In my opinion, quality patent prosecution can often be as challenging as quality patent application drafting, which is one of the more challenging tasks in the legal profession. The challenge in patent prosecution is not in obtaining allowed claims, but rather in obtaining the broadest claims that have the most value. That is, to convince an examiner of the patentability of the broadest claims while generating the least amount of prosecution history.
In my career, I have often been asked to consult on or take over the prosecution of applications that have already been through a significant amount of prosecution. Not uncommonly, I have been surprised by the amount of avoidable estoppel that I find, which is usually the result of thoughtless and/or careless prosecution. That is, not exercising thoughtful caution when crafting remarks, unnecessarily/inaccurately characterizing the claims or “the invention,” and/or crudely articulating patentability arguments. In essence, prosecution as clumsy as a bull in a china shop.
When prosecuting a patent, I advocate that one take the approach not unlike that of a plastic surgeon. That is, prosecuting with a definite and purposeful focus on the end result, the prosecution history. This means prosecuting with one eye focused on the examiner and the other eye focused on possible future litigation in which the prosecution history will be scrutinized by litigators, juries, and federal courts. This requires care, thoughtfulness, accuracy and caution when amending claims and crafting remarks. In this way, like plastic surgery, patent prosecution is an art.
© 2007, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney