Memo: Introduction to Patents and the Patent System | jdickins | July 23, 2012

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Memo: Introduction to Patents and the Patent System

As you are no doubt aware, patents, unlike copyrights, do not automatically “subsist” in patentable inventions; inventors must apply to the government (the US Patent and Trademark Office, an Executive Branch agency now part of the US Department of Commerce) in order for patent rights to attach to their inventions. Much of the Patent Act is concerned with the operations of this agency and the procedures that applicants and the agency must follow when an application is submitted. Here is a brief summary of that process.

Sections 111 – 122 of the Act deal with the patent application. A patent application, submitted by or on behalf of an inventor, is assigned to a Patent Examiner, whose job it is to investigate whether or not the invention described in the application meets the statutory requirements (most notably, the requirements set forth in §§101- 105 and §112) and is entitled to the grant of a patent. The patent examination is a detailed, complex, and often time- consuming process; it is rarely completed in less than a year, and many patent applications take four or more years before the Examiner renders a final decision on patentability.

If the Examiner determines that the invention meets the statutory criteria, the Director of the PTO issues the patent (§131). If the patent claim is rejected, the applicant can ask for a “re-examination” (§132). If the re-examination also yields a rejection of the application, the applicant may appeal the decision to an administrative tribunal, the Board of Patent Appeals and Interferences. See §§ 6 and 134(a). If the Board of Appeals and Interferences affirms the Examiner’s rejection, the applicant may further appeal, in either of two ways:

1. The dissatisfied applicant may bring a “civil action against the Director [of the PTO] in the U.S. District Court for the District of Columbia.”1 Either party can then appeal an adverse decision in the district court, but that appeal must be taken to the Court of Appeals for the Federal Circuit, which is given exclusive jurisdiction over such appeals:

28 USC § 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit

(a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction . . . (4) of an appeal from a decision of--

(A) the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office with respect to patent applications and interferences . . .

2. Alternatively, the applicant may appeal an adverse decision by the Board of Patent Appeals directly to the United States Court of Appeals for the Federal Circuit.

And of course either party may petition for review of an adverse decision by the Federal Circuit by the Supreme Court.

Much patent litigation (and many of the cases we will read) is of the above variety – a patent applicant complaining that his/her claim to a patent was wrongly rejected by the PTO. In effect, Applicant v. PTO.

There is second way in which courts confront patent issues, of course: through actions for patent infringement. Infringement actions – judicial proceedings in which the owner of a patent brings suit against someone alleging that his/her/its patent rights have been violated – have their own unusual jurisdictional provisions. An infringement suit can be brought in any US district court:

28 USC § 1338. Patents, plant variety protection, copyrights, mask works, designs, trademarks, and unfair competition

(a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.

Any district court, in other words, may find itself with a patent infringement case before it. Special rules, however, apply to appeals in patent infringement actions: all such appeals must be taken to the Court of Appeals for the Federal Circuit.

28 USC § 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit

(a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction:

(1) of an appeal from a final decision of a district court of the United States . . . if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title [28 USC§1338] ...

The significance of all this is that much (though not all) patent law comes out of the Federal Circuit Court of Appeals; it is the only appellate court that can hear appeals from adverse decisions of the PTO on whether or not an invention is deserving a patent, and it is the only appellate court that can hear appeals in cases involving claims of patent infringement (at least to the extent the jurisdiction of the district court in the case was premised on the grant in 28 USC §1338).

1 This case will be captioned “Jones v. Kappos” (David Kappos being, at this moment, the Director of the PTO).

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June 11, 2013

Professor David Post

2012-07-22

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