Law Offices of Michael Crilly

Intellectual Property Services with a Global Perspective™

CASE STUDIES

PATENTS

    

Client

• Manufactures and sells components throughout the world.

• New components are often within crowded patent fields with many similar designs. 

• US market of primary importance; although, several emerging market countries may be as important in the immediate future.

   

Challenge

Client required filing and prosecution strategies to assess and to maximize the likelihood of successful prosecution of patent applications filed in multiple countries with various standards for obviousness.

   

Approach

Prepare and file Patent Cooperation Treaty (PCT) application with the United States Patent and Trademark Office (USPTO). Elect examination by a foreign patent office competent in the field of the new invention and likely to apply standard for obviousness acceptable to all or most countries of interest.

   

If foreign patent office concludes that claims are allowable in part or whole, then file PCT application with USPTO as US national phase application and request accelerated examination of US national phase application based on favorable opinion from foreign patent office.

   

If USPTO concludes that claims in US national phase application are allowable in part of whole, then file PCT application with patent offices in other countries where new invention is manufactured, sold, or used.

   

Benefits

While USPTO is not bound to agree with the examination opinion issued after first examination of PCT application by foreign patent office, examination of US national phase application before USPTO is less likely to result in rejection of all claims and more likely to resolve allowable claim scope without multiple office actions.  

   

If first examination of PCT application by foreign patent office is performed within 12 months of the priority date (earliest filing date), then it is often possible to conclude examination of US national phase application before 30 month deadline for foreign filings. Results of patent examination before USPTO allow applicant to make a more informed decision as to whether foreign filings should be made and may persuade other patent offices to also allow the same claim scope as USPTO. 

   

Filing and prosecution strategies are beneficial to applicant seeking US and/or foreign patent rights.