A rebroadcast of a recent webinar with BPN Host Chris Holt and Eric Zaiser, Patent Counsel at Google. Chris and Eric discuss thinking through the issues involved with balancing your relationship with outside counsel while taking ownership of strategic decisions related to your patent portfolio.

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 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.

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.

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?

Megan decides whether she would hire Chris as her patent attorney, based on his prosecution performance. Megan and Chris evaluate his allowance rate, office action, interview, and appeal statistics.

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.

Chris and Megan decide what to do with an application facing a new patent examiner: U.S. Application No. 14/828,744. Why is it so hard to get cases allowed by a new patent examiner, and what can patent prosecutors do about it?

Chris and Megan interview Katie Scholz, of Kelly, Holt, & Christenson, about how she uses patent data to improve her prosecution performance. Katie also explains how using data has improved her client relationships.

Chris and Megan review the prosecution history and examiner statistics for U.S. Patent No. 7,669,123, a very controversial patent that covers the Facebook newsfeed. Was it allowed on merit, or was the USPTO influenced by the identity of the applicant?

Chris and Megan review the prosecution history and examiner statistics for U.S. Patent No. 8,825,597, which covers the Dropbox technology. Based on the examiner's statistics, how likely was it for Dropbox to obtain this patent?