Intellectual Property Evaluation

An applicant may file a patent application with an expectation of obtaining a relatively broad scope of protection.  However, after the application is filed, the claims are often rejected by the patent office.  In response, the claims may be narrowly amended to overcome the rejection.  Depending on the extent of the amendment, the scope of protection afforded by the application may become de minimis.  If the amended claims are allowed, it may not be worth paying the issue fee.  As a consequence, it is important to evaluate the condition of patent applications and the effects of prosecution on the scope of protection. 

The status or condition of a patent application can be evaluated any time during its prosecution.  However, it makes sense to do so following certain landmark events, such as upon receipt of an Office Action rejecting the claims, and prior to making an issue fee payment.  If claims are properly rejected for lacking novelty or being obvious, the impact of the rejection should be considered before filing a response.  A proposed amendment to the claims should be considered to determine the impact of the amendment on the value of the claims.  If the claims have to be so narrowly drafted that they may be easily designed around, then any opportunity to enforce the claims, if allowed, may diminish.  If this is the case, then the applicant may wish to abandon any further efforts in the application to preserve funds for other intellectual property matters.  Certainly, the condition of claims should be evaluated prior to payment of an issue fee, which for a utility patent for a large entity (e.g., a business having 500 employees or more) is $1740 USD.  Combine the issue fee with the maintenance fees for a patent, the cost of the patent over its life could be over $10,000 USD.  This is a significant investment of funds in a patent that may have little value. 

If filing the same or related patent applications (i.e., patent family members), it is advisable to monitor the status of each application, whether domestic or foreign.  Although each country has its own laws and standards, the manner in which prior art is applied in one application may translate to a related application in another country.  Monitoring the prosecution of patent family members often results in more efficient prosecution overall because the same or similar responses to Office Actions in one application can often be used when prosecuting other family members.  Keep in mind that, in the United States, there is a duty to disclose information cited in a patent family member in another country.  For at least this reason, it is advisable for all related applications to be managed by the same counsel, who can keep track of family members and Office Actions, and advise a client accordingly. 

Once a patent grants, its value should also be periodically evaluated.  This can be done at landmark events, such as prior to the payment of a maintenance fee, which over the life of a US patent can be about $9,000 USD for a large entity.  Patent family members may all diminish in value over the life of a patent, so making a decision to allow patents to expire before the end of their term may result in a significant savings in maintenance fees.  With rapid advancements in technology, products often become obsolete before the end of the patent term.  Keeping track of products with which patents are associated may allow a patent owner to easily or more readily identify patents that are good candidates for abandonment when products become obsolete

As a related note, the validity of patent claims is at times successfully challenged following an allegation of infringement.  Invalid patent claims can diminish the value of a patent, often rendering it unenforceable and worthless.  Sometimes, maintenance fees continue to be paid, frequently due to a breakdown in communication channels.  If invalid patent claims render a patent invalid, the maintenance fees should not be paid and the patent should be allowed to lapse

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