Thank you to Lisa for inviting me to join her blog, and for the very kind introduction. For my first post, I’d like to briefly point to a recent update of
a prior paper published by Christopher A. Cotropia, Cecil D. Quillen, Jr., and Ogden H. Webster. The paper is called
Patent Applications and the Performance of the U.S. Patent and Trademark Office. The link includes the new FY 2014 update, as well as the prior version through FY 2012.
The paper examines patent applications, abandonments, and what the authors call continuing applications. Continuing applications include continuations,
continuations-in-part, and requests for continued examination. In other words, these are applications based on prior filings. But here’s the interesting
thing: the PTO calls these continuing applications new applications in reports of applications of each year. And so when the PTO and news outlets report a growing number of applications each
year, what they are really reporting are the number of new and continuing applications.
The study finds that the number of initial applications has remained mostly steady for the past several years, and that the growth in nominal patent
applications comes mostly from continuing applications. Furthermore, the data shows that 91% of the abandoned applications are renewed as continuing
applications.
From the conclusion: “An increasing proportion of the workload of the USPTO is rework imposed on it by applicants who have avoided final decisions as to
the patentability of their applications by refiling them to take another turn at examination by the USPTO.” I suspect that even the authors would agree
that this is a bit of an overstatement. Virtually every patent prosecutor I’ve spoken with has complained to me about examiners ending cases prematurely,
essentially forcing them to file a request for continued examination just to have amended claims or new arguments heard.
The truth, I suspect, is somewhere in the middle. There are applicants that keep pushing applications beyond their merits, and there are examiners that
shut down applications that should remain open. I would love to see the objective, repeatable study that measures this, but I suspect it would be difficult
to achieve.
Regardless of who one views at fault, though, this study reveals that the way “applications” and “abandonments” are tallied at the PTO is just broken.
Reports on nominal new applications are, quite simply, worthless as a measure of the amount of activity actually happening at the PTO. Some would argue
that it is far less benign than that, because the incentive system that leads to closing and reopening of applications also leads to more work,
which then leads to attention spent on things other than resolving patent applications.
My proposal for reform would be twofold. The first – and more simple technically if not politically – is that the PTO should report the true numbers:
initial filings, continuations, requests for continued examination, etc. This data is collected, and there is no reason why “applications” needs to lump
them all into one. Abandonments should be reported only if not reopened so that grant rates can be calculated.
Second, and this would be a bigger change, our system of continuations should be adjusted. One application should live or die on its own, with no request
for continued examination. At some point the examiner has to say “this is done” and let the appeals begin. At the same time, continuations can and should
be allowed, but only for claims not present in the original application; this would solve the concern that inventors may not know the full scope of their
invention at the time of filing while also not including continuations among new applications (or repeats of prior applications).
I’m sure others may have suggested similar reforms, and the beauty of a blog post is I don’t need to check and see. I think this study tends to justify the
suggestions made by me and anyone else.
