Patent Strategy: Discovering Crucial Patent Examiner Data

The patent backlog has been well documented over the years. We don’t need to rehash the reasons for the backlog, but everyone in the industry knows that it takes far too long for the overwhelming majority of patents applications to mature into issued patents.  Sure, pharmaceutical companies, biotech start-ups and Universities may want to delay issuance of a patent, or even delay USPTO consideration of an application, but how many clients of yours really want and even need a patent as quickly as possible?  If you represent independent inventors, small businesses, entrepreneurs and start-ups the answer is almost universally that patents are needed with all due speed.

Over the past several years the Patent Office has attempted to offer a variety of procedures to speed up patent applications, such as project exchange where you drop one application to advance another out of turn and the Green Technology Pilot where certain green technologies are advanced out of turn.  Most famously, perhaps because it was a part of the America Invents Act, is Track 1, where you pay an additional $4,800 fee to obtain a patent decision within 12 months.  With all of these efforts some wonder why more haven’t taken advantage of the various acceleration options.  There are two reasons: (1) patent attorneys are very conservative and don’t like change (with good reason); and (2) $4,800 is no small amount of money.

But what if you could demonstrate to a client that they would likely, or perhaps almost certainly, spend less money paying the $4,800acceleration fee under Track 1 than they would just waiting in line?  You might even have a situation where, on average, cases will wait 4+ years before first office action and 8+ years to patent issuance while still spending more money along the way.  Under these circumstances paying $4,800for 12 month consideration may be the best investment that can be made.

But how do you get that information without having a crystal ball looking inside the United States Patent and Trademark Office? To address these very issues, Patent Attorneys Chris Holt and Joseph Kelly created the PatentCore™ system, which is an easy-to-use online tool that allows you to obtain actionable and immediate intelligence on any patent examiner and on any Art Unit. Not only should the patent bar be using PatentCore™, but the USPTO should also be using it as a means for engaging in quality control.  In order to demonstrate its functionality, PatentCore™ has agreed to give IPWatchdog readers a free 2 day trial of the system.

For example, one of the pieces of information that can be obtained about an examiner is the average number of office actions per case.  We can talk all we want about the ideal average being 2 office actions per case, and striving for something in the range of 2.4 office actions per case, but we all know there are examiners that issue 5 or more actions on average, sometimes even into the double digits in a single case.  So much for compact prosecution!  Knowing which examiners generally speaking do not engage in compact prosecution would allow for better strategic decisions from the start, not to mention it would also give the USPTO the ability to understand where there are problems within its own ranks.

Many of the best patent prosecutors have always worked to develop intimate knowledge relating to a small set of examiners, typically the patent examiners they work with most frequently.  You get to learn what they like, what they don’t like, which arguments will work, how long you have to wait for consideration on average, how long it takes to get a patent on average, whether appealing is a worthwhile endeavor, and so on.  But there are now well over 6,000 patent examiners so it is virtually impossible for even the most dedicated practitioners and firms to effectively identify trends on an examiner-specific basis.

I can envision all kinds of scenarios where the information you glean from PatentCore™ will be useful to your clients.  I suspect you can also use the data to immediately generate more work.  To demonstrate how the data could easily be quite useful by you and your clients, allow me to refer to Patent Examiner O, who is a real life patent examiner.  The system identifies the patent examiner by name, and you can search for any patent examiner by name or by Art Unit.  I however, have chosen not use the examiner’s name or identify the Art Unit because my objective is not to embarrass, but rather to demonstrate how this information can be strategically used.  How and why the USPTO should and could use PatentCore™ should likewise be apparent from this very real illustration.

