PATENT LAW
Randy Canis
CLASS 10
Prosecution
1
Prosecution (Chapter 10)
Prosecution
• The process of negotiation with the
United States Patent and Trademark
Office (USPTO) in an attempt to
obtain issuance of a patent
application.
2
Prosecution
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Prosecution Steps
Types of Applications
Provisional v. Nonprovisional
Publication
Inventorship
Inequitable Conduct
Duty of Candor
3
What is Prosecution?
• Negotiation by inventors or their
representatives as by patent counsel or
patent agent with a patent examiner &
other PTO officials administratively in
procedures involving the patent
application, examination, amendment,
continuing procedures and patent
grant.
4
Prosecution Overview
• Step 0 – Prepare an invention disclosure form
• Step 1 - Identifying person to draft (and likely prosecute)
patent application
– Applicant
– Patent attorney or agent
• Step 2 - Prior Art search
– Not required… but highly recommended
• Step 3 – Determine whether an application should be filed
– Provisional
– Nonprovisional
• Step 4 – Prepare and file the application
• Step 5 – Prosecution
• Step 6 – Allowance or Abandonment
• Step 7 – Continuation Applications (prior to issuance or
abandonment)?
5
Examination and Office Actions
6
Pre-Examination by Administrator
at the PTO
•
•
•
•
•
•
For formal requirements
Required inventor(s) declaration
Necessary fees
All necessary parts & papers
A description and at least one claim
That drawings meet specific
requirements
• No drawings sometimes in chemical
cases
7
Examination of non-provisional
applications steps at PTO:
• A patent application is assigned to an art unit
• A SPE from the art unit assigns the patent
application to an Examiner
• The assigned patent examiner takes up the
application in order from a queue of cases
– The order in which the application is dependent
on a few different factors
• Examiner begins an examination of the application
8
Examiner conducts search
of the prior art
• In classes and subclasses considered
pertinent plus key word searchings
• Patents and patent applications both
domestic and foreign
• Technical publications available to
examiner to a limited degree
• Include technical journals and texts
9
Examiner’s review of application
• Examiner considers whether
application (with its claims) meets
requirements of Patent Laws
• Examiner considers whether claims of
application meet certain requirements
10
Examiner considers
whether claims of application-• Define patentable inventions (35 USC 101)
• Define inventions that are novel (35 USC 102)
over prior art (P/A)
• Define inventions that are unobvious (35 USC
103) over P/A
• The patent application meets 112 requirements
including written description and definiteness
• Examiner then writes a summary of the
examination called an “Office Action” (OA)
• OA is mailed (electronically or in paper) to
applicant
11
Office Action
Summarizes the findings of examiner
• As to each claim specifically
– each claim is rejected, allowed, objected to
indicating allowable if rewritten in independent
form
• Any objections to the drawings, specification,
title, or abstract are included
• The office action could also include a double
patenting rejection
12
Office Action date & response
Has a date of mailing and from that date
sets a date for response by applicant:
• Typically 3 mo. for substantive rejections or
• Shorter (e.g., 1 mo.) for informal
requirements such as requiring applicant to
elect between different species of claimed
inventions regarded by examiner as
independent (e.g., method and apparatus)
13
Response by Applicant to
Office Action
• Must address each point of rejection.
• May argue that rejection was improper.
• May present amendments to overcome
rejections.
• May amend claims, as by limiting them to
avoid prior art.
• Must be submitted within period allowed.
• Extensions (with fees) permitted but with
risk of shortening statutory term of patent.
14
Further Office Action possible
• Might be a Notice of Allowability.
• Might allow some claims.
• Might apply other rejections or
objections, as based on a further
search.
• Might be a final rejection.
15
Response to Final Rejection
• Could put some other claims into allowable
condition.
• Could provide further arguments and/or
amendments.
• Cannot add additional claims.
• May not raise new issues.
• Could be valuable even if not successful
(“not entered”) by opening the possibility of
amendments in a continuing application.
• Filing an RCE restarts the process.
16
If further response by applicant
successful-• Notice of Allowability and Issue Fee
Due will follow
• Issue Fee and Publication Fee will be
due and payable by a date certain
• Patent will then issue typically some
few weeks (e.g., ~2 mo.) after
payment of issue fee.
17
Discussion of Example
Prosecution
18
Interviews with the Patent
Office
• § 1.133 Interviews.
• (a)(1)Interviews with examiners concerning applications
and other matters pending before the Office must be
conducted on Office premises and R-95 Rev. 8, July 2010
within Office hours, as the respective examiners may
designate. Interviews will not be permitted at any other
time or place without the authority of the Director.
• (2)An interview for the discussion of the patentability of a
pending application will not occur before the first Office
action, unless the application is a continuing or substitute
application or the examiner determines that such an
interview would advance prosecution of the application.
19
Interviews with the Patent
Office
• (3)The examiner may require that an interview be
scheduled in advance.
• (b)In every instance where reconsideration is
requested in view of an interview with an
examiner, a complete written statement of the
reasons presented at the interview as warranting
favorable action must be filed by the applicant. An
interview does not remove the necessity for reply
to Office actions as specified in §§ 1.111 and
1.135.
20
Interviews – When
Conducted
• What can you do and when can you do it?
– Pre-Examination
• At Examiner’s Discretion
– First Action Interview Pilot Program
• http://www.uspto.gov/patents/init_events/faip
p_landing.jsp
– Prior to a Final Action
– After Final
• Examiners may grant one interview after
final rejection. See MPEP § 713.09.
