Patent Prosecution Costs: Strategies for Getting Better Patents for Less

6月 23, 2020

patent prosecution costs strategies for getting better patents

Technology is wonderful when it saves you money, and the patent process is ripe with inefficiencies that can be treated with patent data and analytics. Based on our past webinar titled “Reducing Patent Prosecution Costs Using Patent Analytics,” here are a few ways you can obtain quality USPTO patents in less time and for less money.

Strategy #1—Know Your USPTO Patent Examiner

The patent examiner assigned to evaluate the patentability of an invention can have a significant impact on both the patent prosecution cost and outcome. Patent examiners vary greatly in their experience, knowledge, speed, workloads and outlooks. Knowing the USPTO patent data and statistics associated with the examiners looking over your patent applications can help you develop strategic patent prosecution strategies and direct resources toward those patent applications that will ultimately be of the greatest value.

The LexisNexis PatentAdvisor® patent prosecution platform provides users with USPTO patent examiner data and proprietary metrics, such as the PatentAdvisor ETA™, which can be used to help predict the obstacles that are likely to arise when dealing with a specific patent examiner. PatentAdvisor™ can even run patent analytics over an entire patent portfolio so users can put an emphasis on those patent applications with high business value and favorable patent examiner statistics, and send patent applications with low business value and unfavorable patent examiner statistics to the chopping block.

strategies for getting better patents for less

Strategy #2—Understand How Your Law Firms Are Performing

Whether your company is looking for a law firm to prosecute a patent application or you are already working with several law firms to file patent applications in their specialized technology fields, data can help you evaluate a law firm’s performance so you can make better decisions regarding patent prosecution costs going forward. Just as USPTO patent examiners vary in their difficulty levels, lawyers and law firms also have varying degrees of efficiency and effectiveness. PatentAdvisor provides users with law firm patent data so they can monitor their law firm’s performance overall or as it pertains to a specific patent application. By identifying inefficiencies in law firm performance, users can then work with their law firm to obtain better results, or they can move on to working with another firm with superior patent performance statistics.

strategies for getting better patents for less

Strategy #3—Target Your Patent Applications to Favorable USPTO Art Units

Not all art units are equal in the eyes of the patent applicant. Some USPTO art units are composed of higher proportions of applicant-friendly patent examiners, while other USPTO art units may have a majority of patent examiners who are statistically more difficult. Additionally, a single patent application could theoretically be assigned to any number of USPTO art units depending on the subject matter of the patent application and the words used to describe the underlying invention. For example, an invention related to automotive electrical circuits could be assigned to an art unit specializing in electrical components, or perhaps to an art unit specializing in transportation.  

The USPTO patent data provided by PatentAdvisor and the LexisNexis PathWays™ tool help users identify the USPTO art units that are most appropriate for their patent applications, and evaluate the relative difficulty of each potential art unit. PatentAdvisor users can then utilize the LexisNexis PathWays tool to determine how to draft their patent application to increase its chances of being assigned to an applicant-friendly art unit so that they ultimately save time and money throughout the patent process.

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Strategy #4—Automate Patent Application Monitoring

Staying on top of your pending patent applications is imperative for preserving time to communicate with clients and to respond to office actions or other issues throughout the patent prosecution process. The systems many law firms have in place for patent application monitoring rely on team members manually checking USPTO dockets on a regular basis to assess what needs to be done. Not only does this method leave room for human error, but it also requires labor hours that could be put to better use if the patent application monitoring process were fully automated.  

LexisNexis® PAIR Watch enables patent practitioners to automate their patent application monitoring in a way that is simple and effective. PAIR Watch users receive email updates on selected patent applications that allow users to look at related patent documents directly from an email and even share email updates with other people. PAIR Watch saves patent practitioners and law firms both time and money spent on manual application monitoring and replaces old processes with reliable automation.

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Products from LexisNexis®IP allow users to save money by prosecuting USPTO patent applications more effectively and efficiently. To learn more about using patent analytics to save money on USPTO patent applications, and for an additional strategy for saving on annuity fees both in and outside of the United States, check out our original webinar on the topic.

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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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