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 1월 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.

LexisNexis PatentAdvisor®

Two-Day Trial

Get to know your examiner better with more context and a deeper understanding of your examiner’s behavior than ever available before.

With your free trial, you will gain instant access to:

Examiner Search allows you to search by examiner name for a filterable, examiner specific dashboard of patent analytics, including rejection specific statistics, appeal statistics, prosecution statistics, interview statistics, a backlog of RCEs and timeline.

QuickPair easily replaces the USPTO Public PAIR by providing the most robust application details anywhere, including examiner timeline, examiner allowance rate and the average time and number of office actions to allowance.

PatentAdvisor, the first-ever data-driven patent strategy tool, provides a systemic approach to crafting an effective prosecution strategy. Understand why certain patent applications take longer than others to reach allowance—then use that knowledge to devise better patent prosecution strategies.

Free Trial

Related Content

Webinar: Dissecting Alice at 5 – The Good, Bad & the Ugly Listen as Gene Quinn, President and CEO of IPWatchdog, Inc. hosts a special free webinar discussion focusing on the Alice decision five years later. J...
A Patent Examiner’s Take on ETA What might a USPTO examiner have to say about this new way to approach patent prosecution? The newest LexisNexis PatentAdvisor® metric has prov...
How to Improve Patent Prosecution Strategy The proliferation of data analytics tools has changed the way that patent practitioners approach their work. Many new features offered in these...

By continuing to use the site, you agree to the use of cookies. Cookie Policy

이 웹 사이트의 쿠키 설정은 "쿠키 허용"으로 설정되어 최상의 브라우징 환경을 제공합니다. 쿠키 설정을 변경하지 않고 이 웹 사이트를 계속 사용하거나 아래의 "동의"를 클릭하면 동의하는 것입니다.

닫기

汉语漢語DeutschFrançais日本語한국어English