How might your assigned Patent Examiner determine the number of Office Actions?
It is no secret that certain patent examiners within particular USPTO Technology Centers are tougher. Hopefully, your patent application will not be assigned to one of these examiners. When applying for utility patents that relate to technologies that involve software, for example, expect multiple rejections known as Office Actions.
Dealing with a tough patent examiner? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
How many Office Actions should you expect in a utility patent application?
In this prior post, we explained how it can take up to three Office Actions to get a utility patent application allowed. Of course, there is no guarantee that any particular patent application will ultimately be approved. Thousands of rejected patent applications go abandoned every year.
One unscientific rule of thumb appears to apply consistently. That is, the broader coverage you seek, the more Office Actions you should expect.
For example, if you purposely want independent claims that say just enough to block competitors, you will likely encounter multiple Office Actions. The examiner may want you to add a particular limitation to get around the prior art, but doing so might lead to easier ways for competitors to design around your patent. So you might end up fighting for the allowance of broader claims that omit the limitations that could have more easily overcome the prior art rejections.
How do you look up statistics on a patent examiner?
To do some due diligence on a particular examiner, you can check out IronCrow. You can also search for a particular USPTO examiner on PatentBots.
Do not feel discouraged when you receive multiple Office Actions, particularly from a more difficult examiner or challenging technology center.
What is a helpful patent examiner metric to consider?
Since not every patent application is made publicly available, data on patent examiner rejections may be incomplete. One particular metric accounts for the average number of Office Actions per granted patent. This is known as the Office Actin per Grant ratio (OGR).
The OGR number for an examiner can give you a rough idea of how many Office Actions to expect. Unfortunately, the OGR data does not account for the number of Office Actions that had been issued in patent applications that never reached an allowance.
Suppose, for example, that an examiner for your patent app had an OGR of 2.5. You might expect to receive two to three Office Actions. But, what if that examiner issued way more Office Actions in patent applications that were never allowed? What if such abandoned patent applications by that examiner had an average of five Office Actions?
Has your patent attorney spoken to the examiner?
Talking to an examiner can lead to substantial progress in ways that are difficult to accomplish with written communications. Perhaps the examiner is not seeing certain nuances in the claim language. Maybe they misunderstood a prior art reference or interpreted a claim too broadly.
In an examiner interview, your patent attorney gets to ask questions that would not be possible in a written response. Armed with new information from talking to the examiner, a more effective Office Action response can be drafted.
When should you consider an appeal?
No one likes receiving multiple Office Actions. So when does it make sense to appeal? This option needs to be carefully evaluated with your patent attorney, but the number of Office Actions should not be the only factor.
Have new prior art references been cited? If so, have you responded to those prior art rejections with claim amendments and arguments? Keep in mind that an appeal will be limited to the evidence of record. You do not want to enter into an appeal with certain amendments or arguments not of record.
Has your patent attorney already spoken to the examiner? Perhaps an examiner interview should be conducted before appealing the rejections.
To gauge your chances of success in a patent application appeal, check out USPTO data. In recent years, the chances of a successful appeal of a Section 101 ineligible subject matter rejection have been around 10% plus or minus a couple of percentage points.
