Unlocking Examiner Rejections: Using Forward Citations Strategically in Prosecution, Litigation and Due Diligence

By Gene Quinn
October 22, 2017

Patent examiners and Art Units at the United States Patent and Trademark Office use patents and pending patent applications as references to issue 102 novelty rejections every day. Knowing when a patent or patent application you or your client owns has been used in a 102 novelty rejection for another application presents obvious strategic benefits. Until now, however, the searching required to learn this information was akin to finding a needle in a haystack.

A new tool has been created that quickly allows the searching of examiner rejections to uncover whether any patent or patent application within your portfolio has been used by an examiner against another application to support a 102 rejection. These “forward rejections” suggest that your asset must in the view of the patent examiner support the claims being sought, which provides unique strategic prosecution opportunities.

Furthermore, what if you could reasonably and cost effectively search arguments made to distinguish the patents in your portfolio used to support a 102 rejection. That corpus of data could be a potential goldmine for admissions that might provide a silver bullet argument in an inter partes review (IPR) or invalidity proceeding.

Join Gene Quinn, founder of IPWatchdog.com, on Thursday, October 26, 2017, to discuss the strategic prosecution, litigation and due diligence uses of “forward rejections.” Joining him will be patent attorney Bernard Tomsa, a partner with Brooks Kusham, to discuss the patent litigation and prosecution strategies. Also on the panel will be Kent Richardson, a business attorney and patent valuation expert who has represented LinkedIn and others, to discuss due diligence and the implication the strategies discussed could have on overall patent and portfolio value.


If you are unavailable at the time of the webinar you can still register. Everyone who registers will get access to the webinar once it is completed.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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