Quick Start Guide – Law Firms

Al Ives


PatentAdvisor™ is a powerful patent analytics tool with the potential to revolutionize your prosecution practice. Depending on your needs, PatentAdvisor can be used for anything from a quick check into an examiner’s allowance history to deep dives into obscure patent data questions. All of the data is customizable so that you can use it in your own unique way to get ahead of the competition.

This guide will give you some ideas for integrating PatentAdvisor into your workflow today.

  • Developing a prosecution strategy
  • Overcoming difficult rejections
  • Demonstrating Your Firm’s Superior Prosecution Performance
  • Evaluating individual attorney performance
  • Assessing performance on high value business cases

Developing a prosecution strategy

Search for your examiner on the PatentAdvisor homepage within the Examiner tab.

This brings you to the examiner’s dashboard, which displays statistics relating to every possible prosecution event to help you decide what strategies work best with the examiner. The following are some red flags to look for on the examiner’s dashboard and should be considered as early as possible in prosecution.

Does that examiner have a very high ETA? PatentAdvisor ETA™ is a highly predictive metric for the length and cost of prosecution. ETA’s above 6 signal a difficult and expensive path to allowance.

Is the examiner new? You can estimate the examiner’s years of experience from the “Total number of applications – over time” chart.

Have a large percentage of the examiner’s cases been appealed? Is he/she often overturned?

The dashboard is helpful for strategy decisions at any phase of prosecution, but especially for after final decision- making. The RCE, appeal and pilot program sections of the dashboard can help you determine which path has historically led to the best results.

Be sure to pay attention to the tabs across the top of each section to ensure that you are looking at the desired application set.

Overcoming difficult rejections

Where the examiner dashboard is primarily helpful for making procedural decisions, File Wrapper is helpful for crafting effective arguments. By allowing you to search through the full text of most substantive documents at the USPTO (including Office Actions, responses, claims, appeal, and petition documents), you can identify arguments that have been successful in the past.

In the File Wrapper tab, enter some text related to the rejection. For example, if you are having trouble overcoming a particular reference, type in the name of the reference. If the rejection is related to case law, e.g., “Alice,” search for the name of the case or a phrase that the examiner cited from the case.

By default, the results are filtered to show only office actions, but you can expand your search to other document types, including claims, responses, appeal and petition documents, and terminal disclaimers. You can also limit by application status, for example to only patented cases where you know the arguments were successful.

Clicking “Search” will take you to the File Wrappers results page, which lists every document matching your search terms. Click on the PDF icon to see the document as it appears in PAIR, or the eye icon to view a searchable text file.

Additional filters are available by clicking on the “Filters” button. For example, you can limit your search to the examiner handling your application, or the examiner’s art unit. These filters are particularly helpful where the examiner tends to use the same rejections or prior art references.

Setting your firm apart from the competition

PatentAdvisor gives you the ability to provide hard data that proves your prosecution outcomes are better than other law firms, for any given company. To get started, create a “briefcase” that includes all the applications belonging to a client or target. A briefcase can be created from nearly anywhere in the system using the cloud icon, or directly from a spreadsheet of application numbers.

If you have a list of application numbers, click on the briefcase of interest and upload the list from the Applications tab. The list can include application, publication, or patent numbers, but all the numbers must be of the same type. Make sure that you select the correct identifier on the upload page.

If you do not have access to an application list, you can search for the assignee from the Assignee tab on the homepage. Enter the client or target’s name and click “search.”

This will take you to a list of assignees matching your search terms. The list is divided into three levels: the top level includes “normalized” entities, the middle level includes “standardized” entities, and the lowest level exposes the raw assignee name as it appears in PAIR. Select any combination of entities you are interested in by clicking the checkbox to the right of the name, and create a briefcase including the selected applications by clicking on the cloud icon.

Once the selected applications have been loaded into the briefcase, the briefcase menu will automatically pop up. Click on the icon labeled “Alignment reports” and then click on the red plus sign to generate a new report.

This will bring up the alignment report edit window, where you can select which law firms you would like to compare yourself against. It is recommended to use the “law firm – normalized” data since this has been well-processed and is the most likely to properly identify cases belonging to other law firms. Once you have selected all the desired law firms, click “save and continue.”

Next, you must decide how to limit your comparison. To avoid performance comparisons across technology areas that are too disparate, alignment report comparisons can only be run for one examiner, art unit, technology center group, or technology center. Select the desired limitation and, if desired, select a date range for running the comparison.

The system will then generate an Excel spreadsheet that automatically downloads to your computer, and can be found later under the “attached storage” portion of the PatentAdvisor homepage. The spreadsheet includes a summary tab with the most relevant prosecution statistics for each selected law firm, the company overall, and the chosen examiner/art unit/tech center group/tech center. It also includes a tab for each chosen examiner/art unit/tech center group/tech center with more detailed statistics. Based on these statistics, you can compare the performance of each law firm for the target company.

Evaluating individual attorney performance

PatentAdvisor makes it possible for attorneys to objectively measure performance against others to improve their own outcomes and to convince others of the value of their services. To first identify your own cases, search for your USPTO registration number in the File Wrappers tab on the PatentAdvisor homepage. Be sure to use quotations, and to type your number exactly as it appears in your response documents.

The results are limited to Office Action documents by default, so you will need to click off the checkbox next to “Office Actions” and instead select responses, appeal documents, and petition documents – or whatever set of these document types you know you have submitted. Then click “Search.”

The results include all documents of the selected types that have your registration number. To create a briefcase with the associated applications, simply click the cloud icon at the top right of the results list. This briefcase will include all applications that you have worked on. Evaluate and share your statistics directly from the dashboard and exploration views.

Assessing performance on high value business cases

Not only can PatentAdvisor help you prove superior prosecution performance overall, but it can also help you demonstrate improved outcomes on the cases that matter most to them. By allowing you to upload customized “metadata” relating to any set of cases, PatentAdvisor allows you to identify and isolate those that have high business value to your clients.

The first step is to create a briefcase for all the applications belonging to the client. Follow the steps outlined above for this process under section 3, “Demonstrating your firm’s superior prosecution performance.”

Next, obtain a spreadsheet including a business value rating for each application that you handle for the client. The spreadsheet should look something like this, with one row for each application and a column having some designation for business value.

Next, upload the spreadsheet as “metadata” by selecting the “metadata management” option from the “Help” menu behind the three dots in   the navigation bar.

On the next screen, click “Upload File with Metadata” to upload your spreadsheet.

For the initial upload, select “New Metadata” from the drop down menu and give your metadata field a name. Then click on “Step 1: Prepare metadata.”

When it has completed, click on the “Step 2” button.

The metadata will now appear as custom filters in any statistics dashboard where cases within the briefcase appear.

Now you can filter the briefcase to high value business cases and compare performance on those cases to overall performance.

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