The following case illustrates a different scenario in which patent assignments arise, specifically, conflicting agreements.  A Researcher working for Leland Stanford Junior University (“Stanford”) executed a patent assignment agreement wherein the Researcher agreed to assign any inventions to Stanford.  Stanford and Cetus were jointly developing ways to determine the efficacy of antiretroviral drugs for HIV infected patients.  During the joint research work, the Researcher also executed a Visitor Confidentiality Agreement containing an invention assignment clause which assigned all inventions of the Researcher to Cetus.  Hence, Stanford’s agreement was in conflict with Cetus’ Visitor Confidentiality Agreement.

The different language used in the patent assignment clauses of the conflicting agreements was one of the key factors in deciding that Cetus owned the invention instead of Stanford.  In the patent assignment for Stanford, the Researcher promised that he “will” assign inventions to Stanford which is an assignment in the future.  In contrast, in Cetus’s Visitor Confidentiality Agreement, the language included the phrase “does hereby assign” which is a present assignment.

As a result of the joint research, Stanford ultimately filed a patent application on subject matter invented by the Researcher.  After filing the patent application, the Researcher executed a patent assignment document  which was subsequently recorded at the Patent Office.  The Court held that title or ownership of the invention still vested in Cetus.  At the time of filing the patent application, the “does hereby assign” language contained in Cetus’ Visitor Confidentiality Agreement immediately vested title in Cetus by operation of law.  The later assignment from Researcher to Stanford was ineffective.  Stanford v Roche 2008-1509, -1510 (Fed. Cir. Sept. 30, 2009).

Based on this case, it is important to understand the difference between the “will assign” language and the “does hereby assign” language that are typically found in invention assignment agreements.

I also invite you to contact me should you have any questions.

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.

I also invite you to contact me.

However, patent owners must be careful to ensure that the product marked as patented is indeed patented or patent applied for. Under current U.S. Patent law, anyone can file a lawsuit against a manufacturer that has falsely marked their product as patented with an intent to deceive the public. For example, if a patent application has become abandoned but the product still includes the “Patent Pending” mark, then others may have a claim against the product manufacturer for false marking. Under 35 USC Section 292, the public can sue the product manufacturer on behalf of the government for the sum of not more than $500 per each offense. This is referred to as a qui tam action. The government is seeking the help of the public to control false marking. The $500 maximum penalty may not appear to be much. However, it depends on how “each offense” is calculated.

The following case explains the meaning of “each offense.” Prior court decisions have reduced the severity of this penalty by counting each offense based on time (e.g., one week, one month, etc.). However, in The Forest Group Inc. v. Bon Tool Co. (Fed. Cir. Dec. 28, 2009), the Court held that the phrase “each offense” means each article or product. For example, if you sold 1,000 widget and falsely marked each widget, then the maximum potential liability is $500,000. This may seem unfair in light of the wide range of products that could be mismarked. For example, imposing a fine of $500 for each baseball cap may be unfair. The Court addressed this concern by pointing out that the $500 penalty is a maximum fine and not a minimum fine. Judges can adjust the fine amount to match the type of product so as to be fair.

Based on the foregoing discussion, it is important to consult with legal counsel to determine whether your product is patent pending or covered by your patent. Alternatively, you may want to consider removing any indicia indicating patent status on your product. Otherwise, you may find yourself defending a claim of false marking. Also, during enforcement of your patent, you may find yourself having to defend yourself against a counterclaim of false marking.

You may also be interested in Patent Marking.

For more information, please feel free to contact me.

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.

In New Railhead Manufacturing, LLC v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002), the invention was related to a drill bit for drilling rock formations and a method for drilling rock formations. The drill bit was actually used underground, out of plain sight of others. Nonetheless, the Court explained that the phrase “public use” under U.S. patent laws does not mean open and visible in the ordinary sense. The meaning of “public use” does not hinge on whether the device was seen by others. “Public use” includes “any use of the claimed invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor”. Hence, the use of the drill bit was “public use”.

Testing and experimentation of the invention could negate the use of the device as a “public use” for the purposes of determining when the “one year” time period begins. However, such testing and experimentation must cease at the time the inventor realizes that the invention works for its intended purpose. Otherwise, continued use may constitute “public use” which would bar the inventor from seeking patent protection after the “one year” time period. In New Railhead, the inventor made a second prototype which contained some improvements to the first prototype. Unfortunately, the record did not indicate that there was an issue as to the efficacy of the drill bit. Hence, the use of the first drill bit prototype was not considered to be an experimental use.

