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The Common Mistakes to Avoid in Patent Prosecution

Author: Jess Roy
by Jess Roy
Posted: Oct 24, 2016
patent prosecution

There are many common mistakes made by patent prosecutors who help companies to protect and enforce their innovations. Here we will share some of the mistakes that are made in patent prosecution and how to avoid them.

Not writing clear applications

Although we know filing patent applications is not an easy task but it should be made simple and clear. It should never be assumed that the application has to be a complicated, unreadable legal document. According to experts working in the field of patent research/analytics and patent prosecution, it is not a will or a contract. In fact, the application should be a narrative of the invention. Keeping everything simple and clear and keeping the right flow in the application is important as it makes it defensible and mush easier to go through the patent office. Lack of clear language can create serious problems and disputes and leave a patent susceptible to being invalidated.

Revealing an insufficient list of Prior Art

While dealing with patent prosecution, the patent attorneys believe they have identified all the known prior art references to the examiner without realizing that the client is aware of some more references that are similar to the application under review. It is important that during the process everyone involved is aware of what they know as prior art. Here, the attorneys should lay stress on making their clients understand the importance of disclosing any relevant developments and encourage them to be frank during prosecution. It is always wise to explain everything what you know is out there. In doing so, you prevent falling into the trap of any kind of litigation.

Insufficient knowledge or misjudging the use of invention

It is important for the patent prosecution attorneys to have a sound knowledge on how an invention is made and employed in the marketplace before drafting and prosecuting claims. If these law experts fail to do so, the client could end up with a patent whose steps are performed by more than one actor.

Interaction with the examiners mainly through mails

Although patent prosecution process still relies on email conversation, the attorneys can accelerate the patent approval process by talking to examiners over the phone or meeting them in person. Interacting directly with the examiner and spending quality time to explain an invention will help in bringing the examiner at the same platform.

Hopefully, you enjoyed reading the above post. Ensure your patent attorney avoids making these mistakes during your patent prosecution process.

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Author: Jess Roy

Jess Roy

Member since: Jul 18, 2016
Published articles: 19

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