As of October 31, 2013, the Project on Commercializing Innovation is no longer active.
The Project is succeeded by the Hoover IP² Working Group on Intellectual Property, Innovation, and Prosperity. Hoover IP²

Chapter Two – Obtaining the Patent Grant

Chapter two covers the process of applying for and obtaining a patent from the United States Patent and Trademark Office.  This process is known by applicants as patent prosecution and by the examining corps as patent examination.  A basic understanding of the process is essential because of the far-reaching effects that choices made during prosecution can have on the strength, validity, and enforceability of the resulting patent.

In this chapter, the Sorensen Cup Holder Patent (the ‘497 patent) is used as an in-depth example, or case study.  Patent protection helped bring this invention to market through a commercial enterprise while simultaneously allowing the public to use the knowledge disclosed in the patent to develop new and better cup holders.  In fact, the ‘497 patent has been referenced in dozens of utility and design patents as prior art, including some granted as recently as late 2011.


  1. The recently enacted America Invents Act makes several important changes to the patent application process, including fee discounts for micro entities and optional prioritized examination.  Micro entities are a new class of applicant, adding to the existing large and small entities.  In general, fees for micro entities are 25% of the large entity fee.  Micro entities include public institutions of higher education and individual inventors with small patent portfolios and gross income less than 3 times the median income.  See35 U.S.C. § 123 (as amended).
  2. Because the AIA changes the United States from a first-to-invent to a first-inventor-to-file system, the Act does away with patent interferences.  As a result, the Board of Patent Appeals and Interferences is now the Patent Trial and Appeal Board.  Interferences are replaced with derivation proceedings, which determine whether an inventor derived the invention from another.
  3. The Act also creates two new types of inter partesproceedings: post-grant review and inter partesreview.  Post-grant review may be requested in a 9 month window after a patent issues, and the available prior art is broader than ex parte reexamination, which itself remains unchanged.  The new inter partes review is available after the post-grant review window, and it replaces inter partes reexamination, which will be abolished on September 16, 2012.

Post-grant review is already available in the European and Japanese Patent Offices, though the procedures and possible outcomes are different than those in the United States.  For example, post-grant review in Europe may result in revocation of a patent, which renders it void ab initio.  Hal Wegner has written about the Japanese post-grant review system, which he argues is both simple and efficient.  Harold C. Wegner,Japan: A Comparative Model for Post-Grant Challenges, Feb. 7, 2012, available at  The Japanese system typically produces a post-grant decision in six to twelve months. Given that the AIA requires a decision within one year (with a possible six-month extension by the Director), the Japanese system may offer insight into how to produce effective results in a short time-frame.

  1. The AIA also creates a new supplemental examination proceeding, which allows a patentee to cure potential (but not already alleged) inequitable conduct by providing new information.  If the new information raises a substantial new question of patentability, this may lead to a reexamination.
  2. Finally, the AIA creates a transitional post-grant review procedure for patents that claim “a method or corresponding apparatus for performing data processing operations utilized in the practice, administration, or management of a financial product or service.”  Prior patent reform bills would have targeted those patents more directly, but such targeted language might have raised a Fifth Amendment takings claim.  The Act’s post-grant review procedure attempts to avoid that problem.
  3. 35 U.S.C. § 154 provides that the term of a patent may be extended beyond the ordinary 20 year term in order to compensate for three types of delay: delay due to failure by the Patent Office to act within certain set timeframes, delay due to failure by the Patent Office to issue a patent within three years of the actual filing date, and delay due to interferences, appeals, or secrecy orders.  The three types of delay are called A, B, and C, respectively, after the subsections of § 154 that describe them.  Patent term adjustment (PTA) became a more significant issue following Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010), which modified the calculation of B delay, generally to the benefit of patentees.  PTA determinations are especially important in the pharmaceutical industry, in which a patent may issue years before a product can be brought to market, leaving the patent owner with a limited time in which to recoup its investment.

