I find ex parte appeal analytics at the USPTO, specifically from LexisNexis PatentAdvisor, to be the most straightforward and informative patent prosecution analytics when it comes to searching language in patent prosecution documents and the resulting impact.
Reviewing patent analytics for language used in Office Actions and Responses to Office Actions can be interesting, but it is not currently possible to show direct results. For example, if I am searching for language in Responses to Office Actions using PatentAdvisor’s File Wrapper Search feature, I can only view analytics of what happened to the cases as a whole, and cannot see the direct result from the Responses. In other words, I cannot see if a Response to Office Action including the searched language led to a Notice of Allowance, or if a later Response to Office Action led to a Notice of Allowance.
Searching ex parte appeals is more straightforward. You can almost always see if an Appeal Brief, or Board Decision, or Examiner’s Answer including the searched language resulted in an appeal win, or an appeal loss. In the context of ex parte appeal decisions, PatentAdvisor defines an appeal win as a PTAB decision where the next immediate action was an allowance or an Office Action, and defines an appeal loss as a PTAB decision where the next immediate action was an abandonment or Request for Continued Examination (RCE).
When an Appeal Brief is filed by a patent applicant within the USPTO challenging an examiner’s rejection, an appeal conference is held. There are three participants at each appeal conference – the examiner, and two other experienced examiners. If the participants in the appeal conference determine the examiner’s rejection is proper, an Examiner’s Answer is issued responding to the Appeal Brief. When recently reviewing an Examiner’s Answer, I noticed that one of the appeal conference participants was a Quality Assurance Specialist (QAS). As the name implies, a QAS selectively reviews patent applications for the purpose of insuring the examination meets the USPTO’s quality expectations. For more details on appeal conferences and QASes, check out John Russell’s post HERE (if you are not reading John’s blog https://www.mriplaw.com/, you are missing out on a wealth of knowledge).
John and I have had a few chats about appeals, and he gave me the idea of searching to see if having a QAS as a participant in an appeal conference that resulted in an Examiner’s Answer impacted the appeal win rate. I could see an applicant or patent attorney possibly being intimidated by a QAS signing the Examiner’s Answer, as if it carried greater weight than other Examiner’s Answers, then not proceeding with the appeal.
First, using PatentAdvisor’s FileWrapper Search, I searched all Examiner’s Answers for “Quality Assurance Specialist,” and narrowed the results down to patent applications disposed (abandoned or granted) since 2017. Then, I compared the win rates to all PTAB decisions for the same period. Here are the results:
Overall, a QAS signing off on an Examiner’s Answer as a “Quality Assurance Specialist” does not impact win rate by much of a margin – it only decreases the win rate by 1.3%. Perhaps the presence of a QAS in an appeal conference helps to skim off more bad rejections than an appeal conference without a QAS, but it certainly does not mean an appeal is doomed at the PTAB. So do not change your approach simply because “Quality Assurance Specialist” appears on an Examiner’s Answer.
Breaking it down by technology center, TC 1700 and TC 2800 make up a majority of the cases with a QAS signing off on an Examiner’s Answer as a “Quality Assurance Specialist,” and in both of these tech centers, the impact was especially minimal.
The only TC where a meaningful percentage (greater than three percent) of Examiner’s Answers had a “Quality Assurance Specialist” signoff and a win rate decrease of greater than 2% with a “Quality Assurance Specialist” signoff was TC 3700. It was a 10.6% decrease compared to overall numbers. This seems to suggest that QASes in TC 3700 are more involved in the appeal process, or are knowledgeable when it comes to case law. In other words, they are reasonably adept at figuring out when an Examiner’s Answer should be written, and when an application should be allowed or prosecution should be reopened.
I knew that technology centers at the Patent Office often have different procedures than each other, but the huge discrepancy struck me as strange. I then took a look at an Examiner’s Answer signed by a person I knew was a QAS. Instead of this person signing as a “Quality Assurance Specialist,” the person signed as “Supervisory Patent Examiner, Art Unit 1700.” This made me realize that my original search was not casting as broad of a net as I needed, so I took a look at each of the USPTO’s TC Management Rosters. For example, comparing the rosters for TC 1700 (here) and TC 2100 (here), the difference is striking. TC 1700 generically lists eight different Quality Assurance Specialists, whereas TC 2100 lists only two QASes, both MQAS (Management Quality Assurance Specialists).
I then played around with searching to capture more Examiner’s Answers signed by QASes (or Directors), and ended up searching, for example for TC 1600: “Quality Assurance Specialist” OR “RQAS” OR “TQAS” OR “QAS” OR “MQAS” OR “art unit 1600” OR “Supervisory patent examiner, TC 1600” OR “technology center 1600” OR “tech center 1600”. I did this for each tech center, then filtered the results using the tech center of interest. Here are the results:
Search #2 showed that overall, a QAS signing off on an Examiner’s Answer impacted win rate even less than in Search #1 – it only decreases the win rate by 0.6%.
The updated search captured significantly more appeals for TC 1700, TC 2800, TC 3600 and TC 3700. For TC 1700 and TC 2800, the decrease was again less than 2%.
For TC 3600, whose business method art units are notoriously difficult, a QAS signing off on the Examiner’s Answer actually increased the win rate by 4.2%.
TC 3700 again had the largest decrease in win rate amongst the tech centers with the highest percent of Examiner’s Answers with a QAS signoff, but only 6.5%, which is less than in Search #1. TC 2100, which had a lower percent of Examiner’s Answers with a QAS signoff than in Search #1, had an even greater decrease in win rate when Examiner’s Answers had a QAS signoff.
My first takeaway from these searches is that a QAS indicating your Appeal Brief is wrong does not meaningfully change anything. If you think the Examiner is wrong, do not pull back simply because a QAS signed off on the Examiner’s Answer.
My second takeaway is that it is shocking how different QAS involvement is in each tech center. If you are appealing in a tech center with a high rate of QAS involvement, try reaching out to one of the QASes if you think the examiner is egregiously wrong and the supervisor is not being helpful.
And most importantly, keep appealing bad rejections!