Directed Prosecution Solution to Build Strategic Patent Portfolio

The Challenge

Companies invest a large sum of money to build a patent portfolio to protect their innovations. An annuity fees has to be paid every year to keep the patents in force. Therefore, the companies need to continuously keep a tab on valuable patents Our client, a huge pharmaceutical giant had a portfolio of 1000+ US patents. They wanted to restrict the budget on IP and wanted our help in identifying the patents that had long term value

The Solution

Analystoserve team performed directed prosecution to handle and better monetize their existing patent portfolio. Our approach is outlined below:

1. USPTO Status Check: We regularly looked at the legal status of the patent portfolio. Our analysis began once we received a Notice of Allowance for a particular patent application. The USPTO provides a time frame of three months to pay the issue fees and to take a call on patent continuation filing.
2. Technical Analysis: We did a deep analysis of the patents for which we had received NOA, and looked for features that are described in the patent specification but are not claimed.
3. Competitor Identification: We identified competitors that were having products overlapping with the unclaimed features of the recently granted patent.
4. Claim Mapping: Claim charts were constructed with the granted claims and the unclaimed features that were overlapping with the competitor product

Business Impact

The client filed a continuation application based on our claim chart. Thus, it was an informed decision and it strengthened the clients existing patent portfolio by making it “license-worthy” and saving the client from future litigation threats.