Patents: A Glossary And Roadmap
Booth Albanesi Schroeder, PLLC, is prepared to guide you through all legal processes and requirements for obtaining and defending patents. We can explore your needs and assist with the following issues:
Patent Interference And Deprivation Proceedings
Inventorship can be challenged by instituting either a patent interference proceeding or a derivation proceeding with the United States Patent and Trademark Office (USPTO). The earliest priority date of a patent application determines which proceeding is available. If the earliest priority date is before March 16, 2013, (the date that America Invents Act’s first-to-file rules went into effect), an interference proceeding may be brought. Otherwise, a derivation proceeding is the appropriate proceeding to challenge inventorship. Both are administrative proceedings brought at the USPTO.
Interference scenarios generally arise where two parties apply for a patent that covers basically the same invention, whether the parties know each other or not. An interference proceeding is sought to determine which applicant is not entitled to the patent if:
- Both claimed the same invention in two or more pending patent applications
- There is at least one pending patent application
- At least one patent was issued within a year of the pending application’s filing date
Derivation scenarios typically arise when collaborations between two parties fall apart, and information shared by one party makes its way into the other party’s patent application. But it can also arise where one party has substantially copied another’s patent application and filed it as their own.
A party alleging that another derived the invention must prove that they:
- Conceived the invention claimed by another
- Communicated the complete conception of the invention to the other party
Because this proceeding must be instituted within one year after the disputed application is published, it is imperative to monitor published patent applications and issued patents for any that claim subject matter that you or one of your inventors developed. Aside from this being a best practice, it may be particularly important to monitor activity of former collaborators for the reasons discussed above. Booth Albanesi Schroeder, PLLC’s patent attorneys can help with monitoring such activity.
Utility, Design And Plant Patents
There are three types of patent applications:
- Utility patent: This is the most common type of patent, protecting the structure of a product or a method of using it. This also includes the discovery of a new method of using an old product or chemical compound. If you think about a wind turbine, the structure includes the component parts and the method steps that make the wind turbine function.
- Design patent: A design patent refers to the appearance of a product. This may include the design of a shoe or the dimensions of a smartphone.
- Plant patent: This patent protects the development of new, asexually produced plants. For example, a new and distinctive cultivar of a geranium plant may be protected with a plant patent
Reexamination, Reissue And Post-Grant Review Proceedings
Through ex parté reexamination, a patent owner (or a third party) may lodge a request for USPTO examination of an already-granted patent based on patents and printed publications that they bring to the USPTO’s attention.
Such a request can be filed at any time during the enforceability of a patent.
- The requester must establish that the submitted prior art establishes a substantial and new question of patentability.
- At that point, the USPTO will grant the reexamination request and order examination (that is, reexamination) of the patent in question.
This proceeding often arises where you or a potential licensee has discovered prior art that “clouds” the value of a patent, and you want the USPTO to have another look and clear up the issue.
Patent reissues are another avenue for correcting errors in an issued patent. If filed within two years after the patent is issued, broader claims can be sought. The reissue proceeding is handled by a patent examiner and is similar to a standard patent prosecution. However, critical differences between the two proceedings can lead to a poor outcome if they are not handled correctly. This is an area where Booth Albanesi Schroeder, PLLC’s patent attorneys provide significant value.
Our attorneys have extensive experience in appropriately broadening or narrowing patent reissue applications, and in protesting reissue outcomes, which is particularly helpful to clients who are preparing to enforce their patent through a patent infringement lawsuit.
Post-Grant And Inter Partes Review Proceedings
Booth Albanesi Schroeder, PLLC’s patent attorneys have extensive experience with both of the following proceedings and have generated very favorable outcomes for their clients.
Post-grant review is a trial proceeding at the Patent Trial and Appeal Board to review the patentability of claims on several grounds. The window for filing is only nine months after a patent grant or reissuance. The patent owner may file a preliminary response. If it appears “more likely than not” that at least one challenged claim is unpatentable, a post-grant review may be instituted. With the exception of “covered business method patents,” the post-grant review procedure generally applies to patents subject to the AIA’s first-inventor-to-file provisions — that is, patents issuing from applications having an effective filing date after March 16, 2013.
Inter partes review
Inter partes review is a trial proceeding to review the patentability of claims, but using only prior art consisting of patents or printed publications. It can be used as an alternative to litigating patent validity in federal district court. The process begins when a party other than the owner of the patent files a petition for review after the later of either: 1) Nine months after the grant or reissuance of a patent; or (2) The termination of any post-grant review.
Both review proceedings allow for discovery by the parties. The inter partes review procedure took effect on September 16, 2012, and applies to any patent issued before, on, or after that date.
Foreign And Patent Cooperation Treaty (PCT) Applications
The patent attorneys at Booth Albanesi Schroeder, PLLC, have extensive experience protecting inventions internationally. Many filing strategies are available, but the most common, and cost-effective, approach is to file an international application under the Patent Cooperation Treaty (PCT). The process for obtaining a patent via the PCT occurs in two parts, an international stage and a national stage.
During the international stage, a PCT application undergoes preliminary examination that helps an inventor decide whether and to what extent to pursue the invention in various countries. A PCT application does not issue as an “international patent” (there is no such thing). After about 30 months from the earliest priority date the PCT application must enter the national stage, meaning that a national application based on the PCT application must be filed in one or more member countries. The national stage application is fully examined and subsequently issued as a national (for example, China or Canada) patent.
A patent application may be filed directly in desired countries if an inventor:
- Does not need to delay costs
- Only wishes to file in a few countries
If the filing is based on a priority application, an inventor has 12 months from the earliest filing date to file in the target country, assuming that the target country is a member of the Paris Convention.