Patent Prosecution
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Patent Issuance: A Road Map 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....
How USPTO Examiner Type Affects Patents
By Michael Sartori & Matt WelchOriginally published on Law360.comMichael Sartori, a partner, and Matt Welch, an associate at Baker Botts, LLP used data from LexisNexis PatentAdvisor® to complete an analysis on ten years of examiner data from the eight non-design...
The Medical Ventilator Market and Patent Protection
A major contributor to the severity of the COVID-19 crisis is that medical providers simply do not have enough ventilators to meet current patient needs. Individuals with COVID-19 who develop breathing difficulties often rely on mechanical assistance to receive the...
How USPTO Examiner Type Affects Patents: Part 1
By Michael Sartori & Matt WelchLaw360 (May 15, 2020, 5:32 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...
Three Inventions Helping Slow the Spread of COVID-19
Drastic measures to slow the spread of COVID-19 have already been implemented around the globe, including forced closures of “non-essential” businesses and “shelter-in-place” orders issued by many state and local governments. While reducing the amount of contact...
Patent Analytics and the World’s Top Three Most Innovative Companies
By Eric Snustad Innovation is the lifeblood of any patent system, and in our recent Global Innovation Ranking: Top 100 World’s Most Innovative Companies webinar, we took a look at the organizations that are leading the way into the future. Using the LexisNexis®...
Patent News: Hall of Fame Inventors Earn Their Place in Patent Prosecution
Innovation is something to celebrate, and the same goes for those individuals who bring innovation to life. Each year, the National Inventor’s Hall of Fame® (NIHF) recognizes a handful of inventors whose patented inventions had a significant impact on the world. Since...
Visual Learning: A Guide for Patent Professionals
Visual learners are those who understand information better when they can see it. While not everyone considers themselves “visual learners” (more so than any other sort, anyway), visual learning is, to varying degrees, a helpful tool for most of us. Visual elements...
Five Ways To Enhance Patent Strategy With Data Analytics
By Eric Snustad Originally published on Law360.comNot long ago, the primary manner in which patent practitioners would obtain information about a particular examiner’s working style was to actually interview or otherwise work with the examiner, hear reports of...
The All-New PatentAdvisor Benchmarking Reports™
Easily and objectively compare prosecution outcomes for law firms and companies with the most accurate and objective prosecution performance metrics available. The all-new real-time, fully-customizable PatentAdvisor Benchmarking Reports™ provide reliable...
Objectively Measure Patent Prosecution Performance by Normalizing for Examiner Difficulty
Some examiners are more difficult than others. The PatentAdvisor Efficiency ScoreTM levels the playing field by taking examiner difficulty out of the equation and scoring purely for efficiency.All of the metrics currently used to measure corporate and law firm...
The Three Cs of Data: A Patent Data Checklist for Reliable Information
Using USPTO patent data to inform and develop patent prosecution strategies is a growing trend among professionals. This is no surprise—analyzing patent examiner statistics and other performance metrics provides insights that would otherwise be unknown and reveals...
PatentAdvisor Briefcase Gives Corporate IP Counsel a Competitive Edge
The Importance of Corporate IPFor a company that depends upon its intellectual property holdings, the status of its current and pending patent portfolio is crucial. Intellectual property is the lifeblood of many businesses, even if the bottom line doesn’t reflect...
Stylus Upgrades: Apple Files Patent Application to Expand Capabilities
The word is out that Apple’s popular iPad Pro® may soon be getting a stylus upgrade. Apple’s U.S. patent application titled “touch-based input for stylus” (U.S. Patent Application No. 16/029,489) put the world on notice that improvements may be on the horizon when it...
How Is Your Prior Art Search Solution? These 3 Numbers Will Tell You…
By: Brian Trotter of Bishop Rock Tech Patents are expensive. Before you start the process, you'll likely do an initial search to confirm your invention is indeed novel and non-obvious. You can do this in-house, or you may use an outside firm that offers these services...
Patent Process: Three Ways to Improve Efficiency
[addthis tool="addthis_inline_share_toolbox_lq5z"] No one likes to waste time - especially throughout a process like patent prosecution where inefficiencies quickly add up to great expense. Common mistakes around consistency or accuracy can also lead to a longer...
Patent Quality: Three Key Performance Indicators
Over the past several years, improving patent quality has become a high priority for IP stakeholders, patent practitioners, and the United States Patent and Trademark Office. Major changes to the landscape of patent prosecution, such as the Supreme Court’s decision in...
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 2020 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...
Five Attainable New Year’s Resolutions for Patent Professionals in 2021
Another year has come and gone, but new patent products bring promise to 2021. If you are looking to improve in the upcoming year, LexisNexis® IP has resolved to help you in all aspects of the patent workflow by providing tools that are sure to help you meet your...
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...
IP Performance Reviews Made Easy with Patent Analytics
Another year is coming to a close, and year-end reviews are on the horizon. Evaluating your firm’s intellectual property (IP) performance is of utmost importance during this time. However, measuring the performance of your patent applications, patent portfolios, and...
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...
Set it and Forget it – Let PAIR Watch Alert You to Patent Prosecution Events
Listen as Wayne Birch, Director, IP Product Planning and Operations for LexisNexis IP demonstrates how LexisNexis® PAIR Watch can help you respond to the recent changes to Private PAIR access through the USPTO website, which means that you may no longer be able to...
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
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...
Strategize, Optimize, and Revise: Three Steps for Superior Patent Prosecution
For some patent applicants, the journey through the patent process is complicated and does not always have a happy ending. Patent applicants who make the most of the information available to them develop solid plans for drafting, filing, and prosecuting their...
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?
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
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...
Improve your Prosecution Efficiency: How to Automate Office Action Responses – Webinar Recording
Listen as David Stitzel, IP Solutions Consultant at LexisNexis IP, demonstrates how the Office Action Response tool can help you gain back time spent on more tedious tasks to focus your attention on doing more of what matters most. 2-Minute Webinar Preview We’ll show...
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.