[Patentpractice] New Examiner?

[Scott Nielson]

Regarding PTAB stats, this page<https://www.uspto.gov/patents/ptab/statistics> has what you are looking for. In FY 2023<https://www.uspto.gov/sites/default/files/documents/fy23_appeal_receipts_and_dispositions_september2023_.pdf> (just ended in Sept), the PTAB affirmed the examiner 58.3% of the time, affirmed-in-part 9.1% of the time, and reversed 31.9% of the time.

I file a lot of appeals and I've had good luck. However, I just lost one the other day where the PTAB rehabilitated the examiner's lousy rejections (complete with new grounds of rejection for some of the dependent claims I thought we would for sure win on). It goes to show that there is always an element of uncertainty when you go to the Board.


Scott Nielson

801-660-4400

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Katherine Koenig via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Tuesday, December 5, 2023 6:42 PM
To: patentpractice at oppedahl-lists.com <patentpractice at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: [Patentpractice] New Examiner?


Hi everyone,



I’m prosecuting a US-inbound case for a mechanical product.  I’ve had a terrible go with the Examiner, who appears to be steered by his SPE’s opinion about the case.  According to PatentBots, the Examiner has a 64% 3-year grant rate (slightly lower than his art unit) and his SPE has a 0% 3-year grant rate (slightly lower than [insert villain here]).  The client is an FA, and he and his client are both really hoping for a better chance of patentability.



My understanding is that there’s no way to request a different Examiner, and even DIVs, CONs, and CIPs are likely to be assigned to the same Examiner.  The only way to get a different Examiner is to present claims that would move the application to a different art unit.  Is this correct?  I hope someone has a magic strategy that I don’t know about!



Statistically, does the PTAB uphold a rejection more often than it reverses?  Any input or suggestions would be welcome, thank you!



Best regards,



Katherine



Dr. Katherine Koenig

Registered Patent Attorney

Koenig IP Works, PLLC

2208 Mariner Dr.

Fort Lauderdale, FL 33316

(954) 903-1699

katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>



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