Patent Prosecution

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Monitor Patent Applications and Portfolios From All Angles

Monitor Patent Applications and Portfolios From All Angles

A lot of time and energy is spent on patent monitoring. From monitoring for patent prosecution updates to monitoring the relative strength of patent portfolios over time, staying consistently up to date gives patent practitioners the power to keep their patent...

Take Control of the Patent Process

Take Control of the Patent Process

The patent process is rife with uncontrollable variables that are material to the outcome of patent prosecution—the most illustrative example is the predisposition of the patent examiner assigned to the case. The ability to manage and operate in uncertainty is a mark...

A Conversation With the Commissioner for Patents: Part 2

A Conversation With the Commissioner for Patents: Part 2

Earlier in 2020, LexisNexis® IP was honored to have USPTO Commissioner for Patents Drew Hirshfield join a webinar panel to discuss the state of the United States patent office. In our recent article, “A Conversation With the Commissioner for Patents (Part 1),” we...

A Conversation With the Commissioner for Patents: Part 1

A Conversation With the Commissioner for Patents: Part 1

If there is anything positive to say about the year 2020, it is that it has been a year of deep reflection with a desire to improve in all aspects of our lives. In the darkness of a global pandemic and a state of social unrest, opportunities have arisen to revise our...

Five Stages for Patent Efficiency

Five Stages for Patent Efficiency

Patent applicants and professionals are in for the long haul when they enter patent prosecution, which typically unfolds over the course of several years. The silver lining of the lengthy patent process is that each subsequent stage presents an opportunity to use...

How USPTO Examiner Type Affects Patents: Part 1

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...

Opportunities to Win with Patent Analytics

Opportunities to Win with Patent Analytics

There are plenty of opportunities to win throughout the patent process. It begins with winning a potential client’s approval, and it hopefully ends with winning a granted patent and the client’s satisfaction. Along the way, everyone wins if prosecution goes smoothly...

Fast Examiners; Slow Examiners; and Patent Allowance

Fast Examiners; Slow Examiners; and Patent Allowance

Although we know that individual patent examiners can greatly affect an inventor’s chance to (1) get a patent at all and (2) get it in a timely way, there has been very little work determining how examiners are able to either delay or compact prosecution while still...

IP Landscape for Machine Learning Patents

IP Landscape for Machine Learning Patents

What is an IP Landscape?An intellectual property landscape is a thorough overview of current patents and practices in any technical space. By providing references, documentation, and a holistic view, an IP landscape can show potential for legal validity and inform...

Overcoming Patent Examiner Variability: Three Key Takeaways

Overcoming Patent Examiner Variability: Three Key Takeaways

Understanding how the patent process works, all the way down to the level of individual behaviors, opens up so many opportunities for better patent prosecution outcomes. USPTO patent data and analytics allow us to not only see the variability in the behaviors of...

Win New Business with the PatentAdvisor Efficiency Score™

Win New Business with the PatentAdvisor Efficiency Score™

Patent data and analytics now play an important role in helping law firms win new business. Firms can now quantify their performance against the patent office using USPTO patent data, and highlight their most favorable patent metrics to earn a prospective clients...

Evaluating Outside Legal Counsel: Best Methods

Evaluating Outside Legal Counsel: Best Methods

Companies and their in-house counsel face many challenges when working with outside legal counsel. To begin with, choosing the right patent law firm to work with is trickier than one might expect. Not only do law firms often specialize in a specific field or...

Patent Issuance: A Road Map to Success

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

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

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...

Three Inventions Helping Slow the Spread of COVID-19

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...

Visual Learning:  A Guide for Patent Professionals

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

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...

Announcing the All-New PatentAdvisor Benchmarking Reports™

Announcing 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...

Stylus Upgrades: Apple Files Patent Application to Expand Capabilities

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...

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.