Overview
Understanding the patentability of technology is crucial prior to undertaking the time and investment of filing and prosecuting patent applications. Identifying those innovations with the greatest chances of patent protection facilitates efficient use of company resources and results in stronger patents.
Our attorneys have extensive experience with patentability analyses, which begin with understanding both the technology and business involved. Greater than 95% of our patent prosecutors hold technical degrees and more than 30 team members hold a Ph.D. or M.D. Many also have years of industry experience prior to becoming an attorney. We take the time to understand all facets of the innovation including potential future technological iterations and how it can contribute to the client’s current and future strategic goals.
After identifying the valuable aspects and the enabling features of the technology, a prior art search is conducted. The importance of a trusted partner for high-quality searches cannot be overstated in today’s environment of frequent challenges to issued patents in both courts and administrative agencies. Depending on your budget and goals, we can develop a searching strategy that fits your needs. We have a vast network of outside professional searchers in all technology areas. Many of these relationships span decades. Likewise, we leverage external and internal tools and data sources for in-house searching.
We analyze the search results with an eye toward assessing the innovative aspects that both provide high confidence of complying with the statutory requirements for patentability and that will maximize the company’s return on investment. Patents today typically focus on particular aspects of innovations that are sometimes incremental yet powerful advances over the state of the art. We review with our clients the search results and provide our analyses and assessments of candidate aspects. Oftentimes multiple aspects are presented, each with an assessment of legal patentability and likely degree of value to the company, so that the client can make a fully-informed decision on what aspects to invest in and to what extent.
Our patentability analyses are informed by current patent litigation and patent challenges. Our patent prosecutors and litigators regularly meet to discuss the latest patent decisions from the Federal Circuit and Patent Trial and Appeal Board (PTAB). This enables us to provide a more comprehensive patentability assessment incorporating how evolving areas of the law, such as patent eligibility, and emerging areas of technology, like artificial intelligence, may affect the analysis.
Getting the patentability assessment right can lead to a simpler and less expensive prosecution of the patent application. With a thorough patentability analysis performed prior to filing the patent application, it is not uncommon to receive a “first action allowance” by a patent examiner which can drastically reduce the expense of prosecution.