Patent It Yourself - PDF Archive

430 | Patent it YOURSELF
explanation of the relevance of each citation. (The relevant
portions of non-English citations must be translated.) If
the protest is made on some other basis, such as fraud or
improper inventorship, it will be put in the file without any
further action. The protest should identify the application
as completely as possible. No fee is required and the PTO
will not communicate further with the protestor, except to
return the usual postcard if one is included with the protest.
If you don’t know the serial number, filing date, and/or
name of the inventor (the usual case), you should identify
the application with as much information as you can.
4. File a Passive Citation Against
a Patent (Rule 501)
Under Rule 501, anyone can cite prior art in the file of a
patent. (If the patentee makes the citation, it must include
an explanation of the pertinence of the art and how the
claims differ from the art.) The person making the citation
can make it anonymously and should send copies to the
PTO (no fee required) and the patentee, or should file it in
duplicate with the PTO. No fee is required.
5. Request Reexamination (Rules 510 and 902)
Anyone can cite newly discovered prior art against a
patent and have it reexamined. There are two types of
reexamination, ex parte (one party) under Rules 510 et
seq., and inter partes (two parties) under Rules 902 et seq.
As reexamination procedures are relatively complicated
and the PTO fees are expensive, I suggest you consult an
attorney if you want to institute a reexamination.
M. The Court of Appeals for the
Federal Circuit (CAFC)
Full-blown patent infringement suits are very expensive
and can cost each side hundreds of thousands, and even
millions, of dollars in attorney fees, travel, and deposition
expenses, witness fees, and telephone and secretarial
expenses. Also, patent litigation can take one to ten
years to complete. Thus, litigation favors wealthy or large
corporations, which are far better equipped to defend
and maintain patent infringement suits than a single
individual. In the past, if you discovered an infringement,
it was usually to your advantage not to sue and to accept a
settlement that was less than you thought you were owed. In
short, “gold ruled the law.”
In the 1980s, the pendulum swung back in favor of
the patent owner, primarily because of several important
statutory and common-law changes. One of these was the
creation of the Court of Appeals for the Federal Circuit
(CAFC) to hear all patent appeals. It is headquartered in
Washington, DC, but it sometimes travels around the U.S.
to hear appeals in major cities. Previously, appeals of patent
cases were decided by the various Circuit Courts of Appeal
covering the area of the country where the trial court (the
relevant U.S. District Court) was located. The result was
a patchwork quilt of inconsistent patent decisions. In the
1980s the CAFC was considered to be propatentee, but in
the years since 2005, the CAFC appears to have turned
strongly antipatentee. Commentators claim that the CAFC
looks for any reason it can find to reduce the rights of
patentees by invalidating claims and interpreting them
vary narrowly. While it is beneficial to have one court now
decide all patent appeals—it creates a uniform body of
patent law—unfortunately this body of law has not favored
inventors. The Supreme Court appears to be following this
course, as well.
In eBay v. MercExchange (2006), the U.S. Supreme Court
held that even if a court finds that a patent is valid and
infringed, the patent owner is not automatically entitled
to a court order enjoining further infringement. Under
the Supreme Court’s ruling, a trial court shouldn’t issue
an injunction unless the patent owner shows a balance of
equity in its favor—for example, the patent owner is selling
products employing the invention and would be damaged
by letting the defendant continue to infringe. Before this
ruling a company would be more inclined to cave in to
the demands of a patent holder because of fears that an
injunction would be granted automatically.
But this is not the full extent of the damage. The CAFC’s
opinions have also been regarded as confused and
conflicting. Consider what one eminent authority, Professor
Irving Kayton of George Mason University, has said:
“80% (and increasing) of litigated patent claims in recent
years have been held not infringed or invalid for violation
of the written description requirement of Section 112,
paragraph 1, the blame for which Federal Circuit panels
chronically place upon the shoulders of ex parte patent
practitioners, to the exclusion of its own chaotic claim
construction opinions which have become the subject of
ridicule among many federal district court judges and at
least one of the Federal Circuit’s own sitting members….
[There have been] multitudinous conflicting and confusing
dictates of the [CAFC’s] opinions … during the past ten
years.”
One judge on the CAFC was so disgruntled with the
CAFC’s actions that he bitterly said, in a dissent in Phillips
v. AWH Corp. et al., 2005 Jul 12, “The court’s opinion today