Obtaining patents that will withstand litigation is one of the primarily goals of a good patent practitioner, but unfortunately, it is not always clear which prosecution strategies will ensure positive outcomes in court.

Conventional wisdom used to be that a longer prosecution record was bad for litigation—the court might use file wrapper estoppel to further limit your claims—but now some practitioners are erring towards a longer record to have more evidence of patentability.

So what prosecution features—if any—are tied to positive litigation outcomes? Now that we actually have data tying prosecution events to litigation outcomes, we can give you the most “lawyerly” answer: it depends.

LexisNexis PatentAdvisor® recently teamed up with Lex Machina® to integrate the valuable litigation data (including District Court litigation, PTAB post-grant, and ITC proceedings) from Lex Machina into the PatentAdvisor® prosecution statistics dashboards. So for any examiner, art unit, technology center, etc., you can see what types of post-grant review has occurred, and whether the patents at issue withstood review.

Litigated patents from technology center group 2810

One interesting observation that has already come out of this unique data combination is that most litigated patents come from experienced examiners with “primary” status.¹

But it turns out that many correlations between pre- and post-grant events vary by technology area. Fortunately, PatentAdvisor provides you with all of the data for whatever technology space you are working in. Using PatentAdvisor, you can find correlations of countless prosecution features—number of office actions, rejection type, issue date—to litigation outcomes. For example, we discovered that there may be something to the conventional wisdom that longer prosecution records can lead to worse litigation outcomes, at least in technology center group 3690 (electric commerce). In this group, it turns out that the percentage of patents having an outcome that we characterize as a “win” for the patent owner is nearly cut in half for applications that underwent extensive prosecution, defined as having 4 or more office actions.

0-3 office actions, technology center group 3690

4+ office actions, technology center group 3690

Players in this technology area may want to take note, and ensure that prosecution remains as compact as possible. Of course, this is just one way that PatentAdvisor can help you to get stronger patents, faster. For more ways, check out LexisNexis PatentAdvisor.

¹Law Research Paper: Patent Examination and Litigation Outcomes

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