How's your prior art search solution? These 3 numbers will tell you...
Updated: Jan 22
Patents are expensive. Before you start the process, you'll likely do an initial search to confirm your invention is indeed novel and non-obvious. You can do this in-house, or you may use an outside firm that offers these services at a low cost. But what are you getting for your money? How do you know?
There are three critical numbers that you should track to know if you're getting good results: Rate of Allowance, Rate of RCEs and Rate of Appeals. Over time, these metrics can highlight shortcomings in your prior art search results and may indeed tell you that you need a new solution.
Rate of Allowance
The worst-case scenario is that your prior art search misses a critical reference that destroys the patentability of your invention. You waste valuable time and money on a fruitless prosecution that never goes to Allowance.
Your overall allowance numbers are not particularly helpful -- you should 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 are not so difficult. Compare your rates against the average for your key Art Units. If your applications are going to allowance at a much lower rate than the average, then you should look more closely to understand why.
You may be asking, "Are there really significant differences in these rates? 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 and we'll show you what you can learn.
Let's analyze 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. It may not be search-related, but since this represents a dataset of over 50 applications it's not a small outlier. If this is your portfolio, you should want to know why the 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 an eventual patent grant. If a large portion of your applications are going this route, this is costing you time and money. You should analyze your Rate of RCEs against the averages for your key Art Units. There are many reasons for filing an RCE, so these numbers aren't a straight line to a conclusion on your search, but it can be a big clue that you are spending more time and money than others in your space. You'll want to know why.
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. There's even some additional details on the types of rejections at issue in the appeal that may indeed point to issues that could have been identified in a good quality search.
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 make data-driven decisions to improve any deficiencies. You can even track numbers year to year and see if there are trends you need to address. We hope you can see from this limited data that there are indeed large variations in these numbers that may point to needed improvements in your processes.
At Bishop Rock, we use a prior art search methodology that includes a focus on the technical novelty of your invention, rather than one that simply conducts textual searches based on claim language. This technical focus enables us to find critical art that many low-budget vendors can miss.
If you need help with this type of analysis of your portfolio or if you are ready for a new search solution, Bishop Rock is here to help.