[Patentpractice] New Examiner?

Wed Dec 6 15:35:06 EST 2023

Thank you to everyone who replied.  My impression of chances of success were closer to what Scott had written, but I’m very glad to see David’s numbers!

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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Targeted Intellectual Property Strategy

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Patentpractice
Sent: Wednesday, December 6, 2023 7:15 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Patentpractice] New Examiner?

Scott's 60% affirm rate isn't the whole story.  Some years ago (like 15) I asked for ALL the statistics by Freedom of Information Act.   When you add up --
      -- reverse on pre-appeal
      -- examiner can't write an Examiner's Answer and gives up
      -- Board reverses
the win rate is 70-80%   The Board affirms only about 20% of appealed issues.

This varies a lot by technology and issue.  For example, the affirm rate for § 101 Alice issues is much higher than for § 112 and § 102/103

On Tue, Dec 5, 2023 at 9:50 PM Scott Nielson via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
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<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Katherine Koenig via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Tuesday, December 5, 2023 6:42 PM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Katherine Koenig <katherine at koenigipworks.com<mailto: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>

[cid:image001.png at 01DA2858.54B852D0]

Targeted Intellectual Property Strategy

The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above.  If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited.  If you have received this communication in error, do not read it.  Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies.  Thank you.

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