The Next Step: Prosecution of Your Patent Application

AuthorDonald S. Rimai
ProfessionRecently retired from Eastman Kodak where he worked as a researcher and intellectual property manager in digital printing and adhesion science
Pages199-219
199
Introduction
You and your team have advanced technology by coming up with novel and
nonobvious solutions to a series of technical problems related to an envi-
sioned product that has unique capabilities that should take the market by
storm, making all other products obsolete. You want to recoup your R&D
investments as well as the costs of tooling and distribution. In other words,
you want to build a wall of protection around your intellectual property
that will keep competitors from encroaching on your market. To do this
you recognize that you will have to build a patent portfolio.
You have conducted a thorough prior art search. In part this search was
accomplished because of your knowledge of the marketplace. You know
what your competitors’ products and their capabilities and features are.
You also know the limitations of those products. at is how you recog-
nized your opportunities and, by solving problems that encumbered your
competition with the limitations of their products, you have designed and
developed your technology.
13
e Next Step: Prosecution of
Your Patent Application
200 A Guide for Implementing a Patent Strategy
You have exercised due diligence in conducting your prior art search.
You have inputted into this search your knowledge of your competitors
products, as well as information gleaned at scientic conferences and pub-
lications and trade shows. You have also used the modern on-line patent
search engines to nd existing patents and published patent applications.
You have discussed holistically the technology advances made by you
and your colleagues and, based on both these ndings and the results of
your prior art searches, you have developed a patent strategy that aims to
both protect your intellectual property and, in addition, would be strongly
desired or required by your competitors.
You have carefully dened the problems that you have solved in a way
that, hopefully, circumvents obviousness or lack of novelty objections
that an examiner may envision. You have proposed sets of claims that
should cover those inventions upon which you and your teammates are
ready to le concurrently and have written disclosures that support those
claims without compromising your ability to le additional applications
representing further advances in the future. You are sure that the pro-
posed applications do not attempt to claim the same invention more than
once.
Your disclosures may be common to multiple applications or you may
have found it preferable to write separate disclosures. In either event, the
disclosures also support the dependent claims and give you latitude should
you have to revise your proposed claims based on the resulting oce
actions.
And you have peered into the future and have envisioned how your
strategy will proceed with additional lings as your technology continues
to advance.
You have worked hard and accomplished much by getting your applica-
tions into their current state. However, you recognize that patents are legal
documents and, as such, need someone with legal expertise to weigh in
and advise you. It is time to meet with legal counsel.
Meeting with Your Legal Advisors
Hopefully, you have had the opportunity to discuss your proposed pat-
ent applications and your patent strategy with your legal advisors prior to
the present time. is is oen the case with larger corporations that have
their own sta of patent attorneys and agents, but is oen not the case for
smaller companies, individual inventors, or entrepreneurs. It may not even
be true for all proposed patent applications with larger companies, as even

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