John MonocelloJohn Monocello is a principal and patent strategy specialist with GTC Law Group P.C. He leads projects developing patent portfolios aligned with the businesses objectives of clients. John advises clients whose businesses span a wide range of technologies including life sciences, medical devices, diagnostics, wearable technology, and robotics.
John’s work for his clients also includes performing due diligence work on patent portfolios, often in connection with high-value business transactions involving patent portfolios. A transaction may be, for example, an investment in a company or an acquisition of a patent portfolio. The patent portfolio, and the company's freedom to operate, are often key parts of the transaction so this due diligence is an important part of determining the value of the transaction.
A typical due diligence project can include reviewing dozens of patents. John uses PatentPlex by Patent Bots to facilitate this due diligence work. With PatentPlex, John can quickly orient himself within the portfolio, supplement his review of individual patents, and focus his time on substantive analysis work.
“During a due diligence project, I have PatentPlex open on my screen the entire time,” John said. “PatentPlex gives me a birds-eye view of the portfolio and gets me to where I need to be faster by letting me drill down on specific assets. I spend less time flipping through documents in the prosecution histories and more time doing the actual work of analysis.”
“A dashboard for organizing patent review and analysis.”
One of John’s first steps in a due diligence project is to orient himself with the patent families and their relationships to one another. PatentPlex provides the starting point for this exploration. PatentPlex shows a patent family tree and this allows John to quickly understand priority relationships.
The family tree is generated in seconds from public data sources and even includes PCTs and foreign patents. John can jump one from patent in the family to another by simply clicking on the patent in the family tree. The list of patents in the tree can also be exported to Excel with corresponding dates and numbers.
With the family tree established as a hub for exploration, John can start what he describes as the “fun” part of the process: assessing the claims and their evolution through the prosecution process.
The review of individual patents and claims is where the many tools available in PatentPlex really make a difference in John’s daily work.
“PatentPlex puts you ahead in the process,” John said. “It provides an interface to quickly jump into the patent you’re interested in, and to use the other Patent Bots tools to help review the claims. It allows you to get into the substantive review much more quickly.”
Four PatentPlex tools that John uses to investigate patents are patent proofreading, patent analyzer, claim diffs, and easy access to the image file wrapper.
“With PatentPlex, I get into the substantive review much more quickly.”
Patent Proofreading. From inside of PatentPlex, you can proofread the patent with just the click of a button. Patent Bots will retrieve the text of the patent from the USPTO and instantly show proofreading results that highlight possible legal errors in the patent. “Patent Bots proofreading identifies important legal errors in patents that are important to be aware of in considering the value of a patent portfolio,” John said.
Patent Analyzer. PatentPlex provides a tool called Patent Analyzer to make it easier for patent attorneys to read patent text. When reading, you can select any word or phrase with your mouse, and that text will be instantly highlighted throughout the patent. With this highlighting, John can select important claim terms, and easily navigate to portions of the specification using those terms to better understand the scope of the claims.
“In patent analysis, every word matters,” John said. “You want to see where those words occur, how often they occur, and in what context. Patent Analyzer is like a heads-up display that supplements my reading and review process. It helps me zoom in on the important parts of the patent very quickly.”
Claim Diffs. PatentPlex has a Claim Diff tool that makes it easy to see differences between any two sets of claims. You can select as-filed claims, claims as amended in OA responses, or issued claims. You can compare claims within the same patent or across different patents.
“Seeing how claims have changed during prosecution is an important part of understanding the scope of patent claims. Before PatentPlex’s claim diff this was a tedious process, and now it is just a few mouse clicks to get the information I need.” John spends less time on tedious work and more time using his legal skills to understand claim scope.
Image File Wrapper Access. PatentPlex also provides a list of documents in the image file wrapper (IFW) along with a link to quickly see a PDF file of each one. During his analysis of patent claims, John may determine that he needs to examine a document from the prosecution history, such as arguments made in an office action response. To see the document, John can retrieve a PDF right from PatentPlex. Before PatentPlex, John would need to navigate to PAIR or Patent Center to get the document, but with PatentPlex the process is much faster!
“When using PatentPlex, just about everything I need to know about a patent portfolio is at my fingertips. PatentPlex automates tedious and time-consuming task to make the work much more enjoyable. Even more importantly, the added efficiencies allow me to do more quality work in less time and provide better value to my clients.”
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