Patent analytics have opened up opportunities to implement patent prosecution strategies that greatly improve your chances of obtaining a patent in less time and at a lesser cost. We continue to make great strides in optimizing those strategies with the development of proprietary patent metrics and tools that stand head and shoulders above patent data alone. Sophisticated patent prosecution metrics enable users to make accurate predictions about patent examiner behavior, improve the outcomes of filings with the USPTO and evaluate their performance along the way.
The patent examiner who is assigned to evaluate your patent application is fundamental to your success with the USPTO. Patent examiners vary greatly in how likely they are to grant you a patent, but trying to predict whether a patent examiner will grant your patent requires more than a review of standard patent metrics. While patent examiner allowance rates and the number of office actions an examiner typically issues before allowance provide some value, they also have their pitfalls. For example, standard patent metrics are only a measure of patented or abandoned patent applications, which means they do not account for how an examiner is taking action on patent applications that are currently pending. They also penalize patent examiners for abandonments that may have been more the fault or decision of a patent applicant, rather than being tied to the actions of the examiner.
LexisNexis® Intellectual Property has discovered that looking at the ratio of office actions issued by an examiner to the patents they have granted is more predictive of how an examiner will behave in the future than standard patent metrics. With this in mind, a new kind of patent metric has been developed, the PatentAdvisor ETA™, which compensates for the pitfalls of other metrics by taking into account all of a patent examiner’s office actions (including pending patent applications) and factoring in how long a patent examiner has been at the patent office. It is driven by a patent examiner’s past behavior—not the actions of patent applicants. Additionally, an examiner’s PatentAdvisor ETA value enables the examiner’s classification in the LexisNexis PatentAdvisor® patent prosecution platform as being either green (easy), yellow (moderate) or red (difficult), so users can quickly gauge the type of examiner they are dealing with.
Patent statistics make it clear that there is great variation among USPTO patent examiners, and that some are much less likely to grant a patent than others. The PatentAdvisor™ patent prosecution platform uses Patent Advisor ETA metric values to categorize patent examiners as either green (least difficult), yellow (moderately difficult) or red (most difficult). Roughly 60% of all USPTO patent applications are granted by green patent examiners, while red patent examiners are responsible for only 5%of granted patents. Logic follows that patent applicants should do what they can to put their patent application in the hands of a green patent examiner for the best chance at having their patent issue.
Once a patent application is filed with the USPTO, it is assigned to a USPTO art unit for evaluation based on the content and subject matter within the patent application. The rub is that each patent application is assigned to one of possibly multiple somewhat-appropriate art units, and each prospective art unit is comprised of varying proportions of green, yellow and red patent examiners. With PatentAdvisor, users can identify and compare the art units that are most likely to review their patent application. They can then use the Tech Center Navigator (formerly PathWays™) tool within PatentAdvisor to modify their patent applications with specific words and phrases to improve the odds that their patent application will be assigned to the art unit made up of the highest proportion of applicant-friendly patent examiners.
Another option to positively influence the likelihood and the time it takes to get an application granted is with customized Pre-Filing Classification Reports™. Classification experts provide in-depth insight into which art unit the patent application will be assigned. That insight can be used to tailor the application to target a more favorable art unit and improve your chances of efficient prosecution.
Patent prosecution performance is a relative concept because of the examiner variability at the USPTO. To illustrate, if your law firm has a high USPTO patent allowance rate, and most of the patent examiners your firm has faced are of the difficult red variety, then your firm is performing at an incredibly high level and has exceeded statistical expectations. If your law firm has a high patent allowance rate but typically faces friendly green patent examiners, congrats on your success, but that was to be expected based on patent data. When law firms and corporations need to evaluate their prosecution performance, standard patent statistics, like allowance rates, fail to tell the whole story.
The PatentAdvisor Efficiency Score is a prosecution performance metric for evaluating patent portfolios, which has been normalized to account for patent examiner difficulty and the total number of applications within the portfolio. Corporations and law firms that use the Efficiency Score metric have better context for their own prosecution performance at the USPTO, and can better compare their performance to that of their competitors. They can also create comparative benchmarking reports through the PatentAdvisor Business Development & Analysis platform that contain charts and graphs to help visualize who is prosecuting their patent portfolios the most efficiently and effectively among the competition.
Sophisticated patent prosecution metrics allow users to make accurate predictions about patent examiner behavior, improve the outcomes of patent filings with the USPTO and evaluate their performance along the way. LexisNexis® IP helps users achieve their patent goals. Whether a patent practitioner, law firm or corporation, LexisNexis has tools to help you perform your best at all stages of patent prosecution.
To learn more about the exclusive PatentAdvisor ETA read Use Patent Data to Understand USPTO Examiners.
See how Pre-Filing Classification Reports provide a clear path for success when drafting patent applications.
To learn more about the real-time, fully customizable PatentAdvisor Business Development & Analysis reports read Benchmarking Reports: Compare Counsel and Companies With Patent Analytics.
Discover how patent prosecution analytics are no longer just nice to have by reading this article or watching the on-demand webinar.
