How often do the largest patent firms appeal?

We recently reported on eight reasons to consider filing an appeal during the course of patent prosecution. Based on the current relatively low number of appeals across all applications, we suggested that some law firms may be underutilizing the appeal procedure in their practices. Now, we report the differences among the three most active patent firms. Our methods are explained in more detail at the end.

The top firms are 1) Finnegan, Henderson, Farabow, Garrett & Dunner LLP ; 2) Fish & Richardson PC; and 3) Knobbe Martens, which came from a recently published blog post on PatentlyO on the biggest firms according to total registered patent attorneys/agents. The Patentlyo blog post put Finnegan in the lead, with Fish second, and Knobbe close behind. This doesn’t mean that these firms have the most amount of patent prosecution work, but it at least puts us in the ballpark. We report here that these three firms have far different numbers of ex parte PTAB appeals.  

From July 25, 2016 to February 22, 2018, Fish & Richardson had 143 appeals. Finnegan was second with 78 appeals. And Knobbe was third with 60 appeals. While Fish and Knobbe had roughly the same number of patent applications (60,916 and 58,170, respectively) across all customer numbers searched, Fish had more than double the appeals. Even Finnegan, which totaled a third fewer applications (41,194) than Knobbe, had more appeals than Knobbe. 

The disparate number of appeals across these firms stems from a confluence of factors. One factor relates to the law firm itself. That is, a law firm may over- or under-sell the benefits of an appeal. 

Some practitioners get comfortable at preparing Amendment office action responses because it is the most common. Knowingly or not, psychological biases could influence the response strategy that a practitioner chooses or recommends to pursue. A practitioner whose recent sucessful strategy in one case might let this success influence strategy in an unrelated case simply because the strategy is more recent. Plus, projects that have fixed or capped fees favor efficiency and practitioners may opt for work that they are efficient at doing. These biases can be reinforced by billable hour incentives because prosecution can always be continued with an RCE.

Finally, to law firms’ defense, before now there hasn’t been a way to quantify the chances of succeeding on the merits of an appeal. A wealth of experience can put someone in the general vicinity, but even then is incomplete. 

So part of the reason why firm appeal rates differ is law firm-specific.

Another factor for law firms pursuing appeals at much different levels relates to the client. Some clients simply care less about the quality of patents. To them, numbers are more important. So despite the appeal procedure having several advantages for getting a good patent, it may not be necessary for some clients’ goals. An allowed application, even with narrow unusable claims, may be good enough.  

That clients drive appeals is perhaps best shown in the unequal distribution of appeals across customer numbers within a given firm. Pockets of appeals may show up disproportionately high for one customer number and low for others, suggesting that the decision to file an appeal largely depends on the client. Some clients may not like the concept of appealing. And as every lawyer knows, even excellent advice can only go so far, after which the client makes the call. 

Further still, different firms have different clientele, and some clients have more patentable subject matter than others. Often times, appeals are pursued only after options with examiners have been exhausted. So if firms operate under this paradigm (which is not being suggested that these three firms do), the clients with the less patentable subject matter might appeal more. But part of advocating includes not only accepting the client’s money, but providing realistic feedback on patentability. 

Another reason a client may shy away from an appeal may stem from a lack of trust with the practitioner. The upfront cost of appealing is not small change. And the client may interpret a strategy suggestion to appeal as a way to extract more money from the client, even with the best of intentions. Up until now, there has not been a good way to objectively convey the chances of succeeding on appeal and advancing prosection. 

But now, with Anticipat Practitioner Analytics, you can print out an unlimited number of professional reports that show how often the board overturns specific grounds of rejection relevant to a specific examiner. These include the specific points, called tags, and the legal authority, that the Board relied on in overturning similar rejections. 

For example, take a Section 101 rejection asserting abstract idea. You believe the examiner is wrong on step 1. By looking at Anticipat, you can see where the Board has overturned abstract idea rejections based on step 1 for this examiner, art unit, or tech center. With this knowledge, you can feel more confident in advising appeal. So a data driven approach can greatly improve the advice and build trust on the strategy. 

Give Anticipat a try for a 14 day free trial. Our team is happy to provide a demo. 

Methods

We looked up customer numbers for the three firms using a publicly available dataset. We then analyzed customer numbers associated with the three firms, of which there were a lot. Finnegan has at least 55 customer numbers totaling 41,194 applications. Fish has at least over 100, totaling 60,916 applications. And Knobbe has at least 50 customer numbers, totaling 58,170. We then plugged in the customer numbers into Anticipat’s Research page and tallied up the total for the relevant window of time.

