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.
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.