General Approach – C+L’s approach to patent prosecution is to be a trusted advisor to its clients. Whenever possible, we secure commercially viable patent protection. When obtaining commercially viable protection will be unlikely or unduly costly, we discuss the options with the client to help the client reach a decision that takes into account the costs, benefits, and objectives.
Quality Control and Assurance – As former partners in larger firms, C+L attorneys know too well that, because of expensive hourly rates of senior patent attorneys, patent preparation and prosecution is often handled by junior and mid-level associates with sometimes inconsistent oversight by senior attorneys. C+L clients have their matters handled directly by seasoned patent attorneys. Since substantive patent preparation and prosecution is handled by an attorney having no fewer than 16 years of experience, the work does not have to be reviewed by another or redone because the directions of a senior attorney were not followed or were misunderstood. Nevertheless, we do regularly review our internal procedures to ensure that they are above the standard of care in the industry.
Where work is performed by paralegals or specialists, it is reviewed by the responsible attorney before filing or sending to the client. We use checklists that are reviewed by the responsible attorney or paralegal before filing applications or responses. When challenging or novel issues arise, we consult with each other and in some cases may consult with other colleagues to check our interpretation of a regulation or USPTO procedure.
Successful Patent Prosecution – There are several critical elements to successful patent prosecution. One is drafting claims that the client and the inventors agree captures the invention without unduly narrow limitations and without omitting necessary limitations or steps. Another is prosecuting the claims with a focus on obtaining granted claims that are strong enough to be used as a sword against infringers, and broad enough to be used as a shield for the client’s commercial products and keep others from making, using, or selling competing products.
We believe it is important to listen to the client, the inventor, and the examiner to obtain meaningful claim coverage in a cost-effective manner. We discuss the objectives for each case with the client so that the application and prosecution is tailored to the client’s goals and budget. We believe a good rapport with inventors and their involvement in prosecution is essential to obtaining a strong enforceable patent. We believe working cooperatively with patent examiners (and foreign associates), rather than antagonizing and debating with them, helps streamline prosecution and increases the chance for a favorable outcome in prosecution.