Analytical Pruning: Patent Tools for Healthier Patent Portfolios

May 4, 2021

Featured Image-Analytical Pruning-Patent Tools for Healthier Patent Portfolios

A patent portfolio is a lot like a garden in many ways. Patent portfolios often contain many varieties of patent applications that are “planted” at different times. Each patent application needs to be nurtured, comes with its unique challenges and matures at its own pace. Moreover, just as gardeners prune their gardens to remove damaged, non-productive, unwanted plants, patent practitioners should also remain diligent about monitoring their patent portfolios for applications that are no longer worth the effort. In this modern age of information, patent portfolio monitoring and pruning are no longer the burdensome tasks they once were, and patent professionals can rely on patent portfolio monitoring tools and patent analytics to help ensure that their portfolios remain cared for and healthy. 

Preventing Unruly Patent Portfolios

The simplest way to maintain a healthy patent portfolio is to provide it with constant attention and to tend to office actions and other issues as they ariseto nip each problem in the bud. However, patent professionals often have plenty of work on their plates, and that makes it challenging to stay on top of all the activity going on with each of the patent applications they oversee. Fortunately, just as tools exist to help agronomists monitor environmental temperatures and moisture levels, patent prosecution tools are available to help patent practitioners passively monitor their patent applications for important events and USPTO correspondence. 

 The LexisNexis® PAIR Watch patent application monitoring tool from LexisNexis® IP helps simplify monitoring by sending tailored email updates to patent professionals. PAIR Watch users simply provide the application numbers of the applications they would like to monitor and choose how frequently they would like to receive updates. PAIR Watch sends users alerts regarding changes to Image File Wrappers, Continuity Data or Transaction Histories within Public PAIR, and each PAIR Watch email contains direct links to prosecution history documents that can be viewed, downloaded or printed by users. With PAIR Watch bearing the burden of application monitoring, patent professionals can allocate more time developing strategies that will help them grow and improve the patent portfolios they oversee. 

System and Method for Facilitating Communication

Diagnosing Unproductive Patent Applications for Pruning

Even with continuous monitoring, as portfolios grow in size, there may still end up being patent applications that become more expensive to pursue than they are worth. As patent prosecution proceeds and pendency drags on, office action responses, Requests for Continued Examination and appeals can begin to accrue. Each action comes with its own cost, and eventually, those costs can begin to outweigh the benefit an applicant could receive once the patent is issued.  

 The LexisNexis PatentAdvisor® patent prosecution platform enables professionals to run analytics either in aggregate to evaluate the overall performance and health of a patent portfolio or at the level of individual patent applications to identify those that are no longer worth pursuing. PatentAdvisor™ users can leverage a wide array of application metrics to weed out problematic patent applications, including the number of office actions they have received, the amount of time they have been pending and the relative difficulty of their USPTO patent examiner. Patent professionals can, as a result, evaluate each applications cost against its potential value, weed out unproductive applications and direct their time and attention toward those patent applications that will provide the best return on investment. 

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Learn more about PatentAdvisor by reading Use Digital Briefcases for Patent Portfolio Analytics. 

 Much like a gardener who strives for a quality garden of plants and produce, it is a patent professional’s job to maintain the quality of patent portfolios. PAIR Watch patent monitoring alerts help patent practitioners identify and address issues as they arise, and PatentAdvisor helps professionals prune out low-value patent applications. Together, PAIR Watch and PatentAdvisor help enable patent professionals to use their resources wisely to maintain strong and healthy patent portfolios for their clients. 

 For more on PAIR Watch read Defensive Prosecution Monitoring with LexisNexis® PAIR Watch. 

 Access Five Ways To Enhance Patent Strategy With Data Analytics to learn more about Patent Advisor. 

 Find LexisNexis PatentAdvisor® training resources here. 

LexisNexis PatentAdvisor®

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Get to know your examiner better with more context and a deeper understanding of your examiner’s behavior than ever available before.

With your free trial, you will gain instant access to:

Examiner Search allows you to search by examiner name for a filterable, examiner specific dashboard of patent analytics, including rejection specific statistics, appeal statistics, prosecution statistics, interview statistics, a backlog of RCEs and timeline.

QuickPair easily replaces the USPTO Public PAIR by providing the most robust application details anywhere, including examiner timeline, examiner allowance rate and the average time and number of office actions to allowance.

PatentAdvisor, the first-ever data-driven patent strategy tool, provides a systemic approach to crafting an effective prosecution strategy. Understand why certain patent applications take longer than others to reach allowance—then use that knowledge to devise better patent prosecution strategies.

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