Better Patents Now

Inspired by a listener’s question, Megan does a deep dive into art unit 3649: the “pro se” art unit. The USPTO created this art unit in 2015 to help guide pro se applicants—those who choose to represent themselves before the USPTO—through the prosecution process. The art unit includes experienced patent examiners from every technology area and is designed to provide additional guidance to applicants who are not familiar with the process. Not surprisingly, this art unit has some unique statistical characteristics: from how applicants are utilizing the Track One program to the varying subject matter of applications being filed.

Patent practitioners typically turn to prosecution analytics to help them prosecute more efficiently. With the rise of fixed fees and a clientele that is constantly demanding more for less, there is significant pressure to complete tasks more quickly. But prosecution analytics also open the door to a new type of advocacy in a profession that is increasingly becoming commoditized. As an example, Megan discusses the art of drafting patent applications to aim for favorable art units; specifically, using PathWays to help identify favorable art units and to provide drafting guidance. This type of data-driven strategy may take a bit more time at first—but it could change the profession for the better.

Megan reminds leaders about the new proprietary metric, ETA (Examiner Time Allocation) and introduces two new deeper dive metrics. Before you file, these metrics will give you an understanding of your chances of "winning the examiner lottery" that will help you influence those chances. She demonstrates how the way that you draft your application, based on this knowledge, can put your case onto a different path and drastically improve your outcome.

Megan talks about deciding how to respond to a first office action. She discusses how the way you would respond to an office action without data can very often be different from the way you might respond with data.

In this episode, former patent Examiner Josh Rudawitz joins Megan to discuss the rationale behind ETA, PatentAdvisor's proprietary metric for examiner behavior. Josh weighs in on some of the reasons for ETA variations, both among and within art units.

Megan interviews patent attorney Josh Rudawitz about his experience as a patent examiner. Josh discusses his career path at the USPTO and shares valuable insights about the level of autonomy granted to examiners at various points in their careers. Based on his experience working on both sides of the table, Josh shares his advice for patent practitioners.

In this Halloween-themed episode, Megan addresses situations in a prosecution that should make your hair stand on end. When something just doesn’t seem right, there may be a good reason to be afraid and take a deeper dive into the statistics. The examiner’s body of work, captured in the collective prosecution history of all their applications, can be particularly helpful for unearthing the examiner’s tendencies and the best strategies to deal with them.

Nintendo's IP portfolio is full of colorful patents--ranging from banana rubbing to rigging Mario Kart races. But equally interesting (at least, for patent data nerds) is the high percentage of applications that landed with green examiners. "Green" examiners are those examiners who issue patents quickly, with a low office action to allowance ratio. Megan discusses the prosecution strategy implications of being assigned a green examiner, as well as the importance of aiming your application towards groups of examiners that have more green than red.

Megan reviews one of the longest prosecution histories recorded in public PAIR, for application number 05/849,812. Prosecution for application number 05/849,812 has spanned over 40 years, 19 Office Actions, and 7 appeals. For at least the past 20 years, the battle has involved the same examiner and the same pro se inventor. While one can only guess what they are actually fighting about—unless they have the time to read the 632-page appeal brief that was just filed—there is no doubt that this application is worth watching.

Megan revisits the revolutionary metric for examiner behavior: ETA (Examiner Time Allocation). Although this new way of examining examiners has caught on quickly—and even inspired a few copycats—it has also sparked a lot of debate. In this episode, the host answers some of the more common questions and address objections to the metric. The upshot is that ETA was designed to be robust to some common obstacles in measuring examiner behavior, such as junior examiner status and the transition to primary. Nonetheless, it is best used as an alarm system. Knowing that your examiner is red is obviously important for developing strategy, but it’s not the end of the inquiry.

An interview with Ken Gemmill, Business Operations Manager for LexisNexis IP. In his career, Ken has witnessed the birth of analytics entering the patent business. He routinely speaks with law firms that are using analytics in their patent prosecution. Ken discusses the ways that the field has evolved, and how today's law firms can use patent analytics to their advantage, beyond examiner reports.

When is it time to use the appeal process or take some other extraordinary action after a final rejection has been issued? This episode discusses the key role of patent analytics in moving you from a position of guessing your next step to one of data-informed prosecution strategy.

This episode covers the concept of the "alignment report," a software tool for determining whether a company or law firm's prosecution performance is in line with what is normal at the USPTO. As Megan discusses the goals and potential pitfalls of such data comparisons, she discovers that the most challenging step is actually selecting which applications to include in the comparison. Many patent practitioners make the mistake of defining the application set too broadly, to include applications from vastly different technology areas. This can result in unfair comparisons: for example, comparing a law firm that only works on software patents with one that works on mechanical patents.

