Professional Documents
Culture Documents
18 Ways To Attack A U.S. Patent
18 Ways To Attack A U.S. Patent
18 Ways to Attack a U.S. Patent
and How to Immunize Your Own Patents from Attack
Summary of University of Haifa/Finnegan lecture series presentation by Gerson Panitch on 6 July 2010
1. Invalidating Published Prior Art: Steps: Identify a publication that qualifies as prior art under U.S.
law, study the patent claims, and interpret the claims using rules established by U.S. courts. If there is a
one‐to‐one match between a claim and the prior art, it is likely that the patent claim is invalid as
“anticipated”. And even when a single reference does not disclose the entire scope of an issued patent
claim, that claim may nevertheless be invalid as “obvious.”
2. Inequitable Conduct Attack: In the U.S., anyone involved in the patenting process, including
inventors and attorneys, has an obligation to bring to the Patent Office’s attention information that
might affect the Examiner’s decision to grant a patent. Failure to do so can render the subsequent
patent unenforceable. Whether information must be disclosed is a function of a number of factors
governed by U.S. law. If in doubt, err on the side of disclosure.
3. Using the Specification to Attack the Claims: Even if your claims are broad, if the specification is not
written with care, it may limit the claims. Watch out for: Vague claim terms with corresponding narrow
disclosure; Disparaging or distinguishing the prior art; Highlighting non‐claimed features of
embodiments; Narrow examples without a more general description; Describing unclaimed benefits of
the invention; Attributing the word “invention” to unclaimed features. For more detail, consult the
article, “Is the Name of the Game Still the Claim? The Post Philips Revolution in Patent Law” by Gerson
Panitch.
4. Extraneous Claim Limitation Attack: Avoiding infringement by finding words in the claims not found
in the accused product. Every word counts. The doctrine of equivalents is not a license to ignore claim
recitations. A single extra word can mean the difference between millions in damages and no liability.
5. Best Mode Attack: U.S. law requires that a patent disclose the best mode of practicing the invention
as contemplated by the inventors at the time of filing. Failure to do so may render the subsequent
patent invalid.
6. Ownership Attack: In the U.S., all inventors are entitled to equal ownership of the invention and
have the right to fully exploit it. Therefore, companies need to be sure that they obtain an assignment
of rights from each inventor. Also, watch out for institutions and consultants who may later claim
ownership rights. Get assignments early, before the invention’s full value is perceived.
1 | P a g e
7. Enablement Attack: Under U.S. law, a patent must contain sufficient detail to enable a person of
ordinary skill in the art to make the invention without undue experimentation. Failure to include
uncommon detail may render the subsequent patent invalid.
8. Written Description Attack: Under U.S. law, the written description in the patent must convey to the
reader that the inventor possessed the full scope of the invention as claimed. This can become an issue
when there is a mismatch between the breadth of the claims and breadth of the disclosure, and can
result in an invalid patent.
9. Admitted Prior Art Attack: A statement in a patent that something is in the prior art is binding on the
patent owner for determinations of anticipation and obviousness. The same reasoning also applies to
admissions in an information disclosure statement. Once an admission is made, it is difficult to undo,
and it may be used by the Examiner or a court to determine that the claims are unpatentable.
10. Incorrect Inventorship: All persons who conceived of claimed subject matter must be named as
inventors. If a person is added or omitted, and an opponent is later able to convince a judge or jury that
the error occurred with deceptive intent, the patent may be invalid.
11. Derivation Attack: If a named inventor derived the invention from another, the patent can be
invalid, even if the invention differs somewhat from the work of another.
12. Estoppel Attack: What you say can and will be used against you to invalidate your patents. This can
occur during the patenting process, before filing suit, or during suit. Measure your words carefully, or
risk a narrowed patent.
13. Festo‐Type Estoppel: When you narrow a claim by amendment, a presumption arises that you have
surrendered all equivalents for that narrowed element. If you file hastily written claims, and later
cancel them in favor of a more refined claim set, it is likely that during litigation you may not be entitled
to any equivalents for any claim recitation.
