Patent prosecution can sometimes feel both passive and reactive. After a patent application is drafted, prepped, and submitted to the USPTO, a lot of waiting occurs. First, you wait briefly for an acknowledgment from the USPTO, then you wait for months to be contacted by your patent examiner, and then you spend more time waiting for a response to each of your submissions until your patent hopefully grants. As a result, rather than taking proactive steps to ensure the prosecution process progresses efficiently, patent professionals have historically responded to issues as they arose, and found themselves reacting to each hurdle as it appeared.
Before the emergence of patent analytics, which enables patent practitioners to interpret patent data to prosecute patent applications more strategically, patent practitioners had little choice but to wait and react as necessary. Recently, as patent analytics have become more widely accepted as a patent prosecution tool, patent professionals are empowered by patent data that helps predict how their patent application will proceed.
Some patent metrics, such as the time it has historically taken a patent examiner to grant patents after they are filed, have been used by patent professionals to loosely gauge how long their applications will spend in prosecution by the same examiner. Other patent metrics, such as an examiner’s allowance rate or the average number of office actions per patent application, help to identify a likely prosecution outcome and to calculate expenses that are likely to occur. However, for patent data to successfully predict how patent prosecution will proceed, it must be taken into account along the circumstances surrounding the data. With this in mind, LexisNexis IP® has developed PatentAdvisor ETA™ – a new, more predictive patent metric based on a proprietary algorithm that incorporates several types of patent data – so that patent practitioners can prosecute patent applications more efficiently and more aggressively.
Shortening Prosecution Length with ETA™
A patent examiner’s typical prosecution length is a helpful indicator of future patent application prosecution times, however, over time and as patent examiners learn and grow, their prosecution times can change as well. Additionally, each patent application’s prosecution time is due, at least in part, to the actions of the applicant that can cause prosecution delays and should not weigh against an examiner. Each patent examiner’s ETA is a single numerical value that is predictive of prosecution times, which, instead of focusing solely on historical prosecution times, factors in a patent examiner’s experience level and more recent prosecution trends. Each ETA is calculated by giving higher weight to the actions taken by the examiners and less to events that were out of the examiner’s control. Patent professionals are left with a superior and more reliable predictor of their patent application’s prosecution length. With this knowledge at hand, patent professionals can then heed the advice provided by the LexisNexis PatentAdvisor® platform and take recommended actions that are likely to reduce the time spent in prosecution with their examiner.
Using ETA to Deal with Difficult Examiners
As with patent examiner prosecution lengths, examiner difficulty is subject to change over time. For example, novice patent examiners are more likely to issue office actions due to a perceived need to “play it safe” and to avoid granting undeserved patents. As examiners become more comfortable with the patentability of inventions in their art unit, they may loosen up on the number office actions they issue and grant patents with greater confidence. Moreover, patent metrics that are often used to evaluate an examiner’s difficulty, such as an allowance rate or average number of office actions, are based only on data for patent applications that have been granted or abandoned, and leaves a patent examiner’s pending application data unaccounted for. Each examiner’s ETA takes into account both examiner experience level and data on pending applications, making it a more useful predictor of examiner difficulty. With an accurate assessment of examiner difficulty in each ETA, PatentAdvisor™ can then provide users with actionable advice, such as to hold an in-person interview with an examiner or to file for appeal, that will help increase the likelihood of exiting prosecution with an issued patent.