How to Effectively Respond to a 103 Rejection

How to Effectively Respond to a 103 Rejection

November 2, 2018

Every patent practitioner has been the victim of a 103 rejection that just will not go away. Getting a 103 rejection is both common—a vast majority of patent applications at the USPTO will receive one at some point—and detrimental to prosecution outcomes. Just by way of example, in art unit 3682, 90% of applications receive a 103 rejection. Of those applications that have been resolved (patented or abandoned) in the past two years, prosecution outcomes are significantly better for applications that never received a 103 rejection—in spite of the fact that this group of applications received more 101 rejections!

Arguably, the ability to effectively respond to a 103 rejection is the most important skill a patent practitioner can have. But given that not much has changed in the legal landscape since KSR, many practitioners continue to rely on the same set of legal arguments that they have been using for almost a decade, with no regard for the examiner or art unit they have been assigned.

This type of one-size-fits all prosecution strategy leads to some unfortunate prosecution outcomes, given what we now know about the variability among examiners at the USPTO. Even for examiners working in similar technology areas, the same argument may have a different impact.

In today’s world of big data, there is no excuse for not customizing your prosecution strategy to the examiner or art unit that you’ve been assigned. That includes knowing when the numbers tell a good story for appeal, as well as knowing which legal arguments are most likely to be persuasive with your examiner. If you want to know how a particular legal argument (for example, arguing secondary considerations) has worked for other applicants, simply search through the full text database of image file wrapper documents from LexisNexis PatentAdvisor® for the argument you’re using.

This will lead you to documents containing arguments that have been successful (or unsuccessful) for others, and help inform a more customized response strategy.

Some examiners may not be swayed by lofty case law arguments, but they are more likely to listen if you cite their own body of work against them.

Patent data and prosecution analytics can be leveraged in many ways throughout patent prosecution, and LexisNexis® Intellectual Property provides the tools to give patent professionals the leverage they need.

The PatentAdvisor™ patent analytics platform has become a favorite among patent professionals looking to enhance patent practices and perform as efficiently as possible. 

See how to use patent data to understand USPTO examiners and watch this on-demand webinar to learn current trends in patent prosecution.

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