Robert M. Hansen The Marbury Law Group PLLC AIPLA

1. Issuance, Term, Certificates of Correction, Disclaimers, & Maintenance Robert M. Hansen The Marbury Law Group PLLC AIPLA Practical Patent Prosecution Training for New Lawyers August 2009 Alexandria, VA

2. OUTLINE •Patent Issuance •Term Adjustments • Certificates of Correction (COC) • Disclaimers • Reissue and Reexamination • Maintenance Fees

3. PATENT ISSUANCE Notice of Allowance (NOA) specifies the amount of the issue fee that must be paid within 3 months of the mailing date of the NOA 3 month period is NOT extendable

4. PATENT ISSUANCE Report NOA to client and review the allowed application ASAP Complete allowance checklist

5. PATENT ISSUANCE Checklist involves confirming: • NOA • Claim of priority • Assignment • Small entity status • Continuation application • Drawings • Duty to disclose prior art, etc. • Sign off of IDS’s

6. PATENT ISSUANCE Examiner’s Statement of Reasons for Allowance • Review carefully to ensure they do not limit claims • Failure to comment on reasons for allowance may disavow potential claim interpretations • File Comments on Statement for Reasons of Allowance if appropriate

7. PATENT ISSUANCE Amendments after Allowance under 37 CFR § 1.312 • Correction of formal matters or cancellation of claims • Not a matter of right • Must file before or with issue fee • File continuation if amendment impossible

8. PATENT ISSUANCE • Pay the issue fee (& publication fee) • Do not pay on the last day • Report to client

9. PATENT ISSUANCE Withdraw from issue if the patent would likely be invalid, e.g.: • Failure to disclose relevant prior art • Interference problem • Inoperability

10. PATENT ISSUANCE May be withdrawn by Applicant (1) Before payment of issue fee; or (2) After payment of issue fee or by USPTO -- PTO’s QC Program

11. PATENT ISSUANCE Withdrawal before issue fee payment • Petition with a showing of good and sufficient cause; or • File a request for continued examination (RCE) (File a continuation application without paying issue fee and abandon parent)

12. PATENT ISSUANCE Withdrawal after issue fee payment Petition and (1) Statement of unpatentability with amendment and explanation; (2) RCE; or (3) Express abandonment, e.g., with filing of continuation

13. PTO Quality Assurance Program Just when you thought it was safe to go back in the water… • USPTO now reviewing randomly selected allowed applications for search and claim “quality”* • Specialists review application for quality of search and allowability of claims • Inadequacy of search or claims will result in prosecution being reopened • Your first warning: Notice of Allowance is Vacated * See MPEP 1308.03

14. PATENT ISSUANCE Report issue of patent ASAP Docket for: (1) Payment of maintenance fees; and (2) Broadening reissue filing deadline

15. Patent Term Patent Term Extension If: § 1.701 (1) Interference proceedings under 35 U.S.C. 135(a); (2) The application being placed under a secrecy order under 35 U.S.C. 181; (3) Issued pursuant to a decision in appellant review reversing an adverse determination of patentability § 1.702 (a) Failure to take certain actions within specified time frames. … the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to: (1) Mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 in an international application; (2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken under 35 U.S.C. 134 not later than four months after the date on which the reply was filed or the appeal was taken; (3) Act on an application not later than four months after the date of a decision by the Board of Patent Appeals and Interferences under 35 U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 146 where at least one allowable claim remains in the application; or (4) Issue a patent not later than four months after the date on which the issue fee was paid under 35 U.S.C. 151 and all outstanding requirements were satisfied. § 1.702(b) Failure to issue a patent within three years of the actual filing date of the application. the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to issue a patent within three years after the date on which the application was filed …, but not including: (1) Any time consumed by continued examination of the application under 35 U.S.C. 132(b);

