The Top 10 Patent Law Firms that Lose the Fewest Independent Claims

By James Cosgrove
October 20, 2015

Independent Claims BadgeWhen measuring the overall success and efficiency of a law firm’s patent prosecution practice, there are several metrics available, including overall allowance rate, time to disposition, and average number of office actions. Allowance rate is one of the most common metrics, but allowance rate merely tells us how many applications received NOAs, and nothing of the quality of those applications. Besides merely getting an application allowed, clients are also concerned about the quality and scope of their claims. One way to determine this is by measuring how well a law firm preserves claims through prosecution.

Below is a ranking of the top 10 patent law firms that lose the fewest independent claims in prosecution among IP Today’s top patent firms for 2015. We measured claim preservation by determining a law firm’s average number of independent claims per application at publication and comparing this to the firm’s average number of claims per application at allowance. The following list is composed of firms that registered no change or a decline in number of claims and is ranked based on percent change between publication and allowance.

 

1. Ziolkowski Patent Solutions Group, SC (0%)

Ziolkowski

In first place is Ziolkowski Patent Solutions Group, an IP boutique located in the Milwaukee metro area. Its average number of independent claims at publication is 3.33 and the average number at allowance is also 3.33, indicating no change. Despite its small size, the firm has demonstrated a strong commitment to community involvement, including sponsoring the Leukemia & Lymphoma SS150 Fundraiser, a cycling event hosted by the Leukemia & Lymphoma Society, and Camp Invention, a summer camp for children providing enrichment in the sciences, math, history, and art.

2. Mayback & Hoffman, PA (-0.71%)

MaybackHoffmanMayback & Hoffman is an IP boutique located in the Miami metro area. Its average number of independent claims at publication is 2.59 and the average number at allowance is 2.57. Since its founding, the firm has been interested in the global protection of intellectual property, representing clients from Australia, Brazil, China, India, Japan, and South Africa, among others. When they’re not busy representing globetrotting clients, its attorneys engage in extensive IP scholarship and enjoy off-road biking.

3. McGinn Intellectual Property Law Group, PLLC (-0.85%)

McGinnMcGinn Intellectual Property Law Group is an IP boutique located in Northern Virginia. Its average number of independent claims at publication is 2.84 and the average number at allowance is 2.81. McGinn’s placement in the top 10 firms that lose the fewest independent claims is fitting, given that Mr. Sean McGinn has served as a claims drafting instructor for the Patent Bar Review Course since 1992 and is an instructor for the Advanced Application and Amendment Writing Workshop sponsored by the Patent Resources Group.

4. Studebaker & Brackett, PC (-1.49%)

StudebakerBrackettStudebaker & Brackett is an IP boutique specializing exclusively in patent prosecution, opinions, and reexaminations, and is located in Northern Virginia. Its average number of independent claims at publication is 2.28 and the average number at allowance is 2.24. The firm operates an extensive training program wherein its overseas clients’ trainees are sent to work on their company’s matters with Studebaker & Brackett attorneys, who provide guidance and expertise regarding US patent law in addition to helping the trainees perfect their English language skills.

5. Flynn, Thiel, Boutell & Tanis, PC (-2.28%)

FlynnThiel

Flynn, Thiel, Boutell & Tanisis an IP boutique providing a wide range of IP services, and is located in Kalamazoo, Michigan. Its average number of independent claims at publication is 2.49 and the average number at allowance is 2.43. Its attorneys focus their practice on a wide range of patent technologies, including software, business methods, and plants.

6. Christopher P. Maiorana, PC (-2.35%)

Maiorana, PC

Christopher P. Maiorana, PC is an IP boutique located in the Detroit metro area, with a large portion of its work focusing on computer and semiconductor patent applications. Its average number of independent claims at publication is 3.38 and the average number at allowance is 3.30. Despite its small size of only three attorneys, the firm has successfully obtained over 1,500 patents for its clients, placing it in the top 15% of firms based on the number of patents issued per attorney.

7. Muncy, Geissler, Olds & Lowe, PC (-2.85%)

MG-IP

Muncy, Geissler, Olds & Lowe is a boutique IP firm located in Northern Virginia. Its average number of independent claims at publication is 3.43 and the average number at allowance is 3.32. As a younger law firm, Muncy, Geissler, Olds & Lowe seems to have found early success. Founded in 2006 with two attorneys, the firm has grown rapidly in the intervening years, to a total of 58 employees in 2015.

