Originally posted May 1, 2024 on Linked-In

When prosecuting a patent application before the U.S. Patent and Trademark Office (or other national patent office) it is common to arrive at a “fish or cut bait” moment – do you fight for the broad patent claim scope you believe you’re entitled to, or do you accept more easily obtainable narrower patent claims?

In moments such as this, many folks turn to patent data analytics. The federal government makes a plethora of data available essentially for free, and a number of companies have monetized this data – by hoovering it up, processing, repackaging, and selling it as “patent data analytics” to aid patent practitioners and patent applicants. These products, for example, can tell you the allowance rate or the win rate on appeal of a particular art unit or even an individual examiner. Many patent practitioners believe that this information can allow you to make more informed decisions in those “fish or cut bait” moments, e.g., whether to accept an examiner’s rejection or to appeal it.

My colleagues from VMware know that I have always been very skeptical of relying too heavily on data analytics to pursue the development of patent assets. In my view, patent data analytics is only truly useful if you view each invention as a black box – a fungible asset that is nothing but a bundle of statistical probabilities—or a line on a spreadsheet. If you know nothing of the invention or the prior art, then making decisions based on nothing more than data analytics makes a lot of sense. However, the fate of a patent application is mostly based on the merits and novelty of the invention, the prior art, and the strategic decisions made in prosecuting the patent application. Even if an examiner is correct 99% of the time, if he is wrong this one time, then you may still want to fight for the claims you believe you are entitled to. As thinking analytical beings, we have the capacity to make independent objective assessments to determine whether a particular patent claim is patentable over the prior art.

If an examiner has an exceptionally high win rate on appeal, and he is convinced that your invention is not patentable, then you may want to look extra hard at the record to see if you’re missing something. That is the extent to which I think patent analytics should play a role.

With my background as a primary patent examiner and my experience in both private practice and in-house roles, I am equipped to deliver thorough, independent evaluations of the legal merits of inventions and the relevant prior art. This enables our clients to make informed, strategic decisions during those critical “fish or cut bait” moments in patent assets development.

If you want patent representation that digs deeper, contact me at Barta Jones PLLC for consultation tailored to your specific needs. Working together, we can make informed decisions and secure your patents with the full breadth of scope to which you are entitled.