Directed Prosecution: Generating Future Value from Your Patent Portfolio – Webinar

Webinar Topic: Directed Prosecution: Generating Future Value from Your Patent Portfolio. Key Points to be Covered in the Webinar Session:

  • Traditional approach vs. Directed prosecution
  • Developing a patent portfolio organically and strategically
  • Key parameters to consider while doing directed prosecution
  • Key insights generated from the above analysis of directed prosecution and using them to make business decisions


Key-note Speakers

Arshjot Singh Gill, Manager – ICT, Sagacious IP
Rachita Goel, Asst. Manager – ICT, Sagacious IP

Anchored By

Vaibhav Henry, EVP – ICT Licensing & Searching, Sagacious IP

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More details about this Webinar:

In the current times, companies are looking to expand their patent portfolios relatively quickly and inexpensively. To achieve this, all IP leading companies use directed prosecution and continuation filings.

Directed prosecution helps companies achieve multi-prong benefits in terms of patent protection that covers a market or technology more comprehensively and is potentially less susceptible to invalidation in litigation. At the same time, flexible timing for filing continuations allows companies to file continuations based on product developments, market evolution, and the budget. Consequently, at a patent level, the directed prosecution and continuation applications can be used to boost the patent portfolio and provide additional patent protection for the invention, thereby increasing the value of the IP asset.

Webinar Transcript:

Abby Woods speaking- All right, I think it should be the right time, because we’ve got plenty of people. So, I would like to welcome you all to the successful webinar series.

This is Abby Woods, welcoming you all again. I’m the Global Key Account Manager at Sagacious IP and today’s session is, basically, on the topic Directed Prosecution: Generating Future Value from Your Portfolio.

We have also had webinar topics previously, as well. I mean, there were successful topics series. We’ve talked about Best Practices in Innovation Management and talked about F3 analysis as well.

We’ve talked about Portfolio Pruning as well in the series and we had talked about Monetizing Patents last week as well, which was Selling Vs.  Licensing, Core Vs. Non-core.

And as I said earlier, today’s topic is Directed Prosecution: Generating Future Value from your Portfolio.

Now, before we go ahead and obviously introduce this topic and the esteemed speakers on our session today, I’m delighted to welcome all the participants from different countries.


And, as I always say, your participation is a wonderful encouragement to the efforts that we’re making to raise awareness and spread knowledge that has been honed by our company ‘Sagacious’ over several years of working with managers, R&D organizations, IP departments, and IP law practices, as well.


So, our first speaker of the session, before I go ahead and further introduce without any further ado, I would like to introduce Arshjot Singh Gill. He is the Manager- ICT Licensing here at Sagacious.

And, just to give you an overview, we at Sagacious, we are a 350+ professional firm and we specialize in global patent information searching, patent licensing & monetization, and have been in the business of patent search for 14+ years.

Now, Arshjot, as you can see on the screen, he is patent licensing expert. He is Computer Science and IT Engineer with 10+ years of experience in patent industry with landscape expertise. And is also proficient in licensing, and searching, as well. He has a lot of experience in computer science information and communication technologies, as well.

So, once again, let me just introduce Arshjot. Welcome to the webinar Arshjot!

Arshjot Singh Gill speaking- Hi Abby, thank you for having me on the webinar.

Abby Woods speaking- Fantastic! Welcome you as well.

We also have another team member of ours; she is also with great expertise. Her name is Rachita Goel. And, she’s assistant manager, ICT-Licensing at Sagacious.

Her core responsibility is, basically, to develop a strong client base and work dedicatedly for a Fortune 500 company and her expertise is in invalidity patent licensing and infringement and also in different Cloud domains, including virtualization and networking technologies as well. And she’s proficient in content delivery networks; takes care of cloud security, streamline services, IoT database management and data analytics, as well. So, that’s quite a repertoire of experience she has got.

Welcome to the webinar, Rachita.


Rachita Goel speaking- Hi Abby and thanks for having me on the webinar.

Abby Woods speaking- Fantastic!

And as usual, we have our solid guide and the backbone of Sagacious here as well with us, Mr Vaibhav Henry. He, basically, heads the ICT Licensing Team and is joining us for the webinar as well. He will be taking the Q&A sessions as well for us.

So, welcome Henry.

Vaibhav Henry speaking- Thanks Abby! Thanks for having me, pleasure to be here!

Abby Woods speaking- Fantastic!

Now, before we start off with the presentation today, let me ask our speakers for the initial remarks on Directed Prosecution: Generating Future Value from your Portfolio.

Let’s start with Arshjot. Please go ahead Arshjot.

Arshjot Singh Gill speaking- Directed Prosecution, basically, originated as a step to generate value for future mark patents.

