IP In Depth: The Cost of Obtaining Allowed U.S. Patents
The Patent Dashboard report of 2.5 average actions per disposal seems too good to be true.
The U.S. Patent and Trademark Office’s (USPTO) September 7, 2010, Director’s Form: A Blog from USPTO’s Leadership addressed the then current backlog of more than 700,000 applications, efforts to reduce pendency and factors that contribute to examination delays. The Patents Dashboard (part of the USPTO’s Data Visualization Center) was introduced as a tool to make the efforts to reduce pendency more transparent to the public.
Patent Tracking Overview
The USPTO Patents Dashboard tracks efforts that focus on factors the USPTO believes contributes to the backlog and pendency. As of November 2014, the Patents Dashboard reports a slight increase in the number of Average Actions per Disposal, which the USPTO defines as the cumulative total actions (non-final + final + notice of allowance) divided by the cumulative total disposals (allowances + abandonments + appeals) from 2.42 in 2010 to 2.54 in 2013. The USPTO notes this calculation “includes the abandonment for a Request for Continued Examination (RCE) as a disposal.”
Tracking the number of actions that patent examiners generate in each application might relate to the amount of work examiners expend on each application; however, the average actions per disposal statistics found on the Patents Dashboard is of limited relevance to applicants seeking to obtain issued patents. Moreover, these statistics might be misleading.
The number of office actions (and the necessity of filing RCEs) increases the costs to patentees and can limit the term of their patents (currently 20 years from the earliest effective filing date). In addition, extended prosecution can increase the risk of prosecution estoppel, which can limit the scope of allowed claims. Patent practitioners outside the USPTO typically do not count notices of allowances as “actions” because a response on the merits is not due upon receipt of notices of allowances (which close prosecution on the merits). Further, because the filing of an RCE (which is necessary in about 22-25% of allowed patents) merely reopens or continues prosecution/examination of the same application after a final office action (which curtails entry of further claim amendments), outside practitioners typically do not consider the filing of an RCE as an abandonment of the application.
Investigating the Patents Dashboard Report
As previously noted, the USPTO Patents Dashboard reports the average actions per disposal as being about 2.5 (inclusive of notices of allowances). A review of nearly 700 patents that issued from 2004-2011 in classes 383 and 604 reveals that the cumulative total of office actions (non-final + final) in each allowed patent averaged 2.9 (and 3.1 for those patents issued in 2011). These calculations do not include/count notices of allowances as “actions.” If notices of allowances were included, the averages would be 3.9 and 4.1 respectively—more than 50% greater than the average actions per disposal reported by the UPSTO for all types of disposals (allowances + abandonments + appeals).
Eight percent of the reviewed patents that issued in 2011 included two or more final office actions, which strongly suggests RCEs were filed in these applications. Twenty percent included at least one final office action and may have included an RCE filing if claim amendments were needed after final to obtain an allowance.
The USPTO’s Patent Dashboard report of 2.5 average actions per disposal seems too good to be true. Subtracting a notice of allowance for each allowed patent would leave an average number of actions of 1.5, suggesting that one out of three applications are allowed as a first action allowance. First action allowances have been described by Gene Quinn in his IPWatchdog blog as “the patent equivalent of a unicorn.”
Patent applicants should not conclude that the USPTO’s average actions per disposal will apply to their pending patent applications. It is more likely they will receive two or more office actions and a 22-25% chance of having to file an RCE. Real costs to patent applicants (as well as patent terms obtained for allowed patent) are directly related to the total number of non-final and final office actions received from the USPTO, which require a response by the applicants and may require the filing of RCEs.
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.