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Deploy Patent Prosecution Analytics to Accelerate the Product Development Cycle: A Comparative Case Study

Patent prosecution analytics can provide valuable insight into the performance of an organization’s IP operations just as other forms of analytics help in reducing cost, in making better decisions and in creating new products and services. Technology companies who are actively filing patents can achieve cost savings and faster times to grant through prosecution analytics. I will illustrate what I mean by looking at two leading technology companies with different prosecution performance – Cisco and Juniper Network.

The patent prosecution analytics can illustrate areas for improvement, how a company compares with direct and indirect competitors, patent prosecution trends, and areas the company is performing well.

There are multiple ways to measure how well an organization’s patent prosecution processes perform. MaxVal and its clients have had good success with these methods:

  • Prosecution Success Score – The number of issued cases divided by the number of abandoned cases in a given year.
  • Application Abandonment before an Office Action
  • Rate of Issued Cases with 2 or more RCEs
  • Average Pendency

To illustrate these methods and the insight they can provide, MaxVal took a look at Cisco Systems and Juniper Networks, two competitors within the Computer Communications Equipment Industry. MaxVal used publicly available data for its analysis.

Patent Prosecution Score

A Prosecution Success Score is simply the number of issued cases divided by the number of abandoned cases in a given year. The higher the score, the better it is for the company. Higher prosecution success scores can be attributed to more efficient prosecution methods, a better invention disclosure screening process, and possibly fighting harder to get patent issuance.

Prosecution Success Score
Year Cisco Juniper
2013 12.3 15.6
2014 5.9 16.1
2015 5.9 47.8

While we see Cisco and Juniper had comparable Success Scores in 2013, Juniper has continued to improve their Success Score while Cisco’s Success Score has dramatically declined. Cisco is still getting patents issued at a high rate but many more applications are being abandoned. It would be useful for Cisco to further investigate and see what the reasons for these patent application abandonment are.

Rate of Abandonment Prior to an Office Action

Another telling metric would be the rate of abandoned cases prior to receiving an Office Action. If a case is abandoned prior to receiving even a single Office Action, then it is likely that the case should not have been filed in the first place or the company did not fight hard enough for the case. An option to reduce the number of abandonment prior to an OA would be to invest in pre-filing searches to become aware of the prior art.

Rate of Abandonment Prior to an Office Action
Year Cisco Juniper
2013 1.6% 9.1%
2014 4.2% 50%
2015 5.8% 40%

Cisco seems to have a very low rate of abandonment prior to an OA while Juniper’s rate in 2014 and 2015 seems rather high. However, Juniper only abandoned 14 and 5 cases, respectively, in 2014 and 2015 so the sample size is too small to make a proper assessment of their rate.

Rate of Issuance with 2+ RCEs

The next metric to look at is the number of issued cases prior to filing a Request for Continued Examination (RCE). A high rate in this metric is a strong indicator of inefficient prosecution methods (broader claims among other things). Since the application was ultimately issued, it can be inferred that it was inefficient prosecution by the practitioner that led to a number of RCEs prior to issuance.

Rate of Issuance with 2+ RCEs
Year Cisco Juniper
2013 3.3% 12.2%
2014 6.0% 6.6%
2015 4.0% 5.4%

Both Cisco and Juniper seem to have pretty good rates in this metric suggesting that their patent practitioners use efficient prosecution methods. While Juniper’s rate in 2013 was on the higher end of the spectrum, there has been a noticeable decrease in their rate.

The final metric to look at today is the average pendency between a first OA and issuance. While looking at the pendency from filing to issuance is a normal metric to look at, it doesn’t give the best insight to prosecution methods. Much of the time from filing to first OA is a result of the patent office delays in working on the application. So, a better indicator of an applicant’s prosecution methods is to look at the time from the first OA to issuance. A higher pendency can be attributed to receiving more OAs, taking longer to respond to OAs, and filing RCEs.

