Patent prosecution is the interaction between applicants and a patent office with regard to a patent application or a patent .
86-485: The prosecution process is broadly divided into two phases: pre-grant and post-grant prosecution. Pre-grant prosecution includes the drafting and filing of patent applications, responding to patent office actions, and navigating the examination process to meet all legal requirements for patentability . This phase requires a strategic presentation of the invention's novelty and inventive step over existing technologies. Post-grant prosecution deals with activities that occur after
172-554: A non-binding opinion issued by the Patent Office, or by formal applications for revocation before the Patent Office or the Court. If the patent survives a revocation action, this fact is noted for future reference by way of a Certificate of contested validity . The fact that an invention is patentable or even patented does not necessarily mean that use of the invention would not also infringe another patent. The first patent in
258-401: A patent . By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid. The patent laws usually require that, for an invention to be patentable, it must be: Usually the term " patentability " only refers to the four aforementioned "substantive" conditions, and does not refer to formal conditions such as the " sufficiency of disclosure ",
344-412: A competitor or a pirate is later discovered to infringe the invention. However, if the examiner and the applicant cannot reach agreement regarding the patentability of the application, the applicant may file an appeal to either the patent office or a court of law, asserting that his patent application was wrongly rejected. For such an appeal to be successful, the applicant must prove that the patent office
430-475: A comprehensive overview of the standards for patentability, a discussion of the related case law, and guidance on how to overcome an examiner's rejection of a given set of claims. In the United States, the patent grant is presumptive, e.g. a patent shall issue unless the patent statutes preclude the grant. In other words, the burden is on the Patent Office to prove why a patent should not be granted. Once
516-433: A drawing or set of drawings, to facilitate the understanding of the invention. In some jurisdictions, patent models may also be submitted to demonstrate the operation of the invention. In applications involving genetics , samples of genetic material or DNA sequences may be required. The search and examination phases constitute the main part of the prosecution of a patent application leading to grant or refusal. A search
602-568: A first-inventor-in-fact maintained his invention as a trade secret for many years before seeking patent protection, he may be judged to have "abandoned, suppressed or concealed" the invention. Well-established patent law provides that an inventor who makes a secret, commercial use of an invention for more than one year prior to filing a patent application at the USPTO forfeits his own right to a patent. If an earlier inventor made secret commercial use of an invention, and another person independently invented
688-496: A general, written description of the invention and at least one "embodiment" thereof, and a set of " claims ," written in a special style that defines exactly what the applicant regards as the particular features of his or her invention. These claims are used to distinguish the invention from the existing prior art, and are compared by the patent office to the prior art before issuing a patent. Patent applications in most jurisdictions also usually include (and may be required to include)
774-422: A given area might include a broad claim covering a general inventive concept if there is at that point no relevant prior art . Later, a specific implementation of that concept might be patentable if it is not disclosed in the earlier patent (or any intervening prior art ), but nevertheless still falls within the scope of the earlier claim (covering the general concept). This means that the later inventor must obtain
860-401: A license from the earlier inventor to be able to exploit their invention. At the same time, the earlier inventor might want to obtain a license from the later inventor, particularly if the later invention represents a significant improvement in the implementation of the original broad concept. In this case, the two enter into a cross license. Thomas Edison 's thin carbon filament light bulb was
946-488: A new patent application. A benefit of reexamination is that issued patents may be either invalidated or once again deemed valid, without the considerable cost and lengthy time required for a patent infringement lawsuit or declaratory judgment action. Also, in the United States, prior to the America Invents Act going into force in 2012, if two patent applications are filed which set forth claims directed to
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#17327866589681032-557: A new product or process involving an inventive step and capable of industrial application. Thus the patentability criteria largely involves novelty, inventive step and industrial application or usability of the invention. In addition, section 3 of the Patent Act, 1970, also provides a list of non-patentable inventions for e.g. inventions that are frivolous or contrary to well established to natural laws. Patent Reform Act of 2005 The Patent Reform Act of 2005 ( H.R. 2795 )
