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. 

The Queen’s Gambit-Making Small Upfront Sacrifices for Better Control of Patent Prosecution-Image 1

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 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; choosing an immediate appeal over an RCE could have helped avoid the RCE and subsequent two office actions altogether. 

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 set patent applicants up 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.  

 

To learn more about using Patent Advisor read Patent Analytics for Predictions, Performance and EvaluationsPart 1 and Part 2. Access PatentAdvisor training documents and videos here. 

LexisNexis PatentAdvisor®

7 Day Trial

Get to know your examiner better with more context and a deeper understanding of your examiner’s behavior than ever available before.

With your free trial, you will gain instant access to:

Examiner Search allows you to search by examiner name for a filterable, examiner specific dashboard of patent analytics, including rejection specific statistics, appeal statistics, prosecution statistics, interview statistics, a backlog of RCEs and timeline.

QuickPair easily replaces the USPTO Public PAIR by providing the most robust application details anywhere, including examiner timeline, examiner allowance rate and the average time and number of office actions to allowance.

PatentAdvisor, the first-ever data-driven patent strategy tool, provides a systemic approach to crafting an effective prosecution strategy. Understand why certain patent applications take longer than others to reach allowance—then use that knowledge to devise better patent prosecution strategies.

Free Trial

LexisNexis는 전 세계 조직이 UN SDGs에 대한 혁신 기여도를 객관적으로 추적하고 보고할 수 있도록 하는 새로운 지속 가능한 혁신 측정 프레임워크를 출시합니다.

UN 지속 가능한 개발 목표 프레임워크에 대한 특허 데이터의 업계 최초 정렬은 지속 가능한 혁신 분석에 혁명을 일으켰습니다. 12 October 2021, New York, United States — LexisNexis® Legal & Professional은 글로벌 특허 시스템을 UN Sustainable에 매핑하여 지속 가능한 중심의 혁신을 식별하고, 검색하고, 추적할 수 있도록 하는 선도적인 지적 재산권 분석 솔루션인...

When IP Meets Sustainability: Mapping Patents to the United Nations Sustainable Development Goals

By Marco Richter, Global Lead Product & Customer Success, LexisNexis Intellectual Property Solutions  Once considered a matter for governments and international organizations like the United Nations (UN), sustainability is now unquestionably a topic of major...

LexisNexis 推出新的可持续创新衡量体系,助力全球组织客观地跟踪和报告其创新对联合国可持续发展目标的贡献

业内首创:将专利数据与联合国可持续发展目标框架相结合,为可持续创新分析带来革新美国纽约 2021 年 10 月 12 日电 – 律商联讯集团 (LexisNexis® Legal & Professional) 宣布推出基于 LexisNexis® PatentSight® 的知识产权分析解决方案的创新扩展,将全球专利制度与联合国可持续发展目标 (UN Sustainable Development Goals, UN SDGs)...

LexisNexis는 전 세계 조직이 UN에 대한 혁신 기여를 객관적으로 추적하고 보고할 수 있도록 하는 새로운 지속 가능한 혁신 측정 프레임워크를 출시합니다 SDGs.

業界初、特許データを国連のSDGsの枠組みにマッピングすることで、持続可能なイノベーションの分析に革命を起こします。2021年10月12日, 米国ニューヨーク — LexisNexis® Legal & Professionalは、同社の知的財産分析ソリューションを代表するLexisNexis® PatentSight®のイノベーティブな機能を発表しました。世界の特許を国連の持続可能な開発目標(UN...

LexisNexis launches new Sustainable Innovation Measurement framework enabling organizations globally to objectively track and report on innovation’s contribution to the United Nations Sustainable Development Goals

Industry-first alignment of patent data to the United Nations Sustainable Development Goals framework revolutionizes sustainable innovation analysis.12 October 2021, New York, United States — LexisNexis® Legal & Professional is pleased to announce the launch of an...