Sunday, August 11, 2019

Patent profanity checking

We've added a new feature to our automated patent proofreading that is humorously referred to as patent "profanity" checking. We don't check for literal profanity, but for words that may unduly limit your invention.

For example, profane words include "required," "necessary," and "must." We also flag words that some attorneys prefer to avoid in patent applications, such as "invention" or "embodiment." Here is an example of the results in our new profanity tab:
You can see a list of "profane" words that we found in the patent application and a count of the number of times they appear. This is followed by the text of the patent application where each of the profane words is highlighted in yellow.

Each of the profane words has a checkbox associated with it, and if you uncheck the box, we will no longer highlight that word. This allows you to focus on the words that are important to you. For convenience, we also have two buttons that uncheck and check all the words.

Tuesday, July 23, 2019

Examiners who frequently reopen prosecution during appeal

Patently-O posted yesterday about the Hyatt's petition to the Supreme Court where Hyatt is asserting that a patent examiner should not be allowed to open prosecution after an appeal has been filed. As a practicing patent attorney, I can appreciate Hyatt's frustration. In this blog post, I use Patent Bots examiner statistics to see how often this happens.

The appeal process within the USPTO is always slow and expensive. The patent attorney must write an appeal brief that takes much more time and effort than a typical office action response. The entire process can easily add two years to prosecution.

In some instances, the examiner will reopen prosecution after the appeal brief has been filed. Reopening prosecution means the examiner issues another office action, and the attorney is back to where he or she was before the appeal was filed despite having spent time and client's money on the appeal. I've even heard of this happening multiple times for a single patent application (final office action, appeal, reopen prosecution, final office action, appeal, reopen prosecution...).

It seems that if an examiner is doing his or her job correctly, there should generally not be grounds for reopening prosecution during appeal. By the time of the final office action, there should be a clear disagreement to be decided by the appeal board.

Accordingly, one would expect that reopening prosecution during appeal should be a relatively rare occurrence. From the Patent Bots data set, it is unfortunately not a rare occurrence.

In the dataset we looked at, about 21% of appeals were reopened by an examiner issuing an office action (we excluded appeals reopened by a pre-appeal conference).  To see examiner variability, we created the following scatter plot:

In this scatter plot, each blue dot represents an examiner.  The vertical axis is the examiner's grant rate, the horizontal axis is the examiner's reopen rate (the percentage of appeals reopened with an office action), and the size of the dot corresponds to the number of appeals for the examiner. You can click on the plot for an interactive version.

The scatter plot is a bit hard to interpret so I'll supplement with a few statistics:

  • 35% of examiners have never reopened prosecution during an appeal
  • 26% of examiners have reopened prosecution exactly once during an appeal
  • 9% of examiners have a reopen rate of greater than 50% (the right half of the plot above)
  • 5 examiners account for 1% of all reopens

Accordingly, a majority of examiners rarely reopen prosecution, and a relatively small number of examiners do it a lot.

I had expected to see a correlation between harder examiners (lower grant rate) and reopen rate, but the data does not show that. The scatter plot doesn't provide much insight into why some examiner's reopen more often than others, but it does help identify the examiners who reopen too much and could use additional training. As a practicing patent attorney, I hope the USPTO will look into this data more closely to increase the quality of prosecution decisions.

Thursday, June 27, 2019

Patent family trees and prosecution timelines

We've added a new section to our website called PatentPlex to make it easy to get details about any U.S. patent or application.  Our PatentPlex pages include:
  • a patent family tree
  • a timeline of prosecution events including priority, filing, and expiration dates
  • easy access to documents from PAIR
  • direct links to the patent on USPTO (assignments, maintenance fees, etc.) and other sites

Here is an example of a patent family tree (see interactive version on PatentPlex):

Here is an example of a patent timeline (see interactive version on PatentPlex):

Please let us know what other information we should include on our PatentPlex or if you would like more information about our automated patent proofreading or examiner statistics.

Tuesday, June 25, 2019

Patent advice for startups

In my career, I've seen the patent practice from many angles. I've worked at Amazon, a medium-size law firm, startups, and in my current solo practice, all of my clients are start ups.

Patent attorneys have very different practices, and some of them are not well suited to startups. In this blog post, I give some tips to keep your patent budget in check and avoid unnecessary hassles. There are exceptions to each of my tips below, but they are good general rules for most startups.

