Saturday, November 29, 2008

Australian sniper?

A website in Australia [Searchable Networked Intellectual Property Electronic Resource . aka SNIPER] keeps track of publications concerning US patent law, and includes the following entry for the month September 2004:

SNIPER number: 2004/01323
Author: Ebert, Lawrence B.
Title: How high are the grant rates at the USPTO?
IN: Journal of the Patent and Trademark Office Society Vol. 86 No. 7, July 2004, pp. 568-576
Abstract: Proposed reforms -- examination quality -- USPTO has high grant rate compared to
other industrialised countries -- statistics from papers appearing in Federal Circuit Bar Journal --
QW1 -- QW11 -- analysis of USPTO data -- fundamental assumption of QW1/QW11
Subject: United States Patent and Trademark Office
Subject: Patent systems - reform - United States
Subject: Patent granting - United States

In 2008, in a law review titled The Non-Obvious Problem: How the Indeterminate Nonobviousness Standard Produces Excessive Patent Grants [42 U.C. Davis L. Rev. 57 (Nov. 2008)], Gregory Mandel writes in footnote 206 :

n206. Many patents that are denied are never published. Inventors presumably have a rough awareness of patent application success rates overall (though these rates vary widely depending on whose statistics one chooses), but not an awareness of the reasons for patent denials or of how many NO- [DELTA] applications are denied. See also Lawrence B. Ebert, Patent Grant Rates at the United States Patent and Trademark Office, 4 Chi.-Kent J. Intell. Prop. 108, 110-15 (2004) (critiquing varying reports purporting to calculate patent grant rates). Compare Robert A. Clarke, U.S. Continuity Law and its Impact on the Comparative Patenting Rates of the US, Japan and the European Patent Office, 85 J. Pat. & Trademark Off. Soc'y 335 (2003) (calculating 75% patent grant rate), with Cecil D. Quillen & Ogden D. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1 (2001) (postulating patent grant rate as high as 97% when including continuing applications), and Press Release, U.S. Patent and Trademark Office, Fiscal Year 2006: A Record-Breaking Year for the USPTO (Dec. 22, 2006), available at (reporting patent allowance rate of 54% for 2006).

In the 2001 paper, Quillen and Webster were trying to correct "raw" grant rate numbers (such as the 54% number) for the effect of continuation applications, and Clarke criticized the nature of their correction, for issues of double-counting.

Although not mentioned by Mandel in footnote 206, Quillen and Webster wrote TWO further papers in the Fed. Cir. B. J. Also, in addition to the 2004 JPTOS paper not cited by Mandel, note an additional paper in the Dec. 2006 issue of JPTOS responding to third Quillen/Webster paper. Mandel's discussion in footnote 206 of the 2008 paper is not thorough and is at least two years out of date.

Footnote 206 related to the text:

This cycle will produce applications on successively more and more obvious advances. As other inventors see more patents on NO- [DELTA] advances granted, and are generally unaware of the volume of NO- [DELTA] applications that are denied, n206 there will be greater incentives for inventors to file patent applications on even more obvious advances (for example, on NO-2 [DELTA] advances). These effects, of course, will cycle. Indeterminacy will lead both to a greater percentage of applications on the set of advances a given quantum below the nonobviousness threshold, and to more applications on the sets of advances that are even more obvious.

One observes that the general decrease in allowance rate (to a level now below 50%) might serve as a disincentive to those filing applications with claims at the boundary of obviousness.


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