Challenging Issued Patents by Post Grant Review Proceedings

Challenging Issued Patents by Post Grant Review Proceedings

Granted Patents may be challenged within the USPTO any time before nine (9) months after issuance, without filing a lawsuit in Federal District Court.  The United States Patent and Trademark Office (USPTO) regulations allow for a procedure to challenge patents. This is called a Post Grant Review Proceeding (PRG) for patent applications filed on or after 19 March 2013 or Inter Partes Review proceeding for those applications filed before 19 March 2013.

In either case, the third party challenger may attempt to invalidate one or more claims as unpatentable on any ground relating to invalidity (i.e., novelty, obviousness, written description, enablement, indefiniteness, but not best mode).

The government filing fee varies, and ranges from $9000.00 to $18,000.00.

Attorney fees can range from $50,000.00 to $280.000.00, which is less than the average attorney’s fees for lawsuits filed in Federal District Court.

A party dissatisfied with the final written decision in a post grant review may appeal to the Federal Circuit.

Of course, if you are beyond the nine (9) month post issuance time period, the patent can be challenged by filing a Declaratory Judgement Action in Federal District Court.

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Domain Name Disputes and Cybersquatting

 

            According to the Anticybersquatting Consumer Protection Act Cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.  The person registering, trafficking, or using the domain name in bad faith is called a cybersquatter.  Typically, the cybersquatter then offers to sell the domain to the person or company who owns a trademark.

            In a recent case, the jewelry company Swarovski filed a complaint against a Mr. Derk Hond. The case is, LLSwarovskiAktiengesellschaft v. Derk Hond Case No. D2013-0005.  The respondent, sometimes called a defendant, registered the domain name cheap-swarovski.net.

FACTS

            The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2013.  Swarovski uses the SWAROVSKI trademarks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries

LAW

In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and

                        (iii) The disputed domain name has been registered and is being used in bad faith.

CONCLUSION

            The Panel orders that the disputed domain name be transferred to the Complainant.

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The Unites States most un-appreciated asset. - Innovation and Creativity

Where would the United States be today without the innovations of:

1. Thomas Edison
          Thomas Edison patented over 1000 inventions include the phonograph, the incandescent light bulb, and the motion picture;

2. Samuel F. B. Morse
          His inventions include the telegraph and morse code;

3. Alexander Graham Bell
          His inventions include the telephone in 1876;

4. Henry Ford
          The automotive industry drove the American economy since it inception;

5. George Eastman
          He invented the Kodak camera;

6. Bill Gates and Steve Jobs
          Computers.

Many important inventions were invented or best produced in the United States.  The reason is that the U.S. constitution created the structure of our government.  The limits of the government provide free enterprise to grow by the incentive and fun involved in creating and inventing, and reaping the benefits of one's creation, generally through the U.S. patent system and international patent laws.

Where would the U.S. be had the above inventions been invented or primarily developed in another country?

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How can the Patent Examination Process be Accelerated?

A. Petition to Make Special (final disposition goal within 12 months)

        I.        the applicant's age or health (no fee);

        II.        the invention will materially (no fee);
                a)        enhance the quality of the environment;
                b)        contribute to the development or conservation of energy resources; or
                c)        contribute to countering terrorism.

        III.        accelerated examination program.
        Under the accelerated examination program the applicant can pay a fee of $30 to $140 depending on the type of applicant, and meet other requirements, below:

        a)        the application must contain three (3) or fewer independent claims and twenty (20) or few total claims.  The application may not contain any multiple dependent claims;
        b)        the applicant waives the right to separately argue the patentability of any dependent  claim during any appeal;
        c)        the claims must be directed to a single invention;
        d)        the applicant agrees to have (if requested by examiner) an interview to discuss the prior art and any potential rejections, and a telephonic interview to make an election without traverse;
        e)        the applicant must provide a pre-examination search statement that includes:
                i)         an information disclosure statement;
                ii)        an identification and waiver of all the limitations of the claims;
                iii)        a detailed explanation of how each of the claims are patentable over the cited references;
                iv)        a statement of utility as defined in the independent claims;
                v)        an identification of any cited reference that may be disqualified;
                vi)        a showing of where each limitation of the claims finds support having a proper written description under 35 U.S.C. 112.

B. Track One Prioritized Examination (final disposition goal of 12 months)
        This is a procedure for expedited examination upon payment of a fee and filing a petition, which may be granted or denied.  The fee is $4000.00 for a large entity, $2000.00 for a small entity, and $1000.00 for a micro-entity.

         The fees are higher than the petition to make special fees, but there are less filing requirements and less potential waiving of claim limitations.

C. An applicant can also attempt to accelerate the examination process in international applications using the Patent Prosecution Highway(PPH), which will not be discussed in this issue.

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Copyright 2014 Robert J. Sayfie