Patent prosecution analytics have proven to be tremendously valuable to patent practitioners looking to optimize their patent prosecution strategies and minimize costs for their clients. Used as guideposts, commonly utilized patent metrics, such as a patent examiner’s allowance rate or average time in prosecution, assist patent practitioners in making informed decisions and to increase prosecution efficiency. Nonetheless, the effectiveness of using typical metrics to predict a patent examiner’s actions is limited due to numerous factors that impact an examiner’s behavior. Rather than leaving the analytical legwork up to patent attorneys and agents, LexisNexis® IP has developed PatentAdvisor ETA™, an advanced metric that is a better predictor of patent examiner behavior than any of the metrics before it.
1. Driven by Patent Examiner Behavior
There is often a correlation between a patent examiner’s prosecution statistics and the examiner’s actions, but patent statistics are also impacted by events outside of a patent examiner’s control. For example, the most reliable patent metric to this point has been an examiner’s allowance rate – a number calculated by dividing the number of patented applications examined by an examiner by the sum of the patented and abandoned applications she has seen. For an application to be patented and to increase an examiner’s allowance rate, an applicant must not abandon the application before allowance and must then follow through by paying an issue fee. This means that the metric relied most heavily upon to predict how prosecution is likely to proceed is based in part on the actions of previous applicants. In contrast, each patent examiner’s ETA™ is based entirely on the number of office actions written by a patent examiner, the number of applications they have allowed, and other actions that are more within the examiner’s control.
2. Factors In Each Patent Examiner’s Experience
Patent examiners are ordinary people that develop with time and experience. As examiners grow and learn, their decision trends change to reflect the wisdom they have acquired. The proprietary ETA algorithm was developed with examiner experience in mind. Each ETA is calculated by giving weight to examiners’ current experience levels and the changes in their behavioral patterns throughout their careers.
3. Takes Pending Patent Applications Into Account
Before the development of ETA, patent metrics were based on two types of patent applications – issued and abandoned applications – without accounting for the information available on pending patent applications. Considering that most patent examiners have between 50 and 100 pending patent applications in their dockets at any given time, this means that a patent examiner’s most recent actions are largely overlooked. Aware that examiners’ most recent actions are the best predictors of their next actions, ETA incorporates data from pending applications to improve its analytical accuracy.
4. Predictive of Prosecution Length
The amount of time each patent application spends in patent prosecution depends not just on the actions taken by examining attorneys, but also on actions taken by patent applicants. As a result, relying on the patent prosecution lengths of applications previously reviewed by your assigned examiner may not be the best indicator of how long your application will spend in prosecution. An examiner’s ETA determines prosecution length by considering typical actions taken by the examiner that delay prosecution, such as the issuing of office actions, and focuses less on historical prosecution times so that it is a more accurate predictor of prosecution length.
5. More Accurate at Predicting Patent Examiner Decisions
Each ETA is more than your typical metric. It is a well-calculated amalgamation of USPTO patent data and surrounding circumstances. By integrating various types of information into a single metric, LexisNexis IP has created a much more reliable way to predict the decisions your assigned patent examiner will make when examining your patent application.
Why is an examiner’s ETA better than other metrics? See for yourself.
Relying on independent patent metrics, an applicant whose application is assigned to this USPTO patent examiner might expect prosecution to unfold smoothly. After all, Examiner #1 has allowed 84.4 percent of the applications he has examined.
Looking a bit closer, we see that 85 of the only 130 patent applications assigned to Examiner 1 are still pending, and that his allowance rate is based on only 45 of those applications. Meanwhile, looking to Examiner 1’s high 16.3 ETA, we can quickly determine, after considering Examiner 1’s experience level and actions taken on his pending patent applications, that prosecution with Examiner 1 is likely to require a lot of attention and has a high likelihood of long prosecution length.
Examiner #2’s profile tells a different story. With an allowance rate of only 59.8 percent and without further investigation, one might expect plenty of difficulty in facing this patent examiner. On the contrary, the years of USPTO patent data on Examiner #2 tell a different story. Examiner #2’s low allowance rate is the result of a significant proportion of abandoned patent applications early in his career. In the past five years, Examiner #2 has been much more generous in allowing applications to patent, which is why his ETA is only 2.1. Examiner #2 grants over 150 patent applications each year and applications assigned to this examiner are highly likely to remain in prosecution just a short amount of time.