Sometimes, I’ll get the question from a prospective client: “What’s your success rate?” I’m a business owner that purchases services from vendors, so of course I understand the reasoning behind this question. The rub is, this question will be answered differently by different attorneys, and you’ll often get a question in response: “what do you call ‘success’?”
Common sense says patent attorneys are attorneys, and attorneys win cases and lose cases, and therefore asking about a patent attorney’s success rate is a good idea.
The problem is that I can make success rate look like anything I want to, and success is totally dependent on what each individual client views as a success. First of all, provisional applications don’t play into this at all, because if your patent attorney “loses” a provisional patent application, you need to get a different patent attorney.
Taking only the non-provisionals, if I simply look at total cases and compare patented cases vs abandoned cases, that’ll give you one number.
But, there are plenty of reasons a patent may be abandoned, and it is RARELY because the case was lost. More often than not, the startup folded, the client decided to withdraw, or one of many other reasons. In fact, the only way you can truly LOSE a patent case is if a rejection is appealed all of the way in federal court and the court declines to overturn the rejection. Using this metric, almost every patent attorney has a 0% or 1% loss rate. So, how is that helpful? It’s not. Let’s talk about what you should ask instead that is actually indicative of the quality of your patent attorney.
Why care about a patent attorney’s success rate?
I’m a small business owner, so I understand the desire to want to vet vendors—especially vendors that you have no experience with and likely have never met in person. Patent services, when done right, are not inexpensive. It’s natural to want to get the decision of who you’ll work with right.
The trouble with determining a patent attorney success rate is, there really is only one way that a patent application can truly be lost. It’s not an easy question, since—with one exception—one never truly “loses” a patent application unless a rejection is appealed all of the way through the federal court system. Most clients do not have the stomach and—naturally—the budget for fighting the patent application to the court of last resort. So, you can see why the trouble is, with this as the metric, most patent attorneys’ success rates would be 100%.
About deadlines
Loss of a patent application due to the attorney missing a critical deadline is the main way a patent application can be considered lost in terms of a patent attorney success rate.
The process of getting a patent is rife with deadlines. There are deadlines for responses to the Patent Office, there are deadlines for finalizing the patent application for it to grant, and there are deadlines along the way that you’d never know about unless you’re trained in patent prosecution. And, beyond those deadlines, there are more—deadlines.
Each of these deadlines needs to be carefully tracked by a patent attorney in a docketing system. The human brain couldn’t handle the deadlines for a single patent application, much less a full docket of hundreds of patent applications.
Many of these deadlines are considered “critical” deadlines. This means that, if the deadline is missed, the patent application is lost. In many cases, this loss is unrecoverable and the contents of the patent application will enter the public domain.
So, if one of these deadlines is missed, and it’s truly the patent attorney’s fault, that could be considered a loss for the purposes of determining success rate. As with the finality metric, with this as the metric, most patent attorneys’ success rates would also be 100%.
How do you tell your patent attorney’s success rate?
Success in the eyes of one client might mean getting a patent. Another client might see success as keeping options open for a time and then culling them as they focus their business and resources. There are many, many reasons why a patent application might be abandoned before a patent is granted—even if a patent grant is imminent. I once had a patent application ready to be granted and the client pulled it at the last minute because they made a business decision that they didn’t want to pay renewal fees in that country.
It’s important to define success. And, you must understand that the good definition of success is qualitative, not a percentage. Some firms will post a percentage—we even do sometimes—but what goes into that percentage will vary from firm to firm, so you have to always drill further.
I’d propose this definition of a patent attorney’s success rate: how often have you met your client’s needs? If the answer is:
- “Always”—this is just about impossible if they’ve been practicing for any length of time, and you should drill down further.
- “Based on feedback, almost always” or “based on feedback, most of the time”—you’ve found an attorney who is a good fit for that attorney’s ideal customers.
- “Rarely”—let’s be honest, you’re never going to hear this answer.
Then it comes down to figuring out if that attorney is a good fit for you, that is, if you’re the ideal customer of that attorney.
If your patent attorney understands your tech, gets along with the people they need to, and they know what they’re doing, then they’re a good fit.
There is one quantitivative metric that could help.
Focusing on qualitative success in the question, “how often have you met your client’s needs?” is of course paramount, but sometimes, clients still want a number.
If you do want a number, here’s a what you should ask instead that is actually indicative of the quality of your patent attorney:
What’s your estimated rate of applications without unrecoverable 35 USC § 112(a) rejections?
Why? Because 35 USC § 112(a) is the statute by which the quality of a patent application is judged. An attorney who knows how to write patent applications rarely sees one of these, and if they do, it’s usually a misunderstanding on the examiner’s part (i.e., it’s recoverable, even if it takes a few office actions for the examiner to understand it).
I’d still advise against focusing too hard on this metric, because it’s so granular that most firms don’t track it. You’d likely end up comparing one firm’s estimate against another firm’s estimate.
However, if they track it at all (Stake does), that’s a good sign you’re working with a firm that cares deeply about quality.
