Frequently Asked Questions About Patents

Our attorneys advise clients regarding the protection provided by patents. Below, we answer some frequently asked questions about patents. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about patent law should be directed to an attorney in our Patent Practice Group.

What is a patent?
What is the process of obtaining a patent?
What does a patent look like?
Why are patents important?
What are some of the differences between patents and other types of intellectual property?
What are the different types of patents?
What is patentable?
What goes into a patent application?
Can my application be accelerated?Adobe PDF logo
What is the significance of a patent being published?
What post-issuance procedures are important?
Who owns the patent?

Adobe PDF logoIndicates the publication is a pdf file. Pdf files can be viewed with Adobe Acrobat Reader.

What is a patent?

A patent can be a very valuable asset for a business selling a novel product or using a novel process. A patent is a right, granted by the government, to exclude others from making, using or selling within the government’s jurisdiction the invention as claimed.

Patents are intended to promote innovation and the exchange of ideas. The granting of a patent is traditionally considered an exchange between the applicant and the government: the applicant permits the invention to be disclosed to the public (and pays a variety of fees) and in return the government grants the applicant a monopoly to practice the invention as claimed in the patent document. But of course it’s not that simple, as the invention and the patent application must meet all of the government’s requirements.

Having the right to exclude others from making and using or selling your invention can be a very powerful tool for the success of your business. At Sunstein, our goal is to allow the client to maximize the leverage afforded by patents and other intellectual property.

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What is the process of obtaining a patent?

The process of obtaining a patent is typically referred to as patent prosecution.

In the United States Patent and Trademark Office, examiners with technical backgrounds do the substantive review of the applications, including searching for relevant prior art. Unlike trademark practice, only registered patent attorneys or agents, or the inventors themselves, can normally file and prosecute patent applications in the Patent and Trademark Office. Members of Sunstein’s patent practice group include registered patent attorneys and agents. Our patent practice group has experience prosecuting applications in a wide variety of technical areas, including electronics, computer networking, software, biotechnology, medical devices, semiconductors, x-ray technology, motors and other mechanical devices.

After an application has been filed, it usually takes the U.S. Patent and Trademark Office between approximately one and two years to consider the application. In some instances, however, accelerated examination may be requested.

Sometimes, if more than one “invention” is being claimed in a single application, the U.S. Patent and Trademark Office will require that one invention be elected and the others pursued, if at all, in divisional applications. After this restriction requirement, the application is examined substantively.

Although the examiner’s review sometimes results in an immediate notice of allowance, in the vast majority of cases the examiner’s review results in an initial rejection. The rejection is typically based on the lack of novelty in the invention (35 U.S.C. sec. 102), the obviousness of the invention (sec. 103), the failure to provide clear enough claims (sec. 112, 2nd para.), the failure to provide an enabling disclosure (sec. 112, 1st para.), or the subject matter not being subject to patent protection, e.g., the claimed invention is merely a mathematical algorithm (sec. 101).

These rejections can be overcome in most applications. Therefore, an inventor should not despair too much when the application is initially rejected. One responds to a rejection by amending the application (including usually the claims) and/or by arguing that the examiner’s rejection is ill-founded. This response may result in a notice of allowance or another rejection. There may be several iterations of this process, and one may appeal from a final rejection by the examiner. It is important that a patent attorney handle the prosecution of a patent application, as well as its drafting, since it is all too easy to lose valuable patent coverage by amending the claims, or even by arguing that the rejection is ill-founded.

Most industrialized foreign countries publish patents applications at eighteen months after the priority date. As of November 29, 2000, the United States also began to publish applications at the eighteen month date, but there are exceptions available where foreign filing has not occurred. International applications filed pursuant to the Patent Cooperation Treaty are also published at eighteen months after the priority date. Thus, pursuing foreign coverage can result in the application being published before a patent is issued in the United States. In situations where the invention is not yet being commercialized, it may be possible to delay the filing of foreign or international applications, at the cost of losing an earlier priority date, and thereby delay the publication of the patent application.

It is important that all relevant prior art that is known to the inventors and others involved in the prosecution of the patent be disclosed to the U.S. Patent and Trademark Office during the prosecution. 37 C.F.R. sec. 1.56(a) states:

“A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section…”

Where there has been an intentional failure to disclose all known material prior art during the prosecution of an application, a patent that issues from that application could be declared unenforceable in later patent litigation.

After an application is allowed by the U.S. Patent and Trademark Office, the patent is issued upon payment of the issue fee. The prosecution history (called the “file wrapper”), including the rejections and the responses, is made available to the public at the same time. Three maintenance fees are required during the life of a utility patent, which for applications filed after June 7, 1995 is twenty years from the earliest effective filing date. Failure to pay a maintenance fee results in the expiration of the patent. Like the application filing fee, the maintenance and issue fees for large entities (generally for-profit entities having more than 500 employees) are twice that for small entities (basically everyone else who has not assigned or licensed the invention to a large entity). These fees also usually increase annually.

Because of the detailed examination of the application by the technically trained examiners in the U.S. Patent and Trademark Office, a patent, once issued, is presumed to be valid pursuant to 35 U.S.C. sec. 282. This presumption is usually of enormous benefit to patent owners in patent litigation.

Please contact a member of Sunstein’s Patent Practice Group if you wish to discuss any of these issues further.

What does a patent look like?

A patent is a document that describes the invention protected by the patent and sets forth in the claims the scope of the invention. To view a typical patent, PDFclick here (PDF: 183KB). This patent was prosecuted by Sunstein. It, and other patents, can be found on the website of the United States Patent and Trademark Office.

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Why are patents important?

