Wednesday, December 7 2022   \  Published by Mr. IP Law.

Consistency in Patent Prosecution

Consistency in Patent Prosecution

There are many issues for patent prosecution professionals to keep top of mind in their work… the invention, the potential competitors, the design arounds, the prior art, the business strategy, admissions, claim scope, costs, case law, patent office procedures, restrictions, … the list goes on. While some think patent prosecution is a commodity that can be bid out, like getting quotes to fix a dent on your car, the reality is so much more complex. In patent prosecution, just one little oversight can be the line that divides success from failure. The difference in outcomes due to missing one of these issues will not be just a slight mismatch in the paint color, but a car that cannot move and requires thousands more dollars to get working

A great example is illustrated in a case related to an engine oil pan (Appeal 2020-005079, Application 14/433,388). The applicant was so focused on distinguishing the prior art applied by the examiner that it seems they did not fully consider how their own specification might be used against them. Read more

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