1118-414: A patent application meets the requirements for granting a patent . The process involves considering whether the invention is novel and inventive , whether the invention is in an excluded area and whether the application complies with the various formalities of the relevant patent law. If the examiner finds that the application does not comply with requirements, an examination report ( Office action in
1204-506: A patent has been granted. This includes maintaining the patent, handling oppositions or challenges from third parties, and making amendments or corrections to the patent documentation. It ensures that the patent remains enforceable and continues to provide value to the patent holder. Patent prosecution is distinct from patent litigation, which describes legal action relating to the infringement of patents . The rules and laws governing patent prosecution are often laid out in manuals released by
1290-454: A patent is invalid "on any ground that [they] raised or could have raised during the inter partes reexamination proceedings." Some observers believe that this estoppel dissuades potential requesters from use of reexamination, forcing them into federal court. H.R. 2795 would have deleted the phrase "or could have raised" from the statute, so that reexamination requesters would be limited only with respect to arguments that they actually made before
1376-541: A patent issues, it is presumed valid and a court may declare it invalid only on the basis of clear and convincing evidence . Terminology in Europe, within the member states of the European Patent Organisation , is slightly different from U.S. terminology. While in the U.S. all patent applications are considered to cover inventions automatically, in Europe a patent application is first submitted to
1462-482: A patent prior to approval, when recourse is only available through the court system. The American Inventors Protection Act severely limited protests, but H.R. 2795 would have eliminated those limitations. Since 1981, the U.S. patent system has incorporated " reexamination " proceedings, during which third parties can submit information challenging the validity of a patent. In order to discourage abuse of these proceedings, third-party participants may not later assert that
1548-450: A patent under the " first-to-file rule". Until the enactment of the America Invents Act, the United States followed a first-to-invent rule, under which early filing may prevent the use of certain materials from being applied against the patent application as prior art while the patent application is pending before the patent office. However, three consecutive congressional sessions in the United States from 2005–2009 have attempted to change
1634-472: A patent, counts as a public prior art, which destroys the novelty of the patent application and prevents the issuance of a patent. As of May 2023, some countries (e.g. Argentina, Australia, Belarus, Brazil, Canada, Estonia, PR China, Japan (since June 2018), South Korea, Mexico, New Zealand, Russia, Ukraine, the US and Turkey) give the inventor(s) a one-year grace period , when their own disclosures do not count as
1720-477: A patentable improvement over the earlier patented Woodward and Evans thick carbon filament light bulb. Thomas Edison bought the Woodward patent for $ 5,000 US before he began his development work so that Woodward would not be able to later sue him for patent infringement after Edison became commercially successful. Under United States patent law , inventorship is also regarded as a patentability criterion. It
1806-647: A prior art to a subsequent patent application, although in practice it is difficult to take advantage of this rule. Austria, Germany, and the UK have a 6-month grace period. Notably, the World Intellectual Property Organization and the proposed Patent Law Treaty do not give any grace period to their patent applications. The practice of the grace period was more common prior to 1970 than it is today. After drafting an application for patent, complying with any further rules (such as having
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#17327866589681892-495: A reissue application, although a broadening reissue in the USA must be filed within 2 years from grant. Also, in the United States, only the patent holder may file for reissue. The case of In Re Tanaka established the principle that a patentee can add narrow dependent claims to an issued patent through the reissue process, because a patent with narrower dependent claims is less subject to invalidation when litigated. More usually, however,
1978-429: A remedy in equity is warranted; and (4) that the public interest would not be disserviced by a permanent injunction. H.R. 2795, as originally introduced, would have required a court to consider the "fairness" of an injunction in light of all the facts and the relevant interests of the parties, and allow an injunction to be stayed pending appeal upon an affirmative showing that the stay would not result in irreparable harm to
2064-701: A test whether it covers an invention at all: the first out of four tests of Article 52(1) EPC (the other three being novelty, inventive step, and industrial applicability). So an "invention" in European legal terminology is similar to "patentable subject-matter" in the American system. Articles 52-57 of the European Patent Convention are concerned with patentability. Under the Indian Patent Act (1970), "inventions" are defined as
