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Top Mistakes in Patent Prosecution: A Litigator’s View

10/13/2009 Articles

Published by IP Law & Business

The lives of patent prosecutors are not easy.  They toil away on difficult, rather esoteric matters to achieve a singular goal:  the issuance of patents for inventions of critical importance.  One would hope that after they reach the holy grail of an issued patent, prosecutors could rest on their laurels.

Regrettably, that is not always the case.  Often, the patents that 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.  While prosecutors and litigators typically have no more in common than cats and dogs, they can nevertheless learn from one another. 

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PTO Director’s Fintiv Guidance Gives Petitioners New Tools to Avoid Discretionary Denial

The PTAB’s 2020 Fintiv decision established six factors that guide its discretionary denial of an IPR or PGR petition in view of a parallel court case.  The Fintiv factors give significant weight to scheduling...

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How To Avoid Allegations of Trade Secret Misappropriation in California

When departing a company, an executive, founder, or employee with access to trade secrets or confidential information may face legal allegations around whether they will use or disclose their former employer’s trade secrets at...

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Farella Braun + Martel Announces 2023 New Partner Class

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What Recent Rulings in 'hiQ v. LinkedIn' and Other Cases Say About the Legality of Data Scraping

LinkedIn obtained a permanent injunction on Dec. 6 in its six-year-old lawsuit against data scraping company hiQ Labs, which LinkedIn quickly cheered as a “final, decisive victory” that established an “important legal precedent.” While...

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Under FTC’s New Proposed Rule, Employers Will No Longer Be Able to Rely on Noncompete Agreements

The Federal Trade Commission (FTC) has proposed a rule that would prohibit the use of noncompete agreements in employment contracts. Noncompete agreements prevent employees and independent contractors from pursuing certain forms of employment &ndash...

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Tim Horgan-Kobelski Named a Rising Star in IP by Managing IP

Headshot of Tim Horgan-Kobelski
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Farella Braun + Martel Earns 2023 U.S. News – Best Lawyers® "Best Law Firms" Rankings

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PNC Scores a Win in Battle With USAA Over Mobile Check Deposit Patents

Eugene Mar, intellectual property litigation partner and chair of the Technology Industry Group, spoke to American Banker for the article "PNC Scores a Win in Battle With USAA Over Mobile Check Deposit Patents." "My...

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Failures Are Valuable IP: Protect Your Startup’s Negative Trade Secrets

Technology companies and start-ups are familiar with protecting inventions with patents, and protecting their secret formulas, source code, and algorithms as trade secrets. But tech companies may not be aware of another powerful form of...

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Importance of Monetizing Intellectual Property Assets of a Portfolio Company

In this Upside episode, we explore developing and monetizing intellectual property assets of a portfolio company. How does a new company go about developing a patent portfolio? And why spend the time and effort...

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