Christopher Holt, a patent attorney and the inventor of LexisNexis PatentAdvisor®, and Rod Wittenberg, director of sales for Reed Technology North America, appeared recently as the featured guests on IP Fridays, a weekly podcast dedicated to news in intellectual property law and business.
“After practicing patent law at a boutique IP law firm in Minnesota, I started to think about how much I had learned about the way that individual patent examiners perceive patent applications and about their unique tendencies,” said Holt. “It dawned on me that if you knew something in advance of pursuing a patent about how your assigned USPTO examiner liked to handle reviews, it would significantly help your patent prosecution strategy.”
This inspiration led Holt to invent PatentAdvisor, which was commercialized by LexisNexis and is now a part of the LexisNexis suite of IP solutions.
PatentAdvisor is the first-ever data-driven patent strategy tool, providing users with a systemic approach to crafting an effective prosecution strategy and managing an IP portfolio. The tool enables IP practitioners to better understand why certain patent applications take longer than others to reach allowance, then use that knowledge to devise better strategies, manage budget and evaluate both in-house and outside IP counsel.
“The product really improves efficiency with a more strategic approach to patent prosecution, helps to identify at-risk patents so teams can adjust their strategies to save time and money, and improves patent prosecution with actionable data and analytics,” he said.
Wittenberg explained that he is a former attorney himself, but instead chose to join LexisNexis when he observed the opportunities in the marketplace for electronic legal research to replace the more cumbersome and costly law libraries filled with books. The LexisNexis IP solutions are the latest examples of this evolution in the leveraging of technology to assist legal research.
“The tool that Chris created was a terrific idea from the outset and we have found a way to commercialize PatentAdvisor as a valuable product for customers to obtain statistical USPTO data on a patent examiner’s tendencies to handle patent applications,” said Wittenberg. “This is crucial because it allows IP practitioners to adjust their patent prosecution strategies at various stages in order to decrease pendency timelines and increase allowances.”
Holt and Wittenberg pointed to the future development of LexisNexis PatentAdvisor, which will include several powerful services designed to provide corporations and law firms with solid information from the USPTO patent search database. The analytics tools will bring patent information and efficiency to the patent prosecution process, helping professionals develop higher quality IP in a more cost-effective and timely manner.
“We’ve now moved past interesting analytics and have created high-value business analytics for our customers,” said Holt. “We’re working on a number of new systems that assist customers with their daily tasks by supplementing their workflow with important information for their patent applications, right when they need it.”