It is well known that if you keep doing what you have always done, you will keep getting more of the same. Though there is always room for improvement in patent prosecution, it can be hard to tell what exactly is working and what can be improved upon. Nonetheless, there are four steps that patent practitioners can take to reveal those areas that need improving, and the measures they can take to improve them.
Taking action without the right information is a surefire way to get you nowhere. The first step towards improving your effectiveness as a patent attorney or agent is to gather the information you need to assess the performance of your previously filed patent applications. The information gathered should help you determine how efficiently you navigate the patent process, and how cost effective your decisions have been in the past. Metrics to consider include the percentage of your applications that go on to issue as patents, as well as how long it takes from filing to grant - and you should take special note of when, why, and how often you receive office actions, file RCE’s, and make the decision to appeal.
Context is key when it comes to making sense of your prosecution data. It is important to know how efficient and cost effective your previous prosecution strategies have been, but you also need a standard by which you can assess your performance. A simple way to assess your own performance is to look in how other patent practitioners have been performing in comparable situations. Perform a comparison of prosecution statistics to see how you are performing in relation to other registered patent attorneys and agents.
Your relative weaknesses are bound to come to light as you compare your data to the rest of the prosecution community - so what actions can you take to transmute your weaknesses into strengths? Start by identifying the steps you have taken in the past that have yielded the most success. Determine in which art units you have performed the worst, and which patent examiners have left you with the most headaches and heartache. Is anyone else having success? Take note of how those patent practitioners interact and communicate with those patent examiners, and which decisions they are making differently in prosecuting their applications. Adopting the techniques of more successful patent practitioners could be the key to improving the prosecution of your future applications.
A retrospective analysis is sure to provide new insights. There is a lot to be gained by studying your own actions and the actions of others, however, this type of analysis is only part of a complete approach to optimizing your patent prosecution potential. The most effective prosecution strategy will vary from application to application, and the effectiveness of any strategy can be improved through the use of prosecution data that is tied to the art unit and patent examiner to which your application has been assigned. As a result, it is imperative that you have the right systems and tools in place to access and interpret this data to make the most informed decisions.