Patent Prosecution

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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...

Patent Data as an Offensive and Defensive Strategy

Patent Data as an Offensive and Defensive Strategy

Companies that fully integrate the management of their patent portfolio into their business strategy are often more successful and run more effective operations. Patent attorney Paul Hylarides believes that patent managers should be given a more prominent role in the...

How Signals picks up on market trends that everyone else is missing

How Signals picks up on market trends that everyone else is missing

Signals Analytics develops data tools for companies that are looking for profound insights on the latest market trends. LexisNexis’ raw patent data plays a crucial role in the powerful, predictive analyses they make. “Patent data is one of the most important signals...

New Year’s Resolutions, Fitness, and the Patent Office

New Year’s Resolutions, Fitness, and the Patent Office

We arrive in the New Year with optimism and high expectations. As usual, resolutions for self-improvement top the lists of many, and 2021 is the year we are finally going to get in shape. No doubt, fitness is an invaluable part of life as it contributes to our overall...

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 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 hand leads...

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...

A Conversation With the Commissioner for Patents: Part 1

A Conversation With the Commissioner for Patents: Part 1

If there is anything positive to say about the year 2020, it is that it has been a year of deep reflection with a desire to improve in all aspects of our lives. In the darkness of a global pandemic and a state of social unrest, opportunities have arisen to revise our...

Five Stages for Patent Efficiency

Five Stages for Patent Efficiency

Patent applicants and professionals are in for the long haul when they enter patent prosecution, which typically unfolds over the course of several years. The silver lining of the lengthy patent process is that each subsequent stage presents an opportunity to use...

How USPTO Examiner Type Affects Patents: Part 4

How USPTO Examiner Type Affects Patents: Part 4

By Michael Sartori & Matt WelchLaw360 (August 21, 2020, 2:25 PM EDT) Patent procurement at the U.S. Patent and Trademark Office is affected by the type of examiner. We gathered data from the LexisNexis PatentAdvisor database for each year from 2009 to 2019, for...

Opportunities to Win with Patent Analytics

Opportunities to Win with Patent Analytics

There are plenty of opportunities to win throughout the patent process. It begins with winning a potential client’s approval, and it hopefully ends with winning a granted patent and the client’s satisfaction. Along the way, everyone wins if prosecution goes smoothly...

Fast Examiners; Slow Examiners; and Patent Allowance

Fast Examiners; Slow Examiners; and Patent Allowance

Although we know that individual patent examiners can greatly affect an inventor’s chance to (1) get a patent at all and (2) get it in a timely way, there has been very little work determining how examiners are able to either delay or compact prosecution while still...

IP Landscape for Machine Learning Patents

IP Landscape for Machine Learning Patents

What is an IP Landscape?An intellectual property landscape is a thorough overview of current patents and practices in any technical space. By providing references, documentation, and a holistic view, an IP landscape can show potential for legal validity and inform...

How USPTO Examiner Type Affects Patents: Part 2

How USPTO Examiner Type Affects Patents: Part 2

By Michael Sartori & Matt WelchLaw360 (June 16, 2020, 12:13 PM EDT)Patent procurement at the U.S. Patent and Trademark Office is affected by the type of examiner. We gathered data from the LexisNexis PatentAdvisor database for each year from 2009 to 2019, for...

Overcoming Patent Examiner Variability: Three Key Takeaways

Overcoming Patent Examiner Variability: Three Key Takeaways

Understanding how the patent process works, all the way down to the level of individual behaviors, opens up so many opportunities for better patent prosecution outcomes. USPTO patent data and analytics allow us to not only see the variability in the behaviors of...

Win New Business with the PatentAdvisor Efficiency Score™

Win New Business with the PatentAdvisor Efficiency Score™

Patent data and analytics now play an important role in helping law firms win new business. Firms can now quantify their performance against the patent office using USPTO patent data, and highlight their most favorable patent metrics to earn a prospective clients...

Evaluating Outside Legal Counsel: Best Methods

Evaluating Outside Legal Counsel: Best Methods

Companies and their in-house counsel face many challenges when working with outside legal counsel. To begin with, choosing the right patent law firm to work with is trickier than one might expect. Not only do law firms often specialize in a specific field or...

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.