Patent litigation expert says we mustn’t underestimate “first Office actions”
Upon reexamining an iPhone patent this week, the U.S. Patent and Trademark Office has issued a preliminary notice ruling that “the Steve Jobs patent,” as it is also referred to, is invalid in its entirety.In what will undoubtedly affect Apple’s legal brawls with Samsung and perhaps other handset makers, the preliminary invalidation of Patent 7,479,949, (granted in January 2009) is a major turn of events.
It incorporates several other patent applications from as early as September 2006 with Steve Jobs being listed as the primary inventor.
FOSS Patents takes a closer look at the USPTO’s decision and concludes that “first Office actions are partial because they are based only on submissions made by those challenging the patent, and many examiners like to take a tough position early on in order to enable and require the patentee to present the strongest arguments in favor of validity.”
Florian Mueller, an expert in legal matters involving patents, says it would be a mistake to underestimate the importance of a first Office action.
He also points out that “a complete rejection of all claims of a given patent is potentially more devastating than one affecting only some claims.”