21
Interviewing Patent
Applications
• Point of interview for Applicant
– Facilitate prosecution
– Provide details not otherwise contained
in written submissions
– Better understand Examiner’s point of
view and focus of rejection
– Work with the Examiner towards an
allowance
22
Interviewing Patent
Applications
• How conducted
– In-Person in Washington, D.C.
– Telephonically
• Time allotted
– 30 or 60 minutes
• Who is present
–
–
–
–
Attorney
Examiner that prepared the office action
Supervising Examiner?
Interview or client representative?
23
Types of Applications
Five Types of Applications
• Original
• Continuation
• Continuation-in-Part (CIP)
• Divisional
• Provisional
24
Provisional versus
Nonprovisional
Provisional
• Less preparation time Nonprovisional
• Can not amend
• More preparation time
• Amendments are possible
• No claims required
• Must have at least 1 claim
• Not examined
• Examined
• Informal
• More formal
• Valid for only 1 year;
must timely file
• Application valid until
nonprovisional claiming
abandoned or patent issued
priority
• New fee schedule as of 9/26/11 (last revised on 7/2/12) is
here 
http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.ht
m
25
Provisional Patent Applications
26
Provisional applications -steps at PTO
• Application receives a filing date and
serial number
• Application is considered only for
identification of names and addresses
of inventors, and for payment of fee
• Application will not be examined
• Application drawings may be informal
• Application need not include claims
• No substantive prosecution
27
Selecting the type of
patent application
• Provisional Patent Application (“PPA”)
– a simplified set of requirements
versus
• Non-provisional (Utility) Patent
Application (“UPA” or “NPA”)
28
Provisional applications -- tips:
• Suggestion: include full scope of disclosure even
though there is no examination
• Representative claims, broad to narrow, are useful
• Why? Application serves as a priority in U.S.
• Provides priority also for foreign applications
• If foreign filing planned, provisional is priority
• Caution: Provisional will be scrutinized by opponent if
non-provisional results in patent asserted against
opponent; don’t be shoddy
29
Prosecution of non-provisional
applications (“utility applications”)
What are steps at Patent Office
• Application receives a filing date and
serial number
• Application then is assigned to an
Examining Group
• Case is assigned to a patent
examiner
• “Prosecution” begins
30
Patent Term
31
Term of patent
• Patent will issue to be in effect 20 years from:
– Date of first filing of this or parent application
– Or as limited by delays of applicant during
prosecution
– E.g., extensions of time required by applicant
– Or as limited by the lapse of a parent application
– Or where terminal disclaimer was submitted to
overcome a double patenting rejection
• Patent is subject to maintenance fees payable 3.5, 7.5
& 11.5 years after issuance
32
Continuing Applications and
Appeals
33
Transco Products Inc. v. Performance Contracting,
Inc.
• “An applicant may file a continuation,
divisional, or a continuation-in-part
(CIP) application of a prior
application.”
• These are all “continuing” applications
under 35 U.S.C. 120.
34
Continuation Possibilities
• Continuation – might claim other
aspects disclosed but not claimed, or
claimed in the same way as rejected
claims
• Request for Continuing Examination
(RCE) – removes finality of the office
action (e.g., pay to play)
35
Other Continuation Possibilities
• Divisional Application (CPA)
– To prosecute claims on independent invention
– Examiner restricted cls. to independent
invention
• Continuation-in-Part (CIP) Applicant
– To add matter not present in earlier application
– Where part or all of earlier application is
present
• Timing of Filing of Continuation(s)
– Before termination of proceedings in parent
– Before payment of issue fee in parent
36
Choices other than continuation(s)
• Petition the Assistant
Commissioner of Patents
– Petition based on contended examiner
error
– Petition when examiner procedural error
in question
– Further appeal possible to U.S. District
Court (District of Columbia)
37
Choices Other Than
Continuation(s)
• Appeal to Patent Office Board of Patent
Appeals & Interferences (BPAI)
– Appeal is statutory (35 USC 134)
– Issues re examiner's rejection of claims
when level of invention &/or interp. of art in
question
– Tribunal is three senior examiners;
considers:
• Applicant’s Brief on Appeal
• Examiner’s Brief on Appeal
– Decides/remands to exam’r for further
exam’n
– Further appeal poss. to Fed. Cir. Ct. of
Appeals
38
Publication
39
Publication of patent applications
• 18 months after filing unless applicant requests
otherwise upon filing & certifies has not & won’t be
subject of an application filed in a foreign country
• Provisional rights available to patentees to obtain
reasonable royalties if others make, use, sell, or
import invention in the period between publication
and grant
• Applicant can consider if foreign counterparts will be
sought after all, after non-publication request (NPR).
• If applicant then files for foreign patent, must notify
PTO in US application within 60 days & withdraw
NPR. Application then is published ASAP
• PRIOR ART effect for published applications -Sec.102(e)
40
Inventorship
41
Inventorship
• Applications must be filed in the name
of the true inventors
• Inventors must sign a declaration or
an oath stating that they believe they
are the first inventors.
• Joint inventorship of an invention is
possible.
42
Joint Inventorship
• To avoid possible invalidity due to failure to
name inventors make sure to name all
inventors
• Inventive entities can be different for
different claims:
– A, B & C can have invented claim 1.
– B & C can be inventors of claims 2 and 3,
respectively.
– A & C can be inventors as to claims 4 & 5,
and so forth.
43
Noninventors
• Supplies a component used with the
invention
• “Hands of the Inventor” but did not
conceive the invention
• Validity is compromised by misnomer
of a person who is not an inventor
44
Ethicon, Inc. v. United States Surgical Corp.
