Intellectual Property Law

Chapter 18 Lecture Notes

Major points addressed in the chapter include the following:

1. Patentability requires novelty and nonobviousness. The only predictable method of
determining whether an invention is new and nonobvious is to conduct a search of the
prior art. The patentability search (called a novelty search) will help determine
whether the invention would be obvious to a person having ordinary skill in the art.

2. A patent search will also disclose whether bars to patent protection exist, such as
whether the invention has been known or used by others or described in a printed
publication. A search will disclose patents that have fallen into the public domain and
may also provide ideas for drafting the patent application.

3. There are different types of patent searches:

• A novelty search is somewhat limited in scope and is designed to disclose only
whether a rejection will be made on the basis of lack of novelty or obviousness.
• If the invention is intended for immediate use or sale, an additional search, called
an infringement search or investigation, is often conducted concurrently with the
novelty search. An infringement search, which reveals whether an invention
infringes another patent, is far more extensive than a novelty search but is
important inasmuch as persons have duties to avoid patent infringement; thus,
obtaining advice of competent counsel may protect a person from having to pay
punitive damages in a patent infringement action.
• Although the terms freedom to operate search and infringement search are often
used interchangeably, there are differences: A freedom to operate search is
usually conducted before an invention is brought to market and is intended to
ensure that the invention does not infringe any patents. An infringement search is
usually conducted after the inventor has been informed that he/she is violating
another’s patent and it focuses on examination of this specific and known patent.

4. Patent Searches. There are different approaches to patent searches and different
methods of searching:

• Searching can be done on the Internet through the free USPTO website, which
publishes every U.S. patent ever issued—searching may be done by using various
key words, by patent number, or by Boolean connectors
• The USPTO provides a public search room for free patent searching
• The USPTO provides search assistance for an hourly fee
• In major cities throughout the United States, public libraries (called Patent and
Trademark Resource Centers) have received copies of issued patents
• Searching can be done via various computer services, including Lexis and
Westlaw
• Professional search firms can conduct searches, the results of which are reviewed
by an attorney who will provide an opinion on the possibility of obtaining patent
protection for the invention and/or the likelihood that an invention infringes
another invention

There are also two significant ways in which searching can be conducted at the
USPTO: through key words or the classification method.
• Most key word searches rely on Boolean search techniques. Key word searching
matches words and phrases relating to the claimed invention to the words,
phrases, and terms in the patents themselves. Various fields may be searched,
including the inventor’s name, the patent’s title, the claims, and so forth.
• Classification searching (used by most commercial searchers and also used by the
USPTO patent examiners) reviews patents by their classes and subclasses. On
January 1, 2015, the USPTO transitioned from using its U.S. Patent Classification
system to the Cooperative Patent Classification (CPC) system, a joint project
between the USPTO and the European Patent Office. This new patent
classification system is meant to improve searching and to harmonize the two
systems. Thus, patents issued by the USPTO no longer include U.S. Patent
Classification numbers; they provide only the CPC number, and patent examiners
now classify and search for prior art for utility patent applications using only the
CPC.

No matter which searching technique is used, all searches are somewhat limited, and
there is no guaranteed way to predict whether an invention is novel, patentable,
nonobvious, or likely to infringe another’s patent. Moreover, because patents are
generally maintained in secrecy until 18 months after the application filing date, it is
not possible to obtain information about the inventions that are the subject of these
pending (and as yet unpublished) patent applications.

5. Once a search is conducted, the results must be analyzed and communicated to the
client, through the use of a patent opinion.

6. The process of preparing, filing, and shepherding a patent application through the
USPTO is called prosecution (just as it is for trademarks).

7. Patent applications can be filed by the inventor himself/herself or, as is more
common, by a patent attorney. The application will be filed at the USPTO and
reviewed by an examiner. The examiner’s objections to issuance are set forth in an
Office Action. If objections can be overcome, the application will be allowed and an
issue fee must be paid. During the first 18 months of prosecution, the application is
not subject to public review; however, after 18 months, the application is published
(unless the applicant certifies that the invention will not be the subject of a foreign
application). After issuance the entire application file (the file wrapper) becomes a
matter of public record. The process of obtaining a patent is expensive and is lengthy
(on average, more than two years).

8. Preparing a patent application is complex because it requires skillful drafting as well
as knowledge in the relevant field, which may be engineering, chemistry, computers,
etc. Thus, many patent attorneys possess both a law degree and an advanced degree in
engineering, physics, chemistry, etc.

9. To represent patent applicants before the USPTO, an attorney or patent agent must be
registered to practice with the USPTO and must pass a patent registration exam (often
called the patent bar exam), requiring demonstration of knowledge in science or
engineering.

10. Patent applications can also be prosecuted by patent agents who are not attorneys but
rather skilled engineers or scientists who take and pass a patent agent’s exam. While
patent agents can engage in patent prosecution they may not practice law (meaning
they cannot give legal advice or represent parties in court actions). Many paralegals
are patent agents.

11. A list of attorneys and agents registered to practice before the USPTO is available on
the USPTO website.

12. Until 2000, all patent applications were maintained in confidence. Since November
2000, however, most patent applications are published 18 months after their filing
date (although the applicant can avoid publication by requesting that the application
not be published and certifying that the invention has not been and will not be the
subject of an application filed in another country). After issuance of a patent,
however, the entire file wrapper is publicly available.

13. There are different types of patent applications:

• Provisional application. Since 1995, it has been possible to file a provisional
application. A provisional application is far less formal than a full utility
application and is intended as a relatively inexpensive and expeditious way of
embarking on patent protection. The application includes no claims. The
applicant must file for a standard patent application within 12 months of filing
the provisional application because provisional applications are abandoned by
operation of law 12 months after they are filed. Provisional applications are
often filed by an inventor who is in a race with a competitor and wishes to be the
first to file a patent application. The inventor can use the 12-month period to
assess marketability of the invention. A provisional application is not reviewed
by an examiner.

• Utility application. A utility application is filed for a new, useful, nonobvious
process, machine, article of manufacture, composition of matter, or some
improvement thereof.
• Design application. A design application protects new, original, and ornamental
designs for articles of manufacture.
• Plant application. A plant application protects new and distinctive asexually
reproduced plants.
• Continuing application. A continuing application claims priority from a
previously filed application. There are two types of continuing applications: the
continuation application (filed when an examiner grants only some claims in an
application and the inventor wishes to proceed on the permitted claims and
pursue the rejected claims in a separate application) and the continuation-in-part
application (which contains some matters in common with the original or parent
application but also adds some new matter, usually pertaining to an
improvement in the invention developed after the filing of the parent
application).
• Divisional application. If an application covers more than one invention, a
divisional application will be created to carve out a new application for the
additional invention.
• PCT application. The Patent Cooperation Treaty (PCT) allows an applicant to
file one application that may be relied upon for later filing in PCT member
countries (more than 145 nations). The PCT allows an inventor to file one
application that designates the various countries in which protection is desired
and delay prosecution in those countries.

14. A patent application has two required components: a specification and an oath. A
drawing is also required if it is needed to understand the invention. A filing fee must
be paid.

15. The specification is the part of the application that describes the invention and the
manner and process of making and using it. It must be so complete as to enable one
skilled in the art to make and use the invention. If the specification is not sufficient to
teach or enable another to make or use the invention, it will be rejected as
nonenabling.

16. The level of detail and specificity required of applicants is a tradeoff: In return for
obtaining a 20-year monopoly during which they can exclude others from making,
using, or selling the invention, inventors must fully disclose to the public what the
invention is and how it works.

17. The specification is composed of several elements:

• Title. A title of the invention must be provided
• Cross-references. Cross-references to any related applications must be given
• Background. This section identifies the field of invention and discusses how the
present invention differs from the known art
• Summary of invention. The summary gives a short and general statement of the
nature and substance of the invention
• Brief description of drawings. If drawings are included, they should be
described
• Description of the invention. This section must teach another skilled in the art
the manner and process of making and using the invention
• Claims. A specification must include at least one claim. Claims define the scope
of the invention and are compared against the prior art to determine whether the
invention is entitled to be patented. In a later infringement action, a court will
compare the claims set forth in the patent with the alleged infringer’s invention in
determining whether infringement has occurred. There are different types of
claims:

o Independent claims describe the invention in a general manner.
o Dependent claims are more narrowly stated and incorporate all elements
of previously stated independent claims. Design and plant patents have
only one claim.
o Functional claims define the invention by what it does rather than in terms
of its structure. These are often called means plus function claims.
o Product-by process claims define a product by its process of reparation or
manufacture and are often seen in chemical or pharmaceutical inventions.
o Jepson claims are used for improvements to existing inventions and
identify what is new to the invention.
o Markush claims are usually found in inventions relating to chemicals and
recite alternatives.

