To remain competitive and defend from any possible future litigation threat, companies have invested millions to build a patent portfolio to protect their innovations. However, in the course of protecting IP for everything, the quality of the patent portfolio could get compromised. It becomes challenging for top patent owners to continuously sharpen the quality of patents, as they also have to keep their company’s future value in mind.
Our client, a multi-billion-dollar High-tech major wanted to organically expand its existing patent portfolio, improve the value of patents, and ensure their future utility. A clear need had emerged for them to focus on quality instead of quantity, considering the huge financial investment being made into the building and maintaining a large portfolio of patents. The client had to abandon a huge chunk of issued patents before term expiry due to commercial and financial non-viability. This decision was plaguing them year after year. It was time for immediate strategic action. The client has 10,000+ active US patents and receives an allowance of 1000+ patents every year. The client was eyeing a strategic partner who could perform a directed prosecution, handle the scale of their organization, has the in-depth technical expertise and could implement an efficient and scalable solution with a measurable output.
Our team deployed the Directed Prosecution solution to develop a seamless workflow and research process, that acted as a remote but integral role of the client’s IP department. The workflow was so robust that it catered to the entire length and breadth of the client’s large patent portfolio. Furthermore, the output of our team’s research and analysis supported the client in making informed decisions on filing patent continuations before the *NoA applications would be granted.
The Key elements of our approach are outlined below:
- USTPO Status Check: We regularly tracked the prosecution of the client’s US patent applications. Our in-depth analysis began once a patent application received a Notice of Allowance (NoA), and the client would have a timeframe of three months to pay the issue fee and decide on patent continuation filing. This initial step assured that all the client’s patent applications were assessed at the right time to decide on filing a continuation application.
- Research and Analysis: For each NoA application, we identified unclaimed key features or embodiments described in the client’s specifications. Then, we proceeded with identifying any competitors’ overlapping commercial product or technology.
- Specification Mapping (EoU Chart): Based on the identified product, we generated an EoU chart mapping out the allowed claim along with unclaimed key features or embodiement on the identified competitor’s product.
Fig. 1: A high-level workflow to execute the Directed Prosecution solution
Our deliverable includes precise indications for the client on what the focus should be on while drafting claims for the continuation application, rendering the application stronger and adding value to the overall patent portfolio.
Example: What does specification mapping look like?
The example above shows an overlap of an embodiment with a potential product, which explains how the product’s Selective Router Database (SRDB) translates the special service call message (caller’s TN) into call routing message (Emergency Service Number (ESN)/routing telephone number). This could then be used for drafting a claim for a continuation application to cover the aspect – how call routing message is translated for a special service call.
Our efficient workflow, paired with actionable insights on the competitor’s product and future technology, helped the client realize the full potential of their existing patents and innovations. Stronger and high-value continuation applications help the client build a ‘license-worthy’ patent portfolio, which paves a clear path for future monetization discussions. Moreover, the patent portfolio ensures that the client is defended from any possible future litigation threats.
Built a Strong and Competitive Patent Portfolio
Our team provided actionable insights for drafting focused claims for continuation applications
Expanded Patent Porfolio Scope
Access to Evalueserve’s expertise and scale, helped expand the technological coverage of the portfolio
Increased Cost Savings
Filing high value patents helped the client avoid frivilous IP spend
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