U.S. Patent Law provides a limited time period (i.e., one year) in which inventors can market and sell their invention for various reasons without filing a patent application. However, it is typically beneficial to file as early as possible. Also, if interested in seeking patent protection in foreign countries, a patent application should be filed prior to any type of public disclosure, offer for sale or distribution of any printed material to the public in order to preserve the maximum rights.

You may also be interested in reading Preventing Loss of Patent Rights.

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

(1) provide actual notice to the infringer of your patent,
(2) demand that they immediately cease and desist in their infringing activity, and
(3) offer a license without any express threat of infringement, among other things.

However, the cease and desist letter may allow the alleged infringer to file a declaratory judgment action (“DJ Action”) against the patentee when the correspondence between the parties indicate that there is a threat of litigation. The DJ Action allows the alleged infringer to take the initial legal steps and prevents the alleged infringer from having to wait for the alleged infringer to initiate a lawsuit while the patentee continues to threaten litigation. The DJ Action requests the court to resolve the dispute between the parties.

In many instances, the DJ Action is undesirable for the patentee. The DJ Action may be filed in a different state forcing the patent owner to incur additional costs and burdens of litigating out of state, while providing a convenient, home town advantage for the alleged infringer.

Accordingly, it is important to carefully draft the correspondence to the alleged infringer so as to achieve the desired results – no DJ Action while opening the door to amicably resolving the dispute. In the following case, the patent owner did not want to litigate the patent issue but was dragged into court by the alleged infringer by way of the DJ Action.

Acceleron LLC (“Acceleron”), a patent holding company, sent a letter to Hewlett Packard Company (“HP”) providing notice of an issued patent that Acceleron owns, requesting that HP not file a DJ Action and requesting that HP agree to not file the DJ Action. Additional letters were sent between the parties. HP filed the DJ Action. Acceleron sought dismissal of the DJ Action. Hewlett-Packard Co. v. Acceleron LLC, 2009-1283 (Fed. Cir. Dec. 4, 2009).

For patent cases, a declaratory judgment action is appropriate if the patent owner asserts its rights under the patent based on certain ongoing or planned activity and where the alleged infringer contends that it has the right to engage in the accused activity without a license to the patent. HP contends that the DJ action is proper since Acceleron identified its patent and HP’s product line in the demand letter. The court disagreed. Rather, the court said that the propriety of the DJ Action is whether HP had a reasonable belief of litigation based on the totality of the circumstances.

In reviewing the totality of the circumstances, the court considered the content of the letters sent between the parties and also considered Acceleron’s business model. Acceleron is a patent holding company that generates revenues by enforcing its rights and obtaining licenses from infringers under its patents. The Court indicated that this fact favors a decision that there was a sufficient threat of litigation. Based on various items in the letters sent between the parties and the business model of the owner of the patent, the Court held that the DJ Action is proper.

It is thus important to consider the tone and content of the demand letter but also other circumstances that might allow the alleged infringer to file a DJ Action. In the Acceleron case, the patent owner’s business model of licensing patents for profit, while making no patented products, was a factor in the Court’s ruling that the DJ Action is proper.

You may also be interested in Stopping Infringement.

Should you have any further question, 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.

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

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.

Some of the benefits of the First Action Interview Pilot Program are the ability to resolve patentability issues one-on-one with the examiner at the beginning of the examination process and to facilitate early allowance of a patent, if one does issue. The reason is that during the interview, the examiner and applicant ask questions and provide answers immediately about the operation of the invention, the teachings of the prior art, and other patentability issues. Misunderstandings about the prior art, the invention, etc. can be resolved quicker.

You may also be interested in my prior post Interview the Examiner.  Should you have any questions regarding interviews, please feel FREE to contact me at JamesJD7@gmail.com.

In In Re Cipro, 2008-1097 (Fed. Cir. Oct. 15, 2008), Bayer owned a patent directed to a compound and method for treating bacterial illnesses. Barr filed an abbreviated new drug application to introduce a generic version of drug based on a contention that the Bayer patent is invalid or the generic drug does not infringe Bayer’s patent. Bayer sued Barr for patent infringement. The parties settled the lawsuit but Bayer (i.e., patent holder) paid Barr (i.e., generic drug manufacturer) to agree not to make the generic version of the drug covered by Bayer’s patent. The Court held that when the “reverse payment” implicates only the “exclusionary zone” of the patent, the “reverse payment” does not violate the antitrust laws.

Please feel FREE to contact me at JamesJD7@gmail.com for more information.