Prosecuting Patents With An Eye Toward Litigation

Most patents are drafted by patent prosecutors, many of whom have little to no litigation experience. This often leads to patents that present unnecessary issues for patent owners during litigation. Prosecutors must keep in mind that a patent is, first and foremost, a document that gives an inventor the right to sue for infringement -- plain and simple. A prosecutor should, therefore, draft patents assuming that they will eventually be litigated, and would be wise to learn the tactics that litigators often use to attack patents. Below is a short list of suggestions for prosecuting attorneys to keep in mind when drafting applications:

1. DO NOT IDENTIFY ANY EMBODIMENT AS PREFERRED: While a patent is not limited to the features described in preferred embodiments, litigators invariably try to equate the preferred embodiments to the invention itself. Optically, such an argument often has appeal to lay juries, who understand "preferred embodiments" as carrying more patentable relevance than others, especially if the accused infringer's product does not embody a "preferred" embodiment. I suggest using, instead, "example embodiment." This does not communicate that any one embodiment is "preferred" over any other.

2. NEVER, NEVER, NEVER DESCRIBE OR IDENTIFY ANYTHING AS "NOT" PART OF THE INVENTION. There is absolutely no reason whatsoever to state that something IS NOT part of the invention. When such language appears in patents (which I have seen on numerous occasions), accused infringers always attempt to convince juries that their accused products practice what the inventors said was "NOT" part of the invention. If it's "NOT" part of the invention, it shoud "NOT" be discussed in the patent.

3. DO NOT DESCRIBE ANYTHING AS "ESSENTIAL" TO THE INVENTION. No one element is "essential" to an invention, no matter what the inventor says. The novelty of an invention is in the entire claim as a whole -- i.e., in the claimed combination of ALL elements. When a prosecuting attorney describes something as "essential," a horrible thing happens -- claims not reciting the "essential" feature are invalid under 35 U.S.C. 112. It's best to avoid this practice.

4. DO NOT MAKE UNNECESSARY AMENDMENTS. This is a biggy. Sometimes a prosecutor will amend claims to "clean them up", or make more amendments than necessary to avoid a prior art rejection. Each time a prosecutor amends a claim element, that element is presumed under the "Festo Doctrine" to have lost its range of equivalents. It's much better to have an imperfectly drafted claim with no amendments than a perfect one with many. Why? Because invalidity arguments under 35 U.S.C. 112, p2, are almost never successful at trial. Unnecessary amendments also narrow the scope of the claim for no reason.

5. KEEP THE BACKGROUND OF THE INVENTION AS SHORT AS POSSIBLE. While a good background certainly places an invention into context, it almost never supplies written description or enablement for the claims of a patent and, as such, is not necessary for patentability. The more you write in this section, the higher the probability that something you write will come back to haunt the patent owner during litigation.