In the third and final part of this series, Assuring Quality U.S. Patents: Patent Owners’ Perspective, considerations for quality patent drafting are provided. The first part (interaction between attorney and inventor and preparing a quality patent) of the series can be found here and the second part (satisfying Section 112) of the series can be found here.
A. Are subjective evaluations presented as fact? Are assertions supported by science?
B. Do the inventors or persons with a Rule 56 duty know of any prior art, including patents, publications, and possible on-sale or public use information?
C. Do the inventors have any articles or publications on the subject matter of the invention?
D. Were all the experiments described performed as described?
E. Are there experiments and/or experiment details that were not included in the specification?
F. Are there undisclosed data? undisclosed documents?
G. Is there information in the files of those having a Rule 56 duty that is inconsistent with those data submitted? Arguments made in support of patentability?
H. Do they know of any related applications? Office Actions in any related applications? related patents? any litigation on the related patents?
I. Is there any correspondence, reports, or notes of telephone calls between the patent owner and third parties, such as potential licensors?
J. Are there invalidity and/or unpatentability search reports from patent authorities, inventors, patent searchers of the patentee, and/ or private patent searchers outside the patent owner relating to the subject matter?
K. Are there any documents related to world-wide regulatory filings, including, for example, in the U.S., the IND and NDA.
L. Be very careful with declarations submitted for establishing patentability.
November 23, 2020
November 17, 2020
November 4-5, 2020
October 25-26, 2020
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October 19-21, 2020
September 30, 2020
September 15-17, 2020