Running a profitable patent prosecution practice has become more challenging in recent years. The recession triggered by the current pandemic is going to make this even worse in the coming years (Patexia Insight 79). This means patent attorneys will have a difficult time to maintain their high standard as they see their revenue per application and overall number of applications decline.
Back in March, we released our 2nd Annual Patent Prosecution Intelligence Report. We measured the performance and activity of more than 3,500 patent firms to rank them in our 2020 report. The report covered more than 1,100 law firms and the analysis once again proved that volume leaders were not necessarily the best performing patent firms. Similar to last year (Patexia Insight 57), this week, we are going to review some of the best performing and most active patent firms as covered in our latest annual report.
Our comparison of patent data for 2018 and 2019 shows that many firms went out of business or lost significant workload in 2019. But at the same time, some new firms with more efficient processes were born and some established firms saw remarkable growth in 2019 (Patexia Insight 78).
To calculate the performance of law firms, we defined and measured three independent factors:
- Success: A weighted average of multiple variables such as patent-level and claim-level allowance rates, claim limitations imposed by the examiners, etc.
- Efficiency: A weighted average of variables reflecting the speed and complexity of prosecution such as extension requests, number of office actions, pendency as compared to the average, etc
- Activity: Number of applications filed relative to the average for all other firms in a particular art unit
Similar to last year, we looked at all patents issued in a 5-year window from January 2015 to December 2019. To make a fair comparison, we limited the performance rankings only to the top 500 most active firms in high-tech, bio-tech and overall. The performance scores once again showed that volume is not an indicator of quality. Our analysis showed that in general, maintaining a very high-standard and consistent work quality is much more difficult when the volume goes up.
Here we review some of the best performing and most active patent firms as covered in our 2020 report in no particular order:
- Slater Matsil: The firm was ranked as the Best Performing patent firm in 2019. In 2020, Slater Matsil remained more or less at the top. This year, the Dallas-based firm ranked the 2nd Best Performing overall. In the last five years, the firm has obtained 8,548 utility patents while its activity has grown overall. In 2019, the firm’s activity grew 7% which placed them the 16th Most Active patent firm. The firm works mostly with technology companies such as TSMC, Huawei, Infineon, STMicro and OSRAM.
- Polsinelli: For the second year in a row, the firm was ranked among the top 10 Best Performing patent firms in high-tech. The firm has been expanding in the last five years and has had numerous small and large acquisitions. Maintaining a high standard is difficult when the work volume goes up and it is even more difficult when the firm goes through this rapid expansion. In the last five years, excluding design patents, the firm has obtained 7,497 patents for its clients including some tech giants such as Foxconn, Cisco, Amazon, and Apple.
- Perkins Coie: With 7,683 utility patents obtained for its clients over the last five years, Perkins Coie remained one of the top 25 Best Performing patent firms in the high-tech sector in 2020. While the firm’s top clients are tech companies (e.g., Micron, Facebook, SK Hynix), the firm is now among the top 50 Most Active firms for biotech and medical devices.
- Wolf Greenfield & Sacks: For the second year in a row, Wolf Greenfield was ranked among the top 10 Most Active patent firms in bio-tech (ranked 6th). The firm obtained 5,749 utility patents in the last 5 years. While the firm is among the top 100 Best Performing in biotech, it is also very active in high-tech and has large tech clients such as Sony, and MediaTek.
- Lowenstein Sandler: For the second year in a row, the firm was ranked among the top 10 Best Performing in high-tech (9th). The firm obtained 3,488 utility patents in the last five years and worked with many top tech brands including Red Hat, Google, Amazon, Intel and Applied materials. In terms of activity, Lowenstein Sandler is among the top 50 most active firms in high-tech.
- Nicholson De Vos Webster & Elliot: This fairly new firm which was founded in 2015 by ex-partners of Blakely Sokoloff (later acquired by Womble Bond) has seen positive growth every year. The firm obtained 2,006 utility patents in the last five years for tech companies such as Intel, Erricson, and Cloudflare. The firm is ranked among the top 100 Most Active and Best Performing firms in high-tech.
- FisherBroyles: The firm has shown exponential growth in patent prosecution in the last five years. With 1,673 utility patents in 5 years, for the first time in 2020, the firm was ranked among the 100 Best Performing patent firms. In 2015, FisherBroyles obtained only 24 patents, but this number grew to 780 last year. The firm has an efficient management structure and works with major tech companies such as Facebook, Juniper Networks, Realtime Data and Symantec.
As we explained earlier, for a fair comparison, we had to limit the performance rankings to those firms that met our minimum threshold in terms of number of patents. As a result, some very good performing firms with lower workload were not included in our annual rankings. For example, CreatiVenture Law is one such firm. Its performance score puts this small firm with more than 100 patents among the top 5 percent out of more than 3,500 patent firms. But the firm was not included in our performance rankings as it did not meet the minimum volume requirements. There were several other instances where the firms were not ranked due to lower work volume but their work quality was very good.
We have calculated all of the above metrics (success, efficiency, activity, performance, etc.) and many other variables including number of office actions, RCEs, Appeals, … for every patent, law firm, company and examiners. Using our powerful Prosecution Analyzer tool, the data can be filtered and grouped from many angles. Firms use the tool to gain insights about examiners, competitors or clients. And it is often utilized by attorneys for business development as it empowers the firms to focus on metrics other than cost. Companies also use the data not just for prosecution analysis but also to evaluate the performance of their outside patent counsel or compare their portfolios with their competitors.
Past several weeks we focused on patent prosecution. We are going to write more about litigation in the coming weeks including ITC, IPR, Hatch-Waxman / ANDA and district courts. Stay tuned...