How the file history follows a patent into court
Arguments made to the examiner to get claims allowed can narrow what those claims mean in litigation, and amendments made to avoid prior art can bar the owner from later arguing that a similar product is equivalent. Statements describing the invention in the specification can also be read as limiting the claims. If material information was intentionally withheld from the USPTO, the patent can be held unenforceable, one of the most damaging outcomes in a case. Accused infringers routinely examine the full prosecution record, including foreign counterparts, for statements that help them.
Prosecuting with enforcement in mind
When a patent family is likely to be asserted, keeping a continuation pending lets the owner pursue claims aimed at a competitor's product as it appears in the market, within the support of the original disclosure. Claims drafted for enforcement are written so that infringement can be shown from the product or public information, not only from a defendant's internal records. Owners sometimes seek reexamination or reissue of an issued patent to address a problem before suing, though doing so reopens the record. Terminal disclaimers filed to overcome double-patenting rejections can also tie related patents together for enforcement purposes. Coordination between prosecution and litigation counsel avoids statements in one forum that undercut positions in the other.
Parallel proceedings and prosecution bars
Litigation frequently runs alongside USPTO proceedings, such as inter partes review of the asserted claims or continued prosecution of related applications. Positions taken in each are visible to the other forum, and claim construction in one can influence the other. Protective orders in litigation often include a prosecution bar, which prevents lawyers who see the other side's confidential technical information from drafting claims in the same field for a period. Our review covers the patent family, its file histories, pending applications, and any litigation or challenges, and identifies where the two tracks need to be coordinated.