Future mark patents are something that we covered in the F3 analysis and, generally, future mark patents are the ones which have been recently filed patent applications or the patents that have at least one family member that is under prosecution.

So, Directed Prosecution, as the name suggests, is a way to direct the prosecution of a patent. Wherein, you direct a future mark patent to become a fundamental patent.


Fundamental patent is something that is core to your business. So, anything that is core to your business would definitely have a higher market value since your competitors would most probably be doing something similar and to provide similar features to their customers as well.

So, Directed Prosecution is, in short, a sure-shot way to convert your patents into fundamental patents with least monetary input with a stronger patent portfolio of being a by-product of this exercise.

Abby Woods speaking- Alright! Thank you.

Let’s go ahead with Rachita and see what she thinks about this particular topic.

Rachita, go ahead please.

Rachita Goel speaking- Like just Arsh mentioned, the main use of infringement analysis is generating monetary value from the patent. And, the primary method of doing so is by strategically prosecuting the open applications or the open families.

What exactly do we mean from Strategically Prosecuting?

From strategically prosecuting, we want to say that you keep a check on the competitive products, on the competitors and the current market and draft claims such that they have a better chance of proving infringement by the competitors.

This way, IP departments design their portfolio development strategy based on the claim suggestion input. So, claim suggestion input like based on the current market research, like which company is doing what. So based on suggestion input, the portfolio development strategy is designed.

And overall, it reduces the prosecution cost as well and it helps proving infringement once the tailored claims are granted. So, like future cases are then converted into fundamental cases. Thus, we can say that Directed Prosecution is a method of generating future value from the portfolio.

Abby Woods speaking- Well, thank you once again, Rachita. I mean, this basically gives us an overview of what the topic will look like as well and thank you all for setting the context for this webinar.

Also, before we move ahead, just a little housekeeping that if you have any questions during this presentation, it’s basically for the attendees, you all can share your questions via the GoToWebinar question box on the right side of this presentation window and we will pick up on those questions and ask them to our speakers after they finish their brief talks.


Now, there’s a special announcement as usual. We do these on and off on our webinar series. Sagacious team is offering a Direction Prosecution for one patent to give you a brief idea of how we can improve the quality and strengths of a patent to the participants of this webinar. The participants can drop us an e-mail, obviously, later at and we will share with them as soon as possible.

Now, without further ado, I would like to go ahead and get started with the main part of our presentation. For that, let me invite Arshjot to take us through the first part that helps us understand the first section of the topic. Over to you, Arshjot!

Arshjot Singh Gill speaking- Thank you, Abby. Thank you for the great introduction.

So, today’s presentation will, primarily, be covering different sections or basically different parts of how to do a Directed Prosecution; the first being why to go for Directed Prosecution. Then, we cover what is a Directed Prosecution. And then, how to do a Directed Prosecution and when can you do Directed Prosecution.

Post that, we have a few case studies which we will take you through and that will, kind of, help you understand the different scenarios in which you can use Directed Prosecution.

Why should we go for Directed Prosecution?

So, first of all, why should we go for Directed Prosecution?

The current COVID-19 situation has, kind of, caused an economic slowdown which has put different budget constraints over different companies. On top of that, the global competition is something which is also increasing.

So, because of all this, there are different expectations that have been changing and because of which everybody wants to have maximum gain with the least amount of inputs. So, this is something which links to our previous webinar that is F3 analysis in which you kind of distribute the patents into 3 different primary buckets which are fundamental, future and fringe. Today, we’ll be covering the patents, which have been categorized into the future.

So, in case, if you haven’t done an F3 analysis, that is not an issue at all. Directed Prosecution is something which will generate value for everybody.

For this exercise, you can refer to your recently filed patent applications and granted patents which have open family members because the basic idea is to convert all of these into fundamental patents which will lead to a stronger patent portfolio.

And hence, you can protect your inventions and basically stop others from circumventing your patent as well.

So, these 3 are the primary reasons why most of the Fortune 100 companies do this.

Like, Directed Prosecution is a very prominent exercise with most of the Fortune 100 companies or, primarily, the top 100 companies, most of them, almost 80 to 90% of them, they do some sort or the other kind of Directed Prosecution.

What is Directed Prosecution?

So, next onto what is Directed Prosecution.

First of all, let me give a brief overview of what is Prosecution.

So, when an inventor and the representative draft a patent application and file it with the patent office for the examination; thus, any communication that happens in between, that is before the patent is granted, comes under the purview of prosecution.

So, during the prosecution, one of the most important parts of a patent is the claims because the claims are the ones which define the scope of the protection, which define the areas of technology where you can prevent others from practicing your invention.

Even in case of infringement, the claims are the ones which play the most important part because claims define the scope of the coverage. So, whenever you’re trying to prove an infringement, you try to map those set of claims, the different elements in the claims to the different features in the product.

