What is the first thing a company must do to improve the value of its patent portfolio?
Minneapolis patent attorney Suneel Arora of Schwegman Lundberg & Woessner explains that getting the most out of the resources that a company has is a good way to get the most out of a patent portfolio.
Email: [email protected]
Phone: (612) 373-6951
So, the first thing that a company could do to improve the value of the patent portfolio is really to try and get the most out of the resources that it has. So, getting each patent is a costly process. If there is some money that is devoted up front to really understanding what the prior art landscape is and really focusing the patent on the differences from the prior art, that money is very well spent. The other thing I would say is that it’s very useful to start the conversation with the patent examiner at what at least the patent attorney and the inventor think is the point of novelty of the invention.
Oftentimes the way things work at the patent office is the examiners will go off and do a search during the examination process, and they will start the examination from a point that is not even close to the prior art that the inventor or the patent attorney are aware of. So, from my perspective, if we can start the conversation with the patent examiner closer to where the invention really lies in the prior art landscape, then you can get to where you need to much sooner. So that involves getting that patentability search done up front before you draft the patent application. And it also involves trying to interview your case and to bring the examiner to a point where you’re actually dealing with the closest art that you’re aware of.