The Patent Office provides a patentee with a preliminary PTA calculation at the same time as the notice of allowance, but this calculation is frequently contested.  § 154(b)(3) and 37 C.F.R. § 1.705 allow for a reconsideration request to be filed either at the time of the issue fee payment or within two months of the patent grant date, depending on whether the PTA issue was ripe at the time of allowance.  Once the Patent Office has made a decision regarding this first request, the patentee has two months in which to make a second request for reconsideration.  The Patent Office’s decision on this second request is usually considered a final agency action.  If the patentee is still dissatisfied after the second decision, he or she may file a civil action in the District Court for the District of Columbia within 180 days of the grant of the patent.

The District Court for the District of Columbia has held that the 180 day period is tolled until the Patent Office makes a final agency decision.  Bristol-Myers Squibb Co. v. Kappos, No. 09-1330 (D.D.C. Jan. 27, 2012).  This decision encourages patentees to resolve PTA issues with the Patent Office first rather than filing a civil suit.  See Courtenay Brinckerhoff, District Court Finds That Deadline to File PTA Action Was Tolled by Request for Reconsideration, PharmaPatents (Feb. 6, 2012),

  1. In a divided en banc decision the Federal Circuit has held that intervening rights are only available in cases in which the reexamined claims are textually amended.  Marine Polymer Techs., Inc. v. HemCon, Inc., ___ F.3d ___ (Fed. Cir. 2012) (en banc).  The majority held that although arguments made by the patentee during reexamination may change the scope of the claims, the text of § 252 limits intervening rights to “amended or new” claims, not claims that were found to be patentable as issued.
  2. Ordinarily district courts must defer to the Patent Office’s factual determinations when considering an appeal under 35 U.S.C. § 145.  However, when a patent applicant presents new evidence to the district court contradicting those determinations, the district court must review the factual determinations de novo.  Kappos v. Hyatt ___ U.S. ___ (2012).  The district court is not required to give all of the evidence equal weight, however, and may favor the evidence previously presented to the Patent Office.
  3. Patent Office filings and copyright.  As part of the patent application process, many applicants submit copies of prior art documents to the Patent Office for review.  Many also make copies for their client files.  These documents are often copyrighted articles from technical journals or other publications.  Two publishers have sued patent law firms for copyright infringement over this practice.  Am. Inst. of Physics v. Schwegman, Lundberg & Woessner, P.A., No. 12-528 (D. Minn. Feb. 29, 2012); John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert  & Berghoff LLP, No. 12-1446 (N.D. Ill. Feb. 29. 2012).  Whether submitting documents to the Office and keeping copies for client files is fair use or otherwise non-infringing has not yet been determined, but the district court in one such case has denied a motion to dismiss.  Am. Inst. of Physics v. Schwegman, Lundberg & Woessner, P.A., No. 12-528 (D. Minn. July 2, 2012).  Pending the outcome of the case, practitioners may consider refraining from making unnecessary copies of copyrighted prior art references and taking licenses for any necessary copies.  The plaintiff in the Am. Inst. of Physicscase later amended their complaint to remove the allegation of infringement for copies submitted to the Patent Office but continue to allege that copies made for client files are infringing.  No. 12-528 (D. Minn. Sept. 14, 2012).
  4. European patents with unitary effect.  Also called a unitary patent or unified patent, the European patent with unitary effect is a new way to obtain patent protection in most European Union countries without submitting separate national applications.  Unitary patents will be granted by the European Patent Office and enforced in a set of specialized patent courts in Paris, London, Munich, and potentially other locations.  Appeals will be heard by a specialized tribunal in Luxembourg, and the Court of Justice of the European Union will remain the highest court of appeal.  The first unitary patents are expected to be issued in 2014, assuming the plan is ratified by at least 13 EU member states, including the UK, Germany, and France.  Traditional national and European Patent Convention applications will continue to be available during a transition period of several years.


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