<\/span><\/h2>\n\n\n\nBefore 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\u2019s patentability.<\/p>\n\n\n\n
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.<\/p>\n\n\n\n
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.<\/p>\n\n\n\n
<\/span>The Right Patents to Use for Directed Prosecution<\/span><\/h2>\n\n\n\nDirected 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.<\/p>\n\n\n\n
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.<\/p>\n\n\n\n
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 \u2013 background, drawings or figures, and detailed description.
Lastly, specifications are followed by the most important part of a patent \u2013 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.<\/p>\n\n\n\n