Deciding when to walk away from a patent application may be one of the most challenging aspects of patent prosecution. Experience helps guide you to decide when it is best to make divestment decisions—but hard data can shed light on facts to help you make a more informed decision.

Examiner interviews have been shown to potentially salvage a patent prosecution effort that might otherwise have been headed for failure. Sometimes, though, even an interview is not enough to put an application on a clear path to allowance. If, after the interview, an examiner has signaled that he is likely to reject an application, the list of prosecution options may include abandonment, Request for Continued Examination (RCE) or the appeals process.

Putting abandonment on the list of options may help ensure that you remain cognizant of the total cost of your efforts as you continue working to secure the patent. A dispassionate awareness of the price tag can help keep a patent prosecution effort that has little chance of succeeding from turning into a black hole of time and money.

Analyzing USPTO patent application data using a robust patent data intelligence tool can reveal the frequency with which patent applications in a particular art unit reach the RCE or appeal stages. Evaluating such data at the art unit level can give an idea of whether the delay slowing down an individual application is typical or atypical.

A Closer Look at Art Unit 2624


The interview statistics from Art Unit 2624, Image Analysis, shows some discernable patterns. The examiners in this art unit have approved about three-fourths of the nearly 26,000 applications received since November 2000.

About one in five of those applicants filed a RCE, and many of those—about 40 percent—quickly yielded benefits: An immediate Notice of Allowance. Between one-fifth and one-quarter of the RCE filers, however, had to file at least two RCEs before a patent was issued.

Ultimately, though, filing a RCE seems to be an excellent prosecution strategy in Art Unit 2624: Nearly 85 percent of the applicants that have done so have been issued patents.

Generally speaking, applications in this art unit have also fared well in the appeals process.

According to the art unit data intelligence analysis, about three quarters of the patent applications that received final rejections and went through at least one appeal cycle eventually went on to receive patents. It is notable, though, that most of that success took place before the appeals reached the Patent Trial and Appeals Board (PTAB). Of the 102 cases that reached the PTAB, applicants prevailed in fewer than half. Most of the losing applicants subsequently abandoned their prosecution efforts.

Viewed together, these numbers are encouraging, but determining whether the advanced stages of patent prosecution are likely to lead to an allowance depend greatly upon the examiner assigned to your application.

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