The Joy of Cooking . . . Your IP Portfolio

by: Natalie Giroux

If you work for an innovation-based company, your company likely has a portfolio of one or more patent families consisting of applications filed in one or more countries.  As the portfolio grows you must adopt the right approaches to “cook” it to perfection.  Just as different cuts of meat are cooked differently to obtain the best flavor and tenderness, each application in your IP portfolio should be treated individually to achieve the company’s overall IP objective.

One recipe is to “slow cook” an application… in this case you wait until near the 3-month deadline to answer an office action. You might even consider paying the late fees to further delay the expense of writing and filing the response.  Be aware that this strategy will also delay the issuance of the patent, possibly by many years.  This might makes sense if you have sibling applications (from the same family) being prosecuted on the fast track (see below) in another country like the US. The results of the US prosecution once completed, can be used to speed up the other applications in the family.

The other recipe is to “microwave” the application. In this case, you answer each office action as soon as it is received. In the US, if you respond to a final office action within 2 months, the examiner is also required to respond within 2 months, saving a considerable amount of time in the prosecution cycle! There are other programs available to speed up the examination process, such as the green program (which applies to inventions related to green energy and environmentally sensitive products) or the Patent Prosecution Highway (PPH).

Another very effective way to accelerate prosecution is to discuss an office action in person with the examiner. It is now possible for patent lawyers or patent agents to book face-to-face interviews with the patent examiner in Washington, to discuss his findings and explain differences between the application and the cited art. This process can significantly reduce the churn of office actions required to obtain a patent, shortening the prosecution time and lowering costs. Inventors may also be allowed, in some cases, to participate in the interview to provide their expert opinion on the differences between their invention and the cited art.

The “slow cooker” and the “microwave” approaches are at the extremes of the spectrum.  Remember that each application should be treated individually to decide on the best prosecution strategy. For a larger portfolio, organize it like a recipe book – by dividing it into several categories and selecting the right strategy depending on the category.  Happy cooking!

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