Rejections are a fact of life for most patent prosecution professionals, and so is overcoming them. Each response to a rejection represents a considerable investment of time and money, and prosecution professionals need to know which approach is the most likely to succeed.
Since 2000, over 285,000 disposed patent applications - more than 5% of all disposed applications - record an appeal filing. While appeals are fairly common, they can be a risky response, particularly as lost appeals are associated with much lower eventual allowance rates.
Overall, the allowance rate for applications with an appeal is more than eight percentage points lower than for applications without an appeal. The overall number, though, masks a substantial difference in the eventual allowance rates between applications that have successful appeals and those that do not.
Among applications that have only winning appeals, more than 88% are eventually allowed. For applications with some appeal wins and some losses, the eventual allowance rate drops substantially, to just over 28%. FInally, among those applications with only unsuccessful appeals, the allowance rate drops even further to just 20.2%.
Art Units also have different average allowance rates after appeals, an important consideration to keep in mind when setting expectations for a patent prosecution. Which Art Units are most amenable to allowing patents after appeal? Below is our list of the ten art units with the highest and lowest allowance rates among applications with only winning appeals:
The clear effect that appeals have on eventual patent allowance makes it imperative that patent prosecution professionals use tools like Juristat’s Examiner Reports to understand how likely an appeal is to further their prosecution goals. Our tools empower you to see which examiners and art units are most receptive to appeals and to plan strategically before an appeal becomes necessary. Ask us to see more or see it for yourself.