Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. It is noteworthy that what is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.

There are three types of patents:

1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;

2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and

3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

An invention must meet several requirements to be eligible for a patent. The invention must concern patentable subject matter (section 101). The invention must be novel and the application for a patent on the invention must be timely (section 102). The invention must be non-obvious (section 103). Finally, the invention must be sufficiently documented (section 112).

WHAT IS A TRADEMARK OR SERVICEMARK?

A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A Servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service-mark.

It is essential to understand that Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks that are used in interstate or foreign commerce may be registered with the USPTO.

WHAT IS A COPYRIGHT?

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly; therefore, a copyright protects the form of expression rather than the subject matter of the writing.

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A PATENT FOR AN INVENTION IS THE GRANT OF A PROPERTY RIGHT TO THE INVENTOR

It is difficult to argue against the proposition that the owners of an invention (“a property right owner”) should not be foreclosed from all due process and procedural rights otherwise available to all property right owners; thereby, creating good cause to extend the 1 year time frame to allow an investor to both (1) enjoy full due process and procedural rights, and (2) avoid the prejudice that attaches to the inventor when their due process and procedural rights are extinguished.

35 U.S. Code § 316 – addressing the Conduct of the inter partes review (“IPR”) process under “Amendment of the Patent” states, that “During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways”…including “For each challenged claim, propose a reasonable number of substitute claims”.

On May 09, 2016 the USPTO published a blog titled “Further Insight Provided on PTAB Amendment Motions with New Study” written by Acting Chief Administrative Patent Judge Nathan Kelley (“Kelley”). It is overview of the Study the USPTO stated “But unlike in the examination context, the PTAB proceedings must be completed within a year, and there is no time for the back-and-forth between the applicant and the USPTO that happens during prosecution”.

The above statement is troubling because the PTAB is not constrained by the 1 year time frame, given the fact that the Code provides an additional 6 months (total 18 months) for good cause.

Let’s not lose sight of the fact that there is no evidence that allowing time for “back-and-forth between the applicant and the USPTO” cannot be accomplished within the 1 year time frame, even if motions to amend were more readily available.

Allowing an inventor to enjoy the same due process and procedural rights provided to all property right owners; and, avoiding the prejudice that attaches to the inventor when their due process and procedural rights are extinguished, we respectfully suggest, meets the legal burden of showing good cause for a 6 month extension.

If 35 U.S. Code § 316 provides a patent holder with a “right” to amend “…each challenged claim, [and the right to] propose a reasonable number of substitute claims”, can the PTAB ignore this right using the 1 year time constraints as its only basis for denial?

Or, in the alternative, is the PTAB improperly interrupting the Code to provide that a patent holder’s only “right” is to file a Motion, which can be granted or denied by the PTAB?

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