Monday, October 5, 2020

How to use Patent Examiner Statistics

I personally find patent examiner statistics enormously valuable in my practice. In this blog post, I provide a guide that you can use to get better outcomes for your clients using Patent Bots examiner statistics. 

We give many of our statistics away for free, and we also have a Premium Statistics subscription for some of our more advanced statistics. The first time you login to Patent Bots you will get a 2-week trial, and that will allow you to see all of our statistics at no charge. Afterwards, you'll need a firm-wide subscription to our Premium Statistics.

I'll walk through the different parts of our statistics pages and explain why we included each part and how it can help you. We work hard to provide you with the information you need, but also try not to overwhelm you with statistics that you don't care about.

Grant Rate and Difficulty Ranking

At a high level, the grant rate is the most important statistic.

The grant rate is our metric for comparing examiner difficulty. We compute what we call a "3-year" grant rate, which is the percentage of the examiner's applications that are granted at 3 years after the first office action. We have another blog post that explains the advantages of our 3-year grant rate over a conventional grant rate.

To put the examiner's grant rate in perspective, we rank all of the examiners at the USPTO according to their grant rate and show you the examiner's percentile. This examiner is in the 92nd percentile (harder than 92% of examiners) and this makes him an "extremely hard" examiner.

The grant rate and difficulty ranking are useful because it gives you the big picture of what you are up against. For a harder examiner, you can set client expectations, be more prepared to amend claims, and spend more time on quality arguments. For an easier examiner, you can be less inclined to amend claims and instead argue for allowance of as-filed claims.

Employment Information

We also show you is a summary of information about the examiner.

We show you the examiner's group, technology classes, and degree to give you an idea of how likely it is that the examiner will understand the technology of your invention. Applications sometimes get misclassified and you might need to do more work to get the examiner to appreciate the invention. If you have technically complicated invention, then it is very helpful to have an examiner with an advanced degree as we do here.

We also show you the contact information and location of the examiner to help you schedule interviews. Office Actions generally don't have the email address and location of the examiner.

Grant Rate Tab

In this tab, we show you a "grant rate timeline" for your examiner.

In this graph, time is on the horizontal axis, and the starting point is the date of the very first office action. For each month after the first office action, we compute the percentage of cases that are granted, pending, and abandoned. As time goes on, the percent granted and abandoned increase and the percent pending decreases. The grant rate at 3 years is exactly the 3-year grant rate described above.

I like the grant-rate timeline for two reasons. First, it provides a very clear way to set expectations with your client. If you have a hard examiner, like this one, you can tell your client that they have a 16% chance of getting an issued patent in 3 years.

Second, the grant-rate timeline concisely summarizes a lot of information about examiner behavior. We have another blog post where we summarize 5 different types of examiners based on their grant-rate timeline: the master, the ideologue, the decider, the negotiator, and the granter. This knowledge of examiner behavior helps you make better decisions about when to file an RCE, to file a notice of appeal, or to abandon a case.

In this tab, we also provide a bar chart that compares your examiner's grant rate to his or her art unit and the USPTO average. I find it useful to know if my examiner is much harder or easier than the art unit average. For example, if the examiner is much harder, I might get more sympathy from a supervisor or I may have a better chance of success with a pre-appeal conference request.

Interview Benefit Tab

In my practice, I just about always interview the examiner after each office action. I find that engaging with the examiner is very helpful in preventing misunderstandings and overcoming disagreements about the scope of the claims and the prior art. That said, there are some examiners you may not want to interview, such as this one.

To evaluate the benefit of an examiner, we compute two grant rates: (1) a grant rate over cases that had no applicant-requested interviews and (2) a grant rate over cases with at least one applicant-requested interview. Not surprisingly, for almost all examiners, the grant rate goes up when you do an interview.

For this examiner, however, her grant rate is 30% over cases without any interviews and is 22% over cases with at least one interview. Accordingly, you may be better off skipping the interview!

There are also some examiners that almost never do interviews. I don't understand how this happens, but I suppose some examiners don't like to do interviews and they actively avoid it. For these examiners, you may be better off not requesting an interview.

Recent Dispositions Tab

In this tab, we show a count of granted and abandoned cases for an examiner over the past 6 years.

