Strategic Decisions and “Gold-Plated” Patents

Applying for, defending, and enforcing patent rights is a multi-stage process that often requires strategic decisions along the way.

The US Patent and Trademark Office (USPTO) provides a helpful guide to the various stages.

1. Determine what type of intellectual property protection you need.

Many people aren’t clear on the differences between patents, trademarks, service marks, and copyrights and what they can and can’t protect. Certain kinds of intellectual property are better protected as trade secrets, which don’t require any formal legal applications.

2. Determine whether an invention is patentable.

The USPTO has a guide to answer the question “How do I know if my invention is patentable?”

3. Determine which kind of patent you need.

If you do need a patent, and your invention is patentable, you then need to determine what KIND of patent you need.

The three basic types of patents are:

• Utility patents – for “any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof…”
• Design patents – for “a new, original, and ornamental design for an article of manufacture.”
• Plant patents – for “anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.”

4. Prepare to apply

You need to consider your application strategy, understand the process, gather the needed materials, and make decisions. Do you want to file a provisional or non-provisional application? Is international protection important to you? How much is this all going to cost? Do you need to hire a patent attorney or patent agent?

5. Prepare and submit your application

The USPTO’s Patent Application Guides can help with this.

6. Work with the patent examiner

As the USPTO explains,

Patent examiners are skilled engineers and scientists who work closely with entrepreneurs to process their patent applications and determine whether a patent can be granted.

Famously, Albert Einstein got his start working as a patent examiner for the Swiss Patent Office.

7. Receive your approval or rejection

If the patent examiner determines that your application is satisfactory, you’ll receive a Notice of Allowance.

However,

If the examiner does not think your application meets the requirements, the examiner will explain the reason(s). You will have opportunities to make amendments or argue against the examiner's objections.

8. Appeal your rejection

If your application is rejected twice, you can appeal to the Patent Trial and Appeal Board (PTAB).

If the PTAB affirms the rejection, you can appeal to the US Court of Appeals for the Federal Circuit (under 35 U.S.C. § 141) or file a civil action (a complaint) against the USPTO’s Director in the Eastern District of Virginia (under 35 U.S.C. § 145).

The Eastern District of Virginia is known as a “rocket docket” with an average time to trial of only six to eight months.

Recent cases suggest that Section 145 may be a fast and cost-effective path with other advantages.

A 2017 law review article posits that

the rarely used Section 145 may offer a means of “gold-plating” patents: an administrative revocation of a “Section 145” patent would amount to a constitutionally prohibited executive revision of a final judicial decision.