Issuance, Term, Certificates of
Correction, Disclaimers, & Maintenance
Robert M. Hansen
The Marbury Law Group PLLC
AIPLA
Practical Patent Prosecution Training for New Lawyers
August 2009
Alexandria, VA
OUTLINE
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Patent Issuance
Term Adjustments
Certificates of Correction (COC)
Disclaimers
Reissue and Reexamination
Maintenance Fees
PATENT ISSUANCE
Notice of Allowance (NOA) specifies the
amount of the issue fee that must be
paid within 3 months of the mailing date
of the NOA
3 month period is NOT extendable
PATENT ISSUANCE
Report NOA to client and review the
allowed application ASAP
Complete allowance checklist
PATENT ISSUANCE
Checklist involves confirming:
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NOA
Claim of priority
Assignment
Small entity status
Continuation application
Drawings
Duty to disclose prior art, etc.
Sign off of IDS’s
PATENT ISSUANCE
Examiner’s Statement of Reasons for Allowance
• Review carefully to ensure they do not limit
claims
• Failure to comment on reasons for allowance
may disavow potential claim interpretations
• File Comments on Statement for Reasons of
Allowance if appropriate
PATENT ISSUANCE
Amendments after Allowance under 37 CFR § 1.312
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Correction of formal matters or cancellation of claims
Not a matter of right
Must file before or with issue fee
File continuation if amendment impossible
PATENT ISSUANCE
• Pay the issue fee (& publication fee)
• Do not pay on the last day
• Report to client
PATENT ISSUANCE
Withdraw from issue if the patent would
likely be invalid, e.g.:
• Failure to disclose relevant prior art
• Interference problem
• Inoperability
PATENT ISSUANCE
May be withdrawn by Applicant
(1) Before payment of issue fee; or
(2) After payment of issue fee
or by USPTO -- PTO’s QC Program
PATENT ISSUANCE
Withdrawal before issue fee payment
• Petition with a showing of good and
sufficient cause; or
• File a request for continued
examination (RCE)
(File a continuation application without
paying issue fee and abandon parent)
PATENT ISSUANCE
Withdrawal after issue fee payment
Petition
and
(1) Statement of unpatentability with
amendment and explanation;
(2) RCE; or
(3) Express abandonment, e.g., with filing of
continuation
PTO Quality Assurance Program
Just when you thought it was safe to go back in the water…
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USPTO now reviewing randomly selected allowed
applications for search and claim “quality”*
Specialists review application for quality of search and
allowability of claims
Inadequacy of search or claims will result in prosecution
being reopened
Your first warning: Notice of Allowance is Vacated
* See MPEP 1308.03
PATENT ISSUANCE
Report issue of patent ASAP
Docket for:
(1) Payment of maintenance fees; and
(2) Broadening reissue filing deadline
Patent Term
Patent Term Extension If:
§ 1.701 (1) Interference proceedings under 35 U.S.C. 135(a);
(2) The application being placed under a secrecy order under 35 U.S.C. 181;
(3) Issued pursuant to a decision in appellant review reversing an adverse determination of
patentability
§ 1.702 (a) Failure to take certain actions within specified time frames. … the term of an
original patent shall be adjusted if the issuance of the patent was delayed due to the
failure of the Office to:
(1) Mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under
35 U.S.C. 151 not later than fourteen months after the date on which the application was filed
under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 in an international
application;
(2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken under 35 U.S.C. 134 not later
than four months after the date on which the reply was filed or the appeal was taken;
(3) Act on an application not later than four months after the date of a decision by the Board of
Patent Appeals and Interferences under 35 U.S.C. 134 or 135 or a decision by a Federal
court under 35 U.S.C. 141, 145, or 146 where at least one allowable claim remains in the
application; or
(4) Issue a patent not later than four months after the date on which the issue fee was paid
under 35 U.S.C. 151 and all outstanding requirements were satisfied.
