Is Directed Patent Prosecution Necessary for Legal Counsels?

Various companies or businesses around the world amend & rethink their Intellectual Property (IP) strategies. They are looking for opportunities to ideally use their IP assets and lessen their liabilities for business growth. Among such Ip assets, Patents are the most valuable. Actually, businesses or companies must have a high-value Patent Portfolio to create their dominant position, generate value from their current portfolio and provide licensing agreements. This blog will discuss various reasons why companies’ legal counsels should opt for Directed Patent Prosecution.

What is Patent Prosecution?

Before we move forward to the various reasons why companies’ legal counsels should opt for Directed Patent Prosecution, let’s first understand the meaning of Patent Prosecution. Patent Prosecution refers to the interaction concerning an application for Patent Registration between Patent applicants, their representatives and a Patent Office. This Patent Prosecution process includes filing, drafting & negotiating with the Patent Office to obtain Patent protection for an invention. During this process, the Patent applicants and their representatives work with the Patent Office examiner to address problems regarding the patentability of an invention.

In Patent Prosecution^[1], the most vital element is a Patent Claim as it tells the ambit of protection. Even in the instance of a Patent Infringement, Patent Claims play a vital role. Hence, whenever Patent owners try to prove a violation, they map those sets of claims or the various elements in the claims to different products’ features.

If all the elements are not present in the product, then only partial mapping is obtained. So, to convert this mapping into a complete mapping, this is known as EoU (Evidence of Use); one needs to change the claims as per the product documentation. This complete process is known as Directed Prosecution, wherein one directs the prosecution to make sure that the final outcome (the EoU) can be used to prove the violation by competitors.

Why should we opt for Directed Prosecution?

The present pandemic situation highly impacted the economy, which has put various budget constraints on different companies. On the other hand, international competition is also increasing. So due to this, there are several expectations that have been changing and because of which everybody wants to have maximum profit with the least amount of inputs.

Directed Prosecution is something that will create value for everyone. For this process, you can refer to your recently filed Patent applications and granted Patents that have open family members because the essential idea is to convert all of these into Fundamental Patents, which will lead to a robust Patent Portfolio.

Directed Prosecution is an essential exercise with most of the big companies or mainly the top 100 companies or entities; most of them, almost 80 to 90% of them, do some kind or the other type of Directed Prosecution.

Right Patents to Use for Directed Patent Prosecution

Directed Patent Prosecution has something to provide every company. For this, the owners of Patent must identify their currently filed Patent applications and grant Patents that have open family members. The vital idea is to convert all of these Patents into Fundamental Patents, thereby making a robust portfolio.

The first part is the Patent title, and it should be a one-line description of the invention. The second part includes the abstract. It’s a description of the invention in a single paragraph, and third, there are specifications that further have different aspects, i.e., drawings, background, or figures, & detailed description.

At last, specifications are followed by the most vital part of a Patent Claims. These are usually classified into 2 different types; dependent & independent claims. Each of these parts mentioned here plays an essential role in Directed Patent Prosecution.

Why is it Necessary for Legal Counsels to Opt for Directed Patent Prosecution?

Following are some important reasons why Legal Counsels should Opt for Directed Patent Prosecution:

1. Generate Value: Directed Patent Prosecution helps in safeguarding the company’s invention and eventually creates value from them. The Directed Patent Prosecution method converts filed Patent applications and issued Patents with open families into Fundamental Patents, which are core to businesses. These comprise product safeguarding and competition covering Patents.
2. High Profits with Minimal Investment: One of the main advantages of Directed Patent Prosecution is a reduction in to-and-fro communication with the Patent Offices. This also leads to an enhancement in fundamental cases after Patents are issued. At the core, one invests less in terms of costs & time but still gains more in terms of capability EoUs. A higher number of EoUs against opponent products enhances bargaining position during licensing negotiations.
3. Economic Delay and Budget Limitations: Because of this pandemic and connected bend in the economy, companies are running on limited budgets. As a consequence, their expectations are also altering. Now they want to avail maximum advantages with minimum inputs. Using this Directed Patent Prosecution method, companies can make a robust Patent Portfolio and avoid others from circumventing Patents. In return, it helps in eliminating competition and eventually saving costs.
4. International Competition: Nowadays, competition is rapidly increasing worldwide. Hence, companies are seeking ways to obtain maximum profits with minimal inputs. Through this Directed Patent Prosecution, businesses can build robust Patent Portfolios and survive the competition.

Conclusion

Directed Patent Prosecution helps to generate value from future-marked Patents. Fundamentally, it permits companies or organisations to direct the prosecution of a future Patent towards becoming a Fundamental Patent.

Read our article:What are the Common Mistakes While Filing Patents?