Two acclaimed professors recently turned the tables on the USPTO by examining how the agency’s patent examiners examine inventors’ patent applications—all of them from January 2001 thru April 2006. And their findings are insightful and surprising… and can be used to your advantage.
Among the highlights released in a draft copy of “Examining Patent Examinations,” from Stanford Law School’s Mark A. Lemley and Columbia University School of Public Health’s Bhaven Sampat:
• Patent applicants should plan on being rejected at first. The data indicates that USPTO examiners, in their “first office action,” grant patents without argument or negotiation to a mere 13.5% of applicants. In contrast, roughly 85% of the first office actions result in “non final rejections.”
• Patent applicants should prepare to be persistent. The professors find that many applicants are able to sway USPTO examiners after that first office action. In fact, more than half of those applicants who receive what’s called a “final rejection”—which you might easily think is the end of the line for your application, but in this case “final” isn’t really final—ultimately earn their patent.
• Patent applicants should be open to amending. Lemley and Sampat calculated that amending an application after a final rejection more than doubles the chances it will eventually be approved. Specifically, 66.1% of the applications that received a final rejection got approved after amendment, whereas only 29% that received a final rejection later got approved without amendment.
• Patent applicants should meet their USPTO examiner in person. Applicants can seek an “interview” with their patent examiner to discuss the particulars of their idea and application, and study data indicates that interviewing helps: 62.6% who interviewed after receiving a final rejection eventually received patents, whereas only 50.9% who didn’t interview after a final rejection eventually received patents—again, a big difference.
• Patent applicants should be aware of “children.” This is a loose term for continuations, continuations-in-part, and divisionals—patent law terms for different techniques for splitting your patent into pieces so you can then pursue multiple patents and/or delaying USPTO decisions so you’ll have more time to prepare your case or modify your design. Children get complicated and we’re not going to flood you with details here—just keep in mind that the professors find 14.4% of patent applications have children, and you might want to ask your patent attorney if you too could use them to your advantage.
Click here for more study information.
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