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Schwegman Lundberg & Woessner

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1. Tell Your Patent Attorney What You Want Your Patent To Do.

IP attorneys are continuously told that we should be business partners with our clients, not just patent scribes. But there are lots of ways to protect an invention. Be open and just tell us: Is the patent “for show or for go”? Is it perceived to be vital to the company or a “home run” for the university, or is it a safety filing to cover a limited advance to keep a productive inventor (or top boss) happy. Is it intended to be a shot in the dark, or part of a shotgun blast of applications into an important emerging technology? Don’t walk into a car lot and say “I want your best car!” unless you really mean it.

2. A Stitch (or Question) In Time Saves Nine (Hours of Work).

Deliver as much information as you can to your attorney about possible bar dates, such as publications and offers for sale, no matter how obscure. Design disclosure forms to encourage inventors to both reveal all the disclosures and art that they have generated or are aware of, and to raise and help resolve inventorship questions. Before you file is the time to discuss possibly conflicting ownership rights and license obligations.

3. Remember To Protect The Invention.

I grew up as an attorney hearing, “At least protect the invention!”. Although clients nearly always will press their IP attorneys to protect the known universe with each claim, this isn’t always the best way to begin. It is often wiser to protect the “now” first and the “future” later on. In other words, narrow claims may not cover the future, but overly broad claims may well cover the past. Recognize the advantages of deciding to file narrow claims initially, and then broadening them later. If your attorney warns about problems with the written description, utility or enablement requirements, please listen. Finally, don’t forget to help your attorney weave a good story into all those complex structures and drawings. Examiners like to hear why the invention will revolutionize medicine or telecommunications.

4. Push Back (At The Patent Office ) As Hard As You Are Pushed.

Almost all Office Actions contain rejections, so don’t be discouraged. Help your attorney meet every ground of rejection raised by the Examiner, then go the extra mile. Raise the legal ante with additional evidence of the merits of the invention, such as Rule 132 Declarations, to show unpredictability of success or unexpected results. Document that your inventor is an expert in the field, not a “garage shop wizard.” If the Examiner draws baseless conclusions, challenge him/her to put them in declaration form. Rely on authorities such as technical dictionaries and review articles. Help your attorneys argue the facts, and expect them to argue the law.

Amendments and other written responses should look like appeal briefs. They should include copies of case law and cite from it. Your attorney should keep up with changing internal Patent Office policies.

5. Let Your Attorney Talk To The Examiner.

Some rejections can be easily rebutted in writing, but most of the time it is very difficult to “write your way to success.” Traveling to the Patent Office to conduct a personal interview with the Examiner is costly, but nine times out of ten it reduces the total cost of prosecution, and results in a shorter written record. It is simply impossible to know what an Examiner is thinking from a written Office Action. Face-to-face, your attorney will quickly discover what the key issues are, and hopefully, will build personal rapport that can help in Patent Office dealings for years to come. But don’t expect to be invited along and don’t insist that your inventors or licensees attend as well. “Obvious to try” can mean many things to many people. A slip of an untrained lip can sink your patent ship.

When your attorney calls you and says that some agreement was reached, or that the Examiner is willing to compromise, please respond quickly. Better yet, run through likely scenarios ahead of time, and authorize your attorney to accept certain “deals” over the phone, or even during the interview.

6. Realize That Prosecution Does Not End With Final Rejection.

Don’t give up, or order your attorney to appeal, if you receive a final rejection. Authorize your attorney to respond quickly, and to submit further declarations, if necessary to make or re-make your key points. If the issues are few and clearly focused, ask the attorney to call the Examiner’s supervisor or Supervisor’s Supervisor. File the Notice of Appeal and request an appeal conference, to get a second or third opinion on the rejection.

7. Don’t Be Afraid To Appeal.

The official appeal process begins when your attorney files the Brief on Appeal, arguing your position. This filing itself often leads to allowance of at least some of the claims. If the Examiner files the Answer, the dispute will be resolved by the Board of Appeals. Let your attorney request, and present, oral arguments. I believe that showing that you are serious about the outcome greatly increases the chances of success. Also, under recent patent law revisions, if the Board allows one claim, the twenty-year patent term is tolled during the appeal process; any lost term is restored when the patent issues. And, the fact of the matter is that patent claims that have been allowed on appeal are much more difficult to invalidate during litigation. Even if you lose – and of course you won’t – you can refile the application and present further rebuttal evidence or amendments to the Examiner.

I will be presenting this at LifeScience Alley Biotechnology Special Interest Group in Bloomington, MN on June 3rd.


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