During the patent prosecution process, it is a common approach followed by patent attorneys to narrow down the scope of patent claims with a view to satisfy the objections raised by the patent office while issuing the patent office action. The objections raised by the patent examiner generally relate to lack of novelty (newness), or non-obviousness (lack of inventive step), or insufficient disclosure (lack of enablement) to carry out best mode of the claimed invention by a person having ordinary skill in the art (abbreviated as PHOSITA), or a combination thereof.
Therefore, while responding to the patent examiner, the patent attorneys amend the patent claims by narrowing down one or more features, depending upon the nature and complexity of the objections. However, one crucial consideration while following such a patent prosecution strategy is to ensure that the detailed description of patent specification provides sufficient disclosure of such narrowed down scope of patent claims as well.
For example, in case of patent prosecution of a pharmaceutical patent, while narrowing down the scope of the patent claims, a preferred strategy may include replacing a generic chemical structure with one or more specific compounds. However, the patent office or the patent examiner may reject such arguments put forward by the patent attorney in case the detailed description of the patent application does not include names of such specific compounds.
Even in case the detailed description states such specific compounds, it is necessary that the patent application discloses explicitly that such specific compounds may be used instead of the generic chemical structure, in the absence of which, such arguments may not be accepted by the patent office.
To conclude, it becomes extremely important for the patent attorney to include such alternatives and duly consider possible patent prosecution strategies at the time of writing the patent application and drafting the patent claims, with a view to obtain strongest possible claims granted by the corresponding patent office.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
Law office of Rahul Dev is a niche technology and research based law firm focusing on next generation business and legal issues faced in India and outside India during international business and cross-border technology transactions. We assist our clients in close collaboration with our associates and counsels within India and outside by providing custom engagement models to address our client’s needs.
Practice areas include drafting and filing patent applications, patent prior art searches, patent prosecution, patent filing in India, PCT national phase entry in India, PCT international applications with WIPO, freedom to operate searches, patentability analysis and patent strategy to create a valuable patent portfolio.
Patent attorney Rahul Dev works with clients providing expert legal services in the field of innovative pharmaceutical products, branded drugs, generic drugs, molecular biology, immunology, cell biology, regenerative medicine including ESCs, iPSCs, pSCs, diagnostics, therapeutics, theranostics, drug delivery systems, host-vector systems, high throughput screening, bioinformatics, diagnostic imaging, ancillary services (PET, CT, MRI, ultrasound, greenlight, lithotripsy, radiation therapy, cyber-knife, nuclear camera, clinical lab, pathology, physical therapy and dispensing prescriptions).
Patent attorney and technology lawyer Rahul Dev works closely with USPTO licensed patent attorneys to assist clients with patent reexaminations, patent prosecution, drafting USPTO office action responses, patent infringement litigation, patent claim mapping and patent licensing. For international patent filings, we have an established network of global patent attorneys to provide reliable and cost effective services to our clients.