Patent Drafting

Ensure claim and specification synchronicity by conducting full patent document structural analysis.

Patent Quality Whitepaper

On-Demand Webinar: Drafting Quality Patents

Five Ways to Avoid Section 112 Rejections

Webinar: Drafting Quality Patents: Avoiding §112 Rejections

The value of a patent, for better or worse, is related to the likelihood that it could be successfully defended against challenges. In the past it was believed that there was safety in numbers. Today, higher quality patents are strategically preferable to collecting...

Patent Drafting Webinar: Trends, Reality and Avoiding Rejections

The specification has always been a critical part of the patent application, but in recent years the importance of the specification has taken center stage. Whether it be with respect to defining computer-implemented inventions so as to ensure overcoming patentability...

Best Practices for Ensuring Thorough Specification

For veteran patent lawyers, the 2006 Federal District Court decision in the Honeywell International v. ITT Industries case caused some head-scratching. In affirming a lower court ruling that ITT did not infringe on Honeywell’s fuel filter patent, the Court found that...

How to Engineer Your Application to Avoid Alice Rejections

Patent practitioners are still grappling with the fallout from the Supreme Court’s decision in Alice v. CLS Bank. Despite three sets of guidelines issued the PTO over the last two years for examination under Alice, many attorneys are finding themselves facing Alice...

How to Overcome Alice–based Section 101 Patent Rejections

As patent attorneys know all too well, the U.S. Supreme Court’s 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l had a dramatic impact on the prosecution of patent applications for computer software technologies. The issue in the case was whether certain...

Five Ways to Avoid Section 112 Rejections

Since the first-inventor-to-file and Post-Grant Review (PGR) provisions of the America Invents Act (AIA) went into effect on September 16, 2012, it has become increasingly clear to patent practitioners that drafting high-quality, well-tailored patent applications is...

Navigating the Nautilus Impact on Patent Drafting

U.S. patent laws require that claims in patent applications must point out and distinctly explain the subject matter of an invention. This public notice requirement is referred to as “definiteness” and a patent that fails to satisfy this requirement may be found to be...

The value of a patent according to EPO: six key questions answered

Generally speaking, patents are not merely regarded as a legal document providing a technical solution to a problem; they also provide a basis for fostering innovation and promoting commercial opportunities. Business prospects arise when patents exclude others from a...

The Influential Law Librarian: A Product Evaluation Checklist

It’s no secret that the role of the law librarian – whether inside a non-profit institution, a corporate library or a law firm – has been undergoing a dramatic transformation in recent years. In fact, Duane Strojny, Associate Dean of Library and Instructional Support...

Six Keys to Success as Law Librarian, Part Two

ALM Legal Intelligence's 2016 Law Librarian Survey documented an exciting trend for legal information professionals: “Law libraries are phasing out print collections, reinventing themselves as sources of competitive intelligence and analytics,” according to ALM. Law...

What LexisNexis Pathways™ can do for European Patent Attorneys

Only rarely has a patent attorney not contemplated the risk of his patent application being refused. Independent of the nationality of the competent Patent Office, there is a large spectrum of parameters to be considered and ad hoc complicated conditions that may...

Laying the Patent Application Foundation Early

Drafting a patent application can be a daunting task, particularly today where many commercially valuable patents will be challenged at the Patent Trial and Appeal Board (PTAB). But challenges at the PTAB presuppose that the patent has issued though, and the first...

How Investments in Battery Technology Will Power Our Future

What do cars, solar farms, smart watches and new homes all have in common? All increasingly run on batteries. The devices we rely on to power our digital lives–laptops, smartphones and tablets–would not exist if it were not for battery technology. While companies like...

How a Patent Lawyer In Europe Overcomes An "Alice-Type" Rejection

We are now experiencing the days when computers are replacing human skills and business methods are not created with human intuition but by algorithms. Both European and US companies thriving in the sector of computer intelligence and technology for the financial...

Are you using the right law firm for your patent prosecution?

Applying for a patent is a highly specialized process. It requires an in-depth knowledge of your field of expertise as well as a firm understanding of patent law and a clear insight into what your patent examiner is likely to look for in an application. It is no...

5 Tips in Preparing for an Examiner Interview

Only a few thousand patent examiners are responsible for issuing actions on hundreds of thousands of patent applications that are filed every year with the U.S. Patent and Trademark Office. Although written correspondence between a patent applicant, or a...

Continued Challenges to Aspects of the IPR Process

In July, the U.S. Court of Appeals for the Federal Circuit rejected Cuozzo Speed Technologies’ appeal.  Cuozzo was attempting to prove that the claim interpretation used by the Patent Trial and Appeal Board (PTAB) was incorrect.  Currently, the PTAB uses the “broadest...

The Evolutions of the USPTO

Over the most recent few decades, the USPTO has continued to grow and evolve in process, people and technology.  During the period between FY 2005 and FY 2011, the number of patent examiner’s increased from 4,258 to 6,685 (+57%) (4). By 2014, their numbers had swelled...

Go HTTPS: Better Patent Research Security With One Simple Click?

As patent researchers, we know that the actual contents of our searches—the search terms, the records we view, and even the names of our work files—can be highly sensitive information. But are we doing everything we can to protect this sensitive data as we do our...

Looking For LexisNexis TotalPatent Reviews and Articles?

Are you considering LexisNexis® TotalPatent® as a potential patent research platform? Are you scouring the Internet looking for product reviews? Let me save you a bit of time. When I first started looking at TotalPatent, I, too, wanted to see what others had had to...

5 Ways to Use Patent Data Analytics to Boost Business Development

In today’s increasingly competitive legal industry, intellectual property attorneys face challenges from all sides. Small and medium-sized boutique IP firms may battle for market share against the IP giants, while big law firms may struggle to contain costs and...

Patent Researchers: Should Certification Be In Your Future?

Do patent researchers need a certification process? At least some patent research professionals believe so, and such a process may soon become reality. In a recent blog post about PIUG 2015, I mentioned that Susanne Hantos of Davies Collison Cave—past chair of PIUG...

Simplifying Patent Research with Text-to-Image Searching

A picture may be worth a thousand words, but it can be worth a great deal more when conducting patent research. Drawings are essential elements of most patent applications, especially those for design patents, which not only require drawings of the claimed design but...

IP Budgeting With Predictive Analytics

What if you could predict how long your latest patent application will take to reach allowance? Forecasting that timeline would allow you to make better decisions about where your IP department spends its time. Budgeting for an intellectual property department is...

Five Key Aspects of a Patent Landscape

For especially competitive technology fields, patent research can be used to shape the earliest stages of research and development. In pharmaceuticals, electronics and many other high-tech industries, a thorough understanding of the patented technologies that already...

Patent Examiner Data Offers Guidance for Advanced Prosecution

Even when abandoning a patent application makes clear business sense, walking away from that effort without a tangible return can be difficult. Making such a decision can be complicated by the traditional obscurity of the patent prosecution process. How can patent...

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