Unlocking Examiner Rejections: Using Forward Citations Strategically in Prosecution, Litigation and Due Diligence

Patent examiners and Art Units at the United States Patent and Trademark Office use patents and pending patent applications as references to issue 102 novelty rejections every day. Knowing when a patent or patent application you or your client owns has been used in a 102 novelty rejection for another application presents obvious strategic benefits. Until now, however, the searching required to learn this information was akin to finding a needle in a haystack.

A new tool has been created that quickly allows the searching of examiner rejections to uncover whether any patent or patent application within your portfolio has been used by an examiner against another application to support a 102 rejection. These “forward rejections” suggest that your asset must in the view of the patent examiner support the claims being sought, which provides unique strategic prosecution opportunities.

Furthermore, what if you could reasonably and cost effectively search arguments made to distinguish the patents in your portfolio used to support a 102 rejection. That corpus of data could be a potential goldmine for admissions that might provide a silver bullet argument in an inter partes review (IPR) or invalidity proceeding.

Join Gene Quinn, founder of IPWatchdog.com, on Thursday, October 26, 2017, to discuss the strategic prosecution, litigation and due diligence uses of “forward rejections.” Joining him will be patent attorney Bernard Tomsa, a partner with Brooks Kusham, to discuss the patent litigation and prosecution strategies. Also on the panel will be Kent Richardson, a business attorney and patent valuation expert who has represented LinkedIn and others, to discuss due diligence and the implication the strategies discussed could have on overall patent and portfolio value.


If you are unavailable at the time of the webinar you can still register. Everyone who registers will get access to the webinar once it is completed.


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