Controlling Patent Prosecution History

Abstract:     
This comment considers the importance of building prosecution records adequate to rebut arguments that may later be advanced by infringers to invalidate patent claims for obviousness. This is difficult when patentees face prior art that, for whatever reason, was unlikely to have been discovered, much less distinguished, during prosecution. Unless challenges can be rebutted with evidence of unexpected results developed during prosecution, allegalions of unexpected results may be rejected as in the classic Graham case.

Yet the recent KSR case demonstrates that it may be nearly as difficult to distinguish art readily available to both applicants and examiners but not considered during prosecution.

Number of Pages in PDF File: 6

Keywords: Prosecution history, obviousness, unexpected results, examiner competence

JEL Classification: K10, K23

Accepted Paper Series