VPATAPP Alert_Patent prosecution data analytics

http://www.jdsupra.com/legalnews/patent-prosecution-data-analytics-63471/

Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent application has been filed, a patent practitioner must also communicate effectively with the examiner assigned to review the application, weigh the costs of claim amendments with the benefits of expeditious prosecution, and understand the needs of her clients. In large part, these considerations are influenced, not only by the aptitude or diligence of the patent practitioner, but by the unique interpretation of the claims, understanding of the Manual of Patent Examining Procedure (MPEP), and overall style of the examiner assigned to the application. The difference between broad or narrow claims, efficient or expensive prosecution, or an issued or rejected application rests on these particularities of the examiner. Accordingly, experienced patent practitioners should, to the extent possible, understand the tendencies of the examiner, and thereby focus prosecution strategy to obtain the most valuable patent at the lowest cost to the client.

Up until recently, knowledge of particular examiners at the USPTO was limited to anecdotal exchanges between colleagues (e.g., “John Smith was very difficult to work with” or “Jane Smith was willing to work with me”) or personal experience. But data analytics services now provide patent practitioners the ability to easily determine tendencies of patent examiners, which allows them to amend their prosecution strategies accordingly. This article focuses on the information provided by such services, and provides three particular scenarios where examiner-specific analytics can be used to update prosecution strategy.

Juristat’s Examiner Reports and Examiner Ninja are two data analytics services that provide patent prosecution data on a per examiner basis. Both services include user-friendly interfaces that summarize each examiner’s prosecution statistics, including the total number of applications the examiner has examined and a breakdown of how many applications were issued, were abandoned, and are pending. While Juristat’s Examiner Reports include more detailed information than that provided by Examiner Ninja, Examiner Reports is a paid service and Examiner Ninja is free. Which service a patent practitioner should use depends on the preferences of the practitioner and the needs of the client. However, either service can be used in any number of scenarios at any stage of prosecution to inform prosecution strategy.