Proactively Executed Prosecution

When it comes to patent protection, One3 IP® follows its own path using an innovative method of patent prosecution called Proactively Executed Prosecution (“PEP”) in order to obtain broad, worldwide patent protection in a faster and more cost-effective manner.

The current prosecution paradigm through which companies obtain patents typically relies on a drawn out, back-and-forth written submission process that has been adopted by a vast majority of patent attorneys in the United States and around the world. In this process, a patent office rejects a pending patent application and the patent attorney files a written response in an attempt to overcome the rejection. This written submission process is often repeated three, four, five or more times until the patent office either finally rejects or allows a patent. This same process is replicated in every patent office for which the same patent application is filed. As such, this process tends to be expensive, time consuming, duplicative, and generally results in a substantive narrowing of the scope of the claims to obtain issuance of a patent.

PEP overcomes the limitations of the status quo procedure in a way that generally shortens the time to obtain patents worldwide that meets your company’s needs, while saving a considerable amount of money. PEP achieves these results by aggressively fighting for your patent while minimizing the amount of written statements made by, and to, a patent office and taking advantage of the Patent Prosecution Highway (PPH). Minimizing written submissions reduces the number of comments and admissions that can limit the breadth and scope of the claims of your or your company’s patent, which, in turn, can adversely affect your ability to license or enforce your patents. The PPH is a set of agreements between select countries that provides for accelerated patent prosecution procedures by sharing information between patent offices around the world. These agreements permit each participating patent office to benefit from the work previously done by another participating patent office, with the goal of reducing examination workload and improving patent quality. By exploiting the PPH, the duplicative and redundant practice of prosecuting each patent in each country as its own independent application is circumvented, resulting in quicker granting of patents worldwide and thereby dramatically reducing foreign patent attorney costs and prosecution fees.

PEP works as follows:

  1. We start by learning and understanding the client’s innovation, carefully taking into consideration the nature and aspirations of their company, the competitive environment they operate in, and the client’s business objectives and goals. We then consider design-around aspects of the innovation as well as all other potential uses and areas that our client’s technology impacts, but which may not be a primary interest to the client. We do all this at no cost to our clients, because as your partner, One3 IP’s interests lie in obtaining meaningful and comprehensive protection through your patent estate, thereby ensuring its maximum commercial value for your company.
     
  2. We then synthesize what it has collected and prepare a broad patent application that covers not only the client’s technology, but every possible use of this technology. We believe that our clients should not only protect their area of interest, but every area in which the technology can potentially function so that our clients can make money through licensing those areas that are not of interest to their company.
     
  3. We file the prepared application in the United States as a Provisional no matter where the client resides. By filing a U.S. Provisional application, our clients are able to continue to work on their invention and obtain an extra year of patent protection around the world. One year after filing, we file the application as a United States Non-Provisional patent application and an International PCT application. For certain clients, we will file in non-PCT countries, such as Argentina and Taiwan for example.
     
  4. We then proactively prosecute the patent application in the United States. We do not believe in merely filing papers in response to an Office Action that rejects the pending claims. Instead, we meet with the Patent Examiner at the United States Patent Office in Washington, D.C. during the initial stages of the examination process whenever possible – otherwise, where a particular Patent Examiner is not available to meet in person, we will meet with them via video or telephone conference. Interviewing an application is of critical importance because these meetings enable us to 1) ensure that the Patent Examiner fully appreciates our client’s innovations; 2) quickly determine what “real” concerns the Patent Examiner has with the pending patent application; 3) focus our attention on addressing these concerns in order to provide the most persuasive and compelling arguments possible; and 4) develop a working relationship with the Patent Examiner where the goal is to find common ground. In most instances, we are able to obtain a patent for our clients after no more than two Office Actions. This process results in quicker patent allowances, minimal prosecution history in the record, and increased cost-savings to our clients.
     
  5. We next take the issued United States patent and file the issued claims in countries around the world through the PPH to procure a world-wide patent estate. Through the PPH, we have been able to obtain issued patents having the same United States claims in a considerably shorter time than if such foreign patents were to be separately prosecuted in each country through the status quo method of filing back-and-forth paper responses. The time can be as short as 3 months to a year after entering the PPH in each participating country. By reducing the time and paper filings around the world, our clients save money by substantially reducing the fees charged by patent firms in other countries, while also obtaining similar patent rights in each country.

The PEP procedure can result in a patent estate that broadly covers the use of your company’s technology in 1) its research and development space, 2) as well as your competitors’ space, and 3) in areas your company is not interested in pursuing, but where your company has licensing opportunities to generate additional revenue. By using the PEP, we have been able to obtain broad patent coverage for our clients worldwide by doing it better, quicker, and cheaper. Let us do the same for your company.