Controlling Patent Prosecution History
Pierce Law Review, Vol. 8, p. 228, 2010
6 Pages Posted: 20 Feb 2009 Last revised: 5 Dec 2014
Date Written: February 20, 2009
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.
Keywords: Prosecution history, obviousness, unexpected results, examiner competence
JEL Classification: K10, K23
Suggested Citation: Suggested Citation