Patent prosecutors are accustomed to variations among patent examiners at the U.S. Patent and Trademark Office (USPTO). Some examiners frequently allow applications, granting interviews, listening to arguments, and perhaps suggesting amendments when needed. Other examiners allow applications with less frequency, and some may repeatedly reject applications for reasons that can be unclear. Here, I explain how examiner statistics can be leveraged to inform prosecution strategies and improve outcomes, and one use of examiner statistics that may be considered improper.
In recent years, there is an increasing amount of information available on individual patent examiners from a variety of free and paid services. These services aggregate prosecution data and calculate statistics regarding examiner tendencies. For example, many services can provide an individual examiner’s allowance rate and the average allowance rate of the examiner’s art unit. Other more detailed statistics are also available, such as an examiner’s success rate on appeal, the average time to issue a Notice of Allowance, and the outcome following examiner interviews.
In the past, examiner statistics may have been considered interesting but not essential to a practitioner’s prosecution strategy. Increasingly, however, clients are seeking to maximize their IP budget by increasing the number of applications that are allowed and reducing the number of Office Actions needed to reach allowance. In-house attorneys and portfolio managers are increasingly aware of the availability of examiner statistics and are looking to outside counsel to consider this information when developing response strategies.
How can examiner statistics be useful to patent prosecutors and their clients? Although a number of websites provide examiner statistics, many different types of statistics are provided, some of which are calculated differently by different providers. It is up to the individual practitioner to decide when to consider examiner statistics, to interpret the data, and to consider how the data should inform the response strategy.
One commonly used examiner statistic is an examiner’s allowance rate. In a vacuum, an examiner’s allowance rate (e.g., 70%) may not provide actionable information, since it may be calculated differently by different providers, and there are general variations across art units in the USPTO. An allowance rate of 70% may be high for one art unit but low for another art unit.
Comparing an examiner’s allowance rate with the average allowance rate of the examiner’s art unit, however, can provide insights. Assuming the examiner has examined a sufficient number of applications (e.g., hundreds), his or her allowance rate can provide a window into the examiner’s tendencies. For example, if the examiner’s art unit has an average allowance rate of 75% and the examiner has an individual allowance rate of 50%, this may indicate that getting allowances from that particular examiner will be a challenge. If the examiner is not willing to accept what an experienced practitioner views as strong arguments, and interviews do not prove successful, an examiner’s allowance rate that is well below average may suggest appeal as the most reasonable option, rather than repeatedly filing requests for continued examination with new amendments and/or arguments. Determining whether an appeal is necessary at an early stage can reduce costs. Alternatively, if an examiner has an above-average allowance rate, this may suggest that the examiner may be more likely to accept arguments and/or amendments.
As an example, we recently handled an application in which the examiner rejected the independent claims as obvious in view of six references from a variety of different fields. Submitting arguments in response to the Office Action did not convince the examiner to withdraw the rejection. We checked the examiner’s allowance rate and noticed it to be 30% below the average for the examiner’s art unit. Considering this and other factors, we recommended appeal to the client and provided the examiner’s statistics in support of our recommendation. The client was appreciative that we backed up our recommendation with data, and was convinced that the outlook for continuing prosecution with the examiner was not promising. The client authorized an appeal. Upon submission of our Appeal Brief, the examiner elected not to maintain the rejection, and instead issued a Notice of Allowance. That client has since asked that we consider examiner statistics routinely for other cases.
An examiner’s success rate on appeal can also be useful. If the examiner’s success rate on appeal is low, and the argument against maintaining the rejection is strong, this may suggest a Pre-Appeal Brief Request for Review will have a reasonable chance of success. We recently adopted this strategy for an application that was under final rejection, and the panel of examiners decided to withdraw the rejection in favor of a new Office Action rather than send the rejection to the Patent Trial and Appeal Board.
The allowance rate of senior examiners in the examiner’s art unit can also be useful when facing a difficult examiner. If the examiner has a low allowance rate but the examiner’s supervisor has a significantly higher allowance rate, a practitioner may consider requesting an interview with both the examiner and the supervisor. This can help to ensure the applicant’s arguments are fully considered.
These are some examples of ways in which examiner statistics can help to inform prosecution strategy and improve outcomes. Undoubtedly there are many other ways to use this information. Another use that has been suggested is for “pruning” of patent portfolios. For example, if a client seeks to abandon a number of applications to reduce costs, they may consider abandoning low-value applications that are assigned to more challenging examiners.
Although examiner statistics can be useful, each patent application is unique and must stand on its own merits. There have been reports of practitioners bringing up an examiner’s low allowance rate during an examiner interview, which has been suggested to be an improper attempt to influence the examiner outside the merits of the application. Although practitioners must zealously advocate for their clients’ rights, care should be taken to comply with applicable ethics rules. It is unknown whether the Office of Enrollment and Discipline has addressed discussion of examiner statistics during examiner interviews.
Clients are increasingly relying on outside counsel to develop innovative strategies, and are increasingly requesting that these strategies be data-driven. Innovative use of examiner statistics can help to improve efficiency and strengthen patent portfolios. If it has not already arrived, the day is coming when law firms will be asked to pitch for prosecution work based on how they can use examiner statistics to inform prosecution decisions.