Procedure

Question 1

What was i4i about? What does Lichtman think?

Answer 1

patent has a presumption of validity that can only be overcome by clear and convincing evidence

Lichtman doesn’t like it because patent people don’t have a real chance to look through stuff and gives them too much deference

Question 2

After two rounds in the patent office, what happens? (4)

Answer 2

1. Pay another fee and keep playing
2. Give up
3. Can appeal
4. Allowance: get some now, and fuss later

Question 3

What are the two paths for appeal?

Answer 3

1. Commissioner: if something is procedurally wrong

2. Board of Patent Appeals and Interferences (BPI): for substance

Question 4

What is the BPI?

Answer 4

With three-member panel of senior members, who then send it back to (now angry) examiner

Question 5

What happens after appeal if you don’t win?

Answer 5

1. Can appeal commissioner in any District Court, and then to Federal Circuit
2. Can appeal BPI, to District Court of Columbia (if part procedural (?)), or direct to the Federal Circuit if only about the legal issue

Question 6

What are the three ways to fork your application?

Answer 6

1. Continuation in part: Part is a continuation, and part is new stuff
2. Continuation: New claim language
3. Divisional: Create a family of patents; Have done the original applicaiton, but now you think there are separate inventions in that one invention, can divide up

Question 7

What are the five reasons you come back to patent office after your patent has been issued?

Answer 7

1. Typos
2. Disclaimer: Turning back in rights that the patent holder was given
3. Double Patenting: Just disclaim the extra years that you would have otherwise gotten
4. Re-issue: Bring your own issued patent back, rip it up, make new claims or whatever; usually to prepare a patent for litigation; can only do within 2 years of issuance
5. Re-examination: When somebody else sends your patent back

Question 8

What are intervening rights?

Answer 8

If your new patent after reissue covers something that your old patent does not, then the litigant can argue that I was using what you now claim, but not what you did claim: there’s a bunch of case law (let’s them continue but pay, or let them off scott-free)

Question 9

What are the two types of re-examination?

Answer 9

1. Ex parte: third party asked that patent be reexamined, but that’s it
2. where some third party asked that your patent be reexamined, and they stay involved

Question 10

What is the standard in re-examination?

Answer 10

No deference to old decision

Question 11

What are the AIA’s two new procedures?

Answer 11

1. Brand new inter partes (better judges; expedited)

2. Post grant opposition

Question 12

Why hasn’t re-examination been the dream?

Answer 12

1. Only certain patents are eligible for reexamination
2. Largely run by the same people who run the examination process, and these people want patents to survive
3. Procedural: not allowed to take multiple bites of the apple; rather do it in court, where you can gather evidence in another way, with different decision makers

Question 13

Does eBay apply to the ITC?

Answer 13

No, they say importation ban isn’t an injunction; don’t have to do four part test

Question 14

What’s the benefit of the ITC? (3)

Answer 14

1. They are really fast
2. Don’t have to deal with damages
3. Expert judges