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.
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:
Here, we looked specifically for accuracy errors or omissions in the rejections of the office action. For example:
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.
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.
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:
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.