Applying for a patent is a highly specialized process. It requires an in-depth knowledge of your field of expertise as well as a firm understanding of patent law and a clear insight into what your patent examiner is likely to look for in an application. It is no surprise many applicants seek outside counsel, but how do you find the right patent attorney to determine which law firm will have the highest success-rate for the lowest cost?
How many patent attorneys?
Currently, there are over forty-eight thousand patent practitioners registered at the USPTO and every firm promises expertise and the unique ability to carry your applications to allowance. However, if you want to make a thoughtful decision based on how successful a firm can be for your particular company you need to do more than rely on what worked last year. Your outside counsel should be selected as carefully as any business partner. The right law firm for your company needs to streamline your application and demonstrate a high success rate in the art units that matter to you. There are several concrete measures you should review when looking at who can best represent you.
What questions should you ask?
Even law firms specializing in patent prosecution can lack the experience required in your field. Identifying the right one for you is critical to managing your prosecution costs.
All patent applications are assigned by USPTO to an examiner in a particular art unit. It is readily recognized there is a great deal of variability among examiners; however, the same is true for art units. The allowance rate of one art unit might be only 30% where another grants 77% of its applications. Simply knowing how a law firm performs across the USPTO can be misleading and detrimental to the prosecution of your patents. So the first question you need to ask is: “What are the statistics for my law firms in our most important art units?”
The success of a law firm can be measured by a number of metrics. These are significant metrics that drive costs of prosecution budgets and are shown for a particular art unit.
- The number of applications filed within a particular art unit.
- The average time for applications from filing to reach final disposition.
- The law firms number of granted, abandoned and pending applications.
- The percentage of granted applications that needed two or more Requests for Continued Examination (RCEs). The number of RCEs gives an indication how much the law firm is able to streamline the process when compared to other law firms active within the same art unit.
- The percentage of abandoned applications that filed two or more RCEs. This indicates the number of times a client of this law firm deemed the business case for continuation not viable at a late stage in the process; a driver of unnecessary prosecution costs.
Detailed information like this helps you to find the right law firms to help you successfully file your patents cost-effectively.
The right tool for the job
LexisNexis PatentAdvisor® provides the data-driven insights you need for strategic patent prosecution. It helps corporations to select the right law firms to assist in their patent applications by providing access to the metrics that matter to you. The PatentAdvisor™ Alignment Reports provide answers to the questions above so you can make data-driven decisions.
Above is an example from Art Unit 1612; the law firm names have been anonymized except for the best performing law firm. Wolf, Greenfield and Sacks not only has the highest allowance rate, but they also manage to achieve this with the lowest percentages of RCEs, do not file many appeals and achieve the lowest average time between first office action and allowance. With the exception of Law Firm 4, all the firms are beating the overall average allowance rate for this Art Unit; however, the firm you choose could significantly impact your prosecution costs and end results. Wolf, Greenfield is beating the average allowance rate by 80% and achieving this result over a year faster than the art unit average.
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