Key Lessons From Patent Litigation For Drafting And Prosecuting Utility Patent Applications

In almost every U.S. patent suit, the patentee's counsel considers how the case could have been facilitated had the patent at issue been drafted and prosecuted differently. These considerations demonstrate that patents should be drafted and prosecuted with an eye toward the possibility of litigation. There have been several landmark decisions in patent cases that directly impact patent prosecution. This article analyzes some of those decisions in chronological order to provide suggestions for a patent prosecutor in drafting or prosecuting a patent application.

• The term "invention" should be cautiously used in the description section of the specification and during prosecution.