August/September 2010 / Intellectual Property
Implementing Unified Patent Prosecution Strategies
Maintaining a global patent portfolio can be complicated when it is managed by an in-house attorney and multiple outside firms around the world. A unified patent prosecution strategy is important because the consequences of inconsistent or contradictory patent prosecution strategies can be devastating.
The recent Federal Circuit opinion in Therasense Inc. v. Becton, Dickinson and Co. illustrates this point. The court found a U.S. patent unenforceable due to inequitable conduct for failure to disclose seemingly contradictory statements by the attorney prosecuting the patents in applications before the European Patent Office and the United States Patent and Trademark Office. While a single attorney in Therasense made both contradictory statements, different attorneys working on related applications in different jurisdictions would be even more likely to make that mistake.
As a first step, using the same or similar arguments in each application throughout the world should limit the risk from making any inconsistent statements. Doing this with a single practitioner will be easier than using multiple practitioners.
As a second line of defense, maintain a tracking system of the references cited or commented on in each case. Cross-checking among references should allow applications with statements about the prior art to be crafted so that they are consistent throughout the prosecution of the entire portfolio.
