4 Tips to Avoid Costly Patent Prosecution

To succeed in any industry, a certain amount of foresight and planning is key. For patent attorneys, identifying and taking action on high-cost prosecution can lessen the usual timeline and save money in the long term.

We already discussed a few ways to take control of your spending, and now with Juristat Custom Application Alerts, your review process for out-of-control spend just got a lot easier. Your team can now set alerts for applications based on specified prosecution events, office action or response counts, and even examiner metrics.

Here are four ways to avoid a high-cost prosecution.

Cost-saving tip #1: File a CON when your examiner has a high allowance rate

When you are working with an examiner with a high allowance rate, you want to take full advantage of the elevated possibility of an NOA. By identifying applications in front of these easy examiners, you can prosecute more ambitiously, pushing the envelope from the start of the process. Why not try to cover more in your application by filing a continuation to expand the patent family? With Juristat’s custom alerts, you can also include a condition related to the examiner’s RCE allowance rate, ensuring that the examiner’s favorable allowance rate also extends to continuations.

Cost-saving tip #2: Interview when you have the best chance of success

If an examiner is more likely to respond favorably to an interview rather than an RCE or an appeal, you’d probably try out an interview, right? Of course. With our custom alerts, you can identify applications with a final rejection, no interviews, and a more advantageous examiner's interview win rate compared to the examiner's RCE and appeal win rates. By knowing which response is the most effective, you can make the best possible decision for your prosecution strategy.

Cost-saving tip #3: 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. 

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.

For in-house teams, these alerts can also 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.

Cost-saving tip #4: Identify applications that are not working

Patent prosecution is a balancing act, and the most talented patent attorneys know when to continue pushing a troubled prosecution or to abandon the current strategy. One approach is to review an examiner’s average office actions to allowance. Knowing the usual timeline for an examiner’s review process can help you decide if a patent application may be beyond the point of no return. Applications with more office actions than the examiner’s average are less likely to succeed. 

With Juristat’s custom alerts, you can receive a notification for every application that has surpassed the examiner average, reminding you to thoroughly review the examiner’s profile and decide if the application is worth the time and money necessary to move forward.


The best patent attorneys seek a speedy, cost-efficient patent prosecution – and our custom application alerts are a game-changer in that regard. Instead of reconsidering every patent application after every OA, you can use these alerts to decide the best course of action based on historical trends and examiner metrics. Use these alerts to automate away easy decisions and focus your time on the applications that need the most attention.

Interested in exploring our new custom alerts feature? We’d be happy to show you how it works.