Let’s say, once you try to map the different elements in a claim to a product, let’s say, all the elements are not present in the product because of which you end up with a partial mapping.

How to convert partial mapping into a full mapping?

So, How to convert that partial mapping into a full mapping which is also known as Evidence of Use, which is evidence to prove infringement?

To do that, what you need to do is to trim the claims of it or probably modify the claims of it with respect to what is mentioned in the product documentation. And, this complete exercise is something which is known as Directed Prosecution. Wherein, you kind of direct the prosecution in order to ensure that the end result, the EoU that you produce is something using which you can prove infringement by your competitors as well.

So, for Directed Prosecution, I’ll briefly take you through what are the different components of patents for direct prosecution. We generally consider recently filed applications and granted patents with open family members.

Both of these have different components; the first being the title of the patent which is a brief overview or just one-line description of what the invention is about.

Then, we have an abstract. Abstract is kind of a description of the invention in one paragraph.

Apart from that, we have specifications. So, specifications are another important part of the patent.

So, within specifications, there are 3 different parts.

One is the background which defines what was existent before the invention.

The second part is the drawings or the figures. So, basically these describe your invention graphically. For example, if your invention relates to something tangible, these figures could be the diagrams or basically different kinds of views for that product.


Generally, in case of software patents, patents which relate to different methodologies, these figures are basically the flow diagrams or the flowcharts, which describe how the invention is being carried out.

The third section is the detailed description.

Detailed description is something which covers all the different modes, all the different embodiments using which the invention can be practiced.

So, detailed description is something which is also very important.

Next, the most important part of the patent is the claims.

Claims can generally be divided into two different types of claims, one is the independent claims and the second are the dependent claims.

Independent claims are the ones which will hold independently on their own and dependent claims are the ones which refer to the independent claims and add some more limitations to those.

In case, if you want to prove infringement, at least one independent claim should be completely mapped onto a competitor’s product.

So, whenever you file a patent application, you pay a filing fee, that filing fee, by default, covers specifications up to the length of 133 pages if you’re doing an e-filing and length of 100 pages if you’re filing it in a hardcopy or on paper.


Apart from that, the second restriction when you file a patent is you can file 3 independent claims and a total of 20 claims. So, this is something which is covered in the filing fee. Anything over and above this, and then the applicant is liable to pay additional fees as well.

So, to take an example out of this; in case, if your patent has, let’s say, 2 independent claims and a total of 20 claims, you don’t need to pay anything additional. But, in case, if your patent has 4 independent claims but the total number of claims do not exceed 20 then, you are still liable to pay some additional fees as well.

So, this, 133 pages of description or a minimum of 100 with description, and a total of 3 independent claims + 17 dependent claims is something which can give you a good amount of protection.

Basically, for a Directed Prosecution, the first step that we need to do is to refer to the claims which define the scope of the protection.

Define the scope of protection, basically, means that whatever you have claimed would be something that needs to be present in the competitor’s product or, basically, proven to be there in the competitor’s product but claims by themselves are just barebones structures. You can think of it like a skeleton. The flesh and the muscles on the skeleton are put with respect by the specifications.


Specifications are something which becomes a very important part in case if you’re trying to prove infringement because whatever is covered in the specifications would be how the terms defined in the claims would be interpreted.

For Directed Prosecution, generally, if you want to direct a prosecution, you would have some or the other competitor in mind. Based on that, if you try to map the claims of the patent to the competitor’s corresponding product and, in case, you land with a partial mapping of which not all elements are present in the competitor’s product.

So, based on this partial mapping, you can divide your elements in the claim into different sections. One, which are claimed elements which are evident in the mapping. And, then the other would be claimed elements which are not evident in the mapping.

For Direct Prosecution, the elements which have been claimed and are evident in the mapping, though that is something which is good and we don’t need to touch those.

The second part which is claimed elements which are not evident in the mapping. Those are the ones that we need to look for or probably, change or do something about, so that we can end up with a complete map.


So, for the claimed elements which are not evident, we primarily need to check 3 different things; whether there is Intent to Use in the product, what the claim scope is and how the product works is something which is covered in the specification.

Based on that, we can define a different kind of action based on the outcome of these 3 steps.

Basically, for these 3 steps there are two different scenarios that we’ll be covering today.

In the first scenario, there is intent of using the product. The claim scope is a bit narrow and there are additional limitations.

This implies that there are few elements in the claim for which there is no corresponding documentation in the product but my specifications cover how it’s done in the product. But my claims do not.

So, in this case, there are 2 different things that you can do.

One is to rephrase the different elements of steps. The ones which are not evident in the mapping or, basically, you can either rephrase those elements or you can remove those elements but care should be taken that you should not lose the essence of the invention. So, that is, the novelty of the invention is something which should not be removed because then that is something which deviates the patent from invention itself and hence, you need to check for Intent of Use as well.


