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?
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.
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?
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?
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.
Chris and Megan discuss ways to monetize a pending portfolio. Should purchasers have to pay anything for applications that haven't issued?
Chris and Megan review basics of the patent prosecution process - from issuance of a non-final office action to termination - and give basic pointers on where patent analytics come into play.
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.
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.