1. US Patent Application Drafting Center Presentation 05062009.ppt Patent Stats That Can Help Your Practice Electronic & Computer Law Committee Manny Schecter schecter@us.ibm.com Brad Forrest BForrest@slwip.com

2. 2 Objectives  Work with the PTO to improve overall patent quality  Obtain data that can be analyzed to help improve drafting, examination, and prosecution of applications  Understand how the bar can help educate themselves to write and prosecute PTO friendly high quality applications

3. 3 Special Thanks to...  Andy Faile  John Love  John Owens ... many more too numerous to mention

4. 4 History  Reviewed concept with AIPLA BOD –Worked with other committees to identify hundreds of ideas for potentially helpful data –Culled and prioritized list and presented brief request to PTO  Received data from PTO –Snapshot of number of office actions per disposal and of allowances and re-openings upon pre-appeal conference –Above sorted by tech center and workgroup  Circulated data obtained –Follow-up with PTO –Received additional data

5. 5 Summary of 2009 Data Received  # claims per app  Apps filed sorted by type of app and applicant status (large v. small entity)  # of inventors per app  IDS submission rate  Pre-grant publication rate  Appeal conference results  Appeal results  Maintenance fee expiration and patents in force  Examiner attrition. and more!

6. 6 Sample from PTO

7. 7

8. 8 USPTO TECH CENTERS  1600 Biotechnology and Organic Chemistry  1700 Chemical and Materials Engineering  2100 Computer Architecture, Software, and Information Security  2600 Communications  2800 Semiconductors, Electrical and Optical Systems and Components  2900 Designs  3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security and License & Review  3700 Mechanical Engineering, Manufacturing, Products

9. 9 US Utility Patents & Patent Applications The Basics

10. 10 Original Utility Applications Portion Filed by Small Entity

11. 11 Filing % by Small Entity Original Utility Applications Portion Filed by Small Entity by Tech Center

12. 12 Note: Sole Inventor ≠ Independent Inventor Total Patent Applications Portion Filed by Sole Inventors

13. 13 Note: By application filing date. % With At Least One IDS Total Patent Applications Portion With At Least One IDS Crouch: Highest rate in TC 1600 (89%) Lowest rate in TC 3600 (65%)

14. 14 Total Utility Patent Applications Portion Filed with <3/20 Claims

15. 15 Utility Application Filings (Original & CPA & RCE) Total Utility Patent Applications By Filing Entity

16. 16 Original Utility Application Filings Original Utility Patent Applications By Filing Entity

17. 17 CPA & RCE Utility Application Filings CPA & RCE Utility Patent Applications By Filing Entity

18. 18 Ratio of Original Utility Applications to CPA & RCE Utility Applications Utility Patent Applications Original v. CPA & RCE

19. 19 Utility Patent Applications Original v. CPA & RCE by Tech Center

20. 20 Appeals The Basics

21. 21 % Outcome Pre-Appeal Conference By Outcome

22. 22 % Outcome 2006-2007 Pre-Appeal Conference Snapshot Outcome by Tech Center

23. 23 Pre-Appeal Conferences That Proceeded to BPAI By Tech Center

24. 24 % Defective Appeal Briefs Portion Defective Most common defect: independent claims insufficiently mapped to spec

25. 25 Appeals Briefs Portion Defective by Tech Center

26. 26 Appeal Conference By Outcome

27. 27 Appeal Conference Tech Center 1600 by Outcome

28. 28 Appeal Conference Tech Center 1700 by Outcome

29. 29 Appeal Conference Tech Center 2100 by Outcome

30. 30 Appeal Conference Tech Center 2400 by Outcome

31. 31 Appeal Conference Tech Center 2600 by Outcome

32. 32 Appeal Conference Tech Center 2800 by Outcome

33. 33 Appeal Conference Tech Center 3600 by Outcome

34. 34 Appeal Conference Tech Center 3700 by Outcome

35. 35 Raw Number Board Decisions Issued Total Volume

36. 36 Board Decisions Issued Volume by Tech Center

37. 37 Board Decisions By Outcome

38. 38 Board Decisions Portion Affirmed or AIP by Tech Center

39. 39 All Reexamination Requests Volume by Type

40. 40 Ex Parte Reexam Requests Volume by Initiating Party

41. 41 % Outcomes Reexamination Decisions Portion With All Claims Canceled Note: 2008 data represents 32 inter partes outcomes v. 529 ex parte outcomes (2007 5 v. 426)

42. 42  At what rate applicants opt out of application publications? ~ 7% Gradually declining from 10.6% in June Highest for class 705 at ~20-21%  How many office actions are issued per application disposal? ~ 3 office actions per disposal Highest for TC 2100: ~3.3 Lowest for TC 2800: ~2.7  At what rate patents are abandoned for failure to pay maintenance fee? 1 st …12% 2 nd …20% 3 rd …25% Did You Ever Wonder…