Continuing Patent Applications and Performance of the U.S. Patent Office

The United States is unique in permitting patent applicants to refile their patent applications as continuation and continuation-in-part applications claiming the benefit of the filing date of a prior application and restart the examination process all over again. Data provided by the USPTO concerning continuing application filings for its fiscal years 1993-1998 reveal that 28.4% of the utility, plant, and reissue (UPR) applications filed in those years were not new or original applications, but were continuing applications claiming the benefit of the filing dates of previously filed applications. Analysis of the data for continuing applications for the USPTO’s fiscal years 1993-1998 in conjunction with the USPTO Annual Report statistics for the same fiscal years shows that the number of UPR applications allowed in fiscal years 1995-1998 was 95% of the number of original UPR applications filed in fiscal years 1993-1996. Comparable Allowance Percentages for the European and Japanese Patent Offices were calculated to be 68% and 65%, respectively. A study of the cohort of German patent applications claiming a 1977 priority date had found that only 41.7% of the 1977 German applications became patents. The Grant Rate (allowances divided by total disposals, i.e., the sum of allowances and abandonments) for the USPTO for its fiscal years 1993-1998, corrected for continuing applications, ranges from 87% to 97%, depending on the extent to which prosecution of abandoned applications was continued in refiled applications. Reported Grant Rates for 1995-1999 for the European and Japanese Patent Offices (averaged) are 67% and 64%, respectively. Policy questions resulting from the lack of rigor by the USPTO in its examination of patent applications are discussed.