What A Patent Owner Can Do to Improve the Chance of Coming Out On Top
By Lawrence Hoffman
J.D. B.S.E.E. and Comp. Sc., U.S. Patent Attorney
Charles Holland Duell, the U.S. Commissioner of Patents from 1898 to 1901 is said to have suggested closing the U.S. Patent Office because “Everything that can be invented has been invented.” Fortunately for Commissioner Duell’s reputation, recent research indicates that he said just the opposite:
In my opinion, all previous advances in the various lines of invention will appear totally insignificant when compared with those which the present century will witness. I almost wish that I might live my life over again to see the wonders which are at the threshold.
Nine million plus patents and countless groundbreaking innovations later, we see that he was right. But now, in some fields such as software related technology, and the life sciences, there is so much information to be considered that examiners are not able to consider it effectively. Under such conditions, issuance of invalid patents is almost inevitable.
The U.S. Patent and Trademark Office is working hard to improve the situation by hiring more Examiners and by improving search technology. However, the U.S. Congress has also responded to complaints that the U.S. patent system needed fixing. One of the complaints was litigation has gotten out of hand. As a result, in 2011, the America Invents Act (AIA) was enacted. The AIA created several administrative avenues in the PTO for post grant review of patent validity. It also created the Patent Trial and Appeal Board (PTAB) to handle these validity reviews.
One of these avenues is the inter partes review (IPR). Under the IPR process, a party other than the patent owner can ask the PTAB to determine the validity of an issued patent in terms of its novelty and obviousness in relation to other issued patents and publications.
There are good things and bad things about IPRs and the way the PTAB handles them. An IPR is much less costly than litigation, and are generally decided much faster. Often, if litigation is already pending when an IPR is requested, the courts will stay the litigation pending the outcome of the IPR.
The outcome of an IPR can sometimes have wide-ranging effects since a final decision validating a patent will preclude the IPR petitioner or third parties from raising validity issues based on prior art asserted, or that could have been asserted, in the IPR.
The PTAB judges are usually selected from the ranks of senior Examiners and therefore are more knowledgeable about, and more comfortable with, complex technology.
Despite all of this, IPR procedures tend to be biased against patent owners. For one thing, in litigation, patent claims are presumed to be valid, and this presumption can only be defeated by clear and convincing evidence. In an IPR, a presumption of validity does not exist and claims can be held to be invalid based on a preponderance of the evidence.
Perhaps of even more significance, in an IPR, claims are given the broadest reasonable interpretation consistent with the description in the patent. In litigation, claim language is given its ordinary meaning as understood by a person of ordinary skill the art. These differences make it significantly easier for a patent to be held invalid during an IPR.
Finally, the opportunity for the patent owner to amend claims to overcome asserted prior art during an IPR is quite limited.
All things considered, those who challenge patent validity will find more to like in the IPR than patent owners. That may be ok in dealing with the so-called “patent trolls”, the patent assertion bullies who don’t do anything except buy unused patents and send unjustified infringement charges hoping that victims of their scams will prefer to settle rather than go through the cost of a law suit.
But patent owners need to protect their technology against what are now sometimes called “efficient infringers” – tech giants who steal innovative technology knowing that they will only have to pay for it in those rare instances the owner has the money and will to fight and the good luck to have its patent held valid.
Yes, that was incendiary and overly dramatic. Nevertheless, what can a patent owner do to level the IPR playing field?
There are three major things that can be done. First, patent applications should be written to include a sales pitch on why the invention is different from the prior art, and why those differences are not obvious variations. But that requires a good knowledge of the prior art and that the inventor has communicated that knowledge to the patent attorney when the application is being drafted.
That may not help much if the art asserted in the IPR is very different from what is described in the application, but you must do your best with the knowledge you have since even prior art that is described in the patent and art considered by the examiner can be asserted in an IPR.
Another thing you should do, at least for important inventions, and irrespective of the threat of an IPR down the road, is to keep an application or even several applications on the invention pending after an earlier application issues as a patent. You do this by filing a so-called “Continuing application”.
There are three kinds of Continuing applications: a Continuation (or CON), a Division (or DIV), and a Continuation-in-Part (or CIP). A CON and a DIV have the same disclosure as the original or parent application.
A CON claims the same subject matter as that claimed in the parent application but in broader or narrower terms. A DIV covers a different patentable aspect of the subject matter claimed in the parent application. It is generally filed in response to an objection during examination of the parent application that the original claims are directed to separate inventions. Alternatively, if the parent application is a national phase application base on a PCT application, the objection may be that the claims lack unity of invention.
A CIP is like a CON, but it also discloses additional features developed after the filing of the parent application, and can contain claims to the original subject matter (as in a regular CON) and also to the new subject matter.
A succession of Continuing applications can be filed as long as you maintain copendency with the original application or one of its offspring.
Why are Continuing applications important? One important reason is to get a patent which might have narrow claims while preserving the option to pursue broader claims. Another important reason is to allow you to tailor claims to cover infringing activities that may not have been covered by claims in the earlier patent.
While you can theoretically amend claims of a patent during the IPR, in practice, amendments are rarely permitted, and are largely at the discretion of the PTAB. Being able to add claims to a Continuing application still pending during an IPR can be a lifesaver since it will allow you to seek narrower claims that distinguish over art that you first learned of when it was asserted in the IPR without concern that the PTAB will refuse to permit the amendment. Also, in rare instances, you may want to put broader claims in the CON during an IPR. Amendments broadening claims during an IPR are never permitted.
Filing a succession of Continuing applications may have another strategic benefit. If the claims of the applications are carefully drafted, the patentee can get multiple patents that cover different aspects of an infringer’s product. The existence of multiple patents may deter the infringer from taking advantage of the IPR process because each patent must be the subject of a separate IPR. One cannot “group” them into a single proceeding. The resulting cost and effort involved prosecuting multiple IPRs may be great enough that the infringer may decide to defend the patentee’s infringement law suit, where the deck is less stacked against to patent owner.
Of course, the existence of multiple patents has the additional advantage that it can increase the value of patent owner’s total portfolio.
A reissue application is the third weapon in the patent owner’s anti-IPR arsenal. A reissue application allows the correction of an unintentional error resulting in the patent claiming more or less than it should have claimed. This permits narrowing of the patent claims to take account of prior art cited in an IPR when there is no Continuing application still pending.
Reissue applications are examined in much the same way as other applications except that you are not allowed to reclaim subject matter you gave up by amendment when prosecuting the original application. Obviously, having a continuing application to work with will give the patent owner more options, but a reissue may be the only answer in some situations.
In summary, creative use of continuing applications is an important part of a good IP protection program and may even make the difference between emerging from an IPR with your rights intact or losing important rights due to lack of advance planning.