Perseverance and invention have always gone hand in hand. In today’s intellectual property environment, that is true not only for the process of innovation, but for patent prosecution as well.
For most patent applications, the initial response, or first office action, that the inventor receives from the USPTO is a rejection. How one responds to that office action—and any that may follow—goes a long way towards determining the success or failure of the patent prosecution effort.
Prosecution strategy once was influenced chiefly by an IP counsel’s professional experience and personal intuition. Now, however, patent practitioners have a powerful asset upon which to draw: hard data. Today’s advanced data tools can help IP practitioners devise successful prosecution strategies by examining what has—and what has not—worked in past interactions with the USPTO.
How Frequently Does a Specific Art Unit Issue Rejections?
One of the first statistics an IP practitioner can study is the overall allowance rate of the relevant art unit. For example, data analysis reveals that Art Unit 3763: Surgery has granted about 68 percent of the patent applications it has processed since Nov. 29, 2000.
Of the granted patents, one in five started the prosecution process by receiving rejections from USPTO examiners as their first office actions. More than two-thirds of those office actions were based on Section 103 grounds: obvious subject matter. Half were rejected for failure to meet the requirements of Section 102; they were deemed insufficiently novel.
An applicant who has just received a first office action from an examiner in Art Unit 3763, then, should not feel discouraged. The data show that many applications that eventually lead to granted patents had first been rejected on the grounds of both originality and subject matter.
When prosecution is stuck in a seemingly fruitless back-and-forth exchange with an examiner, however, finding a way forward can appear difficult. What should be the next step in the prosecution strategy?
How Does the Examiner Respond to Interviews?
One option available to applicants who have received an office action is to request an interview with the examiner. Patent prosecution may seem impersonal, but despite being steeped in blueprints and technical specifications, it is an inherently human process. A telephone interview that resolves subtle misunderstandings of the previous written correspondence can be a huge boon to an application. Similarly, though, a conversation that goes badly could fast-track an application for final rejection.
IP practitioners who have regular contact with particular USPTO tech centers may have enough of a rapport with a few of the examiners to develop a strong sense of when or whether an interview might be helpful. Many applicants, however, may not have enough personal experience to draw upon when assessing whether requesting an interview is a wise strategy.
Fortunately, this is another area where data can offer guidance.
Looking again at Art Unit 3763, we see that about one quarter of the roughly 11,000 applications it has processed since 2000 has included at least one examiner interview. Of the 7,605 granted patents, the figure was higher at 31.2 percent. Further, nearly half of those interviews led directly to an allowance of an application’s claims. At the other end of the spectrum, only about 10 percent of the applications that were eventually abandoned had included an interview.
In this art unit, interviews clearly correlate strongly with successful prosecution.
The data also show that the applications that received allowances had generated an average of 2.8 office actions before the applicants sought an interview with the examiner. By comparing this figure to that of the applications that received allowances without an interview—0.9 office actions—one can infer that by the time an applicant receives a second office action, they should consider requesting an interview.
These examples only hint at the new power of data mining to uncover tendencies and trends that were once all but invisible to patent applicants. This type of analysis is now possible not only for any tech center, art unit or individual examiner at the USPTO but also in aggregate for the patent portfolios of individual inventors or IP-driven firms.
Perseverance remains important, but with data to back up strategic moves, patent prosecution does not have to be a guessing game.