IPWatchdog.com is in the process of transitioning to a newer version of our website. Please be patient with us while we work out all the kinks.
is founder of Adam R. Stephenson, LTD., a boutique IP firm located in Scottsdale, AZ, and is cofounder of Anticipat.com, a site dedicated to providing patent prosecutors (and others) with actually useful data on ex parte appeals decisions from the PTAB. Adam has a BS and MSE in Chemical Engineering and has been engaged actively in US and international patent preparation and prosecution since 2006. Previous to and while attending law school and working as a patent agent at a IP boutique, he spent 6 years in various engineering roles at Intel Corporation becoming a registered Professional Engineer (State of Arizona, Chemical Engineering) in 2005. Adam drafts and prosecutes patent applications in semiconductor process and packaging, mechanical, chemical, biotech, electronics, and computer implemented inventions. Adam’s curiosity about patent prosecution data began during law school and led to a published article in the Wake Forest Journal of Business and Intellectual property Law in 2008. His subsequent work with Anticipat.com has been to create a curated database of ex parte appeals decisions designed for making patent prosecution and PTAB appeal decisions. A former adjunct professor of law, in 2017 Adam was named a Rising Star by Super Lawyers. He is admitted to practice in Arizona, at the USPTO, and before the Federal Circuit.
For more information or to contact Adam, please visit his Firm Profile Page.
The PTO reports a case as affirmed if all claims are rejected for at least one issue on appeal and reversed if all claims are reversed for at least one ground of rejection. A case is only reported affirmed-in-part by the PTO’s statistics if at least one claim remains standing, regardless of which legal issue ((§101, §103, §112, etc.) the claim was originally rejected. Since a large portion of PTAB ex parte appeals involve rejections over more than one ground of rejection (between 35%-45% according to this statistical estimate), this reporting process masks what the PTAB is deciding on each legal issue presented to it. Because the USPTO data does not report the outcome of each legal issue in multiple issue cases, it is impossible to collect statistically meaningful data on outcomes of specific legal issues from the data set from the FOIA website.
As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply the law to the facts in ex parte appeals should be costing applicants this much money yearly. We should not have 2X higher reversal rates for novelty and obviousness than statutory subject matter. However, until something changes about how the USPTO decides to take cases to the board, it is apparent that patent applicants will continue to have to be patient and pay.