How the biggest patent firms (Finnegan, Fish, Knobbe) do on appeal

We recently reported that the top patent firms (by registered practitioner as featured on a Patentlyo post) pursue ex parte appeals very differently. This, despite apparent equal knowledge of the benefits of pursuing an appeal to further prosecution. While this finding is interesting, pursuing an appeal and winning on appeal are two different things. Here we report on the differences in appeal outcomes along the three firms Finnegan, Fish & Richardson, and Knobbe Martens.

As brief background, we have found that average reversal rates among the various grounds of rejection to be quite stable. In a recent post, we reported that across the entire USPTO, § 101 has about a 20% reversal rate on appeal, §§ 102 and 112 hover at about 50%, and § 103 is around 33%. To look at these firms’ outcomes, we used Anticipat’s Research database and Practitioner Analytics between July 25, 2016 through March 12, 2018.

The firm-specific appeals outcome data

The above three firms exceed the USPTO reversal rates in almost all aspects. Finnegan first.

Ground of rejection Affirmed Affirmed in part Reversed Reverse Rate
 § 101 12 2 14%
 § 102 4 12 75%
 § 103 28 3 28 47%
 § 112 1 0 9 90%
OTDP 5 1 17%


For the 59 rejections of § 103 obviousness, 28 were wholly reversed. This is a complete reversal rate of 47%, much higher than the average rate. 

Of 16 decisions deciding § 102 anticipation, 12 were wholly reversed. This is a reversal rate of 75%, again much higher than the average rate.

The § 112 rejections were decisively overturned. Of 10 rejections, 9 were overturned. This translates into an 90% reversal rate–very high.

Section 101 was the one ground of rejection that underperformed the rest of the grounds of rejection. Of the 14 decisions deciding § 101 rejections, Finnegan had two reversed. This is a reversal rate of 14%, slightly lower than the average.

101

These data show that for the most part, Finnegan knows how to pick good candidates for appeal and/or how to advocate for a favorable outcome.

Next Fish. Of the firms analyzed today, Fish has the greatest tolerance for pursuing appeals. Because of this, the reversal rates for some rejections are lower. But this also means an overall greater number of reversals than the other firms.

Ground of rejection Affirmed Affirmed in part Reversed Reverse Rate
 § 101 13 2 13%
 § 102 6  2 16 66%
 § 103 56 14 50 43%
 § 112 10 8 44%
OTDP 13 1 7%

These data for Fish show slightly lower reversal rates than Finnegan. The reversal rate for § 102 is 66% which is still much higher than average.

fish102

Next, the reversal rate for § 103 is also higher than average at 46% wholly reversed.

fish103

Next, § 112 falls right under average with a 44% reverse rate.

Next, § 101 has two reversals. Given that there were 15 total decisions with § 101 rejections, this is a 13% reversal rate, which falls slightly below the average reversal rate for this rejection.

Fish’s appeal strategy more closely resembles the Michael Jordan quote: “You miss 100% of the shots you do not take.” Similar to basketball shots, the more a correspondent appeals, the lower the success rate may be. As we have previously reported, Fish has a much greater number of total appeals, implying it pursues appeals more frequently than the others. This may mean that the firm pursues appeals that it is not as confident that it will win on. But like basketball shooters, because of the volume of appeals, it means that more applications will be reversed and thus take advantage of the benefits of pursuing an appeal.

Fish should be recognized for taking more cases to appeal and still succeeding at or close to average reversal rates. If Fish wanted to identify areas for improvement, perhaps § 101 and § 112 would be on the list. While certainly not bad to overturn the Examiner’s 112 rejection 50% of the time, that is about the percentage of all appellants. Same is true for § 101, notwithstanding the challenges of appealing abstract idea rejections.

The third firm is Knobbe. Knobbe files the fewest number of appeals among the three firms. The data show very high reverse rates, but because of pursuing fewer appeals compared to the other firms discussed here, the result is fewer total reversals.

Ground of rejection Affirmed Affirmed in part Reversed Reverse Rate
 § 101 3 2 40%
 § 102 2 5 71%
 § 103 17 6 29 56%
 § 112 2 0 5 71%
OTDP 5 1 17%

For § 101 rejections, Knobbe has two reversals out of 5, meaning a relatively high reversal rate of 40%. It achieves the same number of reversals with much fewer appeals than Fish and Finnegan.

For § 102, 71% of rejections are wholly overturned. This is higher than the average even though not as high as Finnegan and Fish.

For § 103, 56% of rejections are wholly overturned. This is much higher than the other two firms. Factoring in the six affirmed-in-part rejections on § 103, the number of decisions where at least one claim was reversed is at 67%.

For § 112, 71% of rejections are overturned. This is much higher than average.

The data on Knobbe seem to show something of their appeal strategy. That is, Knobbe tends to appeal cases that they are more sure that they will win on. And it shows in the high reversal rates.

One note about all firms is the reversal rates for obviousness-type double patenting. All these rates are low, but many of the rejections were not argued on appeal. Thus, these summary affirmances imply that the applicant may opt to file a Terminal Disclaimer to overcome the rejection.

What it all means

These and other law firm-specific outcome data are important in two ways. First, having detailed outcomes for specific grounds of rejection can point out areas for improvement. If a firm is below the average reversal rate for a grounds of rejection (especially below the average for a particular examiner or art unit), there might be some learning opportunities to increase the reversal rate. For example, an area for improvement for Finnegan could be § 101. That being said, achieving two reversals in 15 attempts is not bad.

Anticipat Practitioner Analytics provided an easy search interface that can retrieve all reversed applications for a particular ground of rejection, for an Examiner, his art unit, or technology center. Further, it allows for any customer numbers to be queried if you want to competitively analyze certain filers.

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The law firm or customer number analytics has its limitations. For example, just because a law firm has a low reversal rate for § 101 does not mean that they are of worse quality counsel than others. They may, for example, be taking on more difficult cases. But having the internal context of these cases can powerfully guide prosecution strategy.

The second way these data are important in helping to show the optimal level an applicant should appeal. Remember that how often to pursue an appeal affects the reversal rates. A firm such as Knobbe that is more selective in its pursuit of an appeal than a firm like Fish–all advocacy being equal–will have a higher reversal rate, but fewer reversed decisions.

For example, let’s say there are 100 candidate applications that could go up to appeal. For simplicity sake, assume each has a single pending ground of rejection. A Knobbe type of firm only pursues an appeal for its three most egregious cases and pursues claim amendments responses for the rest. In this situation, there’s a high chance these three cases get overturned (because they are the most improper of the bunch). Let’s say that two get wholly reversed, resulting in a 66% reversal rate.

But let’s say a Fish type of firm with the same candidate applications is less choosy and decides to appeal the 10 most egregious rejections. Some of these rejections will not be overturned because they are less clearly improper rejections. So this firm could have a lower reversal rate of 50%. But because the firm decided to appeal more applications, even with a lower reversal rate, that firm is still getting three more notices of allowance with all the benefits of an appeal.

In conclusion, feel free to lookup and monitor appeal decisions using customer numbers on Practitioner Analytics. Armed with the right material, you can see where you or others are strong and see where you have opportunities. This can also be used for showcasing expertise and advocacy in certain areas, e.g., for marketing.

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