What To Do After The USPTO Has Issued Your Patent?
1. What you can do now
As earlier stated, while the application provides protection for the invention, until the application is published, you should still require confidentiality agreement to protect your invention. Again, you should keep the serial number and filing date a secret. This helps you enforce you rights, which you usually protect on your own. Of course, if needed, you can resort to the U.S. federal court system to help enforce your rights as well.
- direct and indirect infringement
You want to protect yourself from infringement. Any infringement action needs to be brought to court within six years of when the infringement occurred. That’s the rule regardless if it’s a direct or indirect infringing act.
Here’s a brief explanation of the difference between direct and indirect infringement. First, direct infringement is where someone makes, uses, sells or imports the invention without the patent owner’s permission. It is also when someone designs around claims but achieves the same function in the same manner with the same result; this is known as equivalent infringement. Second, indirect infringement is when someone encourages another to directly infringe. Additionally, it includes when someone sells a material part of patented invention, knowing it will be used for an infringing act. Under indirect infringement, you still need someone to actually do a directly infringing act.
Note that pure research done by an academic institution, for example, is not an infringing act. Also, compounds reasonably related to governmental submissions are not considered infringing.
Design patent infringement
A design patent doesn’t include claims but it includes drawings. Drawings are much more important than the written descriptions for design patent applications. So, the standard to claim design patent infringement is if the design looks substantially similar to the drawings in the patent application. The court will first look at whether the design between the patented item and alleged infringer would deceive an ordinary person into buying the infringer. If so, then it’s more likely that it is a design patent infringement. The court will then compare the patented design against prior art to assess whether it is novel. Lastly, it analyzes whether the alleged infringing design is novel.
- infringing claims
To claim infringement, the infringing item must meet all elements of a specific claim. For example, if an item includes A, B and C and the claim protects A, B and C, then the item infringes. It also infringes if it includes A, B, C and D. However, it doesn’t infringe, if it includes just A and B, or one element is materially different than what is claimed.
iii. doctrine of equivalents
The court can also find infringement under the doctrine of equivalents, regardless of claims. This doctrine says if two or more inventions are adequately equivalent in what they do and how they do it, there is infringement.
The inverse is also true, though rare: If two or more inventions have the same claims but are adequately different in what they do and how they do it, there is no infringement.
- intent and knowledge
The court does not analyze intent and knowledge when it studies direct infringement. However, those two come into play when the court is contemplating damages for the infringing act and indirect infringement. Regarding indirect infringement, for example, one must sell an infringing part to someone with the knowledge that person is going to create an infringing item.
If one intentionally and knowingly infringes, then the court generally increases damages he/she must pay; these damages can include attorney costs and be three times the amount of what the court would typically tell the infringer to pay.
You can only claim infringement during the patent’s term. You cannot claim it when the patent is pending, which is the period between when you file your patent application and actually receive a patent.
On the other hand, if you have your application published early, then you can claim infringement if it happens after your application’s publication date. You must show that the infringer actually saw your published application, and the USPTO later issued you a patent for this invention.
- targets of a suit
For alleged infringing acts, you can sue the manufacture of the infringing item, the seller and the buyer. Furthermore, you can sue the employer of the infringer under the theory of respondeat superior. This is if the infringer was acting under the scope of his/her employment duties, the infringer acts under the authority of the employer, and the employer benefits or approves of the activity. Additionally, you can sue a company if it has purchased another company that has infringed; this is known as successor liability. To prove successor liability, you need to show that the two companies agreed that liability would pass to the purchasing company, the two merged, the purchasing company is continuing the business of the other, or the sale of the company is fraudulent.
You can bring suit against the federal government for infringing. However, rewards are limited, meaning you can’t halt the government’s infringing activity and you only are awarded financial damages plus interest. In contrast, state governments aren’t liable for infringement.
vii. non-U.S. infringement
A U.S. patent only protects a patent owner from what happens in U.S. territories. To protect yourself from infringing activity in foreign countries, you would have had to file for a patent in that foreign country. The method to do that will be discussed later. Nonetheless, a U.S. patent does bar importing, using or selling an infringing item into the United States; and manufacturing all parts of U.S. patented invention and then shipping the parts to the United States with assembly instructions.