The second scenario in this is, basically, there is Intent of Use; the claim steps and elements are not present in the product.

That is, some alternatives are something which is covered in this part of the patent specifications.

For these, you can do, again, two different things; add those elements or steps. Basically, change those elements or steps in order to ensure that the final claim that you have is something which is completely present in the product.

So now, let us take up the first scenario in which the Intent of Use is present, the claim scope is narrow and basically there are some additional limitations which are present in the product.

But, my patent specifications cover everything with respect to how the product works.

For this, the first thing that we need to do is to analyse the patent specifications and then identify the elements which are present in the target product.

Once we identify these elements which are present in the patent product, we can draft claims using those set of elements in a way that we do not lose the novelty or the essence of the invention. And, as I mentioned earlier, there are two things that you can do corresponding to these elements.

You can either remove elements or basically rephrase elements.


So, in case of removing elements, what you can do is that in order to broaden the scope of the claims you can probably remove some of the elements in a way that you do not lose the novelty of the invention and the target product is something which infringes on those set of claims.

The second thing that you can do is rephrase.

Rephrasing is something which is generally done to get the claims more in line with respect to the product.

It could be possible that the claims in your patent mention a different terminology than the patent but the specifications might cover all the different terminologies, which ideally, they should.

So, in those scenarios, you can always go back and rephrase those elements in order to ensure a tighter mapping and hence, a better chance of proving infringement.

Once you have drafted and filed these new set of claims, you’re on a path to create a complete EoU which will help you prove an infringement.

And, once that is done, the patent is something which has become a fundamental type and, hence, strengthening your patent portfolio.

Next, we take up the second scenario; in this the Intent of Use is present. The claim steps and elements are not present in the product but how the product works is something which is covered in the patent specifications.


So, the initial steps are similar in which you analyse the patent specifications but in the second step you try to identify alternative elements.

Alternative elements, which are present in the product, might not have been claimed earlier. But, these elements are the ones which are not present and cannot be the elements which were considered as novel.

So, here, you try to identify those alternative terms which are present in the product and are present in the patents specification and, then, you again try and draft different set of claims using these alternative elements without losing the essence of the invention.

Using these elements, you can, again, do 2 different steps.

The first being, how you can add those elements and steps to the claims or you can change the already existing elements or the steps in the claims in order to ensure that you end up with a tighter mapping so that you have a better chance of proving infringement.

Once that patent gets granted, you can always complete or you can always make a complete EoU which is a complete evidence of use which can help you prove an infringement in the court.

So, once you can create the complete mapping  for a patent that patent becomes part of fundamental patents and hence, this is how you can convert a future patent to a fundamental patent and strengthening your patent portfolio on the way.

When can you file a continuation?

Next, we’ll quickly cover, when can you file a continuation?

Generally, Directed Prosecution is done with respect to continuations. So, I’ll also cover why you need to file a continuation and not continuation-in-part. 

So, there is a very subtle difference between continuation and the continuation-in-part. In case of continuation, patent specifications which we disclosed in the previous applications remain the same. There is no change to the current specifications. The only change that you do, in this case, is you file a different set of claims.

Whereas, in case of a continuation-in-part, you can add to the specifications but the negative side to that is once you add something to the specification, you lose the earlier priority.


Let’s say, you add something new to the patent specifications at a later date and your independent claim refers to those set of elements, for those specific set of elements, it will be the later date on which the new specification was added which will be considered as a priority date for that specific part. 

This, kind of, creates a scenario in which the same set of claim has 2 different priorities. And, generally, in case of continuation-in-part, if you’re doing it in hindsight by looking at the product, since that documentation would already be present somewhere or, basically, present available to the public, so that could also be the grounds in which these new set of claims might not get granted.

Hence, continuation is something which should be focused upon and this puts even more focus on including the best set of specifications and trying to keep those specifications as broad as possible.

So, for example, in case if you’re filing a patent for navigation; navigation is generally done for all automobiles but these days navigation is something which is also becoming important for drones.


If you’re filing a patent for navigation, I would definitely suggest that to ensure that the specifications cover different scenarios, including the drones as well. That is something which will enable you to file a new set of claims in the future which will cover all the different scenarios that are present without losing on the priority date.

Next, with respect to timeline whenever you file a patent application, a patent application is, generally, published after 18 months. During this phase, the patent is considered to be under prosecution and you can always file a continuation.

The next step is from the filing within 3 years, generally, the Patent Office issues a Notice of Allowance.

So, this is also the timeframe during which you can file a continuation as well because, again, during this timeframe, the patent is still considered to be under prosecution. Once the patent office mails the Notice of Allowance, you generally have 3 months of timeframe to file the issue fee and after which the patent is issued. Those 3 months are also the timeframe during which you can and you should file a continuation, for sure.

