Proactive Patent Prosecution
When an inventor starts down the path of obtaining patent protection, it is important to understand that the process does not end with an issued patent. Unless superficial protection is desired (e.g., a piece of paper to hang on the wall), patenting an invention is an ongoing process. Nevertheless, each step of the process can be taken one step at a time.
After the first patent issues, the market continues to evolve, competitors may try to “design around” your patents, the patents may be cited by Examiners to block your competitors, art surfaces, and the patent laws change. Therefore, practically speaking, the patenting process requires:
monitoring the market for competitors “designing around” your claims,
monitoring of citations to your patents by Examiners during the prosecution of your competitor’s later-filed patents,
understanding and fixing ambiguities or weaknesses that become apparent in the portfolio based on:
art and arguments from potential licensees, and
changes in the law.
The solution to these issues is filing new claims in continuations in response to these later developments.
This can only be done if patent owners and inventors understand the concept of continuation practice. Inventors should keep at least one application in the patent portfolio pending at all times. When the portfolio is pending, it can adapt as an offensive and defensive tool as the market for the technology evolves. I call this ongoing process “proactive patent prosecution.”
In the following series of posts, I will discuss starting the “proactive patent prosecution” process with provisional and design patent applications, continuing to secure protection by converting a provisional into a non-provisional application, and utilizing continuation applications and "proactive prosecution" techniques to monitor the industry to further improve the value of your patent portfolio by mining your patent specification and monitoring forward citations of your patent portfolio.
