The Basics of Patent Prosecution
The federal government’s authority to grant patents arises out of Art. 1 § 8 of the U.S. Constitution: “The Congress shall have the power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” The main idea here is that the federal government grants patents to incentivize scientific innovation. The process of obtaining a patent is called patent prosecution, although it has no connection to the criminal law that one ordinarily associates with that word. Patent prosecution is generally a set of negotiations between an inventor (normally represented by a patent attorney), and a patent examiner at the United States Patent and Trademark Office (USPTO). Unlike other areas of law, patent prosecution rarely results in adversarial litigation.
The formal prosecution process begins with an application, and for utility patents, that is usually a provisional application. A provisional application contains a general description of the invention, but does not need to contain formal claims. Although a provisional application will not mature into a patent, it is an attractive option because it allows an inventor to establish a priority filing date for the invention with a fairly simple and inexpensive piece of paperwork. Establishing the earliest priority date possible is extremely important for patent prosecution, since it is not uncommon for more than one inventor to conceive of the same idea simultaneously. A provisional application holds an inventor’s place in line at the USPTO while allowing time to draft the formal claims. It also allows the inventor to use the label “patent pending” on the invention.
Once a provisional application is prepared, the patent attorney files it with the USPTO. Prior to March 16, 2013, the United States utilized a “first to invent” system, which meant that the first person to conceive of an invention and diligently reduce it to practice was entitled to a patent, regardless of when that person filed an application. This put the U.S. at odds with most of the rest of the world, which utilized a “first to file,” or “race to the patent office” system. To diligently reduce to practice meant that the inventor must have either built a working prototype of the invention or filed a patent application for it within a reasonable time of conception. A first inventor could not simply conceive of an idea and then sit on it while a second inventor got busy putting the idea into practice. The first to invent system often required that there be an adversarial, litigation-like hearing called an interference proceeding before the USPTO Board of Patent Appeals and Interferences to determine who conceived of the invention first. This was a highly involved and expensive procedure that had become increasingly unpopular in recent years.
In September 2011, President Obama signed the America Invents Act (AIA) into law, which moved the U.S. to a modified first to file system for patent applications filed on or after March 16, 2013. As John Villasenor at Fast Company explains, it works like this: Inventor A conceives of an invention in May, diligently reduces it to practice, and files a patent application in August. Inventor B independently conceives of the same invention in June and files a patent application in July. Under the AIA, Inventor B gets the patent because Inventor B filed first. However, public disclosure can change this analysis. Assume that Inventor A publicizes the invention before Inventor B files. In that case, Inventor A would be entitled to the patent even though Inventor B filed first. This is because the AIA grants a one-year grace period to inventors who make public disclosures of their inventions. That public disclosure holds the inventor’s place in line as long as he or she files an application within one year of the disclosure.
Once the provisional application is filed and the priority date is established, the inventor and the patent attorney will get to work drafting a non-provisional application, which contains a specification (a general description of the invention), drawings, and the formal claims. This is the application that will eventually mature into a patent. The most important parts of a non-provisional application are the claims, which describe in detailed legal language exactly what it is that the inventor is claiming that he or she invented. When drafting claims, a patent attorney normally tries to use terms that have a commonly understood meaning by those skilled in the art so as to satisfy the writing requirements of 35 U.S.C. § 112. If an attorney uses a term in a unique manner without a proper explanation, a court could very well interpret that term according to its standard industry meaning, potentially defeating an infringement claim. Claims are usually differentiated into a preferred embodiment and alternative embodiments. The preferred embodiment is a description of the creation and use of the invention exactly as the inventor intended, and is necessary to fulfill the best mode requirement of § 112. Alternative embodiments are different, possibly inferior ways the invention can be practiced. These alternative embodiments are included as a way of expanding the possible scope of the patent protection.
Upon receipt of the non-provisional application, the USPTO begins the examination process by assigning the application to an examiner who is an expert in the field of the invention. The examiner then commences a study of the application in order to determine its compliance with the patentability requirements, including a detailed search of prior art. After an initial examination and search, the examiner issues a First Office Action, wherein the examiner states what he or she believes to be patentable and raises any problems with the claims. Such problems could be that the claims are so broad that they are encompassing prior art or that the claim language is too vague to satisfy the writing requirements. The applicant can then argue why the claims should be allowed or can amend the claims to bring them into line with the examiner’s objections. The examiner will then issue a Second Office Action, either allowing the claims, rejecting the claims on new grounds, or rejecting the claims for the same reasons as stated in the First Office Action. Once an examiner has rejected a claim once, he or she has the authority to make further rejections final.
