Quick Start Guide – Corporations

Al Ives


PatentAdvisor™ is a powerful patent analytics tool with many uses. As a patent professional, you will no doubt discover numerous ways to integrate this into your workflow.

This guide outlines the top five ways you can easily integrate PatentAdvisor into your workflow.

  • Get Up-to-Speed Quickly on an Application for Review
  • Assess the Health of Your Patent Portfolio
  • Monitor for Problematic Prosecution Patterns
  • Evaluate Outside Counsel
  • Perform Competitive Analysis

Get Up-to-Speed Quickly on an Application for Review 

When outside counsel provides you a submission for review, PatentAdvisor helps you maximize your time by quickly getting you up to speed on the application and its examiner. Starting at the PatentAdvisor home screen, enter an application number into the QuickPAIR tab. You can also enter a publication or patent number but be sure to change the dropdown box to reflect the type of number you have entered.

This will bring you to the QuickPAIR Timeline view, which provides a graphical description of the progress of the case, benchmarked against the examiner’s average—specifically the PatentAdvisor ETA™ metric, average number of office actions, average time to grant, and more. These basic statistics can help give you an idea of whether the proposed strategy makes sense for the examiner at any given point in prosecution. To learn more about the assigned examiner, click on the examiner’s name to see a dashboard with statistics representing their full body of work. Alternatively, click on the PDF icon in the upper right-hand corner to download a PDF application report that includes relevant statistics for the examiner on the application.

If you need to dig further into the application’s history, the Image File Wrapper tab provides access to the PDF documents for the application. It is like what is found on PAIR, but you will notice that text files are also available   for most substantively important documents, including office actions, responses, and claims.

The Prosecution Guidebook tab provides you with an executive summary of this application’s path through prosecution and highlights specific tendencies shown by the examiner’s work history.

Asses the Health of Your Patent Portfolio  

The visualization tool within PatentAdvisor allows you to find outliers in the patent prosecution process, i.e., applications that are not statistically within normal performance for you, the examiner, art unit or your competition, and need immediate attention.

First, create a “briefcase” that includes all the applications in your portfolio. A briefcase can be created from nearly anywhere in the system using the cloud icon. You can locate your briefcases under the My Saved Work tab.

You can also search for your applications using the Assignee/Applicant tab on the    homepage. Enter your company’s name and click “search.”

This will take you to a list of assignees matching your search terms. The list is divided into three levels: the top level includes “normalized” entities, the middle level includes “standardized” entities, and the lowest level exposes the raw assignee name as it appears in PAIR. Select the combination of entities you are interested in by clicking the checkbox to the right of the name and create a briefcase including the selected applications by clicking on the cloud icon.

Once the selected applications have been loaded into the briefcase, the briefcase menu will automatically pop up. Select “visual exploration” from the briefcase menu.

Visual Exploration allows you to visually assess your portfolio using almost any prosecution criteria – preset or custom. For example, many users want to know how many applications have gone beyond the examiner’s average prosecution timeline. To do this, pull up the filter menu and restrict to pending cases that have gone at least one office action over the examiner’s average. Then, set the “heatmap” to show examiner ETA™.

The resulting visualization will indicate potentially problematic applications at both ends of the spectrum: “out-of- control” cases that have already gone over average with examiners who are unlikely to ever allow the application, and “off-track” cases that have gone over average with examiners who typically allow cases quickly. Each set of cases is hyperlinked to allow you to view and download that set for further analysis.

Monitor for Problematic Prosecution Patterns 

Once you have reviewed your portfolio, you may identify one or more patterns in your prosecution process that you would like to avoid in the future. For example, it may be that your company consistently spends more money than necessary on low business value applications with high ETA examiners. The Prosecution Pattern Monitors (PPMs) within PatentAdvisor can alert you to applications like this once they reach a certain point in prosecution.

To create a PPM, click on the briefcase that includes your company’s portfolio and then select “Prosecution pattern monitoring.”

Then click on the red plus button to create a new PPM.

