A Patent Bigfoot? The Mythical First Action Allowances DO Exist!

March 8th, 2012 by Christopher L. Holt

You may have heard of them, but as a rule I think it is safe to say that most patent attorneys and patent agents have never seen one, at least not in certain technology areas. They are called “first action allowances” and this happens when you file a patent application and the patent examiner does not reject any claims and instead finds that your submission is in order and allowable without amendment.

In some technical areas, such as class 705 – business method patents for example, first action allowances likely seem like the patent equivalent of a unicorn. Perhaps an even better analogy would be to Bigfoot! There are rumors of sightings but no hard proof to know that they exist for certain, or at least not proof that would stand up to true scientific scrutiny.

As a general rule patent examiners will always find something to reject, and, in fact, there is growing evidence to support the anecdotal stories about certain Art Units and Supervisory Patent Examiners simply refusing to ever issue a patent unless the applicant appeals.  See Denial of Due Process. Obviously, such a refusal to award patents is troubling and evidence of an enormous problem facing the Patent Office.  The data capable of being obtained by PatentCoreis voluminous and eye-opening.  I have no doubt that it will eventually lead to significant changes and the eradication of patent examiners who refuse to issue patents.

In any event, at the other end of the extreme from patent examiners who refuse to issue patents are those patent examiners who actually work for the Patent Granting Authority and do issue patents.  They follow the policy of the Kappos Administration to find allowable subject matter where it exists and get patents that are deserving issued.  Because the Office has significant pockets of resistance to issuing patents many patent attorneys and patent agents will never see a first action allowance even when they should.

 

 

 

 

 

 

As hard as it is to believe I hear from junior examiners over and over again telling me that they are told by the SPE to reject all applications and if a valid reason cannot be found then one should be made up.  These junior examiners are often discouraged, some leave the Office, but I hope that those who are offended by the “reject, reject, reject and make up a rejection” mantra of their SPEs stick around long enough to become primary examiners and SPEs themselves.  If they do the Office will have a much brighter future.

Partly because it is fun and partly to provide evidence to junior examiners that there are patent examiners who work for the USPTO that are actually allowed to issued patents, even with a first action allowance, I thought it might be interesting to take a look at which firms receive the most first action allowances according to PatentCore data.

It is important for me to say that I ran this search at approximately 3:30pm today.  PatentCore is continually adding more files to its database and there was an update right after I started, which changed the totals slightly.  So what appears below are the Top 50 Law Firms with the most first action allowances according to PatentCore data as of this afternoon.

 Law Firm Name  # of 1st Allowances
 1.  Oblon, Spirvak, CClelland, Maier & Neustadt ¹  839
 2.  Sughrue Mion ¹  544
 3.  Oliff & Berridge ¹  525
 4.  Birch Stewart Kolasch & Birch ¹  ²  500
 5.  Fitzpatrick Cella Harper & Scinto ¹  400
 6. McDermott Will & Emery ¹  376
 7. Foley & Lardner ¹  365
 8.  Harness, Dickey & Pierce ¹  314
 9.  Nixon & Vanderhye ¹  283
 10.  Antonelli, Terry, Stout & Kraus  244
 11.  Staas & Halsey ¹  224
 12.  Finnegan, Henderson, Farabow, Garrett & Dunner ¹  214
 13.  Bacon & Thomas  190
 14.  Rosenberg, Klein & Lee  178
 15.  Knobbe Martens Olson & Bear ¹  169
 16.  Kenyon & Kenyon ¹  166
 17.  Buchanan, Ingersoll & Rooney  165
 18.  Greenblum & Bernstein  161
 19.  Westerman, Hattori, Daniels & Adrian ¹   ³  159 ³
 20.  Young & Thompson ¹  157
 Dickstein Shapiro  157
 22.  Arent Fox  152
 23.  Blakely Sokoloff Taylor & Zafman ¹  139
 Wenderoth, Lind & Ponack ¹  139
 25.  Posz Law Group  134
 26.  Altis Law Group  130
 Crowell & Moring  130
 28.  Kratz, Quintos & Hanso  122
 29.  Kilpratrick Townsend & Stockton ¹  119
 30.  Brinks Hofer Gilson & Lione ¹  113
 31.  Thomas, Kayden, Horstemeyer & Risley  103
 32.  Pillsbury Winthrop Shaw Pittman  102
 33.  Merchant & Gould  98
 Banner & Witcoff  98
 McGinn Intellectual Property Law Group  98
 36.  Morgan Lewis & Bockius ¹  96
 37.  Holtz, Holtz, Goodman & Chick  94
 38.  Rader Fishman & Grauer  89
 39.  Schwegman, Lundberg & Woessner ¹  88
 40.  Lerner Greeberg Stemer  86
 41.  Ladas & Parry  85
 42.  Sterne, Kessler, Goldstein & Fox  84 ³
 43.  Volentine & Whitt  82
 Rabin & Berdo  82
 45.  Jianq Chyun Intellectual Property Office  79
 Myers Bigel Sibley & Sajovec  79
 47.  Perkins Coie  78
 Frommer Lawrence & Haug  78
 49.  Lowe Hauptman Ham & Berner  76
 50.  Colpe & Koenig  74

