James Cosgrove

Recent Posts

The USPTO: A Snapshot

January 17, 2018
An Overview of Patent Prosecution Trends at the USPTO Since the Year 2000   Since the year 2000, there have been major shifts in law, policy, and the technological landscape that have had profound impacts on patent prosecution practice at the USPTO. Although we often focus our analytics on small corners of the USPTO, such as individual industries, art unit groups, and practice entities, we...

Juristat 2017 Year in Review

December 29, 2017
Over the past year, we have published articles covering a wide range of topics, from handling Alice rejections to a study of the ATF industries to the Juristat Top 100. In each of them, we have tried to lift the curtain on the inner workings of the USPTO and various industry players in order to give you, our readers, a more informed outlook on the practice of patent prosecution. Of course,...
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...
In July of 2016, we published an article titled “The Most Difficult Examiners at the USPTO,” in which we identified the top 10 patent examiners across all art units whose allowance rates were the lowest. For most patent prosecutors, their examiner’s allowance rate is the clearest indicator of the overall difficulty of prosecuting a patent with that examiner, since a low allowance rate means that...
ELIGIBILITY & METHODOLOGY Much like the Juristat Top 100, this list is unique in that it considers both volume and performance. Our ranking is based on four key metrics, as measured from January 1, 2011 to December 31, 2015. These metrics are:
In the three-plus years since Alice was decided, we’ve seen the case take quite a toll on the viability of patent applications in the software, e-commerce, and business methods art units. In these technologies, allowance rates have plunged, abandonments have skyrocketed, and a general sense of pessimism has pervaded the industry. However, the effects of Alice, while significant for certain tech...
The AFCP 2.0 program was established in 2012 to provide applicants with an alternative to RCEs. The purpose of the program is threefold: 
As precursors to the more wide-ranging Alice decision and the USPTO guidance that came after it, the impacts of the Mayo and Myriad decisions have gotten somewhat lost in the scuffle of all of the attention paid to § 101 rejections in the software and business methods technology sectors. While Mayo and Myriad were limited to patent applications touching on laws of nature, these two cases...
In 2017, big business is all about data. We see it being used in almost every industry, from healthcare, to financial services, to aviation, and beyond. One large industry that has been slow to adapt to the use of data analytics is the legal industry, where statements like “that’s the way we’ve always done it” carry more weight than they do in an industry like, say, healthcare. However, the legal...
Ever since Mayo was decided in 2012, the percentage of § 101 rejections on biotech, pharma, and life sciences applications has been on the rise, from 4.9% before Mayo to 8.6% after Myriad to 15.7% after Alice. A total of about 37% of all § 101 rejections in Technology Center 1600, which handles the bulk of these types of applications, now cite either Mayo or Myriad. This is bad news for...
On August 10, 2017, we presented a webinar titled "Biotech, Pharma, & Life Sciences at the USPTO" where we examined the state of patent prosecution in Technology Center 1600. If you have not seen that presentation, you can view it below. 
In addition to being more expensive than RCEs and interviews, appeals also take much, much longer to reach a resolution. It takes an average of 33 months for an appeal at the USPTO to make it from the notice of appeal stage to a final PTAB decision on the merits. That is a significant amount of time (almost three years, in fact), for an application’s outcome to be up in the air. This perhaps...
As we have previously reported, Michelle Lee recently stepped down from her post as Under Secretary of Commerce for Intellectual Property and Director of the USPTO. This move was abrupt and took most in the IP world by surprise. As such, her resignation has raised many questions about the future of the USPTO and about American IP policy more generally. In this post, we will examine Michelle Lee’s...

Alice: Three Years On

July 19, 2017
Overview  Few decisions in the patent law space in the last decade have made as many waves as Alice Corporation Pty. Ltd. V. CLS Bank International, et al., 573 U.S. ___ (2014). Decided on June 19, 2014, the case was a landmark decision that significantly altered the way the courts and the United States Patent and Trademark Office (USPTO) handle...
As we mark the three-year anniversary of the Alice decision, the case’s effects have come into focus quite clearly. About 64% of all § 101 rejections now cite Alice, and that percentage has only been on an upward trend since the case was decided. Applicants who receive a § 101 rejection have about a 61% chance of getting around it, but that chance drops to about 50% if the § 101 rejection cites ...
One of the most commonly-cited disadvantages to choosing an appeal as a post-final rejection strategy is that, in addition to being expensive, they are also quite slow. For applications in which there was a final PTAB decision on the merits from January 1, 2011 to December 31, 2015, the average length of time between the filing of a notice of appeal and a PTAB decision was 33.4 months. Compare...
Here at Juristat, we occasionally like to take a step back and take a look at patents in a little more jovial manner, especially around major holidays. We've written about fun Fourth of July patents before, but we've got a fresh batch of them for 2017. We hope you enjoy some of the fun patents we found, and that you have a safe and happy Fourth of July. 
When an appealed patent application makes it all the way to the PTAB and there is a final decision on the merits, the panel will affirm or reverse the examiner’s rejection, either in whole or in part. If the board reverses the examiner in whole or in part, we consider that outcome to be a win for the applicant, since it means their appeal was at least partially successful. If the board affirms...
The USPTO’s Track One program is for applicants who want a patent as quickly as possible. Known officially as the “Prioritized Patent Examination Program,” the USPTO promises a final disposition within 12 months for applicants who participate in the program and who pay the $4,000 fee for the privilege. To be eligible for participation in the program, an application can have no more than four...
Most applicants request a pre-appeal brief conference (hereinafter referred to as “PBC”) as a strategy to receive a decision about an appeal without going through the hassle of preparing an appeal brief and arguing it all the way to the PTAB. A PBC can end in one of three ways: the panel can allow the application, reopen prosecution, or issue a decision to continue. If the panel chooses the...