Megan discusses the challenges of getting a new examiner by filing a continuation application. In spite of the difficulties, this strategy has worked for some attorneys with the right tools—including LexisNexis PathWays™. PathWays predicts which group of examiners an application will be assigned to, and helps guide users toward more favorable assignments. Using this tool, Megan works through the ideation process for an example continuation filing aimed at getting a different examiner.

Megan reviews the prosecution history and examiner statistics for U.S. Patent No. 8,272,961, a patent owned by gaming giant Zynga. The patent covers a broad range of online gameplay but was issued surprisingly quickly. However, even more interesting than the application's faster-than-normal prosecution is its classification. It appears to be an outlier in an art unit that mainly focuses on hardware and electronics, and which has a favorable allowance profile compared with art units where gaming applications would typically be found.

Professor Sean Tu returns to talk to Megan about his research into what drives examiner behavioral patterns. His previous research revealed pockets of fast-moving and slow-moving examiners, but now he aims to answer the question "how are applicants and examiners slowing the prosecution process"? To answer this question, Professor Tu has conducted an in-depth, manual analysis of hundreds of applications from technology center 1600. In this episode, he shares the initial results of this analysis, including what types of rejections slower examiners typically issue, how many rejections they issue, and whether their applications are mostly original filings or continuations.

Megan searches through image file wrapper documents for oddities ranging from typographical errors to name-calling. Have you ever wondered how many times applicants lost their temper with the examiner on the record? Which art units issue the most rejections for typos? Channel your inner 10-year-old and tune in, or run some searches yourself in PatentAdvisor's PatDocSearch!

Megan pinpoints 5 prosecution scenarios where a strategy change may be necessary in light of the statistics. Like football, prosecution is a back-and-forth between the examiner and the applicant that requires constant reevaluation. For example, even when appeal may seem like the most favorable route substantively – or instinctively – if the statistics are not in your favor, it may make sense to continue working with the examiner.

Megan discusses the importance of examiner experience in shaping prosecution strategy. Experience level is one of the factors in the calculation of ETA, PatentAdvisor’s proprietary metric that predicts the probability and difficulty of allowance, and it matters for reasons beyond the obvious. In addition to simply being new to the process, early career examiners also carry the burden of a disproportionately large docket. If a new examiner chooses to churn through their docket instead of focusing on a handful of applications, their grant rate will be significantly slower than average.

Megan dives into the prosecution histories of several patents featured on the "Stupid Patent of the Month" blog. The blog was created before Alice to shine the spotlight on (arguably) overbroad software patents, but even after Alice the authors have continued to uncover issuances with broad or seemingly obvious claims. An analysis of the last 20 patents featured in the blog indicates that these applications may have gotten through the USPTO by avoiding the Alice-heavy - or "doom" - art units.

Megan discusses the sequel to Moneyball, in which Michael Lewis points out flaws in human decision-making that have applicability to patent prosecution. Like most experts, patent practitioners have inherent biases that can negatively impact their strategic decision-making. And just like the sports industry, the patent industry is undergoing a revolution due to the emergence of data that can help mitigate these biases.

Megan introduces a revolutionary way of measuring patent examiner behavior: ETA (Examiner Time Allocation). Unlike allowance rate, ETA provides an estimate of both the chances of and time to allowance. And because it is based solely upon the examiner's own behavior, it is not biased by abandonments out of the examiner’s control.

This episode evaluates the current status of bitcoin-related patent filings at the USPTO. Attention is also given to a proposed strategy for identifying pockets of art units in the patent office where a particular technology of interest might be assigned.

This episode looks at the history of a patent granted for a device intended to detect when Santa Claus is entering a house by way of the chimney. Some time is also given to a discussion about whether patents in the silly category are good or bad when it comes to the corresponding impact on the integrity of the broader patent system. 

A rebroadcast of a recent webinar with Eric Zaiser, Patent Counsel at Google. Eric discusses thinking through the issues involved with balancing your relationship with outside counsel while taking ownership of strategic decisions related to your patent portfolio.

This episode reflects on how Asia, Europe, and the United States have each reacted a little bit differently to being challenged to transition to data-driven decision making during pre-grant patent processes. 

This episode produces a fake scenario that would normally be played out during a cocktail party conversation with a worker in the pre-grant patent data industry.

Megan discusses what she sees as the proper way to evaluate whether patent prosecution has gone well. Emphasis is placed on establishing proper benchmarks on an application-specific basis.

Megan identifies five specific decisions that patent prosecution attorneys should typically never make without being informed by relevant data. The emphasis is on anticipating a most likely outcome instead of guessing. 

Megan interviews Joe Kelly, of Kelly, Holt & Christenson, about basic response writing techniques for optimizing the likelihood of a desirable outcome during patent prosecution. Joe also explains his "multiple paths to allowance" amendment strategy.

