Patent Prosecution Tactics forCreating Enforceable Patents  (or What to Look For to Invalidate A                Patent)   ...
Types of Patent Searches State  of the Art Search Freedom to Operate Search Patentability Search Invalidity Search Co...
Conducting a thorough search Talk to the inventor USPTO database Classes, Subclasses, and Examiners PCT search and opi...
Competitive Surveillance Patent   Publications   18   month window, patent families Conferenceabstracts and posters Tr...
Duty of Candor One   of the only things the applicant has  in his or her control is filing an IDS Burden of Proof benefi...
Minimize Estoppel Statements                D  of E limitations  made in file                by estoppel  history to    ...
Unclaimed disclosure Anything disclosed          Dedicated to the  in the patent                public if not in claims ...
Examiner Interviews No  records = clean file history Examiners not available as witnesses Attorney is available as witn...
RECAP Thorough searches IDS filings Estoppel Unclaimed Subject Matter Examiner Interviews Possible Outcomes:       ...
Thank Youtodd@juneaupartners.com        (c) Todd Juneau 2005
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Prosecution or invalidity_tactics

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Prosecution or invalidity_tactics

  1. 1. Patent Prosecution Tactics forCreating Enforceable Patents (or What to Look For to Invalidate A Patent) APLI Summer 2005 (c) Todd Juneau 2005
  2. 2. Types of Patent Searches State of the Art Search Freedom to Operate Search Patentability Search Invalidity Search Competitive Activity Search (c) Todd Juneau 2005
  3. 3. Conducting a thorough search Talk to the inventor USPTO database Classes, Subclasses, and Examiners PCT search and opinions International publications Searching “backwards” (c) Todd Juneau 2005
  4. 4. Competitive Surveillance Patent Publications  18 month window, patent families Conferenceabstracts and posters Trade Show flyers Company Websites  Project Development Advertising SEC Filings and Annual Reports  License and Agreement Terms (c) Todd Juneau 2005
  5. 5. Duty of Candor One of the only things the applicant has in his or her control is filing an IDS Burden of Proof benefit Materiality Benefit of redundant prior art Duty owed by everyone involved with prosecution (corporate officers?) Inequitable Conduct & Consequences (c) Todd Juneau 2005
  6. 6. Minimize Estoppel Statements D of E limitations made in file by estoppel history to  Narrowing overcome Amendments vs. rejections Broadening Amendments vs. Doctrine of Mixed Equivalents Amendments (c) Todd Juneau 2005
  7. 7. Unclaimed disclosure Anything disclosed  Dedicated to the in the patent public if not in claims application  Freedom to Operate Originally claimed or  Designing Around even merely disclosed Restriction Requirements (c) Todd Juneau 2005
  8. 8. Examiner Interviews No records = clean file history Examiners not available as witnesses Attorney is available as witness Conflict of Interest within Litigation firm (c) Todd Juneau 2005
  9. 9. RECAP Thorough searches IDS filings Estoppel Unclaimed Subject Matter Examiner Interviews Possible Outcomes:  Bullet-proof patent  Market exclusivity or Licensing  Weakened patent  Freedom to Operate  Loss of patent  loss of market, loss of shareholder value (c) Todd Juneau 2005
  10. 10. Thank Youtodd@juneaupartners.com (c) Todd Juneau 2005

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