How to Scale Patent Prosecution with Con ...

How to Scale Patent Prosecution with Connected Innovation Intelligence

May 03, 2022

 

Although intellectual property is at the heart of every decision made by organizations around the world, protecting, monetizing, and commercializing IP assets is a time-consuming and costly process. In this article, we explore 4 Connected Innovation Intelligence tools that enable patent attorneys to scale patent prosecution.


Obtaining a patent is a time-consuming, costly, and often complicated process. In order to be successful, patent attorneys need to understand the innovative aspects of an invention in as little time as possible to mitigate risk, make IP recommendations, and justify high fees.

Once a patent is granted, the work is not done. Instead, patent attorneys will monitor competitor activity and protect the patent from infringement. Naturally, time and cost are crucial to ensuring IP professionals continuously meet the demands of their clients.

In this article, we explore 4 Connected Innovation Intelligence (CII) tools that can support your IP journey.

Tool #1: Portfolio View

Using an excel spreadsheet to manage a patent portfolio is like waddling through an ocean with a canoe. A spreadsheet cannot keep up with the tide of analytics needed to effectively prosecute a patent application or to manage a patent portfolio — neither can email trails.

Fortunately, with CII, patent attorneys can leverage a portfolio view. This provides a snapshot of the patent and includes its title, number, trademark, and foreign family. It also shows, at a glance, the maintenance costs and the due dates for subsequent payments.

The advantage of this over a spreadsheet is massive. Not only does this present information in an easily digestible format on one page, but it also provides you with the necessary details to discuss patent portfolios with your clients at any time. Lastly, the portfolio view will help you identify trends in foreign filings and justify costs.

Tool #2: Claim and Description Comparison

Before submitting a patent application, you will be interested in knowing whether a similar patent exists and the extent of its similarity with the proposed application. Also, in a potential infringement claim, you will often need to compare the scope of two patent applications registered in different countries.

With claim and description comparisons, you can compare the scope of claims of two patent applications of the same family. Plus, you can compare abstracts, images, and PDFs of patents. The comparison tool uses a semantic search algorithm to deliver a similarity score.

Tool #3: File Wrapper Alert

Similar to the USPTO’s file wrapper with a patent’s application number, PatSnap’s file wrapper alert lets you monitor the progress of a patent application from the application stage to the grant of the patent. It presents the step-by-step progress of a patent application and notifies you of office actions, new documents, and arguments or responses in an opposition.

This tool may also be used to monitor the progress of potentially competitive patents which, if granted, would threaten your client’s position in the market. You can proactively notify your client and jointly build a strategy ahead of time.

Furthermore, if your patent application is denied, file wrapper will include the reason for rejection by the examiner. This information may be useful if you intend to file in the same area of technology.

Conveniently, you can give the alert a name, decide who the alert is sent to, their frequency, and if it is to be sent to you where there are no updates. This tool can be used to set alerts for U.S., European, and Chinese patent applications.

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Tool #4: Smart Image

To understand the key aspects of an invention, you need to study its accompanying images and interpret them using figure numbers.

With the CII smart image tool, you can bypass this. Instead of going through the patent application to manually label the elements of an image, with the smart image tool the images are automatically interpreted and labeled.

The tool also produces an image table that corresponds with the patent document. With this, you can cross-reference the images with the description in the patent document. Once you click on an element, it pops up in your patent description.

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Tool #5: Bringing It All Together

Equipped with the right tools, patent attorneys can proactively add value to clients, while managing costs and time. PatSnap’s Connected Innovation Intelligence tools make it easier for patent attorneys to increase search efficiency, drive collaboration, and make timely, confident IP decisions.

Want to see how these 4 tools can make your work easier? Request a demo of the tools here or listen to an attorney’s experience using the tools here: Innovation Intelligence for the IP Attorney

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