With all of the changes to the patent system arising from the decisions of the U.S. Supreme Court and the Court of Appeals for the Federal Circuit, it’s helpful to go back to basics and to contemplate the fundamentals of patent law in view of these decisions.
Below, we answer some frequently asked questions about patents. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about patent law should be directed to an attorney in our Patent Practice Group.
What post-issuance procedures are important?
Once a patent is issued, the patentee may request review again by the U.S. Patent and Trademark Office by means of a reissue or an ex parte reexamination. A third party can institute an ex parte reexamination, post-grant review, an inter partes review, or a derivation proceeding.
Because of the limited involvement of requesters in ex parte reexamination proceedings, Sunstein always recommends that the pros and cons of a reexamination request be carefully weighed before choosing reexamination as an inexpensive alternative to patent litigation. On the other hand, reexamination can be an excellent tool for opening up a market that one would like to enter but for the patent infringement risk. The relatively low cost of requesting reexamination or these other post-grant procedures makes them attractive to clients with a limited budget.
Post grant review (PGR) and inter partes review (IPR) give third parties more involvement in the proceedings. Third parties further benefit from rules limiting the ability of the patent owner to amend or add claims. Moreover, a final decision will issue from the Patent Trial and Appeal Board (“PTAB”) within one year of institution of the review. The final decision will be controlling over any litigation in court. On the other hand, third parties need to be aware that in order to keep these proceedings streamlined the PTAB will often limit the arguments that can be raised and the claims that can be challenged. There is also uncertainty as to which arguments, if any, challenging the patent can later be raised in court on the basis of prior art patents or publications (and in the case of PGR, other grounds), should the patent survive the proceeding.
A reissue proceeding can be initiated by a patentee if there was some mistake on the part of the applicants that caused them to obtain more or less coverage than that to which they were entitled. Accordingly, a reissue can broaden or narrow the claims. A broadening reissue must be filed within two years of the patent’s issue date.
Marking the Invention
Once a patent is issued, the patentee should mark all products incorporating the invention (including those sold by licensees) with the patent number. The AIA introduced a new concept of “virtual patent marking,” allowing a patent owner to affix the word “patent” or the abbreviation “pat.” along with a freely accessible website which associates the article with the appropriate patent number. The legislation also included a provision calling for review and analysis of this change to take place 3 years after the enactment. A failure to mark may harm a patentee’s ability to get damages in litigation by cutting off damages arising before the accused infringer received actual notice of infringement.
Thus, it is important for patentees to make sure that all of their products and all of their licensees’ products are properly marked. False marking on the other hand, refers to the practice, with intent to deceive the public, of marking a product not covered by the patent listed or indicating that a patent has been applied for when no application is pending. A party can be sued for false marking by a person who has suffered a competitive injury, who can recover damages “adequate to compensate for the injury” or by the United States government, which could recover fines of up to “$500 for every such offense” pursuant to 35 U.S.C. sec. 292. False marking law changed dramatically with the AIA. Previously, any person could sue on behalf of the U.S. government, even without any harm. The AIA also excluded from conduct in violation of sec. 292 the act of including an expired but formerly applicable patent on an article.
Clearance Opinions
One should take care to avoid willfully infringing a patent owned by another, as a finding of willful infringement can result in the trebling of damages and the award of attorney fees. In order to avoid such a finding, a client should consult a patent attorney to evaluate whether a patent of concern is infringed by what the client intends to sell. Sometimes a design-around will be necessary. Once the client’s plans have cleared, the client should consult with the patent attorney about having a formal, comprehensive written opinion prepared by patent counsel that the product in question does not infringe the patent, or that the patent is invalid or otherwise unenforceable. This opinion should be sought as soon as it is realized that a given patent may pose a problem. Sunstein regularly prepares such clearance opinions for its clients. Since clearance opinions are often introduced as evidence at trial, we believe that a properly prepared clearance opinion can have an impact beyond limiting the risk of enhanced damages.
As of November 29, 2000, patent applications can raise the specter of patent infringement as to patent applications that have been published but not yet issued. Anyone receiving a Notice of Published Application of a patent application should seek counsel from a patent attorney. The attorney will be able to follow the prosecution of the application in the patent office. The attorney will further be able to evaluate the risks of infringement, develop strategies for designing around the patent claims, search for prior art, and at an appropriate stage, prepare a written clearance opinion. (More)
