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Leveraging Data for “Macro” and “Micro” Patent Prosecution Management

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The need for reliable and independent data is often at the center of any new invention. It turns out that data is a crucial asset to have on your side when trying to protect and defend the intellectual property rights related to that invention as well.

“We might use the term ‘micro’ patent management to refer to the work that goes into the prosecution of a single application and the term ‘macro’ patent management to refer to the overall systematic challenges related to the patent portfolio management,” said Christopher Holt, a patent attorney and vice president of patent analytics at Reed Tech. “In both of these scenarios, access to reliable data that delivers insights to patent prosecution is extremely valuable to practitioners.”

A discussion took place recently on a recent Reed Tech webinar about how to leverage data for more effective patent prosecution (“The Balancing Act: Macro vs. Micro Patent Prosecution Management”), which may be viewed here. Holt moderated the discussion and his expert panelists were Sylvia Chen, patent counsel at Google, and John Lanza, partner at Foley & Lardner.

At the “Micro” Level

“One of the ways that data can help patent lawyers be more effective at the ‘micro’ level is the availability of information regarding the specific USPTO examiner who is handling your patent application,” said Lanza. “For example, if I know that the examiner assigned to my application has certain tendencies, I can make more-informed strategic decisions about how to proceed with that patent prosecution.”

Lanza is a user of LexisNexis PatentAdvisor®, the first-ever data-driven patent strategy tool that provides users with a systematic approach to crafting an effective prosecution strategy and managing an IP portfolio. The tool enables IP practitioners to better understand why certain patent applications take longer than others to reach allowance, then use that knowledge to devise better strategies, manage budget, and evaluate both in-house and outside IP counsel. Holt invented PatentAdvisor™, which was commercialized by LexisNexis and is now a part of the LexisNexis portfolio of IP solutions that span the patent workflow.

“A single attorney at Google might manage several hundred patent prosecution cases over the course of a year, so our tendency as human beings is to just remember the highs and lows of working with USPTO examiners, the particularly great experiences or the distressing experiences,” said Chen. “Having access to black and white statistics that tell an objective, factual story about the tendencies of individual examiners is very helpful to us in shaping our patent prosecution strategies.”

At the “Macro” Level

PatentAdvisor also includes powerful patent analytics tools designed to provide corporations and law firms with solid information based on USPTO patent data. The panelists noted that this sort of data can also be very useful to practitioners at a “macro” level of determining how to manage a patent portfolio.

“There is a spectrum of decisions that must be made in developing patent portfolio management strategies, some of which are limited by the facts on the ground,” said Lanza. “But what a patent lawyer can do when armed with certain high-level data regarding USPTO decisions is identify specific cases within the portfolio that may be higher priority for prosecution, based on the best opportunities for success. This helps practitioners to develop strategies for their clients that are most cost-efficient.”

Objective analytics tools are also useful at a high-level for in-house counsel to gain insights into the effectiveness of their outside counsel. For example, in-house counsel are able to benchmark how a particular kind of case is typically handled by an individual examiner and then compare that data with the results their outside patent lawyers are obtaining on similar cases before the same examiner.

“As the clients, these kinds of analytics have given us the ability to challenge our law firms — and for the firms to challenge themselves — by providing objective data that illustrates how they are doing versus their peers with patent prosecutions,” said Chen. “We love the idea of challenging our outside counsel and then seeing them rise to that challenge with even more effective patent portfolio management strategies.”





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