§ 1.702(b) Failure to issue a patent within three years of the actual filing date of the
application. the term of an original patent shall be adjusted if the issuance of the
patent was delayed due to the failure of the Office to issue a patent within three years
after the date on which the application was filed …, but not including:
(1) Any time consumed by continued examination of the application under 35 U.S.C. 132(b);
Patent Term – The Calculation
§ 1.703
(a) The period of adjustment under § 1.702(a) is the sum of the following periods:
(1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was
filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 and ending on the date of mailing of either an action under 35
U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(2) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply under § 1.111 was filed and
ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(3) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply in compliance with §
1.113(c) was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151,
whichever occurs first;
(4) The number of days, if any, in the period beginning on the day after the date that is four months after the date an appeal brief in compliance with
§ 41.37 of this title was filed and ending on the date of mailing of any of an examiner's answer under § 41.39 of this title, an action under 35
U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
(5) The number of days, if any, in the period beginning on the day after the date that is four months after the date of a final decision by the Board of
Patent Appeals and Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where
at least one allowable claim remains in the application and ending on the date of mailing of either an action under 35 U.S.C. 132 or a notice of
allowance under 35 U.S.C. 151, whichever occurs first; and
(6) The number of days, if any, in the period beginning on the day after the date that is four months after the date the issue fee was paid and all
outstanding requirements were satisfied and ending on the date a patent was issued.
(b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after
the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an
international application and ending on the date a patent was issued, but not including the sum of the following periods:
(1) The number of days, if any, in the period beginning on the date on which a request for continued examination of the application under 35 U.S.C.
132(b) was filed and ending on the date the patent was issued;
(2)
(i) The number of days, if any, in the period beginning on the date an interference was declared or redeclared to involve the application in the
interference and ending on the date that the interference was terminated with respect to the application; and
<>
(ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference
proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension;
(3)
(i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 of this title in the application
under secrecy order and ending on the date the secrecy order was removed;
(iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference would be declared but for the secrecy
order and ending on the date the secrecy order was removed; and
(iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of
the notice of allowance under 35 U.S.C. 151; and,
Patent Term – Calculation Rules
(cont.)
c) The period of adjustment under § 1.702(c) is the sum of the following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, in the period beginning on the date an interference was declared or redeclared to involve the application in the
interference and ending on the date that the interference was terminated with respect to the application; and
(2) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to
interference proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
(d) The period of adjustment under § 1.702(d) is the sum of the following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(2) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 of this title in the
application under secrecy order and ending on the date the secrecy order was removed;
(3) The number of days, if any, in the period beginning on the date applicant was notified that an interference would be declared but for the
secrecy order and ending on the date the secrecy order was removed; and
(4) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing
of the notice of allowance under 35 U.S.C. 151.
(e) The period of adjustment under § 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which a notice of
appeal to the Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 and § 41.31 of this title and ending on the date of
a final decision in favor of the applicant by the Board of Patent Appeals and Interferences or by a Federal court in an appeal under 35
U.S.C. 141 or a civil action under 35 U.S.C. 145.
(f) The adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay
attributable to the grounds specified in §1.702 overlap, the period of adjustment granted under this section shall not exceed the actual
number of days the issuance of the patent was delayed. The term of a patent entitled to adjustment under § 1.702 and this section shall
be adjusted for the sum of the periods calculated under paragraphs (a) through (e) of this section, to the extent that such periods are not
overlapping, less the sum of the periods calculated under § 1.704. The date indicated on any certificate of mailing or transmission under §
1.8 shall not be taken into account in this calculation.
(g) No patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under § 1.702 and this section beyond the
expiration date specified in the disclaimer.
Patent Term – Calculation Rules
(Conclusion)
Patent Term
You can petition for correction of PTO errors
§ 1.705 (b) Any request for reconsideration of the patent
term adjustment indicated in the notice of allowance, …
and any request for reinstatement of all or part of the
term reduced pursuant to § 1.704(b) must be by way of
an application for patent term adjustment …
must be filed no later than the payment of the
issue fee but may not be filed earlier than the date of
mailing of the notice of allowance.
Patent Term – Bottom Line
Very Important to Clients – $$$
Complicated Calculation – PTO gets it wrong and you
have to petition to fix it before the issue fee is paid
Complicated Calculation – not for mere mortals or
untrained patent attorneys
If you are responsible for checking PTE, get help
Be aware of PTE implications of all prosecution choices
If you practice in the medical arts, get to know
35 U.S.C. 156(d)(5) and 37 CFR 1.790
Certificates of Correction
Errors correctable by COC:
(1) Errors by the USPTO; and
(2) Good faith, minor mistakes by applicant (e.g.,
typographic and spelling errors)
Clerical or typographical errors
Mistakes of minor character
No new matter or Examination requiring
Certificates of Correction
Correction of Errors by the USPTO may be
requested by
• Patentee or assignee
• USPTO
• Third party
Certificates of Correction
Correction of Errors by the USPTO
• No charge to patentee
• COC or corrected patent
Certificates of Correction
Advantages of COC’s:
• Cheap
• Easy
• Retroactive
Reissue
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Used to correct an error in the patent – limited to patentee
Request must identify error in patent, not limited to 102/103 validity
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The error must be one which causes the patent to be "deemed wholly or partly
inoperative or invalid, by reason of a defective specification or drawing, or by
reason of the patentee claiming more or less than he had a right to claim in the
patent."
