Patent Strategy and Prosecution
O&R knows patents and how to build strategically significant portfolios. Our comprehensive and strategic approach to patent prosecution incorporates our industry experience and deep understanding of the technology, the competitive landscape, the prior art, and our clients’ business goals so that the work we do provides a durable competitive advantage, from a client’s first cornerstone patent to their hundredth.
Our patent lawyers help clients develop overall strategies for asset protection rather than considering individual patent applications piecemeal. With a strategy in place, we then craft individual patents with claims that are both broad and allowable, anticipating how they might proceed through examination in various countries. And, because we only draft claims that we believe will be allowed, we generally avoid making amendments during prosecution. This helps us to prosecute patents with precision and speed.
We are acutely aware that patents and patent applications are read by many audiences. We know that potential licensees and investors will read the claims with a view toward evaluating whether to license or invest, so we craft claims with different audiences in mind.
Strategic Perspective
Our strategic counseling typically starts before we ever “put pen to paper” to draft a patent application. We find that it is important to understand the client’s commercial plans and product roadmap, their key competitors and customers, existing licensing arrangements, and where they are in their funding cycle, so that we can form a strategic plan or fully contribute to their planning.
Our strategic perspective continues as our clients evolve, for example, by assessing the value of continued foreign prosecution of patents when business focus shifts, new competitors arise, or exit strategies near. We are the client’s partner in building and maintaining their portfolio. We also provide a broad range of opinion services, from non-infringement, validity, and patentability opinions to design-around analyses.
Our Approach to Prosecution
O&R understands that our clients’ needs are generally best met by both reducing the total time to issuance and limiting the total cost of legal services and official fees, while at the same time avoiding conceding patent scope to which clients are entitled and that is commercially significant to them. Over our years of practice, we have used a number of tactics to prosecute patents efficiently, including:
Use of the Patent Prosecution Highway (PPH) when available
Accelerated prosecution using the Track 1 program
Pre-examination amendment of specifications arising from foreign language applications in cases where rudimentary translations may impede the examiner’s ability to easily comprehend the invention
Liberal use of interviews with examiners, in some cases even before a first office action, if permitted
We find that although such interactions may require preparation, what is learned through the interaction can be invaluable. For example, we often find the examiner’s true concerns, which they have not put to paper, or we may determine that an examiner is intransigent and that appeal is the best course of action.
Use of the After Final Consideration Program (AFCP 2.0) in which an amendment and interview is permitted after a final office action
Use of Pre-Appeal Brief filings and full appeals if necessary after final office actions when further reexamination by the examiner alone is not likely to advance prosecution
Services Tailored to Your Unique Needs
We work collaboratively with our clients recognizing that they have different levels of experience, from a seasoned in-house patent counsel, to an entrepreneur who has participated in development of a patent portfolio at a prior venture, to the technology development offices of major academic and research institutions, to a startup where our firm provides a complete strategic planning service.
No two clients are alike. For example, one client may come to us already knowing that they have a 24-month horizon before a major funding round and may be behind in building a patent portfolio. For that client, we may develop a strategy aimed at rapid patent filing and accelerated prosecution in order to build value prior to funding. Another client may be at an early resource-limited stage, and we may work to establish a set of key priority application filings that preserve United States and foreign patent rights while deferring as much cost as possible. Another client may be a technology development office focused on licensing opportunities for its faculty inventions. We apply our experience to individually guide a client to achieve its specific goals.
International Protection
Many of our clients compete globally so we do not view securing foreign patent protection as an afterthought but as a strategic consideration when planning a portfolio, and at early stages of patent preparation recognizing that the application we prepare may be subject to a myriad of different legal frameworks. We maintain close relationships with multiple law firms in significant foreign jurisdictions and are familiar with issues related to securing international protection. We often work with foreign counsel before U.S. filing to ensure that the content of a U.S. application serves the international strategy and draft domestic claims with an eye to prosecution in jurisdictions where patentability criteria are different and opportunities to amend claims may be limited.