8. Myers Wolin, LLC (-3.04%)

MyersWolin

Myers Wolin is a boutique IP firm offering a full range of IP services with offices in New York and Morristown, New Jersey. Its average number of independent claims at publication is 3.43 and the average number at allowance is 3.32. This is Myers Wolin’s second appearance on a Juristat Top 10 list. In addition to losing very few independent claims, it also has one of the highest allowance rates in TC 2400.

9. Slater & Matsil, LLP (-3.13%)

SlaterMatsil

Slater & Matsil is an IP boutique located in Dallas with a focus on patent and trademark. Its average number of claims at publication is 3.56 and the average number at grant is 3.45. The firm has established itself as a major player in the Texas IP law community, with Steven Slater and Ira Matsil both being honored as Texas Super Lawyers, and Mr. Matsil having served as the director of the IP Section of the Dallas Bar Association.

10. Posz Law Group (-3.34%)

PoszPosz Law Group is an IP boutique firm located in Northern Virginia with a focus on patent and trademark prosecution. Its average number of independent claims at publication is 2.71 and the average number at allowance is 2.62. Its attorneys have experience in the fields of semiconductors, wireless communications systems, software, medical devices, and e-commerce, among others.

For a similar ranking of firms that lose the fewest dependent claims, see Juristat’s blog.

The Author

James Cosgrove

James Cosgrove is a Legal Analyst at Juristat, a legal tech company that develops predictive models of the behavior of judges, patent examiners, attorneys, and other entities. He is a 2014 graduate of St. Louis University School of Law. A member of Juristat’s marketing team, he has written extensively about big data in the law, including Juristat’s first white paper on the effectiveness of data in patent prosecution and an e-book charting the effects of the Alice decision on the USPTO.

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 and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 19 Comments comments.

  1. Night Writer October 20, 2015 9:14 am

    Maybe they just amend their claims more than incorporate independent claims into the independent claims. So, an argument could be made that these firms don’t do a good job claiming the disclosure and so have to go to spec to get claim amendments.

    I think you need to dive deeper and look at the amendments to the independent claims. How about compare the number of words to the independent claim with the allowed independent claim?

    Also, you have the problem of how broad the claim is. Are these firms writing narrow claims to get allowances?

    It is likely that this is not a good measure of quality. Besides my law firm didn’t make it so it can’t be :).

  2. patent leather October 20, 2015 9:50 am

    What about restriction requirements? did your system discard any application that was subject to a restriction requirement? A “good quality” application might be published with a large number of independent claims with lots of dependents, whereas only a small number of these would actually issue after a restriction. Thus, some firms with “better” applications would get penalized via your methodology.

    While also somewhat “fuzzy math”, if you are interested in evaluating law firms quantitatively, what about ranking firms which have the highest % of their applications’ maintenance fees paid?

  3. Benny October 20, 2015 9:51 am

    This is interesting, but I am not sure I understand the rationale behind the metric. I read another article recently advising applicants to avoid double patenting issues by filing as many potential claim groups as possible in the first US application, so that a restriction requirement would be made and each group could then be filed in a divisional application under the protection of 35 USC 121, thus obviating the need for terminal disclaimers and the resulting possible loss of PTA. Maybe this is more of an issue in certain practice areas, but I think often such a situation would result in a decrease of independent claims from publication to allowance even though it is a beneficial strategy. Perhaps this metric could be combined with other information such as whether the application was filed as a divisional application or not to filter out such possibly confounding data.

  4. Curious October 20, 2015 10:06 am

    Another one of these articles?

    We measured claim preservation by determining a law firm’s average number of independent claims per application at publication and comparing this to the firm’s average number of claims per application at allowance.
    That says nothing about the breadth of the claims upon filing and the breadth of the claims at issuance. It also fails to appreciate that some applications are filed with lots of independent claims (to distinct inventions) that eventually get divided out.

    In short, it is a metric with very little usefulness.

    As someone once told me, “it’ll take many years if you want to be a first chair litigator, but in prosecution, you are almost always first chair.” The point being is that prosecution is really much more about the individual than the team. Thus, when evaluating patent prosecution, it has to be about the individual — not the firm. Granted, a good mentor may generate lots of talented associates. However, in the end, the results are really based upon the efforts of the individual.

