FreshINSIGHTS 

Overcoming final rejections, aided by data science

What are the chances to overcome the rejection?
We can tell you what is your examiner's average success rate at overcoming a rejection as well as the statistical chance of eventually obtaining grant or you can have our full detailed analysis.
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You can use this information in a number of ways:
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  • decide whether to respond or not
  • decide whether to have an interview
  • decide when to file a response
  • decide not to give up
  • decide it's time to cut losses
Improving the chances to overcome a final rejection
A final rejection is not an indication of failure. It is a normal part of patent prosecution and can happen in any application, but it is also a good time to pause for reflection.
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We offer a detailed analysis, focusing on 3 main aspects: 
1. Why the case got to a final office action.
2. A profile of the examiner - we used publicly available information from the USPTO to create statistical profiles for all U.S. examiners. 
3. The best strategy forward - our suggested strategy is based on our analysis of the rejection, combined with the examiner profile. For example, some examiner profiles show a strong tendency to allow cases after an interview whilst others have a particularly high allowance rate at the end of a quarter.
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Our analysis is delivered over a Zoom call with a FRESH senior attorney which is followed by a written summary. The cost is $750 for new clients and it is deducted from any future work undertaken with us.
Typical recommendations
Our most typical recommendation is to speak with the examiner. Examiners are encouraged to speak to representatives (as part of a formal interview) and by the time a case reaches a final rejection, their compensation structure gives them a strong incentive to move cases forward. Often, cases reach final rejections simply due to misunderstandings. A conversation with the examiner often leads to an agreement that is hard to achieve in written correspondence. It is many times the fastest, most cost-effective way to progress.
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Another recommendation is to use the pre-appeal procedure. This is an underutilized procedure that can best be described as "getting the case in front of the examiner's boss". 
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We don't just focus on the merits of the case. We also check some formal matters. One issue that comes up a lot is the entity type. We often find that applicants could enjoy small or micro entity discounts on government fees and they haven't claimed them. This can be corrected for future fees.
What about my current attorneys / associates in the U.S.?
We can give you our analysis of the case and you can then decide what to do. If you are an IP owner and you decide to work with us, we can simply take over the case. After the analysis we will have full knowledge of the case and we will normally need no documents from the current attorney of record. We also work with a large number of non-U.S. IP firm and understand that they may feel uncomfortable to switch attorneys in the middle of prosecution. They can use our analysis with their current associate and we can work together on new cases.