 Not spelling mistakes – those are for CoC
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Must admit patent is defective and surrender patent at outset
If granted, PTO examines claims as if in prosecution and issues
Office Action
Patentee can amend claims to overcome rejections
Within two years of issue, amendments can broaden claims
Can file continuations, divisionals and CIPs just like a regular app.
Certificate of Reissue if claims allowed
Reexamination
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Used to confirm the allowability of claims in view of prior
art not considered by PTO
Challenge validity of the patents of others based on prior
art not considered by PTO – anyone can file
Challenge limited to publications
Petition must establish a new question of patentability
under 35 USC § 102 or § 103
If granted, PTO examines and issues Office Action
Patentee can amend claims to overcome rejections
Certificate of Reexamination if claims allowed
Two Types of Reexam
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Ex Parte Reexam
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granted, requestor plays no further role
Typically $10K-$30K cost to requestor
Optional Inter Partes Reexam
 Requestor
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able to participate in proceeding
Alternative to litigation in Federal Court
Can answer patentee responses to Office Actions
Right to appeal or participate in appeal
Imposes statutory estoppel on requestor
$800 USPTO filing fee
Typically $50K-$100K cost to requestor
Disclaimers
(1) Statutory disclaimer
(2) Terminal disclaimer
Disclaimers
Statutory disclaimer:
Patent owner disclaims a complete claim or
claims, e.g.,
(1) Result of a Lawsuit
(2) Believe claim(s) are invalid
Disclaimers
Statutory disclaimer:
• Signed by patentee or representative
• Identify patent and claim(s) disclaimed
• State the extent of signor’s ownership interest
• Binding on signor, successors and assigns
Disclaimers
Terminal disclaimer:
Applicant or patentee disclaims the entire
term or any portion of the term of the patent
or patent to be granted,
. . . usually to overcome an obviousness-type
double patenting rejection
Disclaimers
Terminal disclaimer:
• Signed by applicant, applicant/part assignee,
full assignee, or representative
• Specify portion of term being disclaimed
• State the extent of the applicant’s or
assignee’s ownership interest
• Binding on signor, successors and assigns
Disclaimers
Terminal disclaimer:
To overcome an obviousness-type
double patenting rejection
Disclaimers
Terminal disclaimer for co-owned patents
and patent applications:
• Statement that any patent granted shall
be enforceable only for and during such
period the patent is commonly owned
with the application or patent that forms
the basis for the rejection
Disclaimers
Terminal disclaimer for patents and patent
applications resulting from joint venture:
• Statement by both joint venture owners
• Waive the right to separately license and
enforce both patents
• Agree both patents are only enforceable while
not separately licensed or enforced from the
application or patent that forms the basis for
the rejection
• Binding on signors, successors and assigns
Maintenance Fees
To maintain an issued patent, you must pay
maintenance fees at regular intervals during the life of
the patent.
Maintenance fees are due:
(1) 3.5 years after grant -- $980;
(2) 7.5 years after grant -- $2480; and
(3) 11.5 years after grant -- $4110*
Fees change all the time so check the latest fee schedule
* Large Entity Fee
Maintenance Fees
With payment of a surcharge, maintenance fees can
be paid within a 6-month “grace period” after
due date
Maintenance fees due by:
(1) 4* years after grant;
(2) 8* years after grant; and
(3) 12* years after grant
* Actually due at 3.5, 7.5 and 11.5 years with a 6 month grace period, but who can
remember half years?
Maintenance Fees
To avoid unenforceability of the patent,
confirm that small entity status is appropriate
If patent is set for large entity fees, must affirm
small entity status and have it accepted before
paying small entity fee – no refund available
Maintenance Fees
If you miss payment of maintenance fees, you may
file a petition to accept a delayed payment if
delay was:
• Unintentional - petition within 2 years; or
• Unavoidable - anytime but must file promptly