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Is an appeal an underutilized patent prosecution procedure? Yes

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In prosecuting a patent application, an appeal is not always the best option. But it also isn’t that bad an option. Currently, about 1-2% of applications go up for appeal. Based on the advantages that an appeal can provide, as well as the diminishing drawbacks, this low percentage of appeals means that many practitioners may be losing out. Here, we organize the eight advantages that appeals provide (either early in prosecution or late), as taken from previous blog posts.

Appeals help minimize unnecessary prosecution history estoppel – https://anticipat.wordpress.com/2018/01/30/how-appeals-can-stop-examiner-tricks-that-needlessly-undermine-patent-applications/

Appealing before an RCE gives you Patent term adjustment (PTA) B-delay regardless of the outcome on appeal – https://anticipat.wordpress.com/2018/01/18/how-appealing-a-patent-application-before-filing-an-rce-can-yield-big-b-delay-pta/

The ex parte PTAB backlog is plunging, meaning one of the biggest reasons not to appeal (speed of resolution) is less prohibitive. https://anticipat.wordpress.com/2017/12/13/the-ptab-ex-parte-appeals-backlog-is-falling-what-that-means-for-you/

Just by filing an appeal brief, you get another set of eyes in an appeal conference, giving you a chance that your application gets allowed or prosecution reopened even before a final decision from the Board – https://anticipat.wordpress.com/2018/02/12/appeal-conferences-can-advance-prosecution-by-giving-your-application-a-fresh-set-of-eyes/

Appealing an application generally is correlated with a more valuable patent. https://anticipat.wordpress.com/2017/11/28/does-appealing-a-patent-application-lead-to-a-more-valuable-patent/

Recent fee increases affected RCEs more than appeals. https://anticipat.wordpress.com/2017/11/15/uspto-increases-fees-for-ex-parte-appeals-less-than-initially-proposed-thanks-to-aipla-and-ipo/

You can recoup PTA C-Delay for entire appeal pendency when at least one claim is found not unpatentable on appeal: https://anticipat.wordpress.com/2017/11/03/will-you-get-c-delay-patent-term-adjustment-after-your-appeal/

Appealing to technically and legally trained judges can get your rejections overturned if your examiner is just not getting it. The high reversal rates may be higher than you think. https://anticipat.wordpress.com/2017/08/23/update-on-ex-parte-ptab-appeals-reversal-rates-high-reversal-rates-maintained-except-for-101-nonstatutory-rejections/

Are appeals underutilized? Perhaps. But some firms/companies are very strategic with appeals. They understand the value appeals give to their clients/themselves. More to come on that later.

 

 

Anticipat Education Part 1: How to make the most of daily Anticipat recap emails

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This is the first of a series of emails that showcases features of Anticipat so that you can get the most out of the products. Today, we review the daily recap emails.

At Anticipat, we stay current on all newly decided ex parte PTAB appeals so you don’t have to. By default, we deliver subscribers a recap email of these decisions, after a few days for processing. In addition to seeing every ground of rejection at issue and every outcome decided for each case, you’ll also see the tags or the specific rationale the Board relied on in its outcome. See below image.

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As you can see, the recap email provides a comprehensive summary of all the grounds of rejection and outcomes for the day’s decisions.

If receiving an email recap for each day’s ex parte appeals is information overload, you can customize your emails according to your personal preferences. Simply click on the profile link, and select the specific filters that are interesting to you and your practice.

For example, say you are interested in decisions where the Board reversed a rejection Section 101 – patent-ineligible subject matter. By clicking “101 – Patent-Ineligible Subject Matter” under “Issues” and “Reversed” under “Outcomes”, you can be alerted via email only when decisions for that day include a reversed Section 101 rejetion.  

Other possible filters are for specific art units and examiners. This can come in handy as you are preparing a response for a specific Examiner to get alerted to a case where the Board decided the very same rejection you are faced with.

If you do not want any notifications by email, simply select the radio button “No notifications”.

We hope this has been helpful. If you would like for us to demo the product to a group, we are more than happy to do so. Click here to get started with a 14-day free trial.

Please reach out to us with any questions or comments. We’re standing by for any questions or comments.

