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As a plaintiff’s attorney in an intellectual property lawsuit, I love trade secrets because they have no file history and absolutely no prosecution record, since no application is required to bring them into existence. In other words, trade secrets leave no paper trail, which makes it more difficult for a misappropriator to wiggle out of liability. As a defense attorney, however, I love patents because they have file histories full of things that can be used to limit liability. A paper trail — filled with statements by the inventor, his or her attorney and the examiner about the meaning of the claims — makes it possible for accused infringers to interpret (and sometimes distort) claims, and to expand the scope of discovery. For this reason, patent applicants should always prosecute their patents with an eye to possible lawsuits. Although no one can anticipate all the possible defenses and although patents are often written a decade or more before they are enforced (and in the meantime the law changes) the prosecuting attorney or agent must anticipate as many of the defenses as possible. The following procedures will help. CLEAN UP FILE A prosecuting attorney will keep a copy of all the documents that comprise the official file history. One thing that irritates litigators to no end is when the prosecuting attorney’s copy of the file history includes rubbish that does not need to be there: old drafts of specifications, claims, responses to office actions and so on. A messy file leads to excessive discovery, prolongs depositions of inventors and encourages depositions of the attorney who prosecuted the patent. The PTO does not keep extraneous materials, and you shouldn’t either. There is no legal duty, prior to the existence of litigation or service of a subpoena, to keep every scrap of paper. So do not be a pack rat. Clean up the file when the prosecution is over. TREAT COMMUNICATIONS AS PRIVILEGED Some of the draft documents may be protected by the attorney-client privilege or immune from discovery as work-product. But often they are not dated, list no author and are not formally addressed to the client. Make it easy on yourself; make it look like a communication, not a rumination. If you generate a potentially protectable communication, treat it like a genuine attorney-client communication. Be sure that it contains the name of the author and the recipient. Slovenly maintenance of privileged communications causes fights in litigation as soon as documents are withheld. Trying to keep them confidential will be hard without names of recipients on the documents, and a fight may make you look like you have something to hide. If you are required to turn these communications over, you give your adversary a chance to argue that you questioned the wording of your claims or the adequacy of your description of the invention. Deletions of material may be used to argue that the prosecuting attorney or the inventor was trying to keep something from the examiner. DOUBLE-CHECK AFFIDAVITS Another chronic source of problems in litigation is the affidavit, frequently used to prove a reduction to practice or to establish commercial success. An inaccurate affidavit is a big box of hand grenades for the defendant’s assault on the veracity of the patent applicant. I have seen many commercial success affidavits fail to establish an adequate link between the features of the invention and its success in the marketplace. Consider setting out some facts to show that the invention’s success was not due to more advertising, a lower selling price, a bigger sales force or some fortuitous change in the marketplace. In one of our cases, the defendant initiated re-examination against the patent. Later, during the lawsuit, the defendant used a slight inaccuracy in an accountant’s affidavit about commercial success to argue that we committed inequitable conduct in the re-examination. Affidavits need to be double-checked by someone other than the drafter and signer. Another attorney or some other person who has nothing to do with the prosecution is one good choice. DON’T ARGUE AGAINST RESTRICTION Our recent experience suggests caution in making any response to a restriction requirement other than election of which invention to pursue. You can make an objection if you like, but you are not going to win. (The PTO needs the money!) In one of our cases, the examiner issued a restriction requirement stating that there were two inventions because the claimed structure could be made by a method other than the claimed method. The examiner provided an example of another such method. The applicant responded, remarking that the alternative method could not be used to make the claimed structure. Now, the defendant in our lawsuit is claiming that it manufactures the product, not according to the claimed method, but in accordance with the alternative. PENNY-WISE There is no way you can overcome every problem, and some infringers will make accusations no matter what you do. If little art is cited, the infringer will say things were hidden from the examiner. If a lot of art is cited, the infringer will say the examiner was inundated, and the important materials hidden. We have a case in which the defendant is making both arguments at the same time. There is much more we could talk about. I chose a few examples to drive home this thought: If you want to reduce the cost and duration of litigation, spend a little more time and money in prosecution. Too many companies take a “penny-wise and pound-foolish” approach. If you make a habit of dealing with as many problems as you can in prosecution, your money will be leveraged at least 10 to one. Joseph N. Hosteny, a former assistant U.S. attorney and a registered professional engineer, is an IP litigator with Chicago’s Niro, Scavone, Haller & Niro. He can be reached at (312) 236-0733, or by e-mail at [email protected], or by visiting his web site at http://www.hosteny.com.

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