Pre-Appeal Brief Review Statistics.
Patently-O has recently compiled some rough statistics related to appeals and the pre-appeal brief review process. Of particular interest to us at AT! was the Pre-Appeal Brief Review (PABR) statistics. (See also the previous AT! post SARPABR – Should it be added to your patent vocabulary?).
Based on the limited sample size that Prof. Crouch analyzed (87), the applicant won roughly 35% of the time (7% outright allowances and 28% reopened prosecutions). In roughly 55% of cases, the USPTO decided to proceed to the BPAI. The remaining cases were defective or their status was unknown.
Now, based on some of the comments from the esteemed readers of Patently-O, you would think that the PABR procedure was a “waste of time.” However, we strongly disagree. In our personal experience (albeit a much smaller sample size than even Patently-O analyzed), the success rate with the PABR is about 50%. We also have not seen a bias providing positive results with § 102 rejections and less positive results with § 103 rejections.
In any case, if a practitioner were planning to proceed with an Appeal, the filing of the SAPABR costs nothing more than the Notice of Appeal itself. Thus, the PABR is a potential cost savings tool that practitioners can employ. Assuming that Prof. Crouch’s numbers are sound, the procedure could represent a cost savings for the client at least 35% of the time by removing the necessity of filing an Appeal Brief (with the associated fee). The SARPABR along with the Notice of Appeal is also a savings over filing an RCE (with the associated fee).
The process is most definitely not a “waste of time,” particularly in cases where Applicant feels that the Examiner has made a clear error in facts or that a prima facie case has not been established.