Inspired by a listener’s question, Chris and Megan do 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...

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, Chris and Megan discuss the art of drafting patent applications to aim for favorable art units;...

Chris and Megan remind leaders about the new proprietary metric, ETA (Examiner Time Allocation) and introduce 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. They demonstrate 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.

Chris talks with Megan about his recent experience deciding how to respond to a first office action. He discovered that his application has ended up with an examiner who has a high ETA (Examiner Time Allowance), indicating a slowness to grant patents. Megan and Chris discuss how the way you would respond to an office action without data can very often be different from the way you might respond with data.

Having devoted years to developing examiner metrics that are both accurate and fair, Chris and Megan figured it made sense to ask for an examiner's perspective on his own ranking. In this episode, former patent Examiner Josh Rudawitz joins Chris and 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, Chris and Megan address 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. Chris and Megan discuss the prosecution strategy implications of being assigned a green examiner, as well as the importance of aiming your...

Chris and Megan review 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...

Chris and Megan revisit their 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, Chris answers some of the more common questions and addresses 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...

Chris interviews Ken Gemmill, Business Operations Manager for LexisNexis IP. In his career, Ken has witnessed the birth of analytics entering the patent business. He routinely speaks with law firms that are using analytics in their patent prosecution. Chris and Ken discuss the ways that the field has evolved, and how today's law firms can use patent analytics to their advantage, beyond examiner reports.

Chris shares an experience from an Association of University Technology Managers (AUTM) Regional Conference where he sat on a panel representing the perspectives of a client, attorney, patent office and analytics. Each panelist shared from their point of view the dilemma of one specific case and the approach that they would take in dealing with a troubled patent application. When is it time to use the appeal process or take some other extraordinary action after a final rejection has been...

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...

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...

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...

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...

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...

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" -...

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.

Chris evaluates the current status of bitcoin-related patent filings at the USPTO. Attention is also given to a proposed strategy for identifying pockets of art units in the patent office where a particular technology of interest might be assigned.

Chris looks at the history of a patent granted for a device intended to detect when Santa Claus is entering a house by way of the chimney. Some time is also given to a discussion about whether patents in the silly category are good or bad when it comes to the corresponding impact on the integrity of the broader patent system.