Question

Patent Law

The company you co-own filed a utility patent application several years ago for a new product. The patent application contains an independent claim and four dependent claims each describing various features of the components in the independent Claim 1.

     Claim 2 depends on Claim 1, Claim 3 depends on Claim 2, Claim 4 depends on Claim 3, and Claim 5 depends on Claim 1. In the Office Action the examiner rejects Claims 1, 3, and 4, but allows Claims 2 and 5.

What options do you have to amend the claims to respond to the Office Action and what considerations do you use in deciding the best option? Be specific in showing which claim(s) become(s) the new independent claim and the sequence of the dependent claims in the amendment.

Answer 1

A patent is a legal document issued by the United States government to someone who has made a patentable invention. A valid and enforceable United States patent gives its owner the right to exclude others from making, using, offering to sell, selling or importing the patented invention within the United States, usually for 20 years from the date that the patent was filed (previously 17 years form the date of issuance).

The invention described in a patent is defined -- that is, limited -- by what patent law refers to as the “claims.” These claims usually consist of multiple parts, which are called “elements” or “limitations.” The function of a patent claim is not merely to outline or summarize what is shown and described in the patent, but, rather, to define the exact boundaries of the alleged invention. Claims appear as separate, numbered paragraphs at the end of the patent specification. It is the claims alone that determine whether a patent is or is not infringed. Claims have been compared to the description in a deed to land, which points out what the property boundaries are. Within those boundaries, one who enters without permission of the owner is a trespasser. Similarly, one who does not enter the claims, or boundaries, of a patent is not an infringer.

There are two types of claims: (1) independent claims, which refer to no other claim; and (2) dependent claims, which refer to a prior claim. A dependent claim consists of its limitations plus all of the limitations of the claim to which it refers. A dependent claim cannot be infringed unless the claim to which it refers is infringed.

Meaning of Novel, Non-obvious, and Useful in Patent Terms

New and Novel: For a United States patent the invention must never have been disclosed in public in any way, anywhere in the world, more than one year before the date on which the patent application is filed. In other countries, the inventor does not have a one year grace period.

Original and Non-obvious: An invention involves a creative, inventive step. When compared with what is already known, it would not be obvious to someone experienced in the subject matter, or would be unexpected or contrary to established theories or findings. Useful: This means that the invention must take the practical form of a machine, apparatus, device, diagnostic kit, pharmaceutical compound, it has to accomplish something of practical value to society.

A utility invention can fulfill any of the following definitions: a Kit for accomplishing a useful goal, a Method or Process of synthesis or production, a Machine, an Article of Manufacture, a Composition of Matter (such as a chemical compound), or an improvement of any of the above categories.

Design patents are for the new ornamental design of an article of manufacture.

Plant patents provide patent protection for any asexually reproduced distinct and new variety of plant.

2.1. Issued Patents

The term “patent” is derived from “letters of patents patent”; an open letter by which a sovereign entity conferred a special privilege or right on subject. The first recorded patent was granted to Filippo Brunelleschi in 1421 in Florence, Italy for an industrial invention. Since then countries have set their own rules to grant patents, including the duration, types of patents and filing rules.

An invention is a property right (an owned article of property that comes into existence the instant it is invented) for an invention granted by a government to the inventor. A United States patent gives inventors the right “to exclude others from making, using, offering for sale, or selling their invention throughout the United States or importing their invention into the United States” for a limited time.

Utility and plant patents are granted for a term that begins with the date of the grant and usually ends 20 years from the date the applications were filed. You must make the timely payment of the appropriate maintenance fees.

Design patents last 14 years from the date you are granted the patent. No maintenance fees are required for design patents.

The patent is a personal property: so it can be sold, assigned or transferred as determined by the owner. As such there can be disputes, in which case the authority or jurisdiction concerned has to mediate and investigate infringement. If infringement is found then a determination must be made to grant penalties to the violator and award damages to the rightful owner.

In the 1990’s the establishment of World Trade Organization set forth a common minimum set of rights that should be granted to all patent owners by governments, as well as a period of 20 years (from the date the application filed) as the term of the patent.

Inequitable Conduct

Every applicant for a patent has a duty of candor and good faith in dealing with the Patent Office and the Examiner handling his or her application. This duty of candor is important because the Examiner has only limited information available to determine the state of the art. The time available to the Examiner is also limited. Therefore, to prevent an applicant from obtaining a patent he does not deserve, the Patent Office requires full disclosure to the Patent Office of all information that is material -- in other words, important -- to an examination of the patent application.

