Smart Patent Prosecution – How to Increase Grant Rate of a Patent?

 In Patent Prosecution, Popular Strategies

Getting a patent application granted on the first go is a rare phenomenon. According to statistics, of all the patent applications received by the USPTO, over 90% are initially rejected. Thus, getting a first-time rejection is quite normal.

What follows next is immense struggle — Convincing the examiner with facts and logic which consumes its own sweet time and delays a grant. Other aspects that delay the office action proceeding include citation disclosure- known patent & non-patent references – scope clarification, amendments if any, et cetera.

To help you save office action time and to increase the grant rate of a patent, I analyzed the most cited patent references in a group art unit. Such references become a standard to be cited by an examiner,  and analyzing them has a great chance of reducing total office actions.

Pro Tip: If a surfaced citation fits in the disclosure list, you can add them to your list of references. This will make an examiner feel that your application is in sync with the already patented basic concept of the technology. This procedure can act as a cheat sheet which can help prepare for predictable consequences.

To drive the point home, I analyzed GAU1643 which handles patents related to drug, bio-affecting, and body treating compositions. Astonishing stats surfaced after analyzing ‘the most cited patents by examiners’. The surfaced references formed the base of most of the applications.

Examiners of the GAU cited US6506559 730+ times as backward citation, and 28 times it became a cause of rejection for some patent. Similarly, US5530101, with 697 backward citations, is cited 45+ times to reject some patent applications. A detail of other such patents in the  same Group Art unit is tabulated below.

How-to-increase-patent-grant-time

Consider US5530101, which has been cited 45 times in a rejection by examiners. Let’s say when the numbers of rejections were 30, if it had been figured out somehow that this patent can cause a rejection during the prosecution, the rest 15 applicants could have saved themselves by using an alternate strategy. Isn’t it?

While analyzing the patents filed in GAU1643, other than most cited patents, many other patterns also surfaced. If you analyze those patterns before filing an application, there are fair chances to increase the grant rate of a patent by decreasing the number of office actions.

These insights, combined with years of experience of the counsel can help subsequently decrease grant time while increasing grant rate and save your client’s time and money. Business wise, these strategies have their set of advantages too – Employing these strategies and sharing the details with your existing/potential clients can help you stand out from the crowd. These can serve as the differentiating factor for you, which would also help win client’s trust and give them a solid reason to have multiple connects.

Note: I used Examiner Analytics tool to get the data. It provides actionable data of examiners which can help make better-informed decisions. To witness the examiner analytics tool in its full glory, check out this piece – What to do when an examiner rejects your patent?

 Authored by: Abhishek Bhatia, Team Lead, Concept Hacking

Showing 6 comments
  • Jeff
    Reply

    Is there resource/database that allows one to search for such commonly cited references?

  • Steven Weinrieb
    Reply

    Are you for real? You analyzed all rejections and honed in on the most often cited references – that practice is from decades ago where, regardless of your invention, or more particularly, regardless of your claims, some examiners would proudly produce their “favorite reference” that they literally kept in the center drawer of their desk and told you that they cited this reference in every application that they examined – and then of course, you amended your claims around the reference and you obtained your patent. Analytics may have their place but they do not necessarily accurately predict the eventual outcome or even reduce the number of office actions – that always depends upon the particular examiners – if you get a fair, reasonable, intelligible examiner, you will receive your patent in a relatively short amount of time.

    On the other hand, if you get a combative examiner, who will repeatedly cite irrelevant art, or stretch references in a continuous attempt to meet your claims, you will be in for extended prosecution – that is unfortunately how the real patent process works.

    • MANISH KUMAR YADAV
      Reply

      Steven Weinrieb agree with you. I have seen only 14 office actions before grant.

      • MANISH KUMAR YADAV
        Reply

        Steven Weinrieb would be happy to know your experience that is much bigger and rich than mine. Agree with you on your above two points.

        • Steven Weinrieb
          Reply

          We have successfully prosecuted two thousand US patents, probably 10x that worldwide through PCT. And with all due respect, please don’t tell me that I was trolling for more traffic to our website when I never even divulged our website.
          I’m speaking from real world patent prosecution experience. If you want to get a larger “picture” of what patent application preparation and prosecution is really all about, see the following link:

          https://drive.google.com/file/d/0B2rsaeznxamwOGpzMl9pNXVtM1U/view

  • Nitin Balodi
    Reply

    Hi Steven, you’re right analytics may help and mayn’t predict the real outcome. Analytics is there to prevent you doing data gathering and analysis on your own so that you can save time. And this is what the tool does. Use of analytics is one part. It’s easy. Anyone can purchase the subscription of such tool and start using the insights of the tool. Blending your experience and intuition with analytics is another part which is tough. If the second tough part won’t be there, everyone in a particular field using a similar set of analytics tool would be on the same level. But does that happen? NO. Tools are there for saving time and to “help” you build smart strategies. They don’t build strategy. The current article is one such thing. The tool only gives data, we helped a reader know that this is one among the multiple things that could be done using that data.
    Also thanks for letting everyone know the other side of the coin — where an examination process gets extended.

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