I find ex parte appeal analytics at the USPTO, specifically from LexisNexis PatentAdvisor, to be the most straightforward and informative patent prosecution analytics when it comes to searching language in patent prosecution documents and the resulting impact.  Reviewing patent analytics for language used in Office Actions and Responses to Office Actions can be interesting, but … More Does QAS involvement impact PTAB ex parte appeal win rate?

I frequently like to hedge my bets while prosecuting patent applications before the USPTO.  If an examiner is arguably wrong in rejecting claims based on the prior art, I will often suggest to my clients to argue the rejection without amending the claims, but also to add new dependent claims that distinguish over the cited … More The value of adding new dependent claims during patent prosecution

Please check out my article on IPWatchdog regarding whether arguing that the Examiner has not established a prima facie case of obviousness is an effective strategy according to patent analytics from LexisNexis PatentAdvisor. https://www.ipwatchdog.com/2022/10/05/using-analytics-assess-effectiveness-common-patent-prosecution-practices/id=151863/

A common argument used by patent attorneys and agents during patent prosecution at the USPTO is that a reference teaches away from the claimed invention. This argument is used to traverse an obviousness rejection (side note – teaching away does not apply to anticipation rejections), which is the most common rejection from the USPTO. For … More Do not fall into the teaching away trap