a

GAO

United States General Accounting Office

Report to Congressional Committees

May 2004 PATENTS

Information about the 

Publication Provisions 

of the American 

Inventors Protection 

Act

GAO-04-603
www.gao.gov/cgi-bin/getrpt?GAO-04-603.

To view the full product, including the scope 

and methodology, click on the link above. 

For more information, contact Anu K. Mittal at 

(202) 512-3841or Mittala@gao.gov. 

Highlights of GAO-04-603, a report to 

congressional committees 

May 2004

PATENTS

Information about the Publication 

Provisions of the American Inventors 

Protection Act 

Of the approximately 805,000 patent applications USPTO received between 

November 29, 2000, and November 28, 2003, about 88,000 were filed by 

applicants certifying they would apply for a patent only in the United States. 

Subsequently, 8,000 of these applicants rescinded this certification. For 

about 275,000 applications, the applicants indicated they had already applied 

for a patent abroad. For the remaining 450,000 applications, USPTO’s 

database does not provide the information needed to determine whether the 

applicants intend to file in the United States alone or also abroad, as the 

figure below indicates. 

GAO found four differences between the published and unpublished patent 

applications that USPTO received between November 29, 2000, and 

November 28, 2003: 

• USPTO has published or plans to publish applications from about 85 

percent of the applicants qualifying as large entities compared with only 

about 74 percent of those qualifying as small entities. 

• USPTO issued patents to about 22 percent of the applications it had 

published and considered about 8 percent abandoned, although 

resolution for most of the approximately 456,000 published patent 

applications is still pending. For applications it did not publish, USPTO 

issued patents to about 25 percent and considered about 19 percent 

abandoned, although resolution for most of these approximately 117,000 

applications is also still pending. 

• The median length of time for the agency’s review of an issued patent 

was about 20 months for those applications that had been published and 

about 15 months for those not published. 

• The median length of time between filing and abandonment of an 

application was about 18 months for published applications and about 8 

months for those not published. 

Domestic and Foreign Applications Filed with USPTO, November 29, 2000, through 

November 28, 2003 

The U.S. Patent and Trademark 

Office (USPTO) receives over 

300,000 patent applications each 

year. Before the American 

Inventors Protection Act of 1999, 

USPTO was required by law to 

keep the information on patent 

applications confidential until a 

patent was granted. The act 

modified this requirement and 

mandated that USPTO publish 

most patent applications 18 months 

after filing. One exception to this 

requirement is available to patent 

applicants filing only in the United 

States. These applicants can 

request that their application not 

be published. 

The act required GAO to provide 

information on how patent 

applications have been affected by 

the 18-month publication 

provisions. GAO was required to 

determine (1) the number of patent 

applications filed only in the United 

States, and (2) whether certain 

differences exist between 

published and unpublished patent 

applications. Specifically, GAO 

examined differences relating to 

whether the applicant was a large 

or small entity, the percentage of 

patents issued by USPTO and 

applications abandoned by the 

applicants, and the length of time 

between filing an application and 

when USPTO issued a patent or the 

application was abandoned. 

In commenting on a draft of this 

report, USPTO provided technical 

comments that we have 

incorporated, as appropriate. 
Page i GAO-04-603 Patents

Contents

Letter 1

Results in Brief 4

Background 5

USPTO’s Database Does Not Include Information on the Status of 

Many Applications 8

Some Differences Exist between Published and Unpublished 

Applications 10

Agency Comments and Our Evaluation 13

Appendixes

Appendix I: Scope and Methodology 14

Appendix II: GAO Contacts and Staff Acknowledgments 16

GAO Contacts 16

Staff Acknowledgments 16

Table Table 1: Comparison of Published and Unpublished Applications, 

November 29, 2000, through November 28, 2003 12

Figures Figure 1: USPTO’s Patent Application Examination and 

Publication Process 6

Figure 2: Domestic and Foreign Applications Filed with USPTO, 

November 29, 2000, through November 28, 2003 9

Figure 3: Status of Applications Filed by Inventors Qualifying as 

Large Entities, November 29, 2000, through November 28, 

2003 11

Figure 4: Status of Applications Filed by Inventors Qualifying as 

Small Entities, November 29, 2000, through November 28, 

2003 11
Contents

Page ii GAO-04-603 Patents

Abbreviations

PALM Patent Application Location and Monitoring System

USPTO United States Patent and Trademark Office

This is a work of the U.S. government and is not subject to copyright protection in the 