If someone else has or obtains a patent that covers your product or process, you (i) may be enjoined from making, using and selling the product or process; and (ii) may be subject to significant monetary damages—even if you did no copying and even if you did not know about the patent. In certain cases, the damages may be doubled or trebled and attorney fees granted.

One of the services provided by Sunstein is to conduct searches of issued patents to determine the degree of risk our clients undertake in introducing new products or in continuing to sell a product accused of infringement. Often, we will suggest design modifications for a product to minimize the risk of a successful patent infringement suit against our clients. Sunstein prepares clearance opinions to address such issues, and we pay particular attention to how such opinions may be used by a defendant in patent litigation to advance its case, as well as to reduce the likelihood of multiple damages and the award of attorney fees.

If you can obtain a patent, you may be able to (i) prevent others from practicing the invention (including even those who independently develop their own product, as well as copycats); (ii) obtain license fees from others who wish to practice the invention; and (iii) use it as a marketing tool. At Sunstein, we view the obtaining of a patent not as an end, but as a means to achieving our clients’ goals, whether it is giving our clients a business advantage over competitors or producing an additional income stream for our clients.

Filing for a patent early (and keeping good records of the invention’s development) puts you in a better position vis-à-vis other inventors. Thus, it is almost always preferable for the patent attorneys to consult with the inventors early on in the development process, rather than waiting for the development of the product to be completed.

The fact that a person obtains a patent for an invention does NOT necessarily mean that the invention can be practiced without infringing someone else’s patent. The Patent and Trademark Office determines whether an invention is new enough to be entitled to a patent, but not whether a device, such as that described in a patent application, infringes anyone else’s patent. A typical example is when someone obtains a patent for an improvement on someone else’s patent: Until the earlier patent expires, a license may be required to practice the later invention. The earlier patent is therefore called a blocking patent. Like any other patent, a blocking patent may be invalidated if sufficient proof of unpatentability is shown during litigation. In some cases, however, the fact that a person obtains a patent for an invention is evidence that the product incorporating that later invention does not infringe an earlier patent cited during the prosecution of the later patent in the U.S. Patent and Trademark Office.

Having a patent portfolio may permit you to enter into cross-licensing arrangements with other companies that have patents on valuable related technology.

Building a patent portfolio can also increase the value of your company in the eyes of potential investors or buyers. A patent is an important piece of property, and may enable a company to obtain capital when it would otherwise be insolvent. Investors, of course, would like to invest in a company that has a product that is in demand, but has no competition. Investors also do not want to invest in a company that has made or will make significant expenditures in research, only to have the product “knocked off” by a low-cost producer that was able to avoid the research costs simply by copying.

On the other hand, if you are a potential investor or licensee, the value of a patent must not be overestimated. Simply because a company has a patent does not mean that the company is valuable—the patent may be narrow (thereby allowing plenty of competition), there may be no demand for the product covered by the patent, or the company’s product might be of poor quality. Patents by themselves do not necessarily result in royalty streams. The invention or the products incorporating the invention still have to be marketed—to customers, licensees or assignees—in order to make money. Frequently, for individual inventors, obtaining the patent is the easy part; it’s the money-making part that’s difficult. Also, a patent is NOT a seal of approval from the U.S. government. If one looks through the weekly Official Gazette published by the U.S. Patent and Trademark Office, one will find plenty of inventions that are not practical and that will not make any money.

These issues should be addressed whenever one is considering a technology transfer. At Sunstein, we feel it is critical to discuss fully such practical aspects of an invention with our clients and to appreciate the business and technical context of an invention, in order to advise our clients on a technology transfer issue.

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What are some of the differences between patents and other types of intellectual property?

The different types of intellectual property—patents, copyrightstrade secrets and trademarks—have different purposes, different strengths and different weaknesses. In many cases, a proper strategy for protecting a new product line will involve several different types of intellectual property. Sunstein is well suited to consider and implement such a strategy, since our attorneys are familiar with all these areas.

A patent is generally considered to be the strongest way to protect an invention—assuming that a patent with broad coverage can be obtained for the invention. A patent is frequently the only way to protect an invention adequately. In many cases, trade secret protection is impossible or impractical, because of the nature of the invention (e.g., the invention is mass marketed and can be reverse engineered), or because of other circumstances (e.g., the engineers move freely among competitors in the industry). A copyright is not supposed to protect an idea, only the expression of the idea. Trademark and trade dress protection is meant to prevent consumers from being misled about the origin of a product and is not intended to prevent competition in the underlying product.

Patents have other advantages over other types of intellectual property protection. In particular, in order to prove infringement of a patent, one does not have to show that the accused party copied the invention from the patent owner, nor does one have to show that the accused party breached an agreement with the patent owner. Indeed, the infringer may be liable even if the infringer was unaware of the patent or of the patent owner.

In other words, someone who has independently developed their own product can innocently infringe a patent and still be liable. Unlike in patent litigation, to prove copyright infringement in copyright litigation, one has to show—by one means or another—copying of the copyrighted work. To prove misappropriation of a trade secret, one must show that the trade secret was improperly appropriated.

Issued patents are entitled to a statutory presumption of validity pursuant to 35 U.S.C. sec. 282. In addition, since the institution in the early 1980’s of the Federal Circuit Court of Appeals, which hears the appeals of all patent infringement cases, patents have become much more valuable. Whereas about two-thirds of patents in litigation had been invalidated, now about two-thirds are upheld.

There are some disadvantages to patents over other types of protection. Patents have a short, limited life compared to copyrights, trade secrets and trademarks. Utility patent applications filed on or after June 8, 1995 have a term of twenty years from the earliest effective filing date. Design patents have a term of fourteen years from the patent’s date of issuance. By contrast, trade secret protection and trademarks can last indefinitely if properly handled.

