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How to Reduce Time in Patent Examination Purgatory

Getting a patent application from filing to allowance in the USPTO these days can feel like undergoing a root canal without anesthesia.  This is not entirely surprising since one of the performance measures of the USPTO is patent allowance rate: the lower the patent allowance rate, the better the system performance.  In “Fiscal Year 2006: A Record-Breaking Year of the USPTO Patent,” the USPTO boasted that it achieved the lowest patent allowance rate on record in 2006 at 54%, which means that 46% of the applications examined in 2006 were not found to be in condition for allowance.  In real numbers, the number of applications that were examined but not allowed in 2006 was 152,720.

Now, if the decreasing patent allowance rate had no repercussions on the patent system, one might be inclined to agree that the USPTO is doing well. However, there are systemic problems with decreasing patent allowance rate. For example, while the USPTO is striving to keep patent allowance rate low, the USPTO examination pool continues to see a substantial increase in new patent applications yearly.  Meanwhile, many of the rejected applications reenter the examination pool, commingling with the new applications as well as various residues of patent applications, examined or unexamined, from previous years.  This trend necessarily results in an expanding examination pool and system backlog.

In an idealized world where there are unlimited resources, system backlog may be controlled by simply hiring and training more examiners to review the excess applications.  However, the reality is that resources are limited.  Furthermore, if system backlog is not effectively controlled, patent applications would spend more and more time in “patent examination purgatory,” frustrating applicants and examiners alike.

We now examine how the applicant can reduce time in patent examination purgatory. Coincidentally, reducing time in patent examination purgatory will also reduce system backlog. The caveat is that the solution explored here may lead to increased allowance rate, which may leave the USPTO in a quandary as to how to evaluate performance.

The Applicant

In 2006, 332,000 applications were reviewed, but only 179,280 applications were found to be allowable.  This means that 152,720 applications were found to not be in condition for allowance.  Certainly, the quality of patent examinations can vary, depending on the technical and legal expertise, level of experience, mood, and personality of the examiner.  However, suppose for the sake of argument that the examiners were sagacious and diligent.  Then, it can be said that in 2006, there were about 152,720 applications in the examination pool that should not have been in the examination pool.  These applications made it to the examination pool because the applicants filed them.  Is it that the applicants were unaware of the pertinent prior art at the time of filing of the patent applications?  Or is it that the applicants were aware of the pertinent prior art but chose to see if luck would be on their side?  In either case, it is evident that filing applications claiming inventions that barely or do not avoid the prior art creates problems.  One such problem is that the application remains longer in the examination pool, exacerbating system backlog, and ultimately leading to high costs for prosecuting patents.  Because the decision to file an application resides with the applicant, the applicant can definitely play a role in reducing the number of times a patent application goes through the examination pool by choosing to enter into the patent system applications that have a high chance of being allowed.

The USPTO

In the last few months, there has been a flurry of measures proposed to reduce backlog in the patent system.  One such measure involves limiting the number of times a patent application can reenter the examination pool, either in the form of a request for continued examination or continuing application.  However, this measure is unlikely to have much impact in reducing backlog if the patent allowance rate continues to decrease.  With this kind of measure, the applicants would become prudent and file multiple applications for the same or similar subject matter.  Another measure has been accelerated examination, which requires applicants to conduct pre-examination searches.  The USPTO in turn promises the desired patentability decision within 12 months.  This accelerated examination procedure is voluntary and is therefore unlikely to have a large impact on backlog since not many applicants are eager to examine objectively the patentability of their inventions in view of the prior art.  However, the idea of performing pre-examination searches as outlined by the USPTO is instructive.

The Compromise

The compromise is based on an assumption that the examination pool cannot expand indefinitely and that resources are limited.  Consistent with this assumption, the examination pool is treated as a fixed volume having an inlet and an outlet.  Patent applications enter the examination pool through the inlet and exit the examination pool through the outlet.  Mechanisms for entering the examination pool through the inlet include filing of new applications, requests for reconsideration, reply to office actions, remanding for reconsideration after an appeal.  For all practical purposes, new applications are considered to encompass continuation and divisional applications.  Mechanisms for exiting the examination pool through the outlet include rejection, abandonment, and allowance.  The rate at which applications pass through the inlet is the inlet rate, and the rate at which applications pass through the outlet is the outlet rate.  The goal in the balanced system is then to make the inlet rate as close as possible to the outlet rate.

Two parameters are important in making the inlet rate as close as possible to the outlet rate.  These are allowance probability and allowance rate.  To achieve a balanced system, the goal would then be to only file applications with high allowance probabilities.  This would naturally lead to a high allowance rate and a reduction in recycling of patent applications through the examination pool.  In this balanced system, the higher the allowance rate, the better the system performance.  To file applications with high allowance rate probability, it is necessary to be aware of the pertinent prior art and the ways in which references can be combined for the purposes of rejecting the claims presented in the application.

Invention Assessment Approach

The Invention Assessment approach proposes performing a quality patentability analysis prior to drafting a patent application.  The Investment Assessment then serves as a business tool that can be used to determine whether or not to draft the patent application.  The Invention Assessment provides intelligence that can be used to craft a patent application that will go through the patent system with minimal or no recycling through the examination pool.  Thus the Invention Assessment has the effect of saving resources both at the applicant level and at the patent system level.

The Invention Assessment approach includes:

  • Receiving an invention disclosure
  • Interviewing the inventors and others to ascertain one or more aspects of the invention and positioning of the invention in the market
  • Preparing a detailed summary of the invention
  • Preparing a set of claims based on the summary
  • Performing a prior art search based on set of claims and the accelerated examination search guideline
  • Simulating examination of the claims based on the prior art search results
  • Estimating an allowance probability of the claims
  • Refining the claims to improve allowance probability of the claims
  • Preparing an Invention Assessment, including a search and patentability analysis suitable for submission as an accelerated examination search document

The Invention Assessment includes prior art search conducted in a manner recommended by the USPTO for the accelerated examination procedure.  Therefore, the prior art references uncovered during the search are likely to be the same ones or similar to the ones that would be uncovered by the examiner during examination of the application.

The Invention Assessment serves as a tool that can be used to determine whether or not to prepare and file a patent application.  Where the subject matter contained in the invention disclosure is non-novel and non-obvious enough to warrant filing of a patent application, this can result in substantial savings in resources for the applicant.

When the Invention Assessment is available, the drafting of the patent application starts with a clear focus on what can be reasonably claimed in view of the prior art.  As a result, the resulting patent application would have a higher likelihood of being allowed without numerous arguments, amendments, and recycling through the examination pool.