Often, because once a patent is granted, it’s not considered to be under prosecution. And, hence, you lose out on filing a continuation for the patent.

But this is not the end of the line. There are a couple of ways that you can again put the patent application into prosecution.


One of those is, basically, filing of broadening re-issue. You can file a broadening re- issue within 2 years after the patent has been issued.

So, broadening re-issue is something that you go back to the patent office and you say that my first set of claims were not as broad as they could have been and I want to file a different set of claims. And, the Patent Office will grant that application in once and basically, you will be allowed to file a new set of claims which would be broader than your initial application. But, this is something that you can do within 2 years from the date of issue of the patent.

The second is you can file the narrowing re-issue.

In case of narrowing re-issue, you can file that anytime during the complete lifespan of the patent, which is generally 20 years.

But in this case, the latest set of claims would be something which would be narrower than your initial patent application. But, what any of these do is that they  put the patent back into prosecution and it is during this prosecution, before the patent is re-issued, the patent family is considered open because the patent is under prosecution and this is a time you can file a different continuation application as well apart from these re-issues.


Apart from these timelines, there are 2 other things that you can definitely do.

One is you can file for a request for continued examination. So, as the name suggests, the applicant can ask the patent office to continue the examination for the patent application. What this does is that it gives the applicant almost 3 months of timeframe during which the applicant can file a new set of claims.

The second strategy that you can do here is you can revive an abandoned application in the family. So, in case, if any recent patent application was abandoned due to any reason, you can always state your reasons and you can always go back to the patent office and state your reasons why that application was abandoned. And, once the patent office says, OK go ahead, that abandoned application is now open and that’ll go into the prosecution.

During this stage, you can file a different set of claims for this abandoned application and since now, it is under prosecution, you can file a different continuation as well.


These two are considered alternative strategies apart from the timelines when you can file a continuation.  

Out of these two, the request for continued examination, which is something very important and this is something which is very commonly used. So, for example, once the Patent Office issued a Notice of Allowance, you know what the Patent Office considers as novel. So, you can go ahead and file a request for continued examination; that will give you an extended timeframe of 3+3 months. During this timeframe, you can file a different set of claims as well which would have the same set of novelty which is based upon which the Notice of Allowance was given. And hence, that will give you a sure-shot way to get a patent granted.

Now, let us move forward for the case studies.

Over to you, Rachita!

Case Studies

Rachita Goel speaking- Thanks Arshjot for briefing about the Directed Prosecution and the scenarios that we can consider while directly prosecuting the applications.

Okay, so to give more clarity on the Directed Prosecution, allow me to take you all through the case studies.

So here, in the case studies, we will be discussing 4 case studies.

First is changing the claim element, like performing Directed Prosecution by changing the claim element.

Second is performing Directed Prosecution by adding new claim element.

Third is Directed Prosecution by rephrasing the claim element and the last one will be Directed Prosecution by removing the claim. And, so on.

Before starting the case studies, I would like to mention that it is not necessary that we only need to perform Directed Prosecution by just changing the claim element. We can mix and match or combine any of these scenarios so that we have a narrow infringement claim or we have a claim such that it becomes fundamental in future.

Changing Claim Elements -Case Study

Now, let us start with the first case study that is changing the claim element.

So, what is changing the claim element?

We change the claim element which is not novel.

How do we determine that the particular claim element is not novel?

We determine that it is not novel based on the file wrapper analysis. We analyse file wrapper and then we identify that which claim element seems to be the novelty of the patent.  And also, like, the main objective of performing the Directed Prosecution is that we have higher chances of creating mappings in future. That is the main agenda of Directed Prosecution.


How is Directed Prosecution performed by changing claim elements?

We will go through this case study and it will be very clear after that. So in this, the claim was basically performed by the server’s side. The server was creating a data volume which included multiple storage volumes.

Then, the snapshot of the data volume group was required. So, a backup copy was being created of the data volume group and before creating the snapshot, all the input/output operations that were being performed with the storage volumes were paused and after that the snapshot capture command was paused. So, this was the claim that a snapshot of the data volume group was required.


So, we look for the product documentation in it. We identified that there is a volume group which is having multiple boot volume. So, you can clearly see, the first claim element is here that create data volumes including storage volumes. Snapshot of the data volume group is captured. Here, you can clearly see, it mentions volume group backup. So, backup is being created, snapshot is being created.

But, the one limitation here comes up that it stays online- no downtime. It means that the I/O operations are not being paused. And, this is the limitation.

So, considering this, we thought that we should directly prosecute it because, also, we have in our mind that capturing the state information is more important. Capturing the storage volume group is more important rather than the pausing of the I/O operations.

