When Patent Applications Linger In Prosecution

May 12, 2022

When Patent Applications Linger In Prosecution

Bad things happen when patent applications linger in prosecution for too long. Patent applications tend to get stuck between filing and issuance only when significant obstacles arise. Obstacles, such as office actions issued by the patent office, are costly and can be difficult to overcome. Developing arguments to try to overcome a patent examiner’s objections and rejections takes a lot of time and money, which can easily translate into client dissatisfaction if too much time passes or too much money is spent. It is in the interest of everyone involved—clients, patent practitioners and patent examiners—to wrap up the patent process as efficiently as possible.

When patent applications linger: the tipping point

If the patent process is not resolved efficiently, then a pending patent application may reach the tipping point where it is no longer worth pursuing because the cost of patent prosecution has become too great. The specific dollar amount that this tipping point represents is different for every patent application; it depends on many factors including the amount that has already been invested in the patent process the likelihood the applicant will be able to obtain patent protection if they continue the process, and that anticipated commercial value of the underlying invention. Patent professionals can use patent analytics to better quantify each of those factors and to help prevent the excessive costs associated with lingering applications.

When patent applications linger: patent metrics

The LexisNexis PatentAdvisor® patent analytics platform provides users with access to many patent metrics that indicate to patent professionals and alert them when their patent applications are approaching their tipping points. PatentAdvisor™ users can create digital “briefcases” that contain user-defined groups of U.S. patent applications so they may then run patent analytics over the entire briefcase. Patent analytics can reveal, among many other things, which patent applications in a briefcase have been pending the longest, have been issued the most office actions and have been assigned to the most difficult patent examiners. In turn, patent professionals can use those patent insights to identify patent applications that are taking too long to prosecute or are costing too much money.

When Patent Applications Linger In Prosecution PatentAdvisor

When patent applications linger: portfolio monitoring

Patent portfolio monitoring can also easily be automated using briefcases. Users can elect to receive alerts from the PatentAdvisor platform whenever a significant prosecution event occurs relating to any of their briefcase applications. For example, PatentAdvisor users can set patent metric parameters for briefcase applications that prompt alerts whenever they are exceeded. A user may want to be alerted whenever any briefcase application has received a second office action or, alternatively, when any patent application has been pending for at least two years. Alert triggers can be customized based on a user’s preferences, and once established, alerts can be an invaluable tool for flagging problematic patent applications before they get out of hand.

Nobody wins when patent applications linger. Patent metrics provided by PatentAdvisor can help users evaluate the health of their patent applications and determine when problematic applications need to be abandoned. And, thanks to automated patent prosecution monitoring, users can rest easy knowing that they will be informed before their applications reach a tipping point.

Learn more about PatentAdvisor and see how to use digital briefcases for patent analytics.

Discover how patent strategies can be informed by patent metrics.

Learn how to apply qualitative data to your patent prosecution strategy.

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