Patent Prep & Prosecution
At LexAnalytico, we offer comprehensive patent services aimed at helping businesses, inventors, research institutions and educational institutions identify, protect and monetize their innovations. Our team of professionals offer advice and guidance throughout the entire patent life cycle, from idea to drafting and filing to prosecution, enforcement, and monetization.
PATENT DRAFTING
Patent drafting forms the core of a patent application. A well-drafted patent ensures broadest possible protection and greater enforceability. Our team carefully drafts clear-cut specifications that present the invention in a legally acceptable format, includes multiple embodiments, detailed technical enablement and Multiple types of claims to delineate the ambit of protection. Drafts are written to ensure effective prosecution while ensuring enough technical enablement maximum enforceability, illustrations and descriptions to demonstrate the innovation in an understandable format. We customize patent drafts to suit business goals, making them compliant with the needs of various jurisdictions, such as the India, United States, Europe, and other important markets. Our drafts normally include multiple embodiments, use cases, and well-illustrated drawings. Drafts are tailored to defensive or assertive strategies of our clients. Claims are balanced for broader protection as well as for effective prosecution. Each claim that we write are contemplated in detail to assess the coverage, strength, detectability and enforceability perspectives.
PATENT FILING
Patent filing is an important process to obtain protection for an invention. We assist clients to file patent applications through our own offices in India and the USA and through network of foreign associates in more than 70+ countries. Our team is well-versed and updated on changing laws, rules, and practice guidelines to ensure accurate and timely filing of all associated forms.
DOMESTIC FILING
We prepare and assist clients to file US and Indian patent applications (provisional and non-provisional/complete specification alike) in complete compliance with the respective patent laws and guidelines. Our team coordinates with inventors/applicants to obtain accurate filing information, prepare all required documents/forms and file those on timely manner. We help clients obtain robust patent protection by ensuring proper documentation, timely filing, clean docket and proper communication with the concerned Patent Offices.
Patent Filing in India:
For filing patent applications in India, following documents/forms are required:
Form 1: Application for Grant of Patent.
Form 2: Provisional Specification/Complete Specification.
Form 3: Statement and undertaking regarding foreign applications
Form 5: Declaration as to inventorship.
Form 26: Authorization of a patent agent (if applicable)
Form 28: Required for startups and small entities seeking benefits under the patent laws.
Patent Filing in USA:
We help clients prepare, file, and prosecute provisional and non-provisional patent applications to obtain robust and enforceable intellectual property rights in the U.S. Our professionals ensure that applications are compliant with the patentability criteria of novelty, non-obviousness, and industrial applicability, as provided in the U.S. Code. We work with inventors and companies to prepare comprehensive patent specifications, claims, and technical disclosures.
When patent applications are filed in the United States, the following forms are needed:
1. USPTO Form SB/01 – Declaration for utility or patent application.
2. USPTO Form SB/16 – Provisional Application Cover Sheet (for provisional applications).
3. USPTO Form SB/08a – Information Disclosure Statement (IDS).
4. USPTO Form SB/05 – Utility patent application transmittal.
5. USPTO Form PTO/AIA/80 (07-17) – Power of Attorney Forms (if represented by patent attorney).
INTERNATIONAL FILING:
To ensure protection internationally, we assist clients in filing of Patent Cooperation Treaty (PCT) applications, national phase applications and conventional applications in foreign jurisdictions with help of the core team and our network of foreign associates. Our team ensures that there is efficient communication and coordination with the foreign patent lawyers, and that international patent legislations are complied with.
PATENT PROSECUTION
Patent prosecution is dealing with patent offices to obtain the grant of a patent. We offer complete assistance, including:
Filing of Relevant Forms for Domestic Indian Application:
We take care of diligent and timely filing of all documents/forms that are required for a successful application. We take great care in filing necessary/pending forms to ensure seamless and compliant patent application in India.
