Intellectual Property: Comparison of Patent Examination Statistics for
Fiscal Years 1994 and 1995 (Letter Report, 03/13/97, GAO/RCED-97-58).
Pursuant to a congressional request, GAO compared the Department of
Commerce's Patent and Trademark Office's patent pendency statistics for
fiscal years 1994 and 1995, focusing on: (1) overall pendency; (2)
patent pendency by examination groups, secrecy orders, foreign
applications, and current and original application dates; and (3) patent
pendency attributable to applicants.
GAO noted that: (1) patent pendency declined slightly in fiscal year
(FY) 1995 in comparison with FY 1994; (2) overall average pendency in FY
1995 was 19.8 months, or 0.4 month less than the 20.2-month average for
FY 1994; (3) similarly, pendency declined somewhat for 8 of the 17
examination groups and for foreign applications; (4) pendency remained
about the same when the original rather than the current application
filing date was used for the calculation; (5) pendency for applications
subject to secrecy orders increased, but these were so few in number
that they had virtually no effect on overall pendency; and (6) GAO also
found that the average amount of pendency attributable to the applicant
increased from 7.4 months in FY 1994 to 8 months in FY 1995.
--------------------------- Indexing Terms -----------------------------
REPORTNUM: RCED-97-58
TITLE: Intellectual Property: Comparison of Patent Examination
Statistics for Fiscal Years 1994 and 1995
DATE: 03/13/97
SUBJECT: Patents
Copyrights
Statistical data
Intellectual property
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Cover
================================================================ COVER
Report to the Chairman, Committee on the Judiciary, U.S. Senate
March 1997
INTELLECTUAL PROPERTY - COMPARISON
OF PATENT EXAMINATION STATISTICS
FOR FISCAL YEARS 1994 AND 1995
GAO/RCED-97-58
Intellectual Property
(141020)
Abbreviations
=============================================================== ABBREV
GAO - General Accounting Office
PALM - Patent Application Location and Monitoring (system)
PTO - Patent and Trademark Office
Letter
=============================================================== LETTER
B-276028
March 13, 1997
The Honorable Orrin G. Hatch
Chairman, Committee on the Judiciary
United States Senate
Dear Mr. Chairman:
Our July 15, 1996, report provided you with statistics on "patent
pendency," or the amount of time the U.S. Department of Commerce's
Patent and Trademark Office (PTO) takes to examine a patent
application.\1 We also discussed the statistics on patent pendency in
a statement for the record that we provided for a hearing on
intellectual property that you held on September 18, 1996.\2 The
statistics in the report and statement for the record relied on
fiscal year 1994 data from PTO's automated database; these data were
the most recent and complete fiscal year data available at the time
of our review.
At your request, we currently are conducting a review on intellectual
property fees. In carrying out this work, we again queried PTO's
automated database to obtain data for both fees and pendency, this
time analyzing information for fiscal year 1995. Following
discussions with your office, you requested that we update the
statistics in our July 1996 report to compare pendency for fiscal
years 1994 and 1995. Detailed information on this comparison is
provided in appendix I. Similar to our July 1996 report, this report
provides you with information on overall pendency; patent pendency by
examination groups, secrecy orders,\3 foreign applications, and
current and original application dates; and patent pendency
attributable to applicants. More details on our scope and
methodology are included in appendix II.
--------------------
\1 Intellectual Property: Enhancements Needed in Computing and
Reporting Patent Examination Statistics (GAO/RCED-96-190).
\2 Intellectual Property: Patent Examination and Copyright Office
Issues (GAO/T-RCED/GGD-96-230).
\3 Patent applications for inventions that could affect national
security interests can be placed under a secrecy order by PTO if the
applicable federal agency determines that such protection is
necessary.
