Who is the best patent attorney? Part II - what effect does their work have?

How effective is your European Patent Attorney? One consequence of the European Patent Office’s drive for ‘Early Certainty from Search’ is that Examiners are now reacting to most substantive letters[1] filed by a European Patent Attorney much more quickly. For example, in 2016 out of the 183,825 substantive letters filed by patent attorneys with the EPO only 5% (10,059) are now still awaiting a response from the EPO.

This makes it easier to see how effective an attorney’s prosecution work is before the EPO - in response to these 183,825 letters, the EPO issued 68,451 notifications indicating that an application is approved for grant (i.e. Rule 71(3) EPC communications). So, the average European Patent Attorney in 2016 was 37% effective as 37% of the attorney letters filed in 2016 resulted in a 71(3) being issued.

I also checked if there is a skew in favour of the different technology groups: as it turns out there is:

A         HUMAN NECESSITIES - 33,729 letters sent; 37% resulted in 71(3) being issued. 

B          PERFORMING OPERATIONS; TRANSPORTING - 24,028 letters sent; 44% resulted in 71(3) being issued. 

C         CHEMISTRY; METALLURGY - 30,165 letters sent; 35% resulted in 71(3) being issued 

D         TEXTILES; PAPER - 2,030 letters sent; 43% resulted in 71(3) being issued 

E          FIXED CONSTRUCTIONS - 5,518 letters sent; 43% resulted in 71(3) being issued

F          MECHANICAL ENGINEERING; LIGHTING; HEATING; WEAPONS; BLASTING - 14,568 letters sent; 45% resulted in 71(3) being issued 

G         PHYSICS - 33,723 letters sent; 29% resulted in 71(3) being issued 

H         ELECTRICITY - 40,064 letters sent; 37% resulted in 71(3) being issued

 

It is clear from this that it is harder to get a 71(3) issued for patent applications with a ‘G’ technical classification. One reason for this appears to be that this category includes the ‘G06’ sub-category for computer implemented inventions. Of the 14,430 letters sent to the EPO in relation to patents classified as ‘G06’ only 21% resulted in 71(3) being issued. I know from my own experience and from my peers that this is something that has been long suspected, but the size of the jump – which is over 50% – from 21% to the average of 37% is surprising.  

It is also very clear from my analysis that addressing patentability objections prior to the grant of a patent application is not commodity work in Europe. Results vary from one practitioner to the next. For example, I found that 43% of the letters I wrote back in 2016 lead to a 71(3) being issued. Most of the work I did was in the H (Electricity) and G (Physics) technical categories, so my results are negatively skewed by technology. 

 I would therefore strongly advise right holders to monitoring the effectiveness of letters to the EPO as it is a key performance metric in assessing performance of your European Patent Attorney. 

To measure the effectiveness of a response, simply record how the Examiner reacts to the response. The Examiner can react by approving the application for grant, raising further objections, or in the case of a summons to a hearing. If you keep a record of this information you can see what effect your attorney’s letters are having on progressing an application to grant. 

To attorneys the advice is that, although there is no doubt that post grant issues are more interesting and have a far higher profile than mere bread and butter per-grant prosecution, if a patent never gets granted it can never be used. So, never forget your bread and butter work – it’s more visible that it has ever been before.

[1] i.e. amendments before examination (e.g. Rule 161 EPC responses) and examination responses