• What is the invention?
• How was the invention developed?
• Why does inventorship matter?
45
Ethicon, Inc. v. United States Surgical Corp.
“Conception is the ‘formation in the
mind of the inventor, of a definite and
permanent idea of the complete and
operative invention, as it is hereafter
to be applied in practice’”
46
Ethicon, Inc. v. United States Surgical Corp.
An omitted coinventor may be added
to a patent by a court under 35 USC
§256
47
Ethicon, Inc. v. United States Surgical Corp.
• “[E]ach co-inventor presumptively
owns a pro rata undivided interest in
the entire patent, no matter what their
respective contributions.”
• “[J]oint inventions may become joint
property without some express
agreement to the contrary.”
• Outcome of this case?
48
Important Right of
Joint Inventors
• "In the absence of an agreement to
the contrary, each of the owners of
patent may make, use, offer to sell, or
sell the patented invention with the
United States, or import [it], without
the consent of and without
accounting to the other owners."
[Section 262 of Patent Statutes (35
U.S.C. 262)]
49
Joint Inventors
Recommendation:
In light of Sec. 262, joint inventors:
• Should negotiate & enter into a joint
venture or business organization agrmt.
• Should provide for mutual obligations for
disposition of rights by any joint owner.
• Should cover sharing of proceeds of
exploitation of invention.
50
Double Patenting
51
Double Patenting
Sec. 101 of Patent Statutes permits
"a"[ read "single"] patent for any
new and useful invention
 Can arise when multiple patent
applications are submitted by same
entity on closely related inventions
52
Double Patenting
In such instances issues of double
patenting often overcome by use of
terminal disclaimer:
 Term of second patent after expiration of
first patent is disclaimed.
 Both patent then expire on the same
date.
 Both patents must remain commonly
owned.
53
Duty of Disclosure/Inequitable
Conduct
54
Citation of Material to the USPTO
• 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.
• 37 C.F.R. § 1.56(a)
55
Duty of Disclosure
• Persons that under the Duty of
Disclosure:
 Inventors
 Applicant
 Attorneys
56
Duty of Disclosure





Types of Materials to be Disclosed:
Known Prior Art
Prior Art in Related US Matters
Prior Art in Related Foreign Matters
Advise PTO of related matters
57
Current Method of Disclosure
• Applicants submit one or more information
disclosure statements (IDS) during prosecution to
make the USPTO aware of any prior art that an
examiner would consider material.
• Prior art is material if there is a substantial
likelihood that a reasonable patent examiner
would consider it important in deciding if patent to
issue.
• To be material, prior art need not necessarily
render the claims unpatentable.
58
Timely IDS Submission
• Before a first office action: may be
submitted without certification or fee
• After a first office action: may be submitted
with a timeliness certification or a fee
• After allowance: may be submitted with a
timeliness certification and a fee
• After payment of issue fee: may be
withdrawn from issue, admission of
unpatentability of at least one claim, and an
amendment with explanation giving
reasons why claim(s) patentable
59
Failure to Disclose
• Failing to disclosure known prior art
may result in a finding of inequitable
conduct. An inequitable conduct
finding makes a unenforceable even
if the patent would otherwise be
valid. In addition, an inequitable
conduct finding may result in the
patent attorney being liable for
malpractice.
60
Duty of Candor
• Patent Rule 56 [37 CFR 1.56]:
. . . 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. The duty to disclose
information exists with respect to each
pending claim until the claim is cancelled or
withdrawn from consideration, or the
application becomes abandoned. . . .
[Emphasis added]
61
Duty of Candor
• Patent Rule 56 [37 CFR 1.56] (continued):
. . . The duty to disclose all information known
to be material to patentability is deemed to be
satisfied if all information known to be
material to patentability of any claim issued
in a patent was cited by the Office or submitted
to the Office in the manner prescribed by §§
1.97(b)-(d) and 1.98. However, no patent will
be granted on an application in connection
with which fraud on the Office was practiced
or attempted or the duty of disclosure was
violated through bad faith or intentional
misconduct. . . .
[Emphasis added]
62
Duty of Candor
Note Kingsdown Medical Consultants,
Ltc. v. Hollister, Inc., (Fed. Cir.
1988)[textbook p.629]. and especially that
decision's citation of J. P. Stevens & Co.,
Inc. v. Lex Tex Ltd., Inc. (Fed. Cir. 1984),
... "Inequitable conduct resides in failure to
disclose material information, or
submission of false material information,
with the intent to deceive, and these two
elements, materiality and intent, must be
proven with clear and convincing
evidence.”
63
Duty of Candor
In Kingsdown, the Federal Circuit found
that there was not intent in failing to
disclose information relating to a group of
claims which had been added to
application based upon an earlier
application. Fed. Cir. said in effect there
must be something more than gross
negligence; there must be culpable
negligence.
Thus, court found no inequitable
conduct on behalf of Kingsdown.
64
Does PTO enforce Rule 56?
 No, except in interferences (2 or >2 parties)
 Not able as practical matter to enforce
 PTO does not investigate & no way to do
so
 PTO puts the burden on applicants in most
instances to comply with Rule 56
 Duty of candor continues thru prosecution
 Patent infringement action, opponent
focus!
 High probability Rule 56 will be an issue.
 Lack of candor can be fatal to patent.
65
How do courts enforce duty of
candor?
Inequitable conduct resulting from failure of duty
of candor (as where intentional failure to cite
prior art or information material to
patentability), fraud, or intentional misconduct
may render entire patent invalid and
unenforceable. May expose patent owner to
treble damages and to payment of opponent’s
attorneys fees in litigation.
