Patent Law

Prosecution for Enforcement

By Gary Odom and Jordan Kuhn

It's relatively easy to get a novel invention examined and granted. That statement is enough to make many a seasoned prosecutor choke. That's because most seasoned prosecutors don't litigate. The high art form of prosecution is prosecuting for litigation. The right anticipation is in both what you say, and what you don't.

Characterizing what the prior art taught is a mistake. It puts words in the mouth of the prior art, potentially casting the prior art in a new light. And if there is any mischaracterization, characterization opens up a credibility issue that can taint the patent. Let the prior art speak for itself in quotation. Only characterize what the prior art didn't teach.

Even characterizing the invention over the prior art can be tricky business. It used to be standard practice for the background to state a problem to be solved, and the summary an exposition on how the disclosed invention solves the problem. Since KSR, that problem-solution format has been a perfect formula for lining up prior art to prove obviousness. That poignantly points out the hideousness of Obzilla, making permissible what the courts had previously been careful to contain as impermissible: hindsight reasoning. The prosecution solution is to just state the facts. A background of what the prior art had to say in the relevant area. A summary of the disclosed invention, without solution spin. And a good definition of terms.

Overcoming prior art is best done by citing specific novel limitations. That provides the clarity of where the money is. Without that clarity, enforceability is a murk.

Litigating for enforcement is extra work, and requires foresight. Proactive anticipation. Taking time to think through how a granted patent could be attacked. Arguing over prior art not cited, so as to remove it from enforcement contention. Making sure crucial claim terms are well defined - if not in the specification, by the prosecutor during examination. Provide the examiner reasons for allowance.

Complex technical issues that have to be presented to a jury because they were not explained and foreclosed during prosecution hangs a huge question mark over enforceability. Addressing those issues proactively during prosecution takes them off the table. Juries, and even judges, are reticent to overrule what the examiner firmly opined as allowable. Clouds are cleared with a simple, "the examiner considered that, and allowed the patent."

Platinum Patents is the apex of patent prosecution because of our extensive litigation experience. We prosecute for enforcement. Because a patent that can't be enforced is junk.

Full post as published by The Patent Prospector on February 08, 2009 (boomark / email).