Guide your patent prosecution strategy with Anticipat

We at Anticipat are excited to announce a new product called Practitioner Analytics. The tool helps practitioners use what is found to be successful on appeal at the Board in all aspects of routine patent prosecution. But before we explain the tool, we touch on some present realities of a patent practitioner responding to an Office Action.

Status Quo
As a patent professional, you may spend a lot of time reviewing Office Actions and determining response strategies. You may wade through each Office Action rejection-by-rejection. The complexities of patent law make this process difficult and time-consuming.

The gut feeling is a powerful way for the practitioner to approach each rejection. Maybe for one rejection, based on your experience and/or knowledge of the patent laws, your gut feeling tells you that the Examiner brings up a good point and you consider amending the claims. For another rejection, based on this same experience and knowledge, you see that a rejection is unreasonable so you consider traversing the rejection without amending the claims. For other rejections, you may initially not know how to proceed due to a lack of experience or up-to-date knowledge of the rejection.

So a practitioner’s gut feeling can guide the strategy in responding to the Office Action only so far, especially with constant developments in the law. In addition to being inefficient, there’s always a chance that the practitioner’s own experience is incomplete. Plus, this whole process can be difficult to gauge the strength of your strategy.

Furthermore, the client‘s preferences can make the strategy even more complex, necessitating diving into seldom explored areas of patent law. For example, the client may be intent on maintaining a certain claim breadth to safeguard entrants into the market or to cover a competitor product, which makes the patent prosecution strategy more difficult. Hence you may have to rely on a less persuasive strategy in overcoming a particular rejection.

With all the complexities that go into patent law, do you ever feel like there must be a better way to keep current on response strategies in a more efficient, fact-based way?

Luckily, there is a large body of appeals decisions at the PTAB where judges routinely overturn Examiner rejections. The judges apply the rules and laws using the same arguments and legal support that Applicants can use to overcome rejections in responding to Office Actions. If an argument works before the Board, that argument has high odds of ultimately winning out. So in a way the Board weeds through much of the possible argumentation and distills the arguments effective in overcoming all kinds of rejections. And because of the sheer volume of appeals decisions, these decisions include rationales for overcoming practically every ground of rejection. Plus, because the decisions are authored by independent judges at the PTO, they are an accurate reflection of the standards and arguments used to scrutinize both Examiner and Appellant arguments.

The only problem is that these decisions are posted in bulk form with minimal search capabilities, the content of each decision is disorganized, and manually wading through the decisions is horrific information overload.

Also, the USPTO overly simplifies decision outcomes, which does not tell you very much about what happened in any given appeal decision. So how do you make use of the data in the thousands of appeals decisions that issue every year?

Solution: Anticipat Practitioner Analytics

Anticipat Practitioner Analytics provides more than statistics. It is a PTAB legal research tool that can quickly get you helpful fact-based information about arguments and strategy you can use for a specific application. How does it do this?

Practitioner Analytics powerfully and efficiently guides prosecution strategy. By inputting an application number into the Analytics search engine, the page returns lists of decisions where the Board reversed for various possible rejections.

This can help practitioners in three important areas

Area 1: Organize persuasive arguments
Practitioner Analytics organizes rationales that the Board uses in reversing an Examiner’s ground of rejection. It does so by aggregating reversal rationales at the Board by each organizational level in the Office (Examiner, art unit, tech center). The specific legal rationales argued before the Board in each of these organization levels is listed underneath a bar chart showing real reversal rates at each level. At the click of a mouse the practitioner can select the legal issue in their specific case and see how it was treated in Board decisions coming from the Examiner involved, the Examiner’s Art Unit, the Tech Center, and then across the entire USPTO. The Practitioner can then compare the facts in their case to those cases in a list of decided appeals cases where this issue was involved to further predict the outcome before the PTAB.

Practitioner Analytics improves the caliber of argumentation and saves time in legal research by organizing and ranking persuasive reversal rationales for each Examiner, art unit, tech center, and global USPTO levels for each ground of rejection.

Area 2: Assess strength of rejections
Appellants typically won’t spend the time and money on a full appeal if they’re not sure of their position. Similarly, weak Examiner positions tend to get weeded out by the preappeal conference and appeal conference. So the appeal decision is actually a good objective data point for what kinds of rejections the Examiner corps is not incentivized to back down from but still will lose at the Board. This information is invaluable when deciding whether to pursue an appeal or not.

