Three Ways to Read Your Patent Examiner’s Mind

September 9, 2016 Tara Klamrowski

Do you ever wish you could read your patent examiner’s mind? Being able to predict how your examiner would treat your patent application is no longer just a dream, as predictive analytics makes it possible to understand what your patent examiner is likely to do.  

Predictive analytics is changing how many patent-driven businesses and law firms operate. LexisNexis PatentAdvisor® prosecution analytics harnesses the power of big data to analyze past trends and patterns in order to predict future ones. Applied to the prosecution process, the analytics from PatentAdvisor ™ allow patent attorneys to understand examiner behavior and likely outcomes of their applications.  

(1) View Examiner Averages and Statistics

PatentAdvisor provides patent attorneys with the ability to search the patent examiner database for averages and statistics for their assigned examiner. Understanding these statistics and their correlations can give users the ability to identify undiscovered trends and patterns that may lead to allowance.

By viewing their assigned examiner’s profile on PatentAdvisor, attorneys can see the statistics such as the average number of office actions issued by that examiner overall and for specific art units. Knowing their examiner’s average gives patent attorneys the ability to accurately estimate the number of office actions they are likely to receive for a particular application. This data can help attorneys develop application timelines, make cost projections, and track the relative performance of individual applications or portfolios.

Examiner averages and statistics can reveal new patterns that were previously invisible. For example, you may notice that the allowance rate for a particular examiner increases dramatically in applications where the applicant conducts an examiner interview. This correlation may persuade you to adjust your prosecution strategy to ensure examiner interviews are included when dealing with application with a similar prosecution history.

(2) Compare Art Units

PatentAdvisor users can also predict the allowance rate for their assigned examiner by looking at the performance of other applications in the same art unit as their application.

An exceptionally low rate for your examiner regarding a specific art unit may indicate that your application will have a difficult path to allowance. Knowing this information very early on in the prosecution process can help you make the necessary modifications to your prosecution strategy to give your application the best chance for allowance. This information could also drive future decisions about the best way to allocate resources for your entire portfolio by prompting you to focus on art units that have a higher rate of success. 

(3) Research Patent Documents

PatentAdvisor also gives users the ability to conduct full-text searches of patent documents, including office actions, responses, appeal briefs, and other documents in the file wrapper for any application. Attorneys can use the PatDocSearch ™ engine to quickly sift through patent documents for relevant information that may provide insight on how to move a particular application forward to allowance.

Users can search the database for phrases cited by an examiner in the rejection they are facing. This search will pull up other applications where applicants faced the same rejection by the examiner. Paring down this list of results with filters gives you the ability to see only the applications that have been allowed, enabling you to see what arguments and research successful applicants relied on to overcome the examiner’s rejection. This insight could potentially provide you with new ideas for overcoming the rejection faced in your application and a better path to allowance.  Better Strategic Decisions PatentAdvisor CTA

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