1	FICPI/AIPLA COLLOQUIUM Amsterdam, June 8 & 9, 2007 A COMPREHENSIVE APPROACH TO PATENT QUALITY WHAT IS QUALITY PATENT PROSECUTION? Marc S. Adler President Intellectual Property Owners Association Chief IP Counsel Rohm and Haas Company Philadelphia, PA
2	QUALITY PATENT PROSECUTION Quality patent prosecution should: - zealously pursue the broadest protection for the invention - provide a complete public teaching to advance innovation and - ensure high quality (valid) patents Applicants must take responsibility for quality patent preparation and prosecution and not rely solely on examiner
3	QUALITY PATENT PROSECUTION Quality patent prosecution must: - provide maximum scope of protection at lowest cost - be consistent with global business strategy and related patents and applications worldwide - result in valid and enforceable claims that provide clear notice to others - guarantee that the best prior art is fully considered by the examiner
4	QUALITY PATENT PROSECUTION Quality patent prosecution requires strategic thinking: - applicant needs to define business objectives before drafting and prosecuting application - application must support business IP strategy and patent portfolio - applicant should focus from start of prosecution on precisely what is the invention
5	QUALITY PATENT PROSECUTION Requires a well written specification that: - must fully enable and teach the invention - must define the invention clearly and concisely provide the public with clear notice describe the invention simply - must describe embodiments to assist public understanding of invention and define terms used to describe and claim - must not be overly broad and obfuscate the claimed invention
6	QUALITY PATENTS Start With a Quality Search Applicant should conduct a pre-filing search Applicant must cite the most relevant art to the examiner in a way that does not obscure the most pertinent references Don’t flood the examiner with cumulative prior art references Applicant should cite all and especially the closest prior art cited in any corresponding application anywhere in the world even if need to withdraw application from issue and re-file
7	QUALITY PATENT PROSECUTION Ends With Quality Claims Granted claims must clearly and thoroughly protect all aspects of invention embodied in newly commercialize product or process and defend strategic goals Granted claims should recite the uses of invention in all appropriate streams of commerce Granted claims should preferably not require multiple parties to infringe Granted claims must leave no gaps within scope of claims (e.g. miss operative species) and should maximize scope compared to boundary of prior art and provide protection against designs around
8	QUALITY PATENT PROSECUTION Define Terms and be Consistent Do not use terms that are not defined in specification - proper claim construction requires minimal term ambiguity Avoid claims with scope or term inconsistencies with claims in corresponding foreign applications and granted patents Not create self conflict or double patenting with related applications
9	QUALITY PATENT PROSECUTION Responding to Examiners Focus from start on precisely what is the invention Distinguish prior art with arguments limited to claim terms Don’t create complications or confuse issues about what the invention is Minimize length of response – be concise - one winning argument is better than many especially many alternative or inconsistent arguments
10	QUALITY PATENT PROSECUTION Responding to Examiner and Making a Record Point out all errors in examiner’s statement - both applicant and examiner have obligation to make the record clear Make certain examiner considers all the cited art on the record Correct any misunderstandings even when they may be to your advantage - a granted patent based on an examiner’s misconception is a low quality patent Respond to patent office as quickly as possible - maximize patent term and lower prosecution costs - can always supplement statements if needed Avoid theory speculation or attorney opinions about invention mechanism or undisclosed advantages
11	QUALITY PATENT PROSECUTION Amendments, Estoppel and Appeal Minimize file wrapper estoppel - do not characterize invention differently from description in application, illustrative examples and defined claim terms Minimize amendments but amend to clearly avoid the prior art - don’t expand scope of claims during prosecution by amendment Don’t add new matter (unless via c-i-p, but beware of commensurate downside risks of tracking split priorities and resulting effect on foreign counterparts)
12	QUALITY PATENT PROSECUTION Declarations and Appeals Minimize use of declarations or other extrinsic evidence to establish non obviousness or technical advance - anticipate such rejections by conducting comparative test vs. closest prior art examples and provide data in specification - disclose any inconsistent or failed results with explanation Appeal rather than re-file if you think you are right
13	QUALITY PATENT PROSECUTION Cooperation With Examiners Engage examiner early and work cooperatively: - use in person interviews - bring inventor along to explain significance of invention - always be courteous to examiner - avoid personalizing examiner’s rejections – focus on invention