4/24/2013 Today Patent Prosecution Issues The relationship between - PDF document

4/24/2013 Today • Patent Prosecution Issues – The relationship between the specification and claims – Provisional Applications Obtaining a Patent: – Priority Patent Prosecution – Application Families – Foreign Rights – Ethical Obligations 46 47 The Specification Examples • An invention that is described but not enabled:  The specification must describe the invention – to – Application describes and claims a perpetual motion show “possession of the invention” machine – Application describes and claims a time travel machine  The specification must enable one skilled in the art • An invention that is enabled but not described: to make and use the invention, w/o undue – An application describes a genus of compounds and experimentation instructions for making species A, B, and C thereof; claims species D • The specification must set out the “best mode” of – An application describes a computer that uses a “memory” and describes RAM and ROM; claims a Flash memory practicing the invention 48 49 Enablement & W.D. In Examination Typical Application Examination • Typical flow  The specification is “frozen” after filing, with the 1. File application exception of the claims, which can and do morph during examination. 2. Examiner searches and finds prior art 3. Examiner files an Office Action, rejecting claims 4. Applicant distinguishes the prior art with:  Enablement and written description requirements • Argument e.g., the prior art does not teach X limit applicant’s ability to amend claims during • Claim amendments examination 5. If successful, application issues, else go to 2.  From a policy perspective, why is this a good thing? 50 51 1

4/24/2013 Bases for rejection Word of the Day • You can get a rejection for many reasons: • A new verb: “to read on” – Claims not novel • Claims may be said to “read on” prior art references , – Claims are obvious devices, processes, etc. – Claims are not enabled – Claims are not described • If a claim reads on a prior art reference, the claim is – (We’ll learn about more later…) invalid. • Today we will focus mainly on novelty: • If a claim reads on a device, the device infringes the – Is the claimed invention described by a single prior art claim. reference? 52 53 Reading claims Termination of Examination • When does examination end? To determine whether to allow a claim, the Examiner “reads” the claims on the prior art… – Issue: when the application issues… – Appeal: examiner’s decision can be appealed after he has Application twice rejected your claims Describes: A, B, C, D – Abandonment: an application goes abandoned when applicant does not reply to Office Action Prior Art Claims Reference 1 1. An apparatus Claim 1 reads comprising: on Reference 1 • When an application issues into a patent, it obtains a Describes A, B, and C. A, B, C presumption of validity, that can only be overcome 2. The apparatus of claim 1, further with “clear and convincing” evidence comprising D. What about claim 2? 54 55 Examination Amending Claims During Examination  Typical examination:  You can freely change claims during examination to, 1. Application discloses A, B, C, and D e.g. , narrow claims to define the invention over the 2. Claim to “A device comprising: A, B, and C.” prior art 3. Examiner rejects claim: Reference X shows a device  But, claims can only be modified within the scope of comprising A, B, and C. the specification! 4. Applicant narrows claim:  Lesson: make sure all variations and refinements are YES: “A device comprising: A, B, C, and D.” well disclosed, even if they are not initially claimed! NO: “A device comprising: A, B, C, and E.” NO: “A device comprising: A, B, and C, wherein C is yellow.”  The specification is your “war chest” of ideas and you want it to be full as possible at the outset… 56 57 2