2150-413: A third party. Reform legislation is set to create an opposition system in the United States. An applicant is free to abandon an application during the search and examination process. An application may be abandoned if, for example, prior art is revealed which will prevent the grant of a patent and the applicant decides to save cost by terminating the application. An application may be deemed abandoned by
2236-481: Is a constitutional requirement, since the language of the US Constitution authorizes "the exclusive Right to their ... Discoveries" to Inventors only. The most significant implication of this requirement, which makes the US practice different from all other countries, is the fact that only actual people-inventors (and not their employer) can apply for a US patent. For this reason, patent applications filed via
2322-617: Is a fundamental aspect of the patent prosecution process. It allows inventors and applicants to freely share all relevant information—including sensitive technical details and potential legal issues—without fear that these communications will be disclosed to third parties or become public. This open dialogue is essential for patent advisors to provide comprehensive and effective legal counsel, ensuring that inventions are adequately protected and that all legal requirements are fully met. In many jurisdictions, patent advisors are bound by professional codes of conduct and legal regulations that mandate
2408-411: Is conducted by the patent office for any prior art that is relevant to the application in question and the results of that search are notified to the applicant in a search report . Generally the examiner conducting the search indicates in what aspect the documents cited are relevant (novelty, inventive step , background) and to what claims they are relevant. The materials searched vary depending on
2494-480: Is known as pro se representation. It is usually recommended that an applicant not represent him- or herself pro se. In the United-States, for example, a patent examiner will issue the following form paragraph if it is apparent that an applicant is not familiar with patent office policies and procedures: ¶ 4.10 Employ Services of Attorney or Agent Confidentiality between clients and their patent advisors
2580-719: Is repeated until the patent is in a form suitable for grant, the Applicant abandons the applications, or a hearing is arranged to resolve the matter. For 2021, the patent grant rate was 62.7% for the EPO , 74.8% for the JPO , 74.0% for the KIPO , 55.0% for the CNIPA , and 79.2% for the USPTO . In some jurisdictions, substantive examination of patent applications is not routinely carried out. Instead,
2666-469: Is that a patent is granted relatively fast. A patent in South Africa, for example, is granted approximately 8 months after the date of filing, whereas in examining countries, it is highly unusual for a patent to be granted in less than 3 years. At the same time, simply filing an application usually preserves the applicant's right to subsequently seek full examination and protection for his invention, if
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2752-510: Is the third subjective factor that has been identified as increasing the length and cost of infringement suits. H.R. 2795 would have eliminated this defense, instead codifying a duty of candor for all parties in proceedings before the USPTO, and providing authority for the PTO to investigate allegations of inequitable conduct and impose civil penalties. Most foreign countries already allow patent applications to be submitted by an assignee as long as
2838-579: The National Academy of Sciences . The 109th Congress concluded on January 3, 2007 without enacting H.R. 2795. Much of the proposed Act was carried into the proposed Patent Reform Act of 2007 ( H.R. 1908 , S. 1145 ), which was introduced in the 110th Congress on 18 April 2007. A similar act was introduced as the Patent Reform Act of 2009 in the 111th Congress . H.R. 2795 would have harmonized American patent law with
2924-509: The Patent Cooperation Treaty often have two sets of applicants: the physical individuals for the US, and the legal entity (employer) for all other countries. The requirement to list actual human inventors was further confirmed by case law : "Inventorship is indeed relevant to patentability under 35 U.S.C. § 102(f), and patents have in the past been held unenforceable for failure to correctly name inventors in cases where
3010-417: The confidentiality of client communications. Breaches of this confidentiality can result in severe consequences, such as disciplinary actions , fines, or even imprisonment . However, the extent of this protection varies significantly across different legal systems. For example, in some common law countries, communications between clients and patent advisors who are not qualified lawyers may not be granted
3096-440: The patent office , aiming to revoke or amend the granted patent if it is found to lack novelty, inventive step, or does not comply with other patentability criteria. Post-grant opposition serves as an efficient and cost-effective alternative to litigation for disputing a patent's validity. It helps maintain the integrity of the patent system by ensuring that only patents meeting all legal standards remain in force, thereby balancing