RESULTS IN BRIEF
------------------------------------------------------------ Letter :1
Patent pendency declined slightly in fiscal year 1995 in comparison
with fiscal year 1994. Overall average pendency in fiscal year 1995
was 19.8 months, or 0.4 month less than the 20.2-month average for
fiscal year 1994. Similarly, pendency declined somewhat for 8 of the
17 examination groups and for foreign applications. Pendency
remained about the same when the original rather than the current
application filing date was used for the calculation. Pendency for
applications subject to secrecy orders increased, but these
applications were so few in number that they had virtually no effect
on overall pendency. We also found that the average amount of
pendency attributable to the applicant increased from 7.4 months in
fiscal year 1994 to 8 months in fiscal year 1995.
BACKGROUND
------------------------------------------------------------ Letter :2
A patent is a grant, given by a government to an inventor, of the
right to exclude others for a limited time from making, using, or
selling his or her invention. In the United States, the sole
granting authority for patents is PTO.
Within PTO, the patent application examination process consists of
several progressive phases. First, an applicant files a patent
application with PTO, where it is subjected to reviews for accuracy
and completeness during a preexamination phase. Following
preexamination, the application is assigned, or "docketed," to an
examiner within an examination group that has expertise in a specific
field, such as computer systems or biotechnology.
At this point, the examiner begins the process of determining whether
the invention is a new and useful process or product that should
receive a patent. Usually, early in the process, the examiner makes
a preliminary decision, or "first action," which may then be followed
by a series of contacts with the applicant to resolve questions
and/or obtain additional information. Possibly after a number of
actions by the examiner, PTO will decide whether to issue a patent.
If PTO decides to issue a patent, termed an "allowance," then the
agency informs the applicant and, upon the payment of the necessary
fees, issues the patent. The application may be abandoned during any
of these stages.\4
PTO defines patent pendency as the period from the date when an
application is filed until the date when a patent is issued or the
application is abandoned. Pendency as reported by PTO excludes
applications that have been filed but not yet issued or abandoned.
PTO computes average pendency as the total number of months for all
patents issued or abandoned over a particular period, divided by the
total number of applications for that period.
As discussed in our earlier report, patent pendency has taken on an
increased importance because of 1994 legislation affecting the term
of most patents. Public Law 103-465 changed the patent term for most
new applications from 17 years from the date of the patent's issuance
to 20 years from the filing of the original application on the
invention.\5 Any time spent by PTO in examining a patent application
subject to the new law reduces the effective patent term left to the
inventor.
--------------------
\4 As used by PTO, an "abandoned" application is any application that
does not result in an issued patent and is eventually taken out of
the examination process by the applicant or by PTO.
\5 Under P.L. 103-465, the term of a design (configuration, shape,
or surface ornamentation) patent--14 years from the date of
issuance--remains unchanged. Utility (process, machine, manufacture,
or composition of matter) and plant (asexually propagated) patents
had a term of 17 years from the date of issuance under the old law
and 20 years from the date of the earliest filing under the new law.
Reissued patents (replacement of defective patents) are for the
unexpired part of the term of the original patents.
MINOR CHANGES IN PENDENCY
OCCURRED IN FISCAL YEAR 1995
------------------------------------------------------------ Letter :3
In comparing patent pendency in fiscal year 1995 with that
experienced in fiscal year 1994, we found minor variations from what
was reported in our July 1996 report. We analyzed changes in total
pendency, pendency by examination groups, pendency for patents under
secrecy orders, pendency for foreign applications, pendency using
current and original application filing dates, and the applicants'
impact on pendency.
TOTAL PENDENCY
---------------------------------------------------------- Letter :3.1
As shown in table I.1, overall patent pendency was 19.8 months in
fiscal year 1995--a decrease of 0.4 month, or 2 percent, from the
20.2-month average pendency in fiscal year 1994. This decrease was
evident in the average pendency for both issued patents, which
decreased from 21.3 to 21 months, and abandoned applications, which
decreased from 18.3 to 17.9 months.
The total number of patents issued and applications abandoned
decreased slightly from fiscal year 1994 through fiscal 1995,
dropping from 187,633 to 186,195, or about 0.8 percent. The primary
reason for this decrease was a decline in abandoned applications,
which fell 3.2 percent, from 73,949 to 71,553. The number of patents
issued increased by 0.8 percent, from 113,684 to 114,642.
