Our first patent drafting tool: Ref Label Tracker

With our Patent Bots Word add-in, we can now provide you with tools to help you draft your patents in addition to proofreading them.  Our first patent drafting tool is our Ref Label Tracker that tracks your reference labels in real time for easy reference. Here is what it looks like:

When you start the Ref Label Tracker, we immediately extract all your ref labels with the corresponding text.  We'll then continue to update this list automatically as you edit your patent application.  You no longer need to keep your own list or scroll through your Word doc to find the ref label you need.

There are three ways to install our add-in:

1. Your IT department can install for a group of users or for your whole firm using the Office admin tools.
2. You can install for yourself from the Microsoft store (Patent Bots GCP and Patent Bots AWS).
3. You can install for yourself within Word: Insert tab in the ribbon -> Add-ins button -> Get Add-ins-> search for Patent Bots.

Note that both add-ins currently require a subscription version of Word 2016.  We are working on making it available for non-subscription versions of Word as well.

We are working on additional patent drafting tools to automatically generate portions of your patent, such as:

• abstracts
• claim summaries
• brief description of your figures

Please let us know what other tools you would like to have to assist you with drafting your patent applications and office action responses.

Word Add-In Now Available to Proofread Directly from Word

We are excited to announce that we now have a Microsoft Word add-in to allow you to use our patent proofreading directly from Word.

 Here is what it looks like:

After you install our add-in, you'll have a ribbon tab for Patent Bots.  In this tab, you select a button for proofreading applications or OA responses to open a side panel.  From the side panel, select one of our proofreading options (e.g., with or without figures).  Proofreading results will then open in your default browser.

This add-in uses the Google hosted version of our services (GCP is for Google Cloud Platform).  We expect to have another add-in for the Amazon version of our services later this week.

Note that the add-in requires a subscription version of Word 2016 or later, and that it doesn't work with non-subscription versions of Word.  This is a limitation of the Word platform.

To install our add in:

1. Select the Insert tab in the ribbon
2. Select the Add-Ins button
3. Select Get Add-Ins
4. Search for Patent Bots

If you are a firm-wide customer, your IT department can install our add-in for groups of users (see Office 365 Deployment).

A Word add-in allows us to do a lot more, and we have some really cool features in development.  Stay tuned!

Online demo of Patent Bots

We recorded a demo that we recently did for one of our new customers. If you are a potential customer interested in learning more about Patent Bots or if you are a current customer looking to get up to speed quickly, our demo is the best way to do it.

The demo addresses our three main products in this order:

1. PatentPlex (patent family trees, prosecution timelines, and PAIR access)
2. Automated Patent Proofreading -- starts at 2:40
3. Patent Examiner Statistics -- starts at 23:49

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.

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.

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.

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.