Strengthening Patent Filings with a Smarter Pre-Filing Strategy
A Japan-based company was encountering a range of issues in its U.S. patent prosecution efforts — frequent §112 rejections, objections to claims, specifications, and drawings, and unintentionally narrow claim coverage that left out important disclosed subject matter.
Our firm recommended a structured, pre-filing revision process designed to address these pitfalls before they impacted prosecution. Working in close collaboration with the client, we helped revise and expand the specification and claims — developing up to 20 total claims and 3 independent claims prior to filing.
This proactive strategy delivered meaningful results:
- 93% reduction in §112 rejections
- 76% drop in claim objections
- 35% fewer office actions before allowance — often avoiding the need for a Request for Continued Examination (RCE)
By investing in claim quality early, the client strengthened its overall patent position, reduced delays, and avoided costly rework. This case illustrates how expert-led pre-filing preparation can lead to smoother prosecution and broader, more defensible claim coverage.