3182-419: The " unity of invention " or the " best mode requirement ". Judging patentability is one aspect of the official examination of a patent application performed by a patent examiner and may be tested in post-grant patent litigation. Prior to filing a patent application, inventors sometimes obtain a patentability opinion from a patent agent or patent attorney regarding whether an invention satisfies
3268-435: The Patent Act provides for a dual opposition system i.e. pre-grant opposition as well as post grant opposition. While a pre-grant opposition may be filed by any person, the post grant opposition may only be filed by a person interested in the field of invention. Members of the public can also initiate lawsuits in the courts of various nations to have patents declared invalid. United Kingdom patents can be reviewed by way of
3354-616: The Patent Offices of various governments, such as the Manual of Patent Examining Procedure (MPEP) in the United States, or the Manual of Patent Office Practice (MOPOP) in Canada. The formalities and substantive requirements for filing patent applications and for granting patents vary from one country or region to the other. To obtain patent rights for an inventor, the practitioner typically first drafts an application by interviewing
3440-479: The US) is issued drawing the examiner's objections to the attention of the applicant and requesting that they be addressed. The applicant may respond to the objections by arguing in support of the application, or making amendments to the application to bring it in conformity. Alternatively, if the examiner's objections are valid and cannot be overcome, the application may be abandoned. The process of objection and response
3526-585: The US, applications are required to be filed by inventor(s) rather than by patent owner(s). The practitioner may also seek to find out whether any publications, offers for sale, or other such public disclosures of the invention were made. In the U.S. these laws are laid out in Title 35 of the United States Code , §102. Under the rules of most jurisdictions, inventor’s own public disclosure or an offer to sell an invention, prior to filing an application for
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3612-428: The US, patent applications in the field of electrical connectors , for example, are abandoned at a low rate of only one abandonment for every 18 office actions (e.g. rejections). Business method patent applications, however, are abandoned at a much higher rate of one abandonment for every 5 office actions. In some jurisdictions, applicants are required to pay annual maintenance fees (also known as renewal fees) while
3698-470: The USPTO. H.R. 2795 would have also established post-grant opposition proceedings , a feature that is common in foreign patent regimes. Oppositions allow a wide range of potential invalidity arguments and are conducted through adversarial hearings that resemble courtroom litigation, but because they limit discovery and involve a lower burden of proof , oppositions are cheaper and faster than lawsuits. Patent applications are currently required to "set forth
3784-636: The United States to the first-to-file rule with the Patent Reform Act of 2005 , the Patent Reform Act of 2007 , and the Patent Reform Act of 2009 . Finally, on September 16, 2011, the United States shifted to the first-to-file rule with the enactment of the America Invents Act . Canada and the Philippines were among the last countries to use a first to invent system and they changed to first-to-file in 1989, and 1998 respectively. Most patent applications have at least two components, including
3870-461: The applicant is not found convincing, the rejection of the patent application may be upheld. In the United States, appeals are fairly rare. The Board of Patent Appeals and Interferences adjudicates only about 1 – 2% of all issued patents. For controversial areas such as business method patents , however, the appeals rate is much higher. About 10% of the business method patents issued in 2006 were appealed. In some areas, such as insurance patents ,
3956-483: The applicant is unable to convince the patent office to withdraw a rejection of his or her patent application. Further, abandonment is often held to have occurred if the applicant fails to respond within a certain time period to an office action issued by the patent office, or if the applicant specifically expresses his or her intention to abandon the application. The rate at which patent applications are abandoned can vary significantly from one technology to another. In
4042-451: The application lies fallow until the applicant demands examination, up to seven years after filing. This gives the applicant time to evaluate which applications are worth spending money on, and which should simply be abandoned. Only a portion of the total number of filed applications is selected for examination by the applicants. An expedited examination program allows for examination of a patent application in an expedited manner. To address
4128-411: The best mode contemplated by the inventor of carrying out his invention." This requirement is unique to American patent law, and was identified in the 2004 National Academy of Sciences report as one of the three subjective elements that contribute to high patent litigation costs. H.R. 2795 would have eliminated it. In patent infringement cases, treble damages are currently available if the court finds
