Patent Preparation and Prosecution Quality Best Practices


Intellectual property leaders reported that they use four factors define patent and portfolio quality.

The purpose of the Patent Preparation and Prosecution Quality Report is to capture the prevailing best practices for patent preparation used to achieve valid and enforceable utility patents.

The results of this benchmark indicate that companies recognize the importance of patent preparation and prosecution guidelines to ensure patent application quality and minimize prosecution costs. The findings revealed that all respondents have standardized practices for assessing the validity and quality of their patent applications.

Twenty-two companies participated in this comprehensive benchmark of patent preparation and prosecution practices to provide sixty pages of best-practices guidance for how IP leaders may approach and craft their practices. More than forty-five detailed and descriptive charts are included in this report.

The report covers the following topics:

  • Drafting practices
  • Patent preparation quality criteria
  • Outside counsel quality management
  • Metrics to assess patent preparation quality
  • Patent application quality reviews
  • Attorney second/follow-on reviews
  • Prosecution decisions

Patent Preparation and Prosecution Quality—Best Practices Analysis

Following are the practices (questions) that include a comprehensive analysis:

  • Does your company use a scorecard (evaluation factors) to assess a patent application?
  • What is your approach to describing your invention in the patent application?
  • In the background section in the application (or in the specification) how often do your applications contain a comprehensive disclosure of the state of the art including comments about the deficiencies in specific references?
  • In the specification, how often do your applications contain objects of the invention?
  • How often do you have a second/follow-on (redundant) attorney review patent applications that cover technology with high commercial value?
  • How often do you have you use/used software tools (e.g., Lexis Reed Tech) to evaluate patent applications?
  • What percentage of applications prepared by outside counsel are reviewed by in-house counsel before filing?

The performance metrics that we used to evaluate patent preparation and prosecution quality best practices and that show superior performance are:

  • Percentage of prosecutions that include a request for continued examination (RCE)
  • Percentage of prosecutions that include a continuation
  • Percentage of prosecutions that include an appeal
  • How often companies initiate more than one RCE on a patent prosecution case
  • Patent applications per $1mm R&D spent
  • Number of post-grant administrative challenges of patentability over the past three years a company has received
  • Percentage of a company’s total sales (product or services) are protected by patent rights
  • Percentage of products or services protected by patent rights