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A few mistakes to avoid in patent prosecution

Author: Jess Roy
by Jess Roy
Posted: Jul 18, 2016
patent application

Patent prosecution is the procedure of preparing and filing a patent application and pursuing protection for the patent application with the patent office. Often this term is very confusing to people who are not familiar with patent industry. They mix it with the term litigation. But remember, it is quite different from litigation.

Patent prosecutors make a lot of mistakes while dealing with Patent Prosecution cases. Let us see what common mistakes they make. This information will be quite helpful for you if you are applying for patent.

Making the patent application language complex

It is obvious the patent application cannot cover up all the minute technical details that make up an invention. It should not be written in a way to lull the examiner into a coma-like condition. Don't assume that the application has to be imperceptive, complex and completely unreadable legal document. Nor it should be read like a will or a contract. It should just be a story of the invention. The claim language should be clear and crisp. According to experts who deal in patent prosecution and patent infringement claim charts cases are often lost because there is so much mess in the claims. The lack of clear claim language can be a serious problem, create disputes and leave a patent susceptible to being invalidated. So the language of the patent claims should be simple and crisp.

Misjudging how inventions are used

Your patent attorney should have a solid grasp on how an invention is made and used in the marketplace before drafting and prosecuting patent claims. If your attorney fails to take the big picture, as a client you may end up with a patent whose steps are performed by more than one player. And also it would be tough to enforce a patent in a situation where infringement is divided among many parties.

Revealing an incomplete List of Prior Art

Many times, patent attorneys believe they have turned over all of the known prior art references to an examiner without keeping into account that their client is responsive to additional features that are similar to the patent application under review. It is important to note that everyone involved in the patent prosecution process is open with what they know about prior art.

Hopefully, you may have found the above information useful. There are many more patent prosecution mistakes that patent attorneys make. Make it a point of choosing a patent attorney who is not on the list of making these mistakes.

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Author: Jess Roy

Jess Roy

Member since: Jul 18, 2016
Published articles: 19

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