And also, we know that after researching the market, the swappable technology is having its own benefits, so why? What’s the need to pause the I/O operations?

Considering this, the first step was to look whether it is the novel element or not.

So, we look for the file wrapper analysis and we searched what is the novelty of this particular thing?

We identified the pausing of the I/O operations was not novel. It was not a novel element. The novel element was that we need to create the data volume group snapshot together.

The next step was to look for the specifications and whether the specification supports it or not.


In the specification, it was clearly mentioned that whether it is a unified snapshot or a transient snapshot. So, there are two types of snapshots, unified and transient. A unified snapshot is the snapshot that is initiated while a storage volume is in a non-transient state which may be while I/O operations are paused to the storage volume. So, this unified snapshot is what the claim is claiming.

Another thing it says, the transient snapshot, however, may be initiated while data is read or written to the storage volume. So, it means that the specification clearly says that pausing of the I/O operations is not an important element and also, since the specification says, the product documentation also. So, we were having the leverage to draft new claims.

So, we suggested that we remove this element, we change this element and instead of it, we add wherein the snapshot can be transient or unified.

This way the entire claim work can be mapped to volume group if the claim is granted in future. So, this way, a future case is considered as a fundamental case in future.

Also, like Arsh just mentioned in the previous slides, that intent was also there in the product. This particular element was not added which is the transients snapshot. It was not added in the claim; so it was covered in the specification and the action was that we changed the claim element. So, this is how the first scenario is.

Adding Claim Element -Case Study

Now, moving on to the next case study.

The next case study describes about adding the new element.

What is adding new claim element?

We add that particular claim element, the new element. It should be present in the specification as well as it should be in the target company. That’s why we add the new claim element so that we will be able to generate infringement in future.

Also, there are 2 ways of adding new claim elements.


One is we can draft new claims or we can amend the already granted claims. So, if we amend the already granted claims, we end up with the narrowest infringing claim. So, this would be the outcome.

So, how we perform Directed Prosecution by adding the new claim element; we will discuss in this particular case study.

This particular patent was about a shopping complex. A person comes in, purchases something, it picks up the item and just goes out; and the all the items which the customer has picked up, all those building details; user can see on the mobile device through an application. So, that was the particular case.

What we identified, so, if you see the claim, it was user entering the fulfillment center which is a shopping complex. Images generated by the imaging elements. Imaging elements are the cameras. So, images are generated, you can see in the picture that there are cameras overhead and the blocks are there above the user head.

So, imaging elements determine the position of the user and item action is being determined which is picking up the item. Then, it is determined if the user performed the item action and the information is sent to the user. So, this was the claim.

What we identified when we were looking for the product documentation, we identified that product documentation also says that a certain company that track changes in the weight of the shelves in front of the shoppers. It means weights of the shelves are been determined to identify which item is taken.


Then, the next step would be that we have to look for the specification, whether the specification is covering this element or not.

So, we looked for a specification and we found out that it clearly mention other implementations, pressure or weight sensors may be maintained in the inventory locations.

Considering this specification supports it, the product documentation also supports it, and the Intent of Use is also there and one of the elements is not there.

So, this is the scenario is covered and hence, we suggested the client to draft new claims in which we added; user enters a fulfillment center, images generated by the imaging elements, detecting an item action using weight sensors. So, we added this limitation and hence, the remaining step is that the user performed the action, it has been determined and the information is being sent to the user.

This way, we can say that we suggested that claim and by adding the new element which is weight sensors and this scenario is like how we can prosecute the particular claim by adding the new claim element and in the end we can clearly see that we have the narrowest infringing claim.

So, this is the second case study in which we can perform the Directed Prosecution by adding the new claim element if the product documentation and the specification both covers it.

Rephrasing Claim Element -Case Study

Now, the next case study is Directed Prosecution by rephrasing the claim element.

What do we mean by rephrasing? Why do we need to rephrase the claim element?

Sometimes, it happens that the same element is being used by the specification and the company is also using the same claim word or element. Sometimes, while discussing the case in the court, it gives an extra edge to the attorney so that even the layman can understand that.

Okay, this is the claim element and the exact same word is present in this, same claim element is present in the product documentation. So, this is OK. There are no more arguments on it.

So, that’s why we rephrase the claim element and that’s the need of rephrasing the claim element.

So, this is the how we perform the Directed Prosecution.

We’ll go through the case study and it will be clear in it. This particular case study is a very basic one in which a user requests to create a virtual network and then the server creates virtual network and create computing nodes in it.


And, so compute nodes are the nodes present in the virtual network.  Now, we look for the product documentation and we identify that it says virtual network allows the virtual machine to communicate the rest of the network. So, it says, virtual machine.

Then, we look for specification, whether the specification mentions that compute nodes can be virtual machine. Here, it was clearly saying that, additionally, the compute nodes maybe virtual machine instances.

