This page contains a Flash digital edition of a book.
IN THE SPOTLIGHT


“ADVANCED SEARCH FEATURES PROVIDE IMMEDIATE ACCESS TO PLACES IN THE FILE WHERE A PARTICULAR TERM IS USED; THIS TAKES FAR LESS TIME THAN GOING THROUGH A PROSECUTION HISTORY PAGE BY PAGE.”


Reviewing a file history is oſten a time-consuming, exhausting and resource-intensive process. Even if you’re dealing with a single patent, you still need to trawl back through the office actions, look at the subtle differences in wording of the various filings or revisions, and then make a judgement on its worth.


With Patent Workbench, Landon IP thinks it has the answer. David Hunt, chief executive of the company, says the product provides “an entirely new way” of looking at patent file histories. “Patent Workbench provides a patent practitioner with a high quality copy of the file history, but also dramatically improves productivity by offering enhanced navigation tools, making it easy to compare and analyse claims, and providing advanced search tools.”


Patent Workbench saves companies and attorneys a lot of time, but it also increases accuracy. One outside counsel recently said, “It gives me comfort that I have fully reviewed the file history prior to draſting an opinion. I don’t have the same confidence that every detail has been uncovered and reviewed when it is reviewed without the help of Patent Workbench.”


Rather than someone manually comparing different iterations of a specific claim, the soſtware does this automatically, allowing patent practitioners quickly to see how a


claim has evolved through every stage of the prosecution. Te soſtware also includes a robust comparison tool that provides visual indicators of words that have been added or removed.


Patent Workbench has many potential applications, not the least of which is assisting patent practitioners with claims construction: reviewing the wording of claims at different places in a file to determine the scope and meaning of the claims, their references to the patent specification, and what the examiner has found acceptable or not. Looking at how a term was construed throughout the prosecution offers insights into what exactly a particular patent might cover, how to write an application for a new patent in a similar technology, and how to litigate more effectively. Advanced search features in Patent Workbench provide immediate access to places in the file where a particular term is used; this takes far less time than going through a prosecution history page by page.


As Hunt says, “A patent applicant is permitted to be his or her own lexicographer, so knowing their intentions by effectively reviewing the prosecution file is vital. Today’s method of reading a file word by word is archaic and inefficient. Tere is no longer any reason for a chief legal officer to have outside counsel read a file history without using Patent Workbench.”


World Intellectual Property Review January/February 2012


51


Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29  |  Page 30  |  Page 31  |  Page 32  |  Page 33  |  Page 34  |  Page 35  |  Page 36  |  Page 37  |  Page 38  |  Page 39  |  Page 40  |  Page 41  |  Page 42  |  Page 43  |  Page 44  |  Page 45  |  Page 46  |  Page 47  |  Page 48  |  Page 49  |  Page 50  |  Page 51  |  Page 52  |  Page 53  |  Page 54  |  Page 55  |  Page 56  |  Page 57  |  Page 58  |  Page 59  |  Page 60  |  Page 61  |  Page 62  |  Page 63  |  Page 64  |  Page 65  |  Page 66  |  Page 67  |  Page 68  |  Page 69  |  Page 70  |  Page 71  |  Page 72  |  Page 73  |  Page 74  |  Page 75  |  Page 76  |  Page 77  |  Page 78  |  Page 79  |  Page 80  |  Page 81  |  Page 82  |  Page 83  |  Page 84  |  Page 85  |  Page 86  |  Page 87  |  Page 88  |  Page 89  |  Page 90  |  Page 91  |  Page 92  |  Page 93  |  Page 94  |  Page 95  |  Page 96  |  Page 97  |  Page 98  |  Page 99  |  Page 100