What is the utility patent probability of success?

It’s no surprise that utility patents are substantially harder to obtain than design patents. What might be eye opening is that the probability of obtaining a utility patent is a function of time. As more time passes, the probability of getting a utility patent increases.

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. Only 11.4% of utility patent applications received an allowance without any rejections, also known as a “first action allowance.” If you are trying to predict the probability of success of your utility patent application, it would be unrealistic to expect such an allowance without any rejections.

Over 38% of all filed utility applications received a second Office Action rejection while 36.1% received an allowance after responding to the first Office Action. 14.5% of utility patent applications were abandoned without responding to the first Office Action. A helpful way to think of your probability success would be to assume:

  1. roughly 86% chance of getting a first rejection; and
  2. a little over 50% chance of getting a second rejection.

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 non-final Office Action. A small percentage of filings were abandoned before getting docketed. So it’s fair to say that of all utility nonprovisional applications that were not initially abandoned, 9 out of 10 will receive at least one rejection.

This high percentage of non-final Office Action at almost 90% seems 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 a 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).

How many Office Actions should you expect to get a utility patent allowed?

Most patent examiners will reject a utility patent application three times before allowing it. In other words, you can expect a US nonprovisional patent application to receive three Office Actions before receiving an allowance.

Does the probability of getting a utility patent improve 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.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com