Patent Moneyball …..

In September 2011, President Obama signed the Leahy-Smith America Invents Act which implemented some of the most fundamental changes to patent law in decades.  And certainly for the daily patent practitioner, there are many changes that impact patent practice.  However, for a fresh new start-up trying to make a name for itself in the fast-moving technology sector, does the implementation of this new law really change basic patent strategy?  In many cases, the answer is no.  File early, file often, make liberal use of the provisional process, and be as comprehensive as possible in describing your invention and its possible variants.  But, there is one provision that small, “thrifty” start-ups can use to their advantage – the prioritized examination process.

The conventional wisdom in drafting patents has always been to “swing for the fences” – i.e., draft claims that are as broad as possible, and narrow the claims as necessary during prosecution.  While this approach works well in many instances, it has a tendency to drag on and cost a lot of money, often extending beyond the company’s desired exit strategy.

The new accelerated examination process, which has a stated goal of a final disposition (i.e., final rejection or allowance) within a year, requires only the payment of an additional fee ($2,400 for small companies) and adherence to some basic practice rules to participate.  One strategy for using this process, however, turns patent practice on its ear by starting narrow rather than broad and submitting claims that are detailed and directly describe a specific embodiment of the invention.

This significantly increases the likelihood of a favorable examination and provides a great opportunity to discuss the claims with the examiner in a positive light.  In the end, a patent covering a narrow, but important aspect of your technology is far more valuable than a pending application that is years away from its first substantive exam.

This post on Patents was authored by Joel Lehrer.


= required field