6 Best Ways To Control Your Spending With Patent Analytics
Patent analytics drive better prosecution outcomes – including less time to allowance, improved client relationships, and, crucially, increased profitability.
With Juristat Analytics, you can spot potential high-cost prosecution and make a plan of action to get ahead of it. Juristat clients use custom alerts to limit lengthy and expensive prosecution by monitoring specified prosecution events, office action or response counts, and even examiner metrics.
Here are the 6 ways to use Juristat Analytics to help you protect your client’s budget:
1. Recommend a CON for a likely NOA
When you are working with an examiner with a high allowance rate, you want to take full advantage of the elevated possibility of a Notice of Allowance. By identifying applications in front of these easy examiners, you can prosecute more ambitiously, pushing the envelope from the start of the process.
With Juristat’s custom alerts you can set a condition that alerts you when your examiner has a high allowance rate, giving you insight into which applications would be ideal to expand upon with a Continuation Patent Application.
2. Take strategic action on applications with excessive RCEs
When a prosecution has gone through multiple RCEs with little success, it may be time to take a different approach.
With Juristat, you can get alerts as soon as RCEs start stacking up in a prosecution. An alert on the second or third RCE can prompt you or your counsel to take a deeper dive into the examiner’s history to find out if an interview or appeal might be a more successful tactic.
These alerts are especially valuable for in-house IP teams, as they can help keep an eye on outside counsel. For example, if you require your counsel to get authorization before filing more than two RCEs, you can create an alert for applications with three or more RCEs to make sure your firms follow your guidelines.
3. Identify applications that have surpassed their assigned examiner’s OA to allowance rate
With Juristat’s advanced examiner analytics, you can get an idea of both the time and costs that will go into prosecuting an application.
For instance, if you search for examiner David Parsley in the Juristat app, you’ll see right off the bat you’ve got about a 50/50 chance of an allowance. But digging deeper into your examiner’s analytics can show you how many OAs it will take to get to an allowance.
In the case of Examiner Parsley, it takes an average of 3.2 office actions to get to an allowed application.
This provides great insight into whether or not you should proceed or abandon an application that has little likelihood of allowance.
4. Recommend an interview based on the assigned examiner's interview win rate
Interviews provide an opportunity to discuss the application with its examiner, giving clarity, resolving issues, and ensuring a better understanding of the application for both parties. Attorneys also enjoy the added benefit of observing an examiner’s reaction, creating amendments in real-time, and directly responding to areas of confusion.
The success of the interview depends on the receptivity of the assigned examiner. And while a past Juristat analysis found that interviews do typically improve outcomes, there are always outliers at the USPTO.
With Juristat Analytics, you can easily find if your examiner is positively influenced by an interview, such as Examiner Parlsey, seen below, or if an interview might be a poor use of your time and resources.
With examiner analytics in Juristat, you can chart a path to allowance or easily see when abandonment becomes the right idea.
5. Track forward citations
Quickly identify your most valuable patents and applications, discover licensing opportunities, catch potential infringement, and make data-driven decisions around maintenance fees with Juristat 102 Forward Cite Reports.
With this report, you'll know each time an examiner forward cites an issued patent or patent application against competitors in 102 rejections.
Analyzing forward citations will help you prioritize high-value applications. If examiners already cite your invention against other applications, you know your application has potential value in slowing down your competition or creating licensing opportunities.
By reviewing the forward citations by the examiner, you can identify the pending applications that already promise strong patent protections. Suppose an application doesn't have any forward citations (and also has unnecessary RCEs, missed interviews, or other key indicators of high-risk prosecution). In that case, it may be time to let that application go and focus on more valuable inventions.
6. Mind your maintenance fees
Is there an issued application in your portfolio that currently has no forward citations or child applications? In these cases, it may make sense to allow these patents to expire, saving your team time and money.
To better understand your maintenance fee spending, we suggest starting with an analysis of your issued applications, along with the following data points (all available within Juristat):
- Issue date
- The number of forward citations each application has received from an examiner
- The number of forward citations each application has received from a third party
- The number of related child applications
Armed with this information, calculating future maintenance fees is fairly simple. In a spreadsheet, create additional columns for due dates 3.5 years, 7.5 years, and 11.5 years from the issue date. Sort your spreadsheet to find maintenance fees due in the next year and then calculate the annual cost by consulting the USPTO Fee Schedule. Learn more on how to use analytics to save on maintenance fees in this on-demand webinar.
When it comes to controlling your spending, these five strategies are just the beginning. See what’s possible. Schedule a demo today.