Utility Patents

Directed Prosecution Services

While traditional firms perform patent work in relative isolation from the client’s business, our Directed Prosecution services keep team members apprised of market changes during prosecution and throughout the patent lifecycle, responsively adapting our work product to best achieve the intended objectives.

• Prosecution:  According to the U.S. Patent and Trademark Office, the average U.S. patent application’s total pendency prior to issuance was roughly 27 months as of early 2015.  We monitor the emergence of competitive products during this critical window and, where consistent with the client’s objectives, prosecute the claims of pending applications to ensure appropriate and optimal coverage of those products.

• Use: We maintain and update market data after patent issuance to track the patent’s relevance and usefulness in achieving identified objectives (e.g., licensing revenue from, or defensive protection vis-à-vis an identified competitor).

• Management:  By maintaining a current understanding of each asset’s marketplace relevance, we also provide a strong basis for portfolio management decisions by the client (e.g., payment of maintenance fees, disposition of assets).

Approach

We monitor changes and integrate them into our portfolio development strategy via an approach that is designed to (1) deliver results that are clear, substantiated, timely and actionable, (2) be replicable across matters and scalable to portfolios of virtually any size, (3) be procedurally and financially appropriate for the client, and (4) minimize ancillary complexities (e.g., the need to file additional information disclosure statements). As noted above, we maintain and update market data after the close of prosecution to support use of the portfolio to achieve business objectives, as well as management of the portfolio.

Results

In our experience, handling more than 1,000 analyses, Directed Prosecution resulted in the identification of competitor products that caused our attorneys to recommend changes to prosecution in roughly 4% of applications processed and was otherwise helpful to prosecution in an additional 15% of applications processed (e.g., by better informing a client’s response strategy, or decision whether to file a continuation application).  Collectively, these results provide a strong return on investment, particularly given the nominal impact of our Direct Prosecution services on total preparation and prosecution costs. The volume of additional market information produced by our services and of potential value in subsequent portfolio use and management is even more substantial (roughly 1.2 leads/application) and relevant to virtually all applications processed.

Other Intelligent Portfolio Services:  Directed Prosecution is just one of the ways we help clients build Intelligent Portfolios.  Ask us for information about our other services, including: Competitive Landscape Analyses, Filing Selection Analyses, Ideation Services, Valuation Services, and Monetization Services.