Appeals are the least common responses to a final rejection, accounting for only 6.7% of total office actions responses across all tech centers at the USPTO. The reasons behind this are twofold: First, appeals are significantly more expensive than RCEs and interviews, and, second, they take a considerably longer amount of time to be resolved. Thus, given the expense and time involved in appealing a final rejection, it is no surprise why they are so rare.
However, several art units have appeal rates that are significantly above the USPTO average, some with appeal rates 200% greater than that average. Because appeals are so rare, we wanted to investigate which art units had the highest appeal rates. What we were principally concerned with was finding art units that had the highest percentage of applications that had reached either the appeal brief stage or had ended with a pre-brief conference decision. Thus, our figures do not include cases where a notice of appeal was merely filed and no further action was taken on the appeal. See Figure 1 for the top ten art units with the highest percentage of appeals that reached either the appeal brief stage or ended with a pre-brief conference decision. Hover over the graph for detail.
As readers can see from Figure 1, 8 out of 10, or 80%, of the top 10 most appealed art units are in Technology Centers 2100 and 2400. This likely has much to do with the types of technologies these tech centers handle. TC 2100 covers “computer architecture, software, and information security,” while TC 2400 covers “computer networks, multiplex communication, video distribution, and security.” Given the challenges recent patent jurisprudence has caused to applications dealing with software and the computer sciences, it’s not difficult to imagine why many practitioners would want issues in their applications to be resolved by a higher authority like the PTAB.
When it comes to the method of disposition for these appeals, there is great variation. For example, over 80% of appeals in art unit 2177 make it to a PTAB decision, while only 31% of those in art unit 2415 do so. See Figure 2 for a full breakdown of the method of disposition for all appeals in these art units. Hover over the graph for detail.
Note: "PTAB" dispositions include those in which the PTAB made a final decision, while "Non-PTAB" dispositions include final outcomes that did not involve the PTAB, such as the examiner withdrawing the rejection and reopening prosecution, or the appeal being ended by a pre-brief conference decision.
Of course, as we have noted previously, a high appeal rate does not necessarily indicate a high appeal success rate. Because every examiner is different, a practitioner should only appeal a final rejection if an appeal is likely to be the most advantageous course of action for that particular examiner. It very well may be the case that appeals are particularly successful in these art units, but, if you practice in them, you wouldn’t want to assume that without backing your findings up with proof, given the expense and time involved in appeals.
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