Patent Prosecution
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When Patent Applications Linger In Prosecution
Bad things happen when patent applications linger in prosecution for too long. Patent applications tend to get stuck between filing and issuance only when significant obstacles arise. Obstacles, such as office actions issued by the patent office, are costly and can be...
Pop Culture Patents: The Modern Space Race
The modern space race looks much different than its predecessor. Rather than a battle among government superpowers, the competition to travel even further into space is now being led by the private sector. Innovative, big-dreaming billionaires have taken the reins and...
A Perspective on Artificial Intelligence Patent Applications
The topic of artificial intelligence (AI) is practically inescapable these days. AI broadly refers to technologies and systems comprised of software or hardware that perform tasks and iteratively improve themselves based on the information they collect. Regardless of...
What To Do After a Final Office Action
Patent professionals can only argue with their patent examiners for so long before an examiner issues a "final" office action. Fortunately, receiving a final office action does not mean the end of hope for patent applicants. Filing either a Request for Continued...
NEW: Access Examiner Analytics from the USPTO PAIR and Patent Center Websites
Researchers and consumers expect quick, easy access to information and items via intuitive interfaces. Similarly, software developers constantly grapple with the concept of "friction" when trying to design a pleasant user experience. Simply put, friction is anything...
Patent Analysis Tools for Intellectual Property Counsel
Whether you work as in-house or outside intellectual property counsel, patent portfolio management tends to be an area ripe for improvement. Managing many patent projects and the work of multiple patent professionals is inherently challenging when you don’t have the...
Apply Qualitative Data to Your Patent Prosecution Strategy
Patent professionals have long benefited from data driven insights to guide the prosecution strategy and deliver positive outcomes, however this data focuses on events that happened during prosecution and does not give insight into qualitative aspects such as how...
Integration of Automation in the Patent Process
Automation has come a long way in a short amount of time, thanks to developments in big data, machine learning, robotics and the Internet of Things. Many people and businesses have grown accustomed to having software and machines perform tasks that humans once...
How Ex Parte PTAB Decision Data Helps to Streamline Prosecution Processes
A distinguishing strength of a good patent practitioner is the ability to analogize or discern similarities. The problem is that finite hours are available for sifting through thousands of pages of online resources to find the needed information. This is where help...
Performance Checks to Provide Better Patent Services
Improvement is iterative. It often arises from an accumulation of small changes that stem from experience and self-awareness. Before making changes, one must first be aware of steps that will likely lead to better results. Performance checks help to identify issues to...
Use Patent Data to Understand USPTO Examiners
Getting to know someone is hard and getting to the level of really understanding someone takes even more effort . . . usually. When it comes to patent prosecution, patent data and analytics make the process to understand USPTO examiners easier than ever. Here are a...
LexisNexis PatentAdvisor® Hidden Gems to Enhance Patent Practices
The PatentAdvisor™ patent analytics platform has become a favorite among patent professionals looking to enhance patent practices and perform as efficiently as possible. Fueled by USPTO patent data, PatentAdvisor provides users with all sorts of patent...
Response to Office Actions—Weighing Options
Contrary to many clients’ perceptions, it is always open to interpretation whether an invention deserves patent protection. Every USPTO patent examiner is unique in their outlook and opinions, and have their own way of interpreting the patentability of a specific...
Excel at All Stages of the Patent Process and Become a Quadruple Threat
The best patent practitioners are quadruple threats who excel at all stages of the patent process. They provide value to their clients from before the conception of their patentable ideas all the way through patent prosecution. With modern patent analytics solutions...
Four Tips to Avoid or Handle Office Actions
Responding to an office action can cost patent applicants an average of $3,000. Naturally, both patent applicants and patent attorneys strive to avoid office actions whenever possible or, alternatively, handle them effectively and efficiently. LexisNexis® Intellectual...
Patent Prosecution Analytics: No Longer Just a Nice to Have
In a recent webinar, the LexisNexis® Intellectual Property team offered patent practitioners several convincing reasons for integrating patent prosecution analytics into their processes. Patent data and analytics can be leveraged in many ways throughout patent...
Assess Performance and Conduct Objective Comparisons With Patent Metrics
Clients are the lifeblood of any law firm, but what can law firms do to grow their patent practices and set themselves apart from competing patent practitioners? Patent data is the key to improvement and growth in the patent world, and the LexisNexis PatentAdvisor®...
