The Queen’s Gambit: Making Small Upfront Sacrifices for Better Control of Patent Prosecution

Jan 25, 2021

Featured Image-The Queen’s Gambit- Making Small Upfront Sacrifices for Better Control of Patent Prosecution

There is an opening in chess called the “Queen’s Gambit” that contains a nugget of wisdom that applies to patent prosecution. In chess, a Queen’s Gambit involves sacrificing a queen-side pawn, which allows a player to secure control of the center of the board. In other words, a chess player makes a small upfront sacrifice to better their chances of ultimately winning the game. In patent prosecution, the best way to secure control of the patent process is by studying your assigned patent examiner and understanding the options that are available and their corresponding outcomes. Sacrificing time early in the patent process to research the circumstances surrounding your pending application can help you develop better patent prosecution strategies and set you up for a better chance of success. The best way to understand your options during patent prosecution is with USPTO patent data and analytics. 

USPTO Patent Review: “Chess Game Variant and Method of Playing the Same”

In line with our chess analogy, we decided to pick a chess-related patent to review using the LexisNexis PatentAdvisor® patent analytics platform to illustrate how patent analytics can be used to inform patent prosecution decisions. Although it was ultimately granted in 2018, USPTO Patent Number 9,895,600 for a “Chess Game Variant and Method of Playing the Same” spent five-and-a-half years in patent prosecution before it issued. Additionally, the patent process was quite turbulent as it included receiving two office actions, filing a Request for Continued Examination (RCE), receiving two more office actions and finally filing for appeal. Knowing that each office action costs patent applicants around $3,000, on average, one can imagine the likely expense involved in seeing U.S. Patent No. 9,895,600 through to issuance. Looking at the patent data and patent statistics associated with the patent examiner who examined this application, we can see that the patent applicants could have made different choices, which could have ultimately saved time and money. 

Learn how to use patent data to understand USPTO examiners.

Better Control of Patent Prosecution

Patent Examiner Statistics and Alternative Patent Prosecution Strategies

When we use PatentAdvisor™ to assess the patent examiner who reviewed U.S. Patent No. 9,895,600, we quickly gather that he is experienced from the 1,660 total patent applications he has reviewed. We also recognize that he is statistically difficult, allowing only 39.3% of patent applications to grant, despite issuing an average of only 1.9 office actions per patent application. When U.S. Patent No. 9,895,600 applicants received a second office action, they crossed a threshold average and needed to decide among the options of filing an RCE, filing for an appeal or allowing their application to go abandoned.  

Although the patent applicants decided to file an RCE, PatentAdvisor reveals that their patent examiner receives RCEs for only 18.6% of his total patent applications. When he does receive an RCE, there is an 87.1% chance that additional action, such as a second RCE or appeal, will be necessary. The PatentAdvisor Prosecution Guidebook also informs us that the patent examiner currently has some cases where RCEs were filed over two years ago that are still awaiting actionif this were the case when the patent applicants filed their RCE, they were running the risk of significant delays. Alternatively, of the 9% of patent applications reviewed by the patent examiner that led to an appeal cycle, 58.5% ended up winning on appeal. Knowing this information could have helped the patent applicants better prepare for all possibilities. To take better control of the patent prosecution process, choosing an immediate appeal over an RCE could have helped avoid the RCE and subsequent two office actions altogether. 

Learn more about patent analysis tools for intellectual property counsel.

The Queen’s Gambit-Making Small Upfront Sacrifices for Better Control of Patent Prosecution-Image 2
Making sacrifices and conducting research early in the patent process can help patent applicants take better control of the patent prosecution process for better outcomes down the road. Time spent reviewing patent data and analytics is the Queen’s Gambit that helps patent professionals take control of patent prosecution. The LexisNexis PatentAdvisor patent prosecution platform gives professionals the tools they need to research, strategize and improve their patent prosecution performance.   

Learn more by reading Patent Prosecution Analytics: No Longer Just a Nice to Have and watching the on-demand webinar.

Access PatentAdvisor training documents and videos here. 

When Patent Applications Linger In Prosecution

Bad things happen when patent applications linger in prosecution for too long. Patent applications tend to get stuck between filing and issuance only when significant obstacles arise. Obstacles, such as office actions issued by the patent office, are costly and can be...

How Net Zero Energy Research Translates Into Real-World Applications

In a recent webinar, we discussed our analysis of current and projected worldwide innovation and investment trends spurred by the United Nations–endorsed “net zero” mandate to zero out greenhouse gas emissions by 2050. Net zero will be a significant driver of both...

The Effects of Efficient Patent Drafting

Patent prosecution is a marathon that demands quality performance every step of the way. The way patent professionals approach the many hours they spend on patent searches, prior art analyses, and patent application drafting has implications that can last for years...

Celebrating World Intellectual Property Day 2022: IP and Youth Innovating for A Better Future

Business and technology themes typically drive IP and innovation conversations. We seek to answer questions like, what does this mean for the bottom line or the race to exclusivity? But there is no more critical forward-looking focus than how IP plays a role in...

Pop Culture Patents: The Modern Space Race

The modern space race looks much different than its predecessor. Rather than a battle among government superpowers, the competition to travel even further into space is now being led by the private sector. Innovative, big-dreaming billionaires have taken the reins and...