Better Patent Prosecution with Data Analytics

September 28, 2016 Tara Klamrowski

Using patent prosecution analytics, patent attorneys can now make sense of large repositories of prosecution information that had been previously not been possible due to the sheer amount of unstructured data. One such area is the nebulous category of published and granted patent applications. These documents include responses to office actions, correspondence from the examiner and other voluminous collections of secondary sources relevant to the prosecution process.

Attorneys can utilize the latest prosecution analytics software to perform a simple search of vast volumes of patent documents to quickly and easily find relevant information. The ability to search patent documents can be helpful when faced with a rejection that may seem obscure or confusing. A patent document search engine and text-searchable database allows you to search other applicants’ responses for particular language cited by the examiner in the rejection. This can provide you with context for the rejection, and potential strategies to overcome the rejection.

For example, perhaps your examiner often repeats a certain phrase when issuing rejections: “[The examiner] is not giving patentable weight to [your] non-functional descriptive.” Despite your comprehensive response, the examiner still rejects your application on those same grounds. You can enter this phrase as a query in a patent document search engine and find other office actions and responses from other applications containing the same language. Search filters provide attorneys with the ability to narrow down search results to applications that are pending, allowed or abandoned, allowing you to quickly see which applicants were successful in overcoming this particular rejection. You can then further filter patent documents in successful applications to see only responses containing this phrase in order to see the arguments and reasoning other applicants took to overcome this rejection and put their application on a path to allowance.

In addition to searching specific documents for phrases, attorneys can also view statistics such as the rate at which the examiner cites this particular phrase in a rejection and the relevant success rate of applicants who are faced with this rejection. For instance, this rejection may be prevalent, appearing in 85% of rejections by the examiner with only a 5% allowance rate for applications facing this rejection. These statistics can help attorneys determine if the rejection they are facing is common or obscure, and the likelihood of their application making it to allowance given the rejection.

This technology is available through the PatDocSearch ™ engine within LexisNexis PatentAdvisor ® Users can search all published and granted patent documents , including office actions, responses and appeals . Search results can be quickly pared down to the most relevant office actions, responses and appeal briefs using filters. This innovative tool allows patent professionals to not only understand the context of the rejections they are facing, but also gives them insight into the best route to allowance for their patent applications. 

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