• Abstract. An abstract is a concise statement of the invention

18. If drawings are needed to understand the invention, they must be included. Drawings
are included with nearly all patent applications. The drawings must be described as
well. Working models of the invention are seldom required.

19. Each inventor must make an oath or declaration that the application was made or
authorized to be made by him/her, that he/she believes himself or herself to be the
original or an original joint inventor of a claimed invention in the application, and
that he/she acknowledges that any willful false statement made in the declaration is
punishable by fine or imprisonment. The oath or declaration must include the
inventor(s) legal name and must be personally signed by that inventor.
Effective September 16, 2012, under the AIA, an applicant may submit a “substitute
statement” in lieu of an oath or declaration if the inventor cannot be found, is
deceased, is legally incapacitated, or is under an obligation to assign the invention but
has refused to make the oath. Thus, an employer could file the patent application
without an oath from the individual inventor if the inventor is under an obligation to
assign the invention to the employer and is unwilling to make the oath.

20. Until September 16, 2012, the person claiming the patent must have been the actual
inventor; the applicant could not be an assignee of the inventor. Thus, all patent
applications before this date were signed by individual persons.
If an invention is made by two or more persons jointly, they must file the application
jointly. A joint application can be made even if the inventors do not physically work
together at the same time, do not make equal contributions, and do not each
contribute to each claim. The application can be assigned to another person,
company, or employer concurrently with execution of the application or thereafter.
All assignments should be recorded with the USPTO.

21. If anyone other than the actual inventor or patent owner is filing the application (such
as an attorney or patent agent), a power of attorney will be needed to authorize the
USPTO to communicate with the patent attorney or patent agent.

22. Applicants may also submit an Application Data Sheet, a sheet supplied by the
USPTO that contains bibliographic data, such as information about the applicant,
correspondence information, etc. This sheet allows the USPTO to input records more
accurately by scanning information into its electronic system.

23. The USPTO uses an electronic filing system (called EFS-Web) for securely
submitting utility patent applications to the USPTO. Nearly 100 percent of all patent
applications are filed electronically.
To further encourage electronic filing, the new AIA provides that effective November
16, 2011, the USPTO may charge an additional fee of $400/$200/$200 (for a regular
applicant, small entity applicant, and micro entity applicant, respectively) for each
regular utility patent application that is not filed electronically.

24. Since mid-2003, all patent applications have been electronically scanned and loaded
into the USPTO’s Image File Wrapper system, a paperless system allowing
significant access to USPTO records and documents.

25. The USPTO also offers its Patent Application Information Retrieval System (PAIR),
which allows applicants and their representatives to review the status of their pending
patent applications online. This is the “private” side of PAIR, and it requires
registration by the inventor or his/her representative. There is also a “public” side of
PAIR allowing members of the public to access issued patents and published
applications.

26. The prepared application must be filed with the USPTO. To encourage individual
inventors, small entities or businesses, universities, and not-for-profit organizations,
standard fees for these applicants are reduced by 50 percent (except fees in
connection with PCT applications). A small entity is an individual or a business with
fewer than 500 employees.
Effective March 2013 (and under the AIA), the USPTO further reduced fees for
micro entities, which are institutions of higher education, those who have not filed
more than four previous patent applications, and those whose income does not exceed
more than three times the median income in the United States. These micro entities
are entitled to fee reductions of 75 percent.
Many patent applicants maintain a deposit account with the USPTO, against which
filing and other fees are drawn.

27. Patent applicants are subject to a duty of candor and good faith in their dealings with
the USPTO and therefore must disclose to the USPTO any information that bears on
the patentability of a claimed invention. The applicant must therefore disclose prior
art references that bear on the novelty or nonobviousness of the invention, printed
publications that describe the invention, any possible use or sale of the invention,
related applications or patents, or any other matter bearing on patentability. The
USPTO does not have the resources to research fully all patent applications and thus
relies on applicants for full disclosure. Breach of the duty to disclose may result in
refusal to issue a patent, invalidity of the patent, or possible sanctions against the
patent attorney.

