U.S. patents will generally have a term of 20 years from the date of the earliest effective patent application filing; however, the rules on patent terms can be complicated in certain situations. Term extensions are provided to those who incur prolonged patent prosecution.^[1]

An infringer of the patent claims during the term of the patent can be sued. Also, an infringer against whom a company has threatened suit can ask a federal court for a declaratory judgment that the patent claims are invalid or not infringed. Further, if the application was published and issues with claims as filed, and if a notice is sent to a potential infringer, a reasonable royalty is available from the time of publication.

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Example Patent : VirnetX Agile Network Protocol for Secure Communications (Download Full PDF Here)

In the case of product (rather than process) patents, patent damages accrue as long as the infringer has actual or constructive notice of the infringed patent. Actual notice is a specific allegation that a particular product is accused of infringing a particular patent. Constructive notice requires properly marking all products covered by the patent with the number of the patent, or accomplishing virtual notice. “Patent Pending,” or the patent number in isolation, are examples of insufficient notice. If the patent is declared not invalid in a court action and infringed, a company can collect damages (not less than a reasonable royalty payment) and obtain an injunction against further infringement. As a part of such suit, both the patent owner and the alleged infringer can exhaustively investigate the other side’s records relating to the issues presented in the suit. Specifically, they can request document protection, ask written questions, seek admissions and take depositions of a range of witnesses. This process is called discovery. A great portion of the time period between filing a lawsuit and trial is spent in discovery.

There are several procedures in U.S. patent law that may return a patent to the U.S. Patent and Trademark Office for further consideration of the patent.

Correction of a Patent

Minor errors in a U.S. patent may be corrected by application for a certificate of correction.

Supplemental Examination Request

The patent owner may request a supplemental examination for a patent so that the U.S. Patent and Trademark Office can consider, reconsider or correct information believed to be relevant to the patent. The presented information is not limited to patents or printed publications, but instead may include information concerning any ground of patentability, such as patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode and indefiniteness. A patent owner may request supplemental examination of any patent during the period of enforceability of the patent.

Specifically, an item of information includes a document containing information, believed to be relevant to the patent, that the patent owner requests the U.S. Patent and Trademark Office to consider, reconsider or correct. An item of information may include, for example, a sales receipt or invoice. If the information is not, at least in part, contained within or based on any document filed as part of the request, the discussion within the body of the request relative to the information will be considered to be an “item of information.” For example, if a discussion of a potential application of the rule of patent-eligible subject matter provided by 35 U.S.C. § 101 is wholly contained within the body of the request and is not based, at least in part, on any supporting document, then the discussion in the request will be considered to be an item of information. A request for supplemental examination may include up to 12 items of information.

Within three months from the filing date of a request for supplemental examination from a patent owner, the U.S. Patent and Trademark Office will determine whether any of the items of information filed with the request raises a substantial new question of patentability. If a substantial new question of patentability is found for any item of information, then the U.S. Patent and Trademark Office will order an ex parte reexamination of the patent. An ex parte reexamination ordered as a result of a supplemental examination request will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the patent owner will not have the right to file a patent owner statement; and (ii) the U.S. Patent and Trademark Office will address each substantial new question of patentability without regard to whether it is raised by a patent or printed publication.

Ex parte reexamination

Reexamination law and rules permit any person to file a request for an ex parte reexamination. The U.S. Patent and Trademark Office initially determines if “a substantial new question of patentability” is presented. If such a new question has been presented, reexamination will be ordered. The reexamination proceedings that follow the order for reexamination are very similar to regular examination procedures in patent applications.^[2]

Reissue

An application for reissue of an issued patent may be filed if, through innocent error, the applicant believes that the original patent is wholly or partly inoperative or invalid. In this procedure, the applicant surrenders the patent to the U.S. Patent and Trademark Office and requests that the issued patent be changed. The following are common reasons for seeking reissue of a patent:

1. Defective Specification or Drawing. For example, the disclosure may contain inaccuracies or the patent may incorrectly assert rights based on an earlier foreign patent filing, which may not provide sufficient disclosure under Section 112 of the U.S. patent law.
2. Adjustment for Broader Claims. The patentee may have claimed less than he or she had a right to claim in the patent and therefore wishes to pursue broader patent protection. An application for a reissue application to broaden, or expand the scope of claims, must be filed within two years of the issuance of the original patent. Notably, current rules state that an attorney’s failure to appreciate the full scope of the invention has been deemed an error correctable through reissue.
3. Adjustment for Narrower Claims. The patentee may have claimed more than he or she had a right to claim in the patent and therefore wishes to attenuate the claims. For example, a patentee may discover additional prior art after the issuance of the patent that renders the issued claims invalid. The reissue may be used to limit the claims so they no longer describe the prior art and would not then be declared invalid should the patentee bring an infringement suit based on those claims.