United States. It may be reproduced and distributed in its entirety without further 

permission from GAO. However, because this work may contain copyrighted images or 

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Page 1 GAO-04-603 Patents

United States General Accounting Office

Washington, D.C. 20548

A

May 20, 2004 Letr

The Honorable Orrin G. Hatch

Chairman

The Honorable Patrick Leahy

Ranking Minority Member

Committee on the Judiciary

United States Senate

The Honorable F. James Sensenbrenner Jr.

Chairman

The Honorable John Conyers Jr.

Ranking Minority Member

Committee on the Judiciary

House of Representatives

The U.S. Patent and Trademark Office (USPTO) administers the nation’s 

patent laws to protect inventions and encourage innovation by examining 

applications and granting patents to qualified inventors for a period of time. 

A patent provides inventors with certain property rights to the invention.1

Between fiscal years 1998 and 2003, USPTO received an average of about 

317,000 patent applications annually. Following the enactment of the 

American Inventors Protection Act of 1999,2

 USPTO significantly changed 

its processes for publishing patent applications, bringing U.S. patent policy 

into greater harmony with the policies of most other nations. Effective 

November 29, 2000, USPTO generally must publish patent applications 18 

months after the application is first filed anywhere. Previously, USPTO 

published patent applications when patents had been issued-–for fiscal 

year 2003, a patent was typically issued about 28 months after the filing of 

the application.3

 With this new publication requirement, other inventors, in 

the United States and abroad, may be able to improve upon the invention in 

the original application and submit their own patent application more 

1

Specifically the inventor has the right to exclude others from making, using, offering for 

sale, or selling the invention in the United States or importing the invention into the United 

States.

2

The American Inventors Protection Act of 1999 was incorporated and enacted into law on 

November 29, 1999, by Section 1000(a)(9), Div. B, of Pub. L. No. 106-113, 113 Stat. 1501, 1536 

(1999).

3

The length of time between the filing of an application and the issuance of the patent is 

commonly referred to as “pendency.” 
Page 2 GAO-04-603 Patents

quickly. While the new publication requirement may accelerate the pace of 

innovation, it also raised concerns among some smaller entities—

individual inventors, nonprofit organizations, and enterprises with 500 or 

fewer employees—that larger competitors might be able to take advantage 

of the published information and use their greater resources to reap 

benefits in the marketplace before USPTO has granted a patent to the 

original inventor.

The 1999 act contains two provisions to address the concerns of these 

smaller entities. First, it allows all inventors to avoid publication by 

certifying, when they file their application, that they are, in essence, filing 

for a patent only in the United States.4

 Generally, applications that do not 

include such certification are automatically published 18 months after they 

are first filed. Second, inventors whose applications are published, and 

who have been issued patents, may be able to collect compensation5

retroactively to the date of publication from those who use the invention 

without approval. Since inventors are responsible for enforcing their patent 

rights, without the aid of USPTO, the potential litigation costs could deter 

some inventors from seeking to recover reasonable compensation.

While inventors may certify that they are seeking a patent only in the 

United States, they may rescind their certification at any time. Inventors 

may rescind their requests for several reasons, such as deciding to seek a 

patent abroad or to become eligible to collect compensation from others 

who are using their invention without approval. An applicant who makes a 

certification and later files in another country directly or under an 

international agreement must notify USPTO of such filing within 45 days. 

According to USPTO officials, the agency records in its database both 

those that specifically rescind their certification and those that provide 

notice as having rescinded their certification.6

 In both cases, USPTO 

publishes information on the application as it would for any other 

application. USPTO does not require patent applicants who do not certify 

4

The applicant could also file in 1 or more of the 13 countries, such as Malaysia or Saudi 

Arabia, that do not require applications to be published within 18 months of being filed. 

