Overcoming Patent Examiner Variability: Three Key Takeaways

Jun 12, 2020

How to Overcome Patent Examiner Variability

Understanding how the patent process works, all the way down to the level of individual behaviors, opens up so many opportunities for better patent prosecution outcomes. USPTO patent data and analytics allow us to not only see the variability in the behaviors of different patent examiners, but also to develop strategies to take advantage of examiner variability to increase the chances that your patent application will be granted. This is such an important concept to understand that we dedicated a full webinar on the subject―“Overcoming Examiner Variability in the Patent Office.” Here are three of its most important takeaways.

1. Patent Examiner Statistics Vary Greatly at the Individual Level

Why do some patent applications gain patent examiner approval while others fail? While the merits of a patent application certainly have a lot to do with whether or not a patent issues, you may be surprised to know that the fate of a patent application also has a lot to do with the USPTO patent examiner assigned to the case. USPTO patent data actually show that patent examiner difficulty varies greatly within the examiner pool. Where half of all patents are granted by a handful of USPTO patent examiners comprising about 10% of the total patent examiner pool, another 20% of patent examiners are responsible for less than 1% of the patent applications issued by the USPTO each year.

2. Proportions of Types of Patent Examiners Vary by Art Unit

In an ideal world, patent examiners would be distributed throughout all USPTO art units so that each art unit provides patent applicants with the same statistical chance of success. In reality, USPTO patent data and statistics show that some art units are more heavily weighted with “difficult” patent examiners than others. As shown below, even technologically related USPTO art units vary in their proportions of relatively easy “green” patent examiners, moderate “yellow” patent examiners and difficult “red” patent examiners. (Note: Difficulty classifications have been determined using PatentAdvisor ETA™, a proprietary metric available through the LexisNexis PatentAdvisor® patent analytics platform, which is the most effective metric for predicting patent examiner behavior currently available.)

Evaluating Outside Legal Counsel

3. Options Are Limited Once a Patent Examiner Has Been Assigned

Once your patent examiner has been assigned, you are basically stuck for the rest of patent prosecution except in only a few unlikely circumstances. To help you get paired with a favorable patent examiner at the time of application filing, you can opt for Track One Prioritized Examination. (There is some reason to believe that the USPTO puts its best patent examiners on accelerated patent applications.) Or you may be able to take advantage of the timesaving Patent Prosecution Highway. However, the most effective strategy for overcoming patent examiner variability may be to use USPTO patent statistics to identify the “easiest” art unit that relates to your patent application’s subject matter, and then turn to patent data to strategically draft your patent application so that it is more likely to be assigned to the most favorable art unit.

For more in-depth tips on overcoming patent examiner variability, check out our webinar “Overcoming Examiner Variability in the Patent Office.”

LexisNexis PatentAdvisor® allows you to easily, and with more accuracy than ever, predict your assigned examiner’s behavior through detailed patent analysis so that you know how to adjust your prosecution strategy accordingly.