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Strategic Predictions: Leveraging Art Unit Allowance Rates to Drive the Selection of Appeal Decision Makers

Sameer Vadera and Kate S. Gaudry

©2018. Published in Landslide, Vol. 10, No. 3, Janusry/February 2018, 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.

Upon reaching an impasse with an examiner during prosecution of a patent, an applicant may initiate an ex parte appeal of a rejection, thereby requesting review by the Patent Trial and Appeal Board (PTAB).1 Such action can result in considerable expense and delay.2 However, we previously reported that a substantial portion of appeals are terminated quickly by the examiner, via issuance of either an allowance or office action.3 Thus, initiating an appeal process may result in several different outcomes that significantly differ with respect to delay, cost, and allowance prospects. Data more precisely identifying the probability of each outcome with respect to particular instances may allow applicants to make more strategic and informed appeal-entry decisions.

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