Throughout this report we refer to filing in another country as filing in 1 or more countries 

that require applications to be published within 18 months of being filed.

5

The statute provides for a “reasonable royalty.”

6

Throughout this report we include both those that specifically rescinded their certification 

and those that provided notice as applications for which the certification has been 

rescinded.
Page 3 GAO-04-603 Patents

to indicate whether they intend to file in only the United States or whether 

they also intend to file abroad.

The American Inventors Protection Act required GAO to provide 

information on patent applications affected by the 18-month publication 

provisions. In response, we analyzed USPTO’s database for applications 

submitted to the agency during a 3-year period—November 29, 2000, 

through November 28, 2003-–to determine (1) the number of applications 

seeking patents only in the United States, the number that requested at the 

time of filing not to be published, and the number that later rescinded that 

request; and (2) whether certain differences exist between published and 

unpublished patent applications. Specifically, GAO examined differences 

relating to whether the applicant was a large or small entity, the percentage 

of patents issued by USPTO and applications that were abandoned, and the 

length of time between the applicants’ filing of an application and either 

USPTO’s issuing of a patent or the application being abandoned.7

To address these questions, we examined USPTO records of the patent 

applications filed or published between November 29, 2000, and November 

28, 2003. We interviewed program officials to determine how these records 

are maintained and to interpret the data the records contain. We assessed 

the completeness and accuracy of the data we used in our review by (1) 

performing electronic tests of relevant fields and (2) reviewing related 

program and system documentation, as well as audit and system reviews 

and reports. We determined that the data were sufficiently reliable for the 

purpose of our review. For about 44 percent of patent applications, 

USPTO’s data allowed us to determine whether the applicants sought 

patent protection only in the United States or in both the United States and 

other countries. For the remaining 56 percent of applications, we relied on 

USPTO officials’ best estimates of how many applicants would also seek 

patent protection outside of the United States. To obtain a better 

understanding of patent law, we discussed patent issues with USPTO 

economists and attorneys. We conducted our work from June 2003 through 

April 2004 in accordance with generally accepted government auditing 

standards.

7

An application that has been declared abandoned is no longer pending. The most common 

reason for abandonment is when the applicant does not respond to USPTO’s requests for 

additional information, such as to clarify technical questions or address procedural issues, 

within the time period provided.
Page 4 GAO-04-603 Patents

Results in Brief USPTO’s database does not provide information for many applications 

regarding whether the applicant intends to file only in the United States or 

in both the United States and abroad. Of the approximately 805,000 patent 

applications USPTO received between November 29, 2000, and November 

28, 2003, about 88,000 were filed by applicants certifying they would apply 

for a patent only in the United States. Subsequently, 8,000 of these 

applicants rescinded this certification. For about another 275,000 

applications, the applicants indicated they had already applied for a patent 

in another country. For the remaining 450,000 applications, USPTO’s 

database does not provide the information needed to determine whether 

the applicants intend to file in the United States alone or also in another 

country. 

We found four differences between the published and unpublished patent 

applications USPTO received between November 29, 2000, and November 

28, 2003:

• USPTO has published or plans to publish applications from about 85 

percent of the applicants qualifying as large entities compared with only 

about 74 percent of those qualifying as small entities.

• USPTO issued patents to about 22 percent of the applications it had 

published and considered about 8 percent abandoned, although 

resolution for most of the approximately 456,000 published patent 

applications is still pending. For applications it did not publish, USPTO 

issued patents to about 25 percent and considered about 19 percent 

abandoned, although resolution for most of these approximately 117,000 

applications is also still pending.

• The median length of time for the agency’s review of an issued patent 

was about 20 months for applications that had been published and about 

15 months for those not published.

• The median length of time between the filing and abandonment of an 

application was about 18 months for published applications and about 8 

months for those not published.

In commenting on a draft of this report, USPTO provided technical 

comments that we have incorporated, as appropriate.
Page 5 GAO-04-603 Patents

Background USPTO administers the nation’s patent and trademark laws to protect 

inventions, encourage innovation, and advance science and technology 

through the preservation and dissemination of patent information. The 

principal effect of patent law in a market economy is that it provides the 

economic incentive for inventors to devote resources to technological 

innovation. Granting the inventor exclusive rights to control the use of the 

patented invention produces this effect.

