3 Hidden Gems to Enhance Your Patent Prosecution Practices
Whether you’re in the patent prosecution business or have a client who is, there are some hidden gems you can use to enhance your practices. I’ll tell you about three that I’ve found to be invaluable in helping my clients to succeed in their pursuits.
CYMAX discussion with litigation counsel amounted to “assisting” in patent prosecution
CYMAX was a brochure that was part of a sales package for customers. It contained information on coiled steel tubing. This was a key piece of prior art in Plaintiff’s prosecution of Children Patents. The Court found that the PTO had deceived Plaintiff through withholding this information. In response, Plaintiff filed a motion to compel, a third amended answer, and a second amended complaint. In these actions, Plaintiff sought a special master to determine the extent of Defendants’ violations of the prosecution bar.
According to the Defendants, the discussion with litigation counsel was a “helpful” and “assistance” to the patent prosecution. The prosecution bar prevents a party from assisting in patent prosecution activities if the person receiving the information may not be involved in the prosecution of the patent applications. The Federal Circuit recognized that the protections for patent prosecution bar reflected a concern about the ability of prosecutors to protect confidential information.
Although the prosecution bar prohibits the communication of confidential information, the bar does not require the breach of confidentiality. The USPTO has procedures for the submission of confidential information, which is subject to a protective order. In the Tenaris case, the prosecution bar did not appear to be violated because the prosecution counsel did not appear to consider protective measures when disclosing CYMAX. Moreover, the prosecution counsel did not provide edits to the IDS. In the same instance, the same law firm represented the Defendants as patent prosecutors.
The Court’s opinion outlines the timeline of Defendants’ disclosure of CYMAX to the PTO. In addition, the court focused on the parties’ agreement that proprietary chemical specifications would be excluded from IDS submissions. In the end, the court found that the prosecution bar was violated. This decision demonstrated the broad scope of the patent prosecution bar. In the end, the Defendants argued that the special master was unnecessary. However, the Court found that the Defendants’ interpretation of the prosecution bar interfered with the duty of patent prosecution counsel. In its ruling, the Court considered the internal strategy discussions between litigation and prosecution counsel. Ultimately, the prosecution bar was held to apply to litigators.
Triangle IP’s TIP tool helps you build a strategy for patent prosecution
Developing an effective IP strategy is all about timing. You need to make sure your application is filed before your invention is made public. You also need to have an experienced patent attorney to help you get a good allowance rate. This is why Triangle IP’s TIP tool can help you build a strategic plan for patent prosecution.
This innovative software uses artificial intelligence to classify large amounts of patents. It then assesses the significance of the invention to the users. It also evaluates the patent counsel’s track record in the technology field. With its help, you can determine the time from filing to allowance. You can then use this information to select an examiner.
The TIP tool will also allow you to customize your IDFs. This will give you insights into the difficulty of the prosecution process. These insights will help you decide on the best course of action during the prosecution. It will also let you know if you should use an examiner with a low allowance rate. It will also allow you to determine the most important factors for you to consider when choosing an examiner.
This IP management tool will also allow you to communicate with your clients and paralegals. It will provide you with market measurement tools, matter trackers, and document management. The cloud-based software will help you streamline your workflow and communicate with your clients. It will also allow you to build non-aggressive patent monetization strategies.
Triangle IP’s TIP tool will help you to manage your innovation portfolio. It will also help you to gather the information you need to develop a strategy for patent prosecution. The software is designed to simplify the process and provide you with breakthrough insights. It can help you to get the most out of your innovation process. It can also help you to prioritize your prosecution docket. This software is a valuable resource for any company looking to streamline their innovation process. It can be used by attorneys, paralegals, and patent applicants alike. It can be purchased from the Triangle IP website. You can download templates to start using the tool.