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Petition Pendency’s Impact on Grant Rates

Michael Spector

Michael Spector

Julie Burke

Julie Burke

Cover Image for Petition Pendency’s Impact on Grant Rates

Recently, we wrote a blog post HERE about the precipitous decline in patent petition grant rates the longer the USPTO delays entry of the petition into the transaction history – plummeting from 83% if entered 0-5 days after receipt to only 71% if entered 2-3 weeks later. In this blog post, we examine the impact of the number of days it takes the USPTO to mail a decision (i.e. pendency) on the petition’s grant rate. Importantly, the sooner the petition is decided, the sooner the application will be returned to the Examiner for action consistent with the petition decision.

After analyzing Petition.ai’s database as well as information obtained from the USPTO, we have identified 485,000 petition decisions issued since January 1, 2013. When further examining these petition decisions to better understand their processing and grant rates, we excluded 97,000 ePetition decisions which were decided immediately with a 100% grant rate. As a result, the following analysis is based on the remaining 388,000 petition decisions, which all required a Deciding Official to review the merits of the decision and craft a decision response.

We found 52% of petition decisions were mailed within 60 days of the petition receipt and 66% of decisions were mailed within three months. Unfortunately for petitioners, the USPTO significantly delayed addressing the merits of 16% of petitions, resulting in 62,000 decisions with a pendency of six months or more.

Chart 1

Consistent with our analysis of petition entry days, the faster the USPTO mails the petition decision, the higher the grant rate. With each month the petition had yet to be decided, the grant rate declined 4-5 percentage points – sliding from 86% if decided within one month to 72% if decided in the fourth month. Practitioners can improve the likelihood of obtaining a granted decision by 19% by tracking the processing of their petition.

Chart 2

The petition has NOT been decided. What can the petitioner do?

First, a practitioner can check that the petition has been entered into the file transaction history. (See section Has your petition been entered? HERE.)

If no decision has been rendered within 30 days of when the petition request is submitted, the practitioner may want to take steps to “chaperone” their petition through the Patent Office. The petitioner can call the Technology Center (TC) Quality Assurance Specialist (QAS) or the Office of Petitions to confirm the petition is in front of the correct Deciding Official and to request a status update on the petition. Thereafter, the petitioner could consider asking the Deciding Official if it would be helpful to check back with the USPTO at regular intervals until the decision is rendered.

In addition, for certain types of petitions, the petitioner can also file a request for an expedited review (37 CFR 1.182), though there are fees associated with doing so – $420, $210, $105 for Large Entity, Small Entity, Micro Entity, respectively, and the risk of incurring further processing delays if the petition under 37 CFR 1.182 is not promptly entered and routed to the correct Deciding Official.

Alternatively, if the petitioner is still looking for assistance with their delayed petition decision, they may want to initiate a Patents Ombudsman inquiry. The Patents Ombudsman provides assistance to applicants and attorneys throughout the application process when the normal processing has stalled. Please note - the Patents Ombudsman Program is not intended to circumvent normal communication between applicants or their representatives and examiners or supervisory patent examiners (SPEs) or TC Directors.

Please click HERE for Petition.ai’s Petition Resource Page which includes the Office of Petitions’ phone number as well as QAS’s phone numbers by Technology Center and the Patents Ombudsman Program’s phone number.

Importantly, practitioners should note the filing of a petition does not stop any clock set by the USPTO (37 CFR 1.181(f)). Even if the petition decision is delayed, responses to Office Actions must be timely filed in order to prevent the application from going abandoned.

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