Patent rights do not rise automatically, however. Inventors who seek patent 

protection must first prepare applications that fully disclose and clearly 

claim their inventions. Before issuing a patent, USPTO examines the 

application to verify that the patent is new, useful, and nonobvious.8

 See 

figure 1 for a description of the application examination and publication 

process. If the agency issues a patent, the inventor has, in most instances, 

exclusive rights to the invention until 20 years from the date the application 

was first filed. Patents typically fall into one of three categories: (1) 

utility—for useful inventions, such as processes, machines, articles of 

manufacture, or composition of matter; (2) design—for changes in 

configuration, shape, or surface ornamentation that do not involve changes 

in function; or (3) plant—for asexually reproducible plants.9

 The 

publication provisions of the American Inventors Protection Act apply only 

to applications for plant and utility patents, which constitute most of the 

applications filed.10

8

The term “nonobvious” refers to an invention that would not have been obvious to persons 

having ordinary skill in the art (subject matter) to which the invention pertains.

9

A fourth category, “reissue patents,” refers to patents that USPTO grants as replacements 

for any patent that was in some way defective. These patents constitute less than one-half of 

1 percent of patents issued in fiscal year 2003.

10Since plant patents constitute less than one-third of 1 percent of the patents affected by the 

act, we did not segregate plant patents from utility patents in our analysis.
Page 6 GAO-04-603 Patents

Figure 1: USPTO’s Patent Application Examination and Publication Process

Until 1999, USPTO was required to keep in confidence submitted patent 

applications, and applicants had no enforceable patent rights before the 

issue date of the patent. The American Inventors Protection Act of 1999 

removed this confidentiality, so that, with certain exceptions, such as 

applications subject to a secrecy order for reasons of national security, 

patent applications filed on or after November 29, 2000, will be published 

18 months after they are first filed. In exchange for the loss of 

confidentiality and the public dissemination of this proprietary 

information, the applicant may be able to obtain compensation 

Application filed

Request not

to publish

application

Examination

Application is

not published

Rescind request

not to publish

Examination No

No

No

No

Application is

not published

Patent issued or

application abandoned

four weeks or more

before publication

Application is

published

Application is

published

Application is

not published

Patent issued or

application abandoned

four weeks or more

before publication

Yes

Yes

Yes

Yes

Source: GAO analysis of USPTO data.
Page 7 GAO-04-603 Patents

retroactively to the date of publication from those who use an invention 

without approval.11

USPTO may publish some applications earlier than 18 months. Some 

inventors, for example, request that their applications be published early. 

Applications that are first filed abroad will also normally be published in 

fewer than 18 months after being filed in the U.S. This is because USPTO 

designates an application’s publication date as 18 months from when it was 

first filed, regardless of whether that occurred in the United States or 

abroad. Applicants who file first in another country and wish to obtain a 

patent in the U.S. must file with USPTO within a year.12 If such an applicant 

took 12 months to file with USPTO, the agency would then publish the 

application within 6 months. If, for example, such an application was 

abandoned 9 months after it was published, then USPTO’s database would 

show that the application was abandoned in 15 months-–the number of 

months that had passed since the application had been filed in the U.S.-–

rather than the 27 months that had passed since the application had been 

first filed anywhere.

Proponents of the act believe that the changes brought U.S. patent policy 

into greater harmony with the policies of nearly all other nations and will 

increase the rate at which dissemination of new technology occurs, thus 

speeding the diffusion of knowledge and avoiding the duplication of 

research expenditures by competing firms. Some inventors, however, 

objected to the early disclosure requirement of the act. For example, a 

group of 26 Nobel laureates claimed that this practice would be most 

harmful to small inventors and would discourage the flow of new 

inventions. They pointed out that the patents most affected by early 

disclosure would likely be breakthrough inventions, often made by 

independent inventors, that take time to progress from application to an 

issued patent. Independent inventors and smaller entities have also 

expressed concern that the new law aids larger entities that have greater 

resources, at the expense of smaller entities. They contend that smaller 

11There are certain conditions attached to this right. Specifically, the unauthorized user must 

be notified of the patent, the invention as described in the patent must be substantially the 

same as the one described in the application, and the inventor must litigate within six years 

of when the patent was issued.

