Ever since Mayo was decided in 2012, the percentage of § 101 rejections on biotech, pharma, and life sciences applications has been on the rise, from 4.9% before Mayo to 8.6% after Myriad to 15.7% after Alice. A total of about 37% of all § 101 rejections in Technology Center 1600, which handles the bulk of these types of applications, now cite either Mayo or Myriad. This is bad news for applicants, since only 45.2% of applications with either a Mayo or Myriad rejection ever receive an allowance. However, there are a few firms out there who manage to do remarkably well with Mayo/Myriad rejections despite their generally negative effects on allowance rates. 

Below are the top 10 firms with the highest allowance rates on applications that receive Mayo/Myriad rejections. To be eligible for inclusion, each firm must have had a minimum of 50 disposed applications with at least one § 101 rejection that cited either Mayo or Myriad. The percentage given is the percentage of disposed applications with at least one § 101 rejection that cites either Mayo or Myriad for which there was also a notice of allowance on the application.

Congratulations to all of the firms that made the cut! 

10. Whitham Curtis & Cook (54.2%)

9. Oblon (54.6%)

8. Saliwanchik Lloyd & Eisenschenk (55.4%)

7. Myers Bigel (55.6%)

6. Klarquist Sparkman (55.9%)

5. Morrison & Foerster (57.3%)

4. Lathrop & Gage (58.2%)

3. Leydig Voit & Mayer (60.6%)

2. Marshall Gerstein & Borun (62.5%)

1. Cantor Colburn (63.2%)

Mayo and Myriad are tough to overcome, and if your § 101 rejection cites either of them, you can be sure that an uphill battle for an allowance is in store. That’s where Juristat can help. Juristat offers data analytics tools to patent prosecutors to help them overcome some of the most difficult dilemmas they face, including getting around Mayo and Myriad rejections. Using data analytics, patent attorneys can gain a clearer understanding about how their examiner interprets Mayo and Myriad, giving them the opportunity to tailor their arguments in response to one of these rejections. Additionally, big data allows patent attorneys to predict their examiner’s next move, preventing the wasting of time and resources on logically ineffective prosecution strategies. 

Don’t let your examiner set you up for failure with a Mayo or Myriad rejection--try Juristat now! 

And if you haven't seen our webinar "Biotech, Pharma, & Life Sciences at the USPTO," be sure to watch it below. In it, we discuss strategies for improving your prosecution practice in this tech center with a particular focus on handling Mayo/Myriad rejections, drafting claims, navigating appeals, and attracting new business. 

Comment