Better Patents Now LexisNexis® IP, Chris Holt, Megan McLoughlin

Inspired by a listener’s question, Megan does a deep dive into art unit 3649: the “pro se” art unit. The USPTO created this art unit in 2015 to help guide pro se applicants—those who choose to represent themselves before the USPTO—through the prosecution process. The art unit includes experienced patent examiners from every technology area and is designed to provide additional guidance to applicants who are not familiar with the process. Not surprisingly, this art unit has some unique statistical characteristics: from how applicants are utilizing the Track One program to the varying subject matter of applications being filed.

Patent practitioners typically turn to prosecution analytics to help them prosecute more efficiently. With the rise of fixed fees and a clientele that is constantly demanding more for less, there is significant pressure to complete tasks more quickly. But prosecution analytics also open the door to a new type of advocacy in a profession that is increasingly becoming commoditized. As an example, Megan discusses the art of drafting patent applications to aim for favorable art units; specifically, using PathWays to help identify favorable art units and to provide drafting guidance. This type of data-driven strategy may take a bit more time at first—but it could change the profession for the better.

Megan reminds leaders about the new proprietary metric, ETA (Examiner Time Allocation) and introduces two new deeper dive metrics. Before you file, these metrics will give you an understanding of your chances of "winning the examiner lottery" that will help you influence those chances. She demonstrates how the way that you draft your application, based on this knowledge, can put your case onto a different path and drastically improve your outcome.

Megan talks about deciding how to respond to a first office action. She discusses how the way you would respond to an office action without data can very often be different from the way you might respond with data.

In this episode, former patent Examiner Josh Rudawitz joins Megan to discuss the rationale behind ETA, PatentAdvisor's proprietary metric for examiner behavior. Josh weighs in on some of the reasons for ETA variations, both among and within art units.

Megan interviews patent attorney Josh Rudawitz about his experience as a patent examiner. Josh discusses his career path at the USPTO and shares valuable insights about the level of autonomy granted to examiners at various points in their careers. Based on his experience working on both sides of the table, Josh shares his advice for patent practitioners.