PENDENCY BY EXAMINATION
GROUPS
---------------------------------------------------------- Letter :3.2
As shown in tables I.2, I.3, and I.4, pendency continued to vary
widely among the individual examination groups in fiscal year 1995.
The highest pendency again was for computer systems, where it was
26.2 months in total, 27.6 months for issued patents, and 24.4 months
for abandoned applications. The lowest pendency continued to be for
solar, heat, power, and fluid engineering devices, where the average
was 17.4 months in total, 18.4 months for issued patents, and 14.6
months for abandoned applications.
Among the 17 examination groups for which we calculated statistics, 9
groups had an increase in overall average pendency, and 8 groups had
a decrease. In most cases, the variations in pendency from fiscal
year 1994 through fiscal 1995 were small; only three groups had a
change of more than a month in overall pendency. The largest change
was for special designs, where overall pendency decreased by 3.6
months in total, 3.3 months for issued patents, and 4.6 months for
abandoned applications.
PENDENCY FOR PATENTS UNDER
SECRECY ORDERS
---------------------------------------------------------- Letter :3.3
As shown in table I.5, fewer patents were issued or applications
abandoned in fiscal year 1995 for those applications that had been
subject to secrecy orders at one time. Overall, the number declined
from 464 in fiscal year 1994 to 396 in fiscal year 1995--a decrease
of 14.7 percent.
Pendency for applications subject to secrecy orders increased
significantly from fiscal year 1994 through fiscal 1995. Average
pendency for applications subject to secrecy orders at one time
increased from 62.9 months to 75.3 months overall, or an increase of
12.4 months per application. The average increase varied from 8.0
months for issued patents to 23.2 months for abandoned applications.
As in fiscal year 1994, the high level of pendency for applications
subject to secrecy orders had no significant effect on overall
pendency, since these cases accounted for only 0.2 percent of the
total patents issued and applications abandoned in fiscal year 1995.
In fact, those applications not subject to secrecy orders had an
overall pendency of 19.7 months compared with an overall pendency of
19.8 months for all applications.
PENDENCY FOR FOREIGN
APPLICATIONS
---------------------------------------------------------- Letter :3.4
As shown in table I.6, the average pendency for foreign patent
applications decreased in fiscal year 1995.\6 The overall pendency
for foreign applications was 20.6 months in fiscal year 1995 compared
with 20.9 months in fiscal year 1994--a decrease of 0.3 month.
Pendency on domestic applications decreased an average of 0.4 month,
from 19.7 months in fiscal year 1994 to 19.3 months in fiscal 1995.
--------------------
\6 PTO considers a patent application to have originated in a foreign
country if the first applicant named in the application is a foreign
resident.
PENDENCY USING CURRENT AND
ORIGINAL APPLICATION FILING
DATES
---------------------------------------------------------- Letter :3.5
According to PTO officials, a patent application may spawn other
applications during the examination period. Several generations of
applications are possible from one invention. The new, or current,
application is referred to by PTO as the "child," and the earlier
application is referred to as the "parent." In our July 1996 report,
we reported that pendency would be greater if PTO were to use the
filing date of the original, or parent, application to compute
pendency rather than the filing date of the current, or child,
application. As shown in table I.7, in fiscal year 1995,
applications with a parent continued to constitute a significant
portion--30.2 percent--of the patents issued and applications
abandoned.
Using the original filing date for the patents issued and
applications abandoned in fiscal year 1995 that actually had a
parent, the overall pendency would have been 47.2 months compared
with 17.8 months using the current filing date. This difference was
about the same as it was in fiscal year 1994, when pendency on
applications with a parent would have been 47.7 months using the
original filing date and 17.9 months using the current filing date.
When the original filing date is used, the impact on pendency for all
applications in fiscal year 1995--rather than just those with a
parent--showed slight differences compared with the impact in fiscal
1994. Had the original application date been used for all
calculations, the overall pendency for fiscal year 1995 would have
been 28.7 months rather than 19.8 months. In comparison, the use of
the original filing date uniformly in fiscal year 1994 would have
resulted in an overall pendency of 28 months rather than 20.2.
APPLICANTS' IMPACT ON
PENDENCY
---------------------------------------------------------- Letter :3.6
In our July 1996 report, we noted that the applicants themselves can
be responsible for a portion of the pendency. We included statistics
on one element--the amount of time spent by applicants in responding
to PTO office actions during examination. In commenting on our 1996
report, PTO agreed that applicants often are responsible for
pendency's being higher and that there were numerous other reasons
for higher pendency beside the responses to PTO's queries. PTO
provided us with its own analysis of overall delays caused by
applicants. We referred to these in our 1996 report but did not
include the details of PTO's analysis.
In preparing our updated statistics, we asked PTO to provide us with
an updated analysis of applicant-caused delays using fiscal year 1995
data. The results of PTO's analysis are shown in table I.8.
Consistent with our July 1996 report, we have presented the data as
provided to us by PTO rather than conducting our own analysis from
the fiscal year 1995 database. Although we did not verify the
accuracy of PTO's computations, in the one area where we could
compare results--applicants' response time to PTO office actions--our
statistics were within 0.05 month of PTO's statistics. This one area
accounted for nearly one-half of the overall pendency attributable to
applicants.
PTO identified seven areas where applicants create delays. In total,
these areas accounted for 8 months of the 19.8 months in overall
pendency during fiscal year 1995. In comparison, 7.4 months were
attributable to applicants' delays in the 20.2 months of overall
pendency during fiscal year 1994. In both years, the single largest
contributor to delays was the applicant's response time to PTO office
actions, which was 3.7 months in fiscal year 1995 compared with 3.6
months in fiscal 1994.
AGENCY COMMENTS AND OUR
EVALUATION
------------------------------------------------------------ Letter :4
We transmitted a draft of this report to the Department of Commerce
for its review and comment. Generally, the Department agreed with
the information in the draft report. The only area where the
Department recommended changes related to table I.7, which compared
pendency using current and original application dates. The
Department said that its own data showed no significant differences
between the statistics for fiscal years 1994 and 1995, while our
statistics showed a decrease in pendency for fiscal 1995.
In follow-up discussions with PTO, we found that the data that PTO
had provided us with--and from which we had made our calculations--on
original application filing dates were incomplete. PTO later
provided us with the complete data, and we revised our calculations.
These new calculations are shown in table I.7. They indicate there
was no substantial difference in pendency for fiscal years 1994 and
1995.
The Department raised two other points in its comments, neither of
which required any changes in the report. The first point addressed
the pendency of applications subject to secrecy orders. PTO noted
that it can take no final action until the classifying agency has
declassified the invention. We agree and made this same point in our
earlier report on pendency that was issued in July 1996.
The Department's second point was that its own pendency statistics
(1) do not include design patents and (2) actually report pendency
for the fiscal year on the basis of statistics at the end of the
fourth quarter. As in our earlier report, we believe that our
statistics, which include design patents and calculate pendency for
all patents issued and applications abandoned during the fiscal year,
provide a better appraisal of patent pendency. The full text of the
Department's written comments appears in appendix III.
---------------------------------------------------------- Letter :4.1
We will send copies of this report to the appropriate House and
Senate committees; interested Members of Congress; the Secretary of
Commerce; the Assistant Secretary of Commerce and Commissioner of
Patents and Trademarks; the Director, Office of Management and
Budget; and other interested parties. We will make copies available
to others on request. If you or your staff have any questions or
need additional information, please call me at (202) 512-3841. Major
contributors to this report are listed in appendix IV.
Sincerely yours,
Allen Li
Associate Director, Energy, Resources,
and Science Issues
STATISTICS ON PATENT PENDENCY,
FISCAL YEARS 1994 AND 1995
=========================================================== Appendix I
Table I.1
Comparison of Patent Pendency for
Patents Issued or Applications Abandoned
During Fiscal Years 1994 and 1995
Average pendency in
Number of applications months
---------------------- ----------------------
Applications 1994 1995 Change 1994 1995 Change
---------------------- ------ ------ ------ ------ ------ ------
Issued 113,68 114,64 958 21.3 21.0 -.3
4 2
Abandoned 73,949 71,553 - 18.3 17.9 -.4
2,396
======================================================================
Total 187,63 186,19 - 20.2 19.8 -.4
3 5 1,438
----------------------------------------------------------------------
Source: Patent Application Location and Monitoring system, Patent
and Trademark Office (PTO); GAO's computations.
