“While many applications are drafted and prosecuted by highly qualified patent counsel, review by litigation counsel is often not done until monetization or enforcement is contemplated. Too often, that is too late.”
Consider the following scenario: After years of prosecution and tens of thousands of dollars, the patent finally issues. With known infringers already in the market, it’s time for enforcement. The complaint is filed, and you’re off. Once the case gets going, however, you quickly learn that the accused product does not include all the elements in the asserted claim and, in fact, another company provides some of the required elements. For example, the claim requires a server to perform steps in the claimed method but the server in the accused system is owned and operated by a third-party. Now you have a fatal divided infringement problem – you cannot show that the company you sued (or any company for that matter) infringes all the elements of the claim. Unfortunately, by then it’s too late to fix the problem, and your case—and the patent—are doomed.
In addition to unrecoverable issues like divided infringement, it’s no secret that patents have come under increased scrutiny over the last decade. The Patent Trial and Appeal Board (PTAB) continues to invalidate patent claims at an alarming rate, defendants have ever-increasing invalidity and non-infringement arguments to make in district court, and the Supreme Court’s Alice decision on patent eligibility continues to baffle the entire patent community. Given the seemingly neverending series of hurdles, you may be left wondering what can be done to better secure legitimate inventions. There is a palpable frustration about patents that many argue will have a devastating impact on innovation in this country.
While the patent community debates the need for reform, an easy and attainable solution, and one that is within your control, is simply to strengthen the patents before they issue. Often overlooked, a cheap and effective way to ensure stronger claims and minimize the risk of having a patent implode during enforcement is by engaging litigation counsel as an integral part of the prosecution process. Both clients and their counsel will appreciate the benefits of a litigation-focused review during prosecution.
A litigation counsel review can entail any or all of the following:
Application Review: Having litigation counsel review the patent application, including the specification and claims, can have many benefits. For example, a litigation-focused review of the specification can identify and fix easily avoidable pitfalls, such as unsupported, unenabled claims, claims that do not satisfy the written description requirement, and characterizations of the invention and prior art that are unhelpful (or potentially devastating).
As for claims, the old adage of drafting claims to be as broad as the U.S. Patent and Trademark Office (USPTO) will allow doesn’t stand up to the realities of patent litigation today. The Supreme Court’s recent Amgen decision is a prime example. That case demonstrates the dangers of functional claiming and the need for claims to be more closely tethered to the actual invention. And, particularly with software patents, broader, result-oriented claiming may have the unintended effect of producing indefinite claims, claims that are not patent eligible, claims that suffer from divided infringement, or are so broad they end up on the PTAB’s or district court’s cutting room floor. These days, patentees and their counsel must carefully thread the needle as they seek claims that are not so broad they are invalid, but not so specific they are either not infringed or can be easily designed around.
Having litigation counsel review pending applications in view of the traps faced in litigation can best position a patent for future monetization or enforcement efforts.
Office Action Response Review. Patent prosecutors understand the delicate dance of responding to an office action in hopes of getting the application allowed. Litigators understand the many headaches such a response can cause. Whether an applicant decides to respond by amending the claims, distinguishing the prior art, or both, any response must seriously consider the potential resulting issues that can wreak havoc during litigation, such as estoppel, negative impact on claim construction, and limiting the range of equivalents for infringement. Often the goal is to get the claims allowed as quickly and easily as possible. While that is important, unfortunately, amendments or arguments made during prosecution are regularly used against a patentee during litigation.
Having litigation counsel spend a few hours reviewing the proposed response can minimize any negative impact on a future infringement claim.
Avoiding Alice. Patent eligibility under the Supreme Court’s Alice decision has fundamentally changed the way claims are reviewed by courts, particularly software and life science claims. The sixty-four-million-dollar question for many prosecutors, however, is what is that magic claim language that will be found patent eligible. Simply overcoming a 101 rejection during prosecution doesn’t eliminate the possibility of a subsequent successful challenge in district court. Far from it. In fact, the single most persuasive argument in district court is whether a court, preferably the Federal Circuit, has found a patent claiming similar technology patent eligible. Without experience litigating Alice challenges, this is a tricky, if not impossible, endeavor.
A litigation counsel review can identify these analogous court decisions and determine whether they impact proposed claim language, the proposed specification or the overall prosecution strategy. Litigation counsel can also help ensure that the claims and supporting specification sufficiently recite court-endorsed aspects of patent eligible claims, such as an “inventive concept” and “technological improvement” relied on by Alice and its progeny, based on experience applying the Alice factors in litigation.
Make Your Patents Stronger
While many applications are drafted and prosecuted by highly qualified patent counsel, review by litigation counsel is often not done until monetization or enforcement is contemplated. Too often, that is too late. Litigation counsel have unique experience and insight into the problems that arise during litigation, which many patent prosecutors are shielded from entirely, or with which they have little involvement. Also, many applicants, even larger companies where prosecution is handled in-house or by larger firms, are simply not aware of such services or the great benefits they provide. By having litigation counsel involved during the prosecution process, they can address any deficiencies at a time when that is possible and practical.
Employing an inexpensive litigation counsel review during prosecution can have a significant impact on the ultimate strength of a patent when it’s time for enforcement or monetization.
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