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Confronted With Own Stats, Examiner Allows Only 6th Patent in Over 2 Years

It’s too bad the Pattie Awards didn’t exist in 2017 because I would have had to create a category just to honor Michael Glenn of Perkins Coie. (Full Disclosure: I have never met Michael, and I don’t have any relationship with Perkins Coie — is it pronounced “cooey” or “coyee”?). What did Michael Glenn do to join such elite company as Nancy Regan and Master Shredder?

Background

I was recently asked if I knew of anyone who had cited examiner statistics in an office action response. I personally have never done it, but a search for “allowance rate” in the BigPatentData prosecution knowledge base is what led me to the hero of today’s story.

As the clip above shows, the BigPatentData shared prosecution knowledge base had one response which used the term “allowance rate.” That response was filed by the hero of our story, Michael Glenn 1,2.

Main Event

Back in 2017, Michael was prosecuting application # 14/092,721. The assigned examiner, Sam Refai, had issued a 101 rejection that Michael was none too keen on. Michael, looking for some insight into what he was up against and what strategy might be best for his client against this particular examiner, turned the stats. What he found wasn’t pretty. The examiner had allowed only 9 out of 199 patent applications. So what did Michael do? He called the examiner out in his response! He wrote:

“Applicant notes that the Examiner has an allowance rate of 8.8%, while the Examiner’s art unit has an allowance rate of 76%. That is, the Examiner has allowed nine out of 199 patent applications.

Applicant mentions this as a reminder that it is not the Examiner’s job to refuse patent applications, but to grant patent applications, as required by the US Constitution, by Patent Office procedure and guidelines, and in a manner consistent with judicial precedent because “too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”

And what happened next? Boom goes the dynamite: 

Epilogue

So here’s where I should stop and tell you that being able to drop knowledge like Michael is another reason you should sign up for BigPatentData. And you definitely should do that. It is certainly worth the next-to-nothing that I charge to try and keep the servers running over here. But alas I am not good at the hard sell and feel compelled to mention a few things.

First, admittedly there is nothing but speculation to suggest that the citation to the examiner’s stats had any effect on his/her decision to allow the case.

Second, for practical purposes, the allowance rate in 3681 (business methods) was nowhere close to 76%. I am guessing that number was a historical total (or was at least based on dispositions reaching back 10 years or more), because in October 2017 — well into the post-Alice carnage — an allowance rate of 76% was certainly not reflective of the current state of art unit 36813. In fact, a look at Sam Refai’s stats:

shows his/her allowance rate over the past 3 years is actually in the top 25% in the 3681 killing fields. That said, looking at the scatter plot above, we can see this allowance was only the 6th allowance from Sam Refai in over two years (s/he was a member of the 0-fer club from June 2015 to May 2017), so, again, kudos to Michael.

1Given that the BigPatentData public knowledge base has only a small fraction of all responses filed over the past 3 years, it is likely that there are others who are citing examiner statistics in their responses, if you are one of them I would love to hear from you.
2 Private knowledge bases are also available in which we can load any file wrappers you like — your file wrappers, another firm’s/company’s file wrappers, your client’s file wrappers, etc. Email [email protected] if you want to try it out.
3Obviously Michael is not to blame for this, he was just using the data he was provided and had no other way of getting since the PTO is certainly not forthcoming with such information.

3 thoughts on “Confronted With Own Stats, Examiner Allows Only 6th Patent in Over 2 Years

  1. Tim*

    I wouldn’t be too confident in this strategy. I love what the atty wrote, as I wholly agree with it, but if I received that on my docket I’d just point you to MPEP 2141.03 III. The Examiner assertains the level of ordinary skill! I get it, you hate it when you get a hard Examiner (I’m very low in my AU), but at least you know if you got the patent it’s strong? Perhaps, as the section reads, “the examiner must ascertain what would have been obvious to one of ordinary skill in the art at the time the invention was made, and not to the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the art at hand,” I am indeed just a genius. (I wonder what Einstein’s allowance rate was.)

    If you wanted to improve that arguement, I’d say something to the degree of “the Examiner, as reflected in their allowance statistics relative to their art unit, is clearly a person of extraordinary {italic} skill, not one of ordinary skill”. List out their years of experience, talk about their degrees, find out what they did their undergraduate research on. Make it clear that the Examiner is assessing the application at the genius level.

    @bigpatentdata Any clever way to determine the intelligence of the Examiner? Do smarter examiners tend to find more ways to reject? How could you pull that out of the data?

  2. David Stein

    I have a story.

    I once had an examiner who issued a first office action citing art that had no relevance, none whatsoever, to the application. The claims included a key phrase that recited the point of novelty, and the office action completely ignored it – pretended it wasn’t there. We presented our arguments and got back a typical non-responsive final office action.

    I called up the examiner and asked for an interview. “I guess we can talk,” she said, “but *nothing you can say will change my mind.*” Literally, those were her words.

    Deciding that I certainly wasn’t going to waste my client’s time and money on that step, we filed an appeal. Four years later, we won. The opinion of the Board was unusually scathing about the examiner’s position.

    So what’s in the next office action? A characterization that the claims might be allowable over the art… but presenting brand-new § 101, 112(a), and 112(b) rejections. Just the kitchen sink. The kicker was that the phrase the examiner didn’t want to acknowledge – and that the Board found to be dispositive over the art – was now the subject of both “lack of written description” and “ambiguous” rejections.

    We didn’t bother filing a reply. Proceed directly to Board, do not pass Go. We’re on our second appeal now. Presuming this one also wins and ends up in a notice of allowance – since the examiner, literally, has run out of cards to play – the patent term adjustment will be at least *eight years*.

    Here’s the kicker. At the time, Examiner.ninja had these stats for her:

    https://imgur.com/a/mC62G

    74 total applications. 0 allowances. 0% allowance rate.

    I’m checking in now, and I find that her stats have improved very slightly: 0ver 200 applications, over 100 abandoned, 5 issued. Allowance rate: Under 5%.

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