So, taking this, we suggested the claim word “Compute Nodes” to the virtual machine. So, creating the virtual network and then creating a computer virtual machine.

So, this way, we rephrase the claim element and the claim word ‘compute nodes’ to ‘virtual machines’. Also, this is a very basic scenario. Depending on the on the studies that we have, depending on the patent that we encounter, we can also rephrase the whole of the claim element. So, that can also be the scenario in this particular case study.

Vaubhav Henry speaking- I would quickly like to extend this example.

Rachita Goel speaking- Ya! Sure Henry.

Vaibhav Henry speaking- In one of the cases that we did, the claim was earlier written as sending a message to the master. It was about bus control between the master and the slave. The claim earlier read ‘sending a message to the master’ of changing the bus control.


So, it was a kind of bus control signal but the fact that it’s harder to show a message at the level of the control units and at the level of processors, what we did was we replaced it by indicating because it said sending a message thereby indicating in the specifications.

Rephrasing could be something like removing that claim element as well as you pointed out earlier, it can be a mixture of these things, as well. So, rather than writing sending a message, we replace it or rephrase it as ‘indicating to the master’. Rather than sending a message to the master because the other party could easily argue that we’re not sending a message. We’re just using an indicating signal.

So, that kind of covers that indicating or communicating, that’s also a good term. So, that’s how it works. Thanks, please.

Rachita Goel speaking- Like just Henry mentioned, that was what I was saying that we can also change that particular claim element also instead of just one word. So, this example satisfies that requirement as well.

Removing Claim Element -Case Study

So now, the last, I’m moving on to the last case study which is removing the claim element, performing Directed Prosecution by removing the claim. So, what’s the need to remove the claim element?

We remove the claim element to broaden up the scope. Like, in one of the scenario that I’ve discussed, it was that Intent of Use is also there but the claim scope is narrow, it is having additional limitation.

The exact action would be to remove the claim element. This is the case study in which we can define that scenario.

So, here, the claim was basically, the patent was about an entity group which is having multiple entities. The entities can be user machine or a service.

The behaviour of the entity was created and it was being monitored. So, like, for example, if I say I’m an HR person and then the group of mine would be an HR group and then, there is an operations person and his group would be ‘the operations’.  So, my behaviour is to look for the employee data and I cannot access the operations data.


So, my behaviour would be to just look into my group details like the Employee details. So, I’m in an entity group, creating an entity group and then it was detecting by a local data engine, indicator of compromise. This indicator of compromise is basically when an HR person is looking into the data of operations, so, that is indicator of compromise. If that is detected then that particular indicator of compromise is sent for further analysis.

So, here, the limiting element was by a local data engine because it was restricting the scope of the claim. It was restricting the scope to just on-device implementation. The local engine is there, so there’s no cloud implementation of it. To broaden the scope we suggested the client to remove this particular limitation which is by the local data engine so that this claim also lives on the cloud environment.

This is how we perform the Directed Prosecution by removing the claim elements so that it can have a broader scope and also the cloud implementation of the image.

So, this is removing the claim element. 

I hope I’m clear with all the case studies.

Monetary benefits of Directed Prosecution

Now, the next slide is about the monetary benefits that we can have from the Directed Prosecution. So, like, in the F3 analysis also, like we had the F3 analysis webinar before, directed Prosecution is a part of it or it not is necessary that Directed Prosecution becomes a part of it. It can be standalone application also. Like, for all the open applications or the open family, so, we can directly prosecute those cases also.

So, the client was a fortune 15 giant and we, in the F3 analysis only, suggested him, 100 strategic prosecutions on the cases which are open which helped in 40+ grants after the strategic prosecutions. It has helped the client in $60 million generation and, then, it also helped in 60+ patent applications under examination were also granted and it helped in $100+ million. So, this is how the Directed Prosecution helped in the monetary benefits in monetary terms.

The whole concept of F3 Analysis was protecting the fundamental, converting the future and discarding the fringe. So, here, the Directed Prosecution is about the future cases which are converted into fundamental by directly prosecuting it.

This is how we satisfy one of the core concepts of F3 Analysis which is converting the future.

So, that’s all from my end and now over to you Abby!

Abby Woods speaking-

All right! Thank you, Rachita.

That was quite an elaborate coverage of the topic. Both you and Arshjot, you have actually covered a lot of ground on this topic as well.

Now, before we go further, I can see a lot of questions from the audience as well and as you can see, they have put some questions there as well on the chat window, I can see.

And, I’m sure these questions need to be answered now for them. I think it’s time I invite Henry-The EVP, ICT Licensing at Sagacious, to go ahead and moderate the questions and provide his valuable inputs in the answers.

Over to you, Henry!

