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How Fast are Continuations?

As I wrote last week in Breaking the Seal, when presented with allowable claims that aren’t perfect, I often take the claims (that is, allow them to issue) even when they are not that great. As I mentioned last week, I do this partly because I think it sets a tone of cooperation with the examiner which helps get better claims in a continuation. But psychology is not the only consideration that goes into this approach. Other reasons I like it are:

  1. A continuation costs basically the same as an RCE and typically less than an appeal.
  2. Continuations get examined very quickly — without having to expedite them (i.e., the second bite at the apple comes relatively cheaply and quickly).

But how fast do examinations get examined?

Continuations of allowed applications get examined 225 days faster

At the upper end, 7 of the 10 fastest allowances of all time were for continuations. As for the average time to first action, here is what that looks like:

Chart showing number of days to first office action over time and split out by priority type.

Thus, on average, continuations of an allowed applications receive a first office action 225 days faster than a non-continuing application. Continuations where the parent was not allowed receive a first action 82 days faster than a non-continuing application.

continuations of an allowed applications receive a first office action 225 days faster than a non-continuing application. Continuations where the parent was not allowed receive a first action 82 days faster than a non-continuing application.

Continuations of allowed applications are so much faster because of how the USPTO count system and the way the “special new” docket works. The special new docket includes divisional applications, continuation applications, applications that have been accorded special status under 37 C.F.R. § 1.102 and, as of September 2009, RCEs.1 With respect to their special new docket, the USPTO instructs the examiners as follows: “Examiners must act on the application having the oldest effective filing date on their Special New docket at least every other pay period. Additionally, examiners should take-up applications on their Special New docket that they believe are in condition for allowance and give action to these applications without making them await their turn (MPEP 708.01).”2

Thus, it seems that Examiners are operating under the assumption that an allowed parent likely means the child is in condition for allowance and, therefore, the continuation is exempt from the golden rule of no cuts, no butts, no coconuts. Of course, we are talking about the average time to first action here. Presumably if an examiner takes a look at the claims in the continuation and sees that they are totally different than the parent, then that continuation might not cut to the front of the line, but it will still have to get an action in the month in which it becomes the oldest entry on the examiner’s special new docket.

Continuations see roughly the same number of actions per allowance as non-continuing applications

Going back to my original thesis that examiners “go easy” on continuations of allowed applications, here we arrive at a data point that does not support the thesis: Continuations see roughly the same number of actions per allowance as non-continuing applications (just over 1.5 actions per allowance):

Chart showing number of average number of actions to allowance over time and split out by priority type.

That said, I am adding to my to-do list a study to see how many of those actions are simply double-patenting rejections (it seems to me that it’s likely to be a large percentage of them).

1http://patentsgazette.uspto.gov/week52/OG/TOCCN/item-142.htm
2https://www.uspto.gov/patent/initiatives/patent-examiner-count-system