This means that during the patent application process, the applicant and the lawyers involved with the application must not intentionally withhold or misrepresent material information concerning the alleged invention, as defined by the asserted claims. A breach of this duty is called inequitable conduct and renders the patent unenforceable.

To prove inequitable conduct, an accused must show, by clear and convincing evidence, that the patentee or the lawyers responsible for the applications that resulted in the patent withheld or misrepresented information that was material to the Examiner’s evaluation of the patent application and did it with an intent to mislead or deceive the Patent Office Examiner.

Intent

The accused must prove, by clear and convincing evidence, that the patentee or the lawyers responsible for the patent application withheld or misrepresented material information with the intent to mislead or deceive the Patent Office. Intent need not be proved directly because there is no way of scrutinizing the operations of the human mind. Therefore, one may infer intent from conduct or from acts substantially certain to accomplish a result, but one is not required to infer it. Any such inference depends upon the totality of the circumstances, including the nature and level of culpability of the conduct and the absence or presence of affirmative evidence of good faith. In considering evidence of good faith in failing to cite material information to the Examiner, the patentee must offer more than conclusory statements that the reference was cumulative of prior art already before the Examiner.


Balancing Materiality and Intent

As previously stated, one must determine whether the withheld information or misrepresentation satisfies a threshold level of materiality. One must also determine whether the conduct of the patentee or its lawyers satisfies a threshold showing of intent to mislead. If so, materiality and intent must be balanced.

The more material the withheld or misrepresented information is, the less stringent is the requirement to prove intent. In other words, withholding or misrepresenting a highly material piece of information requires a lower level of proven intent, thereby allowing you to find intent more easily. The converse is also true. In any event, one must balance these two factors to determine whether or not there is clear and convincing evidence both of the materiality and intent factors. If so, one should find that there was inequitable conduct.


Damages -- Generally

If accused products or methods infringe at least one of the asserted claims of the patents, and if such infringed claim are not invalid or unenforceable, the damages to be awarded for the infringement must be adequate to compensate the patentee for the infringement. The damage award should put the patentee in approximately the financial position they would have been in had the infringement not occurred; but in no event may the damage award be less than a reasonable royalty.

Like all types of property, IP is owned and can generate income. For this reason IP is considered an asset. It is often the result of investment and should generate a return of one sort or another. IP differs from other types of property because it has no physical form and comes into being because of human intelligence, creativity and imagination.

There are different types of IP each with its own unique laws. IP is sometimes divided into two general categories, “industrial property” and “copyright.” Industrial property refers to assets created primarily for the advancement of technology, industry and trade such as patents (inventions), industrial designs, trademarks, service marks, trade secrets and geographic indications of origin.1 The most common forms of IP are:

Patents: A patent is a legal document granting its holder the exclusive right to control the use of an invention, as set forth in the patent’s claims, within a limited area and time by stopping others from, among other things, making, using or selling the invention without authorization. For example, patents could be granted for a battery that efficiently stores solar energy indefinitely and without loss, a vaccine to protect against malaria or a new compound for transforming fish bones into agricultural fertilizer.

Industrial Designs: Industrial design protection allows its owner to control the exploitation of the ornamental shapes associated with products such as the stylish shape of a new sports car, the distinctive plastic casing of a certain type of computer or the shape of a soft drink bottle.

Patents may be granted to protect inventions that are new, involve an inventive step and are capable of industrial application.2 The patent has to be for an invention that works, or as it is put in some countries, the invention must be capable of being “reduced to practice.” Thus, a clever notion that cannot presently work (e.g. a time machine) cannot be patented. Different countries have different ways of expressing the criteria for patents. For example, patents must generally be technical in nature but not all jurisdictions have the same definitions for what is “technical” and what is not technical. The term of a patent is generally twenty years from the filing date of the patent application.

A patent gives its owner the right to exclude others from making, using, offering for sale or selling the invention or importing the patented invention into the country where the patent has been granted. In other words, a patent provides a property right that allows the owner to say who cannot use the invention protected by the patent. Anyone who is not the patent owner or who is not licensed by the patent owner and who manufactures, uses, imports, offers for sale or sells the patented invention is called an “infringer.” An infringer can be sued in court to force him to stop the infringement and to pay the owner damages.