How Specification Charts Help In Directed Prosecution
The success of any business depends upon its ability to be future-ready. This is especially true in the IP scenario which is fraught with unseen perils. Direct patent prosecution is one such smart approach that allows companies to be prepared for forthcoming litigation cases. It helps them build a stronger and high-value portfolio while minimizing any risks.
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What Is Directed Patent Prosecution?
Directed patent prosecution is the identification of key elements not present in the claims of a patent prosecution, which would be useful in infringement cases and in filing a continuation application. This is different from patent prosecution, which entails the entire process of drafting, filing, and negotiating with the office to obtain patent protection.
To prove infringement, an exercise of mapping the elements in a claim against the features of the product is carried out. If all the elements are not present in the product, then a partial mapping is obtained. To attain the complete mapping or Evidence of Use (EoU), the claims need to be trimmed or modified. This forms the heart of the process of directed prosecution.
Why is Directed Patent Prosecution Important?
There are several advantages of directed patent prosecution, such as:
- Helps build a stronger patent portfolio that can withstand the severe competition in domestic as well as international markets.
- Reduces the time spent in answering communications by the patent office.
- Increases the licensing scope of the patent thereby helping to monetize it.
Overview of Specification Charts
A specification support chart consists of two columns in which the elements of the claim language are in the left column and the corresponding specification is on the right. It differs from the EoU chart because, unlike the EoU, the mapped elements here cover the entire specification and not just claims. It offers an outline of all the elements mentioned in the product.
Creating Specification Charts
The first step to making a specification chart is to identify and list all the features of the invention. Doing so requires a knowledge of the competitor’s products and is thus best left to the IP experts to pursue. Once this is done, the next step is to enlist the paragraphs in the specification which correspond to the features identified in the first step. And finally, the listed paragraphs/embodiments, are mapped to the information availed from product documentation.
Such charts are extremely valuable when answering the question of specification-based defenses under 35 USC 112.
Benefits of Specification Charts
- Specification charts provide a clear roadmap of the patent claims and specifications. Rejections during the patent prosecution process are normal and bound to occur. But with specification charts by your side, it becomes easier to figure out the different courses of action available to steer the prosecution. This helps in saving the high costs entailed in patent prosecutions.
- The graphic representation of patent claims and specifications against the product attributes aids analysis and brainstorming. It also offers an exhaustive insight into competing products.
With directed patent prosecution, companies are assured of ROI on their existing portfolio. It is an easy and cost-effective measure to make your invention ready to be licensed by competitors using products/tech similar to yours. Given its myriad benefits as listed above, it makes sense to incorporate directed patent prosecution at the patent inception stage itself.
As with all the critical things in a patent prosecution process, it is advisable to hire expert services for directed patent prosecution as well. With their in-depth knowledge of the market, specialized firms are in a better position to identify products that are close to the technology disclosed in your patent. So, while you channel your resources towards securing a patent, a dedicated team can parallelly work to secure the future of the invention.
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