In my last post I introduced reexamination briefly. Once you understand that patent claims can be cancelled in a reexamination, it begs the question of how patent applications and claims can be drafted to survive reexamination. I have both good news and bad news.
THE BAD NEWS
The bad news is that it is impossible to know all of the prior art to a patent claim when it is drafted. New prior art can be discovered years later. And secret prior art (such as prior art under 35 U.S.C. 102(e)) may not be known at the time of prosecution. OK, so enough of the bad news – let’s talk about the good news.
THE GOOD NEWS
The good news is that you have two strong allies in your quest to have robust claims in reexam: (1) a prior art search and (2) dependent claims. A good prior art search can “calibrate” your understanding of the prior art and where your invention may achieve patentability and validity. And since you have dependent claims, you have the ability to claim narrower aspects of your independent claim, thereby giving a number of claims of varying claim scope to provide a number of progressively narrower positions in prosecution that ultimately issue in ex parte prosecution.
But how does this relate to reexamination? Well, it turns out that dependent claims are your friends when it comes to preserving the maximum economic value of your patent in reexamination. But that requires some understanding of how patent claims work for purposes of notice to the public and damages in patent litigation. That will be covered in my next post.
