Anticipate This!™ | Patent and Trademark Law Blog

Why You Shouldn’t Wait Until the Deadline to Respond to an Office Action.

Posted in Practice Commentary by Jake Ward on June 14, 2010

Professor Crouch at Patently-O has provided some insightful analysis on patent grant rates as a function of the timing of the responses to the last office actions.  Below is a bar chart (reproduced with the permission of the author) clearly illustrating that earlier responses are more likely to result in an allowance.

In relation to the chart, Professor Crouch comments as follows:

Compact Prosecution: One problem with long delays is that information regarding the invention, the business needs, and the prior art, and the attorney-examiner relationship all become stale in the course of three months.  Although this staleness is difficult to quantify, I did look at patent grant rate as a function of the timing of responses. In my study, I found a clear and significant negative correlation between grant rate and delay in responding to the non-final office action.  I.e., longer delays are associated with a lower grant rate. (Here, grant rate is calculated as the number of patents issued divided by sum of the number of patents issued and applications abandoned).  The chart below groups applications according to the earliest deadline met in their first OA response and reports the grant rate for each group.

Some excellent analysis, per usual, from Patently-O.

JW Note:  This analysis generally conforms to our experience as patent practitioners.  However, it is always nice to see supporting data for one’s experience.   One wonders whether this trend is mere coincidence.  Is the trend just the result of more “complex” cases taking longer to respond to, and therefore being less likely to grant due to their complexity?  On the other hand, are there internal policies at the USPTO that tend to favor Applicants that respond more quickly to Office Actions?  Additionally, one wonders whether responding before the three-month deadline impacts grant rates in a similar manner?  Comments are open and welcomed.

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