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The IP Counselor’s Checklist for Adding Value During Patent Prosecution

As the new year begins, I’ve been reflecting on what makes patent practitioners highly valuable to their clients. In a prior IPWatchdog article, I asserted that one should aspire to practice as an intellectual property counselor—who leverages patent prosecution as one strategic tool among many, rather than narrowly conceptualizing his or her role.

What about the day-to-day acts of preparing and prosecuting a patent application? Here are ten concrete steps IP counselors can take to advance their clients’ interests and distinguish themselves from their peers.

Draft claims of intermediate scope.

When preparing a claim set to cover an invention, some practitioners fastidiously draft aggressively broad claims, reasoning that clients should receive the maximum available patent protection. However well-intentioned, such an approach can be counterproductive.

Aggressively broad claims may be viewed with greater skepticism by patent examiners, may obfuscate what the practitioner really believes is novel and nonobvious, and may trigger examiner searches that yield prior art seemingly far outside the field of the client’s invention. More prior art rejections, office actions, and prolonged examination may result, delaying issuance of claims of commercial value.

Instead of pushing for substantial breadth in the first filed patent application, IP counselors consider drafting claims of intermediate scope, based on an understanding of the client’s business and its intended use of a resulting patent. Environmental or definitional limitations that clarify the inventive context to the reader, without materially narrowing a claim, can be used with success to expedite allowance. If warranted, broader protection then can be pursued in continuing applications.

Draft claims that target the right infringer.

Similarly, some practitioners only draft claims that comprehensively cover a client’s inventive system or method. This approach also may be problematic.

Although perhaps easier to digest on a first reading, claims that cover entire systems or methods aren’t fit for purpose in every situation. For instance, a customer or other third party—not a client’s competitor—may be the entity practicing some or all of the claimed components of a system, or steps of a method. Absent direct infringement by a single entity against which a client is willing to enforce its rights, an issued patent claim may be difficult, sometimes effectively impossible, to enforce.

Accordingly, IP counselors carefully craft claims that, if granted, will likely ensnare a single targeted infringer. Claiming strategies for dealing with a distributed technology involving multiple unrelated entities include claiming from the vantage point of the targeted entity and indirectly reciting certain system and method aspects as part of the claimed environment, rather than as claim elements.

Architect the application specification to pave the way for enforcement and licensing strategies.

Application specifications that do little more than disclose a client’s articulated commercial embodiments may limit a practitioner’s ability to develop highly valuable patent portfolios. This is because the narrow scope and specificity of the written description may not support as broad an array of claims now and in the future.

IP counselors explore technological and business implications of a client’s innovation, and encourage the client to think outside the box as well. Armed with a richer, multi-dimensional perspective, they draft a specification that flexibly supports evolving claim sets of varying scope and focus, whether in the application at issue or in continuing applications. This may include disclosing additional or alternative embodiments or applications of the subject technology, and contextualizing the invention against a broader landscape. In doing so, IP counselors position themselves to more effectively advance a client’s near-term and longer-term business objectives, including potential licensing efforts.

Ask probing value and priority questions throughout prosecution.

When drafting a patent application, practitioners typically interview inventors for necessary details and context. After filing, too often they operate predominantly under outdated assumptions, striving to prosecute the application to issuance without question.

IP counselors realize that circumstances often change after an application’s filing. For example, the client commercializes an alternative design, a competitor follows a divergent course, or the IP monetization market changes. Thus, IP counselors intentionally question the client at various times during prosecution, such as when an office action or notice of allowance is received. Representative questions include:

  1. Has the claimed technology been implemented by the client, or are there plans to do so in the future?
  2. Are competitors implementing, or likely to implement, the claimed technology? Can the claims be readily designed around?
  3. What is the market opportunity associated with the claimed technology?
  4. What business value does the client want a patent to deliver in this case, and do the claims align with such business value?
  5. After a series of rejections, is this technology worth fighting for, or should the application be abandoned so that resources can be reallocated to other priorities?
  6. What are the views of engineering and product management leadership on the value of this application?
  7. Do the claims cover a single potential infringer, and the right infringer?
  8. Based on the client’s innovation roadmap, competitive intelligence, or observed or predicted industry trends, should a continuing application be filed and kept pending as a vehicle for IP asset development?

By proactively eliciting answers to the above and other relevant questions, IP counselors contribute to a feedback loop that regularly tests underlying assumptions and helps adapt prosecution strategy so that resources are directed to maximize the client’s return on investment. Such an approach complements the client’s efforts to pursue and maintain IP of demonstrable value. Indeed, law firm practitioners and in-house IP counsel can collaboratively implement a framework to gather and act upon inputs received.

Craft succinct communications to clients.

Patent attorneys, patent agents, and other IP professionals are respected by many clients for their command of details. Nonetheless, communications that contain superfluous details, and that fail to clearly highlight what the client fundamentally needs to know or act upon, promote a less strategic view. They swallow up precious bandwidth that clients otherwise could devote to higher-level strategy.