28. To comply with the duty to disclose, applicants file an Information Disclosure
Statement with the USPTO that lists and identifies material information relating to
patentability of the invention. The IDS can be filed with the application or within
three months of filing. Filing the IDS later will result in additional fees.

29. Once the application is filed, it will be assigned to an examiner who is trained in the
field in which the invention relates. The examiner reviews the application (relying
heavily on MPEP), conducts a search of the prior art, and determines if the invention
is patentable. If defects are found, the examiner will issue an Office Action. If no bars
are found, a notice of allowance will be issued for the application. Under a new
program called e-Office Action, Office Actions may be accessed electronically.

30. Few applications are allowed as filed; it is far more likely that at least one Office
Action will be issued, which the applicant must respond to within six months
(although the time for most responses is shortened). If a timely response is not made
to an Office Action, the application will be deemed abandoned (unless the delay is
shown to have been unintentional).

31. Although an applicant may make amendments to an application, no new matter is
allowed. Thus, claims may be added as long as they are supported by the original
specifications in the applications. The process of Office Action by examiner and
response by the applicant will continue until the application is allowed or the
examiner enters a final action rejecting one or more of the claims. An applicant may
appeal a final action to the Patent Trial and Appeal Board at the USPTO. A further
appeal may be filed with the U.S. District Court for the Eastern District of Virginia or
with the Court of Appeals for the Federal Circuit (CAFC). Decisions by CAFC may
be appealed to the U.S. Supreme Court, if it grants certiorari and takes the case.

32. Although applications are usually examined in the order in which they are filed, an
applicant may accelerate the examination process by filing a petition to make special
(on the basis of the age or health of the applicant).

33. A program implemented by the USPTO in 2006 allows applications to file petitions
for accelerated examination. Applicants are given a final decision by the examiner
within 12 months on whether their application will be granted or denied, if they
submit relevant prior art, explain what the prior art teaches, limit their claims (to three
independent claims and no more than 20 claims total), accept shortened time periods
for responding to most USPTO communications, and file electronically.
Applications may be accorded accelerated examination status based on the applicant’s
health status or age.
In 2011, the USPTO implemented its “Track One” accelerated examination program.
Track One allows patent applicants to request prioritized examination upon payment
of a significant fee of $4,000/$2,000/$1,000 (in addition to standard filing fees) with
the goal of providing a final disposition of a patent application within 12 months.
This prioritized examination program does not require applicants to submit
preexamination searches of prior art. Requests for prioritized examination are limited
to 10,000 each year.

34. If an inventor claims two or more independent and distinct inventions in one
application, the examiner will issue a restriction requirement, requiring the applicant
to restrict or limit the application to one invention. If the applicant agrees, the second
invention is usually protected or covered by the creation of a divisional application
(which retains the filing date of its parent application).

35. If an examiner refuses some claims in an application and accepts others, the applicant
may wish to divide the application and allow the approved claims to proceed to
issuance while continuing to do battle with the examiner on the rejected claims. The
continuing application containing the rejected claims (which includes no new
material) requires a separate filing fee. It retains the same filing date as its parent
application. Applicants often prefer to move forward with permitted claims inasmuch
as patent protection runs for 20 years from the date the application is filed (thus, the
inventor is motivated to ensure the patent issues as soon as possible).

36. If the applicant wishes to proceed on allowed claims and pursue rejected and
additional matter that differs from that in the parent application, the applicant will file
a continuation-in-part (CIP) application, which includes additional information (often
new improvements recently discovered) not in the original application. The new
application will have a new filing date for the newly added material.

37. As an alternative to filing a continuation application, the American Inventors
Protection Act of 1999 allows applicants to request continued examination of an
application for a fee without requiring the applicant to file a continuing application.
The process is called a Request for Continued Examination (RCE).

38. An applicant may not obtain two patents for the same invention. The prohibition
against double patenting is to ensure inventors do not apply piecemeal for patents in
an effort to extend the term of patent protection. A rejection based on double
patenting may arise because of an applicant’s related application or already issued
patent for the same subject matter or subject matter that is an obvious variation of that
in another application or patent. If the subject matter is identical, the applicant must
cancel one set of claims. If the subject matter is not identical but is an obvious
variation of that in another application or patent, the applicant usually enters a
terminal disclaimer, agreeing that the term of the second patent will not extend
beyond the term of the first.