Example Molins PLC v. Textron, Inc.
Federal Circuit Court of Appeals, 1985 [p639]
66
Critical points about
candor & inequitable conduct
• Inequitable conduct even as to a single
claim renders entire patent invalid &
unenforceable
• Fruit of the poisonous tree
• Inequitable conduct can create antitrust
liability where patent should have been
denied or is invalid from inequitable
conduct
• But inequitable conduct can be purged by
appropriate handling
67
Critical points about
candor & inequitable conduct
PTO relies on voluntary disclosure of
information by an applicant, who has
an uncompromising duty to disclose
material facts bearing on the
"patentability" of the claimed invention
in order to ensure that a patent issues
free from fraud or inequitable conduct.
68
Critical points about
candor & inequitable conduct
Candor and duty to disclose are at the
heart of our U.S. patent system. The
applicant has a duty to disclose material
information bearing on patentability. All
persons substantively involved in the
patent application, preparation or
prosecution must disclose to the PTO
any "material" prior patents or
publications of which they are aware.
69
Critical points about
candor & inequitable conduct
“Prior art” is “material” if -• substantial likelihood that a reasonable
patent examiner would consider it
important in deciding if patent to issue
• To be "material", prior art need not
necessarily render the claims
unpatentable. ” Includes info
contradicting an argument made by the
applicant for patentability.
70
Critical points about
candor & inequitable conduct
“Material prior art” -• Prior art that would be important to a
reasonable examiner also includes
prior art that contradicts an argument
made by the applicant contesting an
examiner's rejection, or contesting the
Patent Office's "unpatentability"
position.
71
Critical points about
candor & inequitable conduct
“Material prior art” -• A prior art reference is material if a
reasonable patent examiner would have
rejected a patent claim based upon the
prior art reference on anticipation (lack
of novelty) or obviousness grounds.
72
Critical points about
candor & inequitable conduct
If the duty of disclosure is
violated with respect to any
claim of a patent, then entire
patent becomes
unenforceable.
And others patents derived from it
will also be UNENFORCEABLE !!!
73
McKesson Information
Solutions v. Bridge Medical
 The case relates to non-disclosure to
the PTO of three items during
prosecution of a patent application.
 At the district court, a determination
was made the items were material
and that the disclosures were made
with deceptive intent.
74
McKesson Information
Solutions v. Bridge Medical
• First application – Attorney argued “[n]one of the references
either singularly or in combination teach or suggest the
claimed invention. In addition to numerous other differences,
none of the references teach the three node approach to
communications as provided in the claimed invention.”
• Second application
 Co-pending with the first application
 Same initial citation of prior art
 The attorney had disclosed the existence of the first
application, but did not disclose the rejection of the claims in
the office action received in the first case.
 Attorney disclosed and had an interview regarding a new
prior art reference for the second application but not the first
application.
 Attorney did not make the first Examiner aware of the
allowance of the second application.
75
McKesson Information
Solutions v. Bridge Medical
• Omissions Deemed Material
 Failure to disclosure a patent
considered relevant by PTO in a
similar application
 Rejection of claims in a similar
application
 Allowance of claims in a similar
application
76
McKesson Information
Solutions v. Bridge Medical
• Unenforceability
 "A patent may be rendered unenforceable
for inequitable conduct if an applicant, with
intent to mislead or deceive the examiner,
fails to disclose material information or
submits materially false information to the
PTO during prosecution." Digital Control
Inc. v. Charles Mach. Works, 437 F.3d
1309, 1313 (Fed. Cir. 2006)
77
McKesson Information
Solutions v. Bridge Medical
 Judgment is based on a reasonable
examiner standard
 Would an examiner consider the
materials important or cumulative?
 MPEP 2106
78
Therasense, Inc. v. Becton, Dickinson & Co.,
• D.C. – unenforceable due to
inequitable conduct
• En Banc Federal Circuit – vacates
and remands
• Patent 5,820,551 at issue; relates to
disposable blood glucose test strips
for diabetes management
79
Therasense, Inc. v. Becton, Dickinson & Co.,
•
•
•
•
•
•
•
•
Claim 1
A single use disposable electrode strip for attachment to the signal readout
circuitry of a sensor to detect a current representative of the concentration
of a compound in a drop of a whole blood sample comprising:
a) an elongated support having a substantially flat, planar surface, adapted
for releasable attachment to said readout circuitry;
b) a first conductor extending along said surface and comprising a
conductive element for connection to said readout circuitry;
c) an active electrode on said strip in electrical contact with said first
conductor and positioned to contact said whole blood sample;
d) a second conductor extending along said surface comprising a
conductive element for connection to said read out circuitry; and
e) a reference counterelectrode in electrical contact with said second
conductor and positioned to contact said whole blood sample,
wherein said active electrode is configured to be exposed to said whole
blood sample without an intervening membrane or other whole blood
filtering member . . . .
80
Therasense, Inc. v. Becton, Dickinson & Co.,
• After problems during prosecution,
new claims were presented to the
Examiner based on a new sensor that
did not require a protective membrane
for whole blood.
• The Examiner required an affidavit
that, at the time of the invention, the
prior art required a membrane for
whole blood
81
Therasense, Inc. v. Becton, Dickinson & Co.,
• US patent counsel
– “optionally, but preferably” language is patent
phraseology and not a technical teaching
• European counsel
– “It is submitted that this disclosure is
unequivocally clear. The protective membrane
is optional, however, it is preferred when used
on live blood in order to prevent the larger
constituents of the blood, in particular
erythrocytes from interfering with the electrode
sensor.”
