In the latest installment of their monthly Law360 column on recent significant Federal Circuit cases, Knobbe Martens partners Sean Murray and Jeremiah Helm analyze the court’s ruling in Barrette Outdoor Living v. Fortress Iron, where the court held that arguments made during prosecution can result in binding disclaimers that narrow claim scope, even if the examiner is unpersuaded or claims are later canceled.
In the article, Murray and Helm provide key takeaways for patent prosecutors based on the ruling. They encourage patent prosecutors to carefully consider how they distinguish prior art, recommending against an “ultraconservative strategy” that includes no criticism of prior art, while avoiding arguments that could unintentionally limit claim scope.
“Familiarity with the decision will help patent prosecutors know how they can disparage the prior art in a patent’s specification without triggering specification disclaimer, and when they should refrain from making arguments to the USPTO that could lead to prosecution disclaimer,” write Murray and Helm.
“The Barrette decision is another reminder that prosecuting attorneys must choose their words carefully, and not just when drafting the all-important language of the claims,” the authors conclude.
Read the full article here.
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