Big business is all about data. We see it in almost every industry, from healthcare to financial services to aviation and beyond. But the legal industry has been slow to adapt.

We’re all familiar with Newton’s third law of physics: For every action, there is an equal and opposite reaction. Well, at the USPTO, every office action means additional work for the prosecuting attorney, and thus, additional costs.

Did you notice a spike in office actions in late September? We sure did.

While the calendar year may be winding down, your team is likely busier than ever preparing office action responses. In fact, we’re just on the other side of a major spike in office actions from the USPTO, coinciding with the end of their fiscal year on September 30.

We recently identified the ten most difficult examiners currently reviewing applications at the USPTO. Our research prompted the question: “Which firms and companies have prosecuted the most applications in front of these difficult examiners?”

In an update to our 2016, 2017, and 2018 lists of most difficult examiners at the USPTO, we have identified the 10 patent examiners (excluding SPEs) with the most skeptical eye toward the patent applications that cross their desks.

For patent applicants looking to move quickly, the USPTO's Track One program is a seemingly obvious choice. But does the program, which was instituted in 2011, still work? The answer is yes – but not like it used to.

We often use allowance rate as a quick and simple way to quantify success at the USPTO -- and we know law firms use it too. However, that is just one of many indicators in-house counsel can use to evaluate firm performance. 

In the world of patent applications, timing is key. When your firm receives an office action, a quick and thorough response helps ensure smooth communication with your examiner and calms your anxious client.

When looking for outside counsel, companies are likely hearing similar pitches from all law firms. Business intelligence can be a powerful differentiator, a tool that helps law firms identify areas of strength and discover new pathways to success. It can lead to more focused marketing efforts and a general uptick in client buy-in.

In 2013, the USPTO enacted the After Final Consideration Pilot (AFCP) 2.0 program as an alternative response to a final rejection. The goal of the program was to increase communication between examiners and applicants and take those applications that are close to allowance across the finish line, without requiring the time and cost inevitably associated with an RCE.