What are your chances of getting a utility patent?
Utility patents are much harder to obtain than design patents. That’s no surprise. What might not be obvious is that the probability of obtaining a utility patent is a function of time – as more time passes, the chances of getting a utility patent increase.
Based on this Yale statistical analysis of utility patent applications filed from 1996 to 2005, over 86% of utility patent applications received a first rejection and over 38% of utility applications received a second Office Action rejection. So, it would be unwise to predict your future success on the rare possibility of a “first action allowance” where you don’t have to respond to any refusals.
When it comes to utility patents, perhaps a smarter way to gauge the probability of success is by evaluating your prospects after receiving the first refusal, the “non-final Office Action.”
What are chances of your utility patent application receiving a first rejection?
Of all utility filings between 1996 and 2005, over 86% of utility applications received a first rejection called a non-final Office Action. Only 11.4% of utility applications were allowed without any rejections, a rare occurrence known as “first action allowance.” A small percentage of filings were abandoned before getting docketed. So, it’s fair to say that 9 out of 10 utility nonprovisional applications will receive at least one rejection.
I find the high percentage of non-final Office Action at almost 90% to be consistent with our firm’s experience in utility patents. The prevalent use of obviousness rejections by examiners makes it difficult to predict the allowability of claims even when a prior art search was done before filing.
What are chances of overcoming a first rejection?
The Yale study provided some helpful analysis of the results of responding to a first Office Action rejection. What was quite interesting was that approximately 36% of all cases received an allowance after responding to a first Office Action. Over 38% of all cases received a second Office Action. That means that applicants had an almost 50-50 shot of getting an allowance after responding to the first Office Action. The actual percentage of allowance was slightly lower than 50% since a couple more percentage points of cases received a second Office Action.
What are chances of your utility patent application receiving a second rejection?
After filing a response to the first rejection, utility applicants had a little over 50% chance of getting a second rejection called a Final Office Action. Statistics get tricky to analyze when responding to a Final Office Action due to the nature of patent examination. Examiners are not as open to amendments and arguments in response to final actions, which leads to the prevalent use of RCE’s (Request for Continued Examination).
Probability of getting a utility patent improves over time
According to this helpful grant rate timeline by Patent Bots, the probability of allowance increases over time as measured from the date of the first Office Action. For example, your chances of success at one year from the date of the first Office Action is less than half at around 45%. At three years from the first refusal date, your chances of success are at approximately 67%. Any increase in the grant rate appears to plateau after three years from the first Office Action date.
Each patent examiner is different, and success rates will vary widely depending upon both the particular examiner and technology / USPTO art unit. Nonetheless, it is helpful to know that utility patent approval averages increase from less than 1/2 at to 2/3 as you go from 1 to 3 years from the first Office Action date.
Of course, all this is assuming that the applicant endures potentially multiple Office Action rejections without abandonment. As expected, more applications get abandoned as time goes on. One practical takeaway from these statistics is that those who hang in there longer improve their chances of getting a utility patent.
What is the probability of getting a design patent?
The chances of getting a design patent are significantly higher at approximately 84.5% for the 2020 fiscal year. If an Office Action is issued in a design application, chances are that the objections will relate to an indefinite issue with the design drawings (Section 112) which can be corrected in most cases by replacing or deleting certain figures.