Detecting Red Flags in Patent Prosecution

About the Course: Some have said that valuing patents is a murky endeavor. However, Yogi Berra offered sage advice when he said, “You can see a lot just by looking.” When it comes to assessing a patent’s strength, there is quite a lot of material to review. The United States Patent and Trademark Office makes patents’ entire prosecution histories available for free through its PAIR site. The wealth of this information — together with many instances of inconsistencies and legalese — renders divining patent quality a challenge. This course is the antidote to such challenges. The following are among the issues that patent professionals should be aware of when reviewing a patent’s prosecution history: Where in the patent prosecution process might an inventor incur criminal penalties for committing fraud? In reviewing patent prosecution history, what does the term “traverse” mean? What are five actions that could constitute inequitable conduct? How does the Therasense case impact standards of inequitable conduct? What are three criteria for determining if the Doctrine of Equivalents has been met? When does narrowing of patent claims trigger prosecution estoppel? What should we know about the Festo decision in terms of file wrapper estoppel? What are some common drafting mistakes regarding preferred embodiments? When can a patent applicant seek patent reissuance? Under what circumstances is a high incidence of Requests for Continued Examination a promising/problematic indicator of patent value? What kinds of inventor behavior can reduce patent life extensions such patents might otherwise enjoy? What are the benefits of undergoing supplemental examination? Is it typically recommended that applicants characterize, or discuss the materiality of, their claims? What should you know about the intersection of means-plus-function claims vis-a-vis the Doctrine of Equivalents? Why might receiving Allowance on First Action not be a reliable indicator of patent strength? Has the America Invents Act rendered failing to meet best mode requirements more or less likely to result in patent invalidity? Course Leader: Raymond Van Dyke, Shareholder, Van Dyke Law Ray Van Dyke is a technology consultant and patent attorney in Washington, DC. He has been a patent practitioner for over 22 years, and prosecuted thousands of cases. He is an Adjunct Professor in the Engineering School at Southern Methodist University, where he teaches a course on the history of technology and intellectual property basics to engineers, business people and students. He is active in numerous bar and technical organizations, including the Licensing Executives Society (where he is DC Chapter Chair), AIPLA, IPO, ACM, IEEE and others.
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