There is an old saying that “sometimes, less is more.” This advice has particular applicability to patent prosecution where, with each word written, an Applicant risks generating argument estoppel. Additionally, each written word presents with it an inherent risk of introducing error. Further, extended arguments are generally more expensive since they require additional time to…
Category: Avoiding Estoppel
Prosecution Profanity – Words To Avoid In Prosecution – Part 2
This is the second of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office. Limitation It is my belief that a prosecution history that avoids use of the term “limitation” when referring to a claim feature is of greater value in litigation than…
Prosecution Profanity – Words To Avoid In Prosecution – Part 1
This is the first of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office. I’ve come across a recent series of interesting discussions on the “Anything Under the Sun Made by Man” blog by Russ Krajec. In the series, Mr. Krajec makes a…
Avoiding Implications By Silence In A Prosecution History – Part 2
This is the second of a two part series about efficient and cost effective ways to avoid potentially critical implications by silence during prosecution of an application. The first part of this series presented techniques for generating a prosecution history that rebuts an implication that additional patentablity arguments were not believed to be available or…
Avoiding Implications By Silence In A Prosecution History – Part 1
This is the first of a two part series discussing various techniques that take advantage of opportunities in a prosecution history to rebut/preclude disadvantageous implications that often tend to arise in patent litigation. These techniques tend to yield prosecution histories that are more difficult to assail while also providing future litigators asserting the patent with…