4/24/2013 The Provisional Application Priority • A provisional application is not really an application: Prov. App Util. App 4/15/2010 4/15/2011 – No claims required – It is just a placeholder that lasts for a year, no examination Describes Describes A, B, C A, B, C, D – Low cost ($125/250) Which of these refs Claims – Useful to get idea on file quickly are prior A, B art? • Once an application is filed, you are “patent pending,” and free to disclose information that is Ref. A Ref. B covered by your filing Dated Dated 1/1/2010 1/15/2011 • You have one year to file a “regular” (non - Describes Describes provisional) application that claims priority to the A, B A, B, C provisional application 58 59 Provisional Pitfalls Priority • The same rules for written description and Prov. App Util. App Option 1: 4/15/2010 4/15/2011 enablement apply to provisional patent applications Swear – We can and do file PowerPoint presentations, brochures, Describes Describes behind the A, B, C A, B, C, D technical manuals, etc. reference – These materials sometimes do not enable the invention! Claims A, B • The fact that a provisional applications do not Option 2: Ref. A Ref. B require a claim does not mean they should not have Dated Dated Change the 1/1/2010 1/15/2011 one! claims Describes Describes How? A, B A, B, D 60 61 Continuation Priority Patent Families • While a “parent” patent application is still pending App #1 Patent #1 Note: The patent 4/15/2010 4/15/2010 (not issued, not abandoned), you can file: term is always 20 years from the – A continuation application that claims priority to the Describes Describes earliest filing date! A, B, C, D A, B, C, D parent application (This was not • Continuation gets the filing date of parent Claims Claims always the case!) A, B A, B – A continuation-in-part application that claims priority to the parent and adds new matter App #2 Patent #2 4/15/2011 4/15/2010 • CIP has two filing dates: the parent date and the CIP filing date Describes Describes A, B, C, D A, B, C, D Claims Claims • Always keep a continuation pending, if possible! A, B, C A, B, C 62 63 3

4/24/2013 International Considerations Patents: Foreign Rights  The US provides a one-year grace period  In general, you have one year from filing in country A to file in country B, provided both are signatories to  (Almost) no other country provides a grace period – the Paris Convention (most countries) any public disclosure prior to filing will result in a loss of rights  It is painful and expensive to file in dozens of countries, so...  The Patent Cooperation Treaty allows:  Lesson: If you hope to obtain rights in foreign countries, make sure you are on file before you  The filing of a "placeholder" application within 12 months of first filing disclose your invention  Then an 18 month grace period before entering foreign countries 64 65 Typical Foreign Prosecution Timeline New Developments • Three Track Examination: – Track 1: Prioritized examination • Pay $4000 / $2000 (small) / $1000 (micro) extra in filing First US PCT App Foreign fees Filing 3/15/2011 Apps 3/15/2010 9/15/2012 • Get a “final” answer in 12 months Describes e.g., – Track 2: Regular examination Describes A, B, C Germany A, B, C China – Track 3: Deferred examination Claims Claims England • Delay examination up to 30 months A, B A, B • Not implemented yet 66 67 Patents: Ethical Obligations Inventorship • An inventor is one who conceived of the invention as  Any individual associated with filing and prosecuting defined by at least one claim application have a duty to disclose all information • Conception = formation in the mind of a definite and that is known to that individual and that is material permanent idea of the complete and operative to the patentability of any claim invention  No obligation to search for information!  Who: Patent attorney, inventor, admin personnel • Invention is NOT reduction to practice  What: Publications, public uses or sales prior to • Inventorship can and does change during patent critical date prosecution (because the claims change)  Failure to disclose can render a patent unenforceable 68 69 4

4/24/2013 Searching Before Filing Searching • Often, doing at least some prior art searching prior • USPTO – Full text search: to filing is advisable – http://patft.uspto.gov/ • A quick search can be done using just your favorite search engine and the USPTO web site • Google • You may save yourself lots of time and money – http://www.google.com/patents • You are almost guaranteed to find something “in the • Free Patents Online ballpark” • A good patent attorney should be able to draft claims – http://www.freepatentsonline.com/ around the art • Lesson: Use the phone when discussing prior art 70 71 More About Patent Prosecution Takeaways • For published applications and issued patents, the • Keep good records of your invention “file history” is available to the public: • File early and often http://portal.uspto.gov/external/portal/pair • Provisional filings can be your friend, if used correctly – Preserve foreign rights • You can look up cases by patent number, application – Protect you where an NDA cannot number, etc. • Make sure your application sufficiently covers • You can find the file history by clicking the “Image variations, refinements, extensions File Wrapper” tab 72 73 5