Better Patents Now

LexisNexis® IP Solutions Podcast with Chris Holt & Megan McLoughlin

Chris and Megan are patent attorneys who have spent the last few years knee-deep in patent data trying to improve how patent prosecution is done.

Chris invented the LexisNexis PatentAdvisor® product, a suite of tools for improving prosecution performance, and Megan helps him keep it running. Using tools like PatentAdvisor™, Chris and Megan explore how patent data can impact day-to-day prosecution and portfolio management decisions. Their goal is to bring more transparency to the process so patent attorneys can make decisions that lead to quicker timelines, better cost efficiencies and better patents now!

Listen to Better Patents Now to hear them talk about the best ways to utilize patent data in your practice. You can subscribe to our Better Patents Now email list and we’ll send you an email every time there’s a new episode published.

Chris introduces Megan to a revolutionary way of measuring patent examiner behavior: PatentAdvisor ETA™. Unlike allowance rate, ETA™, provides an estimate of both the chances of and time to allowance. And because it is based solely upon the examiner’s own behavior, it is not biased by abandonments out of the examiner’s control.

Segment Type: Educational

Listener Mail: from Megan – Where does the name ETA come from?

Meet the Hosts

Chris Holt

Chris is the Vice President of Patent Analytics, PatentAdvisor and has over 15 years of experience as a patent attorney specializing in U.S. and foreign patents in the electrical and mechanical fields, as well as for computer hardware and software inventions. As the co-creator of PatentAdvisor, Chris has helped bring transparency to the opaque patent prosecution process with never before available patent office analytics.

Megan McLoughlin

Megan McLoughlin is the product director for PatentAdvisor, a suite of patent prosecution management tools. Previously, she worked as a patent attorney at the law firm of Nutter, McClennen, & Fish– primarily drafting and prosecuting patent applications. Her technical focus reached into a variety of industries, including medical devices, the food industry, software, printers, and biotech. Megan has a B.S. in Bioengineering from Rice, and a J.D. from Harvard Law.

Podcast Episodes

Chris and Megan discuss a common strategy patent examiners use, but which may cost applicants unnecessary prosecution dollars. Specifically, many examiners have a habit of requiring an RCE prior to granting an allowance, even when the amendment after final was not significant. Is there really a need for the additional fee and the additional search? What should applicants do when working with examiners who have this tendency?

Segment Type: Educational

Listener Mail: Korean PatentX Conference Attendee

Chris and Megan discuss how to use “big brother” to your advantage in developing a patent strategy. By monitoring prosecution patterns, practitioners can look out for incoming competitor patents of interest, monitor for patents that competitors have deemed important, and even keep on top of their associates’ workflow.

Segment Type: Educational

Listener Mail: Cindy from Asia

Chris and Megan review prosecution statistics for a couple of very difficult examiners. Although they are not the norm, examiners who rarely or never allow certain types of applications do exist. Now that prosecution statistics are readily available, does IP counsel have a duty to investigate and disclose problematic statistics to their clients? Is there also a duty to adjust prosecution strategy for “dead end” examiners?

Segment Type: Educational

Listener Mail: Dennis from Japan

Megan discusses the top 5 pitfalls of comparing patent prosecution data from one entity to another—company to company or law firm to law firm.  This podcast will tell you what questions to ask when presented with comparative patent prosecution data from law firm or corporate advertising material.  It will also help you to generate the most accurate information possible for your own competitive purposes.

Segment Type: Top 5

Listener Mail: In my opinion

Megan and Chris evaluate the prosecution history of U.S. Patent No. 5,352,605, Monsanto’s patent on genetically modified soybeans that was at issue in Bowman v. Monsanto. Monsanto’s counsel for this patent application took a very aggressive prosecution strategy—appealing after the first final office action—and it paid off. In what other situations could such an aggressive appeal strategy make statistical sense?

Segment Type: Patents that launched an empire

Listener Mail: Common objection to using patent data

Chris and Megan discuss the prosecution history of U.S. Patent No. 6,955,484, GoPro’s patent covering their basic technology. The examiner who allowed that patent has a history of indicating “allowable subject matter” early in prosecution. Did GoPro make the right strategic decisions based on this examiner’s history of permissiveness?

Segment Type: Patents that Launched an Empire

Listener Mail: “Stump the Chump” with Professor Sean Tu

Chris and Megan interview guest speaker Professor Sean Tu, from the University of West Virginia, about his research on which examiners are most likely to issue litigated patents. Are these controversial patents mainly issued by junior or primary examiners – or both? Listen to the podcast to hear more about his surprising findings.

Segment Type: Interview

Listener Mail: “Stump the Chump” with Professor Sean Tu

Citations: Sean Tu. “Patent Examination and Litigation Outcomes.” Stanford Technology Law Review.

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