Is Your Patent Prosecution Strategy Smart Enough?

 In Patent Prosecution

Joe is the owner of an IP law firm. His firm is popular among clients for his Smart Prosecution Strategy. His clients claim that he understands the minds of examiners at the PTO and is well aware of their patent prosecution patterns like average actions per patent.

But how Joe knows about all this? Is this because over the years Joe prosecuted patents of a particular technology? And with every prosecution, he got familiar with the pattern of the examiners at some art units?

Well, this is how experience helps. In general, this is one of the ways an experienced law firm markets itself for having an edge over other firms. This is how a law firm wins the trust of a client by demonstrating that they are the best for handling their application.

But was this the secret of Joe success, you ask? The answer is a No.

Joe, apart from his experience, relies on insights for his smart patent prosecution strategies. That gives him an edge. Once there was a time when Joe relied solely on experience alone.

But then this patent application landed on his desk, which changed the way he handled prosecution in the future. You can say that it was an eye opener case for him. Want to know what happened? Well, read on.

As they say time changes for everyone, it changed for Joe too. This client application landed on the table of a new examiner that Joe had never worked with. As we all know, examiners’ prosecution pattern varies considerably from one examiner to another and from one art unit to another.

Joe had no information on the working procedure of this new examiner. He had no idea how many office actions this was going to take and what could work better with this particular examiner.

To sum up, the examiner was giving Joe a hard time. It became difficult for Joe to predict the probability of the outcome which he predicted without efforts in the past.

When such things happen, you feel like you have lost control of your case (as well as your client). The client who loves Joe because of his ability to predict the outcome beforehand, now expects Joe to deal with this new examiner in the same way.

Bonus: Want a 5 step-by-step technique to get your patent granted after an examiner rejects it? Click here to get our free guide!

We are sure of the fact that like Joe, you would also have been in such situations. A situation where your prosecution strategy would be completely different if you would have known answers to the following questions:

  • How many office actions an examiner is likely to give before allowance?
  • What works better with this examiner – an interview of an amendment?
  • What type of response has worked the best in the past with this examiner?
  • What are the chances of the application to get granted if it’s taken to RCE stage?
  • What could be the possible outcome of an interview with a particular examiner?


But as we said, this was an eye opener case for Joe. He decided to not get the situation better of him. He started contemplating a solid solution. And he found one. He figured out the answers to the above questions.

No, Joe didn’t have an epiphany nor he used his experience in some other way for sailing the boat through a sea of uncertainty. But he found a really concrete solution.

What was that concrete solution?

Examiner Analytics.

Yes, Joe used actionable Examiner Analytics that helped him craft a smart patent prosecution strategy. Are you still wondering what Joe did or used? Well, let us pull the curtains.

Joe used GreyB’s advanced Examiner Analytics. The unique analytical platform provides comprehensive Examiner analytics to both Patent attorneys and IP Counsels. It provides him an interface that gives answers to these most important questions and also helps him craft a smart patent prosecution strategy


To provide you an idea, there are patent examiners who have an average of 1.2 office actions per allowance and there are examiners, from the same art unit, that have an average of more than 4 office actions per allowance. Knowing which of these patent examiners Joe is dealing with gives him an edge.

Not only this, critical information like the following is just a click away from Joe:

  • Percentage of grants, abandon and in process applications pertaining to a particular examiner
  • Prosecution statistics, including the average amount of time between filing date and patent issuance
  • Detailed RCE statistics, including the insights on immediate action followed after RCE
  • Easy comparison of Examiners individual averages with the art unit averages;


Many other such categories of information help Joe understand and predict the prosecution pattern of an examiner. For example, Joe knows whether he is dealing with a patent examiner who never issues a patent without filing an RCE; which is handy information.

Joe eliminates such guesswork from the patent prosecution process and secures patents more efficiently for his clients. Why his clients love him? Because he gets them patents issued in the most economical and predictable way.

Image 2

Are you also thinking of weeding out the guesswork? You know what to do.

Business Development Strategy for IP law Firms-1

Leave a Comment

Contact Us

Got Questions! Queries! Send us an email.

Not readable? Change text. captcha txt