82
Therasense, Inc. v. Becton, Dickinson & Co.,
• D.C. – ‘551 patent unenforceable “for
inequitable conduct because Abbott
did not disclose to the PTO its briefs
to the EPO filed on January 12, 1994
and May 23, 1995.”
• DC also found invalidity and
nonfringement for the ‘551 patent and
another patent at suit
83
Therasense, Inc. v. Becton, Dickinson & Co.,
• Panel on Fed. Cir – upheld with a
dissent
• “Recognizing the problems created by
the expansion and overuse of the
inequitable conduct doctrine, this
court granted Abbott’s petition for
rehearing en banc and vacated the
judgment of the panel.”
84
Therasense, Inc. v. Becton, Dickinson & Co.,
• Effect of Inequitable Conduct
– Defense to patent infringement
– Bars enforcement of a patent when found
• Historical Inequitable Conduct
– “egregious misconduct, including perjury, the
manufacture of false evidence, and the
suppression of evidence.”
– “deliberately planned and carefully executed
scheme[s] to defraud” not only the PTO but
also the courts.
85
Therasense, Inc. v. Becton, Dickinson & Co.,
• Evolution of Inequitable Conduct
– “[E]mbrace[d] a broader scope of
misconduct, including not only egregious
affirmative acts of misconduct intended to
deceive both the PTO and the courts but
also the mere nondisclosure of information
to the PTO.”
– “[U]nenforceability of the entire patent
rather than mere dismissal of the instant
suit.”
86
Therasense, Inc. v. Becton, Dickinson & Co.,
• “[I]nequitable conduct came to require a finding of
both intent to deceive and materiality.”
• “In the past, this court has espoused low
standards for meeting the intent requirement,
finding it satisfied based on gross negligence or
even negligence.”
• “This court has also previously adopted a broad
view of materiality, using a ‘reasonable examiner’
standard based on the PTO’s 1977 amendment to
Rule 56.”
• Sliding scale approach
87
Therasense, Inc. v. Becton, Dickinson & Co.,
• Effects
– Full disclosure
– “[I]nequitable conduct has become a
significant litigation strategy. A charge of
inequitable conduct conveniently
expands discovery into corporate
practices before patent filing and
disqualifies the prosecuting attorney
from the patentee’s litigation team.”
88
Therasense, Inc. v. Becton, Dickinson & Co.,
• “Unlike other deficiencies, inequitable conduct
cannot be cured by reissue”
• “[T]he taint of a finding of inequitable conduct
can spread from a single patent to render
unenforceable other related patents and
applications in the same technology family.”
• “With [] far-reaching consequences, it is no
wonder that charging inequitable conduct has
become a common litigation tactic.”
89
Therasense, Inc. v. Becton, Dickinson & Co.,
• “With inequitable conduct casting the
shadow of a hangman’s noose, it is
unsurprising that patent prosecutors
regularly bury PTO examiners with a
deluge of prior art references, most of
which have marginal value.”
90
Therasense, Inc. v. Becton, Dickinson & Co.,
• “This court now tightens the
standards for finding both intent and
materiality in order to redirect a
doctrine that has been overused to
the detriment of the public.”
91
Therasense, Inc. v. Becton, Dickinson & Co.,
• “To prevail on a claim of inequitable
conduct, the accused infringer must prove
that the patentee acted with the specific
intent to deceive the PTO. …
A finding that the misrepresentation or
omission amounts to gross negligence or
negligence under a ‘should have known’
standard does not satisfy this intent
requirement.”
92
Therasense, Inc. v. Becton, Dickinson & Co.,
• “[T]he accused infringer must prove
by clear and convincing evidence that
the applicant knew of the reference,
knew that it was material, and made a
deliberate decision to withhold it.”
93
Therasense, Inc. v. Becton, Dickinson & Co.,
• “[T]he materiality required to establish
inequitable conduct is but-for materiality.
When an applicant fails to disclose prior art to
the PTO, that prior art is but-for material if the
PTO would not have allowed a claim had it
been aware of the undisclosed prior art.
Hence, in assessing the materiality of a
withheld reference, the court must determine
whether the PTO would have allowed the
claim if it had been aware of the undisclosed
reference.”
94
Post Grant Procedures
95
Post Grant Procedures
• How can a patent be corrected or
reconsidered?
– Certificate of Correction
– Reissue
– Reexamination
• What types of errors may occur in a
patent?
–
–
–
–
Errors of Typographical Nature
Errors by PTO
Errors by Applicant(s)
Errors when printed patent differs from record
in PTO
96
Certificate of Correction
97
Certificate of Correction
PTO Mistake
35 U.S.C. 254 Certificate of correction of Patent and
Trademark Office mistake.
• Whenever a mistake in a patent, incurred through the fault of
the Patent and Trademark Office, is clearly disclosed by the
records of the Office, the Director may issue a certificate of
correction stating the fact and nature of such mistake, under
seal, without charge, to be recorded in the records of
patents. A printed copy thereof shall be attached to each
printed copy of the patent, and such certificate shall be
considered as part of the original patent. Every such patent,
together with such certificate, shall have the same effect and
operation in law on the trial of actions for causes thereafter
arising as if the same had been originally issued in such
corrected form. The Director may issue a corrected patent
without charge in lieu of and with like effect as a certificate of
correction.
98
Certificate of Correction
PTO Mistake
• Who may request that the USPTO
issue a certificate of correction?
