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3 Enemies of Patent Prosecution

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The journey of an innovative idea from prototype to patented invention faces three primary adversaries. Each of them can be mitigated by the use of today’s advanced patent analytics tools.

Time. Before the United States switched from the first-to-invent standard to the first-to-file standard for patent eligibility, inventors and IP-driven companies had time on their side. The invention itself was the key; applying for and receiving the patent for the invention was a set of procedural hurdles one needed to clear on the way to the marketplace. Under first-to-file, however, an invention may wind up being worthless unless one submits an airtight patent application with sound, defensible claims as soon as possible. A competitor’s similar invention may have been disclosed later, but if their patent paperwork is filed first, they win the race to IP protection.

Uncertainty. Traditionally, communicating with the USPTO following the submission of a patent application was an opaque process. There was no way to know which art unit is the best in which to file if more than one option is possible. Even after communication was established, the process of advancing the application over an examiner’s objections involved a great deal of guessing and intuition. Should you schedule an interview? Should you file an RCE? Would that improve the application’s chances or diminish them?

Cost. Until recently, it was still possible for intellectual property attorneys to succeed using trial-and-error-based philosophies of patent prosecution, particularly when working with applications that were not submitted to high-technology art units. The competitive era of high technology and AIA began making trial-and-error patent prosecution increasingly impractical. Today’s patent prosecution is time sensitive and costs increase the longer the process takes.



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Fortunately, today’s patent practitioners have access to technology that can help mitigate these risks. Thorough prior art searches no longer require spending days or weeks inside a law library, the information is all accessible at one’s desk. With that information in hand, IP practitioners can use semantic analytics engines optimized for claims language to help patent applicants draft claims that are more likely to withstand an examiner’s scrutiny.

There is still no way to tell to which patent examiner an application will be assigned, but today there are advanced data mining tools that give patent prosecutors the opportunity to review the examination history for a particular examiner (or an entire art unit). Armed with this information, patent professionals and the intellectual property-driven companies for which they work can develop better road maps to issuance. Data-based tools also can assist IP-driven corporations with assessing the effectiveness of their patent prosecution team, its members, and its strategies, helping to identify inefficiencies.