JimIvey
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Re: issued patents vs applications
« Reply #5 on: Nov 30th, 2004, 10:09pm » |
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There are many reasons applicants would avoid appeals. There's a huge backlog -- 5 years or more. How many applicants who care enough about their inventions to file an application can wait for 5 years without some sort of issued patent? Not many. Remember, justice delayed is justice denied. So, you do what you can to get something of value without resorting to appeal and then appeal the broader, tougher claims once you have what you can get in-hand.
I tend to agree with Jeff that, if a lot of your applications issue too fast, you're not trying hard enough (or asking for enough). I used to think that first-action allowances were a prima facie sign of not asking for sufficiently broad coverage, but then I had a few "home runs" -- extremely broad claim sets allowed on the first action. But, I generally push the limits and tend not to get many first-action allowances.
One positive spin from a first-action allowance is that the application was really "clean" -- no Section 112 issues.
However, I'll go on record as saying that too many RCEs is a bad thing too. The patent practitioner ought to know where the value is in the invention and the rejections and responses ought to converge toward a negotiated compromise. By the time I've responded to the second, final Office Action, I've typically offered all I'm going to offer before going up on appeal. Of course, there are exceptions. And examiner's don't always cooperate in narrowing issues and sometimes like to introduce new issues in subsequent actions. And, if a case has been transferred one or more times, each practitioner is going to take a different view of the invention and its value. But generally speaking, I don't file many RCEs -- I try to go the extra mile to get the allowance in the "after final" phase.
I'm curious about the one-third that don't issue. In my experience, 90% or more eventually issue into something. However, one application may end up becoming 2, 3, or more applications as continuations, divisionals, and the ocassional RCE. So, I'll consider that whole family of application with a single common parent application to be, in essence, a single application. How many of those applications that didn't issue serve as a parent to another application that did issue?
Thanks.
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