Predicting (And Avoiding) High-Cost Patent Prosecution

Predicting (And Avoiding) High-Cost Patent Prosecution

No matter your ultimate patent goals, modeling prosecution spend on pending cases can help you identify outlier applications and avoid lengthy, costly prosecution.

Every company approaches patent strategy differently. Most high-volume filers are looking to grow and maintain a large portfolio – often within a defined budget, of course. Others however are more focused on obtaining a critical allowance on select, high-value applications.

Applications with difficult paths to allowance can quickly become a drain on resources. Using data to predict and take early action on these problematic applications can shorten the usual timeline and save money in the long term.

If you are focused on maintaining or growing a large patent portfolio:

Teams filing and maintaining a high volume of patent applications need to develop standards that ensure viable applications get the attention they need, while unviable applications are abandoned before they start draining from the budget. Put simply, you need to do some pruning.

Data analysis can help you identify applications facing extensive, difficult prosecution and decide whether those applications are worth the extra time and money or should be abandoned to protect resources.

How do you identify these problematic applications? We see corporate clients focusing on these three parameters:

  • Applications with examiner allowance rates of less than 25%
  • Applications with unnecessary RCEs
  • Applications with missed interviews

Examiner allowance rates are fairly straightforward for modern patent attorneys, but let's talk about how we define unnecessary RCEs and missed interviews.

We typically define an unnecessary RCE as an application with at least six OAs, two or more RCEs, and no appeals, even though the examiner’s RCE win rate is substantially less than the examiner’s appeal win rate. (An examiner’s win rate is the likelihood of an application reaching allowance after a certain type of OA response is filed.)

For pending applications, we define a missed interview for applications where there are four (or more) OAs with no interviews, and the examiner's interview win rate is greater than or equal to the examiner's RCE win rate.

Our experience with leading corporate filers shaped these specific metrics, but your team can play around with the parameters defining each term. Once you determine what an unnecessary RCE or missed interview looks like for your organization or client, you can start to understand how much money you are wasting on problematic applications.

Furthermore, combining this data with USPTO fees and built-in attorney costs, you can quickly estimate the average cost of prosecution for those problematic applications. And if your goal is to maintain your budget, you now have a much smaller list of applications to review to decide which are priorities and which can be cut loose.


Modeling Prosecution Spend to Optimize Quality and Budget
If you are focused on select, high-value prosecution:

For some, the concern is less about losing money due to the sheer volume of unviable applications and more about ensuring the success of select, high-priority inventions. To meet that goal, the metrics mentioned above – unnecessary RCEs, missed interviews, and low examiner allowance rates – are still incredibly valuable. But fewer applications to consider means more time for a deeper analysis of each. Specifically, we see companies focusing on examiner metrics and forward citations.

For example, if your application already has more OAs than any other application ever allowed by your assigned examiner, it’s probably not a good sign for eventual success. Our metric, examiner maximum allowed office actions, helps you quickly determine if it may be time to abandon.

Analyzing forward citations is another way to 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.


Of course, these are just a few examples of the many ways you can use data to model prosecution spend for pending applications. Take these metrics as a starting-off point, and then consider your own unique success metrics for a more insightful and impactful patent prosecution strategy.

If you would like to learn more about this approach, watch our on-demand webinar, Modeling Prosecution Spend to Optimize Quality and Budget. Or, if you are ready to see Juristat Patent Analytics in action, schedule a demo.

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