Anticipat Team
480.779.7093

 

 

Appeal conferences can advance prosecution by giving your application a fresh set of eyes

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In filing a patent application at the USPTO, an applicant cannot choose its Examiner. Nor can it typically switch to a different Examiner once assigned. And since not all Examiners are equally agreeable or reasonable, being stuck with an Examiner sometimes puts the applicant at a serious disadvantage.

Two different appeal conferences provide applications with another set of examiner eyes. Here, we show that these fresh sets of eyes can have meaningful impacts on prosecution despite any built-in biases. This can happen even before the appeal reaches the PTAB judges’ desk.

The first procedure, pre-appeal brief request for review, is a relatively quick and inexpensive way to resolve “clear errors” in rejections. This brief is limited to 5 pages and is filed at the same time as filing a Notice of Appeal, with no extra fee for filing the request. A panel of three Examiners assesses the merits of the request for review, which guarantees that at least one examiner beyond the immediate examiner and his/her supervisor look at this application.

One might suspect that pre-appeal conferences should be ineffective because two of the three examiners on the conference may already be predisposed against the applicant’s position. That is, the examiner who issued the most recent Office Action typically will not admit that his work product is faulty. Nor will the examiner’s supervisor, especially when the working examiner is junior and the supervising examiner has been involved in overseeing the Examiner’s work. So common wisdom would suggest that a third Examiner, even if on the same side as the appellant, would have a hard time winning over the other examiners.

But these pre-appeal brief requests for review have significant effects on the state of prosecution of the application. One study showed that 6% result in a notice of allowance and 33% prosecution gets reopened (see www.ipwatchdog.com/2015/07/21/efficacy-pre-appeal-brief-conference-program/id=59937/). This means that almost 40% of the time the conference found that the Examiner’s Office Action was defective in some way.

Next is the appeal conference. Here, similar to the pre-appeal request for review conference, three examiners meet to evaluate the application in light of the appeal brief. Interestingly, a study showed that 19% receive notices of allowance after appeal brief. And 21% of these cases have prosecution reopened with an Office Action. (see www.ipwatchdog.com/2016/03/21/ex-parte-appeals-quickallowances/id=67297/) This shows that 40% of the time, the appeal conference examiners did not feel comfortable sending this appeal to the Board.

These data show that even before having patent judges at the PTAB give an application a fresh look, having other a pair of fresh eyes from examiners leads to meaningful results. The take home lesson is that having another pair of fresh eyes to evaluate an Examiner’s rejections is very important. Then, if necessary, the judges can also give the application a fresh look. That is, if it clears either of the 40% filters.

Practice Tip: Do not recite an abstract idea in claims while merely adding the words ‘apply it’

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Alice v. CLS Bank in citing Mayo made one point very clear: stating an abstract idea while adding the words ‘apply it’ is not enough for patent eligibility. This point may seem apparent to patent practitioners who hopefully are not literally reciting abstract ideas in claims and adding “apply it”. But a recent ex parte appeals decision highlights how a more common claim may fall into this same patent-ineligible category.

In Ex Parte Perreault (PTAB Jan. 24, 2018), the Board assessed an extraordinary representative claim for patent-eligibility. This single claim spans five pages of the Board decision, tallying up an impressive 1100-word count. The final clause of the claim recites:

wherein said steps (a)(l)(i), (a)(l)(v), (a)(l)(vi), (b)(l)(i), (b)(l)(v), (b)(l)(vi), and (c) are performed by execution, on a processor of a computer, of computer-readable instructions contained on a non-transitory computer readable medium.

The Board was unconvinced of the appellant’s arguments and instead held that the claim was directed to gathering rules and remedies for each community and then displaying them to a sub-contractor. The fact that the claim recited the equivalent of “apply it” in the final element was no help to the patent-eligiblity of the claim.

The Board instead found that the claim includes neither a technical problem nor a technical solution, but merely the application of an abstract idea on a computer via the Internet. Then the final blow: “We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016).

In conclusion, lengthy claims are not helped by merely reciting generic computer and network language. A final step with a wherein clause clarifying that previous steps are performed on a computer is perhaps a sign that the claim off course from patent-eligibility.

How appeals can stop Examiner tricks that needlessly undermine patent applications

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Patent Examiners are tasked with a daunting task of checking each patent application for compliance with all the patent laws and rules. Most importantly, the Examiner must show that the claims are not unpatentable, including being free and clear of prior art. And they must do all this within the time expectations that the USPTO offers.