Average Pendency from OA to Issuance

Average Pendency from OA to Issuance
Cisco Juniper
Overall 13 months 18 months

As evidenced by the table above, Cisco seems to be getting their applications issued, on average, 5 months quicker than Juniper. Juniper should look closer at factors that can be attributed to this increase in pendency.

Overall Cisco and Juniper seem to employ reasonably efficient patent prosecution practitioners and methods. They both have high issuance rates and low abandonment rates. Cisco’s low abandonment prior to OA rate indicates a good invention disclosure screening process. And the low rate of issuance with 2+ RCEs indicates efficient patent prosecution methods.

These metrics, and others, illuminate a company’s patent prosecution process strengths and weaknesses. It allows companies to see how their competition is faring and what areas they need to improve.

By Bharath Venkat, MaxVal

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IP5 Global Dossier


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The New Game Changer – IP5 and Global Prosecution Data

It has been over fifteen years since the release of Private PAIR. It was one of the most significant technical achievements by the USPTO and one of the major milestones in the patent data revolution by allowing electronic patent filing and data access.

Although a real game changer fifteen years ago, as anyone who tried to get through the latest Java updates to access Private PAIR (especially on a browser other than FireFox) can attest, Private PAIR is far from cutting edge in 2016.

Make no mistake; PAIR is still the bread and butter for US patent practice operations and a valuable source for patent prosecution data. However, today’s savvy IP Managers are looking for additional tools and data to elevate their IP management.

One of the major reasons why PAIR is no longer the game changer that it once was is the internationalization of patent portfolios. US patent data is simply no longer enough to provide the complete view of patent portfolios. For many companies, a significant portion of their portfolios are now non-US patent assets.

One indicator of the importance of non-US patent filings is the PCT national phase filings. Based on the latest WIPO data, although US is the single most popular national phase filing destination in 2014, the total number of national phase filings in four popular non-US patent offices (China, EP, Japan and Korea) is now more than twice the number of US filings (128,946 US filings vs. 267,688 non-US filings).

PCT national phase filings in China, Europe, Japan, Korea and US in 2014PCT 2014

Country

Number of national phase entries in 2014

China 79,612
Europe 92,627
Japan 58,337
Korea 37,112
United States 128,946

Table and Graph 1: PCT national phase filings in China, Europe, Japan, Korea and US in 2014 from WIPO IP Statistics Data Center http://ipstats.wipo.int/ipstatv2/index.htm?tab=patent.

The top five Patent Offices (IP5) have recognized this internationalization phenomenon and many directives have been introduced to facilitate cooperations between the patent offices. Perhaps the most significant since the PCT itself is the IP5 Co-operation.
IP5 CountriesIn their own words, IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of the examination process for patents worldwide (www.fiveoffices.org).

The members of IP5 are:

To IP Managers, the most immediate impact of IP5 is the efforts to facilitate greater integration of the global patent system through sharing of patent data. For example, the IP5’s Common Citation Document (CCD) application now allows access of up-to-date citation data of all five patent offices.

Perhaps even more impactful is the IP5 Global Dossier Service, which integrates prosecution data of EPO, JPO, KIPO, SIPO, and USPTO. For the first time, IP managers can now have a global view of prosecution history and status of five most popular patent offices that accounts for a vast majority of patent filings.

This global view that is now available to IP managers is the true game changer of intellectual asset management in 2016. Successful harnessing of this technology, especially in combination with private PAIR, will provide IP Managers the correct, current and complete view of their patent portfolios, and thereby allowing them to take informed actions and perform meaningful analytics.

Steven Gong, JD, MSCE
Director, MaxVal, SymphonyIAM Product Manager
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Competition Monitoring Across Patent Lifecycle: Using 5 Powerful Email Alerts

The patent landscape is tougher and more complicated than ever before. The ever-increasing amount of patent litigation cases in district courts, federal courts, and PTAB trials and appeals courts is a clear indicator of the struggle inventors and companies face to secure their intellectual assets. Applying for a patent, getting it granted and monetizing it is harder than it was a decade ago. This state of affairs automatically makes the inventors and patent professionals obsessive towards competitor monitoring.

