What NOT to Do in Your Patent Practice

To find success, law firms need to live in a constant state of self-assessment. The world of patent prosecution is always changing, and IP attorneys need to re-evaluate ineffective and slow routines to stay competitive.

As legal tech opens up new opportunities for lawyers everywhere, you don’t want to feel stuck in a conservative way of thinking. And identifying what isn’t working is just as important as recognizing what is.

Here are five things you should stop doing in order to update your process, ensure successful patent prosecution, and maintain your spot at the top of your field.

DON’T...forget to use data to show ROI

According to Thomson Reuters's State of Legal Technology report, one of the top priorities of general counsel is to allocate work to law firms that proactively demonstrate their own value. Using data to show firm value is crucial in growing your business.

And to help, Juristat has developed an ROI Dashboard to help your firm curb excessive spending as well as increase IP value. These calculations show how unnecessary office actions or appeals impact cost and how interviewing or filing a continuation or continuation-in-part impacts IP value. It’s an at-a-glance report that can have a big impact on you and your client’s revenue.

DON’T...do manual work that can be automated

We’ve heard it from clients and industry colleagues – everyone is looking for ways to save money without sacrificing quality patent work. But what changes can you implement right now that will have the most immediate impact on your profit margins?

In a 2019 Orion Law Management survey, 35.7% of law firms said that bottlenecks are the biggest workflow challenge they face. And “manual or redundant processes” came in second with 21.4%. Furthermore, 57.1% cited more automation through software and technology training” as the best way to solve these workflow challenges.

Workflow automation supplements the efforts of assistants and paralegals, automating away repetitive tasks so staff can focus on more valuable (and profitable) activities. And relying on AI cuts down on potential human error or missed deadlines, ensuring you don’t rack up unnecessary USPTO fees.

DON’T...assume you already know the best approach for each examiner

We recently published a list of the ten most difficult examiners at the USPTO, and they have some shockingly low allowance rates. Imagine how frustrating it must be to know you have a pending application in front of one of them.

When working with a difficult examiner, relying solely on your experience may not be enough to earn you an allowance. This is where patent analytics can make a difference. 

With examiner analytics, you can create a unique prosecution strategy for each examiner at the USPTO, with insight into interview and RCE success rates, end-loading rates, and more. Optimizing your prosecution strategy for a specific examiner may be the difference between a successful allowance or a lengthy prosecution leading to abandonment.

DON’T...file an RCE when an interview is more likely to succeed (or vice versa)

If an examiner is more likely to respond favorably to an interview rather than an RCE or an appeal, you’d probably try out an interview, right? Of course! 

Compared to the other tips listed here, this one is pretty specific. It’s just one example of the kind of data-driven decisions you can make on pending applications thanks to our custom application alerts. Our clients are already using custom alerts to creatively limit lengthy and expensive prosecution. Some examples include:

• Recommending a CON for a likely NOA
• Taking strategic action on applications with excessive RCEs
• Identifying applications that have surpassed their assigned examiner’s OA to allowance rate
• Recommending an interview based on the assigned examiner's interview win rate

DON’T… ignore special USPTO programs

Patent prosecution can be frustratingly complicated, and the USPTO has created special programs to reign in the usual chaos. For example, the Prioritized Patent Examination Program speeds up the usual examination timeline, and the After Final Consideration Pilot 2.0 Program was created to improve the communication between examiners and applicants.

Too often, these special programs are overlooked. Analytics can help you determine which program is the right for your particular goals. Tools like Juristat can provide performance data for each program, including the allowance rate, time to disposition, and average office actions for applications within the program. 

By evaluating these programs, your team can save time, get to an allowance faster, and even increase your chances of a favorable outcome, ultimately saving your clients and your company a lot of unnecessary spend. 

And of course, DON’T leave this page without scheduling a quick demo. You may want to learn how to calculate your firm’s ROI for clients, explore custom alerts for your pending applications, or see our workflow automation in action. 

If you want to escape outdated processes and improve your practice, we are here to answer your questions. Let’s schedule a demo today to discuss your options.