Best Practices on IP Portfolio Management and Bulk Patent Quality Evaluation (as presented at PATINEX in Korea and IP Business Journal Conference in Japan, Sept. 2018)
I am honored to be a guest at PATINEX in Korea and IP Business Journal Conference in Japan this week, where I am presenting the slides below entitled, "Best Practices on IP Portfolio Management and Bulk Patent Quality Evaluation." I wanted to provide an introduction to data-driven patent prosecution in the software realm, particularly for companies that do not yet understand the variance between art units and examiners at the U.S. Patent and Trademark Office (USPTO).
To introduce the topic, I defined a set of "software patent applications," and analyzed what happened to those applications as they transitioned through the USPTO. Not surprisingly in light of my prior studies, the allowance rates are high for software patent applications filed in 2015 with priority in 2015. There are, of course, limitations in this dataset. That said, the data is in line with the all-time high 76% allowance rate at the USPTO.
Also not surprisingly, the odds in some art units are significantly worse than average. Finer grained strategies are available for applicants in those scenarios. For example, expert declarations and high-allowance claim language are good supplements to thoughtful patent prosecution. Also, applicants should adjust expectations in these scenarios before examiner interviews (not during!). Given the uncertainty of interview outcomes, it may also be helpful for key decisionmakers to be present during the interview on both sides (for example, in-house counsel and possibly an expert along with outside counsel for the applicant, and a supervisor and possibly a 101 panel expert along with the examiner). This allows for both sides to adapt to the uncertainty without wasting cycles of prosecution. The USPTO has generally been supportive of including decisionmakers on interviews, when sufficient notice is given.
Without being equipped with the patent prosecution statistics prior to the interview, it is not possible for the applicant to adequately prepare for the extremely low allowance scenarios. It would be prohibitively expensive (and annoying for both the USPTO and the applicant) to pull all of the relevant parties into every interview for every case. Applicants should use the statistics and tools available to use the resources needed for a given scenario. Applicants should also understand that, if all of the relevant evidence and patentability issues have been presented and discussed during an interview, the probability of a given outcome should also have an impact on whether to appeal or abandon a case.
For those who are not willing to conduct their own patent studies, there are tools available that have done this for you. For example, LexisNexis Pathways® highlights claim terms that lead to high allowance scenarios and those that lead to low allowance scenarios. Also, LexisNexis PatentAdvisor® provides art unit, examiner, and law firm statistics, as well as providing the capability of setting up email alerts for low allowance scenarios. There are other tools that fill other gaps as well.