Objectively Measure Patent Prosecution Performance by Normalizing for Examiner Difficulty

Objectively Measure Patent Prosecution Performance by Normalizing for Examiner Difficulty

March 3, 2020

Some examiners are more difficult than others. The PatentAdvisorTM Efficiency Score levels the playing field by taking examiner difficulty out of the equation and scoring purely for efficiency. This allows practitioners to objectively measure patent prosecution performance.

All of the metrics currently used to measure corporate and law firm prosecution performance suffer from the same deficiency: they are highly dependent on the difficulty of the assigned examiner. At the extremes, this is obvious and expected. Everyone expects a law firm working primarily on software applications to have a lower allowance rate than one focusing on medical devices. However, examiner behavior can vary drastically even within a single art unit, meaning that a few rounds of bad luck could significantly affect a law firm’s statistics, particularly if it is small.

This problem applies to all the most popular industry metrics for prosecution performance: allowance rate, time to allowance, number of actions to allowance, percent of cases with a request for continued examination (RCE), etc. But the primary measure of a law firm or corporation’s prosecution performance—allowance rate—has even more problems.

Problems with allowance rate

  • It penalizes for abandonments. Abandonments are often made as a result of a business decision or a realization that the invention simply isn’t patentable.
  • It doesn’t measure efficiency. So you can get cases allowed … at what cost?
  • It can be misleading with too little data. A single abandonment for a small or new law firm could significantly bring down its allowance rate.

The PatentAdvisor Efficiency Score addresses all of these problems and allows customers to objectively measure patent prosecution performance. First, it removes examiner difficulty from the equation by normalizing for this variable. Second, it is based solely on efficiency and doesn’t penalize for abandonments, unless the abandonment happened after a significant investment of time and money.

Here is how it works

Every patented and abandoned application in our system is scored for efficiency, based on “par” for the examiner to which the application was assigned. For example, “par” for a patented case with a yellow (average) examiner might be two office actions and one RCE. If the application was resolved more quickly than expected, that application will receive a high score. If the application was resolved more slowly than expected, that application will receive a low score.

Measure patent prosecution performance by scoring every application

Every recent patented and abandoned application receives a score.

  • A negative score indicates the prosecution was longer than par
  • A positive score indicates the prosecution was shorter than par

Resolution is expected to happen more quickly with green (efficient) examiners, and more slowly with red (inefficient examiners). So an application that took five office actions to reach issuance with a red examiner might receive the same score as one that took only two with a green examiner. Also, the standard for abandoned applications is slightly more lenient than for patented applications. This reflects reality at the patent office, and also gives the applicant one or two extra “shots” at winning the negotiation before throwing in the towel.

These individual application scores are then averaged to determine the overall law firm or corporate score. Scores range from 0 to 100, with 100 being the best, and the average score being 50. The overall score is further broken down into red, yellow and green scores, reflecting the law firm or corporation’s performance with red, yellow and green examiners, respectively. This revolutionary metric is currently the industry’s greatest technique to objectively measure patent prosecution performance.

Measure Patent Prosecution Performance

The foundation of the PatentAdvisor Efficiency Score is the PatentAdvisor® Smart Detection System

The PatentAdvisor™ Smart Detection System is a model that looks to data from multiple sources within the Patent Center record, incorporating elements of artificial intelligence to determine which law firm should be assigned to an application. We pull from four different sources within the Patent Center record, including the response documents, and then assign the law firm as the one that handled the majority of the office actions. If there is no majority, we’ll assign the most recent one.

Frequently asked questions:

What is the Efficiency Score?

It is a way of measuring prosecution efficiency, normalized for examiner difficulty.

What is the Efficiency Score range?

The highest-possible score is 100 and the minimum is 0. The average score is around 50.

Why are the scores all so similar?

Once you account for examiner variability, much of the variability among law firms and corporations disappears. Particularly with green examiners, there is often little performance variability. The greatest variability will be in the red scores.

How are you dealing with transfer cases?

If an application is transferred from one law firm to another during prosecution, we assign the entire application to the law firm that handled the most office actions. If there is no majority, we assign it to the most recent law firm.

Learn more about patent prosecution performance tools:

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