

While Alice rejections can be found all over the USPTO, roughly two-thirds of them are found in TC 3600. Only TC 2900 has not had any Alice rejections. Looking deeper into the 3620s, 3680s, and 3690s, the reach of Alice becomes apparent. Using Juristat’s data, we counted all rejections in these art units since June 19, 2014, the date Alice was decided. We then calculated the percentage of those rejections that cited Alice, focusing only on examiners that have issued at least ten rejections since the Alice decision. As shown in Figure 3, roughly three-quarters of all rejections in these art units are Alice rejections, with several examiners having a 100% Alice rejection rate.

Looking at raw numbers, California was by far the most inventive state, with over 329,000 non-design patents filed, over 254,000 disposed, and over 180,000 allowed between 2000 and 2010. Texas, New York, Massachusetts, and Washington rounded out the top five, but together had fewer applications, disposed applications, and allowed applications than California alone. The states with the highest allowance rates were Vermont (84%), Idaho (77%), Kansas (74%), Washington (74%) and Iowa (73%).

When measuring the overall success and efficiency of a law firm’s patent prosecution practice, there are several metrics available, including overall allowance rate, time to disposition, and average number of office actions. Allowance rate is one of the most common metrics, but allowance rate merely tells us how many applications received NOAs, and nothing of the quality of those applications. Besides merely getting an application allowed, clients are also concerned about the quality and scope of their claims. One way to determine this is by measuring how well a law firm preserves claims through prosecution. This article shows a ranking of the top 10 firms that lose the fewest independent claims in prosecution among IP Today’s top patent firms for 2015.

Technology Center 2400 covers the technologies of computer networks, multiplex communication, video distribution, and cybersecurity. In terms of average time to allowance, it is the slowest-moving technology center, with most applications waiting approximately 3.5 years before allowance. When it comes to average allowance rate, TC 2400 is lower than the USPTO at large, at 62% and 71%, respectively. As the home of art units concerning cryptography and cybersecurity, many of the patent applications in TC 2400 are on the front line of the fight against cyber crime, an increasingly large and growing problem in the United States. This is a ranking of the top 10 most successful firms at obtaining patents in TC 2400.

Business method patents are still being granted after Alice, but are being granted at lower rates than before, and some assignees are better at obtaining them than others. The top assignees in the business methods art units have a wide range of allowance rates, from Oracle at 83.3% to Siemens at 35.3%, resulting in a difference of 48 percentage points. Even among the most successful assignees, only three have allowance rates of over 50%.