Patent Prosecution Subject Matter Expertise in USPTO

January 9, 2017 Elisa Rodgers

The other day I was speaking with a friend about his former employer, a consulting company. In the late 1990’s, when he was there, they promoted themselves as being a generalist and able to meet the needs of almost any industry. Today this same company messages how they can help specific industries with their deep level of subject matter expertise. In the same way, you need to ensure your law firm has the same level of expertise when prosecuting patents in the art units that are most important to your company.

Law firms that you select to help you with patent prosecution are an important part of your company’s overall IP strategy. They can add value by effectively streamlining the patent application process with the efficient granting of applications and the early abandonment for those that are never likely to be allowed. In today’s economy, no one firm can specialize in every technology. As a company, how do you know you have the best representation for the art units where your company is the most active? Are there firms that could be more successful in getting you better patents and perhaps even do so more economically?

As a law firm, how do you make sure your firm comes to mind when a potential client or colleague is searching for a firm? All firms claim they have the most experienced practitioners but how do you stand out from the crowd?

Claiming success

A law firm can claim to be successful by sharing its overall allowance rate, the number of attorneys with PhD’s, total number of patent attorneys, etc.; however, this information can be misleading. Whereas it is readily recognized there is a great deal of variability among examiners, many do not realize the same can be said for art units. The allowance rate of one art unit might be only 30% where another grants 77% of its applications. Simply knowing how a law firm performs across the USPTO can be very misleading for you and your company. Specific metrics in your most important art units can give you a clearer idea of potential fit of a law firm for your company.

Success

The success of a law firm can be measured by a number of metrics and must be considered for a particular art unit. These are significant metrics that can help you control costs for your prosecution budget. 

  • The number of applications filed within a particular art unit.
  • The average time for applications from filing to reach final disposition.
  • The law firms number of granted, abandoned and pending applications.
  • The average number of office actions between filing date and patent issuance
  • The percentage of granted applications that needed two or more Requests for Continued Examination (RCEs). The number of RCEs gives an indication how much the law firm is able to streamline the process when compared to other law firms active within the same art unit.
  • The percentage of abandoned applications that filed two or more RCE’s. This indicates the number of times a client of this law firm deemed the business case for continuation not viable at a late stage in the process; a significant driver of unnecessary prosecution costs .

The right tool for the job

LexisNexis PatentAdvisor® provides the data-driven insights you need for strategic patent prosecution. It is the business intelligence tool used to compare law firms’ performance to the USPTO averages as well as the competition. The PatentAdvisor™ Alignment Reports provides the metrics that matter to you. Even if you’re currently not using this information you can be sure someone else is.

Shown above is the actual data from Art Unit 3763; it incorporates applications filed since January 1, 2011. All of these law firms do well beating the overall average allowance rate for this Art Unit and all achieve a below average time from first OA to Allowance. Law firm “A” can certainly claim to be the most experienced and even to beat the average allowance rate of the art unit. However, Fish and Richardson not only has the highest allowance rate in this art unit, but they also managed the lowest the number of office actions, have not filed any appeals and achieved the lowest average time between first office action and allowance cutting the process down to just ten months. Figures like this can have a significant impact on prosecution budgets. As a corporation, it is time to make sure you are using a data driven approach when it comes to selecting a law firm. 

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