Posts Tagged ‘patent application’

Supplementing A Patent Application Disclosure With Prior Art Uncovered During Prosecution of A Related Patent Application

Sunday, 19 February, 2012 10:13 Written by Mark Malek 0 Comments
Share via email

By: Mark R. Malek

I recently posted a couple of articles directed to the duty to disclose prior art to the Patent Office during the prosecution process of your patent application.  The articles can be found here and here.  As we know from these past two articles, the duty of disclosure is vital in the patent application process, and the duty to supplement that disclosure is even more vital.  Simply because new prior art has come to light after the Applicant has already made an initial disclosure to the PTO does not relieve the Applicant from supplementing the disclosure with the newly discovered prior art.

There is a particular case that arises when an Applicant may have more than one patent application pending.  Sometimes, different Examiners may examine multiple related applications.  Of course, each Examiner may have a different search strategy and may uncover different prior art.  The examination of a patent application must be kept completely confidential.  Confidentiality of patent applications is generally outlined in 35 U.S.C. 122.  It is not as though an Examiner on one case will seek out the Examiner of a related case to go over the prior art that they have uncovered and compare notes.

The scenario that we are dealing with here can be laid out with an example.  Suppose Application #1 being examined by Examiner #1 has claims directed to elements A, B, C, D & E, and that Application #2 being examined by Examiner #2 has claims directed to elements A, B, C, F & G.  Now suppose that Examiner #1 issues a notice of allowance and indicates that no prior art reference was found that disclosed element C.  Now also suppose that around the same time, Examiner #2 issues a rejection of Application #2 and provides a prior art references that discloses element C.

Anyone see the issue yet?  The Applicant now knows of prior art that would cause Examiner #1 to issue a rejection of the invention set forth in Application #1.  If the Applicant does not disclose the prior art that Examiner #2 cited, then Application #1 will likely proceed to issue.  Is it valid?  Well – until someone else challenges it, then it probably is.  This scenario wouldn’t be tested, however, until the Applicant tried to enforce Application #1 against a potential infringer.  You can guarantee that the potential infringer, when faced with an accusation of patent infringement, will do every bit of investigation possible into the prosecution history of the application to ensure that the prosecution was proper.  Upon figuring out that the Applicant failed to disclose prior art from one application in the prosecution of another application, the door to invalidity has been opened.

To summarize, the duty of disclosure of relevant prior art cannot be overstated.  No matter how the prior art was discovered, and no matter when the prior art was discovered, the Applicant MUST fully disclose it to the PTO during prosecution of the application.

 

How Do You Amend Your Patent Application After Allowance?

Friday, 10 February, 2012 09:24 Written by Mark Malek 0 Comments
Share via email

By: Mark R. Malek

As has often been the case with some of my articles in the past, I like to introduce little practice tips as something interesting happens in my day to day life of prosecuting patent applications.  This past week brought me something interesting.  I received a call from an Examiner on a case that was already allowed.  This was a great case because I was dealing with an Examiner that really tried to take every possible step to help find allowable subject matter and place the application in condition for allowance.  It was not like some he examinations of the past where I was up against an Examiner that was in a rush to issue a Final Office Action.

Needless to say, however, I was a little tense when I received a call from an examiner on a case that was already allowed. As it turned out, the Examiner noticed that the serial number in the reference to the parent application was incorrect. No, that is not a typo – I am referring to the previous case upon which this case relied.  This application was a continuation-in-part application, which allowed our client to claim the benefit of the previously filed application (another post will follow shortly on continuation and continuation-in-part applications). The serial number that was referenced in the application was off by one digit. The issue, however, was that prosecution of the application was already closed. The Examiner had mailed a notice of allowance. After a notice of allowance is mailed, there can be no more amendments to the application. There is, however, a mechanism to make corrections to an application that has already been allowed, but for which the issue fee has not been paid.

The mechanism that allowed us to amend the application after the notice of allowance has been mailed is found in 37 CFR 1.312.  This section of the regulations allows for the introduction of an amendment to the patent application after the mailing of a notice of allowance.  Section 714.16(d) of the Manual of Patent Examining Procedures (MPEP) which, of course, is the bible of patent prosecution, outlines the steps necessary to amend an application after the notice of allowance has been mailed.  In short, you just have to be sure not to introduce new subject matter.  In this particular case, we were merely correcting the serial number of the parent application, so no new subject matter was added.

If the issue fee had already been paid, there is another mechanism to correct a patent. This is found in Section 1400 of the MPEP.  The only downfall of this section is that the correction is not actually made to the patent itself. Instead, a certificate of correction is attached to the patent indicating the correction that has been made. I will write more about certificates of correction in a later post. In the meantime, I just wanted you have some information regarding another practice that that I came across this past week.

Duty of Disclosure During Patent Prosecution and Supplementing the Disclosure

Friday, 03 February, 2012 14:01 Written by Mark Malek 0 Comments
Share via email

By: Mark R. Malek

You may recall that I wrote an article recently which noted that there is a duty of disclosure when filing a patent application in the United States.  For the sake of a quick summary, in return for the exclusive right to exploit an invention, the government requires the Applicant to disclose all prior art known to them in order to ensure a more detailed examination of the patent application.  In other words – no hiding the ball on the Patent Office.

The process in which information is disclosed to the Patent Office is by filing an Information Disclosure Statement (IDS).  The IDS includes a list of all the prior art references that the Applicant believes are relevant to the invention, as defined by the claims in the patent application.  There is a lot of prior art out there, and the best that every Applicant can do is to disclose the prior art that they know about.

The big question is about the prior art that the Applicant discovers after filing the IDS.  Is all lost?  Has the Applicant now committed fraud on the Patent Office?  That depends on how this is handled.  If the Applicant does nothing about the prior art that is discovered, then the likelihood that the patent stands up to a challenge of validity is very, very slim.  In fact, if it can be shown that the Applicant later became aware of relevant prior art, and chose not to inform the Patent Office, it is almost a foregone conclusion that the patent will be found invalid.  Worse yet, the Applicant may be found to have engaged in inequitable conduct, which can lead to liability for attorneys’ fees.

So how does the Applicant avoid this?  By filing a supplemental IDS.  It is exactly what it sounds like.  It is another IDS that supplements the original.  This is simple enough, and a good way to ensure that the Applicant has fulfilled the duty of disclosure to the Patent Office.

I Didn’t Respond To An Office Action and now My Patent Is Abandoned – Now What?

Friday, 27 January, 2012 08:36 Written by Mark Malek 0 Comments
Share via email

By: Mark R. Malek

If you haven’t noticed, many of my posts lately have revolved around the questions that I get from various clients.  This one was a tough one. Not necessarily from the perspective of not knowing what to do, but having to hear the horror story from this client.  Unfortunately, it is a horror story that I have heard numerous times. I received a call recently from someone that was going the patent process alone.  At least he was until he received a “Notice of Abandonment” from the Patent Office.  How could this happen?  All those years of hard work down the drain?  Is there anything he can do?  Yes.

First and foremost, the patent process is not a simple one.  There are several nuances, and the process itself is very unforgiving.  There really is not much room for error.  For example, the deadlines are real deadlines.  These are not suggestions.  It is not ok to submit something one day late.  That’s not going to cut it in the patent prosecution system.  The one great thing about the patent system, however, is that you always have plenty of time to respond to any issue that may arise during the patent process.

The initial findings as to patentability of your invention are usually contained in an Office Action, which is a decision on patentability as expressed by the patent Examiner.  Many times, Office Actions include rejections of the claims that define the scope of the invention.  There are several ways to respond to an Office Action.  For example, you may chose to amend the claims, add new claims, or simply present arguments to the Examiner as to why the claims as filed define over any prior art that was cited.  No matter what you decide to do, however, you need to respond to the Office Action within three months from the date that the Office Action was mailed.  This is generally the case – sometimes it is two months, sometimes it is one month, and there are always extensions of time that can be filed (for a fee).

