A bad prior art search result costs you valuable time and money. You end up with a long and expensive prosecution, and frequently you have to cut your losses and simply abandon the application entirely.
You deserve a search partner that provides data you can use to craft applications that quickly go to allowance, and helps you build a strong and powerful portfolio of patents. This quick post will help you evaluate your search results and give you the data you need to make the best decision for your portfolio.
In evaluating your search results, there are three critical numbers that you need to know: Rate of Allowance, Rate of RCEs and Rate of Appeals.
Rate of Allowance
Here’s the worst-case scenario: your prior art search misses a critical reference that destroys the patentability of your invention. You waste valuable time and money on a prosecution that never goes to Allowance.
Your overall allowance numbers are not particularly helpful — you’ll need to focus on your most common Art Units. These Art Units are small groupings of similar technology used by the USPTO to assign similar inventions to the same group of examiners. Some Art Units are notoriously stingy with patent grants, while others will grant almost all the applications that come through the door. Compare your rates against the average for your key Art Units. You may find that your applications are going to allowance at a much lower rate than the average.
You may be asking, "Are there really significant differences in these rates? I’ve got a big portfolio, so won't my numbers in each Art Unit always just trend towards the average?" No, they won't. Let's look at one specific example.
This is data from a major pharmaceutical company with an overall allowance rate of 58.5% across their portfolio of 1450 applications. Looking at the breakdown by Art Units, we’re going to focus on Art Unit 1617. This Art Unit has an overall Allowance Rate of 41.6%, which is highlighted below:
What is the allowance rate for this applicant in Art Unit 1617?
This rate of 20.5% is less than half the average for this Art Unit, which is a big difference. If this is your portfolio, you should want to know why that number is so low.
Rate of RCEs
Even if your application is ultimately granted, a Request for Continued Examination (RCE) is an expensive path to a patent grant. If a large portion of your applications are going this route, this is costing you lots of time and money. You should analyze your Rate of RCEs against the averages for your key Art Units. This can be a big clue that you are spending time and money overcoming rejections that you could have found in a good search.
Our full whitepaper includes an analysis of the Rate of RCEs for a large consumer electronics company company, and reveals one Art Unit where this applicant's rate is over 70% higher than the average. We even included some specifics from the file wrapper of one of those cases.
Rate of Appeals
Even more than an RCE, an Appeal to the Patent Trial and Appeal Board will compound the time and cost of any filing. Again, the key here is to look at your Rate of Appeals against the Art Unit averages. Our full whitepaper includes an analysis of the portfolio of a semiconductor company with a detailed analysis of one Art Unit where this applicant has an appeal rate that is 3x the Art Unit average. We walk you through the specific types of rejections at issue in the appeal. One of these may indeed point to issues that could have been identified in a good quality search.
Conclusion & Special Offer
By tracking your Rate of Allowance, Rate of RCEs and Rate of Appeals, you can analyze the effectiveness of your Prior Art search solution and know if you need to make a change. Don’t waste your valuable IP budget on poor search results.
Bishop Rock can help by providing technically focused search results that are based on the true novelty of your invention, not on simple textual searches from a quick read of your claim language.
Let us prove it to you! If you click the link below, we’ll run a free Rate of Allowance analysis for your company and show you areas where you can improve.