Sometimes you need to bring your infringer to court to enforce your patent rights. Here are the basics of how litigation may operate in your suit.
- ceases and desist letter
You will probably send this letter first. A cease and desist letter tells the alleged infringer about your patent, requests payment such as royalties or damages for previous infringement, and asks the infringer to stop infringing.
Patent disputes are heard in federal court. If you’re suing the federal government, your case is held in the Court of Claims in Washington D.C. If you’re suing a person or company, you can pick the location to bring suit. You can file your complaint, summons and civil cover sheet where the defendant resides, or where the infringement occurred and where he/she has established regular business. A business resides where it is incorporated, does business or has a license to do business.
iii. answer and counterclaims
After you pick your venue and file your complaint, your alleged infringer will respond to your complaint via an answer. He/she will either agree with your allegations or deny them. Usually, his/her defense will be that your patent is an invalid; for example, it isn’t novel or non-obvious. He/she may also assert counterclaims, which are actions he/she is bringing against you. The alleged infringer must present these counterclaims now because any claims that arise out of this situation are barred if he/she tries to do so later.
If you’re still proceeding with your suit, next comes the discovery phase where each side tries to look for information to present at trial. This is sometimes accompanied by protective orders, which a court issues to protect sensitive, confidential information from being shared or leaked to the public.
- trial and appeal
The culmination of this process is the trial. If you are unhappy with the outcome, you appeal to the CAFC. And if you are still unhappy, you appeal to the U.S. Supreme Court.
- remedies and damages
If a suit works in your favor, you may receive the following:
- injunction, which is a court order that stops the infringing activity. A permanent injunction is usually ordered after trial if you win. [k: wasn’t sure the best place to put the following] To stop infringement while the case is still pending, you need to file a temporary restraining order (TRO). This is usually granted if the judge believes one party will destroy evidence. After a TRO, you should file for a preliminary injunction which is usually in effect when each side is presenting evidence. It lasts until the court reads its judgment. When granting one, the court looks at whether the patent owner will win and if he/she will suffer irreparable harm if he or she doesn’t have a preliminary injunction. For both a TRO and preliminary injunction, the patent owner usually needs to pay a bond, which covers any costs incurred if he/she loses the case.
- Damages, which are generally shown by looking at how many sales the patent owner lost to the infringer and profits gained by the infringer. The court sometimes also looks at lost royalties, the money the patent owner would’ve gained if he/she licensed the patented item to the infringer.
- alternatives to litigation
Litigation can be extremely costly and time consuming, so there are alternatives to it.
Before litigation starts or even during, the parties may agree to settle the matter outside of court. Settlements may be a good alternative because they save time and money, and the amount agreed upon is guaranteed to be paid. Damages resulting from a court decision, on the other hand, have to be enforced and you might be out of luck if the infringer has no money, even if you’ve won the case.
- mediation and arbitration
Arbitration and mediation also saves time and money. Mediation involves the two parties sitting in front of a neutral mediator to reach a settlement that they can both be content with. Arbitration is also in front of a neutral decision maker, whose decision is usually binding and final. You may agree to these instead of litigation, or you may have previously agreed to a contract with terms that say you must do this instead of litigating.
As earlier noted, as soon as the USPTO mails your filing receipt, your application is considered pending. Once a patent is issued, the patented product can be marked with the word “U.S. Patent”, “Patent”, or “Pat.” and the patent’s number. This notifies the world that the product is protected by the patent system. The benefit of marking is that the patent owner can seek damages without proof that the infringer had actual notification of the patent.
However, some choose not to mark their item with the patent number. Instead they may just use “Patent,” “Pat.” or “U.S. Patent.” That’s because this patent number makes it easy for people to find the published patent application, review how the item is made and find a way to invent around the patent. If you decide to omit the patent number in your marking, be aware that you have a weak argument in proving notice in an infringement case.
- License or sell the patent
Patents have the attributes of personal property. Consequently, applications for patent, patents, or any interest therein can be assignable in law by an instrument in writing. The applicant, patentee, assigns or legal representatives may grant and convey an exclusive right under his/her application for patent, either the whole or any specified part of it.
Here are the differences between selling and licensing: When you sell the patent, you are transferring your patent title to the buyer. You do not have the patent title anymore. On the other hand, with a license, you still retain ownership and typically collect royalties from the licensee.
