Strategic Predictions: Leveraging Art Unit Allowance Rates to Drive the Selection of Appeal Decision Makers

• Author: Sameer Vadera - Kate S. Gaudry
• Position: Sameer Vadera is a patent attorney at the Washington, DC, office of Kilpatrick Townsend & Stockton LLP. He focuses his practice on preparing and prosecuting patent applications in a variety of technical fields, including wireless technologies, software, and electronic devices. Kate S. Gaudry is a patent attorney at the same firm and office. She...
• Pages: 28-31

Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

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STRATEGIC

PREDICTIONS

Leveraging Art Unit Allowance

Rates to Drive the Selection of

Appeal Decision Makers

BY SAMEER VADERA AND KATE S. GAUDRY

Upon reaching an impasse with an examiner during pros-

ecution of a patent, an applicant may initiate an ex parte

appeal of a rejection, thereby requesting review by the

Patent Trial and Appeal Board (PTAB).1 Such action can

result in considerable expense and delay.2 However, we

previously reported that a substantial portion of appeals

are terminated quickly by the examiner, via issuance of

either an allowance or ofce action.3 Thus, initiating an appeal process may

result in several different outcomes that signicantly differ with respect to

delay, cost, a nd allowa nce pro spects. Data more precisely identifying the prob-

ability of each outcome with respect to particular instances may allow applicants to

make more strategic and informed appeal-entry decisions.

Stages of an Appeal and General Statistics

A full appeal cycle has several sequential stages. At the rst stage, applicants

le an appeal brief.4 At the second stage, the examiner issues an examiner’s

answer in response to the appeal brief.5 Lastly, at the third stage, the PTAB

issues its nal decision on the appeal.6 To investigate the distribution of appeal

outcomes at various stages, we used LexisNexis PatentAdvisor to identify

each appeal brief led between January1, 2010 and December31, 2011. The

PatentAdvisor data tracked each of these appeals throughout its appeal cycle,

so as to identify the stage at which the appeal exited the appeal process and

the next signicant event after exiting the appeal process.

As we previously reported, approximately 40 percent of all appellants exited

the appeal cycle after ling an appeal brief, but before an examiner’s answer was

issued.7 About half of this group of “early exiters” received an allowance as the next

signicant event. The other early exiters received a new ofce action. Empirically,

however, reopening prosecution was not necessarily bad news for appellants: more

often than not, these appellants ultimately received an allowance (e.g., after one or

more rounds of prosecution with the examiner). The appeal-exit dynamic changes

after the examiner issues an examiner’s answer, as predecision appeal-cycle exits are

very rare (less than 5 percent) and most of these exits are initiated by the appellant.8