Posts Categorized: Patent Prosecution

Who Carries the Burden in IPR—And, Does it Matter?

The Inter Partes Review (“IPR”) proceeding, part of the America Invents Act, sets up a streamlined procedure for any party (“petitioner”) to challenge the validity of the claims of an issued patent, not in a court, but in the US Patent Office, generally at a much lower cost when compared to federal court. An IPR… Read more »

Practical Intellectual Property Practices for Corporate Clients

Imagine the embarrassment of having an email discovered during litigation where one of your employees exclaims that your new product probably infringes a competitor’s patent he has only just perused. Of course, it is sound business practice for companies to routinely review their competitors’ published patent applications and issued patents.    Armed with this information, your… Read more »

The Highway Goes Global

Followers of our newsletter are familiar with the evolution of the Patent Prosecution Highway (“PPH”), from bilateral agreements providing for the acceleration of a patent examination in the office of second filing after the office of first filing finds allowable subject matter, to PCT PPH which allows the same acceleration based on a favorable examination… Read more »

The Neglected Design Patent?

When people talk about patents, they generally mean a “utility patent.”  To date, over 8 million utility patents have issued in the United States.  In contrast, only about 680,000 design patents have ever issued.  Why that discrepancy?  It’s hard to fathom, especially after Apple Corp. recently won a $1.05 billion jury verdict for design patent… Read more »

The Proposed Unified European Union Patent System

by James H. Ortega

The European Patent Organization has been developing a unified European Union (EU) patent system, which will include both a unitary EU patent, issued from the European Patent Office (EPO), as well as a Unified Patent Court (UPC) system for harmonized enforcement of unitary EU patents. Although a specific date for implementation of the proposed UPC system has not yet been established, the unitary patent process will go into effect January 14, 2014, with the UPC system likely following sometime in later 2014 or 2015. Thus, despite the complaints regarding both of the new systems, the upcoming implementation of at least the unitary EU patent system requires patent practitioners involved in European patent practice to become familiar with the system in order to properly advise their clients.

Prior Art Recapture Under the AIA – What You Don’t Know Can’t Help You

by Colin P. Cahoon

Often overlooked when discussing the myriad changes wrought by the America Invents Act (AIA), 35 USC Section 102(b)(2)(C) deserves close scrutiny by any company that hires potential inventors or that enters into joint development agreements with third parties. This new provision created by the AIA provides such companies with a powerful tool for removing potentially harmful prior art from consideration by the USPTO against patent applications that such companies might file in the future. To work properly, though, 102(b)(2)(C) needs to be considered when negotiating a joint development agreement and when first hiring any new potential inventor employees.

Rudy, Rudy, Rudy!: Reducing Patent Fees for the Little Guy

by Bobby W. Braxton

It’s easy to root for the little guy.  Whether we are rooting for Rudy Ruettiger to take the field in Rudy, or for inventor Robert Kearns when he takes on Big Auto in the movie Flash of Genius (the Rudy equivalent for patent attorneys), we root for success stories.  A truly American success story is an invention that allows the smallest inventor to compete with the largest corporation.  Unfortunately, while individual inventors dream about inventing the next big thing, the costs and fees involved in filing a patent application often make these dreams prohibitively expensive.  According to the United States Patent and Trademark Office (“USPTO”), less than 20% of the patents granted in 2011 were awarded to so-called small entities, individuals or businesses with less than 500 employees.  How is the little guy supposed to compete?  The USPTO and the American Invents Act (“AIA”) have offered a few avenues to make it a bit easier for Rudy to get into the game.

Patent Filers: No More Swearing

By Yon S. Sohn, as featured in The Texas Lawbook

New Year’s resolutions are made to be broken. But on March 16, the America Invents Act (AIA) will come to aid inventors and corporate R&D departments to keep their resolution to not swear anymore.

Of course, we are not talking about profanity but rather the practice known as “swearing
behind” or antedating the date of invention when procuring a U.S. patent. But first, let us cover a little background before further discussing this no-more-swearing law.

USPTO Announces Dallas Satellite Office Location

By Yon S. Sohn

Today, the U.S. Patent and Trademark Office (USPTO) announced the site of its Dallas Regional Satellite Office. (See the official press release here.) It is to be located in the Terminal Annex Federal Building on Houston Street, south of the Dealey Plaza, and it will be in the heart of the Dallas’s legal epicenter with George Allen Courthouse as its next-door neighbor.

Implications of New First-To-File Rule

By James R. Gourley

The patent regime of the United States was set up by Congress to enable innovators to protect their ideas through monopoly ownership for a limited period of time. Because there are almost always many different individuals and groups working on solutions to problems that exist in the marketplace, it is not uncommon for several different people to independently arrive at the solution around the same time.

In this scenario, under the “first-to-invent” system currently used by the United States, the patent monopoly will generally be granted to the first inventor, even if a later inventor was the first inventor to file a patent application. Such an outcome is unique to the United States, as every other industrialized country uses a “first-to-file” system in which the patent monopoly is awarded to the first inventor to file.