File fewer international applications. It is unusual for smaller U.S. companies to have patent disputes in other countries so international applications give you a much lower return on investment. My rough rule of thumb is to file international applications for only the top 5-10% of your patent portfolio. When selecting countries, limit yourself to the most important (i.e., largest) markets.

Also, don't bother with patents in Hong Kong unless you have a good reason to do so. If you have a patent application in Europe or China, it is easy and inexpensive to proceed in Hong Kong, but it just isn't worth it in most cases.

Delay filing international applications until close to the one-year deadline (both PCT and specific countries). Your business priorities may change, and this can help conserve your patent budget and delay expenses.

Track I patent applications are a great way to get a patent more quickly for an extra $2000 filing fee. I've seen notices of allowance just 2-3 months after filing. This is especially helpful for startups who want a patent quickly to aid in getting funding.

For patent law firms, paying high fees does not get you higher quality work. You generally get the best value and quality from a small or medium size patent boutique. Avoid large general practice firms with a small patent team -- they often charge high amounts and do low quality work.

Notarizing inventor signatures is not necessary. Some law firms put notary blocks on all documents to be signed by inventors, but it can be a huge hassle, especially if you don't have an in-house notary public. If you need extra protection, have another person witness the signature.

Don't provide the full address of your inventors to the USPTO. The USPTO requires you to provide (i) the city and state of residence for each inventor and (ii) a mailing address.  You can use the mailing address of the company instead of the home address of the inventor. This prevents inventors from being sent patent-related junk mail. Also, since the company owns the patent, it makes sense for correspondence to go to the company.

I hope you find this helpful.  Let me know if you have any other tips I should add.

Monday, June 17, 2019

Multi cloud support for patent proofreading

Our first iteration of Patent Bots performed patent proofreading using Google Cloud Platform.  We have now extended our proofreading so that you can use Amazon Web Services as well.  When you go to our proofreading page, you will now see a choice of clouds:

If your firm is doing patent work for Google or Amazon then you may prefer to process applications on their cloud, or you may have other reasons for preferring one cloud service over another.

The proofreading results are the same on either cloud.  The only difference is that your patent documents are processed entirely within your selected cloud and then discarded.

We can also set the default cloud on a per-subscription basis.  Please contact us if you would like us to set a default cloud for your subscription.

We'll soon be adding Microsoft Azure as a third option, and we are also looking into on-premise options.  Let us know if we should consider other cloud options as well.

Friday, May 10, 2019

Greatly improved machine learning models for patent proofreading

At Patent Bots, we've always used machine learning models (specifically, neural networks) to proofread your patent documents. Because we are a cloud-based service, we are able to use state-of-the-art machine learning tools to provide the most accurate results.

Our previous machine learning models were trained on normal English, but as you know, patent claims are quite different from normal English. Our previous models worked quite well, but now they work even better.

Our new machine learning models are trained specifically on patent claim language. Our new models thus understand patent claim language much better. We've actually decreased our error rate by more than 50%.  This means you'll have fewer false alarms, and more accurate proofreading than before.

Our new models provide other advantages to further improve our products:
  • We are able to continuously improve proofreading performance.  As we come across errors, we can fix our training data or add more training data to prevent these errors from happening again.
  • We are able to provide new services that depend on machine learning. For example, we are working to predict the art unit that your patent application will be assigned to.
  • We are able to run our services on other platforms (e.g., AWS or Azure) and even allow on-premise solutions.
It is an exciting time to be in legal tech, and we are looking forward to improving your patent practice.

Sunday, March 10, 2019

Patent Claim Grammar

As someone who has reviewed more than 10,000 claims and writes software for proofreading patent claims, I wish more attention was paid to claim grammar.

Even well-written claims are very hard to understand. Adding poor grammar to the mix makes claims painful to read and possibly more vulnerable to invalidity arguments in litigation.

Let's start with a couple of questions...

Is a patent claim a sentence?

Nope. It looks like a sentence. After all, it starts with a capital letter and ends with a period. But there is one important thing missing. A patent claim does not ever have a verb.

So what is a patent claim?

Each patent claim is a REALLY long noun. The noun is something like a method, system, or a non-transitory, computer-readable medium. All of the words that come after the noun just provide details of that noun.

Let's take an example: