How Patent Analytics Can Improve Patent Prosecution Outcomes

Feb 4, 2021

Featured Image-How Patent Analytics can Improve Patent Prosecution Outcomes

Patent prosecution tactics are the decisions made by patent professionals to maneuver their patent applications through the patent process as efficiently as possible. Due to the nature of the patent process, implementing the right tactics at the right time is both an art and a science. The uniqueness of each patent application and the invention it describes, as well as the patent examiner assigned to each case, ensures that patent prosecution will always be unpredictable to some extent. However, the abundance of available USPTO patent data and modern patent analytics tools allows patent professionals to be more scientific in the decisions they make. Patent analytics platforms like LexisNexis PatentAdvisor® open the door to data-backed tactics that cultivate better results and happier clients. 

Strategic Patent Application Placement 

Many patent professionals take a reactive approach to the patent process. They submit their patent applications, await their patent examiner’s response, and then respond accordingly. Those patent professionals are most likely unaware that they can be proactive in drafting their patent applications so they have a high likelihood of being evaluated by an applicant-friendly examiner. Patent analytics platforms like PatentAdvisor have changed the game by giving patent practitioners the ability to influence patent prosecution outcomes even before filing. The LexisNexis PathWays™ tool can analyze excerpts from patent drafts to determine which art units are most likely to be assigned. PatentAdvisor also uses USPTO patent statistics to show users which of those potential art units are the most applicant-friendly. Armed with that information, patent practitioners can adjust their patent drafts accordingly to improve the odds that their applications will land in the hands of a statistically favorable patent examiner. 

 

Probability Chart

Setting Client Expectations 

Managing client expectations of the patent process may not seem like a “tactic” in the traditional sense, but it does have a significant impact on the actions that are available to patent professionals along the way. By maintaining transparency and keeping clients informed of the obstacles and costs that may arise along the way, clients are more likely to be understanding and supportive of their patent practitioner’s judgment and proposed course of action. PatentAdvisor provides users with many statistics specific to their assigned patent examiner that help them better understand how prosecution is likely to play out. With PatentAdvisor, users can access their patent examiner’s average patent pendency times, the number of office actions they typically issue before granting a patent and their difficulty level relative to other USPTO patent examiners, so users can set client expectations before obstacles arise. 

 

Examiner Information

Data-Driven DecisionMaking 

In the thick of patent prosecution, it is easy to forget that filing a response to an office action is not the only way of responding to an office action. Before diving into what arguments should be made to traverse a rejection, it is worthwhile to take a step back and evaluate all the options on the table. PatentAdvisor helps expose otherwise overlooked courses of action, such as holding an examiner interview or filing a Request for Continued Examination (RCE), instead of a written response to an office action. PatentAdvisor also reveals the outcomes that arose when previous applicants took each of these possible approaches. This helps patent professionals better assess the risk and reward associated with each option before making a decision. 

 

Patent prosecution is an art form, but patent analytics platforms facilitate a more scientific approach to the patent process. With tools like PatentAdvisor, users can utilize patent data and USPTO patent statistics to make informed decisions and maintain positive relationships with patent clients. PatentAdvisor exposes the possible avenues for success so patent professionals can implement smarter tactics for better outcomes. 

 

For more on patent analytics read Overcoming Patent Examiner Variability: Three Key Takeaways and How USPTO Examiner Type Affects Patents. 

 

Learn more about LexisNexis PathWays here and access the article LexisNexis PathWays™ for Art Unit Foresight. 

LexisNexis는 전 세계 조직이 UN SDGs에 대한 혁신 기여도를 객관적으로 추적하고 보고할 수 있도록 하는 새로운 지속 가능한 혁신 측정 프레임워크를 출시합니다.

UN 지속 가능한 개발 목표 프레임워크에 대한 특허 데이터의 업계 최초 정렬은 지속 가능한 혁신 분석에 혁명을 일으켰습니다. 12 October 2021, New York, United States — LexisNexis® Legal & Professional은 글로벌 특허 시스템을 UN Sustainable에 매핑하여 지속 가능한 중심의 혁신을 식별하고, 검색하고, 추적할 수 있도록 하는 선도적인 지적 재산권 분석 솔루션인...

When IP Meets Sustainability: Mapping Patents to the United Nations Sustainable Development Goals

By Marco Richter, Global Lead Product & Customer Success, LexisNexis Intellectual Property Solutions  Once considered a matter for governments and international organizations like the United Nations (UN), sustainability is now unquestionably a topic of major...

LexisNexis 推出新的可持续创新衡量体系,助力全球组织客观地跟踪和报告其创新对联合国可持续发展目标的贡献

业内首创:将专利数据与联合国可持续发展目标框架相结合,为可持续创新分析带来革新美国纽约 2021 年 10 月 12 日电 – 律商联讯集团 (LexisNexis® Legal & Professional) 宣布推出基于 LexisNexis® PatentSight® 的知识产权分析解决方案的创新扩展,将全球专利制度与联合国可持续发展目标 (UN Sustainable Development Goals, UN SDGs)...

LexisNexis는 전 세계 조직이 UN에 대한 혁신 기여를 객관적으로 추적하고 보고할 수 있도록 하는 새로운 지속 가능한 혁신 측정 프레임워크를 출시합니다 SDGs.

業界初、特許データを国連のSDGsの枠組みにマッピングすることで、持続可能なイノベーションの分析に革命を起こします。2021年10月12日, 米国ニューヨーク — LexisNexis® Legal & Professionalは、同社の知的財産分析ソリューションを代表するLexisNexis® PatentSight®のイノベーティブな機能を発表しました。世界の特許を国連の持続可能な開発目標(UN...

LexisNexis launches new Sustainable Innovation Measurement framework enabling organizations globally to objectively track and report on innovation’s contribution to the United Nations Sustainable Development Goals

Industry-first alignment of patent data to the United Nations Sustainable Development Goals framework revolutionizes sustainable innovation analysis.12 October 2021, New York, United States — LexisNexis® Legal & Professional is pleased to announce the launch of an...