The success of a business depends heavily on the IP strategies it employs, and how often they are revised to suit the ever-evolving business objectives. While doing so, a business can incorporate various methods for bolstering their IP portfolio, especially patents. And one of the best methods for accomplishing this is by performing directed prosecution using specification charts.

The following article explains how specification charts can help a business to conduct directed prosecution in a cost-effective manner.

Overview

Before we discuss the process of directed patent prosecution, let us first learn about patent prosecution. Simply put, patent prosecution is the interaction between a patent applicant or his/her representative with the patent office regarding an application. This includes drafting, filing, and negotiating with the office to obtain patent protection.

An element of patent application that plays a critical role during prosecution is a claim, as it defines the scope of protection. It also plays an important part in proving patent infringement. Read on to know how claims provide conclusive evidence of infringement. To prove infringement, patent holders map claims or different elements in the claims to numerous features of a product. If all elements are not present in the product, only partial mapping is obtained. To convert this partial mapping into a complete mapping [Evidence of Use (EoU)], it is imperative to trim or modify the claims as per the product documentation under study. This entire exercise is called strategic or directed patent prosecution since you direct the prosecution to ensure that the EoU can be used to prove infringement by your adversaries.

Using a Specification Chart

Directed Prosecution is a high-value process that can be performed in various ways – most efficient being the use of a specification chart.

In simple terms, a specification chart is a mapping of the specifications against a product/service of interest. This chart is quite similar to an Evidence of Use (EoU) chart. The main difference between the two, however, is that the mapped elements cover the complete specification and not just claims in a specification chart. This chart essentially gives an overview of the elements that are mentioned in a product/service of interest. The only prerequisite is that the patent family should be kept open*.

*Patents with an open family are the ones that have at least one family member under prosecution.

How to Create a Specification Chart?

First, the features of an invention need to be identified. Since doing this requires familiarity with product offerings by competitors, it is mainly done by IP experts. Next, the embodiments (paragraphs) in the specifications defining the elements corresponding to the features of the invention are identified. Lastly, the identified embodiments are mapped to the information from product documentations.

How It Saves Cost

Patent prosecution is a costly affair. So, if there are any rejections during the process, the specification chart can provide insights into all the possible directions the prosecution can be steered to.

Most of the competing products/services are quite similar in features. Hence, mapping the specifications against the product with the most matching product documentation has a high probability of covering other competing products as well. Such an exhaustive mapping eventually helps in saving costs.

Solution Offered

Each element forms a basic building block and multiple elements can be combined to form a claim with higher infringement probability. Further, different scopes of claims can be drafted and each claim scope can be used to file a continuation application. Eventually, the patent family has robust claims and hence demands a higher valuation.

Final Thoughts

Directed prosecution is useful for companies of all sizes since it is one of the most advantageous methods to proportionately enhance the quality and valuation of patent portfolios. Besides creating robust portfolios, it also enables companies to direct the prosecution of their patents with least monetary input.

If you are a business that is looking for directed/strategic prosecution services, it is advisable to get expert guidance. Sagacious IP’s Strategic Patent Prosecution Service allows businesses to build a robust patent portfolio. Our team of experts identify the products that are extremely close in terms of the technology disclosed in a patent’s claim. Thereafter, the claims are modified to increase the ease of detecting infringement for the updated ones.

• Arshjot Gill (ICT Licensing) and the Editorial Team

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