THOUGHT LEADERSHIP
Five Ways to Make Your Global Patent Prosecution Strategies More Efficient By CHRIS K. MILLER
G
eneral counsel know that it takes a lot of attorney time and expense to maintain a patent portfolio, so here are five best practices to consider when assessing a global patent portfolio and filing practices:
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Start with “Universal” Patent Application Disclosures Patents are tied to specific national jurisdictions and their rules, so
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prepare a “universal” application that addresses considerations of all jurisdictions where a company intends to file. Information prepared for this internal-use only application can then be massaged for national filings and will clarify what is important. Although functional language in an application describing how a device operates is useful, companies should not focus exclusively on functionality but should also describe the
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specific structure, features, compositions and steps required to solve the problem the invention addresses. Functional language should explain the interrelationship of the components of an invention so that it’s understandable. A universal application drafted in this manner should provide sufficient detail to meet requirements common to all jurisdictions. That foundation will make it easier to coordinate filings BACK TO CONTENTS
