By Michele Liu and Dennis Fernandez

Some common issues encountered by companies in the management of the company’s patent portfolio includes:

1. Use preliminary and supplemental claim amendments.

A straight-forward approach to applying for patent protection is to file claims which directly cover your invention. In addition to this, other types of claiming strategies can be helpful in both offensive and defensive ways. Craft claims to cover any related inventions that address trends in the industry and/or any future needs that may arise. Such trends or needs can become clearer between the time a patent application is filed and the time a first response is received from the U.S. Patent and Trademark Office (USPTO). Also craft claims to cover alternative ways in which competitors can (or do) address the trends or needs. Then, submit these claims to the USPTO as a preliminary or supplemental amendment. These types of amendments should be aggressively used throughout the prosecution of the patent application in order to obtain the greatest scope of protection possible.

2. Manage continuation or divisional patent applications and/or RCE’s.

During the course of prosecution of a patent application, a procedural point can be reached where you must decide between several courses of action: continue prosecution, file an appeal, or abandon the application. If you decide to continue prosecution, then you can file either a continuation application, a divisional application, or a Request for Continuing Examination (RCE). The claims file in any of these ways should be aligned with your company’s portfolio strategy. Thus, it is imperative that such filings are carefully managed

3. Partition your technology into inventions.

Once you identify the technology to patent, you have to determine how to partition the technology into inventions. Although it is tempting to approach a patent application as a technical document, the application is in actuality a legal document containing technical information. As a rule of thumb, each patent application should describe its invention in a focused, clear, and concise manner. Such a description would remove many potential ambiguities when the meanings of the claims are being determined.

4. Consider the strategy or cost of pursuing improvements or extensions of your existing technology.

It is common to create improvements or extensions upon an invention after a patent application has been filed on the invention. In such a case, consider filing a new and separate patent application or as a Continuing-in-Part (CIP) application. A CIP is closely related to the original filing but which contains "new matter", i.e., descriptions not included in the original filing. How this new filing fits within the company’s overall portfolio strategy must be considered. Cost may also be a factor, especially if filing in countries other than the U.S. is contemplated.

Often neglected by early-stage startup companies and entrepreneurs are off-shore strategies for mitigating federal tax exposure. Such international tax strategies are especially relevant when foreign licensees of intellectual property rights are contemplated possibly in the company business plan. In many cases in fact, it is particularly beneficial to deploy one or more corporate entities off-shore much sooner, rather than after licenses are identified.

5. Consider low-cost procedural options.

When under budgetary or time constraints, consider low-cost procedural options such as provisional applications. A provisional application has fewer requirements than regular patent applications and a lower filing fee. You then have one-year from the filing date of the provisional application to file a regular patent application. In addition, if your company is a small entity (i.e., fewer than 500 employees), you can pay a discounted filing fee by filing your patent application electronically.

6. Utilize appeals, teleconferences, and affidavits during prosecution.

If you and the USPTO examiner have trouble agreeing as to the patentability of some claims, request an interview with the examiner to further explain your arguments. The interview can be in person or via teleconference. Such interviews often move the prosecution forward and can expedite allowance of your claims. If additional evidence would be helpful, then file affidavits setting forth the relevant facts along with your arguments. If agreement is still elusive, consider appealing the examiner’s rejections to the Board of Patent Appeals and Interferences. Oral arguments in front of the Board can be requested.

7. Meet your duty of disclosure to the USPTO of known prior art.

The USPTO impose a duty of disclosure of known prior art documents on each applicant and his/her representative. This means that any known documents or publications relevant to your invention are to be disclosed to the USPTO in a timely manner through the filing of an Information Disclosure Statement (IDS). The duty of disclosure duty applies even if the documents describe technology that can be distinguished from yours. As this duty of disclosure applies throughout the prosecution of the application, continue to disclose prior art documents as you become aware of them. Thus, if a document comes to your attention after the filing of a patent application, an IDS must be filed to bring the USPTO’s attention to it. Failure to meet your duty may jeopardize the validity of the patent.

There is no duty to perform a search for prior art in order to file a patent application or at any time during its prosecution. However, if such a search is performed, any relevant documents must be disclosed to the USPTO as soon as possible. In addition, be aware that if you file a patent application for the invention in a foreign country, the results of the search by the foreign examination body may be required to be disclosed to the USPTO as well.

8. Learn to let go when you need to and consider alternative approaches.

When certain claims in a patent application prove to be difficult to prosecute, or if they later prove to be of little value to your company, consider canceling these claims. If this applies to all the claims of an application, then abandon the entire application. If the application has not yet been published, then you can still maintain the invention as a trade secret, if appropriate. You can also choose to voluntarily publish a description of the invention to place it into the public domain and to prevents others from blocking your use of the invention.

9. Identify licensing opportunities as well as litigation possibilities.

The possibilities of licensing and enforcing patents in your portfolio should both be a part of your strategy. In some cases, such as when a direct competitor might be infringing your patents, litigating to enforce your patent may be the best avenue to achieve the desired result. However, infringement lawsuits are expensive and can be quite lengthy. A more realistic approach may be to formulate a licensing strategy, where you analyze your technological space to identify potential licensees. Licensing is less costly than litigation, and the licensing fees your company receives become part of your income stream.

10. Use reissue, reexamination and interferences.

Even after the issuance of a patent, broader claims may still be pursued by filing a reissue application. Errors made during prosecution can also be corrected using this process. If a prior art document comes to your attention after the patent issues, and you believe this prior art document may negatively impacts your patent, then you can request a reexamination of your patent based on this document. Claims of different scopes can result from the reexamination, however, the chances of your patent being invalidated due to this document is greatly minimized.

If you become aware of a patent application filed by another on technology which you believe was first invented by you, you can file a patent application with claims specifically geared toward triggering an interference. When two entities each file a patent application for the same invention, the USPTO declares an interference. A "mini trial" is then held to determine who invented it first. The one who first invented is the one entitled to pursue a patent.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.