There is a saying : « If you know yourself but not the enemy, for every victory gained you will also suffer a defeat.»
Adapted less literally to patent prosecution, It is of good advice to have a general understanding of your patent examiner and how he will react to your actions and how he will deal with your patent application.
The best way to know your examiner is relying on your personal instinct when reading his rejection and talking with him during interviews.
But when discussing with your client to choose wether to appeal or not, wether to initiate an interview or not, it will become important to back up gut feelings with evidence.
Clients like to trust your instinct. Clients like it better when they are being convinced with facts.
The examiner analytics module gives all the facts needed to back up your understanding of the examiner behavior:
- His/her experience through the number of cases he/she examined and their respective outcome.
- His/her toughness through the average number of rejections he/she issues and the average grant rate vs. average grant rate of the art unit
- His/her appetence for interview by comparing grant rate with and without interview
And by analyzing all the rejections he/she has issued, you could go a further to similar rejections and to the response they got.
You can narrow down to very specific information: the reason for rejection, the cited patent for each rejection in order to get the documents you need to overcome an objection.
Last but not least, you can list all applicants and law firms and compare their results to yours in order to understand what specific strategy works and what doesn’t.