12In accordance with a provision of the March 20, 1883, Paris Convention for the Protection 

of Industrial Property (as revised), applicants have 12 months from the first filing of a 

foreign application to file a counterpart application in the United States.
Page 8 GAO-04-603 Patents

entities are less able to obtain legal redress if larger firms use their 

inventions without approval, and are less able to keep pace if a larger firm 

attempts to invent around the patent—that is, to improve the patented 

device enough to apply for a separate patent.

The 1999 act allows all inventors not intending to seek patent protection 

abroad to request that USPTO publish the application only when it issues 

the patent. Such inventors also have the option of rescinding the original 

request before USPTO issues a patent and asking the agency to publish the 

application as it would other applications. 

USPTO’s Database 

Does Not Include 

Information on the 

Status of Many 

Applications

USPTO’s database does not provide information for many applications 

regarding whether the applicant intends to file only in the United States or 

in both the United States and abroad. Our analysis of USPTO’s database 

indicates that of the approximately 805,000 applications USPTO received, 

applicants certified they would apply for a patent only in the United States 

in about 80,000 applications. Although about 88,000 applications originally 

included this certification in their applications, about 8,000 applicants later 

rescinded this certification.13 Consequently, these 80,000 applications are 

exempt from the publication provisions of the American Inventors 

Protection Act because they are filing for patent protection only in the 

United States. In about 275,000 applications, the applicants indicated they 

had applied for a patent in another country. As a result, these applications 

are subject to the publication provisions of the American Inventors 

Protection Act, and USPTO will publish these applications within 18 

months of when they were originally filed. 

USPTO’s database does not provide the information needed to determine 

definitively whether the applicants for the remaining 450,000 applications 

intended to apply for a patent only in the United States or in both the 

United States and abroad. However, USPTO officials estimated that for 

about one-third of such applications, the applicants generally seek patent 

protection in both the United States and abroad. Applying this proportion 

to the 450,000 applications for which no information is available, about 

300,000 were likely to seek patents only in the United States and about

13In addition, our analysis shows that as of November 28, 2003, there were about 61,000 

applications for which the applicant still had the opportunity to rescind certification. 
Page 9 GAO-04-603 Patents

150,000 were likely to seek patents in both the United States and abroad.14

By combining these estimates with the data for the applications that we 

could definitively identify from the database, we calculated that about 

380,000 applications (about 47 percent) likely were filed only in the United 

States, and about 425,000 (about 53 percent) likely were filed in both the 

United States and other countries.15 See figure 2.

Figure 2: Domestic and Foreign Applications Filed with USPTO, November 29, 2000, 

through November 28, 2003

14The USPTO officials with whom we discussed these issues estimated that, based on their 

professional experience, for about one-third of applications filed in the United States filers 

will subsequently file in another country after filing with USPTO. Use of this estimate should 

be considered in light of the limitation that this estimate could not be independently 

corroborated and should be considered only as an approximation. See appendix I for 

additional discussion.

15We derived 380,000 by combining the 80,000 applications identified in USPTO’s database as 

containing a certification that the applicant would file only in the United States with the 

300,000 that are estimated by USPTO officials as likely to have only filed in the United 

States. We derived 425,000 by combining the 275,000 applications in USPTO’s database for 

which applicants said they had filed in another country with the 150,000 applications 

USPTO officials estimated are likely to have also filed abroad.

Source: GAO analysis of USPTO data.

U.S. and abroad (estimate)

U.S. and abroad

19%

34%

Only in U.S. (estimate) 

37%

Only in U.S.

