Issue No.09 - Sept. (2011 vol.44)
Published by the IEEE Computer Society
Brian M. Gaff , Edwards Angell Palmer & Dodge LLP
Catherine J. Toppin , General Electric Corp
DOI Bookmark: http://doi.ieeecomputersociety.org/10.1109/MC.2011.295
The third in a series of three articles provides basic points to keep in mind once you have successfully filed for a patent.
In the second article in this three-part series ( Computer, Aug. 2011, pp. 13-15), we listed 10 things to keep in mind while your patent application was pending before the US Patent Office. If you've ultimately convinced the patent examiner that your invention is patentable, the USPTO will send you a Notice of Allowance with instructions to pay the official issue fee (currently $1,510) within three months. The USPTO will officially issue your patent shortly after it receives the issue fee.
Congratulations—you've earned your patent! But before you celebrate, keep the following 10 points in mind to facilitate issuance of your patent.
Filing an Information Disclosure Statement (IDS) is the way to tell the patent examiner about "prior art." In general, prior art is published material that existed before your invention and is relevant to it. Your patent attorney typically files one or more IDSs while your application is pending to list the prior art for the examiner to evaluate while investigating your invention's patentability.
The USPTO requires that you fully disclose the relevant prior art of which you're aware in an IDS. Failure to do so could result in your patent being declared "unenforceable"—that is, worthless—at a later date. It's very important that you tell your patent attorney about all relevant prior art you are aware of and work with the attorney to ensure that the proper IDSs are filed.
It's common for an inventor who continues research and development work while an application is being prosecuted—that is, pending—to make additional discoveries that are related to the application. One way to apply for a patent on these discoveries is to file a continuing application. This is a new application, but as the name implies, it's related to the first application. You can usually file a continuing application quickly, but you must do so before your first patent issues. Consequently, consider whether to file any continuing application well before the deadline for paying the issue fee.
Checking Patent Term Adjustment
As described in the second article in this series, patent term adjustment (PTA) is the way the USPTO compensates for delays in prosecution. If your application experienced delays, the USPTO will calculate how much time to add to the life, or term, of your patent and send you a notice detailing the additional time. Carefully examine this notice for its accuracy and, if you disagree with the amount of time listed, promptly file your objection with the USPTO.
Ownership and Title
Before paying the issue fee, you should verify that your application's listed ownership, or chain of title, is correct. In the US, inventors own their patents by default. However, inventors who work for a company likely have an obligation to assign their patent applications and resulting patents to their employer. This allows the owner to add its name on the first page of the patent.
It's important that you work with your patent attorney to ensure that the proper owner is identified. An inventor who isn't the owner needs to sign an assignment document that is sent to and recorded at the USPTO.
Certificates of Correction
When the USPTO officially issues your patent, it will send you an impressive-looking "ribbon copy." This is a hard copy of the patent that's bound in heavy paper with a seal (the ribbon) on the front cover.
Read through the entire ribbon copy, paying special attention to the claims at the end. Typographical errors can occur, and it's important to identify each one. If an error is significant enough to require correction, file a Request for a Certificate of Correction with the USPTO. There is no charge for filing this request if the error is the USPTO's fault.
The USPTO requires that a patent owner pay a series of three maintenance fees during the patent's term. The fees are due 3.5, 7.5, and 11.5 years after the patent is issued and are currently $980, $2,480, and $4,110, respectively. Failure to pay any one of these fees on time will result in the patent being declared "abandoned." An abandoned patent cannot be enforced against an infringer.
There are procedures for paying an overdue maintenance fee and restoring an abandoned patent, but they're only applicable in limited circumstances. Those procedures won't work if an affirmative decision was made not to pay a maintenance fee. Give very careful consideration to any decision about nonpayment of a maintenance fee.
Sometimes an inventor realizes that an issued patent includes errors that are so significant that a certificate of correction can't remedy the situation. This can occur, for example, if the drawings or specification contain inaccurate information, or if the claims don't cover what they should have covered. The USPTO has a reissue procedure to handle this. To use this procedure, the patent owner surrenders the original patent and applies for a new one that incorporates the necessary corrections. The USPTO will examine the reissue application and, if satisfied with it, will reissue the corrected patent under a new patent number that has an "RE" prefix.
Reissue applications filed within two years of the issuance of the original patent are entitled to include new claims that are broader than those in the original patent. This can be important if you discover that a competitor has a product that could infringe your patent if the claims were slightly different. Make it a point to talk to your patent attorney at least once before the two years are up to determine if you can file a reissue application with new claims that could cover a competitor and further protect your invention.
Anyone—not just the inventor or patent owner—can ask the USPTO to reexamine an issued patent at any time. This is typically done because someone believes that prior art, especially prior art that the patent examiner didn't see during prosecution, is significant and could render the issued patent invalid. The inventor or patent owner could request reexamination to verify that the prior art will not invalidate the patent. A competitor could request reexamination in an attempt to invalidate the patent.
Regardless of who asks for a reexamination, if the USPTO grants the request, a new round of prosecution begins, typically with a different patent examiner. This prosecution, however, usually proceeds faster than the original prosecution. Although you're permitted to amend your issued claims during the reexamination, it's advisable to avoid doing so, or at least keep one claim unchanged. The USPTO will issue a reexamination certificate at the conclusion of the reexamination that identifies any changes made to the claims, including whether any of the originally issued claims were canceled.
Filing patent applications in foreign countries is a complex topic. US patent attorneys typically engage and manage "patent agents" in other countries to handle overseas filings and communications with foreign patent offices. If you've filed applications outside the US that are related to your newly issued patent, let the patent offices in those other countries know about the issuance of your US patent. This can carry significant weight in some foreign patent offices and may facilitate the issuance of foreign patents.
Once you have an issued US patent, the law entitles you to mark the corresponding patent number on items your patent covers. This marking provides notice to others that an item is protected by a patent. This can be important if patent infringement litigation results because the accused infringer will be deemed to have knowledge of your patent simply because its number was marked on covered items. This can increase the amount of money awarded to a patent owner when someone is found to have infringed a patent.
Over the past few years, there's been an increase in the number of lawsuits alleging "false marking," where the number of an expired patent continued to be marked on items. Recent changes in the law, however, have largely eliminated these suits, so risks associated with marking are generally minimal at this time.
Currently, several changes to US patent law are under consideration. One significant change is the proposed move away from the current "first to invent" system to a "first to file" system. The current system allows the applicant to prove that, under certain conditions, he or she was the first to make an invention even though someone else filed a patent application beforehand. The proposed system would automatically deem the first person to file the application to be the inventor. Until the law changes, however, keeping all of the records that describe your inventions is essential because they could be important when defending your patents.
After enduring the long journey from your invention to your issued patent, it may be tempting to "forget" about the patent and move on to other things. Don't do that. Check on the patent from time to time. Consider what your competitors are doing. Think about reissue applications. Consider licensing opportunities. Ensure that your maintenance fees are being paid on time. Above all, keep innovating and thinking about new applications you can file that reflect your hard work and perseverance.
Selected CS articles and columns are available for free at http://ComputingNow.computer.org.
Brian M. Gaff, a partner at the Edwards Angell Palmer & Dodge LLP law firm, is a senior member of IEEE. Contact him at firstname.lastname@example.org.
Catherine J. Toppin, a patent counsel at the Global Patent Operation of General Electric Corp., is a member of IEEE. Contact her at email@example.com.