Inter Partes Review^[3]

Inter partes review, or IPR, is a form of trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under 35 U.S.C. §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.

The inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) nine months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. The nine-month waiting period is eliminated for all issued patents with an effective filing date before mid-March 2013. Thus, inter partes review proceedings can be immediately filed on these patents. The patent owner may file a preliminary response to the petition.

An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. Under current practice, the petitioner must also demonstrate that each element of a patent claim corresponds to an item of prior art for the review to be instituted as to that claim. If the proceeding is instituted and not dismissed, a final determination by the Patent Trial and Appeal Board will be issued within one year (extendable for good cause by six months).

Discovery is permitted during an inter partes review, including that discovery be limited to the depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice. Routine discovery includes cited documents, cross-examination of declaration testimony and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery, or either party may file an authorized motion seeking additional discovery. A party dissatisfied with the final written decision in an inter partes review may appeal to the Court of Appeals for the Federal Circuit.

Post Grant Review

Post grant review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent on any ground that could be raised under 35 U.S.C. § 282(b)(2) or (3).

The post grant review process begins with a third party filing a petition on or prior to the date that is nine months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted upon a showing that it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within one year (extendable for good cause by six months).

Discovery is permitted in post grant reviews, limited to evidence directly related to factual assertions advanced by either party in the proceeding. Routine discovery includes cited documents, cross-examination of declaration testimony and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery. A party dissatisfied with the final written decision in a post grant review may appeal to the Court of Appeals for the Federal Circuit.

The procedure for conducting post grant review generally applies to patents issuing from applications subject to the newer laws of first-inventor-to-file.

Transitional Program for Covered Business Method Patents

The transitional program for covered business method patents is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a covered business method patent.

A covered business method review is available for all patents issuing from applications subject to the newer first-inventor-to-file laws, as well as those patents issuing from applications subject to the first-to-invent older laws, provided that the patent is drawn to a covered business method. A covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service.

An exception is that the term does not include patents for technological inventions. The petitioner bears the burden to demonstrate that the challenged patent is a covered business method patent and that at least one claim of the challenged patent is not directed to a technological invention to show that the petitioner has standing to proceed. The showing for both a covered business method patent and a technological invention is based on what is claimed.

The laws do not specify what a patent for a technological invention covers, and therefore, the U.S. Patent and Trademark Office has promulgated a rule for technological inventions. In determining whether a patent is for a technological invention, the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and non-obvious over the prior art; and solves a technical problem using a technical solution.

These proceedings employ the standards and procedures of a post grant review (including discovery), with certain exceptions. For example, for first-to-invent patents, only a subset of prior art is available to support the petition. Further, a person may not file a petition for a proceeding unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or charged with infringement under the patent. A party dissatisfied with the final written decision in a covered business method review may appeal to the Court of Appeals for the Federal Circuit. A covered business method review is statutorily required to be completed within one year of institution, except that the time may be extended up to six months for good cause.

The program will sunset for new petitions on Sept. 16, 2020.

Maintenance Fees

Original and reissue utility patents based on applications filed after Dec. 12, 1980, will remain in force only if maintenance fees are paid three, seven and 11 years after the patent issues. Such maintenance fees, also known as annuities, allow claimed inventions to enter the public domain if the patent owner is no longer interested in them.

[1] U.S. patents issued before 1995 generally had a term of 17 years from the date of issue.
[2] The rules relating to ex parte reexamination were effectively unchanged by the new U.S. patent system. The new laws did clarify, however, that the patent owner can appeal only a negative decision of the Patent Trial and Appeal Board to the Court of Appeals for the Federal Circuit.
[3] Inter partes review replaces inter partes reexamination as an avenue for a third party’s patentability challenge. Pending inter partes reexaminations will not be converted into inter partes review proceedings. Proceedings for inter partes reexamination filed before mid-September 2012 will proceed to conclusion.