Knowing an examiner’s allowance rate is one of the best indicators of how difficult a patent prosecution will be. Understanding how an examiner has performed in the past allows patent professionals to manage client expectations and structure a prosecution strategy that maximizes an application’s likelihood of allowance.

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,...
When we think about the technologies that have changed the face of the world and built the modern era, it is impossible to forget or ignore the role of the automotive industry. The automotive industry and the broader sector that it supports defined more than two generations of economic prosperity and mobility in the United States. The automobile in many ways marked the maturity of the...
Overcoming rejections is a regular part of a patent prosecutor’s practice. Broadly speaking, there are three main ways to try and overcome an examiner’s rejection: appeal, request for continuing examination (RCE), and interview with the examiner. We have previously looked at how appeals have affected application allowance since 2000, and look now at interviews and RCEs.
Patent professionals are increasingly using data analytics to streamline the pathway from initial filing to notice of allowance. Platforms like Juristat not only help ground strategic decision making prior to and during prosecution, but can also inform strategic decisions that guide business development for firms and counsel selection for patent assignees.
Juristat Search Now in Public Beta We're excited to announce that Juristat's new search feature is now in Public Beta. Many of you helped us with valuable feedback in our silent Beta release, so thank you for all your feedback, patience, and support!
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...

Appeals and Allowance Rates

November 02, 2017
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.
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...