4214-447: The defense to patents on "methods of doing or conducting business;" H.R. 2795 would have extended it to all subject matter. Outside the United States, pending patent applications are published 18 months after they are filed, which forewarns competitors that a patent is pending. Prior to 2000, American patent applications were never published. The American Inventors Protection Act allowed pre-grant publication 18 months after filing unless
4300-460: The earliest inventor, and the patent office issues a decision following the trial-like interference process. Interference practice does not apply to patents filed after September 12, 2012, because the U.S. moved to a first-to-disclose system which is in many ways similar to first-to-file. In some jurisdictions only authorized practitioners can act before the patent office, although applicants ( e.g., inventors) can generally represent themselves. This
4386-476: The earliest priority date, or if it is not available at that time it is published once it is available. The examination of patent applications may either be conducted at the same time as the search (as in the US, where a search report is not issued), or at a later date after the Applicant has requested examination (as, for example, under the EPC). Examination is the process by which a patent office determines whether
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#17327866589684472-528: The first-to-file system also contend it will create a "race to the mailbox," and result in sloppier, last-minute patent applications. The first-to-invent system, however, requires the United States Patent and Trademark Office (USPTO) to undertake lengthy and complicated "interference" proceedings to try to determine who invented something first when claims conflict. The first-to-file system, supporters contend, would inject much-needed certainty into
4558-408: The grant of a patent in which the validity of a patent is re-examined at the request of the patentee or third party, as provided by the applicable law. In some countries, a re-examination system is provided as an alternative or complement to the opposition system. In comparison to the opposition system, in general, the re‑examination is not time-bound and can be requested during the lifetime of
4644-440: The infringement was "willful." This is the second subjective factor that has been identified as increasing the length and cost of patent infringement suits. To avoid an allegation of willful infringement, many inventors purposely ignore learning about new patents, which contravenes one of the central purposes of the patent system, the dissemination of scientific knowledge. H.R. 2795 would have limited treble damages to cases in which
4730-416: The invention themselves, rather than derived it from another person. In order to police this requirement, the proposed H.R. 2795 provided for "inventor's rights contests" that would have allowed the USPTO to determine which applicant is entitled to a patent on a particular invention. Even under a first-to-invent system, the first-inventor-in-fact does not always obtain entitlement to a patent. If, for example,
4816-408: The inventor certified that he would not be seeking patent protection abroad. H.R. 2795 would have closed this loophole. Historically, interested individuals could enter a "protest" against a pending patent application. Critics contended that protests serve mainly to permit third parties to slow down the process for competitors. On the other hand, protests are the only way for third parties to challenge
4902-422: The inventor or inventors review the application prior to filing), and obtaining the applicant's permission, the practitioner files the patent application with the patent office. Usually, the practitioner seeks to file the application as soon as possible, because in all countries/jurisdictions presently, if two or more applications on the same subject matter are filed, only the party who filed first will be entitled to
4988-432: The inventor to understand the nature of the invention and help clarify its novel features. Practitioners need to ascertain what is already known to people familiar with the general field of the invention—such already-known material is termed the prior art , and to obtain drawings and written notes regarding the features of the invention and the background. During this initial phase, sometimes termed "patent preparation",
5074-410: The issue of patent pendency (the time it takes for a patent office to evaluate and grant or reject a patent application) and serve the needs of innovators/applicants efficiently, many Intellectual Property Offices (IPOs) have implemented such programs. Specific conditions to be met to qualify for accelerated examination are different from one office to another and between various types of programs in
5160-426: The issues. Obviously, such a patent does not carry the same presumption of validity as a patent that has been fully examined. Such systems are known as "invention registration" regimes, and have the benefit of reduced costs, because applicants may postpone or completely forego the expensive process of examination for inventions that are of small or speculative value in the applicant's field of endeavor. Another advantage
5246-412: The named inventors acted in bad faith or with deceptive intent." Another difference between the practices of the United States Patent and Trademark Office (USPTO) and other patent offices is the requirements for non-obviousness and for inventive step . Although both requirements have the same purpose to prevent patent issuance for routine improvements/modifications (rather than for true inventions),
