Examiner Statistics: Insight into Prosecution Strategies

Many factors can influence prosecution strategies and decisions. For example, take a look at the chart below:

You do not have to look hard to find an example such as the one shown here. Over a period of about a year and a half, the applicant negotiated through a non-final action and then abandoned the application.  The patent examiner assigned to the case on average issues a Notice of Allowance at approximately three years and five months.  Might the applicant have obtained allowance had they hung on a little longer?

There is no way to know for sure whether the applicant could have achieved an allowance had they hung in, but it would have been helpful to know that the examiner was very experienced and likely had decision making authority. Such an observation would have given great insight into the fact that the examiner in question here has an overall allowance rate of nearly 70%. It no doubt would have also been helpful to know that after an interview in over 50% of cases, the next significant event following the interview was an allowance. In short, the statistical data shows that this was an experienced patent examiner who is interested in working with applicants and their representatives to identify allowable subject matter and issue patents where appropriate.

As the creator of the PatentAdvisor system, I have heard the reaction of numerous IP attorneys after having used PatentAdvisor. I am well aware many of my fellow patent attorneys wear more than one “hat” and that there are many business advantages that come with doing so.  Some of the best attorneys in our field are those with enough IT expertise to develop and share a working knowledge of the forces that shape patent acquisition processes as evidenced in data.

Many times, PatentAdvisor is first introduced to the firm by those who naturally gravitate toward being the one to wear the IT expert “hat” in their law firms.  These attorneys are excited to learn more about any emerging information technology that would eliminate some of the guesswork from the patent acquisition process.

Many of these attorneys have expressed to me that obtaining a patent from the United States Patent Office required tolerance for high levels of frustration over apparent inconsistencies in the application of the applicable laws and rules by different patent examiners.   The fact of the matter is that not all of the more than 7,000 patent examiners in the U.S. manage the review process in the same way.  The variation in decision making patterns from one patent examiner to the next is staggering.

As a patent attorney myself, I had often experienced this frustration.  However, a few years ago large amounts of previously unavailable raw data about patent applications became available.  I was able to take this data and create a platform that allowed for statistical analysis of what is really happening within the Patent Office, Art Unit by Art Unit, and patent examiner by patent examiner. I hear from my users that this statistical information provides actionable insights and assists their law firms and their clients. Repeatedly, I hear how amazed attorneys are by the power of understanding comprehensive analytic profiles detailing the on-the-job performance of each individual patent examiner, and insights into Art Units as a whole.

One of the early adopters to Reed Tech PatentAdvisor wanted to know if there was a positive business impact associated with using PatentAdvisor. They are now monitoring usage and early results suggest that the attorneys utilizing the PatentAdvisor data as a decision making aid are able to reduce the costs associated with obtaining a patent by about 30 percent in 20 percent of managed applications.

A great benefit is being able to share this type of information with a client or potential client.  It clearly sets a law firm apart to be able to share this level of insight available through this statistical information.

Another benefit of the data has been to manage client expectations. It can be frustrating for a client to know they have invented something unique and still have to fight over and over again with an examiner to get any claim issued. Knowing that this is the norm for a particular examiner or Art Unit allows for strategic planning and proper budgeting for the sometimes unfortunately lengthy prosecution that can be expected. Interviews with clients of the firm that have had their expectations managed with reference to PatentAdvisor data have indicated unanimous improved satisfaction due to the improved process transparency.

It seems very clear at this point that there is a window of opportunity to utilize the PatentAdvisor services as market differentiator that will improve customer satisfaction and serve as a tool for gaining significant additional market share in the patent acquisition industry. Eventually the window will close to differentiate services because I am convinced that eventually all attorneys will be using some kind of statistical information to plan, budget and strategize. Moving forward, it only makes sense to leverage the information now available to produce an improvement to a process that had previously been unpredictable.

As the inventor of the platform, my personal goal is to convey a new philosophy that can dramatically revolutionize the patent legal practice area…and even revolutionize the entire patent office. My objective is simply to initiate and help sustain a data-driven reform of the entire patent acquisition process and, by doing so, have a significant and measurable positive impact on the United States economy.

Patent attorneys are historically conservative in their approach to the law. While that certainly has its benefits in some circumstances, why shouldn’t we be using all the tools at our disposal to assist clients? Statistical information doesn’t mean we have to deny our intuition, but facts can and certainly should inform our intuition and experience.


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

2 comments so far.

  • [Avatar for Old Examiner]
    Old Examiner
    November 24, 2013 01:53 pm

    Certainly, statistical data can be helpful. As to example above, I wouldn’t get an applicant’s hopes up by merely telling them to hang in there. Usually, an application goes abandoned after first action if good art is cited. That happens quite often, particularly if an application is filed absent an IDS submission. If an application is pursued past the initial rejection, in most cases, there is some patantable subject matter. Obviously, looking at the statistics of an examiner, particularly one with signatory authority can be helpful as to whether the examiner is amenable to expediting the examination.

  • [Avatar for NWPA]
    October 21, 2013 01:33 pm

    I’ve used Reed Tech. It is pretty good. But, I will say that you can tell if the examiner has signing authority from the action and it only takes a couple of minutes on the phone with the examiner to figure them out.