The USPTO is allowing a fewer percentage of patents than it did 10 years ago. In 1998, the USPTO allowance rate was over 70%. Yet in 2008, the USPTO allowance rate was less than 45%. Why is it harder to get a patent today?
The slowed allowance rate is due to the increased number of applications pending before the USPTO. Patent Examiners are increasingly overburdened and more Examiners are needed to cover the large volume of pending applications, yet USPTO budgets are limited. As such, the USPTO is pumping out increased numbers of allowed patents and patent overworked Examiners are ending up with a greater backlog. In fact, between 1996 and 2006, the USPTO issued two million patents, yet between 1911 and 1996 only 4 million patents issued, and from the time the PTO opened for business until 1911, only one million patents issued. This exponential increase in allowed patents reveals the climbing number of cases before the PTO. As Examiner workloads have increased, USPTO Patent Reform proposals and efforts appear to be centered around alleviating Examiner workload by shifting burdens to applicants (such as a new Information Disclosure Statement (IDS) format having an applicant cite by page and content the information pertinent to patentability of the pending claims – possibly saving the Examiner in wading through a lengthy references to find the relevant portion) (such as newer reexamination application guidelines requiring the applicant to detail each substantial new question of patentability (SNQ) on an element-by-element basis for each claim, by each reference relied upon to create the SNQ) and limiting the number of applications filed (such as the proposed limit to continuation applications). The USPTO appears to be trying to reduce backlog within a budget so that it can attend to the huge volume of queued applications. Under this theory, difficulty in achieving patent status is due to volume rather than a higher standard.
More recent Federal Circuit case law has raised the patentability bar. KSR gave Examiners new fuel for maintaining 35 U.S.C §103 obviousness rejections. Indeed, as KSR abandoned a more restrictive test for combining prior art references to be used as a 103 basis and instead opined that there is a “need for caution in granting a patent based upon a combination of elements found in the prior art,” the post-KSR Examiner guidelines published by the USPTO enumerate seven ways to reject claims under KSR authority. More recently, In re Bilski provided ammunition to reject claims as unpatentable subject matter under 35 U.S.C §101 (possibly taking out many business method, software and electric signal related claims). Under this theory, difficulty in achieving patent status is due to more stringent standards for patentability.
Regardless of whether decreased PTO allowance rates are due to increased backlog or tougher patentability standards, patent practitioners seem to have moved from a post-Festo mindset of fearing that they would create claim-scope-limiting estoppel via argument or amendment, to a “do what it takes to get it allowed” focus, realizing that overcoming KSR and Bilski rejections will often require limiting argument and amendment. Is getting a patent allowed, albeit it narrower than planned, better than walking away with nothing?
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