Webinar | May 10, 2018

Strategic Prosecution: Mining Your Competitor’s Portfolio for Your Strategic Benefit

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Over the last decade, the United States Patent and Trademark Office has increasingly given the public access to its terabytes of raw data. As this information has increasingly been converted into usable, searchable formats, a great deal of actionable information has been discovered, some presenting extraordinary strategic benefits. Once upon a time, it would have been virtually impossible to know that a patent examiner had used one of your client’s patents or pending patent applications as a reference in a 102 novelty rejection. Today, however, it is quite simple to search and find whether this has happened. And when a competitor is being rejected under 102 based on one of your client’s patents or pending patent applications there are strategic choices that can be made that may allow your client to make a claim to that subject matter. This type of pre-emptive claiming is possible thanks to a new tool created by Anaqua, which quickly allows the searching of examiner rejections to uncover whether any patent or patent application within a portfolio has been used by an examiner against another application to support a 102 rejection. These “forward rejections” suggest that the patent examiner necessarily views the claims being sought by the competitor as being supported by your client’s disclosure, which provides unique strategic prosecution opportunities. In this free webinar, we took a look at several examples of pre-emptive claiming, which when done properly can allow your client to obtain a set of competitive blocking claims that are duplicates of the claims your clients' competitors sought in their later filed application. Gene Quinn, patent attorney and founder of IPWatchdog.com, and patent attorney Bernard Tomsa, a partner with Brooks Kushman who has used this tool in prosecution for this specific purpose, lead the discussion of the strategic use of pre-emptive claiming based upon forward rejections.

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