A Case Study Featuring:
You have to instill confidence in your performance with the client. It’s an
opportunity to demonstrate to the client the sophistication
of the decision making that went into the strategy.
We’ve put a lot of time into perfecting our Examiner Reports to offer prosecutors all of the information they need about their examiners. But how do practitioners use these reports in their daily practice? After conducting a series of interviews with our customers to determine how they use our products, we found that most of our customers use Examiner Reports in furtherance of three main goals: (1) to develop a prosecution strategy, (2) to explain that strategy to their clients, and (3) to independently justify it using impartial data.
Cast of Characters
- Matthew Avery, Senior Associate, Baker Botts
- Diana Lin, Senior Associate, Schox Patent Group
- Ivan Wong, Senior Associate, Schox Patent Group
- Steven Greenberg, Partner, CRGO
Featuring Matthew Avery, Senior Associate
The appeals history section of Examiner Reports is
particularly useful for responding to “quirky” rejections.
Baker Botts is a full service, international law firm with 14 offices in 9 countries. Matthew Avery, a senior associate who concentrates his practice on patent prosecution, sat down with us to discuss his Juristat usage. According to Matt, Juristat’s primary value lies in developing prosecution strategies. He uses our Examiner Reports to recommend office action responses to his clients. In a typical scenario, after an office action comes in, Matt pulls up an Examiner Report to figure out what the best plan of action is—amend the claims, interview the examiner, file a notice of appeal, etc. He then makes a recommendation to his client’s in-house counsel, being sure to send the in-house counsel the Examiner Report to justify his recommendation. Matt tells us that the appeals history section of Examiner Reports is particularly useful for responding to “quirky” rejections. When trying to figure out the best way to respond to an unusual rejection, he can look back through all of the appeal briefs that have been filed before his examiner to find out how others have responded to similar rejections. This way, he uses the appeals history feature like case law, developing arguments that are designed to win.
Featuring Diana Lin & Ivan Wong, Senior Associates
Examiner Reports provide a valuable tool to explain
strategies to clients in a clear and concise manner.
Schox Patent Group is a boutique patent firm located in San Francisco that mainly represents Silicon Valley technology startups. Two senior associates, Diana Lin and Ivan Wong, spoke with us about how they use Juristat Examiner Reports in their prosecution practice. According to Diana and Ivan, Examiner Reports are an extremely valuable tool when determining the best office action response strategy. However, because Schox is a boutique firm representing technology startups, time is an extremely limited resource for all of their clients, and being guided toward the best path with data-driven decisions is valuable. Thus, Examiner Reports also provide a valuable tool to explain their strategies to their clients in a clear and concise manner. In most situations, their clients want to know whether their next potential course of action is likely to be a “go” or a “no-go,” and Examiner Reports allow Diana and Ivan to explain those decisions to them efficiently using impartial data.
Featuring Steven Greenberg, Partner
Examiner Reports make it easier to predict the
cost of prosecuting an application.
CRGO is an intellectual property and commercial litigation firm, focusing on all aspects of intellectual property law, including patents, trademarks, and copyrights, and has offices in Washington DC, Florida, and Maine. Steven Greenberg, a partner at the firm, told us a little about how he uses Juristat to justify his strategies to his clients. While Steven uses Examiner
Reports the way our other customers do (i.e., figuring out the best way to respond to office actions), Examiner Reports help him to justify his strategy to his clients. According to Steven, “You have to instill confidence in your performance with the client. It’s an opportunity to demonstrate to the client the sophistication of the decision making that went into the strategy.” Because Examiner Reports are particularly useful for determining the probability of receiving an allowance, they can also be good indicators of the perceived near term cost of proceeding in prosecuting an application according to different strategies. Steven uses the outcome graphs of Examiner Reports primarily to find the contemporaneous probability of an allowance given the current state of prosecution. Since every office action continues to accrue costs for a client, these probabilities are good indicators of whether it would be in his clients’ best interests to continue prosecution with the Examiner or appeal to the Board. Thus, Juristat Examiner Reports offer an independent economic justification for Steven’s prosecution strategies.
Using the power of big data, patent attorneys now have a simple tool that allows them to quickly develop a strategy, easily explain it to their clients, and confidently justify it like never before. But you don't have to take our word for it: