US Patent Law: Procedure Flashcards
Types of applications
Provisional and Non-provisional
Provisional application
Before examination
Non-provisional application
During examination
Types of patents in the US
Utility (same as ours), Design, and Plant Patents
What is a provisional application equivalent to?
To the date of filing in UK.
What does a provisional application require?
A specification, drawing, and no need for claims.
What does a non-provisional application require?
Oath of inventorship, specification, drawing.
Who checks the application as filed?
The office of Initial Patent Examination
What does the office of initial patent examination do?
Assign a patent number and transfer to the technology centre who will examine the application.
Publication
After 18 months from filing date. Pre-2000 did not need to publish and gave rise to submarine patents, which remained hidden until they could be enforced against someone.
Types of Office Action
Final and Non-final
Non-final Office action
Examiner sees a problem during examination, and thus deals a non-final office action, to which the applicant or their representative may answer and try to correct in a response. Officer may submit further non-final office actions.
Third party observations
Third party can submit a printed publication, including a patent, and describe the significance of the document.
Final office action
When the examiner stops accepting ammendments, or considers is decision to be final a final office action is issued.
Responses to a final office action
Compliance or appeal to the Patent and Trademark Trial and Appeal Board (PTAB)
Rejection to an appeal
Can be further appealed to the US district Court for the Eastern District of Virginia (USPTO) and if not to the Court of Appeals for the Federal Circuit. Alternatively, a final appeal to the US Supreme Court can be granted (Very rare).
Alternatively can file a continuation application
Continuation application
Can have “another go” - pay new fees, but key to conserve the priority date.
Can put a different argument in the final office action.
This can be filed if:
- Continuation filed before earlier application is issued or abandoned
- The earlier application is a non-provisional application
- The two new applications must have at least one inventor in common
- No new matter may be added.
- The continuation application must comply with the disclosure requirements.
Divisional application
A divisional application at the USPTO arises where the examiner raises a unity objection (and so is different from a continuation application).
Patent term extension if
- The term of the patent has not expired before an application is submitted for extension
- The term of the patent has never been extended
- If submitted by the same owner of the patent
- The product has been subject to a regulatory review period before its commercial marketing or use (FDA approval)
If the patentee did not make use of the patent or did not advance its commercialisation, this will be subtracted from any period of extension.
Maximum period of patent term extension
5 years
Reissue - Error
USPTO can reissue a patent where there was an error. Cannot broaden protection more than two years after grant.
Problem as third party might have been using the claim before modification.
Ex parte re-examination
Administrative re-examination during the patents term to check its validity. Can be by patentee, a third party or the director.
Similar to original examination
Post Grant Review
Procedure conducted by three members of the PTAB.
Must be brought up within 9 months of grants by any person who may with to challenge the patent .
Covers all grounds which could render a patent invalid or unenforceable.
Threshold is lower for PTAB - as they don’t have an assumption of validity in the federal circuit.
Inter-parte Review
Brought before three PTAB judges. The grounds of challenge are narrower. Being novelty and non-obviousness based on printed prior art.
To bring a claim you must have a reasonable likelihood of success.
Difference between ex-parte re-examination and Supplementary examination
Not limited to printed literature and can include any information.
Allows the complaint of inequitable conduct (lying to patent office) in the agency, rather than in the courts.
