How to Identify High-Cost Prosecution and Regain Control of Your Spending

Patent prosecution is expensive and complex. And often, each individual practitioner has their own unique approach to reach that all-important NOA. But inconsistent practices and reliance solely on past experience can lead to inflated costs.

Standardizing your approach across attorneys or outside counsel can take the guesswork out of dealing with high-cost prosecution. Using patent analytics to set benchmarks, you can establish consistent guidelines to identify outlier applications and determine the best approach to regain control.

For law firms and in-house counsel, guidelines like these combine your subject matter expertise with data on your most successful past prosecution. For corporate IP managers, these guidelines can help keep all your outside firms on the same page and make comparing and evaluating their performance easier.

Here are three tips to help you save money by identifying high-cost prosecution and regain control of your spending.

Cost-saving tip #1: Abandon applications unlikely to issue
The longer an application is pending at the USPTO, the more office actions it accumulates, and the more expensive the prosecution becomes. And while a longer timeline doesn’t necessarily mean that an allowance is impossible, examiner behavior metrics can reveal if a lingering application is unlikely to ultimately reach an NOA.

While reviewing applications, here are some questions to consider:

  • Is the current OA count for this application higher than the examiner’s maximum OA count? If so, is it worth continuing the process when no other application has received an allowance at this point?
  • Is the current OA count more than double the examiner’s average OA count? You can assume that the higher the difference, the less likely the application with reach an NOA.

With all this in mind, you may, for example, want to set a standard guideline to abandon any application that has an office action count significantly beyond the average OA count for the examiner. To us, that would mean more than twice the average number of OAs for the assigned examiner, but you can decide what makes the most sense for your client or organization.

Cost-saving #2: Choose the optimal office action response strategy

Setting guidelines for prosecution decision-making doesn’t mean you are sacrificing attention to detail. In fact, developing if-then parameters based on win rate data can get rather specific.

Examiner win rates help you better understand how a particular examiner reacts to an interview, an RCE, or an appeal by considering how often the specific action is directly followed by an NOA. By comparing these metrics, you and your team can decide which action is the most advantageous for your application.

Here are two examples of specific guidelines you can set using examiner win rate and an application’s past activity:

  • If an application has 2+ OAs, 0 interviews, and the examiner interview win rate is 20 percentage points higher than the RCE win rate, then consider an interview.
  • If an application has 3+ OAs, at least 1 RCE, and the appeal win rate is 40 percentage points higher than both interview and RCE win rates, then consider an appeal. (Since appeals cost more, you want to make sure there is a higher chance of success. This higher threshold is a way to make sure your money goes further.)

Cost-saving tip #3: Avoid unnecessary maintenance fees

Consider cutting costs on issued applications that currently have no forward citations or child applications - in other words, applications that are adding no value to your portfolio. In these cases, it may make sense to allow these patents to expire, saving your team money with no value loss to your portfolio.

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.

Of course, you also need to develop some guidelines to identify issued applications that are not adding value to your portfolio and no longer need the upkeep. As always, what these parameters look like will be different for each team. In a recent cost-savings webinar, we walk through a similar analysis in which we decided any issued application without forward citations or child applications should be considered for expiration.

By standardizing your team’s approach to trimming prosecution costs, you ensure a consistent approach to a process that is typically anything but. Of course, these parameters are not absolute - each attorney is still the most knowledgeable authority on their own applications. But general guidelines like the ones mentioned here can help streamline the process by prioritizing at-risk applications and identifying unnecessary costs.

Want to see how Juristat Analytics can help you identify cost-saving opportunities? Schedule a demo with us.

Get a demo


Looking Back at the Great Recession of 2007-2009: How Was the USPTO Affected?


How Remote IP Teams Excel with Legal Tech