Thomas Kelton and David O'Dell for Law360: 8 Tips For Drafting And Prosecuting Patents To Avoid IPR


There is no way to make a patent invulnerable to challenge in an inter partes review, but there are ways to make a patent less appealing as a target for IPR and also less susceptible to a finding of unpatentability in an IPR.

The authors of this paper have extensive experience in IPR as well as in patent prosecution, which gives us a unique perspective as to how our actions in procuring patents affect a client’s ability to defend those patents against a validity challenge in IPR. We provide the following practice tips for fellow prosecution practitioners as well as for in-house counsel and client representatives who are consumers of prosecution services. The following practice tips describe actions that can be taken when a patent is drafted and prosecuted to make that patent stronger in the face of a potential IPR challenge. Spending a little more money and effort up front to draft a better patent application may pay off in real dollars when it comes time to enforce the patent.

Excerpted from Law360. to read the full article, click here (subscription required).

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