A Practitioner’s Mission to Improve Prosecution Results

Mar 3, 2021

Featured Image-A Practioner's Mission to Improve Prosecution Results

Who would have thought that search and rescue” could find its way into a patent attorneys job description? While the patent version of a search and rescue may not be as dangerous or adventurous as the real deal, changing our perspective on the work that we do can motivate us to reassess our methods and inspire us to improve the results we obtain in patent prosecution. As for tools that make patent professionals better patent searchers and rescuers? We have two in mind that meet the challenge. 

Search: Anticipating the Dangers Ahead 

While the searches performed by heroes in the field are intended to save people from danger, it is a patent searcher’s objective to seek out danger itself. Patentability searches, in particular, are conducted to find any prior art references that could be the basis for rejection by a USPTO patent examiner that would then delay the patent process, create additional expenses for the patent applicant or even stop patent prosecution cold in its tracks. Finding relevant and material prior art references before filing a patent application can inform patent professionals as to how to adapt specifications and claim language to reduce the odds of receiving a rejection. They can also help patent practitioners anticipate an examiners rejections to inform their prosecution strategy or develop counterarguments to rebut the arguments of the examiner. 


Prior art references that could impact patentability could be hidden anywhere in the world. As a result, patent practitioners conduct their searches with enough geographic breadthand they must do an excellent job sifting through all of the harmless prior art references they come acrossto ensure that they uncover the references that are material to the patentability of their invention. With this in mind, the LexisNexis TotalPatent One® search platform helps patent professionals improve both the efficiency and effectiveness of their patent searches. By providing TotalPatent One® users with the world’s most complete patent database, patent practitioners can simultaneously access full-text patent documents filed with different patent authorities. Intuitive features like query builders, search filters and document previews help users quickly identify the prior art references that apply to their case. 

Search results

Rescue: Preempting Mistakes and Circumventing Challenges 

The final opportunity to rescue a patent application draft comes during the time just before submission, when professionals have a final opportunity to review and improve upon their drafts. The LexisNexis PatentOptimizer® patent drafting tool is capable of quickly conducting thorough analyses of patent documents. The capabilities of PatentOptimizer® go far beyond merely checking for drafting errors. PatentOptimizer helps ensure that patent parts and references are consistent, compares claim elements, terms and phrases, and even checks for ambiguities and missing antecedents, among many other features. Patent professionals who use PatentOptimizer can reduce the number of rejections and Section 112 objections they receive from the USPTO. By conducting patent reviews with PatentOptimizer, patent professionals can rescue their patent applications from unnecessary obstacles, and their clients from unnecessary expense.  


global patent searches


It is time to add “search and rescue” to your repertoire of patent prosecution skills. TotalPatent One facilitates efficient, global patent searches for hidden dangers along the path to patent issuance, and PatentOptimizer rescues patent drafts from office actions that threaten the course of patent prosecution. Used together, TotalPatent One and PatentOptimizer help patent professionals develop smarter patent strategies and execute their mission more effectively. 


For more on TotalPatent One read Assessing Patent Rights in a Global Market and Patent Search Tools: The Difference a Folder Can MakeFor training documents and videos click here. 


For more on PatentOptimizer read Avoiding Section 112(b) Rejections With Patent Drafting Tools and Reducing Costs by Investing in Patent QualityFor patent drafting resources click here. 


New Call-to-action

Using Statistics to Gather Patent Examiner Intel

Patent professionals maintain an interesting relationship with their assigned patent examiners. From one perspective, it is perfectly amicable. Patent examiners are generally cooperative and unbiased; they stick to examining procedure, and even if the rejections they...

Adjusting for Analysis: Using Patent Examiner Clues to Predict Behavior

Patent statistics are important clues that help patent professionals better understand the nuances of effective patent prosecution. But clues, by definition, are just a small piece of a larger problem. They play an important role in developing patent prosecution...

Patent Landscape Analysis

Conducting patent landscaping for a client is an opportunity to communicate information that can have a profound impact on your clients’ success in business. Patent landscapes are a vehicle for patent professionals to instill clients with a thorough understanding of...

Conduct Competitor Analysis with LexisNexis® PatentSight®

Patent professionals may fail to realize how much value they can add to their clients’ corporate strategies. After all, patent protection is often the centerpiece around which both offensive and defensive corporate strategies are built. The role of a patent...

Choosing the Best Path Forward After Receiving an Office Action

Costing clients roughly $3,000 apiece to deal with, office actions can quickly become one of the largest expenses in patent prosecution. Office action price tags do vary depending on the types of rejections made by a patent examiner and the amount of research and...

Trends in Health Care Technology and the Role Patents Play

What you’ll learn in this webinar:Types of IndefinitenessLearn about the types of problems that patent applications face and what patent practitioners should do.Nautilus and Its ProgenyGet a look inside the Nautilus, Inc. ruling and a view of where we stand today with...