I Lost at the USPTO, What Are My Chances on Appeal?

• Author: William G. Jenks
• Position: William G. Jenks is an attorney at Jenks IP Law. He specializes in appellate matters before the USPTO's Patent Trial and Appeal Board and the Court of Appeals for the Federal Circuit. He can be reached at wjenks@jenksiplaw.com.
• Pages: 28-32

Published in Landslide® magazine, Volume 9, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2016 by the American Bar Association. Reproduced with permission. All rights reserved. This

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By William G. Jenks

I Lost at

the USPTO,

This article will help intellectual property lawyers with a potential

United States Patent and Trademark Ofce (USPTO) appeal at the

Court of Appeals for the Federal Circuit answer one of the most fre-

quent and vexing questions appellate lawyers hear. The question clients

love to ask and lawyers hate to answer: What are my odds on appeal?

Typically, the rst response to this question is to say condently,

“Appellants from the USPTO win about 10 percent of the time

at the Federal Circuit, but we have some good arguments to

present.” That condence deates rather awkwardly when

the client asks, “So what are my odds, exactly?”

What Are My

Chances on

Appeal?