Give your PPM a descriptive name. You can also add additional text in the Description box to further explain what is being monitored. Next, select the conditions you would like to monitor by clicking on the “Add Condition” drop down menu. If you want the PPM to apply immediately, put a check in the box next to “Active.” If you would like to receive a weekly email regarding this PPM, put a check in the box next to “Weekly Digest Notification.” Lastly, make sure to click “Save.”

After you click “save,” the monitor will find all existing cases that meet the specified criteria. The results will appear under the My Saved Work tab accessible from any page. As new  cases meet the specified criteria, they will appear in the results list on the site. If you have elected to receive a weekly digest email, each week you will receive an email summary of all new cases that meet the criteria.

A couple of important notes about PPMs:

  1. You must update your briefcase manually, on a regular basis, to ensure that new cases are included in your PPM results list. If you are a private data customer, we update your company’s master briefcase on a weekly basis.
  2. We strive to maintain our data as up to date as possible given USPTO bandwidth restrictions. However, PPMs are not an alert service and will not provide real-time updates from the USPTO. There will be some lag between updates in PAIR and updates in the PatentAdvisor database.

Evaluate Outside Counsel  

PatentAdvisor provides the opportunity to objectively evaluate and compare your outside counsels’ prosecution performance. To get started, click on the briefcase that includes your company’s portfolio and then select “alignment reports.”

Then click on the red plus sign to generate a new report.

This will bring up the alignment report edit pop up, where you can select which of your law firms you would like to evaluate. It is recommended to use the “law firm – normalized” data since this has been well-processed and is the most likely to properly identify cases belonging to each law firm. Alternatively, if you would like to assign applications to law firms yourself, you may upload this information as metadata and it will appear as an option on the alignment report popup. Once you have selected all the desired law firms, click “save and continue.”

Next, you must decide how to limit your comparison. To avoid performance comparisons across technology areas that are too disparate, alignment report comparisons can only be run for one examiner, art unit, technology center group, or technology center. Select the desired limitation and, if desired, select a date range for running the comparison.

The system will then generate an Excel spreadsheet that automatically downloads to your computer. The spreadsheet includes a summary tab with the most relevant prosecution statistics for each selected law firm, your company overall, and the chosen examiner/art unit/tech center group/tech center. It also includes a tab for each chosen examiner/art unit/tech center group/tech center with more detailed statistics. Based on these statistics, you can compare the performance of each law firm for your company.

Perform Competitive Analysis  

PatentAdvisor provides many different types of insight into your competitors’ patent strategies, from comparative prosecution performance to understanding which patents may be of importance to them.

Identify important applications. One of the most common uses of PatentAdvisor for competitive intelligence is ascertaining which cases may be of importance to competitors. For example, one way to identify applications that your competitor is likely to consider valuable is to look for applications that have been filed as Track One.

To find all your competitor’s Track One cases, first create a briefcase with the competitor’s applications. You can create a new briefcase by importing applications from a spreadsheet if using another search tool. Alternatively, you can perform a search within PatentAdvisor using the Assignee/Applicants search box and transfer the search results to a new briefcase.

Once the competitor briefcase is created, open the briefcase menu and select “prosecution pattern monitoring.” Follow the steps above under the Monitor for Problematic Prosecution Patterns section to create a new monitor. Select the condition “prosecution history event” from the conditions list, select “Track1.Grant” as the document type, and set the time frame to “anytime.” Once you click “active” and “save,” this monitor will go through every application in the competitor briefcase and identify those that have had a request for Track One granted.

Navigate back to the prosecution pattern monitoring landing page to see the list of applications having a granted request for Track One. You can download this list of applications or use it to create a new briefcase for further analysis.

Know when your IP is blocking competitor patents. Another useful feature for competitive intelligence is File Wrappers. By allowing you to search the full text of all office actions and responses filed since 2000, it   can identify instances where your patents were asserted against a competitor.

To begin, navigate to the File Wrappers page by double clicking on the File Wrappers tab from the homepage. Within File Wrappers, enter your patent or publication number in the search box, being sure to use quotations and to type the  number in the same format that examiners typically use. Limit the search to office actions and responses using the check boxes below the search box and click “Search.”

The results include every document that has referenced your patent or patent publication. You can view each document directly by clicking on the PDF icon in line with the result or create a briefcase to analyze all the results.

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