– patentee or the patentee's assignee
– USPTO (sua sponte)
– Third parties
37 CFR 1.322(a)
99
Certificate of Correction
PTO Mistake
• USPTO has discretion whether to issue the
certificate of correction
– “Office mistakes are of such a nature that the meaning
intended is obvious from the context, the Office may
decline to issue a certificate and merely place the
correspondence in the patented file, where it serves to
call attention to the matter in case any question as to it
subsequently arises.
– “[W]here errors are of a minor typographical nature, or
are readily apparent to one skilled in the art, a letter
making the error(s) of record can be submitted in lieu of a
request for a Certificate of Correction. There is no fee for
the submission of such a letter.”
MPEP 1480
100
Certificate of Correction
Applicant’s Mistake
35 U.S.C. 255 Certificate of correction of applicant's
mistake.
• Whenever a mistake of a clerical or typographical nature, or
of minor character, which was not the fault of the Patent and
Trademark Office, appears in a patent and a showing has
been made that such mistake occurred in good faith, the
Director may, upon payment of the required fee, issue a
certificate of correction, if the correction does not involve
such changes in the patent as would constitute new matter
or would require reexamination. Such patent, together with
the certificate, shall have the same effect and operation in
law on the trial of actions for causes thereafter arising as if
the same had been originally issued in such corrected form.
101
Certificate of Correction
Applicant’s Mistake
• The mistake must be:
(1) of a clerical nature,
(2) of a typographical nature, or
(3) a mistake of minor character.
• The correction must not involve changes
which would:
(1) constitute new matter or
(2) require reexamination.
M.P.E.P. 1481
102
Correcting Inventorship
103
Correction of Inventors’ Names
35 U.S.C. 256 Correction of named inventor.
• Whenever through error a person is named in an issued
patent as the inventor, or through error an inventor is not
named in an issued patent and such error arose without any
deceptive intention on his part, the Director may, on
application of all the parties and assignees, with proof of the
facts and such other requirements as may be imposed, issue
a certificate correcting such error.
• The error of omitting inventors or naming persons who are
not inventors shall not invalidate the patent in which such
error occurred if it can be corrected as provided in this
section. The court before which such matter is called in
question may order correction of the patent on notice and
hearing of all parties concerned and the Director shall issue
a certificate accordingly.
104
Correction of Inventors’ Names
• The request to correct inventorship must include:
(1) Where one or more persons are being added, a
statement from each person who is being added as an
inventor that the inventorship error occurred without any
deceptive intention on his or her part;
(2) A statement from the current named inventors either
agreeing to the change of inventorship or stating that
they have no disagreement in regard to the requested
change;
(3) A statement from all assignees of the parties agreeing to
the change of inventorship in the patent; and
(4) A fee.
105
In re Vogel
• 1998 Federal Circuit Panel Decision
• Invention
– Trocars, an essential tool for endoscopic
surgery
106
In re Vogel
• What was the relationship between
Yoon and Choi?
• How did their backgrounds differ?
107
In re Vogel
• “Because ‘[c]onception is the
touchstone of inventorship, each joint
inventor must generally contribute to
the conception of the invention.”
• “Conception is the ‘formation in the
mind of the inventor, of a definite and
permanent idea of the complete and
operative invention, as it is hereafter
to be applied in practice.’”
108
In re Vogel
• What kind of proof is needed to add
an omitted co-inventor?
• Who conceived the different aspects
of the invention?
109
In re Vogel
• What was the resulting decision once
Choi was found to be a co-inventor?
110
Statutory Disclaimer
111
Statutory Disclaimer
35 U.S.C. 253 Disclaimer.
• Whenever, without any deceptive intention, a claim of a
patent is invalid the remaining claims shall not thereby be
rendered invalid. A patentee, whether of the whole or any
sectional interest therein, may, on payment of the fee
required by law, make disclaimer of any complete claim,
stating therein the extent of his interest in such patent. Such
disclaimer shall be in writing, and recorded in the Patent and
Trademark Office; and it shall thereafter be considered as
part of the original patent to the extent of the interest
possessed by the disclaimant and by those claiming under
him.
• In like manner any patentee or applicant may disclaim or
dedicate to the public the entire term, or any terminal part of
the term, of the patent granted or to be granted.
112
Statutory Disclaimer
• Patentee may disclaim one or more
claims of his/her patent by filing in the
Office a disclaimer as provided by the
statute.
• (Maintaining a claim known to be invalid
renders a patent unenforceable.)
113
Reissue
114
Reissue/Reexamination
Correction of Substantive Errors
• Reissue – applicants correction of
more significant errors affecting the
validity and enforceability of an issued
patent
• Reexamination – allows applicants or
third parties to request that the PTO
reconsider the validity of the patent
115
Reissue
35 U.S.C. 251 Reissue of defective patents.
• Whenever any patent is, through error without any deceptive intention,
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, the Director shall, on the
surrender of such patent and the payment of the fee required by law,
reissue the patent for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the unexpired part of
the term of the original patent. No new matter shall be introduced into the
application for reissue.
• The Director may issue several reissued patents for distinct and separate
parts of the thing patented, upon demand of the applicant, and upon
payment of the required fee for a reissue for each of such reissued patents.
• The provisions of this title relating to applications for patent shall be
applicable to applications for reissue of a patent, except that application for
reissue may be made and sworn to by the assignee of the entire interest if
the application does not seek to enlarge the scope of the claims of the
original patent.
• No reissued patent shall be granted enlarging the scope of the claims of the
original patent unless applied for within two years from the grant of the
original patent.