This information is helpful because an examiner's grant rate can change greatly over time. For example, an examiner's grant rate often goes up when the examiner becomes a primary examiner since there is less review by colleagues. For another example, changes in the law (ahem, 35 U.S.C. § 101) can greatly change an examiner's grant rate.

This examiner is a great example. The examiner has a high difficulty rating (he is "very hard"), but over the last two years he is granting many more cases than he did before. From the examiner's tenure and GS level, it appears he was recently promoted to primary examiner. With this information, you may be more likely to file an RCE rather than a notice of appeal.

On this tab, we also show 20 of the examiner's recent cases that were granted or abandoned.

If I am having difficulty with an examiner, I will sometimes review patents that the examiner has recently allowed, look at the successful arguments that the patent attorney there used, and consider similar arguments in my own office action response. This is particularly helpful for 101 rejections.

We make this process easier for you in two ways. First, for each case, we show you a list of office actions and the rejections contained in each one. This saves you time because you can go directly to office actions that have the rejection you are facing. (Note that the OA Rejections column is only available with our Premium Statistics subscription.) Second, we have a button to take you directly to our PatentPlex image file wrapper page (separate subscription for this too) where you can directly download the office actions and responses that you are interested in. You don't even need to go to PAIR!

Appeals Statistics Tab

The last two tabs relating to appeals are only available with our Premium Statistics subscription. 

In the appeals statistics tab, we show statistics for three events: 
  1. The overall outcome of the appeal (at least 1 claim granted, all claims rejected, or prosecution reopened).
  2. For fully briefed appeals, the PTAB decision (examiner affirmed, affirmed in part, or reversed).
  3. The outcome of a pre-appeal conference (proceed to appeal, prosecution reopened, or claims allowed).
Here are example statistics for the overall outcome of appeals.

If you were uncertain about whether to appeal, this examiner's statistics would weigh heavily in favor of appealing. You have a 79% chance of getting claims allowed on appeal.

The combination of examiner grant rate and appeal outcomes are a very helpful combination in making appeal decisions. Here are a few examples:
  • An examiner with a low grant rate who is often affirmed on appeal. Best option may be to abandon or file a continuation and hope you get a different examiner.
  • An examiner with a low grant rate who is often reversed on appeal. Appeal early. Maybe even after the first final office action.
  • An examiner with a high grant rate who is often affirmed on appeal. File an RCE and work on reaching a compromise with the examiner.

Appeals History Tab

In the appeals history tab, we show a list of all the examiner's appeals along with a brief docket of appeal events.

Each case is color coded according to the appeal outcome (at least one claim granted, all claims rejected, or prosecution reopened). The appeal history is helpful because it tells you exactly what happened for each appeal.

For example, claims may be allowed for two reasons: (1) an examiner may be reversed by the board or (2) the examiner may change his or her mind and allow claims before the appeal goes to the board. I'll be more likely to appeal for an examiner who grants claims before it reaches the board than for an examiner who is frequently reversed by the board since the claims will be allowed much faster and you don't need to wait for the board decision.

Putting all of the above together, here is a sequence of events for a patent that I recently obtained for a client:
  1. Received a first office action with a poorly reasoned rejection of all claims.
  2. Interview benefit stats were positive so we interviewed the examiner.
  3. The examiner has a "medium" difficulty rating (59th percentile).  We filed a response without amending claims because the rejection was poorly reasoned.
  4. Received a final office action with poorly reasoned arguments.
  5. Appeal stats showed high chance of success on appeal and appeal history showed that the examiner frequently grants claims before writing his answering brief.
  6. We filed a notice of appeal and brief.
  7. Examiner calls us and offers us a very narrow dependent claim. We decline the offer.
  8. We receive a notice of allowance that allowed all of the as-filed claims.
  9. Issued patent!
Patent Bots examiner statistics helped us get broader claims allowed, get the claims allowed more quickly, and also reduce the costs of prosecution.

We hope found this guide to Patent Bots examiner statistics helpful, and that you are also able to use our statistics to get better outcomes for your clients. Please contact us if you have any suggestions for improving this guide or our examiner statistics. We love hearing from our users.