Patent It Yourself - PDF Archive

ChaPter 15 | After Your PATENT ISSUES: Use, MAINTENANCE, and INFRINGEMENT | 429
it. Remember, if you don’t infringe the independent
claims, you won’t have to worry about the dependent
claims. (See Chapters 9 and 13, and Section J, above.)
4. If No In-Force Patent Is Applicable
Unless there is an in-force patent covering an item, anyone
is free to make and manufacture identical copies of it,
provided:
• one doesn’t copy the trademark of the product
• the shape of the product itself is not considered a
trademark (such as the shape of the Fotomat huts), and
• you don’t copy “secondary meaning” features. (See
Chapter 1.)
If you buy a product from another in the course of
business, your vendor is obligated to indemnify you for any
such infringement under the Uniform Commercial Code.
However, you can be sued for infringement and be liable
for damages. (Hopefully, your vendor will be around to
reimburse you.) You can also be subject to an injunction
ordering you not to infringe any more.
One manufacturer’s effort to copy a small hardware item
by having it manufactured cheaply in the Orient backfired.
He sent the item overseas with instructions to make several
thousand identical copies of the item. Since he didn’t give
any further instructions, the Oriental manufacturer did
as instructed, manufacturing and shipping back several
thousand copies of the item, including a faithful copy of
the embossed trademark of the manufacturer’s competitor.
The manufacturer then had to spend significant money
obliterating the trademark, thereby losing his entire profit
in the process.
L. Citing Prior Art Against Patent
Applications and Patents
Suppose you’re aware of prior art that would affect a patent
or patent application and you want to make the PTO or
the public aware. Perhaps you want to get the art in the
file of your own patent or application to get it behind you
and show your good faith and put forth your arguments
as to why it doesn’t invalidate your claims. Or maybe you
are manufacturing (or contemplating manufacturing)
something based on the invention and you don’t want
someone to get a patent on it. Or possibly you just want to
do it as a public service to prevent an improper patent from
issuing or cast a cloud on a patent you know was improperly
issued. How do you apprise the PTO or the public of this
prior art?
There are five ways that you can cite prior art relevant to
your own or someone else’s patent or patent application:
1. File a passive citation against your own patent
application (Rule 97).
2. File a passive citation against a published patent
application (Rule 99).
3. File a protest against a pending application (Rule 291).
4. File a passive citation against a patent (Rule 501).
5. Request a reexamination (Rules 510 and 902).
Let’s examine each of these in more detail.
1. File a Passive Citation Against Your
Own Patent Application (Rule 97)
As part of your “duty of disclosure” under Rule 97 you are
required to provide an Information Disclosure Statement
(IDS) in which you cite prior art that you are (or become)
aware of, against your own application. (I include it here
for the sake of completeness. There is no fee if you timely
file the IDS. For more information, see Chapter 10, Section
G.) Once your patent issues, this obligation ends, although
it would be considered highly improper and subject you to
sanctions to sue on a patent that you know is invalid.
2. File a Passive Citation Against a Published
Patent Application (Rule 99)
Under Rule 99, anyone can cite prior art against a published
patent application. The PTO will enter the citation in the
application file if it includes a fee (see Appendix 4, Fee
Schedule), a list of the citations, and a copy of each citation.
(The relevant portions of non-English citations must be
translated.) A copy of the citation must be sent to (served
upon) the applicant. The person filing the citation should
not explain the relevance of the citations. There is no fee,
but the citation must be filed within two months after the
application is published or prior to a Notice of Allowance,
whichever is earlier.
3. File a Protest Against a Pending
Application (Rule 291)
Under Rule 291, anyone can protest any pending application
before it has been published or allowed. The protest must
be filed with the PTO (no fee required) and a copy must be
served upon the applicant. If the protestor does not know
the address of the applicant, they must file two copies with
the PTO. If the protest is made on the basis of prior art, it
must include a list of the prior art, copies of the art, and an