In-house lawyers who are looking for ways to show their value need tools that give them the ability to demonstrate business contributions generated by their department through the creation and management of IP assets. Revolutionary analytics software makes that task easier than ever before. Now, IP counsel can harness the power of big data to go beyond conjecture and provide their businesses with an evidentiary foundation to drive strategic vision and decision-making.

LexisNexis PatentAdvisor® assists in-house counsel in developing a metric-driven IP strategy by leveraging USPTO statistics, allowing IP teams to focus on core prosecution competencies and bringing their companies’ intellectual property to life. These statistics can be used to develop department budget, compare portfolio performance to examiner averages and evaluate the performance of outside counsel. In-house IP can leverage this business intelligence to identify specific trends in order to isolate problems and define the team’s unique value proposition.

Create a Budget
Providing a reference point for projecting future costs makes for accurate budget projection. Through predictive analytics, users can compare their current applications to past applications to determine how they will trend. Specifically, attorneys can predict outcomes like the average number of office actions an application is likely to have. Assuming each office action costs a certain amount of time and money to address, IP counsel can use that information to predict the total cost of prosecuting a particular application, and in the aggregate, the total projected cost of prosecuting their entire portfolio.

Compare Your Portfolio to Examiner Averages
IP counsel can also use PatentAdvisor™ to compare how their portfolio fares against examiner averages. Using the Prosecution Guidebook, users can combine their company’s data set with that of the examiners to determine if their portfolio is trending above or below average on things like the number of office actions, allowance rates and RCEs.

Examiner averages can also be used on an individual level to determine if the business priority of an application outweighs the cost and time of prosecuting it. If, for instance, your application is before an examiner with an extremely low allowance rate for a certain art unit, or you have faced double or triple the typical number of office actions, your team may determine that it is in the best interest of the business to stop pursuing that particular application or to change strategy. Examiner averages allow IP counsel to quickly identify outlier applications and reallocate company resources toward applications that have a greater likelihood of increasing overall portfolio value.

Evaluate the Performance of Outside Counsel
PatentAdvisor can also be used to evaluate the effectiveness of outside counsel. Attorneys can compare the performance of multiple outside firms to in-house prosecution by generating an alignment report with the PatentAdvisor Briefcase tool. Users can analyze individual firm averages against examiner averages for specific art units or groups of applications with the ability to compare allowance rates, RCE rates, number of appeals and number of office actions in order to determine whether some applications are better off being prosecuted by specific firms with better outcomes in certain art units or tech centers.

Define Your Value Proposition
Prosecution analytics and statistics can be utilized by in-house IP counsel as a foundation to create a comprehensive picture that illustrates the unique benefits they provide to their companies. Through its innovative tools and wealth of data, PatentAdvisor is a valuable tool for in-house lawyers to develop a compelling value proposition that will demonstrate their true organizational value.

LexisNexis PatentAdvisor®

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Get to know your examiner better with more context and a deeper understanding of your examiner’s behavior than ever available before.

With your free trial, you will gain instant access to:

Examiner Search allows you to search by examiner name for a filterable, examiner specific dashboard of patent analytics, including rejection specific statistics, appeal statistics, prosecution statistics, interview statistics, a backlog of RCEs and timeline.

QuickPair easily replaces the USPTO Public PAIR by providing the most robust application details anywhere, including examiner timeline, examiner allowance rate and the average time and number of office actions to allowance.

PatentAdvisor, the first-ever data-driven patent strategy tool, provides a systemic approach to crafting an effective prosecution strategy. Understand why certain patent applications take longer than others to reach allowance—then use that knowledge to devise better patent prosecution strategies.

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