In ruling on motions to dismiss and motions for summary judgment, courts have found a number of patents ineligible under 35 U.S.C. § 101 as a matter of law. However, in Berkheimer v. HP, the Court of Appeals for the Federal Circuit indicated that in certain instances, the determination of patent eligibility under § 101 involves questions of fact and thus are questions for juries.
Continue Reading Juries Will Play Role in Some Questions of Patent Eligibility
The validity of a United States patent can be challenged in federal court litigation. Patents can also be challenged in the U.S. Patent and Trademark Office, which, in most cases, is a quicker and less costly process.
The PTO provides three procedures by which a patent can be challenged: inter partes review (IPR), post grant review (PGR), and ex parte reexamination. In IPRs and PGRs, the challenger and the patent owner both participate, and the proceedings are handled by the Patent Trial and Appeal Board (PTAB). In an ex parte reexamination, the challenger is not involved after the request for reexamination has been filed, and the proceeding is handled by the PTO examiners.
In IPRs and PGRs, anyone except the patent owner may file a petition to challenge the patent. The filing fees are high, $41,500 for an IPR and $47,500 for a PGR, with additional fees depending on the number of claims challenged. The proceedings are handled by a three-judge panel of administrative judges with technical background in the field of the patent. There are two phases in these proceedings. The first phase consists of the filing of the petition by the challenger, the filing of a response by the patent owner, and the decision whether to institute the IPR or PGR by the PTAB. If the PTAB institutes the IPR or PGR, then the second phase (the trial phase) begins. The second phase consists of discovery (more limited than in litigation), briefing, an oral hearing, and a final written decision by the panel. The entire process from institution to the final decision should take no more than 12 months. The parties may appeal the decision to the Federal Circuit Court of Appeals.
Continue Reading How to Challenge a Patent in the PTO
Most patent applications are initially rejected on obviousness grounds by the patent examiner in the US Patent and Trademark Office. That means that the examiner believes that the invention, as set forth in the claims in the application, would have been obvious to a person of ordinary skill in the art at the time the application was filed. Usually, the rejection is based on one or more prior art references – documents that are publicly available as of the application’s filing date. In making such a rejection, the examiner states that a person skilled in the art would have found it obvious to modify the teachings of the cited prior art references to achieve the claimed invention.
There are several ways to overcome this type of obviousness rejection. The applicant can argue that the examiner is incorrect in the interpretation of the prior art references, and that those references do not teach or disclose what the examiner contends. The applicant can also argue that, although the examiner may be correct in interpreting the prior art references, the examiner is incorrect in concluding that a person skilled in the art would have found the claimed invention obvious based on those references. Or, the applicant can amend the claims to add an element that is not taught or disclosed in the references.
Continue Reading Arguing Obviousness with the Patent Examiner
The Patent and Trademark Office (PTO) may reject a patent application on several different grounds. One of those grounds is obviousness. Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art, then it is not patentable.
In determining whether an invention is obvious, the PTO compares the invention to the “prior art” – all similar inventions that are publicly available at the time the application is filed. If the PTO rejects the invention as obvious, the applicant can respond by narrowing the invention or arguing that the PTO is wrong. In addition, the applicant can submit evidence of certain factors that the courts have held are relevant, objective indicia of nonobviousness. These factors are called “secondary considerations.” They include evidence of: unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, and copying by competitors.Continue Reading Copying by Competitors is Evidence of Nonobviousness of an Invention
The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on; it is based on the filing dates of any related patent applications that were filed before the application (the priority chain). This date determines which prior art can be used by the Patent and Trademark Office to determine patentability of the invention and which prior art can be used by competitors to challenge the patent’s validity.
Continue Reading Patent Priority Dates Must Be a Priority!