Note some details for licenses:
- can last for the entire patent term or just a part of it;
- can be exclusive or non, meaning you’ve granted licenses one person versus multiple people or organizations respectively;
- can be use specific;
- can be location specific;
- the person you give a license to may be able to transfer it to a third-party depending on the agreement you have with that person; and
- companies often trade licenses, which is known as cross-licensing.
To be effective against any subsequent purchaser or mortgagee for valuable consideration, you should record the patent or application assignment with the USPTO within three months from its date or prior to the date of such subsequent purchase or mortgage. If not, then the action “is void against a subsequent purchaser for a valuable consideration without notice, unless it is recorded prior to the subsequent purchase,” the USPTO explains.
The recording must identify the patent number and date if available; or the application number, inventor’s name, title of invention as noted in the application, and date of filing if applicable.
After you request and pay a fee to the USPTO, the USPTO can publish a notice in the Official Gazette that the patent is available for sale or licensing. Other than that, it is up to you to take the initiative and publicize your patent.
The Small Business Administration (SBA) may be a helpful resource. It provides excellent information on starting, planning, marketing, obtaining venture capital and financing a small business. The SBA also provides training and counseling on SBA loan programs. You can also get help from your local Small Business Development Centers (SBDC)
You can also visit Invention Development Companies or Invention Promotion Firms, which may help you bring your invention to the marketplace. However, carefully check the background of these organizations before you work with them. You can google their names to see what experience other inventors have had with them. You can also see if there are any published complaints at http://www.uspto.gov/inventors/scam_prevention/complaints/
- save for future maintenance fees
You pay maintenance fees to the USPTO to maintain a granted patent. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the date of the original patent grant. If you don’t pay these fees, you lose your patent, meaning it expires and your invention falls into the public domain.
- reissue application
If you think there’s something wrong or incorrect with your patent, such as your claims aren’t broad enough or are too broad, then you should file a reissue application. You can usually file this at any time during the term of your patent. But if you are arguing to broaden your claims, then you must file this within two years after the USPTO issued your patent.
The reissued patent is supposed to correct defects in the earlier patent. It lasts whatever time is left on your earlier patent. Be aware that the USPTO will reexamine all claims asserted under your earlier patent, so an examiner could strike down those previous claims during this examination.
2. What others may do
- others can challenge your approved patent via prior art
A challenge can be initiated by another patent owner, the public, or the USPTO Director, who submits a request for reexamination if there is a substantial new question of patentability. The USPTO’s Central Reexamination Unit then looks at whether the patent should have been issued in light of prior art.
This argument can be brought at any time. This includes while a patent application is pending. At that time, third-parties may submit relevant printed documents as prior art with an explanation of the relevance of the documents for consideration by the examiner.
If your opponent is successful in his/her challenge, then your invention isn’t patented anymore and falls into the public domain, meaning it isn’t protected anymore.
- others can challenge your standing
If you are in patent litigation, the defendant can claim the plaintiff, who is believed to be the patent owner, lacks standing. The defendant is basically stating that the plaintiff actually does not own the patent so he or she cannot bring suit for rights he or she doesn’t have.
- others can claim the first sale exemption or exhaustion doctrine
The “first sale exemption” or “exhaustion doctrine” means that once you sell a patent, you’ve exhausted your rights to it, so it is not infringement if the patent is later resold. This is not a valid argument if the initial sale of the patent is done without permission of the patent owner.
- others can claim the repair doctrine
If someone repairs a patented device and replaces unpatented items, that is not illegal. It is also not illegal for someone to sell items that are used to repair and replace worn out parts. However, it is illegal if an item is made or sold without the patent owner’s permission.
- others can say you misused your patent
Besides the above, others may assert that you:
- mismarked your patented item;
- committed fraud against the USPTO, such as by lying or patenting something that actually doesn’t work;
- illegally or unfairly licensed your patented item;
- delayed infringement litigations so long that you’ve hurt the alleged infringer; or
- used the patented item in an illegal way.
After new patents issue, third-parties may challenge the patent’s validity for any of the above reasons if this is done within nine months of the patent’s issuance date. After the nine month period, however, challenges can only be brought on the basis that the patented invention is not new and/or is obvious.