Do Patent Examiners Reject Applications for "Frivolous" Reasons?

by AEON Law on August 4, 2016

E-Commerce Patent

Rejections Higher than Most.

Reasons Frivolous?

Fables for the frivolous

By Peter Newell – Michigan State University LibrariesImage pageFables for the Frivolous main pageMichigan State University Libraries home page, Public Domain, https://commons.wikimedia.org/w/index.php?curid=2208251

The overall allowance rate for US patent applications generally is 55.8%, based on a 2013 report by the US Patent Office.

However, the allowance rate varies widely based on the "Art Unit" involved.

An "Art Unit" describes the type of technology at issue. For example, Art Unit 1764 is for "BLEACHING AND DYEING; FLUID TREATMENT AND CHEMICAL MODIFICATION OF TEXTILES AND FIBERS."

A recent study found that the allowance rates for Art Units 3689 and 3622 were "extraordinarily low."

These e-commerce-related Art Units cover aspects of "DATA PROCESSING: FINANCIAL, BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE DETERMINATION."

Only 12 patents were issued for Art Unit 3689 in 2015, and 365 applications were abandoned. This yields an allowance rate of 3.2%.

For Art Unit 3622 the rate was 5.6%.

For 2016, the rates are even lower, with 1.3% for Art Unit 3689.

According to the IPWatchdog blog,

Patent examiners in various E-commerce Art Units have been telling patent attorneys and patent agents for many years that their supervisors require them to issue rejections in all cases, even going as far as to tell attorneys that they have been instructed to come up with ridiculous, bogus, frivolous rejections that clearly have no merit. Over the years this has caused some examiners to quit, choosing to leave the Patent Office altogether rather than participate in this charade.

When the Patent Office rejects a patent application, the patent applicant can appeal to the Patent Trial and Appeal Board (PTAB).

The PTAB can then send the matter back to the examiner to issue the patent.

However, sometimes the patents are still not issued.

37 CFR 1.198 says that:

prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner … without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.

This should be a very rare procedure. However, in the case of the Art Units in the 3600 series, in 11 cases in the last 10 months prosecutions have been reopened after PTAB decisions reversing the examiners’ rejections.

In summary, it seems like the Patent Office is going out of its way to avoid the issuance of patents in the e-commerce space.

This is a troubling trend for patent applicants.

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