Intellectual Property Law

Chapter 18 Discussion Answers

1. Sam filed a provisional patent application on May 1, 2016. What dates should be
docketed in connection with this application? Why?
The date May 1, 2017, should be docketed. If no nonprovisional
patent is filed by that date, then Sam will have no right to file a
patent. Provisional patent applications are abandoned 12 months
after their filing dates.

2. What is the purpose of an Information Disclosure Statement?
Patent applicants have a duty to disclose in writing any prior art that
bears on patentability. To comply with this duty, applicants file an
IDS listing and identifying material information. Moreover, the
information provided helps the USPTO examine and prosecute the
application.

3. Ben desires to obtain a patent for his invention at the earliest possible time
because he hopes to sell the invention within the next year. What might Ben do?
Ben should file for Track One prioritized examination (assuming he
qualifies to do so because he does not have too many claims). The fees
for doing so are high ($4,000/$2,000/$1,000, as of Nov. 1, 2105), but
the USPTO anticipates that these applications will be disposed of
within 12 months (and as of the time of the writing of this text, the
time was actually shorter—approximately six months).

4. Caroline’s application for her Invention B was refused by the patent examiner on
the basis that it is a trivial and obvious variation of Caroline’s prior patented
Invention A. What might Caroline do to obtain a patent for Invention B and yet
satisfy the USPTO?
Caroline can agree to enter a terminal disclaimer for her Invention B,
agreeing that the term of the patent for Invention B will not extend
beyond the term for Invention A. Caroline will thus obtain her patent,
and the USPTO will be assured that Caroline is not attempting to
extend the duration of her patent.

5. Will invented his invention called the Widget. He then discovered that his former
employee, Zach, has filed a patent application for the Widget. Is Will barred from
filing a patent application because Zach was the fist to file for the patent? Discuss.
Will should not be barred. Although Zack was the first to file the
application, he is not the first inventor to file. Will should bring a
derivation proceeding alleging that his former employee, Zach,
derived the claimed inform from him and filed an application for it
without Will’s authority. The petition for the derivation proceeding
must be made within one year after first publication of a claim that is
the same or substantially the same as a claim in the first-filed
application. It will de determined by the PTAB.

6. Marissa filed an application for a utility patent on July 1, 2014. The patent was
granted on February 1, 2015, and a reissue patent for the invention was granted
November 1, 2015. When does the patent expire? Discuss.
The patent will expire on July 1, 2034 (20 years from its filing date).
Reissue has no effect on the term of the patent. The term of the
reissued patent is for the remaining unexpired term of the original
patent.

7. Peter’s patent was issued on January 20, 2014. On May 20, 2014, Tom began
offering a product similar to Peter’s patented item (although it did not infringe
Peter’s patent). On January 10, 2016, a reissue patent was granted to Peter. The
reissue patent broadened claim 2 of Peter’s patent. Tom’s product now infringes
the reissue patent. May Tom continue to sell his product? Discuss.
Yes. Tom’s invention did not infringe the original patent but now
infringes the reissue patent with its broader claims. A court may
authorize Tom to continue offering his device without liability for
infringement. 35 U.S.C. § 252. Otherwise the effort Tom made and the
money he has expended in offering his item would be lost. Tom,
however, may only offer the current product, not any other device.

8. Bridget filed her utility patent application on July 1, 2012. Due to illness of the
patent examiner, the USPTO did not respond to some of Bridget’s arguments in a
timely fashion during prosecution, and the patent was not granted until July 1,
2016, and the patent will expire on July 1, 2032. Is there anything Bridget can do
to achieve a longer patent term?
Bridget should request reconsideration so she can obtain an
adjustment of her patent term. Patents should be granted within three
years of their filing date. Bridget has been prejudiced because she was
not able to enforce her patent until it issued on July 1, 2016; thus, she
lost several months/years of enforceability through no fault of her
own.

9. Phil wishes to challenge Michelle’s issued patent but does not want her to know
he is doing so. What type of patent challenge should Phil initiate?
Phil should initiate an ex parte reexamination. It can be done
anonymously; other challenges must identify the real party in interest.
(There is a disadvantage to this, however, because Phil’s role will be
quite limited.) Inter partes review and ex parte review cannot be
brought anonymously.