Patent Preparation and Prosecution
As a patent attorney with over 12 years of experience, I enjoy preparing and prosecuting patent applications that will both issue and provide significant business value to my clients.
As you may be aware, recent changes in US patent laws are making it harder to obtain meaningful patent protection. In particular, the US Supreme Court decision in KSR International has lead to considerable practical difficulties in getting patent examiners to allow applications. The USPTO developed new guidelines for examiners in light of this case. The examiners are now taking extreme liberties to find almost any reason to reject claims for being an obvious combination of two or more references.
While some of these post-KSR practices cases are coming to appeal within the USPTO, and starting to provide instructive guidance in prosecuting patent applications, the best strategy is to prepare the patent applications with comparative examples of unexpected or unexpectedly superior results over the prior art.
Hence, I strive to actively collaborate with my client’s scientists and engineers so we have every opportunity to enhance our patent applications with compelling comparative data, putting us in the strongest position to overcome the examiner’s potential rejections on appeal.
Patents grant a right to exclude others from practicing you invention, be it for a device, process or ornamental design. However, the grant of a patent does not mean you are free to practice your invention. It might still be “dominated” by the patent right of a third party.