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Are You Data-Driven Yet?


If you had to choose between the following two types of patent attorney, which one would you rather take advice from?

A) An attorney who provides legal advice + recommendations, or

B) An attorney who provides legal advice + recommendations substantiated with data.

It seems obvious and professionals outside the legal industry actually shake their heads once they realise how little data-driven decision making is happening in the legal industry. 

It truly has never been easier to stand out from the patent attorney crowd. Simply use data next time you advise your client and gain a competitive edge against your peers. 

This also applies to in-house counsel. If you want to get closer to your business partner, start using  data when you communicate with them. Below follow two basic examples on how a data-driven patent professional differs from the legal counsel not substantiating the recommendations with data.

Use case 1:

A key patent application of your client is at a critical stage. You want to recommend the filing of several auxiliary requests in preparation for the oral proceedings. How do you substantiate your recommendation? 

Normal Counsel (aka the one not using data to advise):

We recommend filing several auxiliary requests, because the Primary Examiner has been difficult so far and we feel it will be beneficial to file the multiple requests as suggested in this letter.


NOTE: Usually the normal counsel will go on and write a couple of more sentences “justifying” the cost incurred by the multiple auxiliary request. They might all be sound legal arguments, but the counsel will still struggle… More importantly, the in-house counsel will struggle to justify the cost…

Data-Driven Counsel:  

Please note that that we are recommending the submission of several auxiliary requests as outlined above, since the grant rate for previous cases of this Primary Examiner that included Oral proceedings is only 5.6%

NOTE: Clear and to the point. Even if the data-driven Counsel were to propose to submit ten auxiliary requests, no patent applicant considering the case important would complain. Equally important, the in-house counsel can also communicate clearly to the business why it was justified to proceed with several requests.

Use case 2:

You lost the case and want to recommend appeal to your client. What do you base your recommendation on? 

Normal Counsel (aka the one not using data to advise):

We feel that the arguments if presented to the Board of Appeal will be accepted this time and that the Primary Examiner’s interpretation will be set aside.


NOTE: The lack of data-driven arguments in support of filing the appeal is striking… 

The bigger problem is, however, the normal counsel might only recommend an appeal “when it feels rights”.  This could be at disadvantage to the applicant. See the example for the data-driven counsel to see why

Data-Driven Counsel: 


We recommend the appeal, since based on 32 previously decided appeal cases against decisions of the responsible Primary Examiner, as many as 32% ended with a win for the patent applicant. The average win rate for the relevant technology field is in general only 18.3%. Thus, in combination with our solid legal arguments, we recommended filing the appeal.

NOTE: The Primary Examiner might be tough and a 32% success rate on appeal might not sound so great. Since we compare also to the general success rate at appeal for this tech field, we learn that such a success rate is actually good news (the average for the tech field is only 18.3%).

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