    Moreover, if you really want to know whether somebody did a good job, you cannot look at just the results. You really need to look at the original disclosure (if you are evaluating the patent application) and the office actions/prior art (if you are evaluation the patent prosecution).

    Metrics have value when what you are measuring is very uniform. Free throw percentage is telling because the ball is the same size, same weight, same rim dimensions and height. The same cannot be said about patent prosecution in which every case is different.

  5. JNG October 20, 2015 12:00 pm

    I applaud your effort here and think its important to welcome other views and perspectives on how to measure prosecution effectiveness. I find that some art domains are far more open minded than other in reviewing dependent claims with an eye to finding allowable subject matter, whereas other art units will “invent” a reason to reject every claim, no matter how silly the argument. Thus as some commentators have mentioned, I have prosecution where I start with 3 independent claims, and then the Examiner pronounces that 4 dependent claims would be allowable. I re-write and take 1/2 the loaf for now, but using this benchmark I’ve improved the application by a 1/3.

    A simpler (but perhaps even more insightful) metric would be word count of the original claim 1 vs the final version as issued. You could filter out “noise” words that don’t add substance in the calculation. Since not all patents issue with a claim 1 (restricted out or re-written) its not 100% coverage, certainly. But if you look at how “close” the final product is to the “original” this would tell you really how “effective” people are at securing the invention as the inventor originally agreed to it anyway.

    Just a thought!

  6. David Stein October 20, 2015 3:55 pm

    This metric is meaningless.

    This metric reflects two things:

    (1) Client strategies.

    Some clients have large budgets that support paying a whole lot of independent-claim fees. If they choose to start with many claims and then whittle them down during examination, that’s a valid client strategy.

    Other clients have smaller budgets – or large budgets, but prioritized differently – and don’t see the point in even trying to get 20 independent claims per patent. If they choose to pursue only the three best independent claims in every case – that’s also a viable strategy.

    Law firms have nothing to do with the strategies, budgets, and priorities of different applicants.

    (2) Technology areas.

    Chemical patents tend to involve a lot of independent claims for distinct species.

    Electronics, software, and mechanical or device patents typically don’t.

    Yes, some firms specialize in some areas of technology. This is not news. And this metric has no connection to “success” of law firms.

    I think the real question is: Why does Juristat keep churning out these kinds of junky articles? To practicing applicants, these metrics are with irrelevant patent trivia and spurious conclusions.

    Some predictions for Juristat’s next article:

    Law Firms That Obtain the Most Claims Containing the Letter ‘Q’

    Top Ten Law Firms That Securing Patents with Serial Numbers That Constitute Prime Numbers

    Most Successful Law Firms at Obtaining Patents That Are Later Cited as Prior Art in a Rejection of a Competitor’s Later-Filed Application Before the Same Examiner That Compels an Appeal For Which the PTAB Affirms the Examiner’s Rejection of Anticipation Based Upon the Cited Reference

    Come on, Juristat, you can do better. You are sitting on a tremendous wealth of data that’s ripe for excellent statistical mining and valuable observations.

    Consider vetting future articles with a practitioner who can verify that the conclusions you’re positing are meaningful.

  7. DC October 21, 2015 1:43 pm

    David Stein: I was feeling really bad because I sometime mistakenly file several claim sets to force a restriction, so my issued patent has fewer independent claims. The I read your comment and realized that I had unthinkingly accepted the value of this dreck. I feel a lot better now. Thanks for cheering me up.
    Patent quality is not reducible to a metric, and might better be defined by unmeasurable things like how the claims sought match the claims achieved and the product they cover. That’s a qualitative thing, and I can’t see how you reduce that to a metric.

  8. David October 21, 2015 2:10 pm

    I am surprised that Gene would let someone post such a meaningless article on his blog, which is otherwise usually helpful and informative.

  9. Gene Quinn October 21, 2015 4:40 pm

    David-

    While not amending claims can mean any number of things, it certainly means that those independent claims that were not amended were entitled to rights dating all the way back to the publication date, which in some cases could be MANY years before the patent issues. Not sure why everyone ignores the existence of provisional rights. Given how impossible it is to achieve lost profits all you really get is a reasonable royalty anyway. It would seem to me to be worthwhile for patent owners to have at least some claims that date all the way back to publication for infringement purposes.

    If you don’t like this article I guess it is fortunate that we will publish over 700 articles this year alone.