IP counselors thoughtfully construct communications with precision, conciseness, and a relentless focus on key issues. As a result, they elicit meaningful inputs and decisions more quickly and are viewed by clients as problem solvers who expertly and efficiently help the client obtain valuable IP.

Speak with clients during prosecution.

IP practitioners commonly implement processes involving the sending of detailed reporting communications, followed up by successive reminders to unresponsive client recipients. Unaccompanied by human interaction, such processes can degenerate into so-called counseling by email, runaway reminders, and last-minute filings.

An IP counselor handling a patent application rises above process. He or she recognizes the importance of fostering real dialogue with clients and takes a pragmatic approach to drive meaningful decision-making.

Draw from a diverse palette of tools for advocacy.

Certain patent prosecutors treat virtually all patent applications, and situations arising during prosecution, in the same way. For example, when faced with a final rejection, their perennial solution is to file another written response along with a Request for Continued Examination—even if previous RCEs have been filed—or to appeal the case by copying and pasting arguments already presented. Likewise, they don’t avail the client of expedited examination procedures in critically important cases that could benefit from earlier patent issuances.

In contrast, IP counselors utilize many different tools in their role as client advocates. Such tools enable them to get challenging cases allowed, get cases allowed more quickly, or help clients understand as early as possible that desired subject matter is not likely patentable. Exemplary tools include:

  1. concise, cogent written argumentation;
  2. examiner interviews;
  3. phone calls to supervisory patent examiners tactfully requesting intervention and guidance;
  4. evidentiary declarations;
  5. continuing applications;
  6. analytics software; and
  7. USPTO programs and initiatives.

Be a smart consumer to save the client money.

On behalf of clients, practitioners frequently engage third-party providers of prosecution-related services, such as patent drawing, searching, translation, and filing services. Associated charges, or disbursements, are paid by clients as passthrough charges. On a per application basis and in the aggregate, these costs can be substantial.

As such, in selecting and managing third-party providers, IP counselors look for competitive pricing and high quality. Acting as stewards of client resources, they diligently monitor current providers and never hesitate to shift to alternative providers when advisable.

Keep on top of scope creep.

In a world of finite resources, unforeseen or unbudgeted patent prosecution costs seldom are welcomed by clients. Such costs may be attributable to scope creep occurring at various junctures. For instance, when interviewing inventors to prepare an application, a practitioner may discover that the scope of the invention is broader than reflected in the invention disclosure, encompassing multiple inventive concepts. Or, in the context of revising a draft, he or she may be asked by inventors to incorporate additional embodiments or other information that materially exceeds the originally contemplated scope for the application. And during prosecution, the complexity of the technology, the volume of prior art cited, and the examiner’s rationale for rejections may require that the practitioner invest significant time and effort to adequately analyze and address the issues presented.

IP counselors proactively assess project scope, including material provided by inventors and issues raised by examiners, before delving into the task at hand. Additionally, they keep a close eye on the time worked by team members on projects. Upon determining that agreed budgets or estimates likely would be exceeded, they promptly notify the client to discuss an appropriate path forward.

Proofread your work.

Patent applications, office action responses, and other practitioner work product may be read and interpreted by a diverse audience, including colleagues, clients, patent examiners, administrative patent judges, competitors, prospective licensees or acquirers, judges, and juries. Embedded errors stemming from a practitioner’s eagerness to get work out the door may distract readers, tarnishing otherwise excellent work product. Some errors may complicate interpretation by the reader, prolong prosecution, and even impact patentability or enforceability.

For these and other reasons, IP counselors take the time to proofread their work before releasing it to others, seeking to minimize substantive, grammatical, and other errors.

By applying the above steps when preparing and prosecuting patent applications, IP counselors are likely to secure higher-impact patents and build stronger, more beneficial relationships with clients.

This article reflects my current personal views and should not be necessarily attributed to my current or former employers, or their respective clients or customers.


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Join the Discussion

2 comments so far.

  • [Avatar for JTS]
    January 8, 2019 01:05 pm

    Reasonable advice. As to “IP counselors consider drafting claims of intermediate scope, based on an understanding of the client’s business and its intended use of a resulting patent”, there are other approaches. In most cases, unless there is a specific competitor target in mind, claims should be written to maximize scope in view of the prior art. This can be done by working with inventors and doing some basic research. Find a baseline and craft some claims a little broader and some a little narrower. Include dependent claims that meaningfully qualify the invention; limitations that would be acceptable to include in an independent claim. There are narrow inventions with narrow claims that have high value. There are broad truly innovative inventions with broad claims that have low business value. In fact, as I write this, I think the best approach is to be flexible, aim for maximum scope if you know the prior art, and then go narrower from that as needed for practical reasons. As to the practicalities of broad claims, a claim need not be both short (difficult to prosecute) and broad … wordy broad claims are an art form.

  • [Avatar for John M Rogitz]
    John M Rogitz
    January 9, 2019 09:28 am

    Great tips, especially about claims of intermediate scope. After-final 2.0s in particular are also a great alternative to RCEs and appeals if you’re close to allowance.