As the USPTO patent process overviews, IP prosecution involves pre-grant prosecution and negotiation with a patent office for the grant of a patent, while the post-grant prosecution relates to amendments and oppositions. Maximizing your intellectual property rights requires resourceful and experienced prosecution team–one that is experienced not only in IP prosecution but also in IP litigation. In addition, IP Counseling is an important service that typically manifests itself when IP strategy development is considered.
IP Prosecution, IP Litigation, IP Counseling
Specific actions conducted by IP prosecutors on the pre-grant side include the following services: drafting of patent application and claims, filing with patent office, assistance with the patent prosecution highway (PPH), and responding to patent office actions. The goal on the pre-grant side is to get the patent granted and secured completely.
IP Prosecution on the post-grant side includes services such as patent amendments, continuations, reissues, reexaminations, addressing interferences, validity challenges, and oppositions. Essentially, IP prosecutors represent the clients throughout the drafting and creation process as well as in case of amending or defending the intellectual property.
Although no IP litigation seems to be necessary during prosecution, the knowledge of factors and nuances that lead to successful IP litigation and/or monetization is key in providing the best IP prosecution services.
In IP prosecution, the legal counsel represents clients up to and including the grant of a patent while patent litigators generally represent clients after the grant of a patent and to pursue a violation of the patent rights. Patent prosecution is distinct from patent litigation because litigation is defined as any legal action relating to infringement of patents. A patent attorney can practice one or the other, and in some cases, both depending on registration.
As a client, it is important to be aware of these differences because IP prosecutors are required to be licensed to practice law and to practice in front of the patent office. Patent litigators are not required to be licensed to practice law in front of the patent office or a technical background in Intellectual property. Many legal firms only practice IP litigation because it requires higher billable hours and it is not necessary to pass the patent bar to practice.
IP Prosecution & Counseling with GHB Intellect
IP prosecution requires extensive research, strategic planning and reliance on Subject Matter Experts. At GHB Intellect, we offer full service consulting on intellectual property providing Patent Prosecution Services and Patent Litigation Support for our clients. The work conducted up-front in IP prosecution can play a crucial role in the overall success or eventual failure of a business venture, especially when a high level of investment is devoted to protecting potential intellectual property.
Our IP prosecution team works closely with the client by navigating through the patent prosecution process. Our experienced IP prosecutors also conduct a significant amount of IP counseling to ensure that the patent prosecution effort and costs are in line with business objectives.
The work conducted at GHB Intellect goes beyond just IP prosecution and litigation because we operate with a broad set of skills often referred to as IP counseling. We have the resources to assist with patent portfolio development, help with patent defense and IP protection strategies, as well as M&A transactions, to serve as the overall counsel for the broader IP and business strategies.
An IP counselor and the corresponding support team must advocate for the client, approach IP prosecution from different angles, define value from the client’s perspective, and evolve the IP strategy with the IP landscape. If your IP support team does not embody these traits, they are not fulfilling their duties as an IP counselor.