Spinal Surgery, Cement Systems - Orthoworld

SURGEON AS ENTREPRENEUR
continued from page 10
more options will be open to the applicant and his patent attorney.
Understanding the basic premise of the examiner’s rejections under
35 U.S.C. §102 and 35 US.C. §103 serves to motivate the patent
applicant to expand his vision of the claimed invention to include
each and every additional element of limitation, which might reasonably
be included in his original concept. It is not unlike a soldier
preparing for battle who fills his bandolier with ammunition in
anticipation of the possibility that he will need every last bullet, in
contrast to the soldier who is less prepared and finds himself out of
ammunition in the midst of the battle. The patent applicant who
understands the rejections that await him in the patent prosecution
process will wisely prepare for a long and exhausting battle if he
expects success in his efforts to obtain an issued patent.
Another benefit of knowing what rejections may lie ahead in the
prosecution of a patent application may not be fully realized until
some time after the patent application has issued as a Letters Patent.
Once the battle of obtaining the patent has been won, it may still not
be a time of peace and profitability for the patent holder. It has been
said that if a patent is truly worth anything, sooner or later someone
will try to steal it—that is, someone will infringe one or more of
the claims of the patent. As discussed in an earlier submitted article
on patent litigation, the effort and costs of holding a patent infringer
accountable for his actions can be enormous. Worse than the merely
enduring the high costs of a patent infringement litigation is for
the patent holder to go through the time and expense of such an
action, only to find that the court has determined his patent to be
invalid. This determination of invalidity by the court would be
made in response to the accused infringer’s defense that the patent
should have never been issued by the U.S. Patent Office due to prior
art that anticipated or rendered obvious the claimed invention. It
has been said that what doesn’t kill us makes us stronger. At least
in the process of prosecuting a patent through the USPTO, that is a
true statement. In an infringement suit, the issued patent being
challenged by the accused infringer’s defense that the patent is
invalid is given the benefit of a presumption of validity that must
be overcome by the accused infringer. If the examiner’s record of
the patent examination process shows that the examination on the
merits was very thorough and rigorous and the applicant’s arguments
of record clearly distinguish the invention over the best prior
art found and made of record, the presumption of validity in the
eyes of the court is reinforced and more difficult for the infringer to
rebut. In contrast, if the record of the patent prosecution suggests a
weak and shallow approach to the examination, then the validity of
the patent will not seem as sure and the infringer’s arguments that
the patent should have never been issued may be more easily established
before the court. In any case, a patent application that survives
a stringent examination is given a better footing and, for
would-be infringers who take care to do due diligence before they
decide to infringe an application, it may be a factor in dissuading
them from their inclination to infringe the patent.
Knowing what may lie ahead is always an advantage when setting
out on a course to be traveled. My initial article submissions
to OPN, grouped as the Ten Golden Rules of Patent Law, were
intended to acquaint the inventor/patent applicant with some of
the basic stepping stones and some of the pitfalls that await along
the pathway to obtaining patent protection for his invention. This
article looked a little deeper into the patent prosecution process
with the purpose of making the inventor aware of the basis for the
prior art rejections to which his claims would inevitably be subjected.
This was done with the hope that knowing what rejections
lie ahead would motivate the inventor to deal with those rejections
proactively. The time to prepare for the patent examiner’s
rejections based on prior art is during the drafting phase of the
patent application process; that is, the best time to deal with an
examiner’s prior art based rejections is before the examiner communicates
them in the inevitable Office Action, before the patent
is even filed. By proactively preparing for a rigorous patent prosecution,
the applicant will also be working toward the allowance
of a stronger, more durable Letters Patent.
The intention of this series of articles is only to acquaint the
reader with the need to exercise due care and foresight in seeking
patent protection for an invention and to call attention to the
need to deal with rejection proactively in the patent prosecution
process. As such, these articles are not intended as legal advice
but only as a caution that proper legal counsel should be engaged
by anyone seeking to obtain patent protection for an invention.
Perry Van Over is the Founding Member of Perry E. Van Over &
Associates, PLLC, an intellectual property law firm specializing in
patent procurement, licensing and litigation in the technical fields of
surgical instruments, medical devices, molecular biology, pharmaceuticals,
biochemistry and polymer chemistry. He can be reached at 703-
543-6456 or perryvanover@cox.net.
September/October 2009 • ORTHOPAEDIC PRODUCT NEWS 11