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USPTO: The Toughest Place to Get a Patent?

By Peter Zura

Earlier, the 271 Blog reported on USPTO Commissioner Dudas' testimony before Congress (link), where he commented that the allowance rate for applications has dropped to 44%. As recently as November 2007, the USPTO indicated that allowance rates were at 51% (link).

Of course, this comment sent people scrambling to find out what's going on. The good people at Intellectual Asset Management Magazine (IAM), and particulary Joff Wild, decided to dig deeper and contacted Dudas. Here's what Dudas said:

At the USPTO, our objective measurements tell us that patents today are of a higher quality than they were 10, or even 5 years ago. In 2006 and 2007, the USPTO had its lowest examination error rates in the last quarter century--which is mainly due to adding significant new quality measures in recent years. By every objective measurement ?including end-of-process and in-process reviews, certification and recertification of examiners, and percentage of affirmances at the Board of Patent Appeals and Interferences ? we?ve determined the quality of patents granted has been improving, and we expect this to continue because of current and future quality initiatives. A major concern we have at the USPTO--and it is a concern I have heard from many IP offices around the world--is the room for improvement in applications coming through our door. There has been a dramatic decrease in the allowance rate, or the percentage of patent applications that ultimately get approved. Our allowance rate has dropped from 72 percent in 2000, to 44 percent in the first quarter this year. This is due partly to our quality initiatives, but much is due to the lack of quality in many applications we receive.

In other words, the PTO is retroactively accusing applicants, who filed between 2003-05, of producing "low quality" applications that forced the rejections by the PTO. Dudas is partly right. Few would deny that certain practices used 5-6 years ago would be ineffective today. If your prosecution "ammo chest" hasn't changed stock since 1996, you shouldn't be surprised if dramatically fewer applications are being allowed.

But, again, the concern here is that the PTO is implicitly equating patent "quality" with the number of rejections issued by the examining corps. This, in and of itself, is not a tenable policy. At 44%, the USPTO acceptance rate is now well below the last annual rate reported by both the EPO (56% in 2006) and the JPO (48.5% in 2006).

In the upcoming issue of IAM, the magazine will look at the controversial subject of "patent quality:" what does it mean, how can it be identified, is it possible to measure? Contibutors to the article will include Jon Dudas, Alison Brimelow, president of the EPO; Judge Pauline Newman, of the US Federal Circuit; Masanobu Katoh, head of IP at Fujitsu; Horacio Gutierrez, VP of licensing at Microsoft; and Sherry Knowles, head of IP at GlaxoSmithKline. The article is scheduled to be published at the end of March.

See IAM Blog: "Patent quality and the plummeting USPTO approval rate" (link).

Full post as published by Two-Seventy-One Patent Blog on March 06, 2008 (boomark / email).