But sometimes it seems like Examiners are engaged in a sophisticated game of cat-and-mouse. Some Examiner tricks, which aren’t expressly prohibited by the rules and incentives offered by the USPTO, cut corners to make their jobs easier. And some might say that the frequency of these games has increased in recent years. But left unchecked, the consequences of these tricks can undermine applications in serious ways.

To their defense, Examiners are allotted only a limited number of hours in the day to reach the bi-weekly expectation levels (or a bonus for ambitious Examiners). This expectation is driven by a simple formula:

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Source. As an example provided by the USPTO, let’s say that an Examiner works 36 hours a week. If the Examiner is starting out at GS7 in the complex field of satellite communications, this examiner is required to perform enough work to generate about 3.6 production units (or 7.2 counts) every bi-week (72 x 0.7)/27.7. That is the equivalent of 3 Non-Final Office Actions (1.5 counts each), 14 Final Office Actions (.25 counts each), 2 first-time RCEs (1.75 each), or 7 Notice of Allowances (.5 each) per week.

An Examiner drafting three Office Actions in a week would have 12 hours per Office Action. This is not quite two days of work for each application, to perform the search, consider the prior art, and draft the Office Action. No small task, especially with this complex subject matter.

On top of this, Examiners are cautious about allowing cases for fear that an allowed patent application does not meet a patent quality assurance threshold. In this case, an allowed case could get referred back to the Examiner to try again.

With these incentives in mind, it is easy to understand the first examiner trick: cutting corners on a quality first Office Action. Good examiners understand that a good initial prior art search sets the stage for the entire prosecution of an application. It’s best to conduct the best and most thorough search once, right at the get-go, applying the closest prior art references to the invention. Once this prior art search is done well, the Examiner can really just slightly modify the rejection as the applicant attempts to distinguish the claims.

But based on the allotted time given to examiners, it might take an examiner more than a few days to familiarize oneself with the claimed invention, perform the search, consider the prior art and draft the Office Action. Some Examiners cut corners with this initial search, applying references that are easiest to find, but not very related to the invention. But because the references may have snippets that can be arguably broadly interpreted to disclose aspects of the claims, the Examiner applies them and moves on. And because often times applications go through several rounds of prosecution, the Examiner may think to perform a better search down the road, with potentially more relevant prior art. This is bad for applicants for a number of reasons.

For one, it wastes money and time. Some Examiners become attached to their own work product and refuse to see error in the first Office Action. Thus, it can be difficult to persuade the Examiner to withdraw a rejection through argument alone. This behavior is reinforced by the USPTO not granting counts for a Non-Final Rejection do-over. So if claim amendments are not introduced, Examiners–hungry for RCE counts–typically issue a Final Rejection with little change to the original analysis.

Sometimes, Examiners offer to cut a deal where a claim amendment is introduced to distinguish the applied prior art references. Applicants, incredulous at being required to distinguish from very different prior art references, may take this option. But no proposed claim amendment is guaranteed to result in an allowance. Examiners may commit to overcoming the current rejection, but a revised rejection with perhaps a different prior art reference can easily be manufactured.

Thus, “working with” the Examiner may give the applicant false hope, leading the applicant to continue to try different claim amendments without committing to allowance. These Examiner-appeasing amendments carry no guarantee of advancing prosecution, and instead often drag out prosecution even through the RCE process, so that the Examiner can get more counts.

Besides expense and wasted time, each argument and/or clarifying amendment used to distinguish a prior art reference makes up the prosecution history estoppel. This is disadvantageous because it narrows the scope of coverage of the claims during enforcement of the patent. As the Supreme Court made clear in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., an applicant that makes a claim amendment to comply with the Patent laws automatically assumes surrender of the territory between the original claim and the amended claim. This means that there is a presumption of surrendering all equivalents for the particular claim limitation that was narrowed by the amendment. For an application that has many amendments over many Office Action responses, the consequences can be substantial.

The second trick is the examiner requiring narrower claims than is required by the law. Even when an Examiner performs a very exhaustive search in the prior art, there is still no guarantee that a killer prior art reference is just around the corner. That is partially why Examiners will almost always want more narrow claims than are needed to overcome prior art so they can pass a patent quality assurance threshold. In general, the more features and claim elements the better for the Examiner to pass scrutiny. It can be tempting to pursue a strategy that pursues narrower claims to get a quick notice of allowance. But unless an Examiner can show why a more narrowing claim amendment must be made in a prima facie rejection, it is not a legally proper rejection.

