I just got another email about yet another ranking of the “top” patent prosecution firms. The criteria used are apparently allowance rate, average number of office actions, technology center, and filing volume. There are so many reasons not to rely on rankings like these. Here is a list of reasons I could think of in 3 minutes (literally – I set a timer):
- Does not account for claim scope
- Does not account for quality of the prosecution history
- Does not account for the wide variance among individual examiners within working groups, let alone entire technology centers
- Does not account for individual clients’ filing strategies
- Does not account for the fact that a single art unit can actually cover a wide range of technologies, (one reason is that continuations often go to the same examiner even if covering a very different technology than the parent), let alone an entire technology center
- Does not distinguish priority applications from continuing applications
- Does not distinguish between the size/budget of the client
- Does not distinguish relative importance of the various applications to the clients
Look, I get that these rankings are just marketing. Attorneys and firms are in love with rankings, (hence we have Super Lawyers, Super Duper Lawyers, Super Duper Duper Lawyers Under 40, and on and on ), so putting firms atop your rankings probably increases the odds of them buying your product. But I don’t think we are doing the patent system any favors by putting out rankings based on rudimentary metrics that even the authors of the rankings concede should “not be used as a measure of success.” The solos and small firms that do great work at great rates are just never going to crack these types of rankings (and, of course, there is no desire for them to crack the rankings because they do not have huge software budgets).
Stats can be extremely helpful in assessing existing or potential patent counsel (more so for the former than the latter because you can control for more variables when it comes to your own portfolio), but it requires careful consideration of the applicant’s particular circumstances and business objectives. You can’t just go with some firm that ranked well in some generic rankings and expect to get the best outcome for your business.