Juristat recently analyzed the patent prosecution history of a local Top 10 firm (the “Firm”) and determined that the Firm could have generated an additional $55,000 per prosecutor in revenue by incorporating Juristat Examiner Reports into their patent prosecution practice. A step-by-step breakdown of our analysis follows.
In analyzing the Firm’s patent prosecution history, we reviewed 148 patent applications prosecuted by the Firm. The data from these applications was downloaded in bulk from the public PAIR database maintained by the USPTO. We first identified applications in which the Firm received a final rejection, responded with an RCE that the examiner also rejected, and then abandoned the application.
We then identified those examiners whose decisions statistically made more sense to appeal, rather than file an RCE, when taking into account both likelihood of success and associated costs of each type of action. Specifically, we narrowed the results to the applications before examiners where our data showed the applicant had statistically 15% higher chance of success on appeal than RCE. We counted those applications in which the examiner was reversed in-whole or in-part or withdrew a rejection as allowances following appeal. Where the examiner issued a notice of allowance following an RCE, we treated the application as allowed following RCE.
In addition, we removed any examiners who met the above criteria, but had an allowance rate on RCE that exceeds 75%, as we anticipate it would prove difficult to convince a client to incur the costs of an appeal when allowance via RCE has such a high probability of success.
Of the original 148 applications, 10 applications met the above criteria. If the Firm had used Juristat to convince its clients to file appeals, rather than RCEs, for just these 10 applications, we estimate the Firm would have generated an additional $55,000 in billable work per attorney, while statistically improving their client’s chances of success by at least 15%.
Our $55,000 per prosecutor figure is based on the following assumptions provided by the Firm: 1) when billing on an hourly fee arrangement the Firm earns $9,000 more from an appeal than an RCE, and 2) that 20% of appeals require oral arguments that generate an average $10,000 in additional fees.
Notably, the total cost of Juristat’s services would have been $15,540. This means that every dollar spent by the Firm on Juristat products would have generated an additional $7 in revenue for the Firm. Furthermore, these estimates do not include indirect increases in revenue from clients sending additional work to the Firm based on its patent prosecution success.