[Patentpractice] non-pub request for case claiming priority from abandoned foreign application

[David Boundy]

Jeff's observation is sound.

This is something that constantly bugs me when my client buys patents, when
I look at file histories, etc..   Too many patent attorneys take care of
anything that the examiner raises, and then go to sleep.   There are LOTS
of kinds of stuff that examiners DON'T raise...   YOU have to pay attention
to them, and make sure they won't blow up in litigation.  Counsel for
defendant will be looking for little picky stuff in the assignment, in the
benefit claim, in the foreign filing license, not in the IDS, etc etc.   If
you lay the landmine for yourself, defense counsel will find it and
detonate it and take off your leg with it.  Don't trust examiners to find
stuff like this tension between a priority claim and a nonpub request.

Can you tell what I spent half the day on?

On Tue, Apr 30, 2024 at 4:35 PM Jeffrey Semprebon via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Real concern probably isn't that the USPTO will call out the Applicant on
> this. More serious issue is if the USPTO doesn't catch it, and the issue is
> first raised by an accused infringer in litigation. Seems awfully easy for
> them to point the court at that language and point at Israel's 18-month
> publication rule. Good luck arguing "It doesn't actually count if the
> application isn't pending."
>
> -Jeff
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