PATENT LAW Randy Canis CLASS 10 Prosecution 1

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 • • 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 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-in-Part (CIP) • Divisional • Provisional 24

Provisional versus Nonprovisional Provisional • Less preparation time Nonprovisional • More preparation time • Can not amend • Amendments are possible • No claims required • Must have at least 1 claim • Not examined • Examined • Informal • Valid for only 1 year; • More formal 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/fee 092611. 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 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 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 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 [p 639] 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

Mc. Kesson 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

Mc. Kesson 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

Mc. Kesson 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

Mc. Kesson 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. 3 d 1309, 1313 (Fed. Cir. 2006) 77

Mc. Kesson 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 seconductor 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 seconductor 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 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. 152