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Miscellaneous Nuances of Patent Law

What if I Receive an Office Action?

If an applicant receives an office action, the applicant has several options.  The applicant can acquiesce to the office action, thus accepting the rejection of the application and ending prosecution. The applicant can also amend the application, making all the necessary changes identified by the patent examiner. The applicant can also contest the office action and submit a response explaining how and why the patent examiner erred in rejecting the application.  Finally, the applicant can file an appeal with the Patent Board of Appeals and Interferences if the applicant does not believe continued prosecution would be worthwhile.

What if there are multiple inventors for an item in the patent application

If two or more persons work on an invention, ownership rights in the patent will issue to each inventor that is named on the patent application. Thus, if multiple inventors are named on the application, each inventor will own the patent.  That is, each inventor can exclude others (except the other joint patentees) from making, using, selling, offering to sell or importing the invention without permission from the other inventors.

How long will it take to process my application

On average, it takes about three years for patent prosecution. However, the duration of individual prosecutions may be shorter or significantly longer depending on the nature of each application.

Assignability of patents

Patents are assignable by the owner of a patent. The assignment must be in writing and must contain the whole bundle of rights that are associated with the ownership interest in the patent. Regarding joint patents, a joint patentee can only assign his own proprietary interest in the patent and cannot assign the interest of any of the other joint patentees.  The assignee assumes no greater rights than those held by the original joint patentee. Assignments that are not recorded with the Patent and Trademark Office within 3 months of their dates or prior to a subsequent purchase are avoid against subsequent purchasers.

Filing for a Patent Overseas (Patent Cooperation Treaty

The first step to filing an international treaty under the Patent Cooperation Treaty is to filing an international application at a designated Receiving Office.  For the United States, the designated Receiving Office is the Patent and Trademark Office. Generally, upon filing of the international application, the international application has the effect of filing a domestic patent application in each of the member states, subject to certain reservations by the several member states.  The filing date in each of the member states is the same as the filing date of the international application. Then, international search of prior art is conducted by an International Search Authority, authorized under the treaty.  At the conclusion of this search, a report is published to help the applicant decided whether it is best to proceed with the international patent application or to file in the individual member states. Eighteen months after the filing date, the application is published. After 30 months, the application goes through the national (domestic) phase and is governed by the respective domestic rules.

Law Regarding the Rights to Inventions Made by Employees

There are generally three categories that inventor-employees fall into: employees hired to invent, employees who invent using the employer’s time or resources, and “independent” inventor employees. In the case of employees hired to invent, the employer is deemed by the common law to be the owner of the invention and the inventor-employee does not have any true rights in the invention. Employees who invent during working hours for the employer or using the employer’s resources creates different ownership rights.  The employee is regarded as the owner of the invention however, the employer has a limited “shop right” to use the invention.  This shop right is a recognition of the fact that, while the invention may not necessarily be within the scope of the inventor’s employment, the employer’s time or resources were invested in the development of the invention. In the case of an independent inventor-employee, the employer has no rights to the invention.  The invention is created outside of work hours and without the employer’s resources.  The common law regards the employee as the full owner of the invention.

What are my rights during the patent application process?

During the patent application process, the patent applicant has the right to a receive a reasonable royalty from any person who, after the date of the publication of the patent application, makes, uses, sells, offers to sell, or imports the invention into the United States or, if the invention is a process, makes, uses, sells, offers to sell or imports into the United States any product made by the process. However, the patent applicant must prove actual knowledge by the alleged infringer of the published patent application. The patent applicant must also prove that the alleged infringing product is substantially identical to the invention that is the subject of the patent application. This right to the reasonable royalty expires if it is not exercised within 6 years of the issuance of the patent.

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