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Archive for the ‘Empirical Analyses’ Category

Defective Oaths Plague Patent Reissue Filings

Posted On: Nov. 24, 2010   By: Scott A. McKeown

Upward of 70% of Patent Reissue Filings Include a Defective Oath

oaths

(click to enlarge)

As most practitioners are well aware, defective oaths in patent reissue are the rule, not the exception. As the chart above demonstrates for patent reissues filed in 2005, such oath problems lead to longer patent reissue pendencies.

With narrowing patent reissue filings constituting the bulk of patent reissue applications at the USPTO, it is not surprising that the impact of defective oaths are more pronounced in this sub-category. For narrowing reissue applications filed in 2005, applications without any oath problems were completed 1.14 years faster (1.74 vs 2.88 years) than those with oath problems.

Surely, both the USPTO and stakeholders share the blame equally for these recurring problems. As demonstrated just yesterday, these issues are rarely resolved prior to appeal. Read the rest of this entry »

Only 50% of Broadening Patent Reissue Applications Exit the USPTO Within 5 Years

Posted On: Oct. 21, 2010   By: Scott A. McKeown
Recapture and Formality Issues Bog Down Important Cases

reissue

As shown in the charts above (click to enlarge images), we analyzed the 745 broadening patent reissues filed since 2005. A surprising 200 applications of the 745 were ultimately abandoned. While many of these applications may have been seeking to secure a claim scope that was precluded by prior art, it may also be that a significant number fell victim to the frustrations of reissue practice. The lowermost chart above factors out abandonments as a true conclusion, demonstrating that only 20% of broadened reissues are concluded within 3 years of filing. When compared to the special dispatch accorded to patent reexamination, these important applications clearly fare a great deal worse.

The data for narrowing reissues shows slightly better  timeliness, perhaps due to the absence of recapture doctrine concerns. Data for narrowing reissues will be posted in the coming days.

I understand the PTO is considering creating a special unit for patent reissues, much like was done for patent reexamination. My guess is more reissue would be filed should these applications be treated with the importance they deserve.

If anything, the pendency problems plaguing patent reissue demonstrate the value of maintaining pending continuation applications.