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The Appeal Process: The Statistical Likelihood of Success

Kate S. Gaudry and Sameer Vadera

©2016. Published in Landslide, Vol. 8, No. , March/April 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

During prosecution, an applicant may reach an impasse with an examiner regarding the patentability of claims in a patent application. In this situation, the examiner may not be persuaded that the claims distinguish over cited references, regardless of the applicant’s argument or amendment efforts. Filing additional amendments, conducting in-person interviews with the examiner and the examiner’s supervisor, or filing pre-appeal brief requests for review may do little to advance prosecution. Many of these efforts merely provide additional opportunity to present one’s case to the examiner and/or the examiner’s supervisor, such that the opportunity is of reduced value if these discourses have been unproductive. Generally, applicants can incur significant costs and delay by continuing prosecution without obtaining meaningful results.

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