    -Gene

  10. DC October 21, 2015 5:32 pm

    Gene:
    Thanks for pointing out what would be a valuable consideration: Whether an initially published claim makes it to issue without substantial amendment, so as to support provisional damages. The metric used in the article cannot account for that. What metric can? Provisional damages actually awarded would be one metric, but there would be no metric to determine who stayed away from the published claims, or how much that was worth to the applicant.

  11. David Stein October 21, 2015 8:18 pm

    While not amending claims can mean any number of things, it certainly means that those independent claims that were not amended were entitled to rights dating all the way back to the publication date, which in some cases could be MANY years before the patent issues.

    Two responses:

    (1) Sure, getting independent claims allowed without amendment might be a case of good claim drafting. On the other hand, an allowed, unamended independent claim could just be very narrow, right?

    Case in point: U.S. Patent No. 13/292,359 – Amazon’s “Studio Arrangement” patent, the one that the internet blew up about last year with the (dishonest and/or mistaken) summary: “Amazon Patents Taking Studio Photos on a White Background!” – despite the fact that the independent claim is almost absurdly narrow. That claim was allowed… is that any surprise? Should (And actually, it was amended once: to insert the word “that” in one location.)

    So it’s entirely possible that what this article portrays as “success” actually reflects an endemic skew toward overly narrow claims – perhaps unreasonably narrow, in that they provide insufficient value for the owner. Should that really be presumed to be “success?”

    (2) Consider also how Cosgrove’s metric was calculated. It only looks at allowances: it doesn’t look at all at abandonments.

    Based on that calculation, there’s an easy way to come out on top of this poll as the “most successful” firm: don’t do any prosecution. File a bunch of patents, and then either accept a first-action allowance, or allow the case to go abandoned. As long as at least one patent issues that way, congratulations! You’ve got a 100% “independent claims allowed without amendment” rate, so you are the most successful firm.

    Of course, that’s an artificial metric on paper – it’s not a reflection of reality. Good firms push for reasonably broad patent protection, even if it means amending the claims during prosecution to avoid prior art. Good firms work through issues with the examiner, including making clarifying claim amendments, which aren’t actually limiting, to resolve disagreements with the examiner. And good firms fit their clients’ interests to the patent process… rather than standing on principle, to their clients’ detriment.

    Look, it’s simple: Patent prosecution is not fantasy football. It cannot be evaluated based on these artificial stats. As I argued above – Juristat is sitting on a freaking gold mine of data that could be mined to produce fascinating, useful metrics – why is it wasting its time with this nonsense?

    If you don’t like this article I guess it is fortunate that we will publish over 700 articles this year alone.

    And that’s why I visit this blog several times a day, Gene – you’ve put together a great information source for the community. And a lot of this content is truly great: your interviews with people like David Kappos; Joe Allen’s “Ivory Tower” book review; Kip Werking’s article about the real PTAB success rate; Kate Gaudry’s article about the PTAB’s failure to issue precedential opinions – I keep returning to these articles to cite them in other sources.

    But these recent Juristat articles – this one… and the last one… and the one before it – just stand out like a sore thumb. And it kills me – because again, Juristat’s data set could be put to such great use, and yet…

  12. a reader October 21, 2015 11:39 pm

    as others have already noted, this metric is pretty silly and is of no use in identifying the ‘success’ or ‘quality’ of patent practitioners. Juristat’s data can be put to much better use.

    i suspect that part of the motivation in creating these ‘top 10’ lists is to promote Juristat (and/or IPWatchdog). Note the specially created ‘badge’ for the occasion. The listed firms will be implicitly (if not explicitly) encouraged to promote, link, etc. this recognition, thereby also promoting Juristat and this site (and increasing traffic – i suspect that prior ‘top 10 firms’ lists were among this site’s most visited pages – Gene – can you confirm or deny?). This is not an uncommon practice but when such lists become so arbitrary (with respect to the metrics used) this objective becomes a bit too transparent.

    Gene – your point re: provisional rights is noted, however, to your question as to “why everyone ignores the existence of provisional rights…” the answer is because the likelihood of provisional rights actually resulting in damages is so exceedingly rare that the ROI for drafting claims hoping the provisional rights will have value just isn’t there.

    as others have also noted, this site posts a lot of good content and is a great industry resource but off the wall lists like this one harm the site (and Juristat’s) credibility.

  13. Anon October 22, 2015 4:30 pm

    Excellent post David.

    Out of your humility, though, you neglected to include another source of excellent information and thought provoking reading: your own website.

    Please provide a link.

  14. Gene Quinn October 22, 2015 4:54 pm

    a reader-

    I’m happy to address the issue of whether this article, or article like this, are the top articles we publish. I’m sorry to burst your bubble, but this article is not even close to the most widely read articles. We have articles that are read 100,000 times or more in a year. So far this article hasn’t yet crossed the 1,000 mark. As such, this article has not cracked the top 25 most read articles during the month of October 2015.

    As for provisional rights resulting in damages being so rare, there is a certain amount of self fulfilling prophecy there. So many here, and throughout the industry, don’t seem to care about whether claims that publish actually issue. With such complete and total indifference there is no wonder the odds of it happening are rare. But I know firms that engage in high level patent prosecution for clients where patent rights are vitally important. They engage in a variety of tactics that could be characterized as providing marginal benefit, but where there is benefit to be gained why wouldn’t you try and gain that benefit? Why not write at least a few claims that can issue and don’t need to be amended? Frankly, fighting the wisdom of doing that strikes me as extremely provincial.

    So if you don’t want to help your clients get provisional rights that is fine. But when things turn around in the patent industry, and the Supreme Court puts enhanced damages back on the table, don’t be surprised when the issue of provisional rights becomes far more important. Having at least some rights that date back a decade prior to a patent issuing in some cases will be extremely valuable. So while you and others don’t think this information is relevant, another way to look at it is that this could be some evidence that these firms are engaging in very high end strategic prosecution. The only way to know is to look deeper, but saying this conveys no useful information is a bit much.

    -Gene

  15. Night Writer October 22, 2015 5:57 pm

    I guess the thing that kind of makes this article a sore point is that it is using a very superficial metric of quality, although your point on provisional rights is a good one.

    And, I think we all know that superficial arguments and specious arguments are being used to rip our patent system apart. So, I think in normal times an article like this wouldn’t bother anyone. But in these times of never ending K-street and academic nonsense, we are all a bit sensitive.

    (As an example, Mark Lemley published a paper saying that software has NO structure, and yet never retracted that statement. I think we all sense that if people were held accountable for the facts and held accountable for the sufficiency of their arguments that patent law would not be suffering so.)

    Anyway, just a thought. I think the author should build on his work. It is probably a good idea to measure quality based on the claims that are issued. Be interesting to see a version 2.0 of this article.

  16. Michael Gulliford October 22, 2015 6:09 pm

    For what it’s worth, I would probably avoid a firm that touted the fact that its independent claims get through without amendment etc… A hard fought prosecution is a much better determiner of end value to me than a clean one. Clean just means you started too narrow or had an examiner needing to meet a quota who wasn’t interested in looking at any art.

  17. Anon October 22, 2015 7:53 pm

    The thing that I am most struck with is how absent any of this was from the entire build-up, passage, and post-passage discussions in Congress.

    The desperate lack of “quality” and actions related to what the Office can do within its own walls seems to be “championed” by a select and rather un-listened to few.

    Instead we DO get all the K-street noise, wreckage of a system that made innovation a top United States product (as all other products seemingly left our shores for lower cost factor locations elsewhere), and the pursuit of philosophical agendas that seem to perpetually denigrate innovation.

  18. Saul Zackson October 24, 2015 10:37 am

    I agree with Michael Guilford. It’s easy to write narrow claims that get allowed quickly, it’s just that they tend not to be of much value. So I’m not sure that this analysis provides a good metric of overall success for a patent firm.

  19. DC October 29, 2015 2:00 am

    Michael and Saul: I agree with you re excessively narrow claims that get allowed quickly, but the article is even less informative than that metric. The article only mentions the number of independent claims filed compared to the number of independent claims issued.
    On the other hand, fast allowance, even at the expense of claim breadth, can be very valuable to start up company that needs to raise money: It’s better to show investors a patent, rather than show them an application with office action and an explanation that the PTO is wrong. Broad claims are what continuations are for, at least for start-ups.
    Another problem with the metric is that it ignores the benefit of forcing a restriction, and canceling a group of claims and saving them for a continuation. That kills the patent quality as measured by Cosgrove’s metric, but increases the patent quality.