The savvy patent practitioner knows that the fewer the claim amendments and the shorter the prosecution history, the better. An appeal early in prosecution (upon receiving a Final Rejection) can shortchange the negative implications of prosecution history estoppel. Rather than distinguishing and amending against a circulating set of unreasonable prior art rejections, the Board can decide the first unreasonable set. And if completely successful (no other grounds of rejection affirmed and no new rejections by the Board), a Notice of Allowance should issue. Plus, with Anticipat Research, you can see the reversal rate for your specific ground of rejection for your specific Examiner, art unit, tech center, etc.

Quit playing games and instead be strategic. That is why appealing can be a good solution.

Anticipat’s Mission: Help Patent Practitioners Succeed with the Best Data

We at Anticipat have a passion for improving patent prosecution by harnessing better data. We want our users to succeed in their own practices with the help of this data.

Better data includes aggregate ex parte appeals data that is relevant to grounds of rejection practitioners face. That is, an Office Action with a particular ground of rejection with specific reasoning has very likely been overturned on appeal in another application. We connect these dots for you. 

Better data also includes more general metrics, such as the reversal rates for specific grounds of rejection for a given Examiner, art unit, tech center. It also includes having the arguments and legal authority that the Board has used in overturning specific Examiner rejections.
While much of Anticipat’s initial focus and expertise are on Board data, it is only a piece of the puzzle. Our holistic approach requires data of all facets of patent prosecution, as well as a deep understanding of the context of patent prosecution procedures. We strive to further understand the incentives and behavioral decision-making patterns of all parties involved in the patent system so that proper context of USPTO statistics is understood and applied.

Only by having the best data can you optimally guide your prosecution strategy. With this arsenal of data, you can anticipate expected outcomes and put yourself in the best position for success. We hope you’ll join us on the journey. Click here to get started.

Obviousness Reversal Rates Across Tech Centers: Unexpected Results

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Obviousness is by far the most common rejection that gets appealed to the Board. This particular ground of rejection does not draw attention for being reversed at the low end or on the high end. Over the past year and a half, the 12,000 obviousness decisions were wholly reversed about a third (34%) of the time. And 43% of the appeals are at least partially reversed. One might expect these rates to be uniform across tech centers. They are not.

Here is a detailed breakdown of the appeals across tech centers.

Tech Center 1600 1700 2100 2400 2600 2800 3600 3700 total
Reversed 251 558 375 436 360 291 858 1000 4166
At least partial reversed 71 135 120 161 132 48 210 308 1205
Affirmed 649 1143 901 916 857 414 885 935 6796
Total 985 1876 1423 1536 1374 763 1973 2299 12397
Reversal rate 25% 30% 26% 28% 26% 38% 43% 43% 34%
At least partial reversal rate 33% 37% 35% 39% 36% 44% 54% 57% 43%

For appeals in tech center 1600, pharma/biotech, the reversal rate is the lowest. Only a quarter of such appeals are wholly reversed and only a third are at least partially reversed. The chemical arts of tech center 1700 are only slightly better.

Next, tech centers 2100, 2400, 2600 and 2800 comprise computer and electrical art. These are reversed at a higher rate than the biotech and chemical tech centers, with tech center 2800 being the most overturned of the bunch.

Next, tech center 3600, which is predominately software/business methods, has a much higher reversal rate than average. That is, 43% of these appeals are wholly reversed and 54% are at least partially reversed.

Next, tech center 3700, which is home to mechanical and medical device technology also has a much higher reversal rate than average. That is, 43% of these appeals are wholly reversed and 57% are at least partially reversed.

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It is interesting that the biotech/pharma and chemical tech centers are lower than the average reversal rates. It is also interesting that the software/business methods and mechanical/medical device tech centers are reversed at a higher rate than average.

Why are some tech center reversal rates higher than others? For obviousness, this is no simple inquiry and instead requires considerable context. It starts with how strong is the Examiner’s rejection. Some fields are more crowded than others, making it easier for an Examiner to find prior art that would show obviousness. The Board panel that decides these appeals are technically trained in the technology center that they decide cases. They evaluate the legal and factual merits of the appeal. And theoretically, the Board will objectively evaluate each appeal equally. So for some tech centers where the reversal rates are low, this may signal that Examiner rejections are stronger than tech centers where the reversal rates are high.

