A model to improve cost efficiency of patent operations management

What made AU Optronics decide to use LexisNexis PatentAdvisor®?

We wanted to achieve better results in patent prosecution and to set the right goal for our IP department: creating strong patents that can be upheld in litigation or an invalidity challenge. After 18 months, USPTO application files are public and open to everyone. All applicants are facing the same set of examiners and we noticed our competitors were doing better in certain cases. We wanted to explore how to achieve similar results.

We also constantly analyze and explore options to achieve higher quality patents, reductions in spending and generally more favorable results. Many companies are facing tight budget challenges and high performance expectations at the same time. Balancing both considerations requires a focus on continuous improvement.

Although there are laws, procedures, guidelines, manuals and personal experience that instruct how patent prosecution should be conducted, everyone has his/her personal nuances. The same is true for the examiners–they are human beings, after all. PatentAdvisor™ reveals interesting insights into patent examiners’ behaviors that applicants need to know, and are necessary to achieve the best results in the prosecution process.

How did you use PatentAdvisor to prove value to internal stakeholders?

Nowadays, companies require IP departments to be increasingly efficient and effective while meticulously working to ensure they do everything they can to protect their future and current patent assets. There is little room for error.

Initially, we shared the goal internally that we would like to try to evolve our approach to patent prosecution. Afterwards, we charted the path of being more strategic in patent prosecution, beyond just simply cutting costs. Looking at patent prosecution more strategically is a more sustainable and a healthier way to approach patent operations management.

How has your team implemented PatentAdvisor into your daily work flow?

Our IP department includes patent engineers who manage the prosecution of specific patent applications. We have implemented a structured way of sharing examiner information derived from PatentAdvisor to the patent engineers at the moment when they are likely to need it most. For example, the data tells us that some examiners are more favorable and others are less favorable. We have experimented with different thresholds, but the idea is that we monitor for examiners with certain qualifying data profiles and use that information to trigger a transfer of key examiner data information to the patent engineers when they are in the process of working with that particular examiner.

We are also measuring how often the PatentAdvisor data has a positive impact on the prosecution process. In the process of responding to Office Actions from the United States Patent Office, we encouraged the patent engineers to provide feedback regarding how often the examiner data was helpful. This enables us to gain a good understanding as to how often the data was effectively supporting their work. Over 60% of the feedback was positive. That is to say that the majority of patent engineers are reporting that the information has had a positive impact on their prosecution.

The statistics clearly influenced the engineers’ decision in an actionable manner. When an application is assigned to an examiner with limited experience and few granted patents, the prosecution process often requires many rounds of examiner communication. Therefore, it is best to move forward cautiously to achieve a cost-efficient and positive outcome. Further, our engineers selectively requested interviews when their examiner showed a track record of positive results in similar cases. Our company’s interview rate for the past 10 years has been around 20%. The PatentAdvisor insight gave us the courage to increase that number in the last year with good results. In certain applications, when requesting an RCE, our engineers would check to see whether another RCE would happen down the road. Similarly, they also paid close attention to data related to alternatives to RCEs, including appeal and AFCP. In many cases, the engineers used the insight from PatentAdvisor to influence a decision as to whether we want the patent to be issued, given up or abandoned early.

“Selectively proceed with interview, or AFPC, or appeal when you know it is going to work. We always make the rational decision.”

How do you evaluate the IP firms you use by applying patent analytics?

A high allowance rate is not always desirable. For us, we use different firms to pursue different goals. Therefore, we use PatentAdvisor analytics to take a more holistic view of law firm performance. Currently, we are using PatentAdvisor analytics to evaluate firm performance within major art unit segments in relation to parameters such as allowance rate, interview rate, appeal rate, etc. Being able to segment firm performance into specific art units is an advantage for us.