Patents Attorney in Washington, District of Columbia
How to IPR-Proof Patents
How to IPR-Proof Patents
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00:04
well there’s a few things that you can
00:05
do to improve your chances of surviving
00:07
an ipr some of them are pretty
00:09
straightforward you can conduct a prior
00:11
art search you can increase the number
00:13
of claims and include more diverse types
00:17
of independent claims consider a means
00:19
plus function independent claim and then
00:22
for your dependent claims instead of
00:23
going from broad to narrow include a
00:25
spectrum so that there are some fallback
00:27
positions that still have value the
00:29
specification needs to be really robust
00:32
crystal clear
00:33
and
00:34
devoid of any any flaws under enablement
00:37
or written description
00:39
and it’s always ideal if you can have a
00:41
continuation or divisional pending so
00:43
some additional steps that
00:45
prior to the aia would have been
00:47
considered out of step with conventional
00:49
wisdom
00:50
and one of those is to define terms
00:53
others
00:55
consider using what we call patent
00:57
profanity that includes terms like the
00:59
invention must or
01:01
is critical that type of thing
01:03
if you know that an element is critical
01:05
then go ahead and embrace that and you
01:07
can consider telling the story the
01:09
invention
01:10
you can make sure that your prosecution
01:13
is evidence-laden by relying on
01:15
declarations using references to
01:17
establish
01:19
key factual points
01:20
and then the hardest for in-house teams
01:23
is to
01:25
emphasize a transition from quantity to
01:28
quality and the problem with that is
01:30
that it’s a hard metric to sell to those
01:32
who are managing the performance of the
01:34
in-house team but
01:36
in today’s world if you want to serve
01:38
survive iprs that emphasis is needed
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Washington, D.C. intellectual property lawyer Kevin Laurence shares his advice for patent prosecutors to IPR-proof their patents.