14. Failure to Mark: If you fail to mark your products with the patent number, you will not be
permitted to collect damages that occurred before the date of the suit. (Unless you sent an appropriate
warning letter in advance, which is itself fraught with risks.) But be careful, because if you mismark, you
can be subject to serious penalties. Finnegan partner Dr. Steven O’Connor will address this issue in his
upcoming lecture, “Beware: Patent Marking Errors Can Cost Your Company Millions”.
15. On Sale Bar Attack: If an invention was the subject of a commercial offer for sale in or to the U.S.
more than one year before the patent’s filing date, and the invention was at that time “ready for
patenting”, then such a patent is invalid.
16. Public Use Attack: A public (i.e., non‐secret) use of an invention in the U.S. more than one year
before the patent’s filing date can render a subsequent patent invalid. This can occur, for example,
when inventions are shown at trade shows.
2 | P a g e
17. Damaging Admissions in Company Documents: Everything that everyone in the company writes,
even years earlier, is discoverable in a U.S. litigation. Make a habit of not writing about other’s patents
and not making any statements‐‐ even in e‐mail‐‐ that you would not want displayed to a jury in a
courtroom. Damaging statements can kill your patents. Finnegan partner Laura Masurovsky will
address this topic in her upcoming lecture entitled, “Preparing for War: Things Your Company can do
now to Maximize Success in Future U.S. Patent Litigation”.
18. Abstract Ideas Attack: In the wake of the Supreme Court’s Bilski decision, the next wave of attack
will be that patents are invalid because they claim “abstract ideas”. This has particular significance in
the software, medical diagnostics and procedures, and business methods arenas. Finnegan partner Jeff
Berkowitz will address this topic in an upcoming lecture entitled, “Strategies for Patenting Software and
Business Methods in a Hostile Climate.”
Gerson S. Panitch Attorney at Law (U.S.) Office: 03 721 9629 Israel mobile: 054 245 4996
gerson.panitch@finnegan.com www.finnegan.com
About Finnegan and the Author: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, is one of the world’s largest IP firms
with nine offices spanning the U.S., Asia, and Europe. In the latest 2010 peer‐review rankings, both Chambers USA and The
Legal 500, placed Finnegan at the top when it comes to patent litigation, patent prosecution, patent licensing, ITC litigation, and
trademarks.
Gerson Panitch coordinates Finnegan’s Israel practice and is currently residing in Israel. He specializes in strategic patent
planning, U.S. patent litigation, and IP due diligence. As companies grow product lines or develop new technology, Gerson
helps devise patent strategies to block the competition and further the companies’ business goals. Ahead of investment or
acquisition, Gerson helps identify weaknesses in patent portfolios, and identify solutions for curing those weaknesses. And
when companies identify infringers or receive accusatory warning letters, Gerson calls on over 20 years experience litigating
patents in U.S. courts, to rectify the situation.
Gerson is a frequent worldwide lecturer on patent topics and, together with four other Finnegan partners, teaches Patent
Practice, Strategy, and Management in the law school of the University of Haifa.
Gerson welcomes your inquiries. For general information about Finnegan, please contact Finnegan’s Israel Business Director,
Bob Rosenbaum at 054 245 4995.
***
All information presented in this summary is for educational purposes only to contribute to the understanding of American
intellectual property law. Only the personal views of the author are expressed, and the author’s views are not attributable to
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP or its clients. Legal determinations and advice are fact specific, while the
information presented herein is generalized. Therefore, nothing presented herein should be relied upon as legal advice. When
legal advice is required, please consult counsel with whom you have an attorney‐client relationship. The presentation of these
materials does not establish any form of attorney‐client relationship with the author or Finnegan. While every attempt was
made to insure that these materials are accurate, liability is disclaimed for any errors or omissions.
3 | P a g e