A patent can be enforced only after it has been issued by the U.S. Patent and Trademark Office. Patent prosecution takes significantly longer than the copyright registration process—typically measured in years (although, if examination is accelerated or if the application is for a design patent, the examination can take less than a year). Trade secrets do not require any government approval.

To some extent, the American Inventors Protection Act of 1999 has remedied this disadvantage of patents being unenforceable until they issue. Patent applications filed on or after November 29, 2000 will ordinarily be published eighteen months from their earliest priority date. Earlier publication may be requested. A patent applicant can give notice of the patent publication to competitors believed to be infringing. If the patent application issues as a patent, with claims intact from the published application, the patentee may be entitled to collect a royalty from the infringer for the time following the notice even though a patent had not yet been issued; this is called “provisional protection.” Where competitors are using or may start using the technology of the patent, acceleration of the patent examination process may be desirable to stop competitors from using the claimed technology as quickly as possible.

Obtaining a patent requires providing a very complete disclosure to the public, especially in the United States. Such a disclosure may be useful to the competition, who may not otherwise know how to practice the invention. This is a downside to seeking provisional protection through publication of a patent application. Trade secrets, on the other hand, are kept secret from competitors.

Another disadvantage is that patents are usually more expensive to obtain than copyrights, trademarks and trade secrets. As just noted, patent applications require a fairly thorough written disclosure. There are usually one or more office actions—communications from the patent examiner at the U.S. Patent and Trademark Office objecting to or rejecting the claimed subject matter—that require careful responses. Further, although smaller than the attorney fees involved, the various official patent fees are greater than the official fees for copyrights and trademarks. The costs of obtaining and maintaining a foreign patent are generally much greater than in the United States. Foreign patent counsel must be retained, translations prepared, etc. Although the cost of obtaining a patent may seem high when compared to the cost of registering a trademark or a copyright, the cost of obtaining a patent will frequently seem minuscule when compared to the value of an invention to a company.

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What are the different types of patents?

There are three types of patents that an inventor can obtain in the United States: a utility patent, a design patent and a plant patent. The type of patent with which most people are familiar is a utility patent, which is a patent for a new and useful invention. The subject matter for each of the three types of patents is discussed further below.

Utility Patents

In order to obtain a utility patent, the invention must be for a “new and useful process, machine, manufacture, or composition of matter . . . .” This requirement is fairly straightforward and is usually not a problem, except in certain areas.

A series of very vague, indefinite and often misleading maxims have arisen over time to address what may and may not be patented. For example, “mathematical algorithms,” “mental steps,” “laws of nature,” “products of nature,” “methods of doing business,” and “printed matter” have, in the past, been held to be not patentable. Patents are regularly issued that defy these maxims. For instance, purified products of nature are generally patentable, assuming that the other requirements of patentability are satisfied. In addition, computers and the Internet have now transformed methods of doing business and mathematical algorithms into protectable machines and processes.

Decisions by the Federal Circuit Court of Appeals favorable to patent applicants have caused the U.S. Patent and Trademark Office to rewrite and loosen its guidelines for examining patent applications for software inventions.

Medical procedures are patentable in the United States; however, the patentee’s ability to sue all infringers of a patent directed to a medical procedure has been curtailed by recent legislation. This legislation makes it even more important to consider likely defendants when drafting a patent claim. For instance, it is usually easier to sue the manufacturer of an infringing product than the consumers, so the patent should be drafted to cover the product as it leaves the factory—as opposed to how it may be used by the consumer—so as to avoid having to show the additional elements of contributory infringement. Many foreign countries limit the patentability of medical procedures.

 

Design Patents

Design patents have different subject matter requirements from utility patents, as set forth in 35 U.S.C. sec. 171, which reads as follows: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”

One difference between utility patents and design patents is the length of their terms. Utility patents generally have a term of twenty years from the earliest effective filing date—or seventeen years from issuance, depending on when they were filed. Design patents have a term of fourteen years from issuance.

The aspects of the design claimed in a design patent must be ornamental, as opposed to functional. This can sometimes be a very fine distinction. Design patents can be very useful (especially as a surrogate for or in conjunction with trade dress and other trademark protection), but are not considered to be as valuable as utility patents, since they are not supposed to protect the underlying concept that makes a product function the way that it does, and since it is usually very easy to design around an ornamental design. Design patents, on the other hand, are generally easier and less expensive to obtain than utility patents.

Plant Patents

It is possible to get a patent on living plants, including hybrids, mutants, and newly found seedlings, provided that the plants are asexually reproduced and are of a distinct and new variety. Plants can also be protected by utility patents in certain circumstances. The requirements for obtaining plant patents are set forth in 35 U.S.C. sec. 161.

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What is patentable?

Pursuant to Article 1, section 8, clause 8 of the U.S. Constitution, the U.S. Congress has the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Congress has exercised this power by creating statutory schemes for copyrights and patents. The rules for what is and is not patentable, as promulgated by Congress, are set forth below. Congress has also set up the United States Patent and Trademark Office (the USPTO), whose primary responsibility is to review patent applications and issue a patent if the application meets the statutory requirements.

The issues that typically arise in judging patentability are:

It is important to note that this summary is general in nature, and cannot possibly address all technologies and all scenarios. We urge anyone with an idea or product that may be novel and valuable to consult with a member of our patent practice group to determine whether it can be protected with patents, or alternatively whether it may be protected as a trade secretcopyright, or trademark. It has been the experience of Sunstein that if a patent attorney is consulted early in the development of a product incorporating a novel, valuable idea, the product can usually be protected by a patent.