Anticipat provides you with the percentage of reversed decisions at each level (Examiner, art unit, tech center, USPTO). The higher the reversal rate, the less reasonable the Examiner’s rejection.

This reversal rate information enhances a professional’s anecdotal experience by identifying anomalies in how a particular ground of rejection’s reversal rate at the Board compares to other groups. This can guide a practitioner’s strategy in responding to Office Action rejections. That is, knowing how this particular Examiner or art unit’s reversibility rate compares with other groups can suggest when to hold firm to a position. For practitioner’s with relatively little appeals experience in a particular technology, this data instantly tells you what is working and what is not, without having had to spend years learning in the School of Hard Knocks.

Area 3: Get favorable case law straight from the Board
Practitioner Analytics also stores the legal support cited by the Board in each particular decision for each legal issue (tag) identified.

This means that in the aggregate, Practitioner Analytics provides the case law/MPEP/guidelines relied on to reverse or affirm the Examiner for each particular rationale at a mouse click, allowing you to keep current on relevant case law now being used by the Bard and identify trends in persuasive legal authority used specific to the rejections in a specific case.

With Practitioner Analytics, you can use successful approaches at the Board in your own practice without having to wait decades to gain experience.
Practitioner Analytics empowers you with knowledge about the strength of rejections at examiner, art unit and tech center levels
Practitioner Analytics provides a simple and intuitive interface so that you can quickly identify successful reversal rationales for examiner, art unit and tech center specific information
Pracitioner Analytics keeps you up to date on specifically tagged legal issues referencing the case law the board itself uses on that issue.
Anticipat Analytics enhances your ability to provide quality and cost-effective advocacy, saving you countless hours in legal research.  Right now, try it with unlimited access for free for two weeks.

Update on ex parte PTAB Appeals Reversal Rates: High Reversal Rates Maintained Except for 101 – Nonstatutory Rejections

About six months ago, the AIPLA ex parte subcommittee published a paper that showed the reversal rates across various grounds of rejection. Some of the findings were very surprising, including over 50% reversal rates for Section 102 and 112 rejections. Here, we provide an update to this paper, which doubles the data set from the time of the AIPLA publication. We find that the reversal rates have not budged from these initial rates, outside of a downtick in reversal rates for Section 101 non statutory rejections. This signals that the surprising results were not a sample size anomaly.


Section 101 – Non statutory

Of the 629 decisions, 130 were reversed and 7 affirmed-in-part. This translates into 21% pure reversals and 22% at least partial reversals.

Section 102 – Anticipation 

Of the 2187 Section 102 decisions, 1065 were reversed and 177 affirmed-in-part. This translates into 49% pure reversals and 57% at least partially reversed.

Section 112(a)


Of 203 decisions, 104 were reversed and 8 affirmed-in-part. This translates into 51% reversed and 55 at least partially reversed.

New Matter

Of 27 decisions, 13 were reversed. This translates into 48% reversal rate.

Written Description

Of 531 decisions, 276 were reversed and 19 were partially reversed. This translates into 52% reversal rate and 56% at least partially reversed.

In total, out of 761 decisions, 393 or 52% were reversed and 55% were at least partially reversed.

Section 112(b) – indefiniteness

Of 806 decisions, 390 were reversed and 34 were partially reversed. This translates into a 48% reversal rate and 53% at least partially reversed.

Section 112(d)

Of  38 decisions, 16 were reversed and 1 was partially reversed. This translates into a reversal rate of 42% and 45% at least partially reversed.

Section 103 Obviousness

Of 9329 decisions, 3139 were reversed and 907 were partially reversed. This translates into a reversal rate of 34% and an at least partial reversal rate of 43%.

Obviousness type double patenting

Of the 418 decisions, 67 were reversed and 13 were partially reversed. This translates into a 16% reversal rate and a 19% at least partial reversal rate.

Data Set

The above data was pulled using Anticipat Research in the range of 7/25/2016 to 7/25/2017. You can perform legal research for these grounds of rejection and others on Anticipat Research. Click here for a free trial to give it a try.


The past six months have shown that the high reversal rates for Sections 102 and 112 rejections reported previously are here to stay. While Section 102 reversal rates dropped some, 49% is still very high. Given the large number of decisions, especially for obviousness, it is interesting to note that the reversal rates are as stable as they are.

Meanwhile, the past six months have experienced far fewer 101 non statutory rejections. Specifically, a reversal rate drop of 4% based on six months of additional decisions seems significant.