Filing Relevant Forms for Domestic US Application:
Patent prosecution in the United States entails substantive examination, office action responses, and legal proceedings before the United States Patent and Trademark Office (USPTO). After a non-
provisional patent application is submitted, the USPTO assigns an examiner to examine the application for novelty, non-obviousness, and industrial applicability. In the process, the examiner can issue Office Actions demanding legal and technical arguments, claim amendments, or further documentation. Our professionals help clients analyze objections before responding, perform examiner interviews, and file appeals, if needed, to obtain patent grant. For completing the patent prosecution process in the US, the following are widely used forms:
o USPTO Form SB/30 – Request for Continued Examination
o USPTO Form SB/08a – Information Disclosure Statement (IDS)
o USPTO Form PTO/SB/26 – Terminal Disclaimer (to address double patenting rejections)
o USPTO Form PTO/SB/64 – Petition to Revive Abandoned Application (incase the application was inadvertently abandoned)
o USPTO Form PTOL-85B – Issue Fee Payment Form (to finalize the grant process upon allowance)
PCT Application:
In the PCT path, some of the important forms that are filed by our team are PCT/RO/101 (Request Form), PCT/IB/304 (Amendments under Article 19), PCT/ISA/210 (International Search Report), and PCT/IPEA/401 (Demand for Preliminary Examination). For filing national application, each country has several forms that must be duly filled for processing the application, the requisite of the specific country is studied and met by our team. In filing a conventional application through the Paris Convention, jurisdiction-dependent forms are used, usually involving a local patent application form, certified priority document, and Power of Attorney when necessary.
Coordinating with Foreign associates for filing relevant Forms for International
Applications:
For clients requiring international protection of their patents, we assist in filing of Patent Cooperation Treaty (PCT) applications, National Phase applications, and Conventional applications in foreign countries. Through our extensive network of foreign patent lawyers and law firms, we ensure that all required documentation such as priority claims, translations, local patent office forms, and power of attorney documents are efficiently processed according to respective national regulations. We maintain cordial and effective communication with our foreign partners to ensure timely and compliant filings in over 70+ jurisdictions.
Preparing office action Response:
At the time of examination, Patent Office issues an Office Action (like a First Examination Report (FER) in India, an Office Action (final/nonfinal) in the US, or an Examination Report in the European Patent Office (EPO)) with objections under novelty, inventive step, clarity, or formal requirements. We study these objections and prepare careful legal and technical reasoning to get around the objections, adhering to patent laws and still achieving wide claim coverage. We also carry out any required amendments in the claims and descriptions (to the extent possible) to increase likelihood of grant.
Overcoming prior art rejections:
Prior art rejection, one of the most frequent issues in patent prosecution, occurs when the examiner invokes prior patents or publications prosecution, occurs when the examiner invokes prior patents or publications to challenge an invention’s novelty and inventive step. Our strategy is to review the cited prior art, contrast it with the claimed invention to determine its distinguishing features, and prepare legal and technical responses to show how the invention is novel and non-obvious. If required, we strategically amend claims to clearly differentiate the invention and secure wide protection. The overall strategy supports a robust application, with improved chances of an effective patent grant.
Examiner interviews:
In instances where written responses are not adequate to overcome objections, we schedule interviews with patent examiners to explain claim language, discuss technical subtleties, and simplify prosecution. These discussions can assist in negotiating claim scope, resolving examiner issues effectively, and minimizing office actions, which results in an accelerated patent grant.
REPRESENTATION BEFORE PATENT OFFICE
Obtaining a patent involves active interaction with the Patent Office at different points, from filing to prosecution and post-grant proceedings. We provide representation services before the Indian Patent Office, the USPTO, and other foreign patent offices to obtain patent processing efficiently and smoothly. Our team of patent agents and attorneys safeguard our clients innovations while abiding by patent laws and procedural requirements.
JOURNAL WATCH
Keeping pace with scientific and technical literature is important for companies wanting to foresee upcoming innovations and adjust their patent strategies in response. Our journal watch service includes:
o Monitoring current research that is likely to have an influence on patent strategy – By reviewing recent academic articles, conference papers, and industry studies, we enable companies to foresee game-changing innovations that will create the future IP landscape.
o Identifying potential competitors or collaboration prospects – Tracking research publications enables businesses to identify new entrants, potential partners for licensing, and assess collaboration opportunities for co-R&D.
o Determining technological directions – Through tracking scientific breakthroughs and industry developments, we offer insightful foresight into
emerging trends, enabling business to be ahead of the game.
OPPOSITIONS
We help clients oppose or defend patents using several legal means available in front of the Patent Offices across the globe. These processes guarantee that only effective and actionable patents are issued and upheld. Our services range from:
OPPOSITIONS IN INDIA
Pre-Grant Opposition- We assist clients in filing pre-grant oppositions against ongoing patent applications that can be deficient in novelty, inventive step, or adequate disclosure. Our Agents and Lawyers perform thorough prior art searches, draft legal submissions, and file opposition statements to block undeserved patents from issuing.
