Patent Prosecution

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Response to Office Actions—Weighing Options

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...

Use Patent Data to Understand USPTO Examiners

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...

Four Tips to Avoid or Handle Office Actions

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

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...

Prior Art Research

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

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®...

Patent Analytics and the Three Personalities of Patent Prosecution

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

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...

Choosing the Best Path Forward After Receiving an Office Action

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

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 evaluate their performance...

Analytical Pruning: Patent Tools for Healthier Patent Portfolios

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...

Combining Tools for All Stages of Patent Prosecution

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

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

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...

Myths of Litigated Patents

Myths of Litigated Patents

In the world of patent analytics, patent data serves two primary purposes. For one, it acts as a snapshot of the past, helping to show history in the form of patent statistics pertaining to the USPTO, patent examiners and patent applicants. The second key function of...

The Impact of Examiner Interviews on Patent Prosecution Outcomes

The Impact of Examiner Interviews on Patent Prosecution Outcomes

The value of holding interviews with USPTO patent examiners is often overlooked by patent professionals. When approached with a mindset of cooperativeness (as opposed to combativeness), examiner interviews enable more effective communication between patent...

The Hero’s Journey and the Four Champions of Patent Prosecution

The Hero’s Journey and the Four Champions of Patent Prosecution

Most people are familiar with the “hero’s journey.” Popularized by Joseph Campbell in the mid-twentieth century, it describes the common progression of the stages in literary or cinematic epics that our favorite heroes experience. There are 12 total stages in the...

Use Digital Briefcases for Patent Portfolio Analytics

Use Digital Briefcases for Patent Portfolio Analytics

When patent practitioners utilize patent portfolio management software the ways in which patent portfolios can be assembled and analyzed are practically endless. The LexisNexis PatentAdvisor® patent prosecution platform makes it easy for patent professionals to build...

Sophisticated Solutions for Patent Portfolio Management

Sophisticated Solutions for Patent Portfolio Management

​The benefits of worldwide patent data and analytics are clear at every stage of the patent process. From helping patent prosecutors strategically draft patent application content to predicting a patent examiner’s next move in prosecution, having more information on...

Imagining More From USPTO Patent Statistics

Imagining More From USPTO Patent Statistics

The power of up-to-date, accurate USPTO patent statistics becomes apparent to many patent practitioners after only a short time in the trenches of patent prosecution. Having access to USPTO patent data and analytics features allows professionals to make more accurate...

Monitor Patent Applications and Portfolios From All Angles

Monitor Patent Applications and Portfolios From All Angles

A lot of time and energy is spent on patent monitoring. From monitoring for patent prosecution updates to monitoring the relative strength of patent portfolios over time, staying consistently up to date gives patent practitioners the power to keep their patent...

Take Control of the Patent Process

Take Control of the Patent Process

The patent process is rife with uncontrollable variables that are material to the outcome of patent prosecution—the most illustrative example is the predisposition of the patent examiner assigned to the case. The ability to manage and operate in uncertainty is a mark...

Five Election Patents that Shaped the Democratic Process

Five Election Patents that Shaped the Democratic Process

As great as the election processes of the United States are compared to those of many other nations, voting in the United States has always had room for improvement. Where there is room for improvement, innovation follows, and the five following United States Patent...

A Conversation With the Commissioner for Patents: Part 2

A Conversation With the Commissioner for Patents: Part 2

Earlier in 2020, LexisNexis® IP was honored to have USPTO Commissioner for Patents Drew Hirshfield join a webinar panel to discuss the state of the United States patent office. In our recent article, “A Conversation With the Commissioner for Patents (Part 1),” we...

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.