General Patent Strategies
As detailed below, SI’s patent-management strategies and guidelines for outside counsel vary significantly depending on whether the patent family at issue is UNLICENSED or LICENSED. Cases that are LICENSED are easily identifiable by the presence of a “$” symbol in SI’s reference number (e.g., M20-194P^-US1-b$).
General Filing Strategy
- SI files provisionals frequently to give as many technologies a chance at market exposure as possible.
- As summarized in the below diagram, after SI secures a filing date by filing a provisional, it then markets the filed-upon technology to industry and/or facilitates the launch of a new ASU spinout to advance the technology.
- If SI’s marketing campaign leads to an option agreement or license agreement with an industry partner and/or new ASU spinout, SI will likely file a follow-on PCT application.
- If SI’s marketing campaign does not lead to an option agreement or license agreement, SI will still file a US nonprovisional application (US only) in most (but not all) instances.
Focused Claims Presented for Examination
- To promote compact prosecution, the first nonprovisional in an unlicensed family should not initially present the broadest possible patent claims supported by the specification.
- Rather, the first nonprovisional in the family should present focused claims directed to the embodiment for which the inventors have generated the best supporting data or the inventors and/or SI otherwise believe is the embodiment most likely to prove commercially valuable.
- Critically, however, SI’s nonprovisionals must still have literal support for the broadest possible claims baked into the specification for the reasons explained below.
Literal Support for Broad Claims Baked into Specification
As illustrated in the following diagram, if a company licenses a previously unlicensed technology during prosecution (i.e., while the first nonprovisional presenting focused claims for examination is still pending), SI will then:
- File a continuation presenting the broadest possible claims, which is possible because of the literal support for such claims baked into the specification at the time of filing; and
- Concurrently continue prosecuting the already-pending focused claims through to issuance.
Compact Prosecution: SI’s “Three-Strike” Rule
In an effort to maximize the impact of SI’s financial and human resources, SI generally does not undertake prolonged prosecution for unlicensed patent cases.
Rather, in the absence of exceptional circumstances, unlicensed patent cases get the following three opportunities to reach allowance before SI ceases prosecution.
SI manages LICENSED patent cases differently than UNLICENSED patent cases, including with respect to budgets and claim scope. Cases that are LICENSED are easily identifiable by the presence of a “$” symbol in SI’s reference number (e.g., M20-194P^-US1-b$).
As discussed above, SI uses specific strategies and guidelines for prosecuting its unlicensed patent cases.
When a case becomes licensed, however, SI shifts its strategy to a more conventional approach that may, depending on input from SI’s licensee, include pursuing the broadest possible claims and/or investing in certain actions that require additional financial resources (above and beyond what SI can typically invest in any single unlicensed cases) but are nevertheless deemed important to the licensee (e.g., asking OC to spend additional time beefing up a specification, writing alternative claim sets, or responding to an office action).
As a result, unlike in the case of an unlicensed case, this guidance does not contain specific guidelines for each step of prosecution during a licensed case. Rather, OC should implement current industry-standard best practices for cases pursued by commercial entities and generally handle such cases through the following steps, which are further outlined below: report, outline possible decisions and associated cost estimates, recommend a path forward, and proceed upon receiving approval from both SI and its licensee.
SI’s outside counsel should handle SI’s licensed cases as follows:
- Upon receiving any official communication from a patent office, outside counsel should report such communication within ten (10) working day of receipt to both SI and SI’s licensee (in a single email to both parties) along with:
- A brief summary of the communication,
- A concise description of any decisions that need to be made by SI in consultation with SI’s licensee along with an outline of possible decisions that could be made, and
- A cost estimate associated with each possible decision, noting both outside-counsel fees and any separate government fees and/or foreign-agent fees.
- Upon receiving both approval from SI and the licensee’s concurrence, OC should proceed with advancing the agreed-upon decision.
- In the unlikely event OC does not receive definitive instructions from SI and/or SI’s licensee and is facing a non-extendable deadline, OC should ALWAYS ALWAYS ALWAYS serve as an emergency failsafe by taking all action necessary to preserve the pendency of the application and/or patent family (e.g., by filing a no-fee continuation with any required extension fees to keep a patent family alive).