39. During prosecution, a member of the public may file a written protest against a
pending application to provide the USPTO with information that shows the granting
of a patent would be improper. The timing for protests is fairly restricted. If the
examiner decides to allow the patent, the protestor has no avenue of appeal.

40. Interferences (until March 16, 2013). If an examiner were to discover that another
party’s pending application or issued patent conflicted with an inventor’s application
(in that they are substantially the same), the USPTO would declare an interference
and a determination would be made as to priority of invention by the Board of Patent
Appeals and Interferences. Interferences have now been replaced by derivation
proceedings.

41. Derivation proceedings (effective March 16, 2013). Once the United States moved
from a first-to-invent to a first-to-file system effective March 16, 2013, there was no
longer any need to have interference proceedings to determine which of two inventors
had priority because the filing date of the application now controls. Nevertheless, a
new administrative proceeding, a derivation proceeding, was created under the AIA
to ensure that the first person to file the application is actually the true inventor. Thus,
the “true inventor” may file a petition to initiate a derivation proceeding alleging that
an inventor named in an earlier application derived the claimed invention from the
“true inventor” and without authorization, filed the earlier application.

42. Effective September 16, 2012, third parties now have a meaningful opportunity to
submit any printed publication of potential relevance to a pending patent application.
They must include a concise statement of the relevance of the information.
Submissions must be made within a specific time period.

43. If the examiner allows the application, a notice of allowance will be issued and the
applicant will have three months to pay an issue fee to the USPTO for the patent to be
granted. A notice of publication usually accompanies the notice of allowance and
there may be a fee for publication as well. Once the appropriate fees are paid, the
patent will be granted and the patentee may enforce rights to exclude others from
making, selling, or using the invention. Moreover, once a patent is issued, there is a
statutory presumption of its validity. On the date of grant, the entire patent file is
opened to the public.

44. Portions of the issued patent will be published in the Official Gazette, solely to
provide information (and not for purposes of challenge). The patent portion of the OG
is exclusively electronic and is available for viewing on the USPTO’s website.

45. During the time an application for a patent is pending, an inventor may mark the
invention with the term patent pending or patent applied for. These notices have no
legal effect although they do provide notice that a patent application has been filed
with the USPTO. Implying that an application for a patent has been made when it has
not is a violation of statute and is punishable by fine.

46. Once a patent has issued, its owner may give notice that an article or invention is
patented by using the word patent or the abbreviation pat. together with the number
of the patent. Use of the notice is not mandatory; however, no damages may be
recovered by the patentee in any infringement suit unless it is proved the infringer
was notified of the infringement and continued to infringe thereafter. Marking
constitutes such notice. Under the AIA, patentees may now use “virtual marking” by
marking their products with patent or pat. and including a reference to an Internet site
that associates or links the product with the patent number.
False marking is prohibited and is punishable by fine if there is an intent to deceive
the public. To reduce false marking suits, the AIA provides that only the U.S.
government (not an unrelated third party) may recover the statutory damages/fine if a

patented product is falsely marked. Third parties may initiate civil suits alleging false
marking but they must show a “competitive injury” caused to them by the false
marking.

47. There are several separate ways to correct, amend, or challenge an issued patent: a
certificate of correction, a reissue patent, a disclaimer, an ex parte reexamination, and
effective September 16, 2012, an inter partes review, a post-grant review, a request
for review of a covered business method, or supplemental examination.

48. If a minor error exists in the patent, the owner can ask the USPTO to issue a
certificate of correction.

49. Significant errors in the patent (such as defects in the specifications or drawings) that
cause the patent to be partially or wholly invalid are corrected by a reissue patent. A
reissue patent can also be sought for the purpose of enlarging claims, if originally the
claims could have been stated more broadly. Cases in which the patentee seeks to
broaden claims in a reissue application must be filed within two years of the grant of
the original patent. While claims can be enlarged because the patentee originally
claimed less than he/she had a right to claim, no new matter may be allowed. A
reissue application is examined using the same standards as any other application.
The term of a reissue patent is the same as that of the original patent inasmuch as it is
granted to replace the original patent.

