Your patent strategy depends on your goals
Patent strategies should be dictated by end goals. So it makes sense to start with a worthy goal, and then work backwards to formulate a patent strategy to achieve that goal. Since every patent application is different, let me generally suggest a goal that would broadly fit the vast majority of utility patent applications – to get broadest independent claims allowed in light of closely related prior art.
1. Get a sense of the prior art
You need to know where the line is drawn between the old and the new. Though a patentability search is not mandatory, it’s probably a good idea if you’re not very familiar with the industry. Keep mind that there is a mandatory duty to disclose any known prior art references that are relevant to your patent application. The keyword is “known” so you should weigh the benefits of a prior art search against the drawbacks of disclosing searched patents to the USPTO.
2. Pare down your invention to core features
Your invention may have several wonderful features, but which are most important? If compelled, could you reduce the essence of your invention down to a combination of five features or less? Put it another way: what would be the key elements you wish to block competitors from using? Can you prioritize the unique qualities of your invention and distinguish the primary features from secondary ones? Now you’re starting to get a sense of how patent attorneys approach claims drafting.
3. Budget for a utility nonprovisional patent application
You might wonder how a budget would affect a patent filing strategy. A more thorough disclosure of the invention in the patent specification, including the written description and drawings, will generally provide more opportunities for claim amendments. We’ve had many potential clients approach us about taking over the representation of existing patent applications (drafted by others) that were scant in detail. Such situations leave us with little room for claim amendments, and may require us to file a continuation-in-part (CIP) application to add new subject matter.
This doesn’t mean that you should pay for the most expensive firm that you can afford. But if you’re shopping around and getting quotes between $12,000 to $15,000 for your nonprovisional application, then beware of a low-ball estimate of $2,000 that claims to offer the same value. Don’t fall into the trap of being penny-wise and pound-foolish.
Beyond the initial filing, you must keep in mind the costs of responding to Office Actions which will inevitably occur. On average, you may have about 18-19 months before receiving that first Office Action.
4. Use the international PCT application to your advantage
If you plan on pursuing foreign patents, then it may make sense to file an international PCT application sooner so that you can see the search reports by the PCT examiner. This will give you an opportunity file preliminary amendments in your copending US application, hopefully before receiving the first Office Action. The patent examiner will then search the prior art against your amended claims which will be in a better condition than your original claims.
5. Examiner Interviews
Examiner Interviews should play an important role in an effective patent filing strategy. Preparation is the key to a properly conducted interview. It doesn’t hurt if your patent attorney is a former USPTO patent examiner. Though success is not guaranteed, we have seen many cases lead to an allowance after conducting an interview and then filing the written response addressing the issues verbally raised with the examiner. Even if an allowance does not immediately result, the applicant may have greater clarity in charting a path forward upon receiving a further Office Action.
Your patent strategy may change through the application process
Even with all the planning, it is difficult to foresee all the twists and turns that will inevitably occur during the prosecution of your utility patent application. You may be assigned, in your opinion, an unreasonable examiner. New prior art references may be cited in Office Actions that are much closer than you expected. You may develop new product features that were not included in the original filing. Having the mindset of “expect the unexpected” can help temper expectations and prepare you for the long journey towards obtaining a utility patent.
