Patent Prosecution Data Analytics

by McDonnell Boehnen Hulbert & Berghoff LLP
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Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent application has been filed, a patent practitioner must also communicate effectively with the examiner assigned to review the application, weigh the costs of claim amendments with the benefits of expeditious prosecution, and understand the needs of her clients. In large part, these considerations are influenced, not only by the aptitude or diligence of the patent practitioner, but by the unique interpretation of the claims, understanding of the Manual of Patent Examining Procedure (MPEP), and overall style of the examiner assigned to the application. The difference between broad or narrow claims, efficient or expensive prosecution, or an issued or rejected application rests on these particularities of the examiner. Accordingly, experienced patent practitioners should, to the extent possible, understand the tendencies of the examiner, and thereby focus prosecution strategy to obtain the most valuable patent at the lowest cost to the client.

Up until recently, knowledge of particular examiners at the USPTO was limited to anecdotal exchanges between colleagues (e.g., “John Smith was very difficult to work with” or “Jane Smith was willing to work with me”) or personal experience. But data analytics services now provide patent practitioners the ability to easily determine tendencies of patent examiners, which allows them to amend their prosecution strategies accordingly. This article focuses on the information provided by such services, and provides three particular scenarios where examiner-specific analytics can be used to update prosecution strategy.

Juristat’s Examiner Reports[1] and Examiner Ninja[2] are two data analytics services that provide patent prosecution data on a per examiner basis. Both services include user-friendly interfaces that summarize each examiner’s prosecution statistics, including the total number of applications the examiner has examined and a breakdown of how many applications were issued, were abandoned, and are pending. While Juristat’s Examiner Reports include more detailed information than that provided by Examiner Ninja, Examiner Reports is a paid service and Examiner Ninja is free. Which service a patent practitioner should use depends on the preferences of the practitioner and the needs of the client. However, either service can be used in any number of scenarios at any stage of prosecution to inform prosecution strategy.

Scenario 1: Determining whether to conduct an examiner interview

Many patent practitioners conduct at least one interview during the pendency of a patent application.[3] However, there are times when interviews are unproductive. For instance, some examiners conduct adversarial interviews that stratify positions rather than reconcile them. In other cases, examiners may speak English as a second language, and may have difficulty communicating effectively during an interview. Examiner interviews may also be time and budget sensitive. For instance, a practitioner may face the choice of conducting an interview and paying a $200 fee to extend the time for response by one month, or responding to an Office Action within the statutory time limit. Further, some clients may pay extra attorneys’ fees for a practitioner to conduct an interview.

In such scenarios, Examiner Reports or Examiner Ninja may provide valuable data that allows a practitioner to make an informed decision to conduct or to forego an examiner interview. Figure 1 shows data for a particular examiner that indicates he is far more likely to allow a patent application having conducted an interview than having not. In this scenario, a practitioner may decide to conduct an examiner interview to increase the likelihood of an allowance when working with this particular examiner.

Figure 1: A breakdown of allowance rates for a particular examiner with no interview and with an interview provided by Examiner Ninja

Scenario 2: Determining how to proceed after a final rejection

Even after conducting an examiner interview, a practitioner may receive a final rejection. In such scenarios, the practitioner must determine whether proceeding with prosecution is worthwhile and, if so, which course to take. For example, the practitioner may file a request for continued examination (RCE), file an appeal, or abandon the application in favor of a continuation thereof. In some scenarios, the practitioner may have to weigh the merit of filing an RCE, a $1,200 filing fee, and claim amendments or remarks, against filing a notice of an appeal, an $800 filing fee, a $2000 forwarding fee, the prospect of substantial delay in having the appeal heard, and the time required to prepare an appeal brief.

Examiner Reports and Examiner Ninja again provide useful data. Figure 2 shows the relative benefit of filing an appeal for a particular examiner, and also shows the relative benefit of filing an RCE. In the present example, the data indicates that filing an RCE provides a greater likelihood of success with this particular examiner. However, even with such data, the practitioner should consider the strength of the final rejection and the extent that potential narrowing amendments made during continued prosecution may devalue the issued patent.

Figure 2: A breakdown of allowance rates for a particular examiner with and without an appeal or an RCE provided by Examiner Ninja

Scenario 3: Determining how best to avoid an examiner

Sometimes, even after one or two (or more) rounds of prosecution, the examiner may maintain a rejection. Whether or not the practitioner believes the rejection to be reasonable, she may consider taking steps to avoid the examiner moving forward. Such a course may be particularly desirable where the examiner allows few applications relative to his art unit. When filing a continuation or continuation-in-part, there is a chance that the new case is reviewed by a different examiner or even a different art unit. Accordingly, the practitioner should weigh the chances of getting a different examiner with rejection statistics of the art unit.

Examiner Reports provides data that indicates the effects of a continuation or a continuation-in-part. Figure 3 shows a breakdown that indicates filing a continuation is more likely than not to result in a new examiner, and that filing a continuation-in-part provides an even greater chance of a new examiner, and also provides a better chance for a new art unit. In the present example scenario, the practitioner may decide to file a continuation-in-part application in the hopes of finding a more lenient (or reasonable) examiner.

Figure 3: A breakdown of the probability of getting a new examiner in a continuation or continuation-in-part application provided by Juristat’s Examiner Reports

While the example scenarios provided in this article show several benefits of using data analytics to supplement patent prosecution strategy, both featured services provide even more details that patent practitioners can use to obtain patents more efficiently. Of course, patent prosecution remains an art more so than a science, and no amount of graphs or tables will allow a practitioner to communicate effectively with an examiner, or argue more persuasively. But such information is valuable for developing a general strategy during prosecution. Ultimately, patent prosecution is about results. Patent prosecution data analytics services, such as Juristat’s Examiner Reports and Examiner Ninja, are useful tools every practitioner should consider adopting in prosecuting patent applications.

[3] USPTO study showed percentage of examiner interviews doubled from 15% to 30% from fiscal year 2008 to fiscal year 2012.

 

https://www.uspto.gov/sites/default/files/about/
advisory/ppac/20130314_PPAC_PatentOperations.pdf

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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