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 is 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). To see how this plays out, let’s look at the data for some specific examples.
Over the past 3 years, 31% of examiners have always responded to a Pre-Appeal Conference Request with “proceed to appeal.” Of those, Examiners Michail Itskovich and Ileana Popa are tied for the most such decisions with 20:
The flip side is that 49% of examiner proceed to appeal less than half the time. Examiner Vanel Frenel, for example, has reopened 21 times (plus 1 allowance) vs. proceeding to appeal only 5 times:
If you have an examiner like this, a pre-appeal request might be worth it because there is a good chance you will get an allowance or reopening of prosecution without having to file an RCE (which will add delay and cost more) or having to prepare a full-fledged appeal brief (which will cost more in attorney/agent fees).
Appeal Brief Answer Rate
What if a pre-appeal request 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 considering whether to call the examiner’s bluff with an appeal brief, the appeal brief answer rate for your examiner can help inform that decision. For example, looking again at examiners Itskovich and Popa:
As you can see, Examiner Itskovich very rarely folds his cards upon receiving an appeal brief. He answered the appeal brief 89% of the time (putting him in the top 12% of examiners). 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.
As for Examiner Popa, she answered 67% of appeal briefs while mixing in a couple reopenings and even a few allowances.
For purposes of comparison, let’s again look at examiner Frenel:
Here you see that Frenel answers very few appeal briefs, but, as we will see in the next section, he picks spots wisely. So, with an examiner like examiner Frenel, even if you have no intention of going all the way to the PTAB, it might be worth filing an appeal brief to try and get an allowance or at least reopen prosecution without having to file an RCE. BUT! If examiner Frenel does answer your appeal brief, you should probably think very carefully about how strong your position really is.
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.
Looking again at examiners Itskovich and Popa, the result of lots of appeal briefs and high answer rates is that both are in the top 1% of examiners in terms of number of PTAB decisions (30 and 31, respectively). But that’s where the similarity ends. Examiner Itskovich is very willing to bluff all the way to the board (fully or partially reversed 80% of the time). Examiner Popa on the other hand is usually holding pocket aces (completely affirmed 80% of the time). So if an examiner like examiner Itskovich answers your appeal brief, you may not hesitate to go all in. But if examiner like examiner Popa answers your appeal brief you should think very carefully about what cards she might be holding.
As for examiner Frenel, as mentioned above, he picks his spots wisely. Of the 5 appeal briefs he answered, the applicant folded (did not go to the board) in 3 of them and he was completely affirmed in the other 2. If an examiner like examiner Frenel is willing to go to the board, your hand may not be as strong as you think it is.
Finally, here’s what the three metrics discussed in this post look like across technology centers over the past 3 years: