In my previous post, I looked at two metrics – allowance rate and actions per disposal – that I find useful in assessing an examiner and formulating a strategy for dealing with the examiner. In this post I will look at three more such metrics: (1) Pre-Appeal Brief Conference Request Successes Rate; (2) Appeal Brief Answer Rate, and (3) Appeal Success Rate.
Appealing doesn’t always mean proceeding to the PTAB
As most reading this probably know, the path for an ex-parte appeal is:
- File a notice of appeal; optionally including a pre-appeal brief conference request (PABCR).
- File an appeal brief
- Receive examiner’s answer
- Pay fee to proceed to the PTAB
Importantly, at any step along the way you can choose to get off the path to appeal by filing an RCE. More importantly, the Examiner can choose to get off the path by allowing the application or reopening prosecution. If you can get the examiner to do that, then there is a good chance you can advance prosecution faster and for less cost than an RCE or going all the way to a decision from the PTAB.
I look at it like a game of Poker. Each step on the path is an opportunity to get more information (the dealer turns over another card) and then you can either raise (keep proceeding toward the PTAB) or fold (file an RCE) based on the new information. And just as an experienced poker player knows his opponent’s tendencies, advanced metrics that are now available through bigpatentdata.com and other places allow you to know the tendencies of your examiner and art unit.
Pre-Appeal Conference Request Success Rate
Let’s assume you have filed a response after final with what you consider to be strong arguments, but the Examiner issued a cursory advisory action maintaining the rejection. If your examiner and/or her art unit are prone to allowing applications or reopening prosecution in response to pre-appeal brief conference requests, then it probably makes sense to file one. There are no additional fees for a pre-appeal brief conference request beyond the notice of appeal fee. Plus, the time to prepare a pre-appeal brief conference request is often minimal when you are just resubmitting the same arguments as in your response after final (the hope being that the other members of the panel will be more responsive to the arguments than the primary examiner).
For example, let’s say your application is in art unit 2483 with examiner Itskovich:
As shown in the above figures, Examiner Itskovich has received 26 PABCRs. That puts him in the top 1% of examiners for that statistic. He has responded to 100% of them with “proceed to PTAB.” This tells me that a PABCR is probably a waste of time with examiner Itskovich in art unit 2483.
For contrast, consider Examiner Ade in art unit 3627:
Examiner Ade has seen 29 PABCRs in art unit 3627 (the most in that art unit) and has responded with “proceed to appeal” in only 20% of those. Although Art unit 3627 as a whole is less favorable to PABCRs (66% of PABCRs met with “proceed to PTAB”), a 1 in 3 chance to get an allowance or reopen prosecution without an RCE is still pretty good odds (assuming the notice of appeal fee is not greatly impacting your client’s budget).
Appeal Brief Answer Rate
What if a PABCR looks like a lost cause, or it was met with a “proceed to appeal”? Should you go ahead with an appeal brief? Often the answer is yes. Even if you don’t intend on forwarding the appeal brief to the PTAB, it is often worth filing one to “call the examiner’s bluff.” Since you know you will not forward it to the PTAB, you can prepare the appeal brief for little or no additional cost to the client; no need to spend a bunch of time adding citations, analyzing precedent, etc. Just take your previously-submitted after-final response, add the summary of claimed subject matter, and file it as an appeal brief. Now the examiner will either have to prepare a formal examiner’s answer that she is willing to stand behind at the PTAB(which means responding in detail to the arguments that she summarily dismissed in your response after final), or she will have to allow the application or reopen prosecution. As illustrated by the examples below, examiners are often bluffing (or at least are not confident their rejections will hold up at the PTAB) and so they reopen prosecution or allow the application. If you are on the fence about whether to call the examiner’s bluff with an appeal brief, the appeal brief answer rate for your examiner and her art unit can help inform that decision.
For example, looking again at examiners Itskovich and Ade and art units 2483 and 3627:
As you can see, Examiner Itskovich very rarely folds his cards upon receiving an appeal brief. He answers the appeal brief 82% of the time (putting him in the top 13% of examiners in art unit 2483). So if you and your client do not want to go all the way to the board, there is probably no use in filing an appeal brief with Examiner Itskovich. If you are willing to go all the way to the PTAB, then file your best-effort appeal brief as soon as possible after it is clear Examiner Itskovich has dug in his heels.
Examiner Ade, on the other hand, answers only 16% of appeal briefs (placing him in the bottom 27% of examiners in art unit 3627). Thus, even if you have no intention of going all the way to the PTAB, it is likely worth filing an appeal brief to try and get an allowance or at least reopen prosecution without an RCE.
Appeal Win Rate
What if you filed an appeal brief and the examiner’s answer has you on the fence as to whether to recommend an RCE or proceeding to the PTAB. The track record of the examiner and art unit at the PTAB is very useful for making this recommendation. If the examiner never loses, your position may not be as strong as you think it is and maybe it’s time to fold your cards and file an RCE. If the examiner never wins, maybe your client wants to go all in.
If you look back at the previous figures for Examiners Itskovich and Ade, you will see that Examiner Itskovich is very willing to go the the PTAB and lose. Examiner Ade, on the other hand, is undefeated when answering an appeal brief (6 of 8 who filed appeal briefs decided not to proceed to the PTAB, and Examiner Ade was affirmed in the other 2).
Finally, here’s what the PABCR “proceed to appeal” rate, the Examiner Answer Rate, and the PTAB “Examiner Affirmed” rates look like across technology centers: