Harrity to Donate to Charity & Gift Oculus Quests to Winners of This Challenge

Harrity & Harrity, LLP is launching a new challenge to test participants’ ability to draft an overview description and a claim for an electronic invention. Winners of the challenge will receive a free Oculus Quest Virtual Reality Headset!

The Harrity Writing Sample Test is used in our application process to screen candidates based on their patent application writing ability.  All identifying information is removed prior to grading the test in order to remove any unconscious bias and ensure that the test is evaluated solely on the quality of the candidate’s submission.  For this challenge, the Writing Sample Test will be graded based on four areas of criteria: Writing, Technical Proficiency, Instructions, and Claim.  Contestants must earn a minimum passing score of 90 points (out of 100) to win an Oculus.  The test takes, on average, 2 hours to complete. While Harrity receives hundreds of applications every year, less than 10% of applicants pass the Writing Sample Test.

While only the top performers will win an Oculus, Harrity is adding another reason to participate. The firm will donate $100 to its Harrity 4 Charity partner charities for every individual that takes the test. Participants can choose how to divide up the donation between the American Heart Association, ZERO: The End of Prostate Cancer, Inova Children’s Hospital, and No More Stolen Childhoods.

If you would like to partake in the challenge, the deadline to submit your Writing Sample Test is Monday, March 1st, 2021. Winners will be notified by email and announced to our Social Media Pages on Wednesday, March 3rd, 2021Feedback will be provided to all contestants via email whether or not they win the challenge, with the goal of helping each participant improve their writing skills.

There is a limit of one prize per person. You must be a registered patent agent or attorney with the USPTO to enter. 

Visit harrityllp.com/wst to take the challenge today!

 

Shawn Lillemo Co-Presents “The Tech-Enhanced Law Firm” at Legal Marketing Association (LMA) P3 – Virtual Experience

Harrity’s Software Product Manager Shawn Lillemo was recently featured in the Legal Marketing Association (LMA)’s P3 – The Virtual Experience. Shawn co-presented “The Tech-Enhanced Law Firm: Developing Custom Solutions to Supercharge Your Legal Professionals” with Amy Monaghan of Perkins Coie.

The session covered how to build an “unfair” competitive advantage, improve firm efficiency, and provide better client services using custom software solutions, such as Harrity’s proprietary patent drafting automation software, amongst other Harrity and Perkins Coie developments.

“The Tech Enhanced Law Firm” presentation included the following topics:

  1. Legal Innovation – What Asteroid?
  2. Rise of the Robots
  3. Making Legal Superheroes
  4. Sustainable Innovation

R. Amani Smathers, Senior Practice Innovations Specialist at Chapman and Cutler LLP, provided the following feedback regarding the presentation:

“Shawn, your anecdote about the US/European patent filing formats was one of the best examples I’ve heard of the importance of asking ‘why,’ reexamining assumptions, and that sometimes the best solution is ‘no-sourcing’—determining the work doesn’t need to be done by any resource (human or automated) at all.

I also appreciated that in mentioning being willing to fail, you both recognized that we operate in organizations that typically have a lower risk appetite.  So yes, be willing to fail fast—but fail ‘safe.’  Fail small and smart, and internalize your lessons learned.  I think those points often get lost in the popular ‘fail fast’ mantra, which originated in an industry with a higher risk tolerance.”

For more information regarding Harrity’s software, and to watch Shawn’s Automation Drafting Tools Presentation at IPO’s 2019 Annual Meeting, visit our Automation Page.

 

The Pencil Test

How Reliable is the Pencil Test for Expediting the Patent Prosecution Process?

By Nathan Phares, Associate

Many patent practitioners and Examiners have spoken of the “pencil test,” which suggests that an independent claim is more likely to be rejected or is rejected as a matter of course if the claim is shorter than a pencil laid upon the claim.  Some point to the pencil test as a useful rule of thumb and suggest “padding” the length of the independent claim in hopes of improving the outcomes of prosecution.  However, drafting a lengthy independent claim may unnecessarily narrow the scope of the claim.  Does the length of the independent claim truly impact prosecution outcomes, or is the pencil test a myth?  We’ve analyzed the data, and we provide our conclusions below.

The data set we created for this analysis includes all patents that issued from applications filed post-AIA.  We limited the scope of the data set to electrical, mechanical, chemical, and biotech tech centers (i.e., Tech Centers 1600, 1700, 2100, 2400, 2600, 2800, 3600, and 3700).  For each patent, the data set indicates the number of Office Actions (OAs), the Art Unit and Tech Center, the length of claim 1 in total words and unique words, the length of the specification, and various other data (e.g., number of RCEs, Assignee, Agent, pendency, and so on).  We didn’t filter for unusually long or short claims – the longest claims (topping out at over 8,000 words!) and the shortest claims seem to generally be legitimate.

According to the data, first-OA allowances are slightly more likely with a longer independent claim than with a shorter independent claim, suggesting that the pencil test may be a factor in first-OA allowances.  Figure 1 shows a chart of the average number of total words in Claim 1 for buckets of the number of OAs.  First-OA allowances, which are associated with zero OAs, have a slightly longer first claim on average than second-OA allowances.  This relationship holds across all the Tech Centers we analyzed except TC 1600.  Figure 2 shows a chart of the average number of unique words in Claim 1.  In Figure 2, the same impact is present but is far less pronounced, indicating that total word count is more strongly correlated with first-OA allowance than unique word count.

 

Figure 1

 

Figure 2

The pencil test seems not to predict outcomes other than first-OA allowances: as the number of OAs before allowance increases, so does the length of claim 1.  This is the opposite of what the pencil test would suggest and may reflect the tendency to amend features into claim 1 over the course of prosecution in pursuit of allowance.

As the data shows, independent claims that include more total words tend to receive better treatment at the outset of prosecution, but outcomes are not clearly impacted by the pencil test as prosecution continues.  Therefore, the patent drafter should consider lengthening the independent claim if a first-OA allowance is the goal.  However, the data shows that the impact of the pencil test is mild at best, so the drafter should not rely on claim length alone to carry the day.  For example, the art unit where the application is assigned is a powerful predictor of the efficiency of the patent prosecution.  Therefore, the drafter should consider how the language used in the application may impact the assignment of the art unit.

It is important to note the limitations of the data set.  First, the claim lengths shown above are claim lengths of the issued patent, not of the patent application when it is first examined.  Thus, it is hard to tell whether the correlation between claim length and length of prosecution is due to the amendment of features into claim 1.  Second, we omitted patents associated with 8 or more OAs from the charts above, since the data set gets quite sparse after 7 OAs – for example, the 10, 11, 12, and 13 OA buckets collectively represent only 59 patents.  However, the trend shown in Figures 1 and 2 continues through the 9 OA bucket.