Our Patent Prosecution Strategy

As a former USPTO administrative patent judge, Bill Smith’s consistent message to clients has been to “appeal often and early.” Conventional patent prosecution practices, however, operate using an exactly opposite approach at final rejection. Conventional practice at final is to “interview and RCE” using an ex parte appeal to the Patent Trial and Appeal Board (PTAB) as an absolute last resort.

The conventional approach is pervasive in the industry and subscribed to by both in-house and outside counsel. In fact, it is not uncommon to find practitioners with a decade or more of 100% patent prosecution practice who have never pursued an appeal in any case they handled.

Appeal Early & Often

IPTechLaw's many years of experience in actual patent prosecution decisions, enabled by examiner level patent prosecution data (including issue-level ex parte appeal data), has taught us otherwise.

The use of patent prosecution data indicates that the right approach for many examiners at final is not to “interview and RCE” but to appeal. Our experience has demonstrated that Bill’s advice is not just the wisest course, but it can be a less expensive way to prosecute a case. 

Tech graphic

Added Value

IPTechLaw's “appeal early and often” approach also has resulted in issued patents with independent claims of significantly fewer words. A well-recognized initial measure of patent value is that patents with fewer words in their independent claims are generally regarded as more valuable.

Our Data-Driven Strategy

Data from (LexisNexis® PatentAdvisor® is proving that IPTechLaw's unique data-driven patent prosecution strategy can work. When measuring the average number of words per issued independent claim, our approach of using strategic appeals instead of defaulting to responding to incorrect rejections by amending the claims to overcome them can result in broader claims.

It's a Win-Win!

It’s a win-win! Using our scientifically informed negotiating approach in every case we handle for every client helps us work toward producing issued patents less expensively.

Patent Prosecution Experts

Bill Smith and, most recently, Adam Stephenson, have been the instructors at the American Intellectual Property Law Association’s Patent Prosecution Bootcamp teaching Appeals and Petitions for many years. Please view their 2022 training paper, which includes a flowchart of the after-final and ex parte appeal process. It explains the appeal process in detail, including the various ins and outs of the procedure.