Usefulness of Invention

In order to obtain a utility patent, an invention must be “useful,” which is generally a very easy requirement to satisfy. This requirement has, however, been an issue for certain chemical and biochemical compositions. Usually, by thoughtfully drafting the patent application with a view towards this issue, an objection based on lack of usefulness may be avoided.

An invention that does not work is considered not useful. The U.S. Patent and Trademark Office, however, rarely makes a specific study to determine whether an invention will work, but if the invention’s non-operativeness seems clear to the examiner, it will probably become an issue. Sometimes poor communication between the inventor and the patent attorney, or the patent attorney’s inability to understand how the invention works, will result in the application containing a poor description of the invention, thereby resulting in a rejection by the examiner that the invention is inoperative. At Sunstein, we pride ourselves in our determination to understand fully all facets of an invention and in our ability to master many diverse areas of technology. Our patent practice group has had experience preparing and prosecuting patent applications in a wide range of technical fields.

Novelty of Invention

To be patentable, an invention must be novel over the “prior art.” What constitutes prior art is set forth in 35 U.S.C. sec. 102, which, effective for applications filed with any new subject matter on or after March 16, 2013, substantially narrows the one-year grace period and expands the prior art effect of foreign patent filings. Patents issuing in and patent applications publishing in the U.S will be treated as prior art as of their earliest effective filing date, including the dates of foreign patent filings from which the U.S. patents or applications claim priority.

Novelty is most frequently addressed in the context of

  1. Statutory bars (where the invention was made available to the public prior to the date the patent application was filed)
  2. Secret prior art (where someone else created the invention before the patent applicant did, but the patent applicant did not know about it), and
  3. Interference proceedings (an adversarial proceeding where two inventors argue over who created the invention first).

Statutory Bars

Deadline for Filing Patent Applications

Generally speaking, an inventor seeking to preserve patent rights worldwide should not publicly disclose his or her invention prior to filing a patent application.  Prior to the AIA, the United States had a straightforward one-year grace period after a “statutory bar” event—namely, (i) public use in the U.S, (ii) on sale in the U.S., (iii) publication anywhere in the world, or (iv) patenting anywhere in the world—regardless of whether the statutory bar event was caused by the inventor or by a third party. (These four events were set forth in in the patent statute, thereby giving rise to the phrase “statutory bar” event.)

Now, however, with the AIA, the United States (1) considers public use and on sale anywhere in the world to be statutory bar events, (2) adds “otherwise available to the public” to the foregoing four statutory bar events and (3) eliminates the one-year grace period with the following exception.  35 U.S.C. sec. 102.  (The elimination of the one-year grace period means, in effect, that one must file a patent application before a statutory bar event, unless the exception applies.)

The exception is that there is a one-year grace period for (a) disclosures by the inventor and others associated with the inventor as defined in the statute and (b) disclosures by third parties as long as the third–party disclosure occurs after a disclosure by the inventor and others associated with the inventor as defined in the statute.  (Yes, this exception is confusing — which is a reason why one should avoid relying on the exception and should instead file an application before any possible statutory bar event.)

These statutory bar problems make it all the more important to contact a patent attorney early in the development process, before a statutory bar is unwittingly created. Of course, other countries have their own rules for what constitutes a statutory bar and do not generally provide any grace period.

Even though a statutory bar has already happened (or grace period has already passed by), it may still be possible to obtain a patent on any improvement over the divulged invention, as long as that improvement was not divulged before the statutory bar (or was not divulged more than one year prior to filing if the exception applies).

Public Use of Invention Prior to Application

For patent applications filed prior to March 16, 2013 or patents issued on those applications, public use of an invention that occurs more than a year prior to the date of the patent application will create a statutory bar. Under the AIA, patent applications filed on or after March 16, 2013, and patents issued on those applications, will be subject to a different statutory structure. For these, public use that occurs before the effective filing date of the claimed invention will create a statutory bar with no grace period (with the exception described above, where there is still a one-year grace period).

What constitutes a “public use” for purposes of the patent statute has not always been easy to determine. In the past, courts have held many activities to be public uses that do not seem very public. For instance, in the “corset spring” case (Egbert v. Lippmann, 104 U.S. 333 (1881)), a female friend of the inventor wore her corset with the improved corset springs in public—under her outer garments of course. No member of the general public saw the invention or had any inkling she was wearing an invention. Yet the Supreme Court held that this was public use. There was a similar case wherein the invention was incorporated into several safes in such a way that the invention could not be discerned without destroying the safe. (Hall v. MacNeale, 107 U.S. 90 (1883)). Foreign countries may define what constitutes a public use differently from the United States.

Another activity that has been considered to constitute public use and therefore create a statutory bar is an inventor’s secret use of a process to make a product that is sold publicly. Although there may be nothing at all public about the process itself, the courts have considered this to be a public use under sec. 102(b) because the goods made by the process are introduced to the public. As a matter of public policy, the courts—and presumably, Congress—do not want an inventor to take commercial advantage of the process for more than one year and then apply for a patent on the process. Of course, in such a case the inventor can continue to use trade secret protection for the process.  Note, however, that the case law discussed herein, in connection with public use and other statutory bars, arose before the AIA went into effect; there may be an argument that the old case law is inapplicable to the AIA’s re-defined statutory bars.

Invention On Sale Prior to Application

Beginning on March 16, 2013, if an invention is on sale before the effective filing date of the patent application, a statutory bar will be created (with the exception described above, where there is still a one-year grace period). Previous law allowed a one-year grace period. Under case law interpreting the “on sale” bar, an invention may be “on sale” if there has been an offer for sale and the invention becomes ready for patenting, even if that occurs before the invention is reduced to practice.

