Rank #1: #25 Former USPTO Patent Examiner Shares His Advice for Patent Practitioners
Chris and Megan interview patent attorney Ryan Schneer about his experience as a patent examiner. Ryan discusses some of the benefits and challenges of working in a newly formed art unit and shares valuable insights into the organizational hierarchy at the USPTO. Based on his experience working on both sides of the table, Ryan shares his advice for patent practitioners.
Oct 16 2017
Rank #2: #38: Analytics Behind "Stupid Patent of the Month" Blog
Chris and Megan dive into the prosecution histories of several patents featured on the "Stupid Patent of the Month" blog. The blog was created before Alice to shine the spotlight on (arguably) overbroad software patents, but even after Alice the authors have continued to uncover issuances with broad or seemingly obvious claims. An analysis of the last 20 patents featured in the blog indicates that these applications may have gotten through the USPTO by avoiding the Alice-heavy - or "doom" - art units.
Apr 30 2018
Rank #3: #40: Top 5 Audibles in Patent Prosecution
Chris and Megan pinpoint 5 prosecution scenarios where a strategy change may be necessary in light of the statistics. Like football, prosecution is a back-and-forth between the examiner and the applicant that requires constant reevaluation. For example, even when appeal may seem like the most favorable route substantively – or instinctively – if the statistics are not in your favor, it may make sense to continue working with the examiner.
May 14 2018
Rank #4: #46 Troubled Patents: Should We Get Aggressive or Give Up?
Chris shares an experience from an Association of University Technology Managers (AUTM) Regional Conference where he sat on a panel representing the perspectives of a client, attorney, patent office and analytics. Each panelist shared from their point of view the dilemma of one specific case and the approach that they would take in dealing with a troubled patent application. When is it time to use the appeal process or take some other extraordinary action after a final rejection has been issued? Chris discusses the key role of patent analytics in moving you from a position of guessing your next step to one of data-informed prosecution strategy.
Jul 30 2018
Rank #5: #47 Patent Analytics: Table Stakes for Law Firms
Chris interviews Ken Gemmill, Business Operations Manager for LexisNexis IP. In his career, Ken has witnessed the birth of analytics entering the patent business. He routinely speaks with law firms that are using analytics in their patent prosecution. Chris and Ken discuss the ways that the field has evolved, and how today's law firms can use patent analytics to their advantage, beyond examiner reports.
Aug 06 2018
Rank #6: #28 Top 5 Decisions That Require Patent Data Context
Chris and Megan identify five specific decisions that patent prosecution attorneys should typically never make without being informed by relevant data. The emphasis is on anticipating a most likely outcome instead of guessing.
Nov 06 2017
Rank #7: #16 Where do Litigated Patents Come From?
Chris and Megan interview guest speaker Professor Sean Tu, from the University of West Virginia, about his research on which examiners are most likely to issue litigated patents. Are these controversial patents mainly issued by junior or primary examiners - or both? His surprising findings raise questions about USPTO promotion practices.
Aug 14 2017
Rank #8: #23 Patent Examiner Gameplay
Chris and Megan discuss a common strategy patent examiners use, but which may cost applicants unnecessary prosecution dollars. Specifically, many examiners have a habit of requiring an RCE prior to granting an allowance, even when the amendment after final was not significant. Is there really a need for the additional fee and the additional search? What should applicants do when working with examiners who have this tendency?
Oct 02 2017
Rank #9: #42: Prosecution Patterns with Professor Tu
Professor Sean Tu returns to talk to Chris and Megan about his research into what drives examiner behavioral patterns. His previous research revealed pockets of fast-moving and slow-moving examiners, but now he aims to answer the question "how are applicants and examiners slowing the prosecution process"? To answer this question, Professor Tu has conducted an in-depth, manual analysis of hundreds of applications from technology center 1600. In this episode, he shares the initial results of this analysis, including what types of rejections slower examiners typically issue, how many rejections they issue, and whether their applications are mostly original filings or continuations.
May 29 2018
Rank #10: #17 GoPro Gets Lucky
Chris and Megan discuss the prosecution history of U.S. Patent No. 6,955,484, GoPro's patent covering their basic technology. The examiner who allowed that patent has a history of indicating "allowable subject matter" early in prosecution. Did GoPro make the right strategic decisions based on this examiner's history of permissiveness?
Aug 21 2017
Rank #11: #19 Monsanto's Wise Choice
Megan and Chris evaluate the prosecution history of U.S. Patent No. 5,352,605, Monsanto’s patent on genetically modified soybeans that was at issue in Bowman v. Monsanto. Monsanto’s counsel for this patent application took a very aggressive prosecution strategy—appealing after the first final office action—and it paid off. In what other situations could such an aggressive appeal strategy make statistical sense?
Sep 05 2017
Rank #12: #18 Under the Microscope: Evaluating Chris
Megan decides whether she would hire Chris as her patent attorney, based on his prosecution performance. Megan and Chris evaluate his allowance rate, office action, interview, and appeal statistics.
Aug 28 2017
Rank #13: 44: Can I Please Get A New Patent Examiner?
Chris and Megan discuss the challenges of getting a new examiner by filing a continuation application. In spite of the difficulties, this strategy has worked for some attorneys with the right tools—including LexisNexis PathWays™. PathWays predicts which group of examiners an application will be assigned to, and helps guide users toward more favorable assignments. Using this tool, Chris and Megan work through the ideation process for an example continuation filing aimed at getting a different examiner.
Jun 18 2018
Rank #14: #52: Inside Scoop with Former Patent Examiner Joshua Rudawitz
Megan interviews patent attorney Josh Rudawitz about his experience as a patent examiner. Josh discusses his career path at the USPTO and shares valuable insights about the level of autonomy granted to examiners at various points in their careers. Based on his experience working on both sides of the table, Josh shares his advice for patent practitioners.
Oct 29 2018
Rank #15: #3 Reinstate Appeal? Yes You Can!
Chris and Megan decide whether to reinstate appeal in U.S. Application No. 12/173,281.
Apr 17 2017
Rank #16: #12 The Mooters
Chris and Megan discuss strategies for cases facing a "mooter": a patent examiner who repeatedly cites new art. In particular, they examine US Application No. 12/995,610 to determine whether there were early signs that appeal was a good strategy.
Jul 14 2017
Rank #17: #6 The Top Six Attributes of a Good Patent Attorney
Chris and Megan explore what makes a good patent attorney in today's world of big data.
Apr 17 2017
Rank #18: #27 Back to Basics with Attorney Joe Kelly
Chris and Megan interview Joe Kelly, of Kelly, Holt & Christenson, about basic response writing techniques for optimizing the likelihood of a desirable outcome during patent prosecution. Joe also explains his "multiple paths to allowance" amendment strategy.
Oct 30 2017
Rank #19: #13 The Basics of the Patent Prosecution Process: Part One
Chris and Megan review the basics of the patent prosecution process - from filing to issuance of a non-final office action - and give basic pointers on where patent analytics come into play.
Jul 24 2017
Rank #20: #24 Using Patent Prosecution Analytics for Competitive Intelligence
Chris and Megan relay their top 4 strategies for using prosecution analytics for competitive intelligence. While many competitive intelligence efforts are focused on a competitor’s issued patent portfolio, looking at prosecution statistics can provide insight into what is coming down the pipeline, as well as early indicators of an issued patent’s value. For example, you can identify pending applications likely to be of value to your competitors by monitoring for their Track One filings.
Oct 09 2017