We continue to get guidance as to when a party can file a request for an inter partes
review of a patent. As I mentioned last Fall
, under 35 U.S.C. § 315(b), a petitioner has 1 year from the date that it is “served with a complaint alleging infringement” to file a request for inter partes
review. Last week, the U.S. Patent and Trademark Office
(“Board”) clarified that the filing of an arbitration claim does not start this 1 year clock.
Based on a 2009 arbitration, Tessera, Inc. moved to terminate an inter partes
review initiated by Amkor Technology, Inc. for being outside the 1 year window. Thus, the question became whether “served with a complaint alleging infringement” included being served with an arbitration counterclaim of infringement. The Board noted that arbitration is not “litigation,” but rather an alternative dispute resolution procedure. Simply stated, “served with a complaint alleging infringement” only refers to disputes in District Court versus any forum for adjudicating infringement as Tessera had argued. We now know that complaints and counterclaims alleging infringement (even if dismissed with prejudice) are the two clear-cut ways to start the clock running with regard to the filing of requests for inter partes
As most of you have now realized, there has been a government shutdown. However, the USPTO reports
the following about its continued operations:
USPTO Operation Status
During the general government shutdown that began October 1, 2013, the United States Patent and Trademark Office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. We continue to assess our fee collections compared to our operating requirements to determine how long we will be able to operate in this capacity during a general government shutdown. We will provide an update as more definitive information becomes available.
Should we exhaust these reserve funds before the general government shutdown comes to an end, USPTO would shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions. (Should it become necessary for USPTO to shut down, details of the agency’s plan for an orderly shutdown is [sic] available on page 78 of the United States Department of Commerce’s shutdown plan.) Any new or updated public information related to USPTO operations during the government shutdown will be placed on this page.
As you can see, the USPTO is expending its prior year’s reserves to continue to operate for the next month. Applications are still being accepted and according to the USPTO, it will maintain a skeleton crew to accept new applications even in the event of an actual shutdown. I wouldn’t want to take the chance and would file any contemplated patent applications as soon as possible. Also, I would try to schedule any desired patent examiner interviews sooner than later.
It is a commonly overlooked problem. A person comes up with a new product to bring to market and has the foresight to file an “intent-to-use” U.S. trademark application for the mark XYZ to be used with his new product. Then, before actual use is established, in an effort to get organized, the person sets up a company and assigns all rights, title and interest to the pending trademark application for the mark XYZ to his company. The trademark XYZ eventually becomes registered with the U.S. Patent and Trademark Office (“USPTO”) and is integrated into a portfolio of marks that the company subsequently develops. Now, the company is offering to sell the trademarks to you. Here is something to watch out for when evaluating the portfolio.
Generally speaking, it is problematic to assign an “intent-to-use” trademark application except to the successor of the business that owns the trademark application. See 15 U.S.C. § 1060
and TMEP § 501.01(a)
. The USPTO does not want people trafficking in trademarks that have not been used in commerce. In the above example, the individual prematurely assigned his “intent-to-use” XYZ trademark application to his company and as a result, rendered his trademark registration void and subject to cancellation.
What could the individual have done in the above example? He could have filed the application in his company’s name or waited until he had established use before he assigned the application. Pay close attention to trademarks that originate from individuals versus companies and make sure that the proper steps were followed or face the possible consequence of buying an unenforceable trademark registration.
We’ve all heard the phrase, “You can’t judge a book by its cover.” Well, this adage is especially true when looking at an issued patent as there may be valuable information that is not reflected on its face.
First, printing errors can occur. Late amendments to the claims of the patent (which define the scope of the protected invention) may not make it into the final version of the patent. Thus, the claims that you are looking at may appear broader than they actually are. This is especially important to know when evaluating potential non-infringement positions.
Second, the applicant may have given up significant ground to get its patent granted, which is not necessarily reflected in the patent. For example, the applicant may have distinguished its invention over a prior art system. This could have been done by making claim amendments and arguing their narrow meaning, or by otherwise convincing the U.S. Patent and Trademark Office Examiner that no amendments were necessary because the claims (as written) were sufficiently narrow to get around the prior art. Why is this relevant you ask? Because your company may be practicing a technology that is similar to what the applicant distinguished.
In the end, while you should start with the patent, you should read the back and forth correspondence with the U.S. Patent and Trademark Office (known as the “patent prosecution history”) as mistakes can happen and the scope of the patent may not always be as it appears on its face.
Are you tired of waiting for the U.S. Patent and Trademark Office (USPTO) to examine your patent application? You might consider using one of the USPTO’s Patent Prosecution Highway (PPH) programs. In theory, the goal is to use the examination by one country to expedite the examination and allowance of the same claims in another participant country. The USPTO started a pilot PPH program last year with the Korean Intellectual Property Office and reportedly announced yesterday
that it intends to introduce two new pilot PPH programs with the Nordic Patent Institute and Israel Patent Office.
It’s important to remember that there can still be speed bumps even if you decide to go down these roads. There is no guarantee that an examiner won’t conduct a further search and uncover new prior art despite the initial examination of the other patent office. Nonetheless, if you are permitted to participate in a PPH program, you should get your application reviewed in a timely manner.
The USPTO announced earlier this year that it would be implementing a “Track One” expedited patent examination in early May in which applicants could pay a fee and receive accelerated examination of their patent applications. This was particularly appealing for tech-driven applications as the normal process can take years due to the backlog of applications and there was no requirement of discussing any relevant prior art (as is required in other types of accelerated review). It has been reported that the USPTO announced today that its Track One program has been put on hold due to budget cuts. Read a good discussion
. Many companies will be disappointed.