A Plea from the Trenches: How Prosecutors Can Make the Lives of Litigators Easier
Published in the August 2009 issue of IP Litigator
The lives of patent prosecutors are not easy. They toil away day-in and day-out on difficult, rather esoteric matters to achieve a singular goal: the issuance of patents for inventions of critical importance to their clients. One would hope that after they reach the holy grail of an issued patent that prosecutors could rest on their laurels and accept congratulations for a job well done.
Regrettably, however, that is not always the case. More often than not, the patents prosecutors work so hard to obtain become the centerpieces of highly charged, take-no-prisoners litigation, during which the prosecutors' prized patents get scrutinized, criticized, ripped apart, attacked, deconstructed, ridiculed, torched - and worse. Then, the ultimate fate of the patent is decided by a judge or jury who almost certainly has no background, familiarity or experience with the technology at issue or the patents themselves.
While prosecutors and litigators typically have no more in common than cats and dogs, we can nevertheless learn from one another. The purpose of this paper is to discuss how some errors made during the patent prosecution process play out in litigation - not to dump on prosecutors, but hopefully to provide constructive suggestions on how problems can be avoided.