16. Patent Term – The Calculation § 1.703 (a) The period of adjustment under § 1.702(a) is the sum of the following periods: (1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first; (2) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply under § 1.111 was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first; (3) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply in compliance with § 1.113(c) was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first; (4) The number of days, if any, in the period beginning on the day after the date that is four months after the date an appeal brief in compliance with § 41.37 of this title was filed and ending on the date of mailing of any of an examiner's answer under § 41.39 of this title, an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first; (5) The number of days, if any, in the period beginning on the day after the date that is four months after the date of a final decision by the Board of Patent Appeals and Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where at least one allowable claim remains in the application and ending on the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first; and (6) The number of days, if any, in the period beginning on the day after the date that is four months after the date the issue fee was paid and all outstanding requirements were satisfied and ending on the date a patent was issued. (b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods: (1) The number of days, if any, in the period beginning on the date on which a request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date the patent was issued; (2) (i) The number of days, if any, in the period beginning on the date an interference was declared or redeclared to involve the application in the interference and ending on the date that the interference was terminated with respect to the application; and <> (ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension; (3) (i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181; (ii) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order was removed; (iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference would be declared but for the secrecy order and ending on the date the secrecy order was removed; and (iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151; and, (4) The number of days, if any, in the period beginning on the date on which a notice of appeal to the Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 and § 41.31 of this title and ending on the date of the last decision by the Board of Patent Appeals and Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145, or on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first, if the appeal did not result in a decision by the Board of Patent Appeals and Interferences.

17. Patent Term – Calculation Rules (cont.) c) The period of adjustment under § 1.702(c) is the sum of the following periods, to the extent that the periods are not overlapping: (1) The number of days, if any, in the period beginning on the date an interference was declared or redeclared to involve the application in the interference and ending on the date that the interference was terminated with respect to the application; and (2) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension. (d) The period of adjustment under § 1.702(d) is the sum of the following periods, to the extent that the periods are not overlapping: (1) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181; (2) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order was removed; (3) The number of days, if any, in the period beginning on the date applicant was notified that an interference would be declared but for the secrecy order and ending on the date the secrecy order was removed; and (4) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151. (e) The period of adjustment under § 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which a notice of appeal to the Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 and § 41.31 of this title and ending on the date of a final decision in favor of the applicant by the Board of Patent Appeals and Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145. (f) The adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay attributable to the grounds specified in §1.702 overlap, the period of adjustment granted under this section shall not exceed the actual number of days the issuance of the patent was delayed. The term of a patent entitled to adjustment under § 1.702 and this section shall be adjusted for the sum of the periods calculated under paragraphs (a) through (e) of this section, to the extent that such periods are not overlapping, less the sum of the periods calculated under § 1.704. The date indicated on any certificate of mailing or transmission under § 1.8 shall not be taken into account in this calculation. (g) No patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under § 1.702 and this section beyond the expiration date specified in the disclaimer.

18. Patent Term – Calculation Rules (Conclusion) Huh????

19. Patent Term You can petition for correction of PTO errors § 1.705 (b)Any request for reconsideration of the patent term adjustment indicated in the notice of allowance, … and any request for reinstatement of all or part of the term reduced pursuant to § 1.704(b) must be by way of anapplication for patent term adjustment … must be filed no later than the payment of the issue feebut may not be filed earlier than the date of mailing of the notice of allowance.

20. Patent Term – Bottom Line Very Important to Clients – $$$ Complicated Calculation – PTO gets it wrong and you have to petition to fix it before the issue fee is paid Complicated Calculation – not for mere mortals or untrained patent attorneys If you are responsible for checking PTE, get help Be aware of PTE implications of all prosecution choices If you practice in the medical arts, get to know 35 U.S.C. 156(d)(5) and 37 CFR 1.790

21. Certificates of Correction Errors correctable by COC: (1) Errors by the USPTO; and (2) Good faith, minor mistakes by applicant (e.g., typographic and spelling errors) Clerical or typographical errors Mistakes of minor character No new matter or Examination requiring

22. Certificates of Correction Correction of Errors by the USPTO may be requested by • Patentee or assignee • USPTO • Third party

23. Certificates of Correction Correction of Errors by the USPTO • No charge to patentee • COC or corrected patent

24. Certificates of Correction Advantages of COC’s: • Cheap • Easy • Retroactive

25. Reissue • Used to correct an error in the patent – limited to patentee • Request must identify error in patent, not limited to 102/103 validity • The error must be one which causes the patent to be "deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent." • Not spelling mistakes – those are for CoC • Must admit patent is defective and surrender patent at outset • If granted, PTO examines claims as if in prosecution and issues Office Action • Patentee can amend claims to overcome rejections • Within two years of issue, amendments can broaden claims • Can file continuations, divisionals and CIPs just like a regular app. • Certificate of Reissue if claims allowed

26. Reexamination Used to confirm the allowability of claims in view of prior art not considered by PTO Challenge validity of the patents of others based on prior art not considered by PTO – anyone can file Challenge limited to publications Petition must establish a new question of patentability under 35 USC § 102 or § 103 If granted, PTO examines and issues Office Action Patentee can amend claims to overcome rejections Certificate of Reexamination if claims allowed

27. Two Types of Reexam • Ex Parte Reexam • Once granted, requestor plays no further role • Typically $10K-$30K cost to requestor • Optional Inter Partes Reexam • Requestor able to participate in proceeding • Alternative to litigation in Federal Court • Can answer patentee responses to Office Actions • Right to appeal or participate in appeal • Imposes statutory estoppel on requestor • $800 USPTO filing fee • Typically $50K-$100K cost to requestor

28. Disclaimers (1) Statutory disclaimer (2) Terminal disclaimer

29. Disclaimers Statutory disclaimer: Patent owner disclaims a complete claim or claims, e.g., (1) Result of a Lawsuit (2) Believe claim(s) are invalid

30. Disclaimers Statutory disclaimer: • Signed by patentee or representative • Identify patent and claim(s) disclaimed • State the extent of signor’s ownership interest • Binding on signor, successors and assigns

31. Disclaimers Terminal disclaimer: Applicant or patentee disclaims the entire term or any portion of the term of the patent or patent to be granted,   . . . usually to overcome an obviousness-type double patenting rejection

32. Disclaimers Terminal disclaimer: • Signed by applicant, applicant/part assignee, full assignee, or representative • Specify portion of term being disclaimed • State the extent of the applicant’s or assignee’s ownership interest • Binding on signor, successors and assigns

33. Disclaimers Terminal disclaimer: To overcome an obviousness-type double patenting rejection

34. Disclaimers Terminal disclaimer for co-owned patents and patent applications: • Statement that any patent granted shall be enforceable only for and during such period the patent is commonly owned with the application or patent that forms the basis for the rejection

35. Disclaimers Terminal disclaimer for patents and patent applications resulting from joint venture: • Statement by both joint venture owners • Waive the right to separately license and enforce both patents • Agree both patents are only enforceable while not separately licensed or enforced from the application or patent that forms the basis for the rejection • Binding on signors, successors and assigns

36. Maintenance Fees To maintain an issued patent, you must pay maintenance fees at regular intervals during the life of the patent. Maintenance fees are due: (1) 3.5 years after grant -- $980; (2) 7.5 years after grant -- $2480; and (3) 11.5 years after grant -- $4110* Fees change all the time so check the latest fee schedule * Large Entity Fee

37. Maintenance Fees With payment of a surcharge, maintenance fees can be paid within a 6-month “grace period” after due date Maintenance fees due by: (1) 4* years after grant; (2) 8* years after grant; and (3) 12* years after grant * Actually due at 3.5, 7.5 and 11.5 years with a 6 month grace period, but who can remember half years?

38. Maintenance Fees To avoid unenforceability of the patent, confirm that small entity status is appropriate If patent is set for large entity fees, must affirm small entity status and have it accepted before paying small entity fee – no refund available

39. Maintenance Fees If you miss payment of maintenance fees, you may file a petition to accept a delayed payment if delay was: • Unintentional - petition within 2 years; or • Unavoidable - anytime but must file promptly

40. The End