Prior Art Research
Conducting prior art research before filing a patent application can have a profound influence on patent strategies and outcomes. Not only can understanding prior art help to determine whether an invention is patentable, but it can also inform how a patent application...
Five Insights From My Conversation With the USPTO Commissioner
By: Megan McLoughlin, Director of Prosecution Products, LexisNexis® IP | August 9, 2021Want some insider intel on what’s happening at the U.S. Patent and Trademark Office (USPTO)? I recently had the opportunity to join a webinar panel with Gene Quinn of IPWatchdog®...
Supplement PatentAdvisor ETA™ Predictions With Additional Patent Statistics
Decades ago, when patent authorities like the United States Patent and Trademark Office (USPTO) developed online databases to house their patent records, patent professionals immediately saw the value in processing and interpreting all of the newly available...
Patent Analytics and the Three Personalities of Patent Prosecution
Why is it so difficult to predict the course of patent prosecution? To begin, patent law and patentability requirements are hardly black and white. Patentability is often open to interpretation, and reasonable minds often differ in their opinions. Moreover, the patent...
Using Statistics to Gather Patent Examiner Intel
Patent professionals maintain an interesting relationship with their assigned patent examiners. From one perspective, it is perfectly amicable. Patent examiners are generally cooperative and unbiased; they stick to examining procedure, and even if the rejections they...
Adjusting for Analysis: Using Patent Examiner Clues to Predict Behavior
How to use patent examiner clues to predict behavior: Patent statistics are important clues that help patent professionals better understand the nuances of effective patent prosecution. But clues, by definition, are just a small piece of a larger problem. They play an...
Choosing the Best Path Forward After Receiving an Office Action
Costing clients roughly $3,000 apiece to deal with, office actions can quickly become one of the largest expenses in patent prosecution. Office action price tags do vary depending on the types of rejections made by a patent examiner and the amount of research and...
How to Compare Patent Prosecution Performances
Comparing the effectiveness of two patent practitioners can be like comparing apples to oranges. The success of a patent application is dependent on many factors that are beyond a patent practitioner’s control, which makes it difficult to compare patent prosecution...
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...
World Intellectual Property Day – April 26, 2021 IP & SMEs: Solutions to compete with the giants
This year the WIPO has announced that it will celebrate World Intellectual Property Day by honoring the Small and Medium Enterprises (SMEs) of the world. Let’s take this opportunity to learn about the challenges that SMEs face; when it comes to intellectual property...
Combining Tools for All Stages of Patent Prosecution
Research, drafting and prosecution are the three cornerstones of the patent process. How a patent professional approaches each cornerstone can have a significant impact on the expenses, durations and outcomes of their patent applications. Many tools have been...
Strategic Drafting With Patent Analytics Tools
There is a method to the madness of matching a USPTO patent examiner to each patent application. A lot happens before an examiner is assigned to a newly filed application. The USPTO first considers which team of examiners (called an “art unit”) is best suited to...
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...
Patent prosecution is the process of drafting, filing, and working with the United States Patent and Trademark Office (USPTO) to establish a patent protection over the rights to a unique invention.
Patent prosecution begins with a unique idea or design. The inventor can then search through databases of accepted, pending, and rejected patents to learn how their idea compares to what is already available. This research stage allows for the inventor to find out if a patent for a similar product already exists. It can also help the inventor discern what distinguishes their product from previous products.
For a patent to be filed and continue to move through the process, it must be drafted with complete, detailed information regarding the invention and claims. A picture of the design is almost always needed. When the draft is ready, it can be submitted to the patent office as an official application.
A patent examiner will start by verifying that the patent application meets all the criteria to be considered for patentability. This can include originality, meeting formalities, and ensuring the claims are patentable. The examiner will then move to prior art research, similar to the inventor’s initial stage. The examiner will thoroughly research all previous patents to ensure the application does not match anything already approved.
The examiner and the applicant may interact throughout the process to better understand the application and advance the prosecution. Finally, the examiner will approve, reject, or object to the patent application. The examiner will provide information on why the decision was made, and provide further feedback on how to move forward and what to amend. This can be in the form of an office action, which requires the applicant to create a response in order to continue moving forward with the application.
Our suite of products helps you through every step of the patent prosecution process.