You have heard your patent lawyer talk about patent prosecution. But for most patent applicants, this process is a mystery. And if you do not understand the process, you cannot develop a strategy to manage it.
Without a strategy, your success rate depends wholly on your patent attorney’s skills and, unfortunately, chance. Why does this happen? The patent office assigns applications to examiners randomly, and different examiners have wildly divergent allowance rates.
You can’t control chance. But you can control one thing, and it should be your first move toward improving your patent’s chances of allowance: hiring the right patent attorney. And your patent attorney’s expertise is no longer something you have to take on faith. The data to evaluate their track record before you hire them already exists.
You can use Triangle IP’s TIP tool to gather such intelligence relevant to your application types and build a strategy for allowance.
Actionable Intelligence Provides the Basis for a Prosecution Strategy
Patent prosecution includes all the steps that happen after filing a patent application. When a patent lawyer refers to prosecution, they mean office actions and office action responses. These usually include arguments from the patent office giving reasons for rejection and arguments from your patent lawyer addressing the rejection. Maintaining high quality in invention disclosures can significantly impact the efficiency of these prosecution steps. During this process, you may experience a dearth of information. As the arguments fly back and forth, you will have no way to evaluate:
- Whether you have the right counsel to prosecute the case
- How much the application will cost to finish
- What’s the likelihood of allowance
- Which claims might get allowed
| Note: That last point, whether you have the right counsel, is the one most teams leave to instinct, yet it is also the earliest one you actually make. You choose your counsel before anything is filed, when no examiner has been assigned yet, so the only track record you can read at that stage is the attorney’s own. The examiner enters later, after filing, once the office assigns one. |
Your company’s leaders need this information to make reasoned decisions about whether to continue with an application and, if so, how to prosecute the application.
Hiring a Right-Fit Patent Counsel Can Predict Your Likelihood of Success
Most innovation managers don’t prosecute their own applications. They hire outside counsel and hand the whole thing over, including the drafting, the office actions, and the back and forth with the examiner, trusting that it is handled. When the fit is right, that is exactly how it should work. The problem is that the wrong fit rarely announces itself. A mismatched attorney can quietly burn your budget on extra rounds of argument, narrow your claims more than they had to, or let an application drift until it lapses, and you usually won’t feel it until the cost has already landed and the invention is harder to protect.
Because this decision comes before filing, you cannot yet know which examiner you will draw. What you can know is how each candidate has actually performed. The reflex is to reach for a reputed law firm, because a known name feels like a safe choice. But the firm’s brand says very little about the specific person who will prosecute your case, or whether their record holds up in your technology area. Two attorneys at the same prestigious firm can have very different allowance rates, timelines, and habits. Choosing well means looking past the letterhead, which is exactly what learning how to find a good patent attorney on performance rather than reputation is about.
This is the gap the Prosecutor Analysis tool by Triangle IP closes. Instead of credentials and word of mouth, you see the prosecutor’s real record, including allowance rate, time to grant, office actions, and RCE history, each benchmarked against the specific examiners and Group Art Units they have already faced. A 90% allowance rate means one thing when it was earned against tough examiners and something very different when it came easy against lenient ones, and the tool makes clear which one you are looking at.
You can drill from a firm down to the individual you would actually be hiring, place up to three candidates side by side, and filter for recent activity in your field, so you commit to the right fit before the work starts instead of discovering the mismatch in the invoices. For the full rundown of what to weigh and which platforms to use, these patent prosecutor analysis tools lay it out.
Examiners with Low Allowance Rates Cost You Time and Money
Once you have chosen your counsel and filed, the next unknown comes into view: the examiner. This is the second decision moment, and it is where examiner intelligence takes over from prosecutor selection.
Your application gets assigned to a technology unit in the patent office and then ultimately to an examiner with a background in your field. The examiner will be the person you argue with.
Some examiners are easy, and some of them are hard. The TIP tool gives you analytics on your examiner. This intelligence tells you if your application was assigned to an examiner with a low allowance rate.
You cannot change examiners. But this intelligence will tell you what to expect during the prosecution of that application. You could have a lot of back and forth with an examiner with a low allowance rate. The TIP tool takes the examiner’s track record into account since more rounds of prosecution will drive up your legal fees.
For example, you might file a case that you think will be quite simple. But suppose the TIP tool discovers that your examiner averages six rounds of argument and has a 20% allowance rate. This indicates that the prosecution may cost 50% more than another case where the examiner has a higher allowance rate and averages fewer office actions.
This information provides your decision-makers with critical insight into the resources each application could need. This will allow them to allocate your company’s finite resources to focus on the applications that meet your company’s criteria, such as:
- Most likely to get allowed
- Greatest return on investment
- Shortest prosecution
Whether your company is weighing the prospects of cutting budgets and abandoning applications or just needs to prioritize its prosecution docket, the TIP tool gives you the actionable intelligence you need.
Taking Control Over Your Prosecution Strategy
It is likely that even your patent counsel lacks this information provided by the TIP tool. Using this information, you can:
- Predict what will happen with your particular case
- Decide how to allocate your prosecution resources
- Change patent counsel if needed
- Adjust the scope of the claims presented
- Choose to request an examiner interview
- Appeal rather than continuing prosecution with the examiner
The insights provided by the TIP tool are based on historical trends. The greatest factor that will influence your outcome will be the level of innovation in your invention. But the examiner’s track record and your patent counsel’s track record could tell you how much time and money you will invest between filing and allowance.
The predicted difficulty of your prosecution will also guide you in the decisions you make during prosecution. If you know you have an ace pitcher and a lenient umpire, you make different decisions than if you have an average pitcher and a strict umpire. You will pursue broader claims with an ace patent counsel and a lenient examiner than you will with an average patent counsel and a strict examiner.
The TIP tool gives you insight into questions like:
- How much is it going to cost?
- How likely am I to get a patent?
- What is your success in this area?
The TIP tool provides breakthrough insights. And with those insights, you can make better decisions and, hopefully, get better outcomes.
To learn more about the TIP tool, you can find the product tour on the Triangle IP website. There, you can also read about ‘Case Analytics and Cost Prediction’ and ‘Patent Counsel and Examiner Analytics.’
