Kill Your Patent Lawyer: Top 10 Techniques Patent Prosecution Attorneys Use That Make Patents Harder To Enforce

November 7, 2010

I had a request from a reader for my view of patent prosecution techniques that make it harder to enforce patents in licensing and litigation. All of the below tactics are legitimate techniques, none of them are illegal, but each of them in my view gives a litigator or licensing attorney an argument against the patent’s applicability, validity or enforceability,  So after the jump, are my top 10, add yours:

1. No IDS:  About 20 percent of patents are filed with no IDS (that is no disclosure of material art by the applicant).  These applications issue with either only examiner cited art listed on them, or no art at all.  To a litigator this means either the claims are narrowly construed because there is nothing even material known to the inventor or the prosecution lawyer, or one or both of them committed inequitable conduct.  Bottom line is we know examiners don’t pay a lot of attention to what is submitted as art, so submit everything – and never, ever, give in to the argument that the invention is so unique that you need not file any art.
2. Means plus function claims:  The world has turned nasty to these once valuable claims: Don’t use them if you have any alternative as they invite a fight because the scope of this type of claim is generally disputed — and typically these claims are narrowly construed.  If you have to use a means plus function claim, then in the written description list as many alternative structures for the function as you can (and then refer to how those skilled in the art can take the basic structural element or concept and apply it in other ways — multiple figures could not hurt).  Finally, never nest a means plus function limitation inside another means plus function limitation.
3. A single preferred embodiment: If you disclose figures and a written description of only one embodiment, then you run a higher risk of the scope of your claims being limited to that embodiment. or some element of that embodiment being read into the limitations.  This is especially true if you refer to the sole disclosed embodiment as “the invention” or “the present invention”.   Try to refer to multiple embodiments in the written description, and if you can only refer to two, make them as different from each other as possible:  Use lots of figures….and always be clear to say “one embodiment of the invention is …”
4. Long claims:  Many people have forgotten the wisdom of the four finger rule:  If you can put four fingers over the claim language and cannot cover it all with those four fingers, the claim is likely valid but not infringed.  A person enforcing a patent would rather fight validity than infringement any time.
5. One independent claim:  Needless to say the more independent claims the better – dependent claims are fine, but the value of a patent is really measured by its independent claims not its dependent claims.  For example, any software patent should have at least three independent claims: a method claim, a system claim, and an apparatus (computer readable media) claim.
6. Failure to cross-file art and arguments:  When prosecuting multiple patents in the same art for the same inventor or entity, especially those that are closely related, failing to cite the same art in similar patent applications for the same inventor or entity is a red flag for an inequitable conduct case.  Moreover, failure to file art and the rejections from foreign prosecutions of counterpart applications is also an invitation to an inequitable conduct fight—regardless of whether the MPEP requires it or not, it looks bad, to withhold the office action itself that explains the significance of the art, even if you file the art.  File anything and everything in the PTO, fight it in the PTO ex parte; otherwise you will spend hundreds of thousands litigating the issue.
7. Lots of inventors:  The problem with lots of inventors is you invite lots of depositions in a lawsuit, and you have to keep their stories straight.   You have to know each person’s contribution to at least one issued claim.  Moreover, if there have been lay-offs, not all inventors may be friendly to you.  Culturally, many organizations will list anyone in the lab, and also list the chain of command up to the top of the group or even organization, as inventors.  This means that years later, a) one of them may be unfriendly, b) so high up in the company that no one wants the person deposed, c) give conflicting testimony on any issue regarding the invention, and d) give conflicting testimony about the prior art.
8. Long responses to office actions:  Remember, as Richard Killworth says, “only you can create prosecution history estoppel”.  Long responses to office actions and re-writing claims, invites prosecution history estoppel and can preclude infringement under doctrine of equivalents.  Do an examiner interview if you need to argue a point in detail, the typical summary is completely non-informative to anyone reading a file history after the fact.
9. Failure to object reasons for allowance that limit the invention:  If you get a list of “reasons for allowance” which limit the invention, object to it.
10. Finally, pay all your fees timely and in full, don’t get slick with small entity status or failing to pay fees for review of late filed prior art, or missing a deadline and having to seek to revive an application with a declaration.  Even though fees seem tangential to the point of the patent, the fact is patents have been rendered unenforceable by abusing small entity status, or “slightly perjured declarations” to justify late payment of fees.

There is a list from me.  Now let’s hear from others on what makes it hard for them to enforce patents – and from patent prosecutors lawyer sas to why that’s just the way it is……

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