Collecting competitor data and deriving the relevant information is only one half of competent competitor monitoring. Inventors and patent professionals must also analyze and convert this relevant information into actions. It is important to keep tabs on competitors not just to learn their actions but also to benchmark and hone against their technologies and strategies.

However, the immediate question that comes to mind would be: With different stages available in a typical patent lifecycle, which ones should be monitored and most importantly, how to efficiently monitor these stages. Each stage comprises its own opportunities and threats which can be utilized effectively to improve competitor monitoring and safeguarding patent assets if extracted and analyzed correctly.

This post discusses the significant stages to be monitored in a typical patent lifecycle while answering why and how to monitor using technology enabled alerts.

Patent Monitoring Life-cycle

Patent Monitoring Life-cycle

Whom to monitor?

The publication stage is the first place that everyone should start competitor monitoring.

Discover new innovations: It is also critical to locate the new entrants who could become a potential threat. It also helps in staying up-to-date on the current trends of the relevant market in order to stay ahead of them.

Avoid unnecessary stress: In the IP world, due to the “First to File” concept, it is very common to see someone else file an application for an invention which is still under your idea formation stage.

Follow your competition: R&D and C-level teams can amend their IP strategies proportionately to their competitors based on their patent publications.

1) MaxVal’s Patent Publication Alert sends a custom email alert right to your inbox whenever a new patent application matches your interest or requirement gets published. The frequency can be set weekly, bi-monthly, or monthly as per your convenience. You can fine tune the search criteria as you wish and follow by assignees, inventors or technologies in the US, PCT, and EP.

What to monitor?

Now that you have found who to follow based on the applications published it is important to zero in on the published applications of your interest so you can keep an eye on them throughout the prosecution.

Here are a couple of patent prosecution resources worth monitoring.

USPTO_PAIR

USPTO PAIR

Latest IFW updates: The “Image File Wrapper” tab will show you what was filed by the applicant, accepted or rejected by the examiner, and how the applicant responded. You will be able to see all of the office actions that have taken place between the USPTO examiner and the applicant.

Continuity data: tells you if a patent of interest is a continuation application, or the parent of a continuation application.
These two alerts enable the attorneys to track their own applications as well as the competition’s. As Publication Alerts, the frequency and search parameters can be customized.

 

2) PAIR-Alert for Public PAIR offers PAIR/EPO patent prosecution status and IFW updates patent applications.

3) Max-PAIR for Private PAIR automatically logs into the USPTO Private PAIR using the attorney’s PKI certificate number and fetches PTO activities and prosecution status for applications associated with a customer number.

Stay ahead of competition

Through the patent process, the applicant can challenge the examiner’s decisions or a third party can challenge the validity of an issued patent with the PTAB.  The Patent Trial and Appeal Board’s duties include review of adverse decisions of the patent examiner, review of appeals from the applicant for re-examinations, derivation proceedings; inter partes and post-grant reviews, and rendering decisions on interferences.

Keeping a track on these trials and appeals will give you an opportunity to stay on top of what is happening around the application/patent of your interest.

4) MaxVal’s PTAB Review Alert  is an easy way to follow Interference/Post Grant and Inter partes review as they occur at the PTAB. This custom alert will deliver the patent bibliographic details and a docket report with searchable files of documents filed during the review process.

Identify Threats

Your competitor monitoring effort does not end at the prosecution stage or even after a patent is issued. A constant watch at this point helps you to proactively monitor if the patent of your interest is litigated as well as to gauge the filing trends, patterns of case outcomes, plaintiffs and defendants, etc. This is not only to understand current affairs but also to be prepared to handle future threats.

5) Litigation Daily Alert is a custom alert that helps patent litigation attorneys keep up with the litigation trends and  learn how a patent was dealt with in earlier cases so they can alter their strategies if needed. It is a targeted email which contains all new and closed ECF, PACER and ITC cases.