11/26/2018

Should You Appeal? A Look at Success Rates Before the PTAB on an Individual Rejection Basis


Should You Appeal? A Look at Success Rates Before the PTAB on an Individual Rejection Basis

Ryan Pool

Imagine an applicant faced with a final Office Action containing rejections with which they do not agree. They consider appealing the rejections, but only want to proceed to appeal if they feel they have a better than average chance of winning. Their application faces a rejection under 35 USC § 112 for Enablement and for lacking Written Description. Their application is also rejected under 35 USC § 102 and 103. This should be relatively easy to imagine as it is commonplace. From October 2016-October 2017, the Patent Trial and Appeal Board (PTAB) reported an intake of 11,796 appeals.

Deciding whether to appeal is a rather consequential decision, both in time (pendency remains around 18-24 months on average before a decision is rendered) and in money (government fees alone are almost $3,000 for large entities). Although every case is different and favorable facts make for favorable decisions, it remains helpful and informative to have a correct statistical perspective regarding likely outcomes before the PTAB.

The PTAB produces many statistics for public use including the outcomes of its ex parte appeals. The Board provides these outcome statistics on a yearly basis. A small amount of cases are remanded or dismissed each year, but the three most relevant and most common result types are Affirmed, Affirmed-in- Part, and Reversed. The PTAB reported its results from 2014 to 2017 (through October) as follows: 

 

2014

2015

2016

2017

Affirmed

53.6%

56.9%

57.4%

55.5%

Affirmed-in-Part

12.9%

12.7%

12.9%

13.0%

Reversed

31.3%

28.9%

28.6%

29.9%

 

Our imagined applicant could look at these statistics and reasonably conclude that they should not appeal because the statistical chances of success are low. Even with favorable facts, the USPTO statistics would have them believe they are more than likely going to lose. However, as discussed below, when the cases from which these USPTO statistics are derived are analyzed more closely, one finds that they are misleading, and provide very little usefulness to our imagined applicant in helping to make an informed decision regarding whether they should appeal. The actual rates of success for each individual rejection type vary widely, but almost all offer a much greater success rate than the roughly 30% reversal rate reported by the USPTO outcome statistics.

100 J. Pat. & Trademark Off. Soc’y 320(2018)

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