BLOG
Patent analysis and insight
Analysis and insight to bring more predictability, transparency, and equity to your patent prosecution.
BLOG
Analysis and insight to bring more predictability, transparency, and equity to your patent prosecution.
In the world of IP law, efficiency is key. As patent practitioners know all too well, manually managing the flow of information disclosure statements can be a cumbersome and time-consuming process.
The COVID-19 pandemic launched a healthcare innovation race without parallel in recent history. Recognizing the need for swift action, companies large and small across the healthcare industry jumped into action to do their part to develop diagnostics, therapeutics, and vaccines for COVID-19. Now that roughly two years have passed since the peak of the pandemic, we have a fuller body of COVID-19-related patenting data from the USPTO and patent offices around the world. While several studies have analyzed COVID-19-related patents — notably, the WIPO 2022 study of COVID-19 vaccines and therapeutics — none have focused specifically on COVID-19 diagnostics patents.
Will an interview lead to an allowance? Should you appeal? Is it time to abandon? How long is too long between filing and the first office action? As an experienced patent professional, you know that predicting examiner behavior is key to finding the shortest path to an allowance, but without the right data, you’re just guessing.
Maybe you were taken in by an ad for workflow automation that could help your overworked support staff, maybe you hit the search bar looking for a way to reduce your IDS workload, or maybe you were tired of the other firms standing out to corporate clients with their use of data analytics.
When it comes to office actions and your patent prosecution strategy, less is definitely more. Less time, less work, more profit, and more satisfied clients. Based on Juristat’s recent ranking though, some USPTO examiners might be thinking more is more.
2020 is not exactly what we expected, was it? Business has felt anything but usual. Now, at the end of the year, we have time to reflect, consider new best practices and areas of improvement, and keep our fingers crossed that 2021 will be at least a tiny bit less surprising.
The eligibility requirements for the Program are fairly straightforward. To qualify for fast-track status, the following four conditions must be met:
This past year, we’ve seen our industry innovate and adapt like never before. Time and time again, we talk to clients and colleagues who are discovering innovative ways to streamline budgets without sacrificing quality patent work. Our latest updates are designed to help you in these endeavors – adding greater speed and insight to our already easy-to-use analytics platform. Here is a quick summary of our exciting new features:
Patent prosecution is expensive and complex. And often, each individual practitioner has their own unique approach to reach that all-important NOA. But inconsistent practices and reliance solely on past experience can lead to inflated costs.
Much has been made about the economic effects of the COVID-19 pandemic. While it is clear that the pandemic and its associated lockdowns have resulted in a sharp economic contraction, it is unclear what effect—if any—it will have on the USPTO in terms of patent filing and other patent prosecution-related activity.
With so much going on in the world during the first half of 2020 — a global pandemic, an economic recession, and widespread protest movements — developments in the intellectual property sphere have largely flown under the radar. But that does not mean 2020 has been bereft of patent news.
In 2019, the USPTO issued revised § 101 guidance, while the Senate Judiciary Committee Subcommittee on Intellectual Property held a series of high-profile hearings on a legislative proposal to abrogate Alice. Several patent-related bills were also introduced in Congress, including the STRONGER Patents Act and the Inventor Rights Act.
It’s the end of the year, and we at Juristat have a lot to celebrate! Along with growing our team and moving into a new office space, we launched new workflow automation solutions that generate office action responses and information disclosure statements using AI. And in the coming year, we’re rolling out a major update to our analytics product, giving clients improved access to comparison metrics, business intelligence, and custom reports for every tech center, art unit, USPC, or CPC class, and more.
While the calendar year may be winding down, your team is likely busier than ever preparing office action responses. In fact, we’re just on the other side of a major spike in office actions from the USPTO, coinciding with the end of their fiscal year on September 30.
We often use allowance rate as a quick and simple way to quantify success at the USPTO -- and we know law firms use it too. However, that is just one of many indicators in-house counsel can use to evaluate firm performance.
The USPTO recently hosted a webinar about the general approach to interpreting claims and how the specification interacts with and modifies those claims. With the goal of providing answers to common examiner questions, the webinar specifically discussed the importance of the broadest reasonable interpretation (BRI) of each claim, how to handle claim limitations, and the added difficulty of limitations related to 35 USC 112(f) (aka “Means-or-Step-Plus-Function” Limitations). The hope is to create consistent examination guidance that ensures all claims will be interpreted similarly by anyone of ordinary skill in the art.
When looking for outside counsel, companies are likely hearing similar pitches from all law firms. Business intelligence can be a powerful differentiator, a tool that helps law firms identify areas of strength and discover new pathways to success. It can lead to more focused marketing efforts and a general uptick in client buy-in.
In June, we marked the fifth anniversary of the Supreme Court’s landmark decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Far from being settled law, questions of subject matter eligibility have dominated the conversation about patents in the courts, Congress, and the USPTO during the first half of the year. The continued controversy surrounding the Alice case half a decade after it was decided vividly demonstrates its unpopularity and underscores the broad consensus that the time for reform is now.
Elsewhere, the Supreme Court also issued two decisions focusing on provisions of the America Invents Act (AIA), while theft of IP assets by Chinese firms continues to plague U.S. businesses..
In 2013, the USPTO enacted the After Final Consideration Pilot (AFCP) 2.0 program as an alternative response to a final rejection. The goal of the program was to increase communication between examiners and applicants and take those applications that are close to allowance across the finish line, without requiring the time and cost inevitably associated with an RCE.
Here are three essential (and often overlooked) examiner analytics that can lead to a more strategic prosecution.
This precarious position is where Jonathan Miller of Nicholson De Vos Webster & Elliott LLP found himself during a recent prosecution.
Watch our latest video to learn how firms and in-house teams can shape strategy with big data during all parts of the prosecution process.
Patent prosecution is complex – we know. If you’re ready for simpler workflows and more predictable outcomes, give us a call.