#30 Let’s Play Prosecution Golf

November 20, 2017

Chris and Megan discuss what they see as the proper way to evaluate whether patent prosecution has gone well. Emphasis is placed on establishing proper benchmarks on an application-specific basis.

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#28 Top 5 Decisions That Require Patent Data Context

November 6, 2017

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. 

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#27 Back to Basics with Attorney Joe Kelly

October 30, 2017

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.

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#26 Six Excellent Use Cases for File Wrapper Text Searching

October 23, 2017

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. 

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#25 Former USPTO Patent Examiner Shares His Advice for Patent Practitioners

October 16, 2017

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.

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#24 Using Patent Prosecution Analytics for Competitive Intelligence

October 9, 2017

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. 

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#23 Patent Examiner Gameplay

October 2, 2017

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?

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#22 Little Black Box

September 25, 2017

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.

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#21 Reality Check

September 18, 2017

Chris and Megan review prosecution statistics for a couple of very difficult examiners. Although they are not the norm, examiners who rarely or never allow certain types of applications do exist. Now that prosecution statistics are readily available, does IP counsel have a duty to investigate and disclose problematic statistics to their clients? Is there also a duty to adjust prosecution strategy for "dead end" examiners?

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#20 Misleading Patent Statistics

September 11, 2017

Megan discusses the top 5 pitfalls of comparing patent prosecution data from one entity to another—company to company or law firm to law firm.  This podcast will tell you what questions to ask when presented with comparative patent prosecution data from law firm or corporate advertising material.  It will also help you to generate the most accurate information possible for your own competitive purposes.

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