Spotlight

COMPACT PROSECUTION, COMPACT COSTS

In a study of patent applications drafted and prosecuted by Adam Davenport on behalf of a client, no Request for Continued Examination (RCE) was filed in any application. Mr. Davenport works to formulate strategies that result in the early and exhaustive identification of allowable subject matter or an issue for the client to appeal. He seeks to identify as much information as early in prosecution as possible so the client can make an informed decision whether to accept an examiner’s determination of what is allowable or appeal the examiner’s decision. This can result in fewer rounds of fruitless prosecution at the USPTO and saved costs for the client (such as attorneys’ fees for responses and patent office fees for an RCE), as illustrated by this study.

The study reviewed all applications drafted and prosecuted by Mr. Davenport for the client that were filed between December 1, 2017 and November 30, 2020, which totaled 68 applications. By December 2020, 26 applications were allowed; 11 were pending with each having received one or more office actions containing a rejection (“office action(s)”); and the remainder not having undergone any substantive examination. The allowed applications averaged receiving 0.88 office actions. Of the 11 pending applications, two had received two office actions; one had received four office actions (including two office actions after the examiner withdrew rejections after Mr. Davenport filed an appeal brief); and the remaining eight had received one office action.

MAKING IN-HOUSE COUNSEL'S JOB EASY

“You make my job easy.” -- In-house patent counsel at a major U.S.-based technology company said this to Adam Davenport. The in-house patent counsel expressed that when he saw Mr. Davenport’s name on work, he knew it was done correctly. Mr. Davenport takes a thorough approach to understanding the project and needs of the client, so that when the finished work product is provided to the in-house counsel, that person can trust that the work was completed correctly.