10%
Page 10 GAO-04-603 Patents

Some Differences Exist 

between Published and 

Unpublished 

Applications

We found four differences between the published and unpublished 

applications filed with USPTO between November 29, 2000, and November 

28, 2003.16 First, USPTO published, or plans to publish, applications filed by 

inventors qualifying as large entities at a somewhat higher rate (85 percent) 

than those filed by inventors qualifying as small entities (74 percent). Of the 

approximately 580,000 applications filed by large entities, USPTO 

published about 60 percent and listed another 25 percent as eligible for 

publication—that is, the applications will be published 18 months after 

they were first filed. About 12 percent of the applications filed by inventors 

qualifying as large entities are ineligible for publication—typically because 

the applicants certified that they will file only in the United States. USPTO’s 

database does not provide the information needed to determine the 

publication status for the remaining 3 percent. 

For the approximately 225,000 applications filed by inventors qualifying as 

small entities, USPTO published about 46 percent and lists another 28 

percent as eligible for publication. About 22 percent of the applications 

filed by inventors qualifying as small entities are ineligible for publication. 

USPTO’s database does not provide the information needed to determine 

the publication status for the remaining 4 percent. See figures 3 and 4.

16Unpublished applications refer to those that USPTO lists as ineligible for publication. 
Page 11 GAO-04-603 Patents

Figure 3: Status of Applications Filed by Inventors Qualifying as Large Entities, 

November 29, 2000, through November 28, 2003

Figure 4: Status of Applications Filed by Inventors Qualifying as Small Entities, 

November 29, 2000, through November 28, 2003

Source: GAO analysis of USPTO data.

Published

60%

25% Eligible

Ineligible

12%

3%

Not available

Source: GAO analysis of USPTO data.

4%

Not available

22% Ineligible

28% Eligible

Published

46%
Page 12 GAO-04-603 Patents

Second, although the rate at which USPTO issued patents to published and 

unpublished applications differed only slightly, the rate at which applicants 

abandoned published applications and unpublished applications differed 

significantly. Of the approximately 456,000 applications USPTO published, 

about 70 percent are still pending, about 22 percent were issued patents, 

and 8 percent were considered abandoned. Similarly, of the approximately 

117,000 applications USPTO did not publish, about 56 percent are still 

pending, about 25 percent were issued patents, and 19 percent were 

considered abandoned. For a summary of these differences, see table 1.

Table 1: Comparison of Published and Unpublished Applications, November 29, 

2000, through November 28, 2003

Source: GAO analysis of USPTO data.

Note: Numbers are rounded to the nearest 100.

a

According to USPTO officials, the difference in the rate at which published and unpublished 

applications are abandoned occurs primarily because nearly all patent applications abandoned within 

about 18 months of filing are listed as unpublished.

b

This analysis excludes approximately 206,000 applications USPTO considers eligible for publication 

but that have been neither issued nor abandoned, and approximately 26,000 applications that have not 

yet reached the stage at which publication status can be determined.

Third, USPTO took longer to issue patents that had been published (a 

median time of about 20 months) than those that had not been published 

(about 15 months). According to agency officials, the difference occurs 

primarily because examiners sometimes complete their review and decide 

to issue a patent in fewer than 18 months. In these cases, USPTO does not 

publish the application because the issued patent will itself be published 

and become public information. As a result, the median length of time for 

unpublished patents is less. 

Number

Published (% of total) Unpublished (% of total)

Applications

Issued as patents 102,200 (22) 29,300 (25)

Abandoneda 37,300 (8) 22,300 (19)

Pending 316,200 (70) 65,500 (56)

Totalb 455,700 (100) 117,100 (100)

Median pendency in months

Filing to patent issue 20 15

Time to abandonment 18 8
Page 13 GAO-04-603 Patents

Fourth, for applications considered abandoned, the median length of time 

between filing and abandonment was longer for published applications 

(about 18 months) than for those not published (about 8 months). 

According to USPTO officials, this difference occurs primarily because 

nearly all patent applications abandoned within about 18 months of filing 

are not published.

Agency Comments and 

Our Evaluation

In commenting on a draft of this report, USPTO provided technical 

comments that we have incorporated, as appropriate. 