116
Reissue
1. Applicant must have reasons:
– Defective specification
– Defective drawing
– Claims claimed too much or too little
•
Claim scope can only be expanded during first two
years of issuance (i.e., a broadening reissue)
2. Applicant must allege that the defective,
inoperative, or invalid patent arose
through error without deceptive intent.
117
Hewlett-Packard Co. v.
Bausch & Lomb Inc.
• Procedural Background
• Factual Background
• Issue:
– Is a failure to include narrower or
dependent claims in a patent sufficient in
itself to establish error warranting
reissue under 35 U.S.C. §251?
118
Hewlett-Packard Co. v.
Bausch & Lomb Inc.
– What was the supposed "error" which H-P's
reissue application sought to correct?
– As required for reissue, patent owner
surrendered the patent, submitted oath alleging
support for reissue.
– Reissue oath: Said overbreadth of claim.
– PTO rejected application. Said: “No error.”
– But affidavits of patent agent were submitted to
show error claiming too much.
– So reissue was allowed
119
Hewlett-Packard Co. v.
Bausch & Lomb Inc.
 B&L then sued H-P for patent
infringement.
 B&L then filed petition for reexamination
on grounds that certain P/A references
raised new question of patentability.
 PTO reaffirmed patentability.
 Now H-P goes after B&L on the old (reexamined) claims and the new claims
120
Hewlett-Packard Co. v.
Bausch & Lomb Inc.
 B&L attacked the validity of the reissue
patent. "No error," said B&L.
 Dist. Ct. held new claims invalid but old
claims valid. Appeal to Fed. Cir.
 Federal Circuit found patent agent's
affidavits to be factually untrue.
 So (said Fed. Cir.) District Ct. was right.
 New claims are invalid but surrendered
but original claims are still valid.
121
Hewlett-Packard Co. v.
Bausch & Lomb Inc.
Section 251 requires:
1. Error in the patent, and
2. Error in conduct.
122
Hewlett-Packard Co. v.
Bausch & Lomb Inc.
“…[T]he practice of allowing reissue
for the purpose of including narrower
claims as a hedge against the
possible invalidation of a broad claim
has been tacitly approved … in our
precedent”
123
Hewlett-Packard Co. v.
Bausch & Lomb Inc.
• Ruling
– Claims 10-12 are invalid because B&L filed
blatantly inaccurate affidavits to support
reissue, but inequitable conduct for claims 1-9
was vacated.
• Holding
– Adding dependent claims does not rise to a
level of error in conduct sufficient to warrant a
reissue.
• Dicta
124
Reissue
How it works
 Patentee surrenders original patent.
 Patentee (or assignee with patentee approval) only
can file.
 Patentee files oath setting forth error in original patent.
 Must show error was w/o deceptive intent.
 Patentee submits marked-up copy of patent with
changes/additions/deletions.
 Prosecution starts ab initio.
 Public is put on notice of reissue proceeding
125
Reissue
Rules
• Can seek broader claims (only w/in 2 yrs. of
issue) or narrower claims
• Cannot be used to correct inequitable conduct in
original prosecution
• Cannot recapture claim given up in original
prosecution
• Can’t defeat "intervening rights" of another who
relied upon original claims. Broadened reissue
claims can’t be enforced against another who
designed structure outside original claims
• Reissue petition need not point out any error
• Reissue has risk of involvement in interference
126
Recapture Rule
• If the patentee opted to narrow its claims to
avoid a prior art reference, then he cannot
use the reissue proceeding to recapture
the abandoned subject matter.
• Prevents a patentee from acquiring through
reissue claims of the same or broader
scope than those canceled from the
original application.
127
Reexamination
128
Reexamination
Reexamination resulted from legislation
intended to to restore confidence in the
validity of issued U.S. patents. See Patlex
decision on purposes:
 To correct errors made by the
government
 Remedy defective governmental
action
 To remove patents that should not
have been granted
129
Reexamination
• Any person may file a request for
reexamination of a patent, along with
the required fee, on the basis of prior
art consisting of patents or printed
publications.
• PTO first determines if there is a
substantial issue of patentability of
one or more claims.
130
Reexamination
35 U.S.C. 301 Citation of prior art.
• Any person at any time may cite to the Office in
writing prior art consisting of patents or printed
publications which that person believes to have a
bearing on the patentability of any claim of a
particular patent. If the person explains in writing
the pertinency and manner of applying such prior
art to at least one claim of the patent, the citation
of such prior art and the explanation thereof will
become a part of the official file of the patent. At
the written request of the person citing the prior
art, his or her identity will be excluded from the
patent file and kept confidential.
131
Reexamination
35 U.S.C. 302 Request for reexamination.
• Any person at any time may file a request for
reexamination by the Office of any claim of a
patent on the basis of any prior art cited under the
provisions of section 301 of this title. The request
must be in writing and must be accompanied by
payment of a reexamination fee … The request
must set forth the pertinency and manner of
applying cited prior art to every claim for which
reexamination is requested. Unless the requesting
person is the owner of the patent, the Director
promptly will send a copy of the request to the
owner of record of the patent.
132
Reexamination
35 U.S.C. 303 Determination of issue by Director.
(a) Within three months following the filing of a request for reexamination under
the provisions of section 302 of this title, the Director will determine whether
a substantial new question of patentability affecting any claim of the patent
concerned is raised by the request, with or without consideration of other
patents or printed publications. On his own initiative, and any time, the
Director may determine whether a substantial new question of patentability
is raised by patents and publications discovered by him or cited under the
provisions of section 301 of this title. The existence of a substantial new
question of patentability is not precluded by the fact that a patent or printed
publication was previously cited by or to the Office or considered by the
Office.