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#17327866589685332-416: The oath of invention is signed. H.R. 2795 would have adopted a similar rule in the United States. Injunctions are currently awarded in patent infringement cases if the plaintiff satisfies a four-part test. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies are not available at law; (3) that, considering the balance of hardships between the plaintiff and defendant,
5418-442: The owner. This is among the most controversial issues in patent reform. Software and information technology companies generally support limiting injunctions, because their products often involve hundreds or thousands of patents, and a dispute over any of them can result in an injunction that halts production on the entire item. Biotechnology and pharmaceutical companies, on the other hand, generally oppose limiting injunctions, because
5504-448: The patent application is still pending. This can significantly impact an applicant's decision to continue with the prosecution. Before paying these fees, applicants often reassess the commercial viability of their invention and may decide to abandon the application if the technology is no longer deemed valuable or promising. Following abandonment, in most jurisdictions, an applicant is usually barred from later seeking patent protection for
5590-444: The patent application process. Finally, because every other country is on a first-to-file system, supporters claim that the majority of patent applicants and attorneys are already operating on a first-to-file basis. A first-to-file priority rule does not permit one individual to copy another's invention and then, by virtue of being the first to file a patent application, be entitled to a patent. All patent applicants must have originated
5676-423: The patent laws of the rest of the world by making the following changes in U.S. patent law: The United States is currently the only country in the world that gives priority to the application that claims the earliest invention date, regardless of which application arrives first. The first-to-invent system is thought to benefit small inventors, who may be less experienced with the patent application system. Critics of
5762-419: The patent office conducting the search, but principally cover all published patent applications and technical publications. The patent office can provide a preliminary, non-binding, opinion on patentability, to indicate to the applicant its views on the patentability and let the applicant decide how to proceed at an early stage. The search report is typically published with the patent application, 18 months after
5848-460: The patent office if the applicant fails to meet any of the requirements of the application process, for example replying to an examination report. In some jurisdictions (such as Japan and South Korea ), after filing an application, examination is optional, and only on request, rather than automatic. For example, in Japan, an application is published at 18 months after the priority date, but otherwise
5934-408: The patent. In some countries the re-examination is conducted by a single examiner or the division of the patent office which has granted the patent in the first place, in comparison to a full opposition board in the cases of post-grant oppositions. In some jurisdictions, such as the United States, the patent holder may even seek to broaden the scope of the invention defined in the claims by filing
6020-412: The patentee must identify errors in the original claims, thereby surrendering some claim scope in return. In the United States, "reexamination" refers to the process of requesting that the patent office once again subject an issued patent to further examination, accompanied by patents or printed publications showing that there is a substantial new question of patentability ("SNQ"), and/or an explanation of
6106-399: The plaintiff notified the defendant of the patent, claims and violation, and permit pleading willful infringement only after a court finds that the patent was valid, enforceable, and infringed. Defendants in infringement suits are currently allowed to allege that the patent is unenforceable because the patent holder did not operate honestly and in good faith when it applied for a patent. This
6192-438: The practical analyses of these criteria are based on different rules and sometimes result in different outcomes (see Inventive step and non-obviousness for more details). Details on patentability in the U.S. can be found in the Manual of Patent Examining Procedure or MPEP. This is published by the USPTO and is the reference manual used by both patent examiners and patent agents/attorneys. Chapter 2100 , in particular, gives
6278-480: The practitioner may also seek to determine precisely who contributed to the making of the invention. A prior public disclosure of the invention (or a sale offer) or an incorrect listing of inventors may incurably invalidate any patent that might result from an application. This determination is particularly important in the United States , but may be considered less important in other jurisdictions, because in
6364-403: The protection of sensitive information . As a result, clients and patent advisors must navigate a patchwork of national laws to ensure that confidentiality is preserved throughout the patent prosecution process globally. Patentability Within the context of a national or multilateral body of law , an invention is patentable if it meets the relevant legal conditions to be granted
