A patent’s value depends on several factors such as the scope of claims, the need or commercial value of the patent, its function in the company’s patent portfolio, and how crowded the technology area is, among other issues. Additionally, there are various factors that affect the scope and interpretation of the claims, including indefinite language in claims, supporting description and drawings, errors or typos, prosecution history, and case law precedents. There are several digital tools and knowledge management elements that can control these factors, while also making patent preparation and prosecution more efficient and effective.
An important measure of patent quality is being error-free. There are several software applications available for quality control for checking antecedence, status identifiers, dependency of claims, part numbers in specification/drawings, identifying patent profanities, etc. In addition to eliminating human errors in these tasks, these applications also integrate time-saving elements that assist practitioners in improving efficiency by providing preloaded and customizable boilerplates, creating shells and preparing forms, among other features. One of the tools for quality control and time-savings that we use includes ClaimMaster™ as part of our mind+machine™ approach. Evalueserve has developed several other plug-ins for MS Word in-house that further augment these external tools. These provide customized quality control which can be tailored to individual practitioner and client preferences.
Due to the comprehensive nature of current technologies, there are more part numbers used for different components/units in patent applications being drafted today. As a result, automated solutions to auto-populate the part numbers in the specification not only enhance the efficiency of the practitioners, but also maintain quality and consistency while drafting the specification.
Knowledge management in P&P can take several forms based on client requirements, internal processes and the stage of prosecution. Knowledge management in prosecution can focus on the subject matter in each claim and embodiment, where the practitioner, based on his/her knowledge of the field and the current state of the art, records novel features already recited in the claims and records unclaimed subject matter that potentially can be used in later stages of the prosecution. This could reduce the turnaround time for preparing subsequent OA responses since multiple claimed and unclaimed features are already recorded. The practitioner needs to choose the optimal feature for claim amendment, which may not only overcome the prior art reference but also meets the target scope required by the client.
Knowledge management also can focus on the Examiner statistics, which are available online, to arrive at an optimum strategy in replying to the pending Office Action, depending on the stage of the prosecution. Another knowledge element is to maintain a record of the target products that are applicable to the client, in association with each docket number or patent family or technology area. The practitioners can then ensure that claims are amended by keeping the target product in mind.
Attorneys and multiple inventors provide feedback and preferences at each prosecution stage, noting the benefits of these enhancements in the prosecution quality. And so, knowledge elements which record such preferences and feedback, and automatically alert the practitioners to refer to the recorded history of information also helps Evalueserve to meet client expectations throughout the prosecution cycle for each docket.
In addition to above, practitioners can also use digital portals on patent office websites, such as the Global Dossier of USPTO to track prosecution history across jurisdictions to maintain uniform claim scope across jurisdictions. Global Dossier provides an interface that is easy to use, with examination information from various jurisdictions accessible at one single location. Global Dossier also assists practitioners in identifying the patentable subject matter in other jurisdictions, helping to negotiate a similar claim scope in US jurisdiction by leveraging the patent prosecution highway (PPH) program. As another knowledge management methodology, practitioners also explore multiple strategies (technical or IP) at each prosecution step, compliant with the patent office, to assertively negotiate the claimed scope with the patent Examiners. The Examiner’s opinions for each explored strategy may help the practitioner to decide the right direction for future prosecution of the patent application in light of the technology, target portfolio, and the competitor’s product.
The future of digital patent preparation and prosecution lies in natural language processing and AI to assist drafting claims where the focus may be on natural language processing (NLP) parsers to make the claim language simpler and unambiguous in terms of claim interpretation, while avoiding human errors. There are certain promising tools available that could automatically draft the specification based on a set of claims. However, these tools still look like they have a long way to go before they are mature full-fledged tools that practitioners can reliably and consistently use to save time.
Hence, a combination of various knowledge management practices followed by IP practitioners can support an organization to build a strong IP portfolio with a high monetary value.