Chris explains 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 he and Megan discuss the goals and potential pitfalls of such data comparisons, they discover 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.
Chris and Megan discuss 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, Chris and Megan work through the ideation process for an example continuation filing aimed at getting a different examiner.
Chris and Megan review 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 Chris and 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.
Chris and Megan search 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!
Chris and Megan pinpoint 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.
Chris and Megan discuss 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.
Chris and Megan dive 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.
Chris and Megan discuss the sequel to Moneyball, in which Michael Lewis points out flaws in human decision-making that have applicability to patent prosecution. Like most experts, patent practitioners have inherent biases that can negatively impact their strategic decision-making. And just like the sports industry, the patent industry is undergoing a revolution due to the emergence of data that can help mitigate these biases.
Chris introduces Megan to a revolutionary way of measuring patent examiner behavior: ETA (Examiner Time Allocation). Unlike allowance rate, ETA provides an estimate of both the chances of and time to allowance. And because it is based solely upon the examiner's own behavior, it is not biased by abandonments out of the examiner’s control.