Even when abandoning a patent application makes clear business sense, walking away from that effort without a tangible return can be difficult.
Making such a decision can be complicated by the traditional obscurity of the patent prosecution process. How can patent professionals meaningfully assess a stalled application’s chances for eventual success? Once you have already put forth the best possible arguments for your application, a lot of guessing can be involved.
However, the ways in which USPTO art units and individual patent examiners tend to handle certain types of applications are not completely opaque, especially through the use of high-powered patent data analytics.
When analyzing operational statistics for Art Unit 2624, Image Analysis, the art unit data revealed that Requests for Continued Examination (RCE) and appeals of unfavorable examination results were both effective prosecution strategies for applications submitted to the art unit as a whole.
As with deciding when to request an interview, though, the particular examiner who is processing your application can make all the difference when deciding whether to abandon prosecution. Is that second RCE you are about to file an exercise in futility or a mile marker on the road to a patent? The data on individual examiners can strongly suggest the answer.
One examiner working on applications in Art Unit 2624 has processed 1,000 applications, granting patents on about 93 percent of them. Only 9.3 percent of the applicants were moved to file a RCE, and more than two-thirds of them immediately received Notices of Allowance after doing so.
Only nine of this examiner’s applications ever have gone into an appeals cycle, and most of those were resolved in favor of the applicant. None needed a hearing before what, at that time, was the Board of Patent Appeals and Interferences (BPAI).
Contrast these numbers with the statistics for one of tougher examiners in the art unit, who has granted patents on fewer than half of her cases.
Of the 99 applications that eventually received patents from this examiner, 57 applicants had to file at least one RCE before she issued a notice of allowance. That is nearly triple the average rate of RCE filings for the art unit’s examiner corps overall.
Of those 57 ultimately successful applications, 18, or only about 32 percent, received an immediate Notice of Allowance following the applicant’s first RCE. Another 13 of those 57 applicants wound up filing two RCEs or more.
Perhaps not surprisingly, applicants working with this examiner have filed appeals at more than 2.5 times the average appeal rate for Art Unit 2624.
On balance, deciding to appeal was a wise choice on the applicants’ parts. Of the 23 appeals of this examiner’s applications, six were resolved in the applicant’s favor during a pre-appeal review at the USPTO. Another six were won by the applicants, including three allowances, after the applicants filed their appeal briefs. Two of her cases, however, went all the way to the PTAB after she submitted replies to the applicants’ appeal briefs. One case went in favor of the applicant, and the examiner’s objections were upheld in the other.
As the PatentAdvisor Prosecution Guidebook notes with regard to this examiner, she is “unlikely to allow an application in the appeal process to ever actually make it far enough for a PTAB Decision to be issued.” On those two applications, however, she did. Clearly, she liked her arguments’ chances.
The applicant that lost its PTAB case against this examiner ultimately abandoned the application 10.5 years after it initially was filed and more than five years after filing a second RCE. That was not merely the longest pendency of any application processed by this examiner, but a longer pendency than any successful application processed by Art Unit 2624 since November 2000.
Keep your prosecution effort’s ROI in view. If it is already deep in the red, data can help you estimate whether your next step really is likely to pull it into the black.