Approach patent prosecution by prioritizing plain English claim language and treating examiner feedback as strategic insight. Evolving claim language across a continuity lineage can move from technical jargon to clearer, easier-to-interpret terms without sacrificing scope. Viewing examiner misunderstandings as indicators of future enforcement risks prompts deliberate refinement of intended meanings. Humility, curiosity, and gratitude during prosecution lower stress while sharpening claim clarity. Clearer claims can broaden applicability, reduce Markman misinterpretation risk, and strengthen durability in litigation. A case study of a family of patents shows that sustained plain-language drafting over time yields more enforceable and comprehensible patent claims.
The dramatic ending of Ridley Scott's 1991 crime drama, Thelma & Louise, is oft cited as an analogy for the thin line between patent claims being narrow enough to withstand validity challenges but broad enough to maintain infringement value. This tension frames a dance between parties throughout litigation in large part because claim terms are generally not written in ordinary English and need to be translated.
Instead of experiencing examiner challenges as annoying or frustrating, MONKEYmedia's patent agent, Dr. Gareth Sampson of KHMR&G led us to view examiner challenges as valuable strategic input to help the inventors reflect deeply on the actual meanings intended and lean into refinements using plain English. What can an examiner's apparent misunderstandings tell us about the future interpretation risks we might face during enforcement?
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