PATENTS Prosecution and Infringement

PATENTSPATENTS Prosecution and Infringement Prosecution and Infringement

Victor H. Bouganim

WCL, American University

Victor H. Bouganim, WCL, American University, Spring 2001

Filing an ApplicationFiling an Application“An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.”

35 U.S.C. Sec. 111(a)(1)


Application ProcessApplication Process Prosecution: the administrative

process through which an inventor acquires a patent.

Inventor may prosecute his or her own application, but usually seeks assistance of patent attorney or agent.

Discussion between inventor and attorney, where attorney obtains full description of invention.

Attorney conducts search of prior art to determine novelty and nonobviousness of invention.

Attorney assists inventor with decision to file a patent application.

If decision made to file, attorney initiates prosecution with the filing of patent application in the PTO.


Patent ApplicationPatent ApplicationNon-provisional Specification (Sec. 112)

– Written Description – Claim: a formal statement

describing the novel features of an invention and defining the scope of the patent’s protection

Drawing (Sec. 113) Oath (Sec. 115) Fee (see A.I.P.A.)

Provisional Pursuant to Sec. 111(b),

does not require patent claims.

PTO does not examine provisional applications.

Considered abandoned after 12 months.

Provides inventor benefit of earlier filing date.


Describing and EnablingDescribing and Enablingthe Inventionthe Invention

Requirements Prove to the world that

the applicant was in fact in possession of the invention at the time of the application

Enable those skilled in the relevant art to make and use the invention

Restraints The mass of publicly

available information -- prior art

The actual work the inventor has done: the inventor cannot claim anything beyond it

The claims define the boundaries of a patent


The Incandescent Lamp PatentThe Incandescent Lamp PatentU.S. Supreme Court (1895)U.S. Supreme Court (1895)

Appellant alleged their patent for an electric light had been infringed by appellee, which used the Edison lamp patents.

An incandescent system consists, in part, of the passage of a current of electricity through a continuous piece of refractory material, which is a conductor of electricity. In the patent application, they made a broad claim for every fibrous or textile material for the conductor.

The Court held that the claims of the patent were “too indefinite to be the subject of a valid monopoly” and, thus, that the patent was invalid.


The Gentry Gallery, Inc. v. The Berkline Corp.The Gentry Gallery, Inc. v. The Berkline Corp.C.A.F.C. (1998)C.A.F.C. (1998)

Gentry’s patent disclosed a unit of a sectional sofa in which two independent recliners face in the same direction, with a console in between containing the controls for the recliners.

Gentry alleged that Berkline’s similar unit, consisting of a fold-down seat in between the two recliners, was infringing their patent.

The court stated that “claims may be no broader than the supporting disclosure, and…a narrow disclosure will limit claim breadth.”

In holding that the claims at issue in Gentry’s patent were invalid, the court noted that the inventor’s disclosure “unambiguously limited the location of the controls to the console.”


Examination of ApplicationExamination of Application“The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.”

35 U.S.C. Sec. 131


Examination ProcessExamination Process Upon receipt, PTO assigns

application a serial number and filing date--Priority Date.

Complete patent applications forwarded to appropriate Examining Group.

Application assigned to Examiner.

Examiner first considers whether application meets PTO’s formal requirements.

Examiner next conducts search of prior art.

Examiner then examines application.

Examiner, by Office Action, notifies applicant of status of application’s claims.

Applicant given period to respond to Office Action.


Office ActionsOffice Actions Prosecution basically takes

form of a negotiation between PTO Examiner and patent attorney.

Office Action identifies whether each claim has been rejected or allowed, and the Examiner’s reasons.

Applicant is provided with a period for response.

With a rejection, attorney will either assert that rejection was improper or amend the claims.

If Examiner remains unconvinced, will issue a second Office Action titled a Final Rejection.

If Examiner agrees application should become a patent, will issue a Notice of Allowance.


Options after Final RejectionOptions after Final Rejection Abandon application File continuing

application Seek review of

Examiner’s actions by filing a petition to the Commissioner

Appeal to Board of Patent Appeals and Interferences

Patent Application


In re VaeckIn re VaeckC.A.F.C. (1991)C.A.F.C. (1991)

Based on a combination of prior art references, the PTO rejected as obvious the claimed invention of genetic engineering for production of proteins toxic to insects.

Court’s analysis: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success.

The court found no suggestion in the prior art and no reasonable expectation of success.


Patent InterferencesPatent Interferences The PTO will call for an

interference when “an application is made for a patent which…would interfere with any pending application, or with any unexpired patent.” 35 U.S.C. Sec. 135

Interferences may also be “provoked” by patent applicants.

A count, the claim which the interfering parties share, constitutes the subject of the dispute regarding which party was first to invent.

If pursued, the interference becomes a “mini-litigation” within the PTO.

The Board awards priority of invention.


Griffith v. KanamaruGriffith v. KanamaruC.A.F.C. (1987)C.A.F.C. (1987)

This case involved a patent interference involving the invention of an aminocarnitine compound, useful in the treatment of diabetes.

Issue: whether the applicant, Griffith, established “reasonable diligence” to excuse his inactivity prior to reduction to practice.

The court rejected Griffith’s justifications for the inactivity: waiting for funding from outside the university and waiting for a certain student to matriculate in order to assist with the project.

The court held that Griffith failed to establish reasonable diligence.


Patent Issues: AppealsPatent Issues: Appeals

Fed. DistrictCourt

PTOExaminer

PTO Boardof Appeals

C.A.F.C.

SUPREMECOURT


InfringementInfringement Infringement Actions

– Literal Infringement

– Doctrine of Equivalents

– Defenses

Declaratory Judgment Actions

Reexamination Proceedings


Infringement ActionsInfringement Actions“Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

35 U.S.C. Sec. 271(a)

Literal Infringement

Doctrine of

Equivalents

Defenses


Literal InfringementLiteral InfringementLiability for: directly infringing a patent inducing another to infringe a

patent contributory infringement importing, selling or using a

product made abroad through a process protected by U.S. patent

making or selling certain components of a patented invention to be assembled abroad

Court’s Determination

The court looks to the claims in the patentee’s patent and determines whether the defendant’s alleged infringing matter falls within the description of the claims.


Doctrine of EquivalentsDoctrine of Equivalents If the defendant has made a

change, so that the matter does not literally fall within the wording of the claims, the defendant may still be liable.

The doctrine prevents another party from avoiding liability by making surface, insubstantial changes.

The defendant’s matter is “equivalent” to the patented invention, and thus infringes, if it performs substantially the same function in substantially the same way to obtain substantially the same result as the patented invention.


Festo Corp. v. Shoketsu Kinzoki Kogyo KabushikiFesto Corp. v. Shoketsu Kinzoki Kogyo KabushikiC.A.F.C. (2000)C.A.F.C. (2000)

Festo’s patents disclosed a cylinder device for conveying articles which contained a pair of sealing rings at each end.

The allegedly infringing patent disclosed only a single ring at one end. During prosecution, certain claims of Festo’s patents were amended in

response to an examiner’s rejection. The court held that any amendment, either voluntary or required by the

examiner, that narrows the scope of a claim for a reason related to patentability will give rise to prosecution history estoppel; and that no range of equivalents is available for unexplained amendments or an amended claim element that gives rise to prosecution history estoppel.


DefensesDefenses Experimental Use: allows for the unlicensed

construction and use of a patented invention for purposes of pure scientific inquiry.

Inequitable Conduct: failure to disclose material information or submission of false information, with an intent to deceive.

Patent Misuse: unreasonably extend the scope of the patent monopoly beyond what Congress intended.


Declaratory Judgment ActionsDeclaratory Judgment Actions Filed in anticipation

of litigation, or by accused infringers to challenge validity of an allegedly infringed patent.

Patentee will often file cross-motion for infringement.

Allows a party threatened with liability to adjudicate a contested matter promptly, limiting the unnecessary accrual of damages.


Graham v. John Deere Co.Graham v. John Deere Co.U.S. Supreme Court (1966)U.S. Supreme Court (1966)

Issue: whether the determination of the non-obviousness of a claimed invention as to prior art requires a case-by-case analysis of the scope and content of the prior art, the differences between the prior art and claims at issue, and the level of ordinary skill in the pertinent art.

The Patent Act of 1952 added the statutory non-obviousness requirement, which was a codification of judicial precedent.

The non-obviousness analysis involves examination of the factors listed above as well as several secondary considerations.

Under this analysis, the Court found the patents at issue in this case to be obvious, and thus invalid.


Reexamination ProceedingsReexamination Proceedings“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.”

35 U.S.C. Sec. 302

If the PTO determines that the this art raises “a substantial new question of patentability,” then it will reinitiate examination of the patent.


Infringement Issues: AppealsInfringement Issues: Appeals

SUPREMECOURT

DistrictCourt

C.A.F.C.


American Inventor’sAmerican Inventor’sProtection Act of 1999Protection Act of 1999


Subtitle C - The “First Subtitle C - The “First Inventor Defense Act of 1999”Inventor Defense Act of 1999”

Provides a defense against patent infringement charges for a party who had, in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of the patent, and commercially used the subject matter before the effective filing date.

The defense is limited to methods of “doing or conducting business.”

Establishment of the defense does not invalidate the subject patent.


Subtitle E - The “Domestic Publication of Subtitle E - The “Domestic Publication of Foreign Filed Patent Applications Act of 1999”Foreign Filed Patent Applications Act of 1999”

Provides for publication of patent applications 18 months after filing, unless the applicant requests otherwise upon filing and certifies that the invention has not and will not be the subject of a foreign-filed application.

Provisional rights are available to patentees to obtain reasonable royalties if others make, use, sell or import the invention during the period between publication and grant.

If the foreign-filed application is less extensive than that filed with the PTO, the applicant may submit and request publication of a redacted version by the PTO.

Provides a prior art effect for published patent applications.


Subtitle F - The “Optional Inter Partes Subtitle F - The “Optional Inter Partes Reexamination Procedure Act of 1999”Reexamination Procedure Act of 1999”

Establishes a reexamination alternative that expands the participation of third-party requesters by permitting those parties to submit a written response each time the patent owner files a response to the PTO.

Third-party requesters who choose to use this procedure will not be able to appeal adverse decisions beyond the Board of Patent Appeals and Interferences.

Further, they will not be able to challenge, in any later civil action, any fact determined during the process.


Other Provisions of the AIPAOther Provisions of the AIPA

Subtitle A: Protects inventors against deceptive practices of invention promotion companies.

Subtitle B: Reduces certain patent fees.

Subtitle D: Extends the term of patents to compensate for certain PTO processing and prosecution delays.

Subtitle G: Establishes the PTO as an agency within the the Department of Commerce.

Documents

PATENTS Prosecution and Infringement