5 Best Metrics to Evaluate Outside Counsel

Metrics for IP teams to evaluate outside patent counsel

Evaluating outside counsel is a crucial task for in-house patent teams seeking a valuable legal partner. While it may be easy to simply pick the biggest name firm, or choose based on word-of-mouth, that might not always be the best fit for your business. 

With the right data, you can streamline the decision-making process, and ensure your prosecution work is being effectively assigned. Here are five metrics to help you evaluate outside counsel:

1. Volume of work in a particular industry or technology

While filing volume is not necessarily a measure of success, it can indicate expertise around a particular client or technology type. Application counts are important to have on hand to assess firm costs and ROI. Additionally, if you are considering transitioning patent work to or from another firm, it’s essential to know the overall volume of work in question.

2. Firm Allowance Rate vs. Examiner Allowance Rate

Allowance rate is a relatively straightforward indicator of successful patent prosecution. You can take your analysis a step further by comparing the firm’s average allowance rate to your current examiner’s average allowance rate. Is this firm outperforming or underperforming in front of USPTO examiners? Considering the difference between these two allowance rates, you normalize your assessment across all firms, regardless of examiner difficulty.

3. Average number of words per independent claim at publishing and at issuance

When choosing a legal partner, you should obviously consider the quality of their work. This is where examining average number of words per independent claim at publishing and average number of words per independent claim at issuance come into your analysis. 

By subtracting the average number of words per independent claim at publishing from the average number of words per independent claim at issuance, you can discover the average number of words added during prosecution per firm. More words added to an independent claim usually indicate a narrowing of the patentable scope and, in the end, a weaker patent. 

With this quality metric, combined with the average spend your company is paying a firm per patent, you can identify which of your legal partners provide the most quality patents at the most affordable price.

4. Unnecessary maintenance fees 

Maintenance fees are required to keep a patent active, allowing a company to enforce its patent rights against potential infringers. But does your company want to continue enforcing all of its patents? These fees add up over time, and not all patents are worth the money.

Is your outside counsel Identifying patents with upcoming fees but lacking forward citation or child applications? This strategic analysis can help your company decide which patents to keep in your portfolio, and which to let go. Your outside counsel should be doing this kind of analysis to prove they are more than just your attorney, they’re a strategic partner.

5. 102 forward citations

102 forward citations can serve as an indication of overall patent quality. Suppose your outside counsel frequently has applications cited by examiners against other applications. That may signal how well the applications are drafted and how valuable those IP assets are to the company.

If you want outside counsel to be more than just a transactional part of your strategy, they should be monitoring your patent portfolio for strategic opportunities.

Selecting the right outside counsel is key to the success of your company’s patent portfolio. And while there are obviously many factors at play – like identifying firm cost and firm value – these five metrics are a great starting point and readily available within Juristat. 

You can learn more about this data and how to build your own scorecard in our on-demand webinar, How Leading In-House Teams Evaluate Outside Counsel Performance, or schedule a demo today.

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