Posts Tagged ‘patent examination’

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By: Mark R. Malek

My last article discussed the possibility of obtaining a patent, but that the patent may still infringe on the claims of an existing patent.  Yes, this is a rare situation, but one that is possible nonetheless.

The scenario that was laid out in the last article indicated that you have invented a chair with five legs.  The clear advantage is that this chair is much more stable than the typical chair that you normally sit on with four legs.  You have now filed a patent application on your chair with five legs.  During the examination, the Examiner has cited a chair with four legs as prior art.  Although the Examiner allows your patent, the Examiner indicates in the “reasons for allowance” that none of the cited prior art discloses the advantageous fifth leg and, therefore, the claims in your patent application define over the cited prior art.

Fantastic – you now have a patent.  You now also start manufacturing and selling your chair with five legs.  All of a sudden, you one day receive a letter from the owner of the patent on the chair with four legs.  The patent owner is accusing you of infringing on the claims of the patent, and instructs you to cease & desist from further infringement.  The letter explains that your chair, although it has five legs, still infringes on the claims of the patent.  It goes on to specifically indicate that your chair has four legs, and other stuff, i.e., a fifth leg.

Now you must engage in an investigation to make sure that the claims of the letter are founded.  You probably go to your favorite website on intellectual property, Tactical IP, or even your other favorite website on intellectual property, LegalTeamUSA, you will read one of my articles about what it takes to infringe a patent.  In the above article, it was noted that in order to infringe a patent, you must meet the claim limitations of at least one of the claims.  In other words, your invention has to include all of the elements of at least one of the claims in the patent.  You quickly figure out that your chair with five legs does meet the claim limitations.  Now what?

Now you engage in some sort of settlement negotiation that will hopefully end in a mutually beneficial license for you to continue manufacturing and selling your very lucrative chair with five legs.  You also do some investigation into the success of the patent on the chair with four legs.  Perhaps there is a cross licensing opportunity here.  I will discuss cross licensing in another post.  In short, cross licensing is where you grant a license to the owner of the patent on the chair with four legs a license to your patent so that the four leg chair patent owner can make chairs with five legs, and the four leg chair patent owner grants you a license so that you can continue to manufacture and sell your five leg chair patent.  Much of this is also laid out in my article about the various ways to make money from your invention.

Now you are asking how this could have been avoided.  The answer is a clearance search – also known as a freedom to operate search.  These searches are quite thorough and quite expensive.  This is a really good article on patent searches on IPWatchdog.  I will go into more detail about clearance searches in another post.  Until then, happy inventing!

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By: Mark R. Malek

This is yet another article in the series of “questions that Mark Malek gets all the time when playing attorney at Zies Widerman & Malek.”  Every now and again, I get the phone call from a very creative person who has really gone above and beyond what most inventors do initially.  This person has laid out their invention in great detail, then has taken the time to do a little bit of prior art searching and, the following is the best part in the world – has actually taken advantage of a quick, free consultation that most patent attorneys offer (at least the ones at our firm do) to determine if they can move forward.

The details of the call are quite interesting, generally.  Normally, the client has identified a piece of prior art, and has figured out that their invention has every element identified in the patent that they have located, but that their invention adds a little bit more to it.  Now what?  Recall my article a couple of weeks ago where I indicated that it is perfectly acceptable to design around a patent.  There is a discussion about the steps you need to take to design around a patent during our conversation.  The thing is, however, that you can’t design around a patent by simply adding to it.

For example, let’s say that there is a patent out there for a chair that has four legs, a seating surface, and a back.  Let’s now say that the invention in question is a chair that has five legs, a seating surface and a back.  Let’s also assume that there is no other prior art out there that is at all related to this technology.  As my movie-quoting partners would now say “and then the space ship lands.”  Yes – that is a quote from one of the best comedies of all time, “City Slickers.”  Back to the story, however, the question to be answered now shifts around where does the inventor on the phone stand?  Has this inventor come up with something patentable?  Does this new invention read on the patent for the chair with four legs that the inventor uncovered?  The answer to both is YES!

Big help I am, right.  Here is the thing about it.  The invention for the chair with five legs still incorporates all the limitations of the patent on the chair with four legs.  Therefore, one cannot make the chair with the five legs without infringing on the patent on the chair with four legs.  Here’s the real rub – the invention on the chair with five legs may still be patentable.  Put your self in the Examiner’s shoes for a second.  The Examiner may have on his/her desk a patent application for a chair that has five legs.  During the Examiner’s prior art search, the only thing that shows up is a patent for a chair that has four legs.  The Examiner cannot seem to find any related prior art that is related to any five-legged device.  Therefore, the Examiner may decide to allow the case.

The next two articles that I will put up are related to this situation.  The first will be an analysis of the situation where you have a patent, but you may still be infringing on another patent – does having a patent gives you the right to manufacture the device that is covered by the patent?  The next article that I will post is directed to options when your patentable invention infringes a patent.


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By: Mark R. Malek

As many of our readers know, there is a somewhat significant backlog in patent examination right now. For example, the average time to get a patent allowed now is about 33 months.  You can reference the patent dashboard for more information.  I know that this sounds terrible, but it is a huge improvement, and things are going the right way.  For example, the patent backlog is down to 657,000 now – which is significantly lower than the 900,000 that I remember.

There are ways to try to shortcut the long wait associated with with the patent examination process, provided that the Applicant meets certain criteria.  I will be writing about many of these options over the next several posts, but the one that I wanted to discuss first is based on the age of the inventor.  Inventors over the age of 65 can advance examination of their patent application out of turn.  This is outlined in the Manual of Patent Examination Procedures (MPEP) Section 708.02.  Maybe it is because I am getting older, but I just don’t think that 65 is that old, but if the Patent Office sees fit to provide a benefit to inventors over the age of 65 – take it!

So what exactly does it mean to file a petition to make special?  In short, the Patent Office is offering to grant “special status” to an application that has a named inventor that is over the age of 65. Imagine that a patent Examiner’s desk might have a stack of papers on it that is about 3 feet high.  That stack of papers represents patent applications that still need to be examined.  Now imagine that the application you just submitted is on the bottom of that stack.  After the Patent Examiner receives the approved petition to make special based on the age of the inventor, your application is taken from the bottom of the stack and put right on top.  This is a very simplistic explanation, but this type of petition will likely provide an examination that lasts only about a year.

The biggest advantage to this type of petition is that it is completely free.  Once you receive a filing receipt, simply fill in the form and file it.  Another huge advantage is that this type of petition is automatically processed.  In other words, there is no need to wait for the petitions branch at the Patent Office to make a decision on the petition (sometimes taking upwards of three weeks or so).  A really good write-up on the procedure is available from the Patent Office here.

This petition can be submitted even if just one of the inventors on a patent application is over the age of 65.  It is imperative, however, not to try to trick the system.  Please do not just name someone who is over the age of 65 as an inventor for the sake of filing the petition.  This will likely lead to all sorts of headaches down the road when trying to enforce the patent.  For example, you do not want to run into an accusation that you have committed fraud on the patent office by naming someone over the age of 65 as an inventor when they truly are not an inventor. This could lead to invalidation of your patent.  In order to be named an inventor, one has to have had something to do with at least one of the claims that are allowed in a patent application (more on this in a future post).

As I will discuss in later posts, there are several other ways to accelerate examination of a patent application, but none as convenient, fast, and hassle free as a petition to make special based on age.

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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.


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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.




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