How to Improve Patent Prosecution Efficiency and Simultaneously Increase Quality
During prosecution, small mistakes can turn into costly delays. A recent analysis of office action responses found that nearly 12% contain errors made by attorneys.
We recently analyzed OA responses to investigate how frequently errors are made by attorneys and their staff in claim drafting. The sample dataset included nearly 500 OA responses from 21 different law firms of varying sizes but all within the top 200 by patent filing volume. Further, we made sure to include patent applications from multiple industries, verticals, and classes, as well as different case types, including foreign, domestic original filings, CONs, and DIVs.
Ultimately, we found that 11.5% of all claims contained at least one drafting error made by the firm.
But we’re not just picking on attorneys here. We also calculated examiner error rates in the underlying responses. We found that 7.4% of OAs contained at least one examiner error, which are typically more substantive and problematic (we explain what constitutes the different error types below).
Nevertheless, we should all find these numbers sobering. The patent attorneys I know and work with take their job seriously and fully comprehend the value that quality work provides to their clients. I’m confident they’d all agree that a nearly 12% error rate is flatly unacceptable.
And further, I’m sure the USPTO would consider a 7.4% error rate in substantive rejections problematic in light of their continuing efforts to improve prosecution quality and speed. We, as an industry, must do better.
What qualifies as an attorney error in our analysis?
Attorney errors include mistakes such as misspellings, typos, missing words, duplicate words or phrases, and obvious grammatical errors contained in claims submitted to the USPTO. For example:
- Attorney wrote: “transition metal dichalcogenide (TDMC)”
Attorney meant: “transition metal dichalcogenide (TMDC)” [emphasis added]
- Attorney wrote: “Ta(NMe2)S”
Attorney meant: “Ta(NMe2)5” [emphasis added]
- Attorney wrote: “The mehtod of claim claim 1”
Attorney meant: “The method of claim 1”
What qualifies as an examiner error in our analysis?
Here, we looked specifically for accuracy errors or omissions in the rejections of the office action. For example:
- Incorrect or missing art or claims rejections (for example, the OA rejects claims 1-20 but claims 1-20 were canceled and rewritten as claims 21-40)
- Examiner cites the incorrect art
- Examiner doesn't include the art that they are referencing
- Examiner doesn't include certain claims in a rejection statement but includes them in the text of the rejection
- Examiner cites correct publication number for art, but gives incorrect inventor name or misspells name
- For annotations, the examiner cites paragraph numbers, but the art doesn't have them (or vice versa)
The effect of current staffing trends on patent quality
With all this said, it’s easy to throw stones. Juristat has been a part of the patent prosecution landscape for over a decade, and frankly, the pressure on firms has never been greater.
Flat-fee pricing, already becoming the norm for many firms, is getting crammed down, while the shrinking supply of experienced support staff is driving up costs at an unsustainable rate. The Great Resignation only further exacerbated already entrenched generational differences in talent quantity and experience between Baby Boomer and Gen-X versus Millennial and Gen Z.
Ultimately, firms are caught between a rock and a hard place, and it is no wonder quality is the first variable to give. However, we all know that a long-term quality drop is the death knell for a firm. Clients start sending less work, rainmakers start departing for greener pastures, and the downward spiral is hard to stop once it's begun.
How can you prevent errors in OA responses?
During prosecution, these small mistakes can turn into costly delays, resulting in excess USPTO fees, driving up staff time that has to be written off, and ultimately, eating away at budgets and profits per partner (PPP). While you cannot control examiner errors, you can take steps to ensure that your firm is not contributing to the problem.
- Hire Juristat to automate your OA response workflow. Yes, I’m a self-serving capitalist, unapologetically so. But, consider this: While 11.5% of OA responses analyzed contained at least one attorney error, less than 0.5% of OA responses produced by Juristat during this timeframe contained a comparable error. Further proof is in our growth: Juristat’s OA response volume has more than doubled every year since it was introduced in 2019. And with good reason – it works. Juristat OAR improves firm efficiency, enhances the quality of life for support staff, and increases profits per partner. If you don’t believe me, I’m happy to put you in contact with one of our satisfied clients, or you can check out what Harness IP has to say here.
The truth is, as much as I’m a self-serving capitalist, this isn’t just a plug to make money. We built Juristat OAR because we wanted to help our clients have a smoother, more predictable, and more efficient road to earning an allowance.
If you don’t want to use technology to improve your team’s accuracy and efficiency, then here are some other recommendations to implement at your firm:
- Don’t procrastinate. Make sure the attorneys drafting claims are given plenty of lead time and are not rushing through, making regrettable errors. That may mean planning ahead for busier periods of the year like the end of the quarter and the (approaching) end of the USPTO fiscal year. Based on our past analysis, there is a significant influx in OAs from late September through early October, which will likely impact your firm's workload.
- Add an additional level of oversight or Add additional staff to review. Additional eyes on a response can help catch errors before they result in delayed timelines and costly fees. However, both of these options are a strain on your resources. Either you'll hire additional staff to review, or you'll waste staff time having multiple people review a single response. Not to mention, you'll probably need to plan for even longer lead times to avoid procrastination and errors due to rushing work.
We believe the best way to avoid errors in your OA responses is to mitigate the risk with workflow automation. Schedule a meeting with us to see how Juristat OAR can transform your practice – and ensure you avoid costly mistakes.