50. A reissued patent does not affect the rights of a party who began offering a device
that did not infringe the original patent but that now infringes the reissue patent with
its broader claims. The intervening party may, however, only continue to make or sell
the same specific thing; no additional devices may be offered.

51. Disclaimers. A patent owner who discovers that a claim in a patent is invalid may
cancel the claim by filing a disclaimer. A patent owner is not required to cancel an
invalid claim, but cannot recover costs in an infringement suit alleging infringement
of the valid claims unless the invalid claim is cancelled prior to filing suit.

52. Ex parte reexamination. Any person, including either the patent owner or an
accused infringer, may file a request for ex parte reexamination of any claim in an
issued patent based upon the prior art. The request may be made at any time during
the term of the patent and it may be made anonymously. The USPTO will determine
whether a substantial new question of patentability affecting any claim of the patent
has been raised. If so, reexamination of the patent will be ordered so the question may
be resolved. The reexamination procedure is identical to the procedure for initial
examination of a patent application. If a reexamined claim is determined to be
unpatentable, it will be cancelled. If a reexamined claim is confirmed as patentable, a
certificate of confirmation will be issued by the USPTO.

53. AIA challenges. The AIA provides for three new challenges to issued patents: postgrant
review, inter partes review, and covered business method review. All three
challenges are trial proceedings conducted before three-member panels of the Patent
Trial and Appeal Board (PTAB). The proceedings begin with the filing of a petition
to institute a trial at the PTAB to challenge patent validity and must be brought by the
real party in interest; they cannot be brought anonymously.

54. Post-grant review. Effective September 16, 2012, the AIA has added an entirely new
procedure to challenge an issued patent, the post-grant review, by which a party who
is not the patent owner may file a petition to invalidate a patent on any basis. The
petition for a post-grant review must be filed within nine months after the patent is
granted and must identify the parties bringing it.

55. Inter partes review. Effective September 16, 2012, inter partes reexamination was
replaced by inter partes review. A petition for inter partes review can be filed by a
person who is not the patent owner after the later of either nine months after the
issuance of a patent or the termination of a post-grant review (discussed previously
and below). The petition must identify all parties in interest; it cannot be anonymous.
Review may be granted only if the Director believes that the petitioner has a
reasonable likelihood of prevailing with respect to proving at least one of the
challenged claims is invalid on the basis of lack of novelty or obviousness.

56. Covered business method review. Another new form of post-grant review allows a
company accused of infringing a “covered business method patent” to challenge the
validity of that patent. A covered business method patent is one that claims a method,
apparatus, or operation related to the administration of a financial product or service.

57. Supplemental examination. A patent owner may request a supplemental
examination of his/her own patent for the purpose of fending off a later allegation by
a defendant who might assert in an infringement lawsuit that the patent is invalid due
to the patentee’s inequitable conduct during the patent prosecution process. A
supplemental examination is not conducted at the PTAB but within the USPTO itself.
A supplemental examination allows a patent owner to “cleanse” his/her patent.

58. For years, the term of a utility patent was 17 years from the date of issuance. To
harmonize U.S. law with that of many foreign countries, effective June 8, 1995, the
term of utility and plant patents changed from 17 years from issuance to 20 years
from the date of filing of the application, thus encouraging expeditious prosecution.
The term for design patents is 15 years from the date of issuance (if the application
for the design patent was filed after May 13, 2015).

59. After the term of a patent expires, anyone is free to make, use, or sell the invention.

60. There are a few exceptions to the 20-year term. For applications subject to delays
caused by the USPTO, the term is adjusted or extended for the period of delay. Drug
patents that require review by regulatory agencies (such as the FDA) can be extended.
Note that patent term adjustments are given to compensate patent owners for certain

delays by the USPTO, while patent term extensions are granted to compensate patent
owners of new drugs and medical devices for the time lost to them while they were
awaiting regulatory review of the products by government agencies, such as the FDA.

61. To maintain a utility patent in force, certain fees must be paid to the USPTO at three
times during the life of the patent. Maintenance fees are due at the 3½, 7½, and 11½
year anniversaries of the date of issuance (or within a grace period of six months). If
not paid timely, the patent expires, although patents may be reinstated at any time if
the delay is shown to be unintentional. No maintenance fees are due for design or
plant patents.