Thus commences a back-and-forth between the applicant and the examiner that goes on until the claims are allowed, rejected, or the applicant abandons the application. An application is deemed to be abandoned if the applicant takes longer to reply than what is requested in a particular office action. Depending on the complexity of the invention, this process can take months or, more commonly, years. The average time span between initial application and allowance is 24.6 months, but can be considerably longer (USPTO). Consider this in light of the fact that a utility patent has a lifespan of twenty years measured from the date of application, not the date of allowance. Prosecution can also be rather expensive. According to Quinn, a patent attorney’s fees alone for a moderately complex invention can be between $10,000-$12,500, plus fees to the USPTO. Given this expense, it is not surprising why large corporations receive more patents than small companies or individual inventors. (For more information on this topic, see our article Large Entities More Likely to Receive Patents).
When a patent examiner issues a final rejection of a claim, it is most often because the invention fails the novelty or non-obviousness requirements. However, a final rejection is not necessarily the end of patent prosecution, but only the beginning of the final stage of patent prosecution. Upon being faced with a final rejection, an applicant has several choices: (1) abandon the application, (2) convince the examiner to allow the application through a Request for Continued Examination, (3) appeal the rejection to the Patent Trial and Appeal Board and then to the U.S. Court of Appeals for the Federal Circuit (this is rare), or (4) file a continuation application.
A Request for Continued Examination (RCE) allows for prosecution of the pending application to be reopened. The filer pays an additional fee and continues to argue its case to the examiner. This is an attractive alternative to an appeal simply due to its being considerably cheaper. However, if any of the claims in the specification were allowed, a patent will not issue on any of them until conclusion of the RCE proceedings. Although there is no limit to the number of RCE’s one can file, there are continued fees associated with them, so the decision on the number of RCE’s to file comes down to the applicant’s desire for the patent and willingness to continue prosecution. Similarly, a continuation application is an application that has the same specification as the original application, but with new claims. This can be used after a final rejection as a way to continue to argue for claims that the examiner rejected. A continuation can be an attractive option because, unlike an RCE, it allows a patent to issue on claims that were allowed in the original application. The disadvantage of a continuation is that it is a new application that starts the prosecution process over from the beginning.
Most of our discussion thus far has concerned applicants negotiating with the USPTO in order to obtain a patent, but there are a number of other issues involving fights between competing applicants, errors in a granted patent, or newly discovered prior art that calls a granted patent’s validity into question.
Now that the U.S. is on a first-to-file system, a situation can arise where Party A files an application first and Party B files second, but Party B alleges that Party A’s invention is actually derived from Party B’s. This is called a derivation and is a descendant of the interferences from the first-to-invent days. The USPTO allows derivation arguments on the theory that a first to file system is fair only when the first person to file is the true inventor. When a dispute of this sort occurs, the later applicant can file a petition setting out all the reasons why it thinks that the prior applicant improperly appropriated the invention in question and must present evidence thereof, which can often be done by showing communications between the parties. The Patent Trial and Appeal Board can then institute an adversarial proceeding in which the parties present arguments and rebuttals, and are subject to cross-examination. If the petitioner succeeds in the derivation proceeding, the relief can be drastic. In some cases, the petitioner’s name can be added on to the prior application, and in others, the prior party’s name can be removed from its own application entirely and replaced with the petitioner’s name.
Occasionally, the holder of an issued patent will discover an error in it. These errors could be, for example, mistakes in the specification or claims that are too broad or too narrow. To solve these errors, the patentee may apply for a reissue. The reissue application cannot add new matter to the original patent, but the applicant is permitted to resolve errors in it, including broadening or narrowing the existing claims. If a reissue patent is allowed, the original patent is surrendered and the reissue patent is enforceable from the date it is issued until the date the original patent would have expired. One of the thornier consequences of reissue patents occurs when a patent is reissued with broader claims than the original. Often, these broader claims will subject third parties to infringement liability where the original, narrower claims would not. To remedy this situation, the USPTO allows an exemption from liability for persons who have made, used, or purchased products prior to the reissue that did not infringe the original claims, but do infringe the broader claims.
There is also a mechanism called a reexamination that allows the USPTO to reconsider the validity of existing patents if new prior art is discovered. Anyone can request a reexamination by bringing newly discovered prior art to the USPTO’s attention, including third-party members of the public. In this scenario, the requesting party submits a list of prior art and a statement explaining why it casts doubt on the patent at issue. If this evidence raises a substantial new question of patentability, the examiner can order a reexamination. From then on, most reexaminations proceed ex parte — a set of negotiations between the patentee and the examiner. The patent owner can file narrowing amendments to the patent that avoid the newly discovered prior art or can rewrite the claims entirely. Claims can be narrowed in reexamination, but they cannot be broadened. At conclusion, the examiner issues a certificate amending the claims that were held invalid, or, if all of the claims were held invalid and not capable of amendment, nullifying the patent.