Confidential offers to assign or license the invention itself—as opposed to offers to sell a product incorporating the invention or a product made by means of a process invention—were not generally considered sufficient sales activities to create a statutory bar.

The Experimental Use Exception to Statutory Bars

Experimental use is considered an exception to the “public use” and “on sale” statutory bars described above. As a general rule, since it is often difficult to establish definitively that a use is sufficiently experimental for patent law purposes, we consider it unwise to rely on the experimental-use exception prospectively. The safer course is to file a patent application promptly.

Publication of Invention Prior to Application

Publication, which is a statutory bar event and which under prior law started the one-year grace period, is fairly straightforward. There are some instances, however, where there is a question as to what constitutes a publication. A publication need not be widely circulated; a single copy available in a library may be considered a publication under 35 U.S.C. sec. 102.

Often well-intentioned inventors rush to distribute an article about the invention in order to enhance the reputation of the company, or in order to promote cooperation amongst engineers or scientists in an industry. Because such actions can create statutory bars that can prevent the company from obtaining a patent on the invention, inventors need to be educated about the importance of maintaining secrecy and taking other steps in furtherance of patent rights, and encouraged to get a patent attorney involved at an early stage of the development of the invention.

Of course, a good patent application cannot normally be prepared overnight, and therefore the invention should preferably be disclosed to a patent attorney or agent well in advance of any possible statutory bar date.

Deadline for Filing Patent Applications (Statutory Bars) in Foreign Countries

The vast majority of foreign countries do not have any grace period, except in very limited circumstances. Thus, if you wish to obtain foreign patent protection, you generally must file a patent application before it becomes known to the public. Otherwise, you could be statutorily barred from obtaining a patent in another country.

Fortunately, one can at first file only in the United States and then file within one year in a country that is a signatory to the Paris Convention for the Protection of Industrial Property and thereby receive a priority date based on the United States application. This way, one can avoid a statutory bar problem in foreign countries by initially filing an application in the United States before the invention becomes publicly available. Pursuing and maintaining foreign patents can be very expensive.

To preserve the potential for foreign patent protection, an invention should be disclosed to a patent attorney or agent well in advance of any planned disclosure of the invention in a publication, at a conference, in a press release, at a trade show or the like. Nevertheless, in extraordinary circumstances it is possible to prepare and file a provisional application quickly to avoid a statutory bar (in particular, in a foreign country), especially if an adequate description of the invention has already been prepared.

It is also fortunate that the Patent Cooperation Treaty (which does not have as many signatories as the Paris Convention, but nevertheless includes almost all industrialized countries) allows one at a reasonable initial expense to preserve the right to pursue patents in many jurisdictions, while delaying the filing of many individual national applications, by filing a single international application. If one wants patent protection in many jurisdictions, however, one must eventually—at great expense—pursue separate applications in each of the jurisdictions, regardless of whether an international application was filed.

In addition to what constitutes a statutory bar, there are many other differences in the patent laws of various countries. For instance, some countries have compulsory licensing provisions, unlike the United States. Most other countries have long had the first to file system that is being ushered in under the AIA. Generally, the only exception to the first-to-file rule typically found in foreign patent laws is if the earlier filer derived (stole) the invention from the later filer.

Secret Prior Art

At Sunstein, we often conduct extensive prior-art searches on computer databases, such as those maintained by the United States Patent and Trademark Office and foreign patent offices. In addition, we also conduct manual prior-art searches in patent offices in many jurisdictions. Such searching techniques usually inform us of the most relevant prior art. However, some prior art is secret and is therefore unavailable to the public until sometime after its effective date.

A pending United States patent application constitutes prior art with respect to later filed applications made by others. United States patent applications filed before November 29, 2000are kept secret unless and until a patent issues. Thereafter, publication of U.S. applications will normally take place 18 months after their earliest priority date. But there are exceptions. Thus, despite doing a very thorough search before a patent application is filed, it is possible that a piece of prior art that one could not have known about may be cited against a patent application rendering the claimed invention unpatentable.

 

Patent Interference Proceedings

For patents with effective filing dates prior to March 16, 2013, there is a procedure known as an interference proceeding to determine priority. When two inventors (or two groups of co-inventors) are each pursuing a patent for the same invention, priority is given to the inventor who can prove that he or she invented first. When such a situation occurs, an elaborate adversarial process, called an “interference” pursuant to 35 U.S.C. sec. 102(g), takes place within the U.S. Patent and Trademark Office in order to determine who is entitled to priority. Our attorneys are experienced in enforcing and defending our clients’ interests in patent interference proceedings.

In order to establish an earlier date of invention, it is very important that the inventor or inventors contemporaneously keep detailed notebooks of their development—preferably witnessed by a non-inventor at frequent intervals. If a party to an interference cannot supply adequate documentary proof of a date of invention, that party may be forced to rely on only the application’s filing date. As indicated in sec. 102(g), it is important to have evidence showing the date of conception, the date of reduction to practice, and diligence from the time of conception to reducing the invention to practice.

Filing a patent application as early as possible (even if it for a provisional application without all the rigor of a regular application) is therefore usually the wisest course to follow. There is always the risk that the evidence of an earlier date of invention will not be satisfactory. In addition, there are procedural benefits in the interference for the party that files first. For example, filing a patent application is considered constructive reduction to practice.

Sunstein has experience in handling interferences and can provide advice on how to document the development of an invention to put one in the best position possible for an interference.

