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The IP Counselor’s Checklist for Adding Value During Patent Prosecution

The IP Counselor's Checklist for Adding Value During Patent Prosecution

As the brand new yr begins, I’ve been reflecting on what makes patent practitioners extremely useful to their shoppers. In a previous IPWatchdog article, I asserted that one ought to aspire to follow as an mental property counselor—who leverages patent prosecution as one strategic software amongst many, slightly than narrowly conceptualizing his or her position.

What concerning the day-to-day acts of getting ready and prosecuting a patent software? Listed here are ten concrete steps IP counselors can take to advance their shoppers’ pursuits and distinguish themselves from their friends.

Draft claims of intermediate scope.

When getting ready a declare set to cowl an invention, some practitioners fastidiously draft aggressively broad claims, reasoning that shoppers ought to obtain the utmost obtainable patent safety. Nevertheless well-intentioned, such an strategy may be counterproductive.

Aggressively broad claims could also be seen with larger skepticism by patent examiners, might obfuscate what the practitioner actually believes is novel and nonobvious, and should set off examiner searches that yield prior artwork seemingly far outdoors the sector of the shopper’s invention. Extra prior artwork rejections, workplace actions, and extended examination might outcome, delaying issuance of claims of economic worth.

As an alternative of pushing for substantial breadth within the first filed patent software, IP counselors contemplate drafting claims of intermediate scope, based mostly on an understanding of the shopper’s enterprise and its meant use of a ensuing patent. Environmental or definitional limitations that make clear the creative context to the reader, with out materially narrowing a declare, can be utilized with success to expedite allowance. If warranted, broader safety then may be pursued in persevering with purposes.

Draft claims that focus on the proper infringer.

Equally, some practitioners solely draft claims that comprehensively cowl a shopper’s creative system or technique. This strategy additionally could also be problematic.

Though maybe simpler to digest on a primary studying, claims that cowl complete methods or strategies aren’t match for function in each state of affairs. For example, a buyer or different third celebration—not a shopper’s competitor—will be the entity training some or all the claimed elements of a system, or steps of a way. Absent direct infringement by a single entity towards which a shopper is prepared to implement its rights, an issued patent declare could also be troublesome, typically successfully inconceivable, to implement.

Accordingly, IP counselors rigorously craft claims that, if granted, will probably ensnare a single focused infringer. Claiming methods for coping with a distributed know-how involving a number of unrelated entities embrace claiming from the vantage level of the focused entity and not directly reciting sure system and technique features as a part of the claimed setting, slightly than as declare parts.

Architect the appliance specification to pave the best way for enforcement and licensing methods.

Software specs that do little greater than disclose a shopper’s articulated business embodiments might restrict a practitioner’s capability to develop extremely invaluable patent portfolios. It’s because the slender scope and specificity of the written description might not help as broad an array of claims now and sooner or later.

IP counselors discover technological and enterprise implications of a shopper’s innovation, and encourage the shopper to assume outdoors the field as properly. Armed with a richer, multi-dimensional perspective, they draft a specification that flexibly helps evolving declare units of various scope and focus, whether or not within the software at situation or in persevering with purposes. This will likely embrace disclosing further or various embodiments or purposes of the topic know-how, and contextualizing the invention towards a broader panorama. In doing so, IP counselors place themselves to extra successfully advance a shopper’s near-term and longer-term enterprise goals, together with potential licensing efforts.

Ask probing worth and precedence questions all through prosecution.

When drafting a patent software, practitioners sometimes interview inventors for essential particulars and context. After submitting, too typically they function predominantly beneath outdated assumptions, striving to prosecute the appliance to issuance with out query.

IP counselors understand that circumstances typically change after an software’s submitting. For instance, the shopper commercializes an alternate design, a competitor follows a divergent course, or the IP monetization market modifications. Thus, IP counselors deliberately query the shopper at numerous occasions throughout prosecution, reminiscent of when an workplace motion or discover of allowance is acquired. Consultant questions embrace:

  1. Has the claimed know-how been carried out by the shopper, or are there plans to take action sooner or later?
  2. Are rivals implementing, or more likely to implement, the claimed know-how? Can the claims be readily designed round?
  3. What’s the market alternative related to the claimed know-how?
  4. What enterprise worth does the shopper need a patent to ship on this case, and do the claims align with such enterprise worth?
  5. After a collection of rejections, is that this know-how value preventing for, or ought to the appliance be deserted in order that assets might be reallocated to different priorities?
  6. What are the views of engineering and product administration management on the worth of this software?
  7. Do the claims cowl a single potential infringer, and the fitting infringer?
  8. Based mostly on the shopper’s innovation roadmap, aggressive intelligence, or noticed or predicted business developments, ought to a unbroken software be filed and stored pending as a car for IP asset improvement?