Table I.2
Comparison of Patent Pendency by
Examination Group for Patents Issued or
Applications Abandoned During Fiscal
Years 1994 and 1995
Number of applications Average pendency in months
---------------------------- ----------------------------
Group Description 1994 1995 Change 1994 1995 Change
--------- ------------------ -------- -------- -------- -------- -------- --------
1100 General, 13,477 12,835 -642 19.7 19.2 -0.5
metallurgical,
inorganic,
petroleum and
electrical
chemistry and
engineering
1200 Organic chemistry 9,253 9,473 220 18.8 19.3 0.5
drug, etc.
1300 Specialized 8,239 8,635 396 19.3 19.4 0.1
chemical
industries, etc.
1500 High polymer 15,550 14,079 -1,471 20.2 19.4 -0.8
chemistry,
plastics,
coating,
photography, etc.
1800 Biotechnology 13,094 12,605 -489 21.5 21.6 0.1
2100 Industrial 10,374 10,232 -142 20.5 20.9 0.4
electronics,
physics, etc.
2200 Special laws 4,220 5,429 1,209 24.7 24.4 -0.3
administration
2300 Computer systems, 9,181 8,701 -480 27.6 26.2 -1.4
etc.
2400 Packages, 10,507 8,006 -2,501 17.2 18.9 1.7
cleaning,
textiles, and
geometrical
instruments
2500 Electronic/ 14,493 15,431 938 20.6 19.6 -1.0
optical systems,
etc.
2600 Communications, 13,371 13,463 92 22.7 22.1 -0.6
measuring,
testing and lamp/
discharge group
2900 Special designs 17,036 16,134 -902 23.0 19.4 -3.6
3100 Handling and 8,501 9,121 620 17.8 17.5 -0.3
transporting
media
3200 Material shaping, 8,646 9,132 486 17.0 17.7 0.7
tools, etc.
3300 Medical 12,056 12,186 130 18.2 18.4 0.2
technology,
sporting goods,
etc.
3400 Solar, heat, power 8,424 9,401 977 16.9 17.4 0.5
and fluid
engineering
devices
3500 Construction, 9,764 10,325 561 18.4 18.7 0.3
petroleum and
mining
engineering
Not determined 1,447 1,007 -440 N/A N/A
=========================================================================================
Total 187,633 186,195 -1,438 20.2 19.8 -0.4
-----------------------------------------------------------------------------------------
Source: Patent Application Location and Monitoring system, PTO;
GAO's computations.
Table I.3
Comparison of Patent Pendency by
Examination Group for Patents Issued
During Fiscal Years 1994 and 1995
Number of applications Average pendency in months
---------------------------- ----------------------------
Group Description 1994 1995 Change 1994 1995 Change
--------- ------------------ -------- -------- -------- -------- -------- --------
1100 General, 8,346 8,081 -265 20.7 20.3 -0.4
metallurgical,
inorganic,
petroleum and
electrical
chemistry and
engineering
1200 Organic chemistry 5,234 5,271 37 20.0 20.9 0.9
drug, etc.
1300 Specialized 4,698 4,886 188 20.3 20.9 0.6
chemical
industries, etc.
1500 High polymer 8,360 7,647 -713 21.4 20.8 -0.6
chemistry,
plastics,
coating,
photography, etc.
1800 Biotechnology 4,209 4,207 -2 25.0 25.5 0.5
2100 Industrial 7,093 6,903 -190 21.4 21.8 0.4
electronics,
physics, etc.
2200 Special laws 2,964 3,714 750 25.8 25.4 -0.4
administration
2300 Computer systems, 4,960 4,704 -256 29.0 27.6 -1.4
etc.
