There is no perfect formula for prosecuting a patent, but there is plenty of information out there that can be used to help anticipate a patent examiner’s behavior.

With accurate predictions, patent applicants can strategize and take actions to increase their chances of being issued a patent. However, as prosecution proceeds, the number of options available to a patent applicant dwindle, which is why it is important for patent applicants and patent professionals to set the tone early for the best results.

Outcome Variability

It may be a tough pill to swallow, but understanding outcome variability is the first step to improving patent prosecution outcomes. Although some patent professionals operate under the assumption that they can earn a favorable outcome regardless of which patent examiner is assigned to their application, statistically this is not the case. Patent examiners have different examination styles that have been shaped by their experiences at the USPTO and potentially from their previous experiences prosecuting patent applications. As a result, patent prosecution outcomes can vary greatly depending on which patent examiner is assigned to your case.

Understanding Your USPTO Patent Examiner

In order to set the tone of prosecution, a patent practitioner must first understand what kind of patent examiner is being faced. The most reliable metric for categorizing USPTO patent examiners and for predicting their behavior is currently the PatentAdvisor ETA™, which is available on the LexisNexis PatentAdvisor® patent analytics platform. Every USPTO patent examiner has a calculated ETA™, which is a numerical value determined by a proprietary algorithm based on the examiner’s past experiences and actions. Regression analyses have supported that higher ETA values indicate long prosecution times and an examiner’s relative difficulty, while lower ETA values suggest a prosecution experience that is quicker and easier. To help users quickly assess their assigned patent examiner, PatentAdvisor® categorizes difficult examiners as “red,” moderate examiners as “yellow,” and easy examiners as “green” based on their ETA values.

Setting the Tone

When a patent applicant receives their first office action, the identity of the application’s assigned patent examiner is revealed. After the PatentAdvisor platform is used to access the examiner’s difficulty level, patent practitioners can then develop a strategy that is most suitable to the situation.

If a patent applicant is fortunate enough to receive a “green” patent examiner, the applicant may want to press the advantage they have been given by:

  • Pushing for broad claims – a “green” examiner presents the best opportunity to be granted a patent with original claims;
  • Filing a continuation – continuation applications for valuable, related subject matter are likely to be assigned to the same “green” patent examiner; and/or
  • Having an interview – “green” examiners usually respond favorably to interviews, often by immediately allowing a patent to issue.

Patent professionals who discover a patent application has been assigned to a “red” patent examiner may consider:

  • Informing the client – being honest with a client will earn loyalty and will help the client better decide whether or how to proceed;
  • Aggressive amendments – narrowing the scope of patent claims can increase the chances of a patent being granted; and/or
  • Ensuring the claims are in condition for appeal.

PatentAdvisor ETA and other patent prosecution tools on the PatentAdvisor platform allow users to get ahead of their patent examiners and make informed decisions. Patent data and patent analytics give patent applicant’s the advantage of foresight so they can set the tone of prosecution and improve their chances of obtaining their patent quickly and efficiently.

LexisNexis PatentAdvisor®

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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.

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