Is it Time to Abandon that USTPO Patent Application?

November 8, 2016 Tara Klamrowski

How long is too long to prosecute an application? Do you know when it is time to call it quits and abandon? While abandonment of an application is usually the least desirable choice, sometimes it is the choice which makes the most financial or business sense for applications where the cost of prosecution exceeds the potential business value of future patent protection.

Continued prosecution of a challenging application is expensive, with attorneys’ and PTO fees quickly surpassing any potential return on investment, particularly if an allowance is ultimately unlikely. Accordingly, having the ability to know early on in the examination process whether abandonment is the appropriate decision can save applicants months of resources and thousands of dollars. Abandoning a patent earlier can help departments significantly reduce their prosecution spend for patents that will not be granted.  

However, it can be difficult to know when to abandon an application, especially higher value patents, until a significant investment in prosecution has already occurred. Increasingly, attorneys are turning to patent analytics to find the answer before resources have already been exhausted. Data analytics software gives patent professionals the foresight they need to accurately evaluate whether continued prosecution of a particular application would be beneficial.

When abandonment is the best course of action, it is best to abandon early. LexisNexis PatentAdvisor® provides attorneys with data analytics to determine the length of time and the likelihood of a particular application making it to allowance. By using tools like alignment reports, statistical heat maps, and other data visualizations, attorneys can quickly combine and compare different prosecution data sets to create a comprehensive picture of the future of a particular application to better understand what resources will be required. Statistics from PatentAdvisor™ make it easy for you to compare the business value of the application against the prosecution expense.

For example, with the Prosecution Guidebook from PatentAdvisor, you can generate an alignment report that contains the overall allowance rate for your application’s assigned examiner, along with the examiner’s allowance rate for a particular art unit, to get a fairly good idea of how difficult it will be to get your application to allowance. You can also include in the report your examiner’s office action average in order to estimate the length of time and relative cost of prosecuting that application.

In addition to evaluating the performance of individual applications, the analytics tools from PatentAdvisor can also be used to evaluate groups of applications in order to determine if abandonment is an appropriate choice. Analyzing applications both individually and collectively prevents scenarios where you are consistently pushing an underperforming application through the examination process despite having a relatively low success rate for similar applications. Moreover, analyzing applications on a group level highlights trends and patterns that can help identify future applications that fit the profile for abandonment before prosecution has even begun, leading to a more proactive and cost-efficient prosecution strategy.

PatentAdvisor analytics provide patent attorneys and IP counsel with a comprehensive, data-driven foundation for sound decision making, ensuring they have the confidence to know when it is time to abandon an underperforming application. 

 

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