How the Choice of a Rejection Response Can Impact Your Prosecution Timeline

One of the biggest questions every client wants to know is “how long will patent prosecution take?” A corollary to that question is “how much will it cost?” The most honest answer is that every prosecution is different and each application involves its own unique set of circumstances. However, one thing is certain--every office action and response thereto extends an application’s prosecution timeline, and thereby also increases its cost.

There are certain trends that show up, of course, when studying average USPTO timings. For example, responding to a final rejection with an appeal takes much longer to resolve than responding with an RCE or an interview. But what many patent prosecutors don’t know is exactly how much longer each type of rejection response will add onto an application’s prosecution timeline.

Using Juristat’s industry-leading patent prosecution data, we measured the impact of the various types of rejection responses on the average application’s prosecution timeline, as well as the effects that these responses had in combination. To do this, we looked at applications filed between 2011 and 2015, excluding design applications, and analyzed the response to each application’s first final rejection. Hover over the graphs below for details.

Before we began our study, we first wanted to get a clearer picture of how long it took the average application at the USPTO to reach various stages of the prosecution timeline. The key stages we identified were:

• Filing to first final rejection
• Filing to notice of allowance
• Filing to disposition
• First final rejection to notice of allowance
• First final rejection to disposition

We also wanted to know how much more time a post-response rejection added to the prosecution timeline versus a notice of allowance. So, we split all time measurements according to whether the applicant received a either a notice of allowance or another rejection after responding to the first final rejection. Figures 1 and 2 below show a hypothetical prosecution timeline and the average number of months between each prosecution event for each type of application.

Of course, how an applicant chooses to respond to a first final rejection will have a significant impact on that application’s overall prosecution timeline. Figure 3 presents a comparison of how long it takes an average application to reach final disposition (for both Path 1-type and Path 2-type applications) for all types of rejection responses.

Our study also indicates that the type of response an applicant chooses following a first final rejection can have a significant impact on an application’s prosecution timeline. For example, filing an RCE instead of an appeal following a first final rejection can significantly change the time to final disposition. See Figure 4 below to see how big the difference can be.

As shown above in Figure 4, unsuccessful rejection responses add different amounts of time to an application’s prosecution timeline. For applicants who respond with an RCE and are unsuccessful, more time is added onto their prosecution timeline than if they had chosen an appeal, despite appeals generally lengthening prosecution timelines overall. In fact, unsuccessful RCEs add the most time to an application’s prosecution timeline of any response to a rejection, indicating that an RCE is generally a weaker response than an interview or an appeal.

Fortunately for applicants, there are tools available to help make smarter decisions about how to respond to final rejections. Not only do Juristat’s Examiner Reports break down the average number of months between key prosecution events for every examiner at the USPTO, they also provide insight into how successful each type of rejection response is likely to be. If you know that an RCE in front of your examiner only as a 21% chance of success, and you know that unsuccessful RCEs add a significant amount of time onto prosecution timelines, why waste your client’s time and money?

To see how Juristat can revolutionize your patent practice by keeping you informed about final rejection response strategies, give it a try.