1. Patent Process Issues and
Challenges

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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
 USA = United States of America
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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

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USA Structure
 Different states’ Law
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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 Court Address

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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