Patent Derivation Proceedings

Since first-to-invent priority and interference proceedings are being phased out, for patents with effective filing dates from March 16, 2013 forward, the AIA set forth a new procedure, known as the derivation proceeding. The idea is for the real inventor to get credit for his or her invention, even if a former colleague or the like had knowledge of the invention and improperly used that knowledge to get an application on file first. The petition for the proceeding must be filed within the year starting on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention that is alleged to be derived. The derivation proceeding, once initiated, may be terminated by agreement of the parties, barring a determination that the agreement is inconsistent with the evidence of record.

Non-Obviousness of Invention

In order to be entitled to a patent, an invention must not have been “obvious” in light of the prior art. The non-obviousness requirement for patents with effective filing dates on or after March 16, 2013 is set forth in amended 35 U.S.C. sec. 103:

“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.  Patentability should not be negated by the manner in which the invention was made.”

Whether an invention would have been “obvious . . . to a person having ordinary skill in the art . . .” is the issue that has generally been most argued about during the prosecution of patent applications, and the second most argued about in patent litigation. (The most contentious issue in litigation is infringement, i.e., whether the accused product infringes the asserted patent.)

The obviousness issue requires the resolution of several difficult concepts. One has to imagine a hypothetical person who has only ordinary skill, but who is aware of all the pertinent prior art, however obscure. One further has to place this ordinary and omniscient hypothetical person in the past—at the time of invention. Would the solution embodied in the claimed invention have been obvious to such a hypothetical person? Even after all the subsidiary issues are resolved (e.g., what is the pertinent field, what was the level of skill in that field, what constitutes the pertinent prior art), determining whether an invention is obvious remains an inherently difficult question, because the arbiter (e.g., the U.S. Patent and Trademark Office examiner or a jury) already knows the solution, which may seem obvious only in retrospect.

Both the U.S. Patent and Trademark Office and the courts can look at various indicia of patentability, called “secondary factors,” to help them decide if a given invention meets the non-obviousness requirement. The typical secondary factors include (i) a long felt need in the industry for a solution to a problem; (ii) repeated failures in the past to obtain a solution; (iii) the commercial success of the invention; and (iv) copying of the invention by others.

As set forth in 35 U.S.C. sec. 103, it does not matter how an invention was made or conceived; a “flash of genius” is not required. In Thomas Edison’s case, invention was “99% perspiration and 1% inspiration,” and other ratios with more or less inspiration are permitted. Also, an invention can be discovered by accident.

One cannot always trust the inventor to make an informed decision about whether an invention is obvious. Some inventors, who may be modest, brilliant, or both, may say that a clearly patentable invention was no big deal, because it was obvious to them—but they may have much more than ordinary skill. Therefore, Sunstein strongly recommends that, in the development of any important product, a patent attorney should meet with the designers to determine whether there is any patentable subject matter in a product, despite what the designers may think about the obviousness of an invention.

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What goes into a patent application?

The patent laws require a disclosure of the invention. In most cases, drawings are required. In all utility cases (but not design cases), a written specification is required. This specification has two main parts: (i) the disclosure of the invention that will teach the public about the invention (as part of the exchange referred to above between the inventor, who has made an advance in the field, and the government, which grants a monopoly in the invention); and (ii) the claims. A United States patent application must also include an oath and filing fee. A provisional application does not require all these parts. The different components of a patent application are discussed below.

The Disclosure

The requirements for the written disclosure to be made in a patent application are set forth in the first paragraph of 35 U.S.C. sec. 112, which reads as follows:

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out the invention.”

The statute requires that the “best mode” be disclosed. Congress does not want inventors withholding important information about the invention so that after the patent expires, others cannot practice the invention with the same benefits or efficiency as the inventor. For this reason, patents are sometimes incompatible with trade secrets. If the trade secret is important to know for “the best mode . . . of carrying out [the] invention,” then the failure to disclose the secret in the application may invalidate any patent that may issue from that application. While the best mode requirement is important in prosecution, the AIA has eliminated it as a way to challenge the validity of a patent in litigation.

Although the claims are clearly the most critical part of the patent, we at Sunstein draft the disclosure with the view that a well-drafted disclosure will make it easier to obtain broad coverage during the prosecution of the patent application and will strengthen the patent owner’s case during patent litigation.

The Claims

The second paragraph of 35 U.S.C. sec. 112 reads: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

The claims, which are usually written in a very arcane style, are the most critical part of the patent. The claims are meant to define what is covered by the patent. If an accused product or process falls within the scope of a valid claim, it infringes the patent. A product or process may infringe a claim literally or under the Doctrine of Equivalents, which allows in some cases a finding of infringement if the accused product or process does not include each of the elements of the claim but does include at least an equivalent of any element that is literally absent. Yet the Doctrine of Equivalents cannot be so broadly applied to cover anything that would have been obvious in light of the prior art.

For any invention that is valuable, the drafting of the claims should be done by a patent attorney. It has been the experience of Sunstein, that many inventors do not appreciate the scope of their invention. Without the assistance of an experienced patent attorney, claims often are drafted too narrowly.

The Oath and Fee

A patent application is also required by 35 U.S.C. sec.115 to have an oath by all the inventors. If an inventor refuses to cooperate, there are provisions that permit the other joint inventors, if any, or the assignee (or someone with sufficient proprietary interest) to file the application.

In the United States, perhaps because of our tradition of enterprising individualism, the correct naming of inventors is given great weight. The determination of who should be listed as inventors on an application should not be taken lightly, because any problems with inventorship can cause problems during the prosecution of follow-on applications, as well as in litigation. In egregious cases, problems in naming the correct inventors can result in the patent being invalidated.