2400 Packages, 6,364 5,299 -1,065 18.9 19.6 0.7
cleaning,
textiles, and
geometrical
instruments
2500 Electronic/ 9,819 10,308 489 21.4 20.5 -0.9
optical systems,
etc.
2600 Communications, 7,932 7,697 -235 24.4 23.8 -0.6
measuring,
testing and lamp/
discharge group
2900 Special designs 11,142 11,664 522 23.2 19.9 -3.3
3100 Handling and 5,940 6,281 341 19.0 18.7 -0.3
transporting
media
3200 Material shaping, 6,106 6,264 158 18.0 18.8 0.8
tools, etc.
3300 Medical 7,273 7,632 359 19.9 20.1 0.2
technology,
sporting goods,
etc.
3400 Solar, heat, power 6,447 6,887 440 17.8 18.4 0.6
and fluid
engineering
devices
3500 Construction, 6,792 7,186 394 19.6 20.0 0.4
petroleum and
mining
engineering
Not determined 5 11 6 N/A N/A
=========================================================================================
Total 113,684 114,642 958 21.3 21.0 -0.3
-----------------------------------------------------------------------------------------
Source: Patent Application Location and Monitoring system, PTO;
GAO's computations.
Table I.4
Comparison of Patent Pendency by
Examination Group for Applications
Abandoned During Fiscal Years 1994 and
1995
Number of applications Average pendency in months
---------------------------- ----------------------------
Group Description 1994 1995 Change 1994 1995 Change
--------- ------------------ -------- -------- -------- -------- -------- --------
1100 General, 5,131 4,754 -377 18.2 17.3 -0.9
metallurgical,
inorganic,
petroleum and
electrical
chemistry and
engineering
1200 Organic chemistry 4,019 4,202 183 17.2 17.3 0.1
drug, etc.
1300 Specialized 3,541 3,749 208 18.0 17.5 -0.5
chemical
industries, etc.
1500 High polymer 7,190 6,432 -758 18.8 17.9 -0.9
chemistry,
plastics,
coating,
photography, etc.
1800 Biotechnology 8,885 8,398 -487 19.9 19.7 -0.2
2100 Industrial 3,281 3,329 48 18.6 19.1 0.5
electronics,
physics, etc.
2200 Special laws 1,256 1,715 459 22.3 22.3 0.0
administration
2300 Computer systems, 4,221 3,997 -224 26.0 24.4 -1.6
etc.
2400 Packages, 4,143 2,707 -1,436 14.7 17.5 2.8
cleaning,
textiles, and
geometrical
instruments
2500 Electronic/ 4,674 5,123 449 18.9 17.8 -1.1
optical systems,
etc.
2600 Communications, 5,439 5,766 327 20.2 19.7 -0.5
measuring,
testing and lamp/
discharge group
2900 Special designs 5,894 4,470 -1,424 22.5 17.9 -4.6
3100 Handling and 2,561 2,840 279 15.1 14.8 -0.3
transporting
media
3200 Material shaping, 2,540 2,868 328 14.6 15.4 0.8
tools, etc.
3300 Medical 4,783 4,554 -229 15.6 15.6 0.0
technology,
sporting goods,
etc.
3400 Solar, heat, power 1,977 2,514 537 14.1 14.6 0.5
and fluid
engineering
devices
3500 Construction, 2,972 3,139 167 15.4 15.7 0.3
petroleum and
mining
engineering
Not determined 1,442 996 -446 N/A N/A
Total 73,949 71,553 -2,396 18.3 17.9 -0.4
-----------------------------------------------------------------------------------------
Source: Patent Application Location and Monitoring system, PTO;
GAO's computations.
