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February 8, 2009

Prosecution for Enforcement

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.

Posted by Patent Hawk at February 8, 2009 7:31 PM | Prosecution

Comments

"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."

And how else can you describe your invention to be understood by other people ?

Every real invention solves some practical and in most cases long-standing problem
If the solution is novel and unobvious a patent should be issued
The idiocy of the KSR decision (as well as other patent-related SCOTUS decisions) is unbelievable

Posted by: angry dude at February 9, 2009 7:26 AM

Well, I can't comment usefully on the effect of KSR but I will say that in Europe and, by extension, the rest of the world (except the USA) two things stand out:

1. Nothing else is patentable except a non-obvious and new solution to an objective technical problem; and

2. The patent goes to the one who was first to file.


So, if you want a patent outside the USA, better be sure to include in your appln what problem it is that you think you are are solving.

Posted by: MaxDrei at February 9, 2009 10:18 AM

Maybe state the problem which is solved in the "Detailed Description" as opposed to the "Background" portion of the application?

Posted by: curious at February 17, 2009 1:29 PM

curious,

The disclosure is the disclosure. Sections don't matter much, at least with regard to the problem-solution situation.

Posted by: Patent Hawk at February 17, 2009 11:18 PM

Hawk, do you think that the advice you just gave to Curious is good for places outside the USA? I happen to think it isn't. "Disclosure" is inseparable from "context". The "Detailed Description" tells how a pinpoint within a claimed envelope "solves the problem". But, Curious, you surely believe that the solution to the problem that you are disclosing runs wider than the pinpoint best mode, no? How are we to derive that from your app, unless you tell us, in your app? Echoes here of the old US jurisprudence on "Object Clauses" and what they imply, no? Checks and balances, I say, and "Be Careful What You Ask For".

Curious, don't trust anybody except a European Patent Attorney, when it comes to patent law in Europe (and, by extension, the rest of the world beyond the Homeland). Hawk, flippant advice on European patent law is a No No, right?.

Posted by: MaxDrei at February 18, 2009 12:35 AM

"Sections don't matter much"

...except what you say in the Background of the Invention can be taken as prior art (even if it is not), since you relinquish the material by placing it in that section.

This is horrible advice no matter where in the world you want to obtain a patent.

Posted by: Noise above Law at February 18, 2009 5:51 AM

Noise above Law,

"horrible advice" - to what do you refer?

Posted by: Patent Hawk at February 18, 2009 9:50 AM

I guess, Hawk, that Noise means your "sections don't matter" advice. In Europe, substance matters, form less so. So, what you call your "sections" is unlikely to make a big deal of difference to your outcome, in Europe. As to other jurisdictions, the question whether form triumphs over substance I leave to the local experts to answer.

Posted by: MaxDrei at February 19, 2009 12:18 AM

Hi Max,

Thanks.

The patent office has repeatedly stated that it has no truck with form over substance.

Any decent examiner is going to take any evidence from anywhere in the specification that is relevant to showing obviousness.

If an applicant now uses the problem-solution formula that is both natural and common prior to KSR, it's a formula for obviousness rejection.

Posted by: Patent Hawk at February 19, 2009 6:38 PM