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How Patents Work
Process of getting patent issued
Process of creating patent and other “laws”
Courts, Jurisdiction, and Binding Authority
Challenges to get patent issued
Challenges once patent has been issued
General questions about patents and process
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Patent Application Process
Process for patents application in USA:
Provisional Patent (Gives one year grace period)
Not seriously reviewed; easy to do at low cost
Can be amended almost entirely before filing formal
application for patent
File the Formal Patent Application
Requires extensive details on all required issues
Can not easily be amended; only to address questions
Navigate the Patent Review and Appeal Process
Internal administrative reviews (appeal decision)
External court review (high cost, long delays)
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Process of “CREATING LAWS” for
Patent Granting and Reviews
Two Types of LAW: Statutory and Common
Statutory Law passed by legislature
For example, all laws passed by LEGCO.
Binding on both Judges and on Administration.
Almost all criminal laws today are Statutory
Common Laws based on prior court decisions
For example, Miranda Rights required in USA
Many statutory laws are unclear, so are
interpreted in the context of prior court rulings
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What happens in case of
Conflict?
If Statutory Law is clear, then court can not
discard Statutory Law to make different ruling
When Statutory Law could be interpreted to
support either side of an issue, court decides
Current courts always look to prior court decisions
to provide consistency of legal decisions over time
Some court decisions are legally “binding” on
lower courts, so are useful for precedents
Some courts have no official influence on decision
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USA Structure
50 states with 50 sets of laws
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AL
MS
NEAZ
UT
WY
MT
ID
NV
CA
WAOR
KS
OK
TX
NM
CO
LA
AR
MO
IA
MN
ND
SD
FL
GA
TN
WA
IN
PA
OH
NC
VAWV
AK
IL
KY
TN
NC
SC
HI CT
RI MA
NH
ME
VT
NY
MI
WI
DC
MD
DE
DE
NJ
9. HKUST Business School
USA Structure
Federal Law
Over-rules state law if supreme
court agrees/allows federal
supremacy
Allowed to have federal law by
constitution?
Does federal override state?
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USA and UK Government Structure
Administration – Executive Branch
“Law Enforcers”
Policy Setting (treaties, war, most of staff, etc)
Legislature / Parliament – Pass Laws
“Law Makers”
Policy Context (treaty approval, budgets, taxes)
Judicial System – Interpreting the Law
Creator of Common Law to fill the Gap as needed
History of prior decisions extremely important
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USA Structure
US Constitution (like Basic Law in HK)
Highest authority in all matters – only way to
change or overturn is constitutional amendment
Federal Laws (supremacy of Fed over State)
Limited to specific areas of laws allowed by US
Constitution; gaining broader power over time
All patent and copyright laws are Federal Laws
State Laws (each State has different laws)
E.g., Trademark, trade secret, marriage, criminal
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USA Legal System Structure
Federal Courts
Supreme Court – the ultimate authority
Can overturn Statutory Laws if Constitutional conflict
Federal Appeals Court (multiple districts)
Appeal of decisions which are challenged after trial
Federal Trial Court (federal cases start here)
Also know as court looking at case FACTS
State Courts (50 states, plus territories)
Similar structure to Federal Courts, but parties can
appeal State Court decisions in Federal Courts
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Patent Administration Hierarchy
Patent Review Officer
Reviews Patent Application when received and determines
whether to accept or reject it
Overworked; professional entry level position
Often not adequately strong background on technologies
being examined, and limited budget to hire experts, so true
layman review initially
Patent Review Supervisor
First line management, receives and reviews cases where
Patent Review Officer decision is appealed.
Overworked; underpaid (in their opinion); not expert
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What To Do When Patent is Rejected
First, negotiate with Patent Review Officer
Is there some missing information that would help
him make a decision more favorable to you?
Can you help answer questions by amending
patent application to address concerns he raises?
Second, file “administrative appeal”
Get supervisor involved and try to overturn “poor”
decision by Patent Review Officer
May work, but often resisted by government staff
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What to do when Administrative
Appeal Fails to Give “Right”
Answers?
Appeal to Federal Court over Patent and
Copyright to review administration decision
Federal Courts always have jurisdiction
File Case in Federal District Trial Court
Judges often have some technical degree there
Greater funding available for government experts
Long and expensive process, but fresh review
If trial court rules against you, appeal
Even greater costs than for trial court review
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The Appeals Process Costs
There are two major cost of court appeals
Time
Money
The time required to file an appeal and get a
trial date can be several years
The cost of the first court trial appealing the
government’s decision can be several million
dollars, and appeals of trial court decisions
add even more to that cost
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Court Versus Admin Appeals
Administrative appeals within the Patent
Office are not cheap, as significant legal time
and cost are often required, but they are
much cheaper than going to trial in court.
The government generally prefers to settle at
an administrative appeal level if they think
they might lose in court, as court appeals are
expensive and risky for the government also
Court ruling sets precedent for all future decisions
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So, Why do Cases Go to Court
Both sides think they are right and will win
Neither party to a lawsuit would want to spend
large amounts of money and time if they thought
that there was a high risk of losing.
Both sides can not be right – one side WILL LOSE
Incentives of individuals are not same as that
of the government overall
Review patents is my job, my budget, my time
Legal cases are someone else’s job, budget, time
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When Patent is Finally Issued
This gives you the right to sue others
Notification of patent (or patent pending) important
to protect some legal damages rights
Police or government will not protect your rights
Patent infringement is only a civil offense, not a
criminal offense, so only remedy is civil lawsuit
Patent lawsuits are expensive and risky
US attorneys unwilling to take risk on investing in
these cases to take contingency fee on success
Thus, cost of litigation paid for by both companies
