Matthew W. Siegal (msiegal@Stroock.com), is a partner in the Intellectual Property Practice Group of the New York office of Stroock & Stroock & Lavan LLP

Amy E. Wilson, Ph.D. (awilson@Stroock.com), is a technical consultant and registered patent agent in Stroock’s Intellectual Property Practice Group.

1. What are the most common pitfalls of preparing a U.S. Patent application?
The most common pitfalls in preparing a U.S. patent application are describing the invention both sufficiently broadly and sufficiently narrowly.  Describing the invention in broad terms is needed to satisfy the written description requirement, which would entitle the applicant to submit broad claims.  However, it is also helpful to include several examples of the invention to establish that the invention is as broad as the wording suggests.  If the broad wording or sufficient examples are missing from the specification, the patent office might limit the claims to the few narrow examples provided.
Another pitfall is the failure to take the overriding business considerations into account, by ensuring that the subject matter to be protected is aligned with the most valuable assets of the business.  Obtaining broad claims may not be very valuable, if they are not directed to the most important commercial aspects of the invention.

2. What are the key principles for a successful prosecution strategy post-KSR?
The KSR decision makes it more important than ever to establish synergy of the combined claim elements and unexpected benefits arising from the claimed invention.  Therefore, it has become more important than ever to provide comparative data in a patent application to more clearly establish the benefits of the invention over the prior art.

3. What are the main differences in various geographical markets from an IP protection point of view?
It is important to understand the individual patent laws of each country.  Some countries do not permit the patenting of methods of treatment.  Applications for such countries should be presented in terms of systems, devices and/or drugs for treating the condition in question, as opposed to methods of treating the condition.  Also, many countries do not have the strict disclosure requirements of the United States.  Therefore, it is important to have patent applications reviewed, prior to filing, by knowledgeable U.S. patent attorneys, to ensure that the U.S. requirements are satisfied.  U.S. companies should also be mindful of the strict prior disclosure rules in effect in many countries outside the United States.