In my last post I looked at how one patent examiner statistic — what I termed RCE allowance rate differential — can help inform whether an RCE might be the best option for a particular application. I pointed to one example where two examiners had basically the same overall allowance rate (79% and 80%), but drastically different RCE allowance rate differentials — one had a -42% differential (84% without and 42% with) and the other had a +44% differential (51% without an RCE and 95% with an RCE). I wrote:
So in the case of the latter examiner, it sure seems like a “pay to play” scenario where you get your patent in exchange for the examiner getting those RCE points. In the case of the former examiner, however, you might want to think long and hard about whether you truly have something patentable on your hands before filing that RCE.
This prompted the following comment from a reader:
if the statistics show that a particular examiner allows 84% of the cases in which a first RCE is filed, then the impetus is to file an RCE . . . which just reinforces or validates the stats. In my opinion that is bad practice. I don’t care what the examiner’s stats are, if the rejections are improper and the applicant is entitled to the pending claims and the applicant is willing to appeal, then appeal. Of course the option of the RCE . . . has to be presented to the client, but statistical analysis shouldn’t replace professional judgment and advocacy.
I fully agree. Patent examiner statistics cannot replace professional judgment and advocacy. BUT they can certainly supplement it (which this commenter also agreed with). Because, of course, estimating probabilities (i.e., “statistics”) is an integral part of our professional judgment. For example, the situation referred to by the commenter requires (explicitly or implicitly) estimating the probability that the rejection is in fact improper.
If I am 99% confident that the rejection is improper and that the PTAB would agree, then an appeal may be in order regardless of how much the stats favor an RCE. But what if I am only 50% sure? In that case, I might give the examiner’s love affair with RCEs a little more weight in my calculus.
Also, even in the case where I am 99% confident the rejection is improper, the stats can still be revealing. For example, what if I was 99% confident but then looked up my examiner and saw this:
In this case, I might reflect a little more deeply on my estimate of 99% confidence. This examiner’s overall allowance rate is low, but not extremely so (she is in the bottom 1/3 of all examiners). Her distribution of outcomes for after-final responses suggests she gives them fair consideration (i.e., is not just holding out for RCEs) and, perhaps most persuasively here, she does not write after-final checks that the PTAB can’t cash. She has seen 11 appeal briefs in the past 3 years and answered 10 of the 11. Moreover, she has been completely affirmed by the PTAB in a perfect 16 of 16 decisions over the past three year.
So, given her track record, I would really question whether I was in fact 99% confident that I had an argument I could win on appeal. Maybe I am misunderstanding her position or the cited art. Maybe I am subconsciously relying on biases arising from extra-application knowledge about the invention and/or the client. Maybe I am taking the application too personally and have crossed the line from advocacy to zealotry. Or maybe on further review (possibly with a second opinion from a colleague) I decide I am 99% confident and I am the 2nd of 12 that will prevail with an appeal brief. In any event, its nice to have this extra data to inform my professional judgment.