Problems arise when the company does not have an agreement by the independent contractor to assign inventions to the company.  In this situation, the independent contractor owns the invention even though the company hired the independent contractor.  The company may have a license or the right to use the invention due to the nature of the relationship between the independent contractor and the company.  However, the company cannot exploit the patent rights because the independent contractor owns the invention, not the company.  The company cannot license the patent rights to another, cannot file a patent application on the invention, etc.  As such, it is important to negotiate ownership terms with independent contractors before engagement.

In relation to employer-employee relationships, read Avoid Problems: Get an Invention Assignment Agreement.

You may also be interested in Conflicting Invention Assignment Clauses.

For more information, please feel FREE to contact me at (949) 433-0900 or James@OCPatentLawyer.com.

The following case illustrates whether a particular printed document can be considered a “printed publication” and how to determine when the document became a “printed publication”.  In In re Hall, a protest was filed in relation to the patent application at issue.  The protest is a document submitted by a third party explaining reasons that the Patent office should reject a patent application.  The third party submitted a doctoral thesis found in a German library.  The doctoral thesis was on point with respect to the invention.  The patent applicant conceded that the doctoral thesis would prevent the patent application from maturing into a patent if the doctoral thesis is a “printed publication” with an effective date more than one year prior to the filing date of the patent application at issue.

The Court held that the doctoral thesis became a printed publication when the library indexed the doctoral thesis.  Based on correspondence with the librarian which stored the doctoral thesis, the doctoral thesis was indexed, cataloged and shelved (i.e., publicly accessible) more than one year prior to the filing of the patent application based on the routine business practice of the library.  The Court affirmed the Patent Office’s rejection of the claims.  In re Hall781 F.2d 897, 228 U.S.P.Q. 453 (Fed. Cir. 1986).

Based on the foregoing case, even a remote paper with little to no circulation may be considered a printed publication.  Accordingly, when consulting with your patent attorney, you should disclose all types of publicly available papers related to your invention to your patent attorney so that any issues can resolved earlier than later.

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com.

After calcuating the basic patent term, the “Patent Term Adjustment” needs to be accounted.  Days may be subtracted from the basic term for delays caused by the patent applicant.  An example of a delay caused by the applicant is filing a response to an office action after its due date.  Days may be added to the basic term for delays caused by the Patent Office.  For example, days are added to the basic term if the Patent Office takes an excessive amount of time providing an initial office action.

The life of the patent may be shorter than the patent term discussed above if the patent owner does not pay the maintenance fees which are due at regular intervals throughout the term of the patent.  If the patent owner fails to pay these maintenance fees, then the patent will expire for failure to pay the maintenance fees.

The following case illustrates an aspect of calculating patent term in relation to Patent Term Adjustment.  Under current patent laws, the Patent Office must examine your patent application in a timely manner.  For example, an initial examination of a patent application must occur within 14 months after filing of the patent application.  Otherwise, any delays are added onto the patent’s basic term.  [“A” Type Delays].  Additionally, if a patent issues after three years from the filing date of the patent application, then the patent term is extended by the amount of time after the three year period.  [“B” Type Delays].

The “A” Type Delay extends the patent term if the “A” Type Delay occurs before the three year period.  If the “A” Type Delay occurs after the three year period, then only the B Type Delay is taken into consideration since there is an overlap between the two types of delays.  Weyth v. Kappos 2009-1120 (Fed. Cir. Jan. 7, 2010.  In Weyth, the Patent Office calculated 610 days of A Type Delay and 345 days of B Type Delay. Of the 610 days of A Type Delay, 51 occurred more than three years after the application was filed. Hence, there is an overlap of 51 days between the A and B Type Delays.  During the prosecution, the applicant caused 148 days of delay.  Hence, the patent term adjust should be 756 days, i.e., 610 (A Type Delay) + 345 (B Type Delay) – 51 (Overlap) – 148 (applicant delay).

The specific periods discussed herein are provided as examples.  To determine whether a patent is expired, many factors such as delays caused by the Patent Office or the Applicant or payment of maintenance fees are important.  If you need assistance regarding patent term, I recommend that you retain a patent attorney.

You may also be interested in Maintenance Fees.

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The provisional patent application is described as a lower cost option compared to the non-provisional patent application. The minimum requirements to file a provisional patent application are less than the requirements to file a non provisional patent application. For example, the provisional patent application does not require a claim set, a non provisional patent application does. Also, the governmental filing fee for the provisional patent application is about $400 less for a small entity.

Even though the requirements for preparing the provisional patent application are lower than a non provisional patent application, a full disclosure of the invention must still be made in the provisional patent application in the same manner that a full disclosure of the invention must be made in a non provisional patent application. The following case illustrates the harsh consequences of an inadequate disclosure in a provisional patent application.

In New Railhead Manufacturing, LLC v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002), the patentee sold a new drill bit for drilling rock formations. As allowed under Patent Laws, the inventor filed a provisional patent application within one year after the sale date. If the inventor had waited more than one year, then the inventor would be barred from seeking patent protection. More than one year after the sale date but before the provisional patent application was abandoned, the inventor filed a non provisional patent application claiming priority to the provisional patent application.

The claim of priority allows any patent maturing from the non provisional patent application to have the filing date of the earlier provisional patent application instead of the later filed non provisional patent application, but only for the information disclosed in the earlier filed provisional application. If the non provisional patent application includes additional information, then the claim of priority would be ineffective for that new information.

In New Railhead, the accused infringer alleged that the claims at issue in the patent should not be allowed to receive the benefit of the earlier filed provisional patent application by way of the claim of priority. The reason was that the patent’s claims required the drill bit to be angled with respect to the drill bit housing. Unfortunately, the provisional patent application did not disclose any angular relationship. The Court agreed and invalidated the patent since the filing date of the provisional patent application is now irrelevant and the new drill bit was sold more than one year before the filing of the non provisional patent application.

It is important that the provisional patent application include a full disclosure of the invention. Anything less and the provisional patent application may be ineffective at establishing a filing date of your claimed invention.

The majority of time spent on preparing a patent application is on drafting and revising typically the detailed description of the invention section and explaining the drawings. This material attempts to explain in full detail all of the various aspects of the invention. Although the provisional patent application is a lower cost option, it is still not a cheap option if done properly.

Also, websites offer assistance in filing provisional patent applications at very cheap prices. Based on my review of some of these websites, they lead you through a series of questions so that at the end of answering all of the questions, your answers are placed in a provisional patent application format. However, they do not appear to provide any legal guidance which is needed to guide you in deciding whether to file a patent application, what to disclose in the patent application and how to use the right words so that your invention is not narrowly construed.

Patent attorneys work at drafting broad patent disclosures, interpreting current case law, and providing a patent strategy based on our experience and knowledge. The online patent services that I have reviewed do not provide legal advice regarding the patent process.

Should you have any further questions, please feel free to contact me.

The following case discusses the requirements to plead inequitable conduct during litigation.  Although this case focuses on the procedural steps during litigation, it is important to understand the level of detail required to properly allege inequitable conduct so that one may properly gage the likelihood of success based on inequitable conduct either as the accused or the accuser.

In Exergen v. Wal-Mart Stores, Inc. 2006-1491 (Fed. Cir. Aug. 4, 2009), the accused infringer showed that the patentee had knowledge of a particular prior art reference material to the patentability of the invention.  The accused infringer alleged that the patent owner had the intent to mislead the Patent Office since the material prior art reference was not disclosed in the patent at issue.  The Court reasoned that one cannot reasonably infer an “intent” to mislead by merely failing to disclose a prior art reference.  The Court stated that the alleged infringer failed to provide specific factual allegations to show that a specific individual knew of material information and then decided to deliberately withhold the material information from the Patent Office.

Although the patentee avoided facing the allegations of inequitable conduct, the recommended course of action is to disclose all relevant information regardless of whether that information is material to patentability of the invention.  Generally, it is better to spread a wide net in deciding which information to disclose to the Patent Office and address the potentially fatal information before the Patent Office than to face charges of inequitable conduct during litigation.  The Examiner may decide that the potentially fatal information is inconsequential or not the closest prior art.  As a result, any patent issuing from your patent application is “presumed” to be valid over the information.  In this position, the patentee has a stronger patent.  Also, defendants will have more difficulty in successfully alleging inequitable conduct.

You may also be interested in Duty to Disclose.

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As background, in August of 2007, the United States Patent and Trademark Office published rules directed to continuation practice and claiming practice. The rules limited the number of continuation patent applications and claim that could be filed. The Patent Office allowed applicants to file additional continuation patent applications and claims by meeting certain requirements. The general feeling among patent attorneys was that the rules were too limiting and the requirements to file additional continuation patent applications and claims were onerous. Later in 2007, GlaxoSmithKline and Dr. Tafas brought suit against the Patent Office and sought a preliminary injunction to enjoin implementation of the rules which the court granted.

Since the preliminary injunction, the Federal Circuit decided that the new claim rules did not exceed the Patent Office’s rule making authority while the new continuation rules did. Also, the Patent Office has had a change in leadership who was well received by the patent community. David Kappos was appointed Director of the Patent and Trademark Office and brought with him practical patent experience. The rules regarding continuation practice and claim practice were rescinded as stated above under the new Director’s leadership.

The Federal Circuit dismissed the appeal as being moot since the Patent Office has rescinded the proposed rules but did not vacate the district court judgment since Dr. Tafas had opposed vacatur. Tafas v. Kappos, 2008-1352 (Fed. Cir. 2009).

Should you have any questions, please do not hesitate to contact me.

The following case illustrates whether the safe harbor applies to a patent application that is a divisional in “substance” but “designated” a continuation in the application’s documentation. In Amgen Inc. v. F. Hoffman-La Roche Ltd (Sept. 15, 2009), the Federal Circuit held that a patent application “designated” as a continuation patent application (even if in “substance” it qualifies as a divisional patent application) does not fall within the safe harbor provisions of 35 U.S.C. § 121. The Federal Circuit also highlighted a similar case in which a continuation in part (“CIP”) application does not fall within the safe harbor provisions of 35 USC § 121. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc. 518 F.3d 1353 (Fed. Cir. 2008).

Please feel FREE to contact me for more information.

This type of behavior may open the company to indirect patent infringement liability. Under a theory of active inducement of patent infringement, 35 USC § 271(b) recitesstates that “whoever actively induces infringement of a patent shall be liable as an infringer.”

To actively induce infringement by another, the accused party must have the specific intent to encourage another’s infringement. Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc., (Fed. Cir. 2009) provides a discussion as to when specific intent exists. In Kinetic Concepts, Inc., the technology at issue involved an apparatus and a method for treating a wound. During testimony, the co founders of the company accused of infringement both testified that they thought the kits that they sold simply performed a prior art method. The jury believed the co founders and found that they did not have the specific intent required for to attach liability for active inducement of patent infringement.

The testimony provided by the co-founders sounds similar to a “practicing the prior art” defense. The Court reiterated that practicing the prior art is not a defense to patent infringement (it may be a basis for invalidity but is not a defense to infringement). However, theythe Court’s decision shows indicated that a defendant’s belief that it can freely practice inventions found in the public domain can support a jury’s finding that the defendant did not have the intent required for actively inducing patent infringement.