Archive for April, 2014

F2014 Halfway Numbers

April 28, 2014

The following is a comparison of the PTO’s numbers from March 2014 with December 2013 (at my last numbers update).  Time to refer again to the PTO’s Data Visualization Center to see how things are going.

First Action Pendency – 18.6 Months

In December, first action pendency was 17.4 months.  This is the first rise we’ve seen in this number in quite some time.  The PTO was doing a nice job with first action pendency, but the number is now the highest it has been since last April.

“Traditional” Total Pendency – 27.8 Months

Traditional pendency is down from 28.6 months in December and over 35 months at the beginning of FY2011.  This number continues to drop, as the PTO shows progress here.

Application Pendency with RCEs – 37.8 Months

This number is up slightly from 37.6 months in December, but is down from 39.4 months at the end of FY2012.  Overall, the number is not up significantly, but also reverses the trend of decreasing pendency numbers.

Applications Awaiting First Office Action – 616,021

This number is up from 595,361 in December and 584,998 in September.  The backlog is at the highest level since August 2012, a 3.5% increase during the quarter and a 5.3% increase during the fiscal year.

Patent Application Allowance Rate – 51.3%, 70.0%

The first number counts RCE filings as abandonments, while the second number does not, but counts them as continuing prosecution.  These numbers are up slightly from 51.0% and 69.6%, respectively, in December.  The 18.5+% difference between the two numbers is, however, troubling.  It seems that RCEs are still being forced; especially considering the next number.

RCE Backlog – 74,310

This number is down from 79,120 in December, a 6% reduction.  Continuing progress in this matter is necessary to increase prosecution efficiency.  The After Final Pilot Program is supposed to prevent examiners from churning RCE filings.

Number of Patent Examiners – 8,041

This number is up from 8,013 in December.  In November, the PTO passed 8,000 examiners for the first time ever.  Although improving examiner efficiency is a solid goal, as long as filings continue to increase, so should the number of examiners.

Pendency from Application Filing to Board Decision – 86.1 Months

The crisis at the Board continues, although pendency is inching slowing downward from 87.3 months in December.  It is now at its lowest level since FY2012.   Pendencies of over 7  years from filing to Board decision are not acceptable.  New technologies become obsolete prior to getting a patent or decision by the Board.  The PTO hired a number of additional patent judges and attorneys to deal with this issue, but the sharp increase in the number of appeals filed has made tackling this an impossibility.   The Board now has significantly greater responsibilities with the beginning of the new post-grant review proceedings.

The Patent Trial and Appeal Board has not updated is typical production report since November.  Thus, the information below is a bit different that I’ve reported in the past.  It now comes from a PTAB Dashboard.

At the end of March, the Board had 25,664 pending appeals from ex parte application prosecution, up from 25,151 (2%) in November.  14,165 of the appeals have been pending for at least 14 months.

Due to the failure to update the data, it is difficult to know how the PTAB is doing on other types of appeals or cases or how many are being filed.


The PTO is doing a good job on the front end.  There appears to be some stagnation on the progress the PTO was previously making during examination.  Other problems begin once an application reaches a final office action.  RCE filings seem to be dropping somewhat, but the rate is still pretty high.  Many or most of these are the result of examiners forcing them on applicants.  This is very inefficient and increases application cost and pendency significantly.

The PTO has still not come up with a plan to deal with its crisis at the Board.  By not updating performance data, it appears that the PTO is trying to hide this information from applications.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame.  The Board’s added workload with numerous types of proceedings for it to decide has made things more congested.  Presumably, if the proceedings work well, there may be many more filed in the coming months and years.  This could make things even worse.  Appeals must be decided more quickly.


Patent Pending

April 21, 2014

I’m sure you’ve seen the words “patent pending” or “patent applied for” on a product or package before.  What exactly do these phrases mean?  What legal rights are attached to them?


Patentees are generally only entitled to infringement damages once an infringer has notice of the infringement.  The patent marking statute permits patentees to provide notice to the public by marking a product or product package that is covered by a patent with the patent number.  This is why it is strongly recommended that patent owners mark their patented products or product packages with the number.

Patent applicants will often mark products or product packages with the phrase “patent pending” or “patent applied for”.  These phrases do not have a legal meaning under US patent law, as they do not indicate that the product is covered by a patent or that someone who copies the product is guilty of patent infringement.  The purpose of these phrases is to inform the public that the product is the subject of a patent application that has been filed and is pending in the Patent Office.  Although in general a patent application cannot be infringed, the public is informed that a patent may issue in the future that covers that product.  In this way, the phrases provide some deterrent effect against infringement.  Even if a patent does not issue for the product, it is believed that the patent applicant may deter some parties from copying the product while a patent application is pending, thus providing the applicant with a competitive advantage.

Patent marking is also used as a marketing technique.  Many consumers believe that a patented product is a cutting edge product–it must be better or an improvement over previous products.  “Patent pending” or “patent applied for” may provide this marketing advantage as well.

Supreme Court to Review Claim Construction

April 2, 2014

The Supreme Court has agreed to hear another patent case, Teva Pharms. USA, Inc. v. Sandoz, Inc.  In this case, the Court will determine whether factual findings underpinning claim construction rulings should be reviewed de novo or only for clear error.

You will recall that the Federal Circuit recently considered this issue in Lightning Ballast v. Phillips and decided by a vote of 6-4 to continue its current practice of de novo review.  In that case, Judge O’Malley issued a scathing dissent of the majority opinion by Judge Newman where she called out judges for changing their long held positions.

In July, the Federal Circuit issued an extensive opinion in Teva v. Sandoz that included a number of rulings on various issues in the case.  The one that Teva decided to pursue to the Supreme Court was the ruling on the definiteness of various claims at issue.  A number of claims were held to be invalid as being indefinite, while another set of claims was held to be sufficiently definite to withstand an invalidity charge on that basis.  To determine whether the claims met the legal standard of definiteness, the Federal Circuit had to construe a number of claim terms.  Following its precedent, it did so de novo.

The Supreme Court will now determine whether the de novo standard is correct.

This case adds yet another to the Supreme Court’s growing list of patent cases that it has been reviewing in recent years.  The Court’s argument calendar for the current term is full, so this case will be argued during the October 2014 term, with a decision expected by early 2015.