Executive Summary: This article argues that a patent owner facing a third-party-requested ex parte reexamination alongside infringement litigation should ordinarily waive the optional post-order statement authorized by 35 U.S.C. § 304. Filing before the first Office action requires the owner to address potential theories before the examiner has identified an actual rejection, gives the requester a statutory opportunity to refine its challenge, and creates additional prosecuti

Executive Summary: Patent claims frequently state not only what an invention is or does, but what it is intended to accomplish: reducing latency, improving stability, treating disease, preventing movement, or achieving a specified performance level. Whether that language receives “patentable weight” cannot be answered by a rule about words such as “whereby,” “wherein,” “for,” or “configured to.” The sound analysis has three gates, the second of which is conditional. Gate One

Executive Summary: Patent-prosecution files are neither categorically privileged nor automatically subject to production; each document requires a forum-specific analysis of its purpose, participants, confidentiality, and relationship to anticipated litigation. Attorney-client privilege protects qualifying confidential communications made to obtain or provide legal advice, while work-product protection generally requires a concrete litigation nexus that routine ex parte prose

Executive Summary: This article compares how prosecution history can limit patent claim scope in the United States, the EPO, Korea, Japan, and China. In the United States, prosecution history operates through several related doctrines: ordinary claim construction, prosecution disclaimer, amendment-based prosecution history estoppel under Festo, and argument-based estoppel where applicant remarks clearly surrender subject matter. The EPO stands apart because EPC proceedings ge

Executive Summary: A deliberate prefiling prior-art search can serve as a specification-design tool, not merely a patentability screen. By identifying “framing references,” accurately describing their architectures and limitations, and tying each distinction to a claimed technical mechanism, an applicant can create an intrinsic record that supports patent eligibility under 35 U.S.C. § 101 and informs later claim construction. That record may allow the patent owner to demonst