Ten Terrifying Tales of Patent Prosecution

October 29, 2017 David Bennett

1. A Patent Examiner on Elm Street
 
Does your patent examiner have a dark prosecution history? Many patent practitioners discover the true nature of their assigned USPTO patent examiner deep into the process. Patent examiner statistics reveal an examiner’s prosecution patterns and tendencies at the onset of prosecution so that patent attorneys can better strategize to avoid prosecution nightmares.
 
2. Invasion of the Office Actions
 
A single office action is estimated to tack on $3,000 to the expense of patent prosecution. Knowing the average number of office actions required by your patent examiner is extremely valuable. Your patent examiner’s office action statistics help you to budget more accurately, set clear limits on the number of office actions you are willing to endure, and explore at an early stage what measures can be taken to prevent excessive back-and-forths with your patent examiner.
 
3. Turning Down a Dark Prosecution Alley
 
There may come a time when you must decide between filing an RCE or filing for appeal. The likelihood of either option resulting in a granted patent varies greatly depending on your assigned art unit and patent examiner. Patent prosecution software, such as LexisNexis PatentAdvisor®,  provides you with historical patent data to shine the light on the likely consequences of choosing one path over the other.
 
4. An Escape Route Unseen
 
The possibility of having missed an opportunity to advance patent prosecution is enough to keep you up at night. Fortunately, patent prosecution analysis software can be used to identify patent prosecution tips, such as holding an interview with your patent examiner or filing early for an RCE, that have been effective in expediting the patent process for those before you.
 
5. Trapped in a Cavernous Backlog
 
They chose to file an RCE rather than appeal because they thought the process would be quicker, but then they waited and waited as the process was stagnant - they were unaware of the patent examiner’s RCE backlog.
 
No one wants to live this frightening tale. With PatentAdvisor™ patent prosecution tools, you will be aware of your patent examiner’s RCE backlog so that you can make more informed decisions and avoid this patent pitfall altogether.
 
6. Budget Carnage
 
You thought you anticipated the costs of patent prosecution, but now your budget has been destroyed. Using patent analysis software from the onset of patent prosecution allows patent applicants to more accurately predict the cost of prosecuting their patent application. Patent examiner data is helpful to determine the number of hours involved, the strategic decisions that are likely to be made, and the effect of possible contingencies throughout the patent process.
 
7. Work Estimate Dismemberment
 
The other side of budget carnage is seen through the eyes of a patent practitioner. Providing an inaccurate quote to your patent clients can be detrimental to your relationships, and it may even force you to eat the additional costs to stay on good terms. PatentAdvisor patent analysis software enables patent practitioners to provide more accurate work estimates and to maintain healthy business relationships.
 
8. In-House Counsel’s Silent Screams
 
Your in-house counsel’s time is best spent on your most important patent applications. However, in-house counsel often become spread thin as their focus is divided among the many unprioritized applications that make up a company’s patent portfolio. Using PatentAdvisor, your in-house counsel can run an analysis over a digital briefcase containing your company’s entire patent portfolio to identify, prioritize, and focus on the patent applications that are most likely to yield success.
 
9. Outside Counsel’s Zombified Performance
 
It would be a shame to discover your outside counsel’s performance is lacking. With PatentAdvisor, you can create a briefcase containing all of the patent applications being handled by your outside counsel. This briefcase allows you to analyze and actively monitor your outside counsel’s performance to ensure they are giving you their all.
 
10. Competitors Lurking in the Darkness
 
Do you know what your competitors are up to? Patent analysis software can be used to monitor the patent portfolios of your closest rivals, and, after performing a thorough analysis of their pending patent applications, to make business decisions around the possibility of their most impactful patent applications being granted.
 
Patent prosecution should not be a horror story. Check out LexisNexis PatentAdvisor® patent prosecution software to avoid these prosecution nightmares.

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