Two prosecution strategies that could help Scandinavian exports balance costs in 2023

Many Scandinavian companies are export focused, as countries in the region have smaller populations with limited domestic consumption. Previously, we explored how these companies could reduce their patent costs by aligning geographical protection more closely with their intended markets (see “Striking the balance: how to reduce costs and maintain foreign patent protection for Scandinavian exports”).

While organisations worldwide are anticipating a reduction in consumer spending in 2023, other options to balance and reduce costs are available for Scandinavian companies and those further afield. Those willing to manage their expectations and invest some time in exploring the patent prosecution process might find that it pays significant dividends over the long term.

Streamline your processes

Successfully prosecuting a patent application can take years and the person responsible for drafting an application may not be the one responsible for prosecuting it, responding to office actions or instructing foreign agents. The process of handing over any application is beset with risks and failure to properly explain the thinking behind the draft could result in a different approach taken during the course of its prosecution. Involving multiple people throughout the process can lead to arguments changing and claim amendments being made at different times and before different patent offices. While this might be advantageous, for example  with different scope of protections or a requirement for country specific claims, it can be time consuming to reconcile all of these opinions and actions, which can prove expensive over the long term. Nonetheless, it is also quite common for office actions to be handled in isolation, with no use made of arguments and claim amendments from other family members.

Developing a clear understanding from the outset is integral to a successful process, both in terms of objectives and providing different fall-backs that may be relied upon later, during the  prosecution phase. Anticipating objections and building good arguments and fall-backs can lead to a reduced need to analyse the patent application in detail, which can save time when examining the application and deciding whether or not to proceed once the search report is received. If an organisation is also able to provide good general arguments at a high level, it will then be easier for a local patent attorney – who should be an expert on local patent law – to adapt the claims to ensure that any differences are prominently explained.

Another measure to streamline processes for export-driven companies is the Patent Prosecution Highway (PPH) – a collaboration between different patent offices. If a claims set is approved by one patent office, the applicant can amend them in other countries in line with what has been approved and refer to the already-made patentability assessment. While there can be situations where the claims sets are not approved, international prosecution may be more efficient through the PPH route.

Define your business case for filing the patent application in the first place, provide multiple fall-backs where possible and develop a process to ensure that no insight or detail is lost during any subsequent handover. Having a separate pair of eyes can be a good idea, but it is crucial to make sure that the rationale behind filing and advantages of the invention are not lost in the process. One way of achieving this is, of course, to have the same person handling the entire application lifecycle until it is granted, but this may not be possible when it could take more than 10 years from filing to grant. As such, an effective documentation process will ensure that background information is recorded, including the rationale for filing and how the patent application may be relevant in relation to future developments or competitor products.

Setting reasonable expectations for scope of protection

Limiting scope of protection in the early stages can also result in considerable savings. While a more traditional approach involves starting with a broad scope and then limiting it, following feedback from the examiner, starting with a more specific scope of protection might be worthwhile. Instead of referring to ‘modules’, ‘devices’, ‘actuators’ or ‘elements’ for example, it might be a good idea to use more specific language related to the actual use case, such as ‘vehicle’, ‘disc brake’ or ‘pads’.

While this may sound counterproductive, and such decisions should always be discussed with a patent attorney, it sometimes produces helpful results. This could potentially reduce the number of office actions and even lead to the application being granted without amendments, thus mitigating the risk of disallowed amendment objections being made in opposition or invalidation proceedings. This may be minor in the event of a pure combination of independent and dependent claims, but combining features from the claims descriptions and drawings could result in a more severe reprimand for ‘cherry picking’. Thus, even if the scope can be narrowed down, the amendments may, in themselves, present a problem for post-grant proceedings.

Another advantage of initial specificity is that it could mitigate the risk of missing essential elements objections. It could be argued, for example, that a motor is essential for moving a saw blade from one position to another. It could also be argued that the use of said motor is implicit and thus does not have to be spelled out. Irrespective of how such a discussion would end, by including the motor in the claim from the start, there would be no need for a discussion in the first place. Therefore, including some additional elements in the claims from the outset can  achieve a more efficient process.

Key takeaways for Scandinavian export-driven companies

As suggested in our previous article, reviewing your country filing list to identify if there may be removable countries without affecting your competitive advantage is key for export-driven companies. It makes sense to conduct a cost versus benefit analysis for more mature patents within your portfolio and. developing a process to acknowledge lessons learned from an office action ensures that they can be used elsewhere. In addition, by streamlining patent prosecution, you can save money and mitigate the risk of making contrary statements and, finally, try to avoid getting carried away when drafting your claims. It is true that the scope can be narrowed later in the process, but it is most often more productive to have a relevant search and patentability assessment made as early as possible.