Patent Prosecution

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How to Flow: Patent Prosecution at Every Phase

How to Flow: Patent Prosecution at Every Phase

Patent prosecution is not always a linear process. It is full of twists, turns, and back-and-forths, but there are undeniably distinct phases of the patent process that the top patent professionals are able to seamlessly and efficiently transition between. From...

Performance Reviews Made Easy with Patent Analytics

Performance Reviews Made Easy with Patent Analytics

Another year is coming to a close, and year-end reviews are on the horizon. Evaluating the performance of your patent applications, patent portfolios, and staff is difficult without the proper metrics and tools. Modern patent prosecution tools provide patent...

Words to Live By: Wisdom Collides with Patent Analytics

Words to Live By: Wisdom Collides with Patent Analytics

#1 - Take It All In (And Do Not Miss A Thing) When it comes to patent searches, “taking it all in” is easier said than done. Nearly every patent authority around the world has their own patent database, so completing a broad, global search has always meant taking in...

Examiner ETA™- Changing Perspectives on the Patent Process

Examiner ETA™- Changing Perspectives on the Patent Process

When patent practitioners first began using patent data to improve their performance in patent prosecution, they would usually look to USPTO patent examiner statistics for insight. The drawback to exclusively relying on patent examiner statistics, however, is that...

Virtual Reality Patents: A World of Imagination

Virtual Reality Patents: A World of Imagination

The virtual reality revolution is literally changing the way we see the world. The incredible advances in technology make it possible for people to artificially explore foreign environments from the comfort of their own home. The growth of virtual reality, despite...

Determining Patent Valuation with Patent Prosecution Analytics

Determining Patent Valuation with Patent Prosecution Analytics

Patent practitioners are turning to patent analytics to uncover key insights. Why Patent Valuation?There are many reasons to assess intellectual property or a patent application’s value. Before investing, venture capitalists may wish to value the company’s patent...

Are US Patent Examiner Statistics Fair?

Are US Patent Examiner Statistics Fair?

By Eric Snustad Originally published on Law360.comAnalytics describing what happens at the U.S. patent office have been on the market for almost a decade, most commonly in the form of examiner statistics. It’s no longer news that there is significant outcome...

How to Automate Office Action Response

How to Automate Office Action Response

The amount of ways patent prosecution tools can benefit a patent application has grown significantly. LexisNexis PatentOptimizer enables patent practitioners to draft high quality patent applications, as well as generate comprehensive office action responses, with...

Setting the Tone of Prosecution with Patent Analytics

Setting the Tone of Prosecution with Patent Analytics

There is no perfect formula for prosecuting a patent, but there is plenty of information out there that can be used to help anticipate a patent examiner's behavior. With accurate predictions, patent applicants can strategize and take actions to increase their chances...

Patent Litigation and “The Ice Cream of the Future”

Patent Litigation and “The Ice Cream of the Future”

Dippin’ Dots are enjoyed around the world. The delicious ice cream pellets can be found most commonly at amusement parks and have been known to hit the spot on a hot day. Despite being recognized and enjoyed globally, the innovative take on a ubiquitous dessert has...

5 Ways to Use Patent Data Analytics to Boost Business Development

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...

What Prosecution Features are Tied to Positive Litigation Outcomes?

What Prosecution Features are Tied to Positive Litigation Outcomes?

Obtaining patents that will withstand litigation is one of the primarily goals of a good patent practitioner, but unfortunately, it is not always clear which prosecution strategies will ensure positive outcomes in court. Conventional wisdom used to be that a longer...

A Celebration of the Innovations and Influence of NASA

A Celebration of the Innovations and Influence of NASA

The National Aeronautics and Space Agency (NASA) is perhaps the most iconic and influential agency within the United States government. Established in 1958, its mission statement is “to pioneer the future in space exploration, scientific discovery, and aeronautics...

Predicting Examiner Behavior with PatentAdvisor ETA™

Predicting Examiner Behavior with PatentAdvisor ETA™

The most predictive indicator of prosecution length and complexity developed to date. PatentAdvisor Examiner ETA™ is the newest metric exclusively available on the LexisNexis PatentAdvisor® patent analytics platform. It also happens to be the most predictive...

Webinar: Dissecting Alice at 5 – The Good, Bad & the Ugly

Webinar: Dissecting Alice at 5 – The Good, Bad & the Ugly

Listen as Gene Quinn, President and CEO of IPWatchdog, Inc. hosts a special free webinar discussion focusing on the Alice decision five years later. Joining Gene for this special webinar is Drew Hirshfeld, Commissioner for Patents at the United States Patent and...

A Patent Examiner’s Take on ETA

A Patent Examiner’s Take on ETA

What might a USPTO examiner have to say about this new way to approach patent prosecution? The newest LexisNexis PatentAdvisor® metric has proven to be the most predictive patent metric yet. Each PatentAdvisor Examiner ETA™ helps patent professionals better...

How to Improve Patent Prosecution Strategy

How to Improve Patent Prosecution Strategy

The proliferation of data analytics tools has changed the way that patent practitioners approach their work. Many new features offered in these tools have greatly enhanced patent practice. In this article published in Law360, Eric Snustad, shareholder at Fredrikson...

Request for Continued Examination vs. Appeal

Request for Continued Examination vs. Appeal

The patent process is anything but predictable. The road to issuance can be bumpy as new challenges arise and patent practitioners are forced to make important prosecution decisions. Often, these decisions come about when an examiner issues a final office action. It...

LexisNexis PatentSight® is a SIIA CODiE Award Finalist

LexisNexis PatentSight® is a SIIA CODiE Award Finalist

LexisNexis PatentSight® has been named a finalist in the Best Big Data Reporting & Analytics Solution category of the 2019 SIIA CODiE Awards program. The SIIA finalists' page summarizes the analytics solution this way: PatentSight is an analytics platform for...

No Dice for Casino Games Patent

No Dice for Casino Games Patent

On December 28, 2018, the U.S. Court of Appeals for the Federal Circuit upheld the USPTO’s rejection of a patent application titled “Casino Game and a Set of Six-Face Cubic Colored Dice” on the grounds that the patent application was directed at an abstract idea and...

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.