Patent Prosecution Strategy
Go back to home page
|| Go back to last page
We have found several golden rules: First, a drafter cannot write a good patent application for the subject the drafter does not understand and cannot write strong and proper claims unless the drafter has sufficient knowledge of the claimed invention and relevant prior art. Second, in responding to office actions to overcome rejections, the knowledge of attorneys in the relevant technical fields often play a decisive role. Strong and dispositive arguments often lie in the joint area between patent law and the relevant technology, and they cannot be based upon pure technology or pure patent law. In dealing with 103 rejections, the attorney may have to identify a plurality of facts or elements from the claimed invention and reaches an end result, which is clearly superior to or dramatically different from what is in the existing art. Or the attorney may have to identify a plurality of facts or elements from the prior art references and reaches an end result, which is superior to or dramatically different from what is in claimed invention. Third, we also found a good strategy for drafting around highly populated prior art. Now, the Patent and Trademark Office can find anything as the basis for entering a 102(a) rejection as long as it can find all “elements.” An attorney can use a special drafting strategy to avoid all elements of some unknown prior art references. While use of the anticipate avoidance would require a great deal of the prosecution time and full knowledge of the relevant prior art. The prerequisite for using this method is solid knowledge of the invention and relevant prior art.
For more information, please contact the firm.
Go back to home page
|| Go back to last page
|
