Wednesday, April 1, 2009

Office action steps.

1. Check that the dates of all cited references qualify as prior art.
2. Check if patent entity owns any of the references.

Words to check--Refer to "cited publication" not "prior art."

Check that there are no occurances of the words "must," "Prior art," "invention" or "reference."

A recent litigated case involving a Colorado inventor hinged on the fact that the patent drafter stated “the benefit is…” rather than “a benefit is…” or “a potential benefit is …”. The entire case hinged on the fact that the court read the phrase to mean that the claimed invention must have the limitation. Literally millions of dollars were on the line because of an inadvertent error during patent drafting.


No comments: