The Congress shall have the power to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” Article 1 Section 8 C1.8
Federal law comes from a statute. Therefore it has to stem from the Constitution.
Enables people to be creative. By giving rewards.
Claim: what the inventor invented in one sentence.
Copyrights
The Mechanics of Prosecution
Preparation of Applications
Provisional Applications
Examination of applications
Examination and Prosecution
Formalities and search by the examiner
i. Each application is assigned to the appropriate art. And that person determines if it has the necessary elements:
1. written description
2. claim
3. any required drawing
Office Action
i. The communication in writing back from the examiner to the application.
Applicant’s Response
i. Needs to be within 6 months.
Reconsideration and Allowance
i. If the examiner is satisfied with the response he issues a notice of allowance to inform the applicant of allowance of the application.
Responses to Final Office Action.
i. Abandon the application
ii. File an appeal with the Board of Patent Appeals
iii. Take allowed claims and cancel others
iv. File a continuing application:
1. Continuing prosecution application: allows the awarding the constructive filing date of a qualifying predecessor application. Elements
a. Expressly refers to the prior application
b. Be filed prior to the patent issuing, abandonment, or termination of proceedings of the prior application.
c. Identify at least one inventor included in the prior application
d. Consist of the same written description as the prior application, with no new subject matter added.
2. Continuation-in-part is an application that has some subject matter in common with the parent but also has new subject matter.
3. Divisional application: divides up the application so that discrete inventions can be considered separately is a continuing application that is based on a parent application and has the same written description except that the claims differ, usually because of a restriction requirement.
Publication: each application for a patent shall be published promptly after the expiration period of 18 months from the earliest filing date.
i. Exceptions to publication
1. Abandonment
2. Request- no foreign filing
3. Rescission – subsequent foreign filing
Petition and Appeal
i. Examiner
1. Allowed
2. Rejected
a. Appeal to Board of Appeals Interferences.
i. Court of Appeals to the Federal Circuit
ii. District Court of District of Columbia (can add more evidence than just the file) de novo so it is like a new trial
1. Then can go back to Court of Appeals to the Federal Circuit.
Inventorship: A patent application ordinarily must be made or authorized to be made by the inventor.
joint inventors: have to have contributed to the conception of the invention. can be a joint inventor even though:
i. they did not physically work together or at the same time.
ii. each did not make the same type or amount of contribution
iii. each did not make a contribution to the subject matter of every claim of the patent.
Duration of Rights: 20 years from the date the application was filed.
Available Post Issuance PTO Proceedings
Certificate of Correction: 35 USC §254, 255
Disclaimer: 35 USC §253
Reissue: 35 USC §251,252
Reexamination: 35 USC §301-305:
Post Issuance Procedures
After the issuance of the patent the PTO loses it plenary jurisdiction to determine patentability.
Once a patent issues then the executive branch no longer has a say.
However there are 4 exceptions :
You have to plead them as an affirmative defense
1. Certificate of Correction: addresses minor typographical errors.
2. Disclaimer: if there was an invalid claim you want to get rid of without changing the other claims.
3. Reissue: allows the patent owner to correct an inadvertent mistake: not limited in scope as the others §251
Requirements
i. Unintentional or unavoidable
ii. Without deceptive intent.
broadening reissue
i. Need to satisfy the following conditions:
1.
sue:
i. Specification that does not fulfill requirements of §112.
ii. applicant has engaged in inequitable conduct during the original prosecution
iii. where the invention has been entirely anticipated under §102.
Reexamination: That should not have issued due to prior art. Then can file a reexamination of the patent. Ex Parte, Interparte
Is a procedure whereby the patentee or third party may request that the PTO reexamine any patent claim in view of cited prior art. Proceeding can be ex parte or inter partes. (anybody has the right to challenge the patent needs to bring before the office a prior art (only printed publication)
Elements required for reexamination
i. The statement should clearly point out what the requester considers to be the substantial new question of patentability.
ii. The request should apply the cited prior art to every claim for which reexamination is requested
iii. a copy of each cited patent or printed publication as well as a translation of each non English document is required so th atall material will be available to the examiner for full consideration
iv. a copy of the patent for which examination is requested should be provided in a single column paste-up format so that amendments can be easility entered and to ease printing
v. if the request is filed by a person other than the patent owner a certification copy of the request papers has been served on the patent owner must be included.
An ex parte decision is one decided by a judge without requiring all of the parties to the controversy to be present.
inter partes Lawsuits where all interested parties have been served with adequate notices and are given a reasonable opportunity to attend and to be heard.
