Jonathan (producer of BPN) asks Chris what he has learned from his business travels around the world. Chris reflects on how Asia, Europe, and the United States have each reacted a little bit differently to being challenged to transition to data-driven decision making during pre-grant patent processes.
Chris introduces the audience to the producer of BPN, Jonathan Rundman. Chris and Jonathan pretend to meet at a cocktail party. Jonathan, having no real background in the patent industry, asks Chris about his job. Chris explains exactly what it means to work in the pre-grant patent data industry.
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.
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.
Chris and Megan share 6 ideas for searching image file wrappers to enhance your patent practice. This rich content set—including claims, responses, office actions, and appeal documents—can help you find licensing opportunities, decide whether or not to hire an attorney, perform complex USPTO trend analysis, and much more.
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.
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.
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?
Chris and Megan discuss how to use "big brother" to your advantage in developing a patent strategy. By monitoring prosecution patterns, practitioners can look out for incoming competitor patents of interest, monitor for patents that competitors have deemed important, and even keep on top of their associates' workflow.