Formulating an effective patent prosecution strategy is a complex, multifaceted task. From one perspective, the technical merits and shortcomings vis-à-vis the cited prior art might seem to dominate the considerations that need to be assessed. While from another perspective, the legal basis for an examiner’s assertions regarding an invention, and the veracity of such assertions, might appear to form the focus of attention for advancing the client’s interests. In truth, both of these aspects are two sides of the same coin, and are tantamount to being the crux of the matter at hand.
However, an aspect that is often overlooked is the value of the claimed invention. Ultimately, monetization of a patent through a well-structured business model is the only way an equity stake can be exercised. In the current arena of patent speculators looking to capitalize on opportunity gaps, one needs to look beyond the prosecution stage to envision how a patent will hold up to attacks of validity, enforceability, enablement, freedom to operate, and other potential snafus that can lead to costly litigation or lost market share. Such issues need to be laid on the table when preparing an office-action response, not after a patent has already been issued.
Being able to clearly show infringement (sometimes referred as detectability) can be a pivotal make-or-break factor in an otherwise potentially-successful business venture. Without foresight in this regard, even an issued patent may become nothing more than a token wall hanging, lacking any commercial value. Getting all your ducks in a row is essential to a successful prosecution strategy which at the end of the day will bear heavily on the extent of wealth creation that can be realized.
FlashPoint IP factors these wide-ranging aspects into the process of securing patent protection, whether in searching the prior art, drafting patent applications, selecting how and where to file, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP. Contact us to discuss your options regarding IP positioning and strategy, and how best to secure your rights.
