How Directed Prosecution helps you generate maximum ROI?

What is directed prosecution?
Directed Prosecution services involve conducting a product search within the context of the existing claim scope and proposing modifications to the patent claims to make them suitable for enforcement.

Let’s understand it through an example –

Consider a scenario where a patent application claims a set of features. Let’s name the features as “A”, “B”, “C”, and “D”. While conducting the product search it is found that the product has features named “A”, “B”, “C” & “X” in it. So there is a clear difference between the claim of the patent and the target product.

So, in Directed Prosecution, the patent application is strategically directed towards the product so that the patent covers all the features present in the product. Once a better overlap is confirmed by amending the claim feature for which there was initially no overlap then it enables the patent owner with a ready report to negotiate a licensing deal with any third-party products similar in subject matter to the claimed invention.

So, in nutshell, Directed Prosecution is the process of identifying the key features not included in the claims of a patent in prosecution, which holds importance in infringement

scenarios or filing the continuation application of the patent. To conduct these studies, a claim amendment is required. So let’s understand what the claim amendment means?

What is the claim amendment?

In the context of intellectual property law, particularly in patent applications, a claim amendment refers to a modification or alteration made to the claims section of a patent application. The claims section defines the boundaries and scope of the invention being protected. Claim amendments are made to refine, clarify, or broaden the original claims in response to various circumstances, such as overcoming prior art rejections, addressing objections raised by patent examiners, or incorporating new developments during the prosecution of a patent application.

Contd….

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