Patent Prosecution

The Patent Prosecution part constitute almost all the part, right from deciding on the patent filing to managing the patent portfolio. Patent Prosecution is not merely a process of interaction between an Applicant and/or his Legal Representative and a Patent Office concerning the patentability of a patent, but, for the Applicant, it is also a test of legal and technical competence that it believes the Legal Representative possesses. Patent prosecution is highly individualized and reflects the underlying skill set of each Attorney as the prosecution process itself involves a high level of technical negotiation and interpretation of specific terminologies with the patent office, which in the end has high-impact value for the client. This way one can understand the importance of the prosecution part and the approach that must be taken.

Patent Prosecution and IIPRD

The licensed attorneys must have the technical expertise which is required in the field. For the prosecution part, the practitioners must be required to have experience in various fields such as pharmaceutical, automobile, telecommunication, computer hardware, software, electrical, and electronic, to mechanical, and biotechnology, to name a few. The firm must also advise clients on other fronts such as that of extracting maximum potential out of the patents and how the company can monetize and optimize the patents. For such advising, the firm must consider the market position of the patent in question and also the position of the company. The company must also be clear with its business goals and must have clear long and short-term objectives so that the decision can be taken in terms of profitability. Why this is important is because the business objectives will define and prepare the future patent prosecution strategy. All such rules and laws that govern the prosecution part are laid down by the patent office and notification of the same is released from time to time. Each move by the attorney must be taken following the law, from the start of patent filing to advising the client for monetizing the patent.

The Patent Cooperation Treaty (PCT) is an international treaty with more than 153 Contracting States. It is administered by the World Intellectual Property Organization (WIPO). The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”. IIPRD has a strong focus on this part as well. IIPRD files PCT applications with the WIPO, for Indian patent applicants. Further, we have partnered with several patent attorneys outside India for filing in foreign countries. Our partnership with these patent attorneys outside India facilitates the filing of patent applications outside India. Our partner patent attorneys, who are located across the globe, are known for delivering superior patent filing services.

Stronghold of IIPRD

IIPRD has extensive experience prosecuting and successfully securing patents in foreign countries throughout the world. The Patent Agents and Patent Attorneys in our firm have substantial experience in prosecuting patent applications filed abroad in association with our foreign associates. We also provide patent prosecution support to other law firms and patent attorneys based outside India. Given the analysis required to respond to office actions and the time involved in performing the same, typically, most IP firms entrust us with preparing detailed responses to office actions.

IIPRD also provides complete support for the pre-grant as well as post-grant opposition procedures concerning a patent. An interested party may oppose the grant of the patent based on grounds of opposition allowed under the respective laws by providing technical and legal arguments and associated references. IIPRD offers services to such clients in searching relevant prior art references and drafting Opposition Letters, which include all such references. IIPRD also offers its Services in drafting a complete Response to Opposition which includes legal as well as technical arguments that can be used to enable the allowance of the claims in the application/affirm the validity of the opposed patent claims.

Author: Saransh Chaturvedi a Legal Associate at IIPRD,  in case of any queries please contact/write back us at [email protected].