Another reason relates to how “well” do the appeal conference examiners forward to the Board. The examiner conferences serve as a gatekeeper by reopening prosecution or even issuing a Notice of Allowance for bad rejections. But if these examiner conferences forward these bad rejections to the Board more than others, then the reversal rate goes up.

A third reason relates to the judges not being completely neutral in their decision-making. Instead, some judges may lean toward the Examiner while others may lean toward the appellant.  The more the judges lean toward Examiners, the lower the reversal rate; the more the judges lean toward appellants, the higher the reversal rate.

Next, some technology centers may be made of aggressive applicants who may want to stretch the claim coverage into the gray area of what their applications deserve. Many applications that seek to cover pioneering technology will understandably be ambitious in its scope. Other applicants may be more interested in adding another number to their patent arsenals.

These less ambitious applicants may be less interested in broad claims and appeal only at a significant impasse with the Examiner or with a particularly unreasonable rejection. The collective aggressiveness of applicants could affect the reversal rate within a tech center.

Anticipat provides the proper context to make sense of how likely it is for an application to succeed on appeal, say, if faced an obviousness rejection. With Anticpat Research, you can quickly identify those applicants in your art unit or tech center to provide a holistic context to the reversal rate numbers. Also with practitioner analytics, you can now input a customer number to see how often a particular applicant succeeds on appeal. Comparing apples to apples takes away the unexpected and instead gives you power to incorporate the statistics into powerfully guiding your prosecution strategy.

 

 

 

 

 

 

 

How Appealing a Patent Application Before Filing an RCE Can Yield Big B-Delay PTA

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Patent prosecution has a bevy of procedural options for a wide range of preferences. For those who want to maximize the life of the patent and aren’t impatient in getting the grant, some strategies promote maximum patent term. Here, we discuss how appealing a patent application can promote patent term adjustment (PTA), even if the appeal is unsuccessful.

We recently reported on how a successful appeal (not unpatentable for at least one claim) can result in C-Delay PTA. This gives all the time wasted in getting a favorable disposition from the Board back to the patent’s term. But if the appeal is unsuccessful (i.e., the decision comes back upholding a rejection with respect to all claims), and the application does eventually get granted, B-Delay can still replenish this lost time as PTA. But to do so, it must follow a certain timeline.

In general, B-delay is available when the USPTO does not grant a patent within 36 months. That is, every day over the 36-month mark that it takes to grant your application goes into your B-delay PTA. But B-delay is unavailable for the time after an RCE is filed. This point has implications for deciding when to appeal a decision, especially since the appeal process can be long and since not every appeal will be successful.

Under this approach, appeals are used strategically rather than as a procedure of last resort. Instead of filing an RCE to continue examination, an appeal is filed. Many applicants, do indeed use appeals strategically. If the appeal is affirmed, and if an RCE is filed to continue examination and the application eventually does get granted, then does the

An example shows this approach in action. US Patent No. 9,701,462 was recently issued with a whopping 2,230 days of PTA. The secret to over six years of PTA? Appeals. After receiving a Final Office Action, the applicant straightway appealed. The Board affirmed the Examiner, but introduced a new rejection. Subsequently, the applicant responded with an Amendment. The Examiner responded with a Final Rejection, after which the applicant appealed again. This time on appeal it was affirmed-in-part. Because an RCE was never filed, it qualified for 1231 days of B-delay.

pta b delay

This appeal-before-RCE strategy is difficult to pursue in practice—not a trivial or whimsical exercise. It takes preparation to make sure all the necessary evidence is on the record and that the claims are just the way they should be for appeal (before a Final Office Action closes prosecution). Indeed, you may want to front-load much of the back-and-forth work with the Examiner with at least one interview.

Another difficulty is more psychological. Some examiners may confuse the situation by offering a hope (sometimes a false hope) that prosecution is close to concluding. Then the practitioner believes that just one more narrowing amendment is needed. But is this one little amendment needed to allow the case? Or is it needed to overcome the current rejection? Or will the Examiner not even commit to that one narrowing amendment overcoming the current rejection? Many cases with long prosecution histories are made through a series of small amendments.

However difficult it is to front-load the work at the first response, and however difficult it is to weed through the hopeful assurances of the Examiner, appealing early on can pay off big dividends in the form of PTA.