Having identified those IP assets that merit patent protection you need to decide how best to efficiently achieve granted patents in your key territories. There may be good reasons to take a slow and cautious approach, for example to defer costs and the need to commit to specific countries, or because you are not sure how your technology will develop over the coming years. It may however be beneficial to be decisive, bringing forward some decisions and costs, in order to have granted patents in place at the time of exit. If this fits with your strategy, the following tips might be helpful.
File early in the key territories. For example, if you consider the US or Europe to be key, file your application first in one or both of these, rather than filing elsewhere in the first instance and using the 12 month priority period. This can take a year or more off the time that it will take to reach grant. In the US you can also pay a fee to have your application subjected to prioritised examination which, though significant, can save costs in the long term as well of course as accelerating grant. In Europe, the PACE request for accelerated search or examination serves a similar purpose although does not require a fee.
It is almost inevitable that patent offices will raise objections during the examination process. Depending on the jurisdiction, the terms for responding to each cycle of objections can range from 2-6 months (give or take). If you have to go through several cycles of response, and you delay your response at each cycle, this can add many months or even years to the process. So respond quickly if you want to accelerate grant.
In many jurisdictions, and in particular the US, Examiners are happy to discuss issues with the applicant or their representative. In-person interviews are often not possible, and even if they are they can be costly. However, telephone or video interviews are a useful and cost-effective alternative. Interviews can be used to add context to an invention, giving the applicant an opportunity to explain the commercial background and hopefully commercial success of a product incorporating the invention. In the case of a video call, there might also be an opportunity to demonstrate a real product which can be invaluable when all the Examiner has had to look at to date is a dry written description. For a similar reason it might be appropriate to send a sample product to an Examiner, although be wary of course if the product has significant value as that could be viewed as an attempt to improperly sway the outcome.
If you have a difficult Examiner, and you are finding it hard to push through claims with a scope that you would like, consider offering a narrowing amendment, assuming that this still covers your product or service. If you can achieve allowance for the narrowed claims, you will get your granted patent but will (usually) have the opportunity to file a divisional application to give yourself another chance to argue for broader, or different claims.
On the subject of divisional applications, make sure to review applications in good time before they are granted to see if there are any valuable features that are not covered, or sufficiently covered, by the allowed claims. It is particularly true that those applications that you file at an early stage in the life of the company may have such features. Divisional applications will allow you to protect valuable features that are not covered by the claims of the original application. Divisional applications will generally be examined, and hopefully granted, on a quicker timescale than the original (parent) application.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