Individuals who help reduce an invention to practice by merely carrying out the routine instructions of others who have conceived the invention (e.g., someone in the machine shop who is merely following the inventor’s drawings) are ordinarily not considered to have made an inventive contribution. Only a natural person can be an inventor; a company cannot be an inventor. Because of the importance of naming the correct inventors, we feel it is important that a patent attorney go over the claimed subject matter carefully with the inventors to ensure that the correct inventors are being named. Joint inventors are dealt with in 35 U.S.C. sec. 116(a), which reads:

“When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. ”

The basic filing fee for a United States patent application is set forth in 37 C.F.R. sec. 1.16. Fees arising during the prosecution of the application and to maintain an issued patent are set forth in 37 C.F.R. sec. 1.17-1.21. In most cases, the fee for large entities (generally for-profit entities having more than 500 employees) is twice that for small entities (basically everyone else who has not assigned or licensed the invention to a large entity). The fees usually increase annually.

The Provisional Application

A provisional patent application may be used for quickly and cheaply documenting a conception of an invention before completion of the regular application. The provisional application must include a disclosure, drawings (if appropriate), the names of the inventors and a filing fee. The provisional application requires neither a claim nor an oath, but if time permits we recommend that a set of claims be prepared and their substance included to show the intended scope of the disclosed invention. This may entitle the filing of the provisional application to serve as the invention date and priority date for the regular application.

A provisional application is not examined by the U.S. Patent and Trademark Office and becomes abandoned in one year; a regular application must be filed within that one year if patent protection is desired for the invention and if one wants to obtain the benefit of the provisional application’s filing date. It is important to note that one can obtain the benefit of the provisional application’s filing date only if the provisional application (i) includes a “written description” of the invention, (ii) sets forth what the inventors believe is the “best mode” of carrying out the invention, and (iii) provides a disclosure that is enabling to one of ordinary skill in the field.

The term of a utility patent is twenty years from its earliest priority date, not including provisional application filings. Therefore, it may be desirable to file a completed patent application as a provisional when an extra year of patent protection at the end of the patent’s life is more important than the year’s delay in granting the patent.

At Sunstein, we have found that, for an ongoing development process, a series of provisional applications, as well as continuation-in-part applications provide flexibility as we attempt to maximize the scope of the patents.

The Continuation-in-Part Application

The patent laws of the United States, unlike the laws of most foreign countries, permit the filing of what is referred to as continuation-in-part applications. A continuation-in-part application (“C-I-P”), which has the same requirements as an ordinary application, is frequently useful when there are subsequent improvements to an invention with a pending patent application. Before the original application matures into an issued patent or is abandoned, a C-I-P may be filed incorporating disclosure of the original invention and disclosure of the improvements. Inventions disclosed in the earlier application will have the benefit of the earlier application’s filing date, and inventions that include new content will have the benefit of the C-I-P’s filing date. Applications claiming priority from a provisional application will often be similar to C-I-Ps, since inventions relying on new content will have different dates of priority from inventions fully described in the provisional application.

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What is the significance of a patent being published?

As of November 29, 2000, the United States Patent and Trademark Office began publishing patent applications. Typically, publication of an application will take place 18 months from the earliest priority date for the application. If secrecy of the invention is important, an applicant can avoid publication by submitting a request upon filing the application and certifying that the invention has not and will not be the subject of an application in another country. If the applicant later decides to file in a foreign country or internationally under the Patent Cooperation Treaty, the applicant must notify the U.S. Patent and Trademark Office within 45 days.

The publication of an application provides the patent applicant, for the first time, with the ability to go after damages corresponding to a reasonable royalty for patent infringement occurring prior to patent issuance. These are called provisional rights. Provisional rights are only available once the application issues as a patent. A further limitation on obtaining such pre-issuance damages is that actual notice of the published application must have been provided to the infringer and the infringed patent claims must be in the issued patent and be substantially identical to claims in the published application. Anyone receiving a notice of a published application should contact a patent attorney who can evaluate the matter of infringement, follow the continued prosecution of the application in the Patent Office and determine the advisability of a clearance opinion. A patent applicant interested in securing provisional rights may want to request early publication of the application to start the damages period sooner.

The publication of applications should make the examination of applications more comprehensive. The patent examiners will have easier access to a much larger database of recent prior art. A published application will be prior art as of its earliest filing date in the Patent Office.

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What post-issuance procedures are important?

Reexamination, Post-Grant Review, Inter Partes Review, Reissues, and Other Proceedings

Once a patent is issued, the patentee may request review again by the U.S. Patent and Trademark Office by means of a reissue or an ex parte reexamination. A third party can institute an ex parte reexamination, post-grant review, an inter partes review, or a derivation proceeding.

Because of the limited involvement of requesters in ex parte reexamination proceedings, Sunstein always recommends that the pros and cons of a reexamination request be carefully weighed before choosing reexamination as an inexpensive alternative to patent litigation. On the other hand, reexamination can be an excellent tool for opening up a market that one would like to enter but for the patent infringement risk. The relatively low cost of requesting reexamination or these other post-grant procedures makes them attractive to clients with a limited budget.

Post grant review (PGR) and inter partes review (IPR) give third parties more involvement in the proceedings. Third parties further benefit from rules limiting the ability of the patent owner to amend or add claims. Moreover, a final decision will issue from the Patent Trial and Appeal Board (“PTAB”) within one year of institution of the review. The final decision will be controlling over any litigation in court. On the other hand, third parties need to be aware that in order to keep these proceedings streamlined the PTAB will often limit the arguments that can be raised and the claims that can be challenged. There is also uncertainty as to which arguments, if any, challenging the patent can later be raised in court on the basis of prior art patents or publications (and in the case of PGR, other grounds), should the patent survive the proceeding.