Megan shares 6 ideas for searching image file wrappers to enhance your patent practice. This rich content set—including claims, responses, office actions, and appeal documents—can help you find licensing opportunities, decide whether or not to hire an attorney, perform complex USPTO trend analysis, and much more. 

Megan interviews patent attorney Ryan Schneer about his experience as a patent examiner. Ryan discusses some of the benefits and challenges of working in a newly formed art unit and shares valuable insights into the organizational hierarchy at the USPTO. Based on his experience working on both sides of the table, Ryan shares his advice for patent practitioners.

Megan relays her top 4 strategies for using prosecution analytics for competitive intelligence. While many competitive intelligence efforts are focused on a competitor’s issued patent portfolio, looking at prosecution statistics can provide insight into what is coming down the pipeline, as well as early indicators of an issued patent’s value. For example, you can identify pending applications likely to be of value to your competitors by monitoring for their Track One filings. 

Megan discusses a common strategy patent examiners use, but which may cost applicants unnecessary prosecution dollars. Specifically, many examiners have a habit of requiring an RCE prior to granting an allowance, even when the amendment after final was not significant. Is there really a need for the additional fee and the additional search? What should applicants do when working with examiners who have this tendency?

Megan discusses how to use "big brother" to your advantage in developing a patent strategy. By monitoring prosecution patterns, practitioners can look out for incoming competitor patents of interest, monitor for patents that competitors have deemed important, and even keep on top of their associates' workflow.

Megan reviews prosecution statistics for a couple of very difficult examiners. Although they are not the norm, examiners who rarely or never allow certain types of applications do exist. Now that prosecution statistics are readily available, does IP counsel have a duty to investigate and disclose problematic statistics to their clients? Is there also a duty to adjust prosecution strategy for "dead end" examiners?

Megan discusses the top 5 pitfalls of comparing patent prosecution data from one entity to another—company to company or law firm to law firm.  This podcast will tell you what questions to ask when presented with comparative patent prosecution data from law firm or corporate advertising material.  It will also help you to generate the most accurate information possible for your own competitive purposes.

Megan evaluates the prosecution history of U.S. Patent No. 5,352,605, Monsanto’s patent on genetically modified soybeans that was at issue in Bowman v. Monsanto. Monsanto’s counsel for this patent application took a very aggressive prosecution strategy—appealing after the first final office action—and it paid off. In what other situations could such an aggressive appeal strategy make statistical sense?

Megan decides whether she would hire someone as her patent attorney based on their prosecution performance. Megan evaluates allowance rate, office action, interview, and appeal statistics.

Megan discusses the prosecution history of U.S. Patent No. 6,955,484, GoPro's patent covering their basic technology. The examiner who allowed that patent has a history of indicating "allowable subject matter" early in prosecution. Did GoPro make the right strategic decisions based on this examiner's history of permissiveness?

Megan interviews guest speaker Professor Sean Tu, from the University of West Virginia, about his research on which examiners are most likely to issue litigated patents. Are these controversial patents mainly issued by junior or primary examiners - or both? His surprising findings raise questions about USPTO promotion practices.

Megan discusses ways to monetize a pending portfolio. Should purchasers have to pay anything for applications that haven't issued?

Megan reviews basics of the patent prosecution process - from issuance of a non-final office action to termination - and gives basic pointers on where patent analytics come into play.

Megan reviews the basics of the patent prosecution process - from filing to issuance of a non-final office action - and gives basic pointers on where patent analytics come into play.

Megan discusses strategies for cases facing a "mooter": a patent examiner who repeatedly cites new art. In particular, she examines US Application No. 12/995,610 to determine whether there were early signs that appeal was a good strategy.

Megan decides what to do with an application facing a new patent examiner: U.S. Application No. 14/828,744. Why is it so hard to get cases allowed by a new patent examiner, and what can patent prosecutors do about it?

Megan interviews Katie Scholz, of Kelly, Holt, & Christenson, about how she uses patent data to improve her prosecution performance. Katie also explains how using data has improved her client relationships.

Megan reviews the prosecution history and examiner statistics for U.S. Patent No. 7,669,123, a very controversial patent that covers the Facebook newsfeed. Was it allowed on merit, or was the USPTO influenced by the identity of the applicant?

Megan reviews the prosecution history and examiner statistics for U.S. Patent No. 8,825,597, which covers the Dropbox technology. Based on the examiner's statistics, how likely was it for Dropbox to obtain this patent?

Megan decides what to do with an application facing a non-functional, descriptive subject matter argument: US Application No. 11/635,318. She provides the history of this type of rejection, which provided ammunition against business method and software patents before Alice and continues to pose problems for some applicants.

Megan explores what makes a good patent attorney in today's world of big data.