Continuing Patent Applications and Performance of the U.S. Patent Office
The Federal Circuit Bar Journal, Vol. 11, No. 1, pp. 1-21, August 2001
22 Pages Posted: 9 Jul 2009
Date Written: August 1, 2001
Abstract
The United States is unique in permitting patent applicants to avoid final decisions as to the patentability of their applications by refiling their applications as continuation and continuation in part applications claiming the benefit of the filing date of a prior application and restarting the examination process all over again. Data provided by the USPTO for its fiscal years 1993 - 1998 revealed that 28.4% of the utility, plant, and reissue (UPR) applications filed in those years were not new or original applications, but were continuing applications claiming the benefit of the filing dates of previously filed applications. Analysis of the data for continuing applications for the USPTO’s fiscal years 1993 - 1998 in conjunction with the USPTO Annual Report data for the same years shows that the number of UPR applications allowed in fiscal years 1995-1998 was 95% of the number of original UPR applications filed in fiscal years 1993 - 1996 (86% of the number of original plus divisional applications). Allowance Percentages for the European and Japanese Patent Offices were calculated on the same basis to be 68% and 65%, respectively. A reported study of German patent applications claiming a 1977 priority date found that only 41.7% of the 1977 German applications became patents. The Grant Rate (allowances divided by total disposals, i.e., the sum of allowances and abandonments) for the USPTO for its fiscal years 1993 - 1998, corrected for continuing applications, ranged from 87% to 97%, depending on the extent to which prosecution of abandoned applications was continued in refiled applications. Grant Rates for the European and Japanese Patent Offices for 1995 - 1999 reported on the Trilateral Website averaged 67% and 64%, respectively. Grant Rates for the USPTO reported on the Trilateral Website are not corrected for continuing applications and averaged 68% for those years. Policy questions resulting from the lack of rigor by the USPTO in its examination of U.S. patent applications are discussed.
Keywords: Patents, Continuing Patent Applications, USPTO Performance
JEL Classification: K29, K39
Suggested Citation: Suggested Citation