(b) A record of the Director's determination under subsection (a) of this section
will be placed in the official file of the patent, and a copy promptly will be
given or mailed to the owner of record of the patent and to the person
requesting reexamination, if any.
(c) A determination by the Director pursuant to subsection (a) of this section that
no substantial new question of patentability has been raised will be final and
nonappealable. Upon such a determination, the Director may refund a
portion of the reexamination fee required under section 302 of this title.
133
Reexamination
How it works
• ex parte: patent holder initiates (govt.
fee $2520)
• inter partes: an interested third party
(possibly an entity accused of
infringement) may submit request
(govt. fee $8800)
• Benefit to Requester: Less expensive
than litigation.
134
Ex Parte Reexamination
• The role of the requestor is limited
• Only the patentee may participate in
the dialogue with the examiner, and
only the patentee may appeal the
matter to the Board or to the courts if
the PTO reaches an unsatisfactory
conclusion.
135
Inter Partes Reexamination
• Third party requestor may opt to submit written
comments to accompany patentee responses to
the PTO
• The requestor may appeal PTO determines that a
reexamination patent is not invalid to the Board
and the courts
• Third party participants are estopped from raising
issues that they raised or could have raised during
reexamination during subsequent litigation
• Unsuccessful challengers originally could not
appeal to the Federal Circuit, but from new 2002
law can appeal to the Board  Federal Circuit
136
Reexamination
• PTO first determines if there is a
substantial issue of patentability of
one or more claims.
• Prosecution is opened ex parte.
(Patent owner proceeding in PTO)
• If examination proceeds, a certificate
setting forth the results of the
reexamination proceeding is issued.
137
Reexamination rules
• ANY individual may petition for reexamination
(patentee, opponent, licensee, anon., even the
Comr. for Pats.)
• Petition must allege and show, prima facie, that
there is "a substantial new question of
patentability”
• Can be based only on patent(s) or publication(s)
• Can’t be based on prior uses or unpublished art
• Can involve ancillary issues arising fm. amdts
• Cannot be used to broaden a patent
• Cannot result in an interference
• Is binding upon reexamination petitioner (as
cannot later challenge validity of claim found valid)
138
In re Recreative Technologies Corp.
• Procedural Background
• Factual Background
• Issue:
– Can a reference cited and considered
during prosecution provide a substantial
new question of patentabiltiy?
139
In re Recreative Technologies Corp.
“The statute authorizes reexamination
only when there is a substantial new
question of patentability. A second
examination, on the identical ground
that had previously been raised and
overcome, is barred.”
140
In re Recreative Technologies Corp.
• Ruling
– The Board exceeded its statutory
authority that governs reexamination in
holding claims 1, 2 and 4 unpatentable.
• Holding
– No
• Dicta
141
Case overturned…
35 U.S.C. 303 Determination of issue by Director.
• (a) Within three months following the filing of a request for reexamination
under the provisions of section 302 of this title, the Director will determine
whether a substantial new question of patentability affecting any claim of the
patent concerned is raised by the request, with or without consideration of
other patents or printed publications. On his own initiative, and any time, the
Director may determine whether a substantial new question of patentability
is raised by patents and publications discovered by him or cited under the
provisions of section 301 of this title. The existence of a substantial new
question of patentability is not precluded by the fact that a patent or printed
publication was previously cited by or to the Office or considered by the
Office.
• (b) A record of the Director's determination under subsection (a) of this
section will be placed in the official file of the patent, and a copy promptly
will be given or mailed to the owner of record of the patent and to the person
requesting reexamination, if any.
• (c) A determination by the Director pursuant to subsection (a) of this section
that no substantial new question of patentability has been raised will be final
and nonappealable. Upon such a determination, the Director may refund a
portion of the reexamination fee required under section 302 of this title.
142
Repair/Reconstruction
143
Repair v. Reconstruction
• Repair – permissible
– “Precedent has classified as repair the disassembly and
cleaning of patented articles accompanied by
replacement of unpatented parts that had become worn
or spent, in order to preserve the utility for which the
article was originally intended.”
• Reconstruction – impermissible
– Reconstruction requires a more extensive rebuilding of
the patented entity.
– “The unrestricted sale of a patented article, by or with the
authority of the patentee, ‘exhausts’ the patentee’s right
to control further sale and use of that article by enforcing
the patent under which it was first sold.”
144
Jobs in Patent Law
145
Patent Law Jobs
•
•
•
•
•
In-house Counsel
Outside Counsel
Patent Agent
In-house Facilitator
Patent Examiner
146
In-house counsel
• Primary Responsibilities
• One of few or one of many
–
–
–
–
–
–
–
Drafting and prosecuting applications (?)
Managing outside counsel
Working with patent committee
Working with inventors
Determining patent strategy for company
Monetizing IP
Design around efforts
147
Outside Counsel
• Primary Responsibilities
– Drafting and prosecuting applications
– Preparing opinions
– Drafting and negotiating license
agreements
– Litigating patents
– Working with in-house counsel
– Rainmaking
148
Patent Agents
• Primary Responsibilities
– Drafting and prosecuting applications
– Provide specialized technical knowledge
to drafting patent attorneys
149
In-house Facilitator
• Primary Responsibilities
– Assist inventors with identifying new
inventions
– Obtain disclosure regarding new
inventions
– Preparing invention disclosures for new
inventions
– Work with in-house counsel, outside
counsel, and inventors
150
Patent Examiner
• Primary Responsibilities
– Examine patent applications in a
technical field
151
Program
Completed
All course materials - Copyright 2002-12 Randy L. Canis, Esq.
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