Introduction

We recently sat down with patent attorneys who use ClaimWise most frequently, and they individually reported that ClaimWise has cut time spent on prosecution work by 50%.

But in which situations are they actually using it? Each team featured in this article uses ClaimWise daily, and they found it most valuable in 4 situations: summarizing office actions for clients, getting up to speed with external prosecution files, generating patentability reports, and exploring each viable path of argumentation before amending claims.

1. Summarizing office actions for clients

Patent attorneys use ClaimWise to draft client-ready summaries of objections and prior art citations. It takes a while to get familiar with new prior art and strategize about options to address objections. Instead of spending up to three hours interpreting examiner comments and finding relevant sections, they rely on ClaimWise to identify and analyze the right content across documents.

Eventually, all the analysis needs to be summarized in a readable client report, with detailed paragraph citations referencing the right files. We’ve learned how this task in itself is a repetitive exercise where case-specific content is plugged into a standard firm template.

With ClaimWise, initial analysis can be rewritten in client-ready format, customized to firm-specific or attorney-specific writing styles. This has reduced time spent from three hours to one.

2. Getting up to speed with ongoing applications

ClaimWise also helps attorneys get up to speed on unfamiliar patent prosecution files. This could be a new client’s portfolio that suddenly falls under their responsibility, or a set of ongoing applications from local counsel that they weren’t originally involved in. Instead of spending hours reconstructing the prosecution history and skimming through previous attorney-client communication, ClaimWise provides an automatic overview of objections, claim amendments, and previous responses by just entering the application number. It can even bridge language gaps by supporting all major patent office languages. This helps attorneys gain a deep understanding of complex prosecution files more quickly.

3. Generating patentability reports for dozens of search results

Another popular use case is to rank prior art references by relevance to a set of claim features. This is especially helpful in workflows where large sets of search results must be screened for novelty or inventive step/obviousness, such as patentability and validity checks.

For instance, in the patentability workflow, attorneys can quickly process 50+ search results for a patentability report. They start from the independent claim(s), upload all search results, and rank all documents by relevance. For the top 5 documents, a more detailed novelty analysis is generated with feature-by-feature analysis and verbatim paragraph citations. Attorneys shared that their reports improve in quality - not because they couldn’t assess relevance before, but because ClaimWise lets them reach the same conclusions in 20 seconds instead of 10 minutes.

4. Exploring every viable path of argumentation in a first office action

Finally, attorneys use ClaimWise as a sounding board when responding to office actions.

ClaimWise agents can draft detailed responses to examiner objections and surface arguments that might avoid the need to amend claims as filed. Suggestions often open up alternative angles or strategies they hadn’t initially considered. In first office actions especially, where there's more room to argue before narrowing claims, this approach helps attorneys secure the broadest possible protection for their clients.

Conclusion

ClaimWise has become part of the day-to-day workflow for many attorneys we spoke to. What stood out in their feedback wasn’t just the time saved, but the nuanced way in which those savings occurred. The overarching takeaway is that ClaimWise brings structure and clarity to a large set of complex files before, during, and after patent prosecution. This helps attorneys develop deeper case understanding faster and make more confident strategic decisions.

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