A patent applicant has several options after receiving a final rejection from a patent examiner. "After final" practice is a matter of strategy, tactics, and art. The primary approaches are (1) abandon the application; (2) appeal to the Board of Patent Appeals and Interferences (BPAI); (3) file a request for continued examination (RCE) arguing against the rejection; or (4) concede scope and narrow the application (probably through an RCE). Each of these approaches differs in cost, timing, and likelihood of success. Of course, success may depend upon whether broad claims are important. And, in the background, applicants know that alternate claims can later be pursued in continuation applications (for a fee).
BPAI Appeals are generally thought to have a higher up-front cost – both in terms of PTO fees and attorney costs. However, if you win, appeals have the benefit of dramatically changing the course of the examination. Often, an applicant's successful appeal results in an issued patent soon thereafter.
In this study, I looked at law firms involved in ex parte appeals to the BPAI that were decided in the calendar year 2008. Of the 4000+ decisions, only about 75% of the decisions mentioned the law firm name in the case caption. Using those names, I constructed the following table of the firms associated with the most decisions during 2008. It is interesting to compare Oblon Spivak and Sughrue Mion – both firms handle over 3000 patents each year - many of them involving electronics owned by non-US entities. Oblon, however, appears to have taken the strategy of appealing while Sughrue may be using alternate strategies. Foley & Lardner is regularly listed in the top-ten firms in terms of the number of patent grants – however, that firm does not make the list of having the most appeal decisions.
Some words of caution on the numbers game: (1) These are ordinarily dominated by lower cost electronics and software patents. (2) Some clients request that docketing go through their office – in those cases, the firm name would not show up here. (3) Focusing on appeals, it may be that some firms not on the list actually filed more appeal briefs. It turns out that in most cases, examiners withdraw their final rejections in the face of a high quality appeal brief.
2008 Rank |
Law Firm |
Number of BPAI Decisions |
Primary Location |
1 |
OBLON SPIVAK |
62 |
VA |
2 |
FISH & RICHARDSON |
46 |
MA |
3 |
NIXON & VANDERHYE |
42 |
VA |
4 |
KENYON & KENYON |
38 |
NY |
5 |
TROP PRUNER |
38 |
TX |
6 |
GREENBLUM & BERNSTEIN |
36 |
VA |
7 |
CARLSON GASKEY |
35 |
MI |
8 |
FINNEGAN HENDERSON |
34 |
DC |
9 |
GIFFORD KRASS |
33 |
MI |
10 |
SUGHRUE MION |
32 |
DC |
11 |
BROOKS KUSHMAN |
29 |
MI |
12 |
TOWNSEND |
29 |
CA |
13 |
SCHWEGMAN |
28 |
MN |
14 |
HARNESS DICKEY |
27 |
MI |
15 |
PATTERSON & SHERIDAN |
27 |
NJ |
16 |
ARMSTRONG TEASDALE |
23 |
MO |
17 |
BAYER MATERIAL SCIENCE |
22 |
PA |
18 |
RYAN MASON |
22 |
CT |
19 |
FULBRIGHT JAWORSKI |
21 |
TX |
20 |
ALSTON & BIRD |
19 |
NC |
21 |
BARNES & THORNBURG |
19 |
IN |
22 |
WILLIAMS MORGAN |
19 |
TX |
23 |
BIRCH STEWART |
18 |
VA |
24 |
BLAKELY SOKOLOFF |
18 |
CA |
25 |
CAREY RODRIGUEZ |
18 |
FL |
