Law Firm Prosecution Index (LPIX): The World’s First Objective Tool for Patent Prosecution Success

Patent Law is always bedeviled with quality. Identifying good patents is hard enough, let alone figuring out who is good at making them. Unified decided to take on both by first objectively determining what a good patent prosecution outcome is. It then investigated what law firms had the best outcomes for each art unit. Members can now compare outcomes between law firms to see which ones had the best track record of obtaining good patents in the least time. They can also look at how their prosecution outcomes compare to a competitor.

Traditionally patent ranking providers used either the total number of patents granted in a given year, pendency, or allowance rate as an overall rating. Recently, this has expanded to using a combination approach and looking to add how many office actions it may take a given firm to get the patent granted. 

However, when examining the data of large companies this analysis tends to fail since large technology companies, for example, have the necessary capital and resources to get the patent granted, no matter the quality. This often results in range of quality and does not truly provide an overall ranking when selecting a law firm. 

The other issue is that the number of applications, pendency, allowance, and other factors in prosecution are not static in art units. For instance, a law firm may have been able to obtain patents for a client quickly in a given art unit and in another art unit it may be longer. The same can be said for each art unit. For instance, looking at Foley & Lardner LLP:

Typically, the 1700’s cover chemical and materials engineering, 2100’s cover computer architecture and software, and the 2400’s cover networking, multiplexing, cable, and security. The total number of applications is the first variable that is significantly different between these art units. While pendency may be within a few months of each other, the allowance rate does vary between the art units. This reason alone is why Unified set out to not only establish an overall ranking of a law firm’s, but to be able to tune a rating for a specific art unit or set of art units. 

Being inspired by player efficiency ratings of various professional sporting leagues, the question emerges if that type of ranking could be applied to law firms using both the quantitative and qualitative factors. Starting from the premise of, “Which law firms do a better job getting the (1) broadest and (2) most valid claims (3) allowed and at a (4) cheaper rate & at a (5) faster rate," three factors emerge as a measure. The first being broadness of a given patent answering part 1 and 2 of the premise. The second is pendency, encompassing parts 4 and 5 of the premise since typically the longer patent prosecution takes, the more it can cost a client. The final factor was the total amount of applications, answering part 3 of the premise. 

Broadness as a measure of Patent Quality output

Some scholars have defined patent quality as the capacity of a granted patent to meet or exceed the statutory standards of patentability. These factors would include novelty, non-obviousness, and that the patent is both clearly and sufficiently described.

Some have considered a number of objective factors some can consider to look at patent quality.  Such as forward citations because they indicate many other patents reference it and therefore it can be assumed to be more valuable.  Though in less patented areas less citations might not necessarily mean a lower quality patent, but simply that less people are patenting in that subject matter.  Reverse citations might be another sign since it indicates the patent is referencing many other patents in the past to differentiate itself from, but again this might simply be a highly patented area so it is necessary and doesn’t mean better quality. 

Instead, we decided quality means a patent which is broader on average than other ones in the same art unit.  Our assumption is based on all things being equal if a company can receive a broader patent in an art unit than others it must be doing things better.  This did not imply broader means more valid or even more valuable since eyes on analysis is often still necessary, but only that the goal of most who are innovating is to get broader patents to protect more area. Other tools that Unified has developed answer the validity and value of a given patent. 

BRIX was developed by Unified Patents and based on academic and industry articles on what quality can mean such as in IPWatchdog  and in Google Patents, which uses the uniqueness of claim language in a Cooperative Patent Classification (CPC) to ascertain patent broadness or narrowness.  It is based on 2 assumptions:

1. Claims with fewer terms relative to their CPC patent class tend to be broader.
2. Claims with fewer unique terms relative to their CPC patent class tend to be broader.

As mentioned above, the broadness of a claim can allow a patent to be enforced or found to be invalid. It is vitally important during prosecution that a law firm uses the correct wording and language to capture the correct scope of certain claims or elements of a patent. 

Pendency as a measure of Law Firm efficiency

Pendency generally measures the length a patent is prosecuted. The length of pendency can either help or hinder a company in obtaining or maintaining a competitive advantage. For instance, a patent application written in year 0 might be enforceable only in year 3 (due to the pendency of prosecution), and the market may not be significant until year 5. This means that competitors will have the benefits of intervening technological advancements, as well as the teachings of the patent itself.

The longer length of prosecution not only hurts a company's competitive advantage, but costs more as well due to the number of office actions and other issues during the prosecution phase. 

Total Number of Applications

The reason why Unified focused on the total number of applications, rather than the total number allowed is the same reason the various efficiency ratings in sports do so. When looking at a quarterback in the NFL, their “QBR” takes in account the number completions and number of attempts, along with touchdowns and interceptions. In baseball, while there are a few versions of the Wins above Replacement (“WAR”), it generally accounts for the number of times the player is at bat and how well they hit to calculate their contributions to the team. 

The comparison here would be at the bottom of the ninth, tied scored, two outs with bases loaded, do you want the player that maybe one out of hundred times can hit the grand slam or do you want the player that consistently gets on base giving the team a win. Using that same principle and applying it to patent prosecution, a client would want a firm that they know can consistently get a high-quality patent each and every time. 

Time Period and Data Examined

The current set of data consists of 3,153 law firms in their respective art units. It covers over 3 million office actions and looks at 1.7 million patents granted. The training set is specifically looking at office actions since 2008. Specifically, the data covers Series 12, 13, 14, 15, 16, and 17. It currently utilizes the Office Action Bulk Data set from the USPTO. 

The LPIX Formula

Simply put the formula to determine the score of a law firm is (BRIX * Pendency * Allowance Rate * Total^2) that is then normalized on a scale from 0 (being the lowest performing) to 100 (being the best performing). Each factor, the average was taken and calculated on an overall approach, per art unit basis, and by being able to select multiple art units, utilizing Unified’s Portal, this can be done in real-time when measuring a selection of art units. 

The reason there is a greater emphasis on the total is the fact that Unified wanted to determine those there were consistent. For instance, similar to the baseball example above, a client would place greater emphasis on a firm that on average has achieved higher success,100 times versus a firm that has done it 10 times. 

Overall Scoring

Using the Prosecution section of Portal, users can now not only see top art units by allowance and law firms’ allowance rate, but also see the top-20 using LPIX. This aids users in understanding what law firms perform the best, in a general sense. 

Visualizing LPIX

Taking that a step further and using a scatter plot to show how LPIX works, imagine 4 quadrants such as the image below:

The green would represent areas where a law firm is successful, where the red area represents law firms that were unsuccessful. In other words, the top right represent firms that are effective, efficient and consistent. The lop left would be the opposite in which firms are ineffective, inefficient, and inconsistent. The gray would represent law firms that may for instance be able to obtain broad patents in a faster time but are below the average in BRIX. Whereas the upper left, may be due to a longer pendency than average. 

Here, the Y-axis represents BRIX, the X-Axis represents the pendency to grant. The Z-axis or the circle diameter represents the total amount of applications.

The purpose of this graph is to show law firms that are efficient, effective, and consistent. This also allows companies to select law firms on their own criteria.

Using art unit 2872 again, this can be seen below:

In Portal, Art Unit 2872 scoring can be seen below:

In addition, a user can now also look at an entire section of art units, such 2871-2879. The scores would result in:

LPIX is the only tool that accounts for both subjective and objective factors in measuring a law firm’s ability to achieve success during patent prosecution. Companies now have the ability to understand a law firm’s success in a given art unit, while being able to set their own patent strategy.