Insights: Alerts 5 Takeaways: Ex Parte Appeals: A Multi-Year & Expensive Trajectory or an Allowance within 2 Months?

Written by Kate Gaudry and Sameer Vadera

Kilpatrick Townsend attorneys Kate Gaudry, Ph. D. and Sameer Vadera recently presented to the Intellectual Property Owners Association (IPO) Software Related Inventions Committee regarding “Ex Parte Appeals: A Multi-Year & Expensive Trajectory or an Allowance within 2 Months?”

5 Key Takeaways from the presentation include:

Options after receiving a Final Rejection:

  • Abandon application
  • Keep working with the examiner (e.g., interview, file Request for Continued Examination)
  • Engage a supervisor (via a Pre-Appeal Brief Conference or requesting supervisor’s attendance at an interview)
  • Initiate an appeal to the Patent Trial and Appeal Board (PTAB)

Traditional opinions of disadvantages of an appeal:

  • Delay: PTAB decisions generally are not issued until years after the appeal is initiated
  • Expense: Notice of Appeal ($800, PTO fee for large entity) + Attorney fees for drafting an Appeal Brief (industry average of $5800) + Forwarding Fee ($2000, PTO fee for large entity)

Research Result #1 — Many appeals receive quick and positive results:

  • 20% of appeals are pulled from the appeal cycle by an examiner/supervisor via an allowance (before an Examiner Answer, which is within approximately 2 months from an Appeal Brief filing)
  • An additional 20% of appeals are pulled from the appeal cycle via a new office action (before an Examiner Answer), and most of these cases end up being allowed
  • Thus, 40% of appeals avoid the multi-year delay and $2000 Forwarding Fee

Research Result #2 — Applications assigned to art units with higher allowance rates are more likely to have quick and positive results:

  • There is a positive correlation between an art unit’s allowance rate and a probability of an examiner/supervisor pulling an appeal from the appeal cycle before an Examiner Answer (within approximately 2 months)
  • There is a positive correlation between an art unit’s allowance rate and a probability that any early-appeal exit is an allowance (versus an office action)

Conclusion — Appeals offer different advantages in different circumstances:

  • Applications assigned to an art unit with a low allowance rate: opportunity to engage other decision-makers not associated with such dismal statistics
  • Applications assigned to an art unit with a high allowance rate: substantial probability of receiving a quick allowance
  • Advantageous to use high-level and application-specific statistics to inform prosecution decisions

Kate Gaudry

Senior Associate

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