Table I.5
Comparison of Patent Pendency for
Applications at One Time Subject to
Secrecy Orders--Patents Issued and
Applications Abandoned During Fiscal
Years 1994 and 1995
Number Average pendency in months
---------------------------------- ----------------------------------
Applications 1994 1995 Change 1994 1995 Change
----------------- ---------- ---------- ---------- ---------- ---------- ----------
Subject to
secrecy orders
Issued 330 289 -41 67.5 75.5 8.0
Abandoned 134 107 -27 51.6 74.8 23.2
=========================================================================================
Total 464 396 -68 62.9 75.3 12.4
Not subject to
secrecy orders
Issued 113,354 114,353 999 21.2 20.9 -0.3
Abandoned 73,815 71,446 -2,369 18.3 17.8 -0.5
=========================================================================================
Total 187,169 185,799 -1,370 20.1 19.7 -0.4
All
Issued 113,684 114,642 958 21.3 21.0 -0.3
Abandoned 73,949 71,553 -2,396 18.3 17.9 -0.4
=========================================================================================
Total 187,633 186,195 -1,438 20.2 19.8 -0.4
-----------------------------------------------------------------------------------------
Source: Patent Application Location and Monitoring system, PTO;
GAO's computations.
Table I.6
Comparison of Patent Pendency for
Foreign Patents Issued and Applications
Abandoned During Fiscal Years 1994 and
1995
Number Average pendency in months
---------------------------------- ----------------------------------
Applications 1994 1995 Change 1994 1995 Change
---------------- ---------- ---------- ---------- ---------- ---------- ----------
Foreign
Issued 42,774 42,563 -211 21.9 21.5 -.4
Abandoned 26,188 24,620 -1,568 19.2 19.1 -.1
========================================================================================
Total 68,962 67,183 -1,779 20.9 20.6 -.3
Domestic
Issued 70,910 72,079 1,169 21.0 20.7 -.3
Abandoned 47,761 46,933 -828 17.8 17.2 -.6
========================================================================================
Total 118,671 119,012 341 19.7 19.3 -.4
All
Issued 113,684 114,642 958 21.3 21.0 -.3
Abandoned 73,949 71,553 -2,396 18.3 17.9 -.4
========================================================================================
Total 187,633 186,195 -1,438 20.2 19.8 -.4
----------------------------------------------------------------------------------------
Source: Patent Application Location and Monitoring system, PTO;
GAO's computations.
Table I.7
Comparison of Patent Pendency Using
Current and Original Application Filing
Dates for Patents Issued or Applications
Abandoned During Fiscal Years 1994 and
1995
Pendency in months
----------------------------------------------
Number of applications Current filing date Original filing date\a
---------------------- ---------------------- ----------------------
Applications 1994 1995 Change 1994 1995 Change 1994 1995 Change
----------------- ------ ------ ------ ------ ------ ------ ------ ------ ------
All applications
Issued 113,68 114,64 958 21.3 21.0 -0.3 28.0 28.5 0.5
4 2
Abandoned 73,949 71,553 - 18.3 17.9 -0.4 28.1 29.0 0.9
2,396
=========================================================================================
Total 187,63 186,19 - 20.2 19.8 -0.4 28.0 28.7 0.7
3 5 1,438
Applications that
had parent
applications
Issued 27,526 31,683 4,157 19.4 19.2 -0.2 46.9 46.4 -0.5
Abandoned 22,160 24,518 2,358 16.1 15.9 -0.2 48.5 48.2 -0.3
=========================================================================================
Total 49,686 56,201 6,515 17.9 17.8 -0.1 47.7 \47.2 -0.5
-----------------------------------------------------------------------------------------
\a Original parent application filing date if application had a
parent; current application filing date if there was no parent.
Source: Patent Application Location and Monitoring system, PTO;
GAO's computations.