A reissue proceeding can be initiated by a patentee if there was some mistake on the part of the applicants that caused them to obtain more or less coverage than that to which they were entitled. Accordingly, a reissue can broaden or narrow the claims. A broadening reissue must be filed within two years of the patent’s issue date.

Marking the Invention

Once a patent is issued, the patentee should mark all products incorporating the invention (including those sold by licensees) with the patent number. The AIA introduced a new concept of “virtual patent marking,” allowing a patent owner to affix the word “patent” or the abbreviation “pat.” along with a freely accessible website which associates the article with the appropriate patent number. The legislation also included a provision calling for review and analysis of this change to take place 3 years after the enactment. A failure to mark may harm a patentee’s ability to get damages in litigation by cutting off damages arising before the accused infringer received actual notice of infringement. Thus, it is important for patentees to make sure that all of their products and all of their licensees’ products are properly marked. False marking on the other hand, refers to the practice, with intent to deceive the public, of marking a product not covered by the patent listed or indicating that a patent has been applied for when no application is pending.  A party can be sued for false marking by a person who has suffered a competitive injury, who can recover damages “adequate to compensate for the injury” or by the United States government, which could recover fines of up to “$500 for every such offense” pursuant to 35 U.S.C. sec. 292. False marking law changed dramatically with the AIA. Previously, any person could sue on behalf of the U.S. government, even without any harm. The AIA also excluded from conduct in violation of sec. 292 the act of including an expired but formerly applicable patent on an article.

Clearance Opinions

One should take care to avoid willfully infringing a patent owned by another, as a finding of willful infringement can result in the trebling of damages and the award of attorney fees. In order to avoid such a finding, a client should consult a patent attorney to evaluate whether a patent of concern is infringed by what the client intends to sell. Sometimes a design-around will be necessary. Once the client’s plans have cleared, the client should consult with the patent attorney about having a formal, comprehensive written opinion prepared by patent counsel that the product in question does not infringe the patent, or that the patent is invalid or otherwise unenforceable. This opinion should be sought as soon as it is realized that a given patent may pose a problem. Sunstein regularly prepares such clearance opinions for its clients. Since clearance opinions are often introduced as evidence at trial, we believe that a properly prepared clearance opinion can have an impact beyond limiting the risk of enhanced damages.

As of November 29, 2000, patent applications can raise the specter of patent infringement as to patent applications that have been published but not yet issued. Anyone receiving a Notice of Published Application of a patent application should seek counsel from a patent attorney. The attorney will be able to follow the prosecution of the application in the patent office. The attorney will further be able to evaluate the risks of infringement, develop strategies for designing around the patent claims, search for prior art, and at an appropriate stage, prepare a written clearance opinion.

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Who owns the patent?

The question of ownership of patents and inventions is generally governed by state law. State law also governs the interpretation and enforcement of license agreements. Sunstein routinely prepares assignment and license agreements for its clients.

Although the interpretation of license and assignment agreements is generally a state law question, there are important federal provisions that one needs to pay attention to, in particular regarding the recording of assignments in the U.S. Patent and Trademark Office as set forth in 35 U.S.C. sec. 261, which reads in part as follows:

. . . A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, . . . shall be prima facie evidence of the execution of an assignment, grant or conveyance of a patent or application for patent. An assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

In addition, one should be aware of federal antitrust and patent-misuse law when drafting patent license agreements.

Employment Situations

Patents are presumed to be owned by the inventor or inventors, NOT by their employers. It should go without saying that an employer who wants ownership of any patents issued for the inventions of employees should require its employees to sign explicit written agreements—preferably at the time of hiring—to avoid any misunderstandings about who owns what. Typically, an employer will want all employees to assign to the employer all inventions relating to the field of the employer or developed using the resources of the employer.

For employees that are “hired to invent,” there is generally an implicit obligation to assign inventions to the employer. Showing that an employee was “hired to invent” is not as easy as one may suppose. Many factors are usually considered, and usually the employer’s testimony and the employee’s testimony are in sharp conflict. Officers and directors generally have a fiduciary duty to assign relevant inventions to a corporation.

In some cases where an employee retains ownership of an invention, but—in a typical scenario—used an employer’s resources to conceive it or reduce it to practice, and then allowed the employer to use the invention, the employer may retain a nontransferable “shop right.” The employee, however, is still free to license competitors to practice the invention. The shop right generally allows the employer to practice the invention, or in some cases only certain embodiments of the invention, or only in certain ways (e.g., under some circumstances the employer may be allowed to use the invention but not sell it). Whether a shop right arises and the scope of the shop right depends on the circumstances of the particular case. The shop-right doctrine—or a similar principle such as estoppel, implied license or equity—may also apply in some contractor and consultant arrangements.

In addition to ensuring the full right to practice the invention itself, most employers will want to prevent others from practicing an invention developed by an employee, or by a consultant or contractor working for the employer. An explicit written agreement is the only way to ensure that the employer will retain the ownership rights to the inventions developed by others while working for the employer.

Joint inventors or other joint owners can practice the invention without the consent of or an accounting to the other owners, unless there is an agreement to the contrary.

Assignments and Licenses

Even if an inventor does not wish to commercialize an idea directly, he or she may still be able to make profit from a patent, or from a copyrighttrademark, or trade secret, by licensing or selling the rights to the intellectual property. An intelligent strategy of developing a portfolio of intellectual property can greatly enhance one’s ability to profit from an idea.

Sunstein’s business practice group and its patent practice group are able to assist you in dealing with issues relating to the ownership of patents, including preparing, interpreting and enforcing agreements of all kinds. In addition, our attorneys have extensive experience in technology transfers, including licenses and assignments, with particular attention to patent and other forms of intellectual property, as well as licensing your rights in technology.

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