¹ An IP Today Top 25 Patent Firm for 2011
² IPWatchdog sponsor
³ IPWatchdog advertiser

Of course, there are a lot of reasons why a patent examiner might allow an application with a first action allowance, assuming of course the patent examiner works for the Patent Granting Authority.  In the table above I provided an indication of those firms that were also in the IP Today Top 25 list for 2011.  The IP Today list ranks those firms based on number of patents obtained, so it is no surprise really when 21 of the 25 from the IP Today 2011 list are also listed above.  More patents granted certainly raises the likelihood that you will have more first action allowances.  There are other factors though, not the least of which is whether the client will actually allow you to file a patent application that contains narrowly tailored claims that are likely to be allowed as submitted.  Thus, while there are some truly excellent firms on the list above I would caution against the use of this list as a “best patent law firms list.”

But where are these first action allowances coming from?  All over the Patent Office really.  They occur with plants (1661), organic compounds (1621, 1625, 1626), batteries (1725), active solid state devices (2818), electrical generators or motors (2834), optical systems and elements (2873), optics measuring and testing (2877), vehicle fenders (3612), data processing (3661), aeronautics and astronautics (3662), internal combustion engines (3748), valves (3751, 3753) and elsewhere throughout the USPTO.

Here are the Top 50 Art Units listed by the number of first action allowances according toPatentCore data as of this afternoon.

 Art Unit  # of 1st Allowances
 1.  2901  3,456
 2.  2902  3,257
 3.  2818  2,441
 4.  2903  2,411
 5.  2904  2,291
 6.  1661  2,241
 7.  2824  2,106
 8.  3747  1,857
 9.  2873  1,774
 10.  2819  1,765
 11.  2821  1,626
 12.  2838  1,588
 13.  2833  1,466
 14.  2817  1,444
 15.  2812  1,229
 16.  2816  1,184
 17.  2827  1,144
 18.  2837  1,143
 19.  2627  1,120
 20.  2834  1,120
 21.  2624  1,056
 22.  1621  1,055
 23.  2874  1,034
 24.  2832  1,008
 25.  3744  978
 26.  2839  970
 27.  2852  969
 28.  2881  953
 29.  2835  942
 30.  3661  933
 31.  1626  933
 32.  3612  893
 33.  2831  890
 34.  2861  867
 35.  2829  858
 36.  2877  837
 37.  2855  830
 38.  2814  805
 39.  2612  801
 40.  2872  788
 41.  2813  785
 42.  3751  783
 43.  2878  772
 44.  3745  759
 45.  2822  747
 46.  3662  734
 47.  3723  716
 48.  2871  711
 49.  3748  705
 50.  1625  705

First action allowances are not mythical, they do and can happen, at least if you are working with a patent examiner that is willing to allow patents.

About the Author:

Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Known by many as “The IPWatchdog,” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

VIA: http://www.ipwatchdog.com/2012/03/07/a-patent-bigfoot-the-mythical-first-action-allowances-do-exist/id=22628/

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