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PatentAdvisor™ Resource Center

How to Automate Office Action Response

How to Automate Office Action Response

The amount of ways patent prosecution tools can benefit a patent application has grown significantly. LexisNexis PatentOptimizer enables patent practitioners to draft high quality patent applications, as well as generate comprehensive office action responses, with...

Setting the Tone of Prosecution with Patent Analytics

Setting the Tone of Prosecution with Patent Analytics

There is no perfect formula for prosecuting a patent, but there is plenty of information out there that can be used to help anticipate a patent examiner's behavior. With accurate predictions, patent applicants can strategize and take actions to increase their chances...

Patent Litigation and “The Ice Cream of the Future”

Patent Litigation and “The Ice Cream of the Future”

Dippin’ Dots are enjoyed around the world. The delicious ice cream pellets can be found most commonly at amusement parks and have been known to hit the spot on a hot day. Despite being recognized and enjoyed globally, the innovative take on a ubiquitous dessert has...

What Prosecution Features are Tied to Positive Litigation Outcomes?

What Prosecution Features are Tied to Positive Litigation Outcomes?

Obtaining patents that will withstand litigation is one of the primarily goals of a good patent practitioner, but unfortunately, it is not always clear which prosecution strategies will ensure positive outcomes in court. Conventional wisdom used to be that a longer...

A Celebration of the Innovations and Influence of NASA

A Celebration of the Innovations and Influence of NASA

The National Aeronautics and Space Agency (NASA) is perhaps the most iconic and influential agency within the United States government. Established in 1958, its mission statement is “to pioneer the future in space exploration, scientific discovery, and aeronautics...

Predicting Examiner Behavior with PatentAdvisor ETA™

Predicting Examiner Behavior with PatentAdvisor ETA™

The most predictive indicator of prosecution length and complexity developed to date. PatentAdvisor Examiner ETA™ is the newest metric exclusively available on the LexisNexis PatentAdvisor® patent analytics platform. It also happens to be the most predictive...

Webinar: Dissecting Alice at 5 – The Good, Bad & the Ugly

Webinar: Dissecting Alice at 5 – The Good, Bad & the Ugly

Listen as Gene Quinn, President and CEO of IPWatchdog, Inc. hosts a special free webinar discussion focusing on the Alice decision five years later. Joining Gene for this special webinar is Drew Hirshfeld, Commissioner for Patents at the United States Patent and...

A Patent Examiner’s Take on ETA

A Patent Examiner’s Take on ETA

What might a USPTO examiner have to say about this new way to approach patent prosecution? The newest LexisNexis PatentAdvisor® metric has proven to be the most predictive patent metric yet. Each PatentAdvisor Examiner ETA™ helps patent professionals better...

How to Improve Patent Prosecution Strategy

How to Improve Patent Prosecution Strategy

The proliferation of data analytics tools has changed the way that patent practitioners approach their work. Many new features offered in these tools have greatly enhanced patent practice. In this article published in Law360, Eric Snustad, shareholder at Fredrikson...

LexisNexis PatentSight® is a SIIA CODiE Award Finalist

LexisNexis PatentSight® is a SIIA CODiE Award Finalist

LexisNexis PatentSight® has been named a finalist in the Best Big Data Reporting & Analytics Solution category of the 2019 SIIA CODiE Awards program. The SIIA finalists' page summarizes the analytics solution this way: PatentSight is an analytics platform for...

No Dice for Casino Games Patent

No Dice for Casino Games Patent

On 12월 28, 2018, the U.S. Court of Appeals for the Federal Circuit upheld the USPTO’s rejection of a patent application titled “Casino Game and a Set of Six-Face Cubic Colored Dice” on the grounds that the patent application was directed at an abstract idea and...

Avoiding the Pitfalls of Bad Data In Prosecution Analytics

Avoiding the Pitfalls of Bad Data In Prosecution Analytics

Patent data analytics is an invaluable tool for navigating patent prosecution as effectively and efficiently as possible, but it is important to remember that the data sets that will be most useful to you as a patent professional will change throughout the various...

Framing Your Patent Application for Easier Patent Prosecution

Framing Your Patent Application for Easier Patent Prosecution

Patent practitioners often approach the patent process as if all patent examiners at the United States Patent and Trademark Office (USPTO) will examine their patent application similarly. In reality, though there are procedural and substantive guidelines that all...

USPTO Profiles Women Inventors

USPTO Profiles Women Inventors

In early 2월 2019, the United States Patent and Trademark Office (USPTO) released a document titled “Progress and Potential: A profile of women inventors on U.S. Patents.” Packed with interesting information about how and where women inventors have contributed to...

Going Green for Improved Patent Prosecution

Going Green for Improved Patent Prosecution

Everyone is going green! And in this case, “going green” has nothing to do with our planet. Ever since LexisNexis® IP launched PatentAdvisor ETA™, the most predictive patent prosecution metric yet, patent professionals are striving to have their patent...

Patenting a Championship

Patenting a Championship

Innovations that Made the Super Bowl Safer and Cooler Super Bowl LIII is in the books with a record-breaking win. Like every Super Bowl before it, this year’s NFL championship was a spectacle not only of talent, but also technology. Unlike past championships, this...

Artificial Intelligence Patent Applications in the News

Artificial Intelligence Patent Applications in the News

Artificial Intelligence (AI) is creating much excitement for numerous industries thinking of new products and services with patent applications increasing to the USPTO for AI-related inventions. Kate Gaudry, a partner at Kilpatrick Townsend and Stockton,...

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.

Resource 

Process of drafting, filing, and negotiating with the US Patent and Trademark Office (USPTO) in order to obtain patent prosecution and rights for an invention.

Resource

Understanding US Patent Prosecution.

Resource

What is patent prosecution?

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