Don't be proud of valid patent claims
Why do some attorneys rejoice over clearly valid patent claims?
Valid patent claims are by definition narrower. There are times when this is a serious liability, here’s an example.
It’s not uncommon to see external counsel celebrating over a clean bill of health in the international search report issued by the PCT.
To me that’s a disaster. You mean to say that there’s claim scope out there (which we’re now unaware of) which we could have had? Sure in many countries we can go back and try and get it, but it’s not easy.
Except in some unusual and very specific situations, I’d rather see an adverse International Search Report than one that rubber stamps validity.
Even when the patent is granted – who cares whether there’s some uncertainty over validity of your broadest claims if you are certain about the most valuable, narrower ones?
[photo credit: Night Flier]
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