Patent filing strategy is a broad topic to cover because there are so many aspects to it. Synchronizing filing activity to get the “gears to mesh right” so that resources are utilized efficiently and timely in securing intellectual-property rights is an elegant process in defining an IP strategy that requires a deep understanding of patent rights and regimes, and how they can best be exercised and exploited. Since intellectual property firms handle an array of filings under a wide range of criteria, they are often helpful at guiding this process in a cohesive way.
It should go without saying that one should be scrupulous in maintaining confidentiality at least until a patent application is filed. In many cases, limited disclosure (under the terms of an NDA) for partnering or investment purposes is reasonable. However, one shouldn’t assume that since they can say that they are “patent pending” that there is no need to be discreet in revealing details. Inventions can be improved and modified along the way, creating new matter with a new conception date. Even after the typical 18-month publication date has passed, there may be legitimate reasons to curtail disclosure in the context of the IP strategy.
Filing strategy should also factor in the number of patentable inventions that may be clustered in what may be believed to be only one innovative commercial product or industrial process. Extracting the ones that are worth pursuing, while preserving the right to reconsider any others at a later time, can be difficult, if not impossible, after filing an initial patent application on such a patent cluster. The role of proper inventorship also plays a role in the filing strategy with regard to issues of ownership, and is complicated by the clustering of inventions.
Beyond this, the issue of what types of patent applications to file, and when to file, becomes a complex calculation of budget, timing, and objectives in the IP strategy. Each type has certain advantages and limitations, whether it is a provisional patent application, design patent, utility model, IL patent, utility patent, or PCT patent application.
Furthermore, the cost equation resurfaces at the end of the PCT process when one has to make important decisions for entering national and/or regional phase. Similarly, at the end of the patent prosecution of a patent application, a final assessment should be made regarding market opportunities and threats when considering filing continuation applications before issuance or abandonment.
FlashPoint IP, a leader among intellectual property firms, factors these wide-ranging aspects into the process of securing patent protection, whether in performing a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file a patent application, 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.
FPIP files patent applications on behalf of its clients directly before the USPTO, EPO, WIPO, and ILPO, and worldwide via our network of professional associates. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.
