Patent Issuance: A Road Map to Success

Jun 1, 2020

Patent Issuance: A Roadmap to Success
There is no doubt that patent professionals gain a better understanding of patent examiners as they interact with them over time—they learn how to more effectively read and interact with the individuals who will eventually cast judgment on their patent applications. Regardless, even the best patent practitioners need assistance overcoming the challenges dispersed throughout the patent process. Patent analytics and a good road map shine light on the obstacles ahead and help patent professionals plan their way to a successful patent issuance.

Preparation: Making Predictions and Setting Yourself Up for Success

Simply put, you should situate your patent application as best as possible before it is even filed. In a way, this revolves on strategically drafting your patent application, but not only as most would expect. Patent professionals should draft patent applications to avoid objections and should take into account how prior art could impact the scope of the patent. Exceptional performance requires research beyond evaluating what was revealed in a patentability search. Develop consistent, concise and well-tailored patent applications with LexisNexis PatentOptimizer®.

Learn how to create high-quality patent applications. Download the case study to learn how one law firm is saving time and developing well-tailored, concise, high-quality patent applications by using LexisNexis PatentOptimizer®.

By gathering USPTO patent data on the examiner art units that your patent application will most likely be assigned to (based on the technology of the underlying invention), you can then identify which of those art units are most favorable to patent applicants. Patent data can also be used to identify the keywords that should be included in a patent application to improve its chances of being assigned to a specific art unit. With this information, patent practitioners can tailor patent applications for the smoothest paths to issuance. Draft your patent application to better target a favorable tech center group to get the best quality patent in the shortest amount of time with LexisNexis Pathways™.

See how classification works at the USPTO and how to target application drafting to influence prosecution outcomes.


Planning: Using Patent Examiner Data to Strategize

Once your patent application has been assigned to a USPTO patent examiner, a whole new world of patent analytics specific to that patent examiner comes into play. While art unit patent data and analytics are good for generalizations about the patent examiners that make up an art unit, examiner-specific patent data can help to make predictions based on their past actions working at the USPTO and the circumstances surrounding prosecution at the moment.

Your patent examiner’s patent statistics can reveal the number of office actions your patent application is likely to receive, as well as the likelihood that an RCE or appeal will be needed; and can help you budget your resources accordingly. Patent data can also reveal actions that patent applicants can take, such as conducting interviews with their examiner or filing an RCE sooner rather than later, that can be used to help shorten patent pendency and reduce the overall cost of the patent process. Easily, and with more accuracy than ever, predict your assigned examiner’s behavior and improve patent prosecution outcomes with exclusive insight from LexisNexis PatentAdvisor®.

Explore patent analytics and the three personalities of patent prosecution. Watch the on-demand webinar Patent Prosecution Analytics: No Longer Just a Nice to Have.

Response: Take Informed Action to Overcome Obstacles on Your Way to Patent Issuance

Thanks to the planning stage, if an obstacle is thrown your way such as receiving an office action, you will already have some insight that can help you determine what to do in response. For example, an interview may help you determine what content to include in your written response. If that is not the case, then you can still leverage patent analytics to identify arguments that other applicants have successfully used to overcome rejections that were similar to those you are currently facing. Advanced patent prosecution tools can even pull information from USPTO archives to propose a draft office action response for you to consider as part of your own. Automate and streamline the process of creating high-quality office action responses with the PatentOptimizer Office Action Response Tool. 

See how to respond effectively to office actions.

Developing and retaining quality intellectual property drives innovation and advances the economy. Bringing it to life in the most efficient and comprehensive manner, understanding the competitive landscape and extracting the maximum value from your patents is critical to your success. Focus on what matters most as you rely on industry-leading patent solutions provided by LexisNexis® Intellectual Property.

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