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 applications often have a much better story to tell. The difference boils down to three simple steps.
Step 1: Strategize
A patent practitioner’s patent prosecution strategy should be fluid and adaptable to the new events and information that arise throughout the patent process. That being said, it is never too early to begin gathering information that will help inform your decisions and actions. Even before drafting and filing a patent application, there are steps that a patent practitioner can take that will help inform the language that should be used in the patent application, as well as help identify risks that should be taken into account.
How an invention is framed in a patent application, and the specific language that is used, is what determines which group of USPTO patent examiners will be assigned to examine the application. Not all groups of patent examiners are equal – some examiner art units are more applicant-friendly than others and afford better odds of granting a patent to applicants. To help identify the art units that are most likely to examine a patent application, consider the LexisNexis PathWays™ tool, part of the LexisNexis PatentAdvisor® patent prosecution platform. PathWays™ allows users to enter keywords and descriptive terms that they are considering using in their patent application, and then produces the statistical likelihood of receiving certain art units based on the entered terms. Users can then use PatentAdvisor® to evaluate which art units are the most statistically favorable. Finally, users can use PathWays feedback to modify the terms that will be used in the patent application to increase its odds of being assigned to the most favorable art unit.
Step 2: Optimize
Even patent professionals with airtight patent prosecution strategies receive rejections on occasion, but why not avoid the rejections you can? The LexisNexis PatentOptimizer® patent drafting platform helps improve the overall quality of patent applications to the patent office by providing diagnostics to patent applicants before submission. PatentOptimizer® checks application claims for proper antecedent basis or possible lack of support in the disclosure, terminology for court rulings, multiple claim sets for new matter, and consistency in part labeling and numbering. Insert pre-formatted citations and hyperlinks, and automatically renumber claims and references during final editing. The platform also produces a comprehensive error report that helps users identify claim issues, drawing reference anomalies, and improper term and phrase usage. By using PatentOptimizer to optimize their patents, patent applicants face fewer issues throughout prosecution and reduce the overall cost of the patent process.
Step 3: Revise
After a patent application has been filed and assigned to a specific USPTO patent examiner, users should turn to evaluating their assigned examiner’s patent statistics to tailor their prosecution strategy for efficiency and effectiveness. In addition to providing valuable patent statistics and metrics that can help predict an examiner’s behavior, the PatentAdvisor platform also provides actionable guidance based on the case histories of other patent applications that were evaluated by the examiner. Within PatentAdvisor, the Prosecution Guidebook tool helps users evaluate the consequences of their potential decisions and can even identify subtle decisions, such as holding an interview with the assigned examiner, that can improve prosecution outcomes.
Information is key to having a positive patent prosecution experience. Whether it be patent drafting or patent prosecution analysis, LexisNexis® IP has the tools patent practitioners need to optimize their journey from invention to issuance.