As you have probably guessed, if you do not timely respond to an Office Action, the application goes abandoned.  This is outlined in 711.02 of the Manual of Patent Examining Procedures (MPEP).  Is that it?  Is all lost?  Not necessarily.  If your application goes abandoned, there is a mechanism to revive the application.  You can file a petition to revive the application, which is not at all cheap.  The same section of the MPEP mentioned above also outlines the two types of petitions to revive – a petition to revive because the application was unintentionally abandoned (the expensive, and more common one) and a petition to revive because the application was unavoidably abandoned (less expensive, but nearly impossible to prove).

Upon filing the petition to revive, along with the appropriate fee, the application will generally be revived by the PTO.  For a petition to revive an application that was unavoidably abandoned, you will need to provide some kind of story as to why the application was unavoidably abandoned.  For a petition to revive an application that was unintentionally abandoned, all you pretty much need to say is “my bad” and the petition will be granted.  Personally, I have only seen one petition to revive for an unavoidable abandonment that was granted.  In that case, it turns out that the Applicant never received the Office Action because it got stuck somewhere in  patent office mail room limbo.  How could you possibly have avoided that?  I have filed plenty of petitions to revive based on unintentional abandonment (these are for clients that have come to me with an abandoned application and a check), and these are generally very smooth and simple to get granted.

The Duty of Disclosure When Filing A Patent Application

Friday, 20 January, 2012 22:24 Written by Mark Malek 1 Comment
Share via email

By: Mark R. Malek

When people think of most areas of law, they generally picture an adversarial process.  In other words, most areas of law involve two parties in a dispute of some sort and each party having their side of the story that they want a judge (and sometimes a jury) to proclaim as being the correct side of the story.  That is not the case in the field of patent prosecution.  Although it may sometimes feel as though the patent Applicant is on one side of the fence fighting with the patent Examiner, it truly is not an adversarial process.  Instead, it can be better described as a cooperative process wherein the patent Examiner is working with the patent Applicant in order to determine the correct level of protection to be granted from the federal government.

In order to achieve this goal, patent law requires that a patent Applicant disclose the best mode of carrying out the invention, and disclose any prior art that they know of.  Many people come to me and indicate that they do not want to disclose everything about their invention, at which point I have a very serious conversation with the Applicant wherein I indicate that they must disclose all that they know about their invention.  The issue that many of the clients have, and I understand where they are coming from, is that they want to maintain some of their invention as a trade secret.  In patent law, that just about equates to having your cake and eating it to.

During patent prosecution, there is a trade off.  Essentially, the federal government will agree to grant you a right to exclude others from making, using, selling or offering to sell you invention in exchange for you disclosing everything you know about your invention, and also working with the patent office to ensure that the patent Examiner has all the relevant information in order to make a decision as to whether or not your invention is patentable.  This includes informing the patent Examiner of any prior art that you may know of.  That is regardless of whether or not the patent Examiner would have found the prior art during the search that is conducted during prosecution.

This article very much so simplifies the process, as well as the duty to disclose prior art, but there is one thing that I want to leave you with.  That is – your attorney is your ally in this process.  Your patent attorney should walk you through the process and should instruct you to disclose any information that could be considered prior art.  The risk you run of not disclosing relevant information is, in the worst case, invalidity of your patent and, in extreme circumstances, the possibility that a court finds that you engaged in inequitable conduct before the patent office, exposing you to potential liability.  The moral of the story is that you should never think it is a good idea to keep something from your attorney regarding your invention.  I will post additional articles about the importance of your relationship with your attorney and how the attorney-client privilege should encourage you to let your attorney in on everything that you know about your invention.

« Older Entries
Newer Entries »

FRIDAY, MAY 18, 2012

Bad Behavior has blocked 1146 access attempts in the last 7 days.