Five Indicators that Can Help IP Counsels do Better in Prosecutions
Someone not so famous once said — If something helps you get better, leverage it. The “it” varies from person to person, based on needs and priorities. For IP counsel, one such “it” could be insights derived from the data.
Yes, you read that right. Insights from data can help you get better at what you do. Be it prosecution, litigation, maintenance or strategy creation, no matter what the task, leveraging different forms of data for every phase can reap great results.
Talking specifically about prosecution phase of a patent, there are a few performance indicators which if analyzed, can give an IP Counsel (i.e. you) an overview of the changes that should be made to the filing practice to reap benefits.
Bonus: Want a 5 step-by-step technique to get your patent granted after an examiner rejects it? Click here to get your free guide!
Wondering what those indicators are?
You are about to find out, albeit, with the help of a practical example.
Qualcomm vs. Ericsson — patent prosecution statistics
We analyzed patent prosecution statistics of two communication companies — Qualcomm and Ericsson and portrayed those statistics in the form of a chart to help you better understand these indicators, and how you too can utilize these resources to efficiently manage patent prosecution phase for your client’s patents.
The prosecution strength indicates how a patent fares during office actions. The factor that plays an important role in determining the prosecution strength of a patent is the number of rejections that an application had to face before getting granted.
Additionally, the number of modifications made to claims to pass the patentability criteria also helps in determining the changes that should be made in prosecution activity.
For instance, in the below chart we could see that Qualcomm’s prosecution strength has improved a lot over the time and is way better than Ericsson. Whereas Ericsson’s prosecution strength is nearly constant and has not shown much improvement, which should be a matter of concern for the company’s IP attorneys.
On a deeper analysis, we found that Ericsson has nearly a double rejection rate when compared to Qualcomm.
So what is the pain point here?
The way these patents are drafted.
Let us have a brief look if that’s exactly the case.
The depth of Prior Art
A deep analysis of the prosecution activity hints that Ericsson is filing patents without deeply exploring available prior art when compared to Qualcomm. The depth of prior art indicated in the chart proves the fact.
According to analysis, Ericsson has improved their depth of prior art search in the past few years; however, it still has much to cover to reach the level of Qualcomm.
If the IP counsel of Ericsson had spent some time and money on studying existing prior art as Qualcomm did, its grant to rejection ratio would be far less, leading to a better prosecution strength and in turn saving more time and money in prosecution activity.
Also, if you were wondering what depth of prior art stands for, here’s a definition:
“The depth of prior art statistically reveals the number of rejections of an application on the basis of prior art located by an examiner. It is also a strong indicator of the lack of search done by an organization prior to filing an application.”
Relevant Strategy to explore: How this tool can help you craft a smart patent prosecution strategy?
Just when we were about to conclude that most of Ericsson’s rejections were because of lack of a proper prior art search, the claim strength analysis proved our first assumption right.
Ericsson indeed filed broad claims causing a spike in the number of rejections. Though it was just a speculation, such theories could either be proved right or rejected on the basis of the statistics. It solves one problem – It eliminates hypothesis formed to explain certain situations.
There’s no more – “This might be the case.”
It can now easily be replaced by – “That’s exactly what happened!”
The good news for Ericsson is that the analysis of claim strength revealed that Ericsson is on right track. Though its rejection rate is higher than Qualcomm, it still managed to get a lot of patents granted after first or second rejection and that too with broader claims.
Qualcomm, on the other hand, conducted an in-depth prior art search, faced lesser rejections, has better claim strength and claim scope than Ericsson.
Which company do you think is on the right track?
I would allow you to guess the answer.
Editor’s Note: We performed an in-depth analysis of Qualcomm’s patent portfolio using one of our tools (Litigation Predictor). Wonder what we found? Read it all here: Which are the most valuable patents of Qualcomm’s patent portfolio?
If you couldn’t answer the above question, let us have a look at another indicator that would help you decide which company is indeed on the right track.
A look at the claim scope analysis reveals that Ericsson’s claim scope ratio is poor when compared to that of Qualcomm.
What does it mean?
It means that after conducting an in-depth prior art search, Qualcomm drafted claims covering the invention with just the right number of independent claims, which were the right size of broad, to protect its core inventions.
Ericsson, on the other hand, lacked an in-depth prior art search which affected the scope of its claims as well. Though it filed broad patents which were eventually granted, the claim construction proved to be a problem.
If Ericsson wants to step up its game, the right move would be to conduct in-depth prior art searches, and draft claims after giving due consideration to the available prior art.
In that way, not only would the company recognize the whitespaces where there is scope for innovation and patenting activity, it would also reduce the time taken for grant of a patent, thus saving time and money.
Talking about time, let’s take a look at our fifth indicator “Prosecution speed” which, concisely is, the time taken on an average for the issuance of a patent.
A look at the prosecution speed analysis reveals that both Ericsson and Qualcomm are neck-to-neck in terms of prosecution speed.
This means, that on an average, it takes around the same amount of time for issuance of patents by both these companies. The interesting fact to note is — Ericsson, which lags behind in the race for several other indicators, took a leap and has been maintaining an upper edge in recent times.
So let’s get back to our question — Which company do you think is on the right track?
The answer is indeed Qualcomm. Out of 5 indicators, Qualcomm surely outperformed in 4 of them. Ericsson, on the other hand, though lags behind, has been showing signs of improvement.
The question now is — What could Ericsson do to cross Qualcomm’s level of prosecution?
And why just Qualcomm, to outperform others too, there are some changes that Ericsson need to make.
Other than conducting a deep prior art search and drafting better claims, one potential problem solver in the Ericsson’s scenario would be examining the patent examiner’s behavior during office actions. Based on the characteristics of different examiners, different steps could be taken which would improve the chances of getting a patent granted.
Examiner analytics can help Ericsson (or any other company) go a long way. If you are interested in finding more about examiner analytics, this link can help you: What is GreyB’s Examiner Analysis Tool?
Data, as we know it, is abundant. Leveraging its availability is what constitutes wisdom.
Having said that, IP counsels should leverage the presence of the data and tools so that better decisions could be taken to effectively manage the portfolio of a client, no matter what the phase.
Because better decisions mean good strategy and good strategy always ensures success in the game.
After all, participation is just consolation. It is winning that really matters!
Authored by – Anjali Chopra, Research Analyst with the help of insights provided by Shikhar Sahni, AVP, Operations and Mahesh Maan, Senior Research Analyst, Search Team.
Next Step: Explore more Patent Prosecution Strategy articles and create your own smart patent prosecution strategy using these tactics.