Evaluate Patent Records Early in the Patent Process

Aug 30, 2021

evaluate patent records

Patent analysis is not just something to be done once throughout the patent process. Analyses of prior art references, patent drafts and patent examiner data all have their place and provide their own unique insights that help patent professionals better serve their clients. Here is an overview of the most common opportunities to evaluate patent records.

Post-Search Patent Analysis

Patent searches are used to answer a wide variety of questions. Patentability searches are performed to identify patent and non-patent prior art that could impact an invention’s patentability. Freedom-to-operate searches reveal which patents are active in specific geographic regions that could affect a company’s ability to conduct business in those regions. And invalidity searches are typically conducted in response to a patent infringement claim—they focus on finding reasons why the allegedly infringed patent should not have been granted in the first place. Regardless of the type of search and the impetus for performing it, once a search has concluded, it is the role of patent professionals to evaluate patent records by reviewing and analyzing the results to determine how and whether they could impact a client’s objectives.

Learn more about patentability searches, freedom-to-operate searches and invalidity searches.

Patent Drafting Analysis

After a patentability search has been conducted and it has been determined that an invention is reasonably patentable, patent practitioners return to look at the patent search results through a slightly different lens. Instead of determining whether an invention is novel and non-obvious (i.e., patentable), professionals perform a patent analysis of any material prior art to determine the best way to frame their patent applications. Drafting too broadly is likely to trigger a rejection from the patent office, either for claims being overly broad or for being too similar to prior art. Drafting too narrowly, on the other hand, could result in narrow patent claims and less patent protection than is desired by clients.

Explore how to Streamline the Patent Process with Research and Drafting Tools.

Patent Examiner Analysis

The patent office assigns a patent examiner to each patent application shortly after it has been filed. Patent examiners vary greatly in the experiences they have had as well as in their opinions and outlooks. As a result, different patent examiners could approach the question of whether a particular invention is patentable very differently from one another, which means there is no “one size fits all” approach to dealing with the individuals assigned to each case. Fortunately, the analysis of patent data associated with each patent examiner can tell patent professionals a lot about the examiner they are dealing with and can help them devise smarter, tailored strategies for success in patent prosecution.

See how a sophisticated patent metric is needed to account for each patent examiner’s complexities. 

The Mid-Search Patent Analysis

While all of the above-mentioned opportunities help patent practitioners and their clients navigate the patent prosecution with greater efficiency, there is an opportunity to evaluate patent records even earlier in the patent process. Rather than beginning their analysis after collecting all the results of their patent searches, patent professionals can conduct analyses in real time during their searches to weed out irrelevant or immaterial patent records. Many patent professionals are unaware of this opportunity for real-time patent analyses because standard patent search tools provided by patent authorities only communicate limited information about search result records (e.g., application numbers, invention titles, filing dates, etc.) that tell little about the content of each patent record.

TotalPatent One

The LexisNexis TotalPatent One® patent search platform offers ­­­a more informative and interactive patent search experience that allows users to evaluate patent records from their list of results. By providing a sidebar with document previews that include invention summaries, snippets of patent drawings and other pertinent information, TotalPatent One® users can better understand their search results and filter out irrelevant records to streamline their later analyses. TotalPatent One even provides links to backward and forward citations specific to each patent record, as well as links to other documents in the same patent family to facilitate more efficient search methods.

There are opportunities to evaluate patent records and perform analysis throughout the patent process. Evaluating patent records earlier in the process leads to greater efficiency in the long run, and TotalPatent One enables real-time patent analysis so patent practitioners can provide their clients efficient and effective patent services. 

Learn more about TotalPatent One. 

Find TotalPatent One training documents and videos here.

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