Patent Outcomes Need Not Depend: Demand Accountability

Ever felt frustrated when a patent lawyer responds to your direct question about whether you can obtain a patent with the phrase "it depends"? You're not alone. I hear this from my own outside counsel, each of whom should know that I expect better from them. And it's precisely from this vantage point as someone who is hired for my patent expertise and who is also the client of other patent experts that I can say that you can, and should, demand more accountability.

?Let's first delve into why "it depends" is the go-to answer to clients' questions. This phrase is deeply ingrained in the earliest days of law school when we learn that we cannot ethically guarantee client outcomes. “It depends” then naturally serves as the default response when multiple outcomes are possible, and when some of these may be out of our control. In the patent realm, however, at least some—and perhaps most—of the client possible outcomes may be within a lawyer's control.

?For example, comprehensive searches can largely prevent the filing of claims that read on the prior art. Artfully drafted dependent claims can reduce the possibility that an application will obtain a final rejection after a first rejection. Use of examiner statistics allows mining of the patterns of an examiner's prior behavior to generate strategies to deal with this gatekeeper who otherwise stands in the way of you obtaining patent coverage that is crucial to your company.

?It follows that if a patent lawyer can create some or most of the conditions that can ensure that a patent will issue with needed claim scope, then why can’t they be accountable for results? They can and should. And lawyers should accept that accountability does not mean that they can guarantee results. Rather, patent accountability means keeping track of efforts, and making adjustments to strategies and tactics when necessary and appropriate.

I’m not asking my peers to do anything I’m not willing to do myself. Last time I checked, I was hitting about 950 with approximately 35 at-bats in the last 8 or so years with those clients who decided to stay in the game until the end.* The average length of time to obtain a first allowance in the USPTO is about 10 months from filing, which is lightning-fast compared to the average pendency of about 2-4 years for patents today.** My clients appreciate my focus on USPTO stats and the accountability this generates. This means they’re happy to discuss their experiences with anyone who is seriously considering engaging me to assist in developing and deploying patent strategies that meaningfully move the needle for their businesses.

?Importantly, however, accountability does not rest solely on your patent lawyer's shoulders. A lawyer cannot be expected to know what your company's patent goals are if only because their business is the law business, not your business. To ensure that patent efforts align with company goals, clients must clearly articulate their desired business outcomes. Only then can it be clear to all what business purpose patents are expected to serve when they are issued.

Clients must also remain involved in the process not only during the drafting stage, but also as the application moves through the Patent Office. Business strategy can change frequently, but a filed application remains the same unless the claims can be modified to align with the company's current objectives. Continued client involvement during examination can ensure that issued patents will include claims that remain relevant to business goals.

?Also, companies for which patents are crucial components of business goals must endeavor to hire only those professionals that are more likely to deliver needed patent outcomes. Since past performance is often the strongest indicator of future success, clients should request that any lawyer they are investigating hiring disclose their win/loss records for previous clients that have engaged them to obtain “bet the company” patent coverage. Any lawyer wanting your business should also be willing to provide the names of current and former clients willing to share their experiences--both good and not so good--with potential new clients.

?In closing, if a patent attorney that you are looking to hire answers “it depends” when you ask them if it will be possible for you to obtain crucial patent protection, you likely want to keep looking for someone willing and able to be accountable. But remember that accountability is a two-player game, so don’t expect a win if you also don’t actively participate

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