Evaluating Outside Legal Counsel: Best Methods

Companies and their in-house counsel face many challenges when working with outside legal counsel. To begin with, choosing the right patent law firm to work with is trickier than one might expect. Not only do law firms often specialize in a specific field or technology, but the accolades they advertise also vary greatly. When one patent law firm distinguishes itself by its high USPTO allowance rate and another law firm advertises receiving fewer office actions than competitors, how is a company to choose? And as time goes by, companies should monitor the performance of their outside legal counsel to ensure that they are both effective and efficient throughout the patent process. Once again, what is the best way for companies to assess patent prosecution performance so their resources are put to good use in obtaining quality USPTO patents?

Methods for Evaluating Outside Legal Counsel

The unfortunate truth about evaluating law firm patent performance is that it is quite complicated. While straightforward USPTO patent statistics, such as a law firm’s patent allowance rate, can provide some insight about a law firm, they usually only provide a small piece of the overall analysis. Patent data show that USPTO patent examiners vary greatly in their difficulty level and likelihood of allowing a patent to issue. The patent office is actually greatly divided, which is illustrated by the fact that 10% of USPTO patent examiners are responsible for granting about half of all USPTO patents, while a different 20% of USPTO patent examiners collectively grant less than 1% of USPTO patents. With patent examiner variability in mind, a law firm’s allowance rate could have very different implications depending on the patent examiners they faced during prosecution. A law firm could be very effective and efficient despite its low allowance rate, assuming it performed better than expected against difficult patent examiners. On the flip side, a high allowance rate may make a law firm appear very effective when, in reality, the “easy” patent examiners it faced are big contributors to the firm’s favorable patent statistics.

Rather than turning solely to USPTO patent statistics to evaluate outside legal counsel, it is actually more practical to view a law firm’s patent statistics in light of its circumstances against the USPTO. For example, a law firm’s PatentAdvisor Efficiency Score™ is a better measure of a law firm’s performance against the USPTO because it is a sophisticated patent metric that is normalized for the difficulty level of the patent examiners faced by a law firm, as well as the total number of applications they have prosecuted. In other words, each Efficiency Score communicates to LexisNexis PatentAdvisor® patent prosecution platform users how much better or worse law firms have done against USPTO patent examiners than expected; which means two law firms can be compared more accurately using their Efficiency Scores than with other patent data and statistics.

Evaluations Made Simple With PatentAdvisor Benchmarking Reports™

To learn more about using the LexisNexis Efficiency Score and PatentAdvisor Benchmarking Reports to evaluate your current or potential outside counsel, check out our on-demand webinar “How to Objectively Measure Prosecution Performance With PatentAdvisor Benchmarking Reports™.”