If you are a football manager and your team is playing against the world’s best striker, would it influence which defenders you would select to play that day?
Or, if you are a tennis player and you would play against Roger Federer, would it influence how you prepare for the game?
Yes, it does you are thinking. You are for sure not going to let a junior defender play against the world’s best striker and leave the best defender you have on your bench to rest. What would management think?
And, if you are playing Roger Federer, I bet you would let people know that a tough match is coming up.
This piece of information alone, who you are facing, has tremendous value. This insight alone affects what strategy you will be putting in place.
Now, let me ask you this: if a tough Primary Examiner is reviewing your EP patent application, would you manage it differently?
No? Why not?
Would it not be of value to know that a Primary Examiner that has a grant rate of only 6.6% across 180 EP patent applications is managing your case? What if you also would know that the average grant rate for the technology sector of your EP patent is 19.3%? Yes, low grant rate in general, but even tougher when this Primary Examiner manages the case.
Would these facts influence your prosecution strategy?
What if the patent application in question is the most important application your client has? I am sure an early warning by you would be appreciated by your client.
Many will say, I cannot change the Primary Examiner, so what is the point? See, that argument misses the point completely.
In other industries, like sports, they also cannot change who they are playing. Or have you ever heard of a case that a game got re-scheduled, because someone did not want to play Roger Federer in the final? Or, that just because a team uses data, suddenly Messi would not play anymore? In other words, other industries have not adopted data-driven strategies, because they can change who they are playing.
You use data because you want to increase your chances to achieve a positive outcome.
How come those industries see such insights as an absolute must-have, but the legal industry at large still believes it is not changing much?
Obviously, there are those that are forward thinking and are proactive in the patent industry as well. It will be these attorneys and their teams, that will enjoy a competitive edge.
It has never been easier as an EP patent attorney to stand out from the crowd. While many are not even aware of the possibilities already available today, those that are advising their clients and business partners with real data will become the partner of choice for these companies.
Once you know that you are negotiating with a tough Primary Examiner, there are several data-driven measures you can implement. An experienced patent attorney will pick one of many options from the IP strategy toolbox depending on the situation.
Here are some examples:
Make sure you bring the case to the attention of the senior partner or top manager. I mean, if the business is relying on this “IP,” you want to let them know early if trouble is ahead...
Recommend to the client that getting approval for a divisional application might be a wise decision. This way, the case will stay alive longer. That will for sure annoy your competitors during their FTO search... Ask for the budget to file the divisional early!
Request Examiner telephone interview. Yes, easy one. However, once you bring data along with your recommendation, you are basing it on facts. Make it easy for your client to decide.
Manage client expectations. Appeal might be highly likely. Sure, you can deal with it later. But for majority of SME’s and start-ups, appeal is a significant investment. Show them that you understand and that you care. Give them heads-up early, so they can budget for it. Be a business partner, not just “a lawyer.”
Do you know what your added benefit is if you start communicating with data? You can justify why you spend the money you spend. At some point all IP departments, small or large, will be asked by management:
why did we spend this money?
what do we get for this investment?
If you are proactive, you will have no problem in answering these questions once you face them.
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