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Welcome to theNovember issue of the LexisNexis Intellectual Property InfoPro eNewsletter!


AIA Best Practices: A Holistic Approach to Patent ProsecutionGettyImages-821018504

A lot has changed since the America Invents Act (the “AIA”) switched up the United States patent system from a “first-to-invent” to a “first-to-file” system back in 2013, and that includes some of the most basic advice patent practitioners provide to their clients.

Pre-AIA, it was best practice to first conduct a thorough patent search, identify what the patentable invention is most likely to be as described in a patent application, take time to process the information and make sure things are in order, and then take the time to follow a well thought out patent application. Today, we see inventors rushing to the patent office to win the first-to-file race. However, because a patent is not malleable or subject to augmentation after it has been filed, patent attorneys and their clients must quickly develop a coordinated strategy to file a comprehensive patent application.
 

Spotlight On   Research Tip
Setting the Tone of Prosecution with Patent Analytics
 
There is no perfect formula for prosecuting a patent, but there is plenty of information out there that can be used to help anticipate a patent examiner’s behavior.

With accurate predictions, patent applicants can strategize and take actions to increase their chances of being issued a patent. However, as prosecution proceeds, the number of options available to a patent applicant dwindle, which is why it is important for patent applicants and patent professionals to set the tone early for the best results.

Three things to think about include: 1) outcome variability, 2) understanding your USPTO patent examiner, and 3) setting the tone.
 
  Five Time-Saving Tips for Patent Searching Webinar

Learn how LexisNexis TotalPatent One® can help you save time and effort. With 107 authorities you can quickly and easily find prior art, examine portfolios, navigating large datasets efficiently with filters and export custom reports in several format options.

In this webinar, you will hear five tips on how to use this cutting edge patent research tool to:

  • Leverage the TotalPatent One® Object to quickly craft a search
  • Save time by accessing the 107 authorities in TotalPatent One that eliminates the need to visit multiple databases
  • Use custom export options to more efficiently create reports
 
Webinars
How China is Changing the Global Patent System WebinarGettyImages-545100290-1
Tuesday, December 3, 12 - 1 P.M.

The massive volume of filings at the Chinese Patent Office exceeds the filings of the next four most active patent offices combined. This filing surge in China signals a rapid shift to China as the center for the leading-edge technologies that will enable the Fourth Industrial Revolution.

Join us as Gene Quinn hosts a discussion on how China will fundamentally change the global IP system and what practitioners and businesses need to be doing to prepare for this shift in the patent and innovation center of gravity. Joining Gene will be Rob Sterne, founding director of Sterne Kessler Goldstein & Fox.

They will discuss:
  • How Chinese filings constitute a massive trove of global prior art that will dominate the global prior art library within a few years.
  • How the Chinese government has been incentivizing and subsidizing patent filing and patent fees.
  • Strategies for confronting the language barrier now so as to not be left in the dark with respect to the new global prior art landscape.
Register now >> 
 
 

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