4 Reasons Why Legal Counsels Should Opt for Directed Patent Prosecution

Companies across the globe often rethink and revise their IP strategies. They seek opportunities to optimally use their IP assets and reduce their liabilities for business growth. Among these IP assets, patents are the most valuable ones. In fact, businesses need to have a high-value patent portfolio to establish their position in the market; generate value from their existing portfolio, and facilitate licensing agreements. The following article outlines the top four reasons why legal counsels of companies should opt for directed patent prosecution.

Directed Prosecution

Before diving into this topic, let us first understand patent prosecution. It refers to the interaction regarding a patent application between patent applicants, their representatives, and a patent office. This process includes drafting, filing, and negotiating with the patent office to obtain protection for an invention. During patent prosecution, the applicants, as well as their representatives, work with the patent office examiners to address issues related to an invention’s patentability.

In patent prosecution, one of the most important aspects is a patent claim as it defines the scope of protection. Even in the case of an infringement, claims play the most important role. Therefore, whenever patent owners try to prove infringement, they map those sets of claims or the different elements in the claims to various features of the product.

In case all elements are not present in the product, only partial mapping is obtained. In order to convert this partial mapping into a complete mapping, which is also known as Evidence of Use (EoU), one needs to trim or modify the claims as per the product documentation. This complete exercise is known as directed prosecution wherein one directs the prosecution to ensure that the end result (the EoU) can be used to prove infringement by competitors.

The Right Patents to Use for Directed Prosecution

Directed prosecution has something to offer to every company. For this, patent owners need to identify their recently filed patent applications as well as granted patents that have open family members. The basic idea is to convert all of these patents into fundamental patents, thereby creating a strong portfolio.

In the next step, one needs to identify the patent components that are involved in this type of prosecution. Both recently filed patent applications and granted patents with open family members have several components.

The first component is the title of the patent. It is a one-line description of the invention. The second component comprises the abstract. It is a description of the invention in one paragraph. Third, there are specifications that further have three different parts – background, drawings or figures, and detailed description.

Lastly, specifications are followed by the most important part of a patent – claims. These are generally categorized into two different types: independent claims and dependent claims. Each of these components mentioned here play a crucial part in directed prosecution.

Why Should Companies Opt for this Approach?

Almost 80 to 90% of the Fortune 100 companies engage in directed prosecution. The graphic below outlines the top four reasons why other companies or their legal counsels should follow suit:

Figure 1: Why firms or their legal counsels should opt for directed patent prosecution

  1. Economic Slowdown and Budget Constraints – Due to the COVID-19 pandemic and associated slump in the economy, companies are running on tight budgets. As a result, their expectations are also changing. Now, they want to reap maximum benefits with least inputs. Using this prosecution method, companies can create a stronger patent portfolio and stop others from circumventing patents. This in turn helps in eliminating competition and ultimately saving costs.
  2. To Generate Value – Directed prosecution method helps in protecting the inventions of a company and eventually generates value from them. The method converts filed patent applications and granted patents with open families into fundamental patents, which are core to businesses. These include product protecting and competition covering patents.
  3. Global Competition – Competition is increasing globally. Therefore, companies are always looking for ways to get maximum gains with least inputs. Through this type of prosecution, businesses can build stronger patent portfolios and survive competition.
  4. Maximum Gains with Least Investment – One of the benefits of this type of prosecution is reduction in to-and-fro communication with the patent offices. This also leads to an increase in fundamental cases after patents are granted. In essence, one invests less in terms of cost and time but still gains more in terms of potential EoUs. Greater number of EoUs against competitor products strengthen bargaining position during licensing negotiations.​

Final Thoughts

Directed prosecution originated as a step to generate value from future-marked patents. Essentially, it allows organizations to direct the prosecution of a future-marked patent towards becoming a fundamental patent. Sagacious IP’s strategic patent prosecution support service allows businesses to build a strong patent portfolio. Our team finds the products that are extremely close in terms of the technology disclosed in the claims of a patent in question. Thereafter, claims are modified to increase the ease of detecting infringement for the updated claims. Click here to know more about the service and click here to watch our webinar.

-Arshjot Gill (ICT Licensing) and the Editorial Team

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