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Since the year 2000, there have been major shifts in law, policy, and the technological landscape that have had profound impacts on patent prosecution practice at the USPTO. Although we often focus our analytics on small corners of the USPTO, such as individual industries, art unit groups, and practice entities, we rarely take a step back to evaluate the general trends at work across the entire USPTO. Now, we'll pull back the curtain to reveal a few USPTO-wide prosecution trends.
This page is intended to be a general resource for patent prosecutors to use to get a bird's-eye view of the state of patent prosecution trends across the USPO.
Check back often, as we will periodically update this information and add new charts and graphs to bring you even more groundbreaking insights.
Over the past year, we have published articles covering a wide range of topics, from handling Alice rejections to a study of the ATF industries to the Juristat Top 100. In each of them, we have tried to lift the curtain on the inner workings of the USPTO and various industry players in order to give you, our readers, a more informed outlook on the practice of patent prosecution. Of course, given the range topics that we have covered, some of our articles are naturally going to be more popular than others.
One of the biggest questions every client wants to know is “how long will patent prosecution take?” A corollary to that question is “how much will it cost?” The most honest answer is that every prosecution is different and each application involves its own unique set of circumstances. However, one thing is certain--every office action and response thereto extends an application’s prosecution timeline, and thereby also increases its cost.
In July of 2016, we published an article titled “The Most Difficult Examiners at the USPTO,” in which we identified the top 10 patent examiners across all art units whose allowance rates were the lowest. For most patent prosecutors, their examiner’s allowance rate is the clearest indicator of the overall difficulty of prosecuting a patent with that examiner, since a low allowance rate means that there likely will be more office actions, claim scope will be harder to retain, and the prosecution timeline will be longer. Thus, it is helpful for a patent prosecutor to know what his or her examiner’s allowance rate is right from the start of the prosecution in order to plan and advise clients accordingly.
Much like the Juristat Top 100, this list is unique in that it considers both volume and performance. Our ranking is based on four key metrics, as measured from January 1, 2011 to December 31, 2015. These metrics are:
In the three-plus years since Alice was decided, we’ve seen the case take quite a toll on the viability of patent applications in the software, e-commerce, and business methods art units. In these technologies, allowance rates have plunged, abandonments have skyrocketed, and a general sense of pessimism has pervaded the industry. However, the effects of Alice, while significant for certain tech sectors, are far from uniform across the USPTO. In fact, there are some art units at the USPTO where Alice rejections pose very little problems for applicants, while in others, they are an application-killer.
Below are the top 10 art units with the highest and lowest allowance rates for applications that receive Alice rejections. An art unit’s allowance rate is the percentage of applications that are allowed out of the total number of applications that are disposed in that art unit. Hover over the graphs for details.
As precursors to the more wide-ranging Alice decision and the USPTO guidance that came after it, the impacts of the Mayo and Myriad decisions have gotten somewhat lost in the scuffle of all of the attention paid to § 101 rejections in the software and business methods technology sectors. While Mayo and Myriad were limited to patent applications touching on laws of nature, these two cases established the framework that the Supreme Court and the USPTO examiner corps would eventually apply to all applications touching on any type of judicial exception. Just like Alice in the software and business methods tech sector, Mayo/Myriad rejections have also made patent prosecution for biotech, pharma, and life science applications much more difficult.
Ever since Mayo was decided in 2012, the percentage of § 101 rejections on biotech, pharma, and life sciences applications has been on the rise, from 4.9% before Mayo to 8.6% after Myriad to 15.7% after Alice. A total of about 37% of all § 101 rejections in Technology Center 1600, which handles the bulk of these types of applications, now cite either Mayo or Myriad. This is bad news for applicants, since only 45.2% of applications with either a Mayo or Myriad rejection ever receive an allowance. However, there are a few firms out there who manage to do remarkably well with Mayo/Myriad rejections despite their generally negative effects on allowance rates.