We are sending copies of this report to the appropriate House and Senate 

committees; interested Members of Congress; the Secretary of Commerce; 

the Director, USPTO; the Director, Office of Management and Budget; and 

other interested parties. We are also providing copies to others upon

request. In addition, the report is available at no charge on GAO’s Web site 

at http://www.gao.gov.

If you or your staff have any questions about this report, please contact me 

at (202) 512-3841. Key contributors to this report are listed in appendix II.

Anu K. Mittal

Director, Natural Resources and Environment
Page 14 GAO-04-603 Patents

Appendix I

Scope and Methodology ApApenednxidexiIs

To provide information on the patent applications affected by the American 

Inventors Protection Act of 1999, we analyzed data obtained from the U.S. 

Patent and Trademark Office’s (USPTO) Patent Application Location and 

Monitoring system (PALM).1

 We used these data to determine the number 

of applications USPTO received, the number of applications certifying that 

they would be filed only in the United States, and the number that 

rescinded this certification. PALM also contained data we used to 

determine whether applicants had filed an application for the same 

invention in another country before filing with USPTO. In addition, we 

used PALM data to analyze whether differences existed between published 

and unpublished applications in terms of the relative size of the applying 

entity, the length of time USPTO reviewed the application before it was 

issued or abandoned, and the rate at which applications were issued or 

abandoned.

In about 44 percent of the cases, the USPTO data provided information 

about whether applicants sought patent protection only in the United 

States or in both the United States and elsewhere. For the remaining 56 

percent of the cases, USPTO’s database does not provide the information 

needed to determine whether the applicants have filed or intend to file in 

the United States alone or also in another country. We discussed other 

possible sources of information about these cases with USPTO program 

officials, attorneys, and economists. These USPTO officials noted that 

while they had conducted one study that provided some data as to whether 

applicants filed in the United States alone or also in another country, the 

limitations of the study’s methodology and results precluded any 

statistically valid use of the information. Three other studies we examined 

had similar methodological limitations that precluded their use. 

The USPTO officials with whom we discussed these issues estimated that, 

based on their professional experience, for about one-third of the 

applications filed in the United States, applicants may subsequently file in 

another country after filing with USPTO. Although we used this estimate to 

determine the potential number of applications that may have been filed in 

the United States only and in both the United States and abroad, use of this 

estimate should be considered in light of the limitation that it could not be 

corroborated by other methodologically sound independent sources.

1

We analyzed applications that were either (1) filed between November 29, 2000, and 

November 28, 2003, or (2) filed before November 29, 2000, and had a request for publication.
Appendix I

Scope and Methodology

Page 15 GAO-04-603 Patents

We assessed the reliability of USPTO’s PALM data that we used in our 

analysis by (1) performing electronic testing of relevant data elements, (2) 

reviewing existing information about the data and the system that 

produced them, (3) interviewing agency and contractor officials 

knowledgeable about the data, and (4) reviewing audit and system reports 

on accuracy of data entry performed by contractors. We determined that 

the data were sufficiently reliable for the purposes of this report.

To determine if studies analyzing the impact of the American Inventors 

Protection Act had been conducted by any other entity, we interviewed 

officials from the Intellectual Property Owners Association, the American 

Intellectual Property Law Association, and the National Intellectual 

Property Researchers Association. To explore the practicality of 

conducting a survey of patent attorneys to determine how many patent 

applications were filed only in the United States or in both the United 

States and abroad, we contacted patent attorneys around the United States 

representing private legal firms, corporations, academia, and government. 

After discussions with these officials, we concluded that a survey was not 

feasible because of concerns about attorney/client confidentiality.

We conducted our work from June 2003 through April 2004 in accordance 

with generally accepted government auditing standards.
Page 16 GAO-04-603 Patents

Appendix II

GAO Contacts and Staff Acknowledgments ApendxiI

GAO Contacts Anu K. Mittal, (202) 512-3841

Cheryl Williams, (404) 679-1991

Staff 

Acknowledgments

In addition to those named above, Oliver Easterwood, Judy Pagano, 

Elsie Picyk, Paul Rhodes, Stuart Ryba, Carol Herrnstadt Shulman, and 

Mindi Weisenbloom made key contributions to this report.

(360369)
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