Procedures for Opposing Issuance of Patents

By Yon S. Sohn

One of the new features of the AIA is the Post-Grant Review (PGR), often referred to as a third-party opposition. PGR allows any party to challenge any new or reissue patent.

Starting with patents issued having a filing date on or after March 16, 2013, an opposer will have a nine-month window to submit to the Director of the Patent Office a petition to cancel one or more claims on the basis of invalidity. Compared to ex parte or inter partes reexaminations previously available, PGR allows a broader scope of information to be used as evidence, including patents, printed publications, commercial sales, and public use.

Need for Speed? – Think Prioritized Examination

By Bobby W. Braxton

If asked how quickly would you like obtain a patent, most inventors would reply “now.”  Unfortunately, due to a large back-log at the USPTO, applications often wait two or more years before they are even examined by an Examiner. The America Invents Act now provides for Prioritized Examination (“P.E.”), which can significantly reduce the wait.

AIA Rolls Out New “Virtual” Patent Marking Provision

By Zach W. Hilton

U.S. patent law has long required that patent owners and any licensees mark products they sell with the patent number of any patents covering such products in order to recover pre-suit damages resulting from infringement.  Until the passage of the America Invents Act (“AIA”), compliance with the patent marking statute required that a list of patents appear on a covered product itself, although it was sometimes sufficient to mark the product packaging.  In either case, compliance with the marking statute led to increased manufacturing costs as it was often necessary to retool product molds and/or redesign packaging as additional patents were deemed to cover a product or as patents expired.  The end result was that patent owners were placed at a competitive disadvantage.

The Patent Prosecution Highway Takes a New Direction

By Colin P. Cahoon

In a prior article, we reported on the Patent Prosecution Highway (“PPH”) program developed to promote fast-track patent examination procedures and allow patent offices from around the world to take advantage of work already done by other offices. The PPH was one of the initiatives that was undertaken by the USPTO to help with the always increasing load of patent examinations.

The USPTO Count System: Using the Count-Carrot to Your Advantage

By Bobby W. Braxton

Everyone knows that there are times that are better than others for obtaining good deals.   One of the best times to buy a new car is at the end of the month when the car salesman is desperately trying to reach his or her quota for the month. Better deals can be had on retail items after the holiday season. Likewise, there are times when it is better to negotiate with the United States Patent and Trademark Office (USPTO) during the prosecution of a patent.

A patent examiner’s perfor

The Evolving Effect of Working Requirements in Foreign Jurisdictions

By Amanda K. Jenkins

The patent rules of many foreign jurisdictions contain working requirements. A working requirement is the requirement that, after a certain number of years, the patented invention be worked on a commercial scale in the country. The effect of these requirements has evolved in the last few years in many countries due to amendments to their patent laws.

Strengthening Your Patent Portfolio Through Reexamination

By Zach W. Hilton

In recent years, the United States Patent and Trademark Office (“PTO”) has been plagued with a substantial backlog of pending patent applications awaiting examination. The PTO reports that it now takes a little over two years on average to provide an applicant with a first office action. As a result, the PTO has been under increased pressure to accelerate the examination process.

Ding-Dong! The Witch of Patent Reform is Dead…Or is She?

Many in the patent community are singing the joyous news that the Patent Reform Act of 2007 is dead. Recent events in Congress lead to this conclusion. The departure on May 1, 2008 of the former Solicitor of the U.S. Patent and Trademark Office, John Whealan, from his temporary position with Senate Judiciary Committee Chairman… Read more »

Patent Pending: A Label with Bark & Bite

By Bobby W. Braxton

You may have noticed the phrases “patented” or “patent pending” stamped onto various products without understanding the message, power, or responsibility that each phrase carries. “Patent pending” refers to an application wherein patent protection has been sought but a patent has not yet been issued. As it may take several years, depending on the technology, before a patent issues, there can be significant lengths of time during which the owner of an invention may sell a product embodying the invention without the benefit of patent protection.

Can I Patent My Teddy Bear?

By Colin P. Cahoon

Years ago a non-patent lawyer colleague of mine told me that he had been asked by one of his clients if it was possible to obtain patent protection on the client’s new stuffed animal design.  “There was nothing special about what the stuffed animal did or how it was made.  It just looked like, you know, a variation on a teddy bear.  The client wanted to know if we could get a patent on the look of this fluffy creation, and I said ‘No.’”  I informed my colleague that he needed to call the client back and revise his answer, because he had just given bad advice.

The PTO’s New Accelerated Examination Program—Heaven Sent or Pandora’s Box?

By Zach W. Hilton

In March, the United States Patent and Trademark Office (“PTO”) celebrated the issuance of the first patent under its new accelerated examination program.  This patent issued from an application filed on September 29, 2006.  Implemented in August 2006, the accelerated examination program allows an applicant to dramatically shorten the time an application spends in the examination process.