Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office as of Fiscal Year 2018

Departure and Promotion of U.S. Patent Examiners: Do Patent Characteristics Matter?

“…Second, Lemley and Sampat (2012) find no relationship between an examiner's granting rate and his or her likelihood of leaving casting doubt on the possibility that mobility decisions are linked to patent applications. Third, even if there exists a relationship between granting rates and leaving or promotion, according to Cotropia and Quillen Jr (2019), the grant rate was, on average, larger than 85% over our sample period 11…”

“…1111 Cotropia and Quillen Jr (2019) find a relatively higher allowance rate than other contributions as they consider the appropriate allowance rate which corrects for all refiled continuation applications. Furthermore, examiners in charge of a particular application receive the continuation application and, thus, ultimately, have to make decisions on the continuation cases. …”

Continuing Patent Applications at the USPTO

“…In theory, continuing applications can aid the 'back-and-forth' examination process, but a practical concern is that inventors can use them to obtain claims previously rejected or broader than those obtained initially. This imposes additional work on time-constrained patent examiners on already-reviewed subject matter to the detriment of new applications, at the risk of exacerbating the USPTO's persistent backlog problem and possibly leading to 'bad patent' issuance (Quillen and Webster, 2001;Frakes and Wasserman, 2015;Lemley and Moore, 2004;Cotropia and Quillen, 2019). 6 Though child applications are usually assigned to their parent's examiner, applicants may also hope a continuing application is assigned to a different, possibly more lenient examiner (Lemley and Moore, 2004).…”

“…An important feature of the U.S. patent system is that the United States Patent and Trademark Office (USPTO) cannot finally grant or reject a patent application. Inventors can file child applications called continuing applications that prolong the examination of the parent application beyond its disposal and comprised 20% of the almost 600,000 utility patent (henceforth, 'patent') filings at the USPTO in 2018 (Cotropia and Quillen, 2019). Among continuing applications, continuations (CONs) contain claims on the same invention disclosed in their parent, continuations-in-part (CIPs) additionally disclose new matter, and divisionals (DIVs) are filed when the original filing contains multiple inventions.…”

Patenting Inventions or Inventing Patents? Continuation Practice at the USPTO

“…3 Though policy debate has produced many examples, there is little statistical evidence on the prevalence of late claiming. The lack of systematic evidence reflects two fundamental measurement challenges: (i) it is hard to link patents to potentially infringing technologies, 1 See Table 2 in Cotropia and Quillen (2019).…”