Post-Grant Opposition- We help file post-grant oppositions, if a patent has been issued but is considered invalid or overly broad. We draft comprehensive opposition petitions, counter invalid claims, and offer strategic arguments to invalidate or limit the scope of the issued patent.
Observation Submissions: Our team helps client pertinent prior art, prepare well-supported arguments, and submit observations to patent offices in India, the US, and the other regions. We make the submissions technically and legally robust, which in turn maximizes their effect on the examination process. Observation submissions may be utilized defensively, to oppose a competitor’s weak patent filings, or to maintain clarity in the patent environment. Our strategy involves claim scope analysis, novelty and inventive step assessment, and giving clear legal reasoning in order to achieve the best results from the submission while meeting jurisdiction-specific procedural standards.
Ex-Parte Proceedings- In the prosecution stage, we represent clients in the patent office to overcome objections from examiners and make legal and technical explanations. Our expertise guarantees that applications are compliant, well-drafted, and ready for a successful grant.
Inter-Partes Proceedings- Where third-party intervention is required, for example, Inter Partes Review (IPR) and Post-Grant Review (PGR) in the U.S., we support clients in defending their issued patents or questioning the validity of other granted patents. Our services involve examining disputed claims, preparing expert reports, preparing petitions, and appearing for clients in hearings.
OPPOSITIONS in USA
We represent companies in fighting weak patents and protecting their intellectual property through formal opposition processes under US patent law.
Pre-Issuance Submission:
One of the most aggressive strategies for patent opposition is the Pre-Issuance Submission. In the event of a competitor’s patent application posing a threat to your company, we are able to submit a third-party submission with pertinent prior art. This enables us to establish evidence in advance before the granting of the patent, showing that the claimed invention is not new or obvious in view of existing art. Our agents thoroughly review pending applications, determine key weaknesses, and gather strong prior art references to make timely submissions. This early action prevents companies from being saddled with licensing requirements and expensive infringement litigation.
Post-Grant Review:
For already-granted patents, Post-Grant Review (PGR) provides a chance to challenge validity within the first nine months of grant. This process provides objections on several grounds such as lack of novelty, obviousness, and patent ineligibility. Our legal professionals help prepare petitions that put forth technical and legal arguments in front of the Patent Trial and Appeal Board (PTAB). Through PGR, companies are able to quickly invalidate weak patents that could become a threat to their operations.
Inter Partes Review:
When the nine-month window for PGR has passed, Inter Partes Review (IPR) becomes the preferred method for challenging patents based on prior patents or printed publications. IPR is particularly useful for contesting patents on the grounds of novelty and obviousness. Our team conducts in-depth prior art searches, formulates strong legal arguments, and advocates aggressively before the PTAB. As a less expensive substitute for patent litigation, IPR allows companies to challenge patents effectively without resorting to protracted court fights.
Ex-Parte Re-examination:
For clients who want a less aggressive option, Ex-Parte Re- examination offers a substitute for direct opposition. This procedure enables a third party to file prior art with the USPTO and ask for a re-examination of the issued patent. In contrast to IPR and PGR, ex parte re-examinations are not adversarial, as only the USPTO examiner and the patent holder are involved. It is thus a tactical choice for companies seeking to invalidate a competitor’s patent without resorting to public litigation. Our attorneys carefully draft re- examination requests so that they make strong prior art arguments challenging the validity of
the patent while exposing our clients to minimal risk.
MAINTENANCE
Obtaining a patent grant is only the first step- managing it well is crucial for long-term commercial success. Our company offers full-service patent maintenance and portfolio management, including:
Patent Renewal & Annuity Management: Patents need to be renewed periodically with renewal fees to continue in effect. We help clients make timely payments, prevent accidental lapses, and make renewal decisions based on commercial value and strategic interests.
Portfolio Strategy Development We assist companies in aligning their patent portfolios with their overall business goals, so that their IP investments drive competitive advantage and revenue growth.
Competitor Monitoring: Our patent monitoring services monitor competitor filings, enabling clients to detect potential threats, potential risks of infringement, and strategic possibilities for new filings or oppositions.