6450-424: The rate is as high as 30%. Patent abandonment refers to the process by which an applicant voluntarily or involuntarily discontinues the pursuit of a patent application. Generally, an applicant is free to abandon his or her patent application at any time, and in many jurisdictions may "disclaim" his or her patent even after the patent is issued. Such abandonment may occur during the prosecution process, such as when
6536-429: The relevance of the prior art to the claimed invention. Unlike other invalidity considerations, only patents and printed publications will be considered in re-examination; see 37 CFR 1.552. Unlike reissue, reexamination may be requested not only by the patent holder or inventor, but by anyone , including anonymously, although whoever requests reexamination must also submit a fee, which is substantially higher than filing
6622-490: The rights of patent holders with the interests of the public and competitors. In the European Patent Office , for example, any person may file opposition to the grant of a European patent within nine months from grant. In Israel, a third party may oppose an allowed application for three months after publication of the allowed application. A re-examination is a proceeding conducted by the patent office after
6708-452: The same office. Some jurisdictions including Bermuda, South Africa, China (in the case of Utility Models), Germany (in the case of Gebrauchsmusters (Utility Model)) and by option Spain, go one step further, in that an application is passed to issue and publication as an enforceable patent in short order, with no substantive examination. Questions of novelty and non-obviousness/inventive step are not reviewed until litigation may arise concerning
6794-586: The same privilege as those with attorneys, potentially exposing such communications during legal proceedings like discovery . The international nature of patent prosecution adds complexity to maintaining confidentiality. While some countries extend confidentiality protections to communications with both local and foreign patent advisors, others do not recognize privilege for advice received from advisors qualified in another jurisdiction. This disparity can lead to situations where confidential communications in one country may be subject to disclosure in another, undermining
6880-465: The same subject matter which was earlier abandoned by the applicant. In some jurisdictions, applicants may be able to revive an abandoned application within a certain time frame or under specific conditions, such as unintentional abandonment. Post-grant opposition occurs after a patent has been granted, providing a window during which third parties can contest the validity of the patent. This procedure allows challengers to present arguments and evidence to
6966-451: The same subject matter, the patent office could declare an "interference" and require that each of the parties appear before the patent office to determine who was the earliest to discover the claimed invention. This "interference practice" is not followed in most other jurisdictions, because it is obviated by the "first-to-file" system used in most countries. During an interference, parties may submit evidence supporting their contention to be
7052-431: The same technology later and obtained patent protection, then the trade secret holder could face liability for patent infringement. Many foreign patent regimes, on the other hand, protect prior user rights, which are often seen as assisting small entities that may lack the sophistication or resources to pursue patent protection. The American Inventors Protection Act of 1999 established a "first inventor defense," but limited
7138-516: The substantive conditions of patentability. Many national and regional patent offices provide procedures for reconsidering whether or not a given patent is valid after grant. Under the European Patent Convention , any person can file an opposition provided they act promptly after the patent is granted. In the United States, members of the public can initiate reexamination proceedings. Japan provides similar options. In India,
7224-478: The validity of invention registrations is dealt with during any infringement action. The search and examination process is principally conducted between the patent office and the applicant. However, in some jurisdictions, it is possible for interested third parties to file opinions on the patentability of an application. Such opinions may take the form of a formal pre-grant opposition inter partes procedure or it may simply be an opportunity of filing observations as
7310-537: Was United States patent legislation proposed in the 109th United States Congress . Texas Republican Congressman Lamar S. Smith introduced the Act on 8 June 2005. Smith called the Act "the most comprehensive change to U.S. patent law since Congress passed the 1952 Patent Act." The Act proposed many of the recommendations made by a 2003 report by the Federal Trade Commission and a 2004 report by
7396-422: Was incorrect in applying the law, interpreting the claims on the patent application, or interpreting and applying of the prior art vis-à-vis the patent application. If the appeal is successful, the patent office or court may order that a patent be issued based on the application, or that the patent office correct its examination of the application if the patent office is found to have been incorrect. Otherwise, if
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