Here is just some of the information I uncovered about Examiner O:

• Percentage of applications that mature into an issued patent ~ 23.9%
• Percentage of applications with 1 RCE before patent issuance ~ 29.4%
• Percentage of applications with 2 or more RCEs before patent issuance ~ 35.3%
• Average time between filing date and patent issuance ~ 8 years, 0 months, 5 days
• Average time between first office action and patent issuance ~ 4 years, 10 months, 7 days
• Shortest pendency before patent issuance ~ 4 years, 3 months, 10 days
• Longest pendency before patent issuance ~ 10 years, 0 months, 9 days
• Average number of office actions between filing date and patent issuance ~ 5.2
• Most office actions before patent issuance ~ 10 office actions
• Least number of office actions before patent issuance ~ 2 office actions
• Percentage of appealed applications where patent issued after BPAI decision ~ 37.5%

What does this information tell us?  It tells us a great many things.  If you are assigned to Examiner O then you are likely in for an exceptionally long wait and have a low chance of ever obtaining a patent (23.9%).  If you are going to obtain a patent you will need 1 RCE 29.4% of the time and 2 or more RCEs 35.3% of the time, which means that Examiner O requires RCEs in approximately two-thirds of all allowed cases.  Notwithstanding the less than 1 in 4 chance of obtaining a patent, if you have the staying power and can carry through to appeal you have a 37.5% chance of success, which suggests Examiner O makes a number of mistakes.  I wonder how many other mistakes are buried in the abandon file and simply not pursued.

The PatentCore™ data also shows us that the fastest patent issued by Examiner O was issued in 4 years, 3 months and 10 days.  Furthermore, Examiner O always has at least 2 office actions in every case and averages over 5 actions per case, with one case requiring 10 office actions!  If you need a patent quickly you are simply out of luck.  This is not compact prosecution; it is, on the contrary, a marathon.  Obtaining a patent shouldn’t be a marathon where you have to outlast the examiner, but frequently it is.  Armed with this information, however, your client will have strategic choices.

Let’s assume that you charge on average $2,000 per response, which for this technology would likely be a decent average, although many at large firms would likely charge even more.  If your case is “average” that means your client who must deal with Patent Examiner O is going to have a less than 1 in 4 chance at a patent issuance after waiting 8 years and paying you over $10,000 to respond to office actions.  $20,000 for responses alone if you wind up in a situation more similar to a “most office actions” case.  Armed with this information do you suppose at least some of your clients might want to pay you to prepare and file either a continuation or continuation-in-part application along with the $4,800 Track 1 acceleration fee?  I suspect that alternative would be appealing to at least some, perhaps many.

Now let me talk to you about the selfish side of law firm economics, after all we are in business like everyone else and need to make a living.  I don’t begrudge anyone making a buck and try to make a few bucks myself.  Since all patent attorneys and patent agents have to sell is their time, and since there are only so many hours in the day, we need to be efficient.  So let’s cut to the chase — will PatentCore™ help you make money?  I think the answer is unequivocally YES.

Most of us likely charge by the hour, and either accept a retainer up front or have clients that routinely and regularly pay their invoices on time for work performed.  That means that you either have client funds in your trust account or clients that have given you a good feeling about their ability and willingness to pay on time for services provided.  So you don’t have to worry about not getting paid for legitimate services.

Many, if not most, practitioners will use receipt of communications from the Patent Office as an opportunity to reach out to clients.  At the earliest stages, once you obtain word from the Patent Office about which Art Unit has the application and which patent examiner has been assigned, run a PatentCore™ search to uncover information about that particular examiner and the Art Unit.  In the letter you will send to the client with the USPTO communication you can add any strategy recommendations you think the client should consider pursuing, perhaps suggesting it is a good idea to schedule a telephone conference.  One letter alone, which will include critical information for the client to consider, internalize and act upon, will more than cover the monthly subscription price.

If you integrate PatentCore™ into your practice on a routine and regular basis you will almost certainly pick up additional work from clients.  You will also be easily capable of setting client expectations, which is something that even the more aware and experienced among us can sometimes struggle with.  The ability to appropriately setclient expectations in terms of time and likely fees after filing makes the system worthwhile in and of itself.  Clients hate surprises and uncertainty.