Prosecution Tips based on Federal Circuit Decisions
By Craig Summerfield
Lempia Summerfield Katz LLC (LSK)

For a limited cost, patent prosecutors draft a patent that may have to withstand analysis driven by hundreds of thousands to millions of dollars in litigation investment.  This difficult task is repeated many times a year.  The results are not known for many years and only for a few, if any, of the drafted patents.

The patent prosecutor benefits from the feedback of the Examiners and Appeal Board at the United State Patent Office, but this feedback is one government agency’s take on the controlling statute and interpretation of court decisions.  More direct, but less personal, feedback is provided by court decisions.

In an effort to improve drafted patent applications, every presidential patent decision by the Federal Circuit Court of Appeals on patents is reviewed.  A fundamental question is asked:  What could the prosecutor have done to avoid the problems encountered in the litigation.  Thus, Lessons in Hindsight.

Hindsight is not a criticism.  The original prosecutor did not have the benefit of the later decision and could not likely predict the various litigation-based strategies and factors that lead to any one thing being of heightened importance.  Even the best patent prosecutor can fall victim to circumstances.  While focusing on the myriad of issues at the time of prosecution, identifying the one issue that will protect the patent owner in litigation and considering the various approaches to mitigating that issue is difficult.  Differences in circumstances may call for different strategies.  The goal is to become a better patent prosecutor from feedback, developing habits in patent prosecution that increase the chances of avoiding problems and increase value in owning the patent.

Not all presidential patent decisions by the Federal Circuit Court of Appeals are summarized here.  Some are not informative for patent prosecution.  Decisions on civil procedure provide little guidance to the prosecutor.  For decisions based on novelty or obviousness, the answer is occasionally “know of the unknown prior art.”  Some clients are willing to pay for searches, but others are not.  A search of reasonable cost may not find prior art located by a more costly, comprehensive litigation-funded search or a search by the patent office.  Some decisions will turn on claim interpretation or other more controllable issues.  The patent prosecutor is responsible, in part, for controlling claim interpretation, either through use of the term in the specification or through comparison of the term to prior art.  Some of the decisions that may be used to better prosecution are selected and presented in summary form.  The conclusion is Hindsight about what the patent prosecutor could have done differently, if they could predict the future.

Enjoy Lessons in Hindsight,

Craig Summerfield,
Lempia Summerfield Katz LLC (LSK)