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Author: LexisNexis® IP, Chris Holt, Megan McLoughlin

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Discussions about the best ways to utilize patent data from two patent attorneys who spend their days looking at patent data
56 Episodes
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Inspired by a listener’s question, Megan does a deep dive into art unit 3649: the “pro se” art unit. The USPTO created this art unit in 2015 to help guide pro se applicants—those who choose to represent themselves before the USPTO—through the prosecution process. The art unit includes experienced patent examiners from every technology area and is designed to provide additional guidance to applicants who are not familiar with the process. Not surprisingly, this art unit has some unique statistical characteristics: from how applicants are utilizing the Track One program to the varying subject matter of applications being filed.
Patent practitioners typically turn to prosecution analytics to help them prosecute more efficiently. With the rise of fixed fees and a clientele that is constantly demanding more for less, there is significant pressure to complete tasks more quickly. But prosecution analytics also open the door to a new type of advocacy in a profession that is increasingly becoming commoditized. As an example, Megan discusses the art of drafting patent applications to aim for favorable art units; specifically, using PathWays to help identify favorable art units and to provide drafting guidance. This type of data-driven strategy may take a bit more time at first—but it could change the profession for the better.
Megan reminds leaders about the new proprietary metric, ETA (Examiner Time Allocation) and introduces two new deeper dive metrics. Before you file, these metrics will give you an understanding of your chances of "winning the examiner lottery" that will help you influence those chances. She demonstrates how the way that you draft your application, based on this knowledge, can put your case onto a different path and drastically improve your outcome.
#54: Shades of Red

#54: Shades of Red

2018-11-1325:11

Megan talks about deciding how to respond to a first office action. She discusses how the way you would respond to an office action without data can very often be different from the way you might respond with data.
In this episode, former patent Examiner Josh Rudawitz joins Megan to discuss the rationale behind ETA, PatentAdvisor's proprietary metric for examiner behavior. Josh weighs in on some of the reasons for ETA variations, both among and within art units.
Megan interviews patent attorney Josh Rudawitz about his experience as a patent examiner. Josh discusses his career path at the USPTO and shares valuable insights about the level of autonomy granted to examiners at various points in their careers. Based on his experience working on both sides of the table, Josh shares his advice for patent practitioners.
In this Halloween-themed episode, Megan addresses situations in a prosecution that should make your hair stand on end. When something just doesn’t seem right, there may be a good reason to be afraid and take a deeper dive into the statistics. The examiner’s body of work, captured in the collective prosecution history of all their applications, can be particularly helpful for unearthing the examiner’s tendencies and the best strategies to deal with them.
Nintendo's IP portfolio is full of colorful patents--ranging from banana rubbing to rigging Mario Kart races. But equally interesting (at least, for patent data nerds) is the high percentage of applications that landed with green examiners. "Green" examiners are those examiners who issue patents quickly, with a low office action to allowance ratio. Megan discusses the prosecution strategy implications of being assigned a green examiner, as well as the importance of aiming your application towards groups of examiners that have more green than red.
Megan reviews one of the longest prosecution histories recorded in public PAIR, for application number 05/849,812. Prosecution for application number 05/849,812 has spanned over 40 years, 19 Office Actions, and 7 appeals. For at least the past 20 years, the battle has involved the same examiner and the same pro se inventor. While one can only guess what they are actually fighting about—unless they have the time to read the 632-page appeal brief that was just filed—there is no doubt that this application is worth watching.
Megan revisits the revolutionary metric for examiner behavior: ETA (Examiner Time Allocation). Although this new way of examining examiners has caught on quickly—and even inspired a few copycats—it has also sparked a lot of debate. In this episode, the host answers some of the more common questions and address objections to the metric. The upshot is that ETA was designed to be robust to some common obstacles in measuring examiner behavior, such as junior examiner status and the transition to primary. Nonetheless, it is best used as an alarm system. Knowing that your examiner is red is obviously important for developing strategy, but it’s not the end of the inquiry.
An interview with Ken Gemmill, Business Operations Manager for LexisNexis IP. In his career, Ken has witnessed the birth of analytics entering the patent business. He routinely speaks with law firms that are using analytics in their patent prosecution. Ken discusses the ways that the field has evolved, and how today's law firms can use patent analytics to their advantage, beyond examiner reports.
When is it time to use the appeal process or take some other extraordinary action after a final rejection has been issued? This episode discusses the key role of patent analytics in moving you from a position of guessing your next step to one of data-informed prosecution strategy.
This episode covers the concept of the "alignment report," a software tool for determining whether a company or law firm's prosecution performance is in line with what is normal at the USPTO. As Megan discusses the goals and potential pitfalls of such data comparisons, she discovers that the most challenging step is actually selecting which applications to include in the comparison. Many patent practitioners make the mistake of defining the application set too broadly, to include applications from vastly different technology areas. This can result in unfair comparisons: for example, comparing a law firm that only works on software patents with one that works on mechanical patents.
Megan discusses the challenges of getting a new examiner by filing a continuation application. In spite of the difficulties, this strategy has worked for some attorneys with the right tools—including LexisNexis PathWays™. PathWays predicts which group of examiners an application will be assigned to, and helps guide users toward more favorable assignments. Using this tool, Megan works through the ideation process for an example continuation filing aimed at getting a different examiner.
Megan reviews the prosecution history and examiner statistics for U.S. Patent No. 8,272,961, a patent owned by gaming giant Zynga. The patent covers a broad range of online gameplay but was issued surprisingly quickly. However, even more interesting than the application's faster-than-normal prosecution is its classification. It appears to be an outlier in an art unit that mainly focuses on hardware and electronics, and which has a favorable allowance profile compared with art units where gaming applications would typically be found.
Professor Sean Tu returns to talk to Megan about his research into what drives examiner behavioral patterns. His previous research revealed pockets of fast-moving and slow-moving examiners, but now he aims to answer the question "how are applicants and examiners slowing the prosecution process"? To answer this question, Professor Tu has conducted an in-depth, manual analysis of hundreds of applications from technology center 1600. In this episode, he shares the initial results of this analysis, including what types of rejections slower examiners typically issue, how many rejections they issue, and whether their applications are mostly original filings or continuations.
Megan searches through image file wrapper documents for oddities ranging from typographical errors to name-calling. Have you ever wondered how many times applicants lost their temper with the examiner on the record? Which art units issue the most rejections for typos? Channel your inner 10-year-old and tune in, or run some searches yourself in PatentAdvisor's PatDocSearch!
Megan pinpoints 5 prosecution scenarios where a strategy change may be necessary in light of the statistics. Like football, prosecution is a back-and-forth between the examiner and the applicant that requires constant reevaluation. For example, even when appeal may seem like the most favorable route substantively – or instinctively – if the statistics are not in your favor, it may make sense to continue working with the examiner.
Megan discusses the importance of examiner experience in shaping prosecution strategy. Experience level is one of the factors in the calculation of ETA, PatentAdvisor’s proprietary metric that predicts the probability and difficulty of allowance, and it matters for reasons beyond the obvious. In addition to simply being new to the process, early career examiners also carry the burden of a disproportionately large docket. If a new examiner chooses to churn through their docket instead of focusing on a handful of applications, their grant rate will be significantly slower than average.
Megan dives into the prosecution histories of several patents featured on the "Stupid Patent of the Month" blog. The blog was created before Alice to shine the spotlight on (arguably) overbroad software patents, but even after Alice the authors have continued to uncover issuances with broad or seemingly obvious claims. An analysis of the last 20 patents featured in the blog indicates that these applications may have gotten through the USPTO by avoiding the Alice-heavy - or "doom" - art units.
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