Table I.8
Comparison of Patent Pendency
Attributable to Applicants for Patents
Issued and Applications Abandoned During
Fiscal Years 1994 and 1995
Pendency in months
----------------------------
Actions contributing to patent pendency 1994 1995 Change
---------------------------------------- -------- -------- --------
Actions attributable to applicants
Response to office actions\a 3.6 3.7 0.1
Abandonment to revival\b 0.1 0.1 0.0
Incomplete/informal to complete\b 0.6 0.8 0.2
Notice of allowance to payment of issue 1.6 1.6 0.0
fee/drawing correction\b
Office action to notice of appeal\b 0.2 0.3 0.1
Notice of appeal to appeal brief\b 0.1 0.1 0.0
Office action to abandonment\b 1.2 1.4 0.2
Subtotal 7.4 8.0 0.6
Other 12.8 11.8 -1.0
======================================================================
Total 20.2 19.8 -0.4
----------------------------------------------------------------------
\a These statistics were based on our analysis of PTO's patent
application database for fiscal years 1994 and 1995. PTO performed
an independent analysis of responses to office actions for fiscal
year 1995 alone and calculated a delay of 3.61 months compared with
our calculation of 3.66 months--a difference of only 0.05 month.
\b These statistics were provided directly by PTO. We did not verify
their accuracy.
Source: Patent Application Location and Monitoring system, PTO;
GAO's computations.
SCOPE AND METHODOLOGY
========================================================== Appendix II
To update the fiscal year 1994 patent pendency statistics in our
report entitled Intellectual Property: Enhancements Needed in
Computing and Reporting Patent Examination Statistics
(GAO/RCED-96-190; July 15, 1996) and to compare them with fiscal year
1995 statistics, we relied on data reported through the Patent and
Trademark Office's (PTO) Patent Application Location and Monitoring
(PALM) system. This system contains background information on each
patent application, as well as a "prosecution history" that shows the
date when key actions were taken on each application during
examination.
To determine the fiscal year 1995 statistics, we used the same
methodology developed for the fiscal year 1994 pendency statistics
included in our July 1996 report. Under this methodology, we first
analyzed the periodic reports that PTO produces from the PALM system.
While these reports previously proved useful in learning how the
examination process works and what data were available from the
automated system, they did not allow us to compare pendency over a
full fiscal year for the individual categories of issued patents and
abandoned applications. For this reason, we performed our own
analysis of the automated data. We asked PTO to provide us with
certain background information and prosecution histories from the
PALM system for all patents issued and applications abandoned during
fiscal year 1995. We designed our own automated program for
analyzing PTO's data. In this regard, we obtained the file layouts
for one of PTO's own automated reports (PALM 3515) and held
discussions with PTO officials familiar with the PALM system to
ensure that we were using the same data fields to extract information
by examination phases, examination groups, types of applications,
secrecy orders, foreign applications, et cetera. We then extracted
data and computed the number of applications, the average pendency,
and the pendency range for the various subsets of information shown
in the tables in appendix I of this report.
Our analyses of pendency are based on PTO's own data. We did not
independently verify or validate the PALM system or the data we
extracted from the system. We did, however, discuss with officials
in PTO's Search and Information Resources Administration office the
layout of the PALM system, the manner by which information is added
to the system, and our plans for extracting, collating, and analyzing
the data we obtained from the system. We also discussed the results
of our analysis of pendency with various PTO officials. Where
possible, we compared aggregate data with data produced by PTO in
other reports and discussed with PTO officials the potential reasons
for any discrepancies.
In commenting on our earlier report, PTO officials had provided us
with additional statistics on pendency caused by filers' delays.
While we did not include these statistics in the pendency tables in
the earlier report, we did address them in our narrative on filers'
delays. For this report, we asked PTO to provide us with similar
data for fiscal year 1995. While we did not verify PTO's statistics,
we did compare the data in the one field--applicants' responses to
office actions--where we had made an independent analysis and found
that we differed by only 0.05 month.
We conducted our review from December 1996 through February 1997 in
accordance with generally accepted government auditing standards.
(See figure in printed edition.)Appendix III
COMMENTS FROM THE DEPARTMENT OF
COMMERCE
========================================================== Appendix II
(See figure in printed edition.)
(See figure in printed edition.)
(See figure in printed edition.)
MAJOR CONTRIBUTORS TO THIS REPORT
========================================================== Appendix IV
RESOURCES, COMMUNITY AND ECONOMIC
DEVELOPMENT DIVISION
Frankie Fulton
John P. Hunt, Jr.
Mitchell Karpman
Paul Rhodes
Julie Schneiberg
Mindi Weisenbloom
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