Vaibhav Henry speaking-

Thanks, Abby. Just to mention here, the attendees would see that we have an upcoming webinar as well on Patent Valuation. So, this is something we’d be doing next month. We have already done 3 in 3 consecutive weeks. Please feel free to take a look at the F3 analysis framework as well. 

Now, as Rachita pointed out, that’s how we tag the patent, say, as future and do a Directed Prosecution for those cases.

And, again, before we move to the Q&A session, a quick clarity on the previous slide as well. So, what Rachita pointed out on 60+ million and 100+ million; that was the future anticipated value and that is something that we identified from the features that we’re mapping onto the patent. So, that is how we estimate the future value of those patents.

All right! Yeah, so, I was talking about this slide, so, for the 40+ grants after strategic prosecution, that was the actual scope of each of the features covered by the infringing products.

So, that is the approximate future value here we’ve seen.

Alright, so, getting back to the Q&A, so, I think the very first question could be; this is a question that you’ve seen a lot from people on the fact that what if, of course, a lot of companies would not be actually getting the F3 analysis done. So, where do we start?

So, Arsh this is a question for you. I think you try to cover this.

How do I start looking at my portfolio in terms of generating the future value?

Arshjot Singh Gill speaking- How do I start looking at my portfolio in terms of generating the future value?

So, basically, the basic idea for filing a Directed Prosecution is that you can file a new set of claims. Generally, you can file a new set of claims with respect to different continuations and the continuations can be filed for open applications. So, open applications imply the patent applications which are not granted and the second set that you can take or, basically, consider for this are the granted patents which have at least one family member that is still under prosecution.

These are primarily the two sets for which you can do a Directed Prosecution. So, as I mentioned in one of my slides that if you haven’t done an F3 analysis; not an issue because that is not necessary for Direct Prosecution but you primarily need to identify the set of patents which have potential in a way that they have a good specification with respect to what is present in the market and whether you can file a different set of claims for that patent application or grant patents as well.

Vaibhav Henry speaking– Great, thanks Arsh. I see another question. So this is what if I missed claiming something in the specification?

What if I miss to add something in the specification?

So, ideally, I think that is something which should be part of the initial set of specifications. I think the question is all lost if we forget to add things to the specification and, in my opinion, I think it is.

That’s why you have to be very creative with identifying the different embodiment, different terminologies as Arsh was pointing out for the specification advice you were on and patent could be treated as a priority for filing any new applications or you have to be very careful in terms of writing the specification and covering every aspect of it in the specification such that you can derive new claims out of it in continuation application.

Arshjot Singh Gill speaking- And to add to what Henry was mentioning, so, in case if you think of these alternate embodiments after you filed the first patent but there is no public documentation which mentioned something similar to that, you might still go for a continuation-in-part but then your claim would have 2 different priorities and anything new subject matter that you’ve added in the specifications, that would have later priority date, the date on which you added the new subject matter.

So, generally, if you do this in hindsight with respect to something that has been disclosed in the product, so then, that claim might run into a little bit of validity issues.

Vaibhav Henry speaking

All right, Arsh! I think those are all the questions. We didn’t have many questions this time, it seems. I hope this was informative enough and this was something new that we have covered here. That’s my only hope and yeah, I think, well, back to you, Abby.

Abby Woods speaking-

All Right! Thank you for that, Henry.

And yes, you know this series that we are actually doing had been very informative, as you can see, a lot of people joining in from different segments as well. Really, a wonderful series as well, by the expertise that you guys have actually displayed. I’m sure our listeners have actually great takeaways from this particular session and will be able to use several of these pointers when working on trademarks for their businesses.

As I mentioned there were many questions but again, I think fewer questions are asked this time, obviously, we had many questions in past webinars as well. If there are any other questions that the audience has then please go ahead and write to us, as well.

We can go ahead and answer your questions and the right can be published post this webinar. And, once again, thank you to all the speakers, as well.


As I already mentioned in between, Sagacious Team is offering Directed Prosecution for 1 patent to give you a brief idea how we can improve the quality and strength of a patent for the participants of this webinar. If any of you are interested, please drop us an e-mail to  

So, again, I want to extend a big thank you to all our listeners who helped us, obviously, start on time, stuck to us listening to the elaborate presentation made by our expert speakers. We highly appreciate that and we thank you very much.  

So, big thank you to all of us. You stay safe and take care of yourself, take care of your family and hopefully you’ll keep yourselves subscribed to us. Dates, as mentioned by Henry in the middle for the next session, for the next webinar, which is, ‘Patent Valuation: A Hybrid Approach of practical value’ will be announced shortly. Thus, people who have registered will definitely get the dates as well as e-mails with them.

Once again, thank you for taking up time you guys and stay safe & stay healthy and this is Abby Woods signing off from Sagacious Research. Take care of yourself. Thank you.

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