By proactively eliciting solutions to the above and different related questions, IP counselors contribute to a suggestions loop that commonly exams underlying assumptions and helps adapt prosecution technique in order that assets are directed to maximise the shopper’s return on funding. Such an strategy enhances the shopper’s efforts to pursue and keep IP of demonstrable worth. Certainly, regulation agency practitioners and in-house IP counsel can collaboratively implement a framework to collect and act upon inputs acquired.

Craft succinct communications to shoppers.

Patent attorneys, patent brokers, and different IP professionals are revered by many purchasers for his or her command of particulars. Nonetheless, communications that include superfluous particulars, and that fail to obviously spotlight what the shopper basically must know or act upon, promote a much less strategic view. They swallow up valuable bandwidth that shoppers in any other case might dedicate to higher-level technique.

IP counselors thoughtfully assemble communications with precision, conciseness, and a relentless give attention to key points. In consequence, they elicit significant inputs and selections extra shortly and are seen by shoppers as drawback solvers who expertly and effectively assist the shopper acquire beneficial IP.

Converse with shoppers throughout prosecution.

IP practitioners generally implement processes involving the sending of detailed reporting communications, adopted up by successive reminders to unresponsive shopper recipients. Unaccompanied by human interplay, such processes can degenerate into so-called counseling by e mail, runaway reminders, and last-minute filings.

An IP counselor dealing with a patent software rises above course of. She or he acknowledges the significance of fostering actual dialogue with shoppers and takes a practical strategy to drive significant decision-making.

Draw from a various palette of instruments for advocacy.

Sure patent prosecutors deal with nearly all patent purposes, and conditions arising throughout prosecution, in the identical approach. For instance, when confronted with a remaining rejection, their perennial answer is to file one other written response together with a Request for Continued Examination—even when earlier RCEs have been filed—or to attraction the case by copying and pasting arguments already introduced. Likewise, they don’t avail the shopper of expedited examination procedures in critically essential instances that would profit from earlier patent issuances.

In distinction, IP counselors make the most of many various instruments of their position as shopper advocates. Such instruments allow them to get difficult instances allowed, get instances allowed extra shortly, or assist shoppers perceive as early as potential that desired material just isn’t doubtless patentable. Exemplary instruments embrace:

  1. concise, cogent written argumentation;
  2. examiner interviews;
  3. telephone calls to supervisory patent examiners tactfully requesting intervention and steerage;
  4. evidentiary declarations;
  5. persevering with purposes;
  6. analytics software program; and
  7. USPTO packages and initiatives.

Be a sensible shopper to save lots of the shopper cash.

On behalf of shoppers, practitioners incessantly interact third-party suppliers of prosecution-related providers, comparable to patent drawing, looking, translation, and submitting providers. Related fees, or disbursements, are paid by shoppers as passthrough fees. On a per software foundation and within the combination, these prices might be substantial.

As such, in choosing and managing third-party suppliers, IP counselors search for aggressive pricing and top quality. Appearing as stewards of shopper assets, they diligently monitor present suppliers and by no means hesitate to shift to various suppliers when advisable.

Carry on prime of scope creep.

In a world of finite assets, unexpected or unbudgeted patent prosecution prices seldom are welcomed by shoppers. Such prices could also be attributable to scope creep occurring at numerous junctures. As an example, when interviewing inventors to organize an software, a practitioner might uncover that the scope of the invention is broader than mirrored within the invention disclosure, encompassing a number of creative ideas. Or, within the context of revising a draft, she or he could also be requested by inventors to include further embodiments or different info that materially exceeds the initially contemplated scope for the appliance. And through prosecution, the complexity of the know-how, the quantity of prior artwork cited, and the examiner’s rationale for rejections might require that the practitioner make investments vital effort and time to adequately analyze and tackle the problems introduced.

IP counselors proactively assess challenge scope, together with materials offered by inventors and points raised by examiners, earlier than delving into the duty at hand. Moreover, they maintain an in depth eye on the time labored by workforce members on tasks. Upon figuring out that agreed budgets or estimates doubtless can be exceeded, they promptly notify the shopper to debate an applicable path ahead.

Proofread your work.

Patent purposes, workplace motion responses, and different practitioner work product could also be learn and interpreted by a various viewers, together with colleagues, shoppers, patent examiners, administrative patent judges, rivals, potential licensees or acquirers, judges, and juries. Embedded errors stemming from a practitioner’s eagerness to get work out the door might distract readers, tarnishing in any other case wonderful work product. Some errors might complicate interpretation by the reader, delay prosecution, and even influence patentability or enforceability.

For these and different causes, IP counselors take the time to proofread their work earlier than releasing it to others, in search of to attenuate substantive, grammatical, and different errors.

By making use of the above steps when getting ready and prosecuting patent purposes, IP counselors are more likely to safe higher-impact patents and construct stronger, extra useful relationships with shoppers.

This text displays my present private views and shouldn’t be essentially attributed to my present or former employers, or their respective shoppers or clients.


Picture Supply: Deposit Photographs.

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