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Direct Patent Prosecution

Directed Patent Prosecution

With the increasing global competition, everyone in today’s world wants to reap maximum benefits with less amount of efforts. For increasing the value of your patent portfolio, directed prosecution plays a very important role in generating high value for your IP portfolio. Directed Prosecution is a smart approach adopted by companies to build high value patent portfolio, immune to patent litigation cases.

What is Directed Prosecution?​

Directed Prosecution is the process of identifying the key elements not included in the claims of a patent in prosecution, which holds importance in infringement scenarios or filing the continuation application of the patent. This is useful within the timeframe of 3 months after receiving the Notice of Allowance (NOA), helping you strengthen your patent portfolio.

Directed Prosecution helps in addressing the potential scope of the patent claims. It prepares you to negotiate for licensing a similar subject matter with a third party.

What are the Main Objectives of Directed Prosecution?

The Main Objectives of Directed Prosecution:
  • Helping you to increase the monetizing potential of your patent applications
  • Ensures increased Return on Investment on your Current Portfolio
  • Higher Chances of creating a full mapping (Evidence-of-use (EoU)) in the future

As a result, at patent level, filing a continuation patent application and directed prosecution can highly boost your patent portfolio and help you get additional patent protection. Thus, increasing the value of your patent portfolio.

What are the Benefits of Directed Prosecution?

Directed Prosecution has multi-dimensional benefits for patent protection that cover a technology or market extensively. It makes your patent less vulnerable towards invalidation in a patent litigation. Here are some benefits of Directed Prosecution:

  1. Developing a comprehensive and technically sound IP portfolio by adding new continuing applications.
  2. Increasing the IP portfolio’s safety from legal action.
  3. The IP portfolio’s potential for licensing and monetization will increase.
  4. Generating more EOUs utilising continuation applications to get the most out of minimal investments.

How do we perform Patentability Search?

Patentability searches are conducted by our experienced search professionals on online patent search tools viz. Orbit, Derwent innovation, NCBI, etc. using specific keywords, classifications, citations of the prior art, and all.

How Wissen Research can help you with Directed Prosecution?

Here is the way by which Wissen Research can help you with Directed Prosecution:

  • We can help companies to strengthen their IP portfolios by monitoring prosecution of their applications to ensure that decisions about the filing of continuation applications are made within the three-months’ time window.
  • After receiving the NOA application, we can assist in identifying key elements or embodiments that are missing from the claims from the patent description and look for any pertinent products or technologies for the same.
  • Our technical experts can assist you in developing a specification mapping (evidence-of-use (EoU) chart) for the claimed elements of the NOA application and the identified missing key elements or embodiment from the patent description against the determined pertinent product. The specification mapping will help you to draft a new set of claims that make a possible scenario of infringement in the future.