What might a USPTO examiner have to say about this new way to approach patent prosecution?

The newest LexisNexis PatentAdvisor® metric has proven to be the most predictive patent metric yet. Each PatentAdvisor Examiner ETA™ helps patent professionals better understand their assigned examiner’s behavior. At its core, each Examiner ETA™ helps to determine how each patent examiner spends their day when they go into the office. Are they granting patents or are they issuing office actions? While the algorithm used to answer these questions is complex, the reviews from PatentAdvisor users have been positive. Still, we could not help but wonder what a USPTO examiner would have to say about this new way to approach patent prosecution.

Josh Rudawitz, now a Senior Associate for a Boston law firm, spent seven years working as a USPTO patent examiner before switching teams to practice patent prosecution.

In Episode #53 of the LexisNexis IP Better Patents Now podcast, Mr. Rudawitz provides his insights on patent examiner behavior and what factors contribute to different ETA values among USPTO examiners.

One Extreme – Patent Examiners Who Grant In High Volume

In reviewing ten years of patent data on granted patents with Shine Tu from the West Virginia College of Law, one statistic really stood out to the team at LexisNexis IP– they observed that forty-four percent of all granted USPTO patents came from just ten percent of patent examiners. In other words, only a small number of patent examiners are responsible for a large number of granted patents.

When presented with this information, Mr. Rudawitz suggested two different explanations for why certain examiners grant above-average number of patents. First, whenever the USPTO is presented with inventions regarding emerging technologies, there is often a spike in the allowance rates for patent examiners who review the emerging technology patents. This is because emerging technologies lead to a high volume of application filings, and there is plenty of innovation that meets the requirements for patentability. As more and more patent applications are filed, allowance rates taper off because fewer patent applications are “novel” or “nonobvious” based on previous inventions.

The other explanation Mr. Rudawitz provides is based on patent examiner experience levels. As patent examiners gain years or decades of USPTO patent experience, they gain the ability to quickly assess the patentability of an application and, therefore, process it much more quickly than someone with little patent examination experience. Some examiners with decades of experience may be able to pick up a patent application, quickly understand its subject matter, and immediately know which references related to the application at issue. Newer patent examiners, on the other hand, may take more time to review and may be more likely to issue an office action to be cautious.

The Other Extreme – Patent Examiners Who Grant Very Few Patents

The other main observation that arose from reviewing a decade of USPTO patent data is that twenty percent of USPTO patent examiners were responsible for only 0.6 percent of the patents issued by the USPTO. Where on one end of the extreme the USPTO has very few patent examiners granting many patents, on the other end a decent portion of USPTO examiners rarely allow patents to issue at all.

In addition to less experienced patent examiners typically taking longer and being more cautious than experienced patent examiners, Mr. Rudawitz explains that certain types of patents are inherently less likely to be granted than others. For example, the issuance of business method patents has been severely restricted by court decisions. Moreover, many other types of patents are severely limited because of case law or legislative decisions, which, in turn, leads to less favorable patent statistics for the patent examiners who are assigned those types of patents.

Fortunately for LexisNexis PatentAdvisor® users, the ETA metric takes into account the circumstances surrounding each USPTO patent examiner, and the proprietary ETA algorithm continues to evolve and improve. To hear more about Josh Rudawitz’s experience as a USPTO patent examiner and to hear more on examiner behavior, check out Episode #53 of the Better Patents Now podcast titled “A Patent Examiner’s Take on ETA.”

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