Recently, the United States Patent and Trademark Office (USPTO) announced an initiative to streamline patent prosecution by adding the ability for patent applicants to work with a panel of examiners after a final denial before submitting an appeal or request for continued examination (RCE) have to insert. . Any new tool that enables patent applicants to come to a “yes” more quickly and not have to wait unnecessarily for years for additional considerations is welcome. However, new tools such as the Post-Prosecution Pilot Program will not help applicants who are forced to deal with examiners who simply refuse to grant patents. Unfortunately, there are bags of these unruly examiners at the patent office.
A few days ago I wrote about the exceptionally low compensation rates for Art Units 3689 and 3622. I have received feedback suggesting that the compensation rates I reported were 7.1% or witnesses in these Art Units, at least since the Supreme Court ruling in Alice versus CLS Bank. I also received a tip in which I was advised to take a closer look at Art Unit 3683, as the grant rate of 64.6% I have given is certainly not correct, at least not for 2016.
On closer inspection, things are much, much worse than I reported before. The problem is also much more common. With LexisNexis Patent Advisor® I looked at the E-Commerce Art Units and this time focused on what has only happened in the last 18 months. The concentration on this segment of the postAlice Prosecutor’s picture of the allowance is absolutely gruesome. [1]
The following graphic shows the number of patents granted, the number of patent applications abandoned and the corresponding approval rate for e-commerce art units at the patent office in 2015 and so far in 2016.
E-Commerce Art Units at the USPTO. Grant rates 2015-2016.
Obviously things are not getting better in the e-commerce art units of the patent office, but worse.
As you can see, in 2015 only 12 patents were granted by Art Unit 3689 while 365 applications were filed, which equates to an approval rate of 3.2%. In 2016, only 3 patents were granted by Art Unit 3689 so far, while 232 patent applications were filed, which corresponds to an approval rate of 1.3%. Of the three granted patents, one was granted because the Patent Trial and Appeal Board lifted the examiner’s final dismissal and ordered the patent to be granted. See Ex parte Jacob A. Shipon. The PTAB found that the examiner was wrong about rejections 101, 103 and 112, i.e. fairly across the board.
In my previous article, I compared Art Unit 3689 to Art Unit 3628, as both Art Units handle cases involving patent applications relating to business transactions, cost / price and reservations. While the most recent grant rate for Art Unit 3628 is very low, it remains above five times the grant rate for Art Unit 3689, which is extremely difficult to reconcile as the same type of applications are being examined. As the graphic below shows, Art Unit 3628 granted 60 patents in 2015, while 353 applications were abandoned, which corresponds to an approval rate of 14.5%. In 2016, Art Unit 3628 granted 18 patents to date, while 192 patent applications were filed, which corresponds to an approval rate of 8.5%.
While we see a notable difference in admission rates between similarly located arts departments examining the same type of patent applications, what is most alarming is that admission rates in almost all of these arts departments fell quite dramatically in 2016 compared to 2015.
While we can surmise (and perhaps contradict) why aid rates dropped dramatically in 2016, everyone should be able to agree that the 1.3% aid rate in 2016 is totally unacceptable for art department 3689. An exemption of 1.3% requires an investigation by the Patent Office or the Inspector General of the Ministry of Commerce.
Obviously, the stories about patent examiners who just don’t issue patents are very real.
graduation
Given the devastation of the patent community by certain examiners and the indifference of the patent office, it is imperative that patent applicants and their agents seek every possible advantage. When patent examiners do not grant patents in certain Art Units, such as Art Unit 3689, applicants must do everything possible to stay away from those Art Units. While this is not always possible, creative design techniques can take you from a type of unit with an utter disdain for patents to a type of unit where you at least have a chance. Until the patent office decides to solve the problem of recalcitrant patent examiners like LexisNexis PathWays. to solveTMwhich enable the applicant to identify which art units a patent application is likely to be assigned to prior to filing.
Writing patent applications so you don’t get dragged into the black hole of Art Unit 3689 can help, but let’s face it, the stats for all ecommerce art units are pathetic and are going to be even two years behind-Alice. To call this depressing is an understatement. How is it possible that a patent examiner who is to be hired to grant patents can actually keep his job if he refuses to grant patents?
TO UPDATE:
You can find follow-up articles on this topic at:
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[1] My previous article reported on the compensation rates that are based on all compensation since 2000. Focus on one point Alice The timeframe for all of 2015 and 2016 to date shows vastly different numbers that show the extent of the problem that e-commerce applicants face.
Gene Quinn is the Patent Attorney and Editor and President and CEO of IPWatchdog, Inc. Gene founded IPWatchdog.com in 1999. Gene is also Senior Lecturer on the PLI Patent Bar Review Course and Of Counsel with the law firm Berenato & White. GMBH. Gene’s specialty is strategic patent advice, drafting patent applications and patent prosecution. He advises attorneys who are faced with specific procedural issues at the Patent Office, advises investors and executives on changes in patent law and pending litigation, and works with start-ups in the United States and around the world, primarily focusing on software and computer-related innovations . Gene is admitted to the New Hampshire bar, is a registered patent attorney, and is also admitted to the US Federal Circuit Court of Appeals. CLICK HERE to message Gene.
