'; Filing a patent application requires applicant to have a clear plan

Filing a patent application requires applicant to have a clear plan

April 7, 2017 Chicago Daily Law Bulletin

Patent fees — both official and attorney — continue to rise, which should influence filing strategy. Efficiency in filing and prosecuting patent applications can lead to long-term cost savings.

Consider the following hypothetical: An organization drafts a patent application to cover a ground-breaking invention. The invention may be described in at least two manners: a composition and as a method of using the composition. The patent claim language will affect whether the invention is patentable and, in most instances, will determine who may infringe. To illustrate using the above hypothetical, the composition itself may be patentable but will be limited to a particular formulation. By the same token, the method of using the composition may be broader in some aspects but will be narrower in others. The organization in our hypothetical, as most patent applicants, wishes to protect both manners of describing the invention.

In the typical course, a patent application is prepared and may be filed as a provisional patent application in the United States. In order to maintain the original filing date, the organization must decide at one year from the original filing date whether to pursue a utility patent application. At this time, the market size for the invention may remain unpredictable. However, over the next several years, the organization will likely market the invention in the United States and perhaps a few other regions internationally (e.g., Europe, Asia, etc.).

When filing a patent application both in the U.S. and abroad, an applicant may choose to file an international application under the Patent Cooperation Treaty (“PCT”). The PCT provides a relatively convenient way to file one patent application that can be “nationalized” (i.e., entered) into various countries that are signatories to the treaty. Under the PCT, nationalization can be deferred for an additional eighteen months (thirty months total from the original filing date), at which time national phase applications must be filed.

For any of several reasons, the organization is fairly certain that it will wish to pursue patenting in the United States. A common approach to patent filing for U.S. inventions is to file each of a PCT application and a U.S. nonprovisional application at the one-year date from the filing of a provisional application. Each filing strategy has advantages and disadvantages that should be considered depending upon the situation at hand.

A nuance that comes into play based upon filing strategy is the application of restriction practice laws and rules. “Restriction practice” is a term of art used to describe the law requiring that one patent-deserving invention is entitled to one and only one patent, and that multiple inventions may not be claimed in a single patent. If the examiner identifies multiple claimed inventions in a patent application, then the examiner will attempt to force the applicant to select a single invention for examination. The applicant can argue against the restriction, which may or may not result in its withdrawal. Nevertheless, the applicant must elect a single invention for examination. Non-elected patent claims are withdrawn from examination and may be pursued in a second (divisional) patent application.

In the above hypothetical, for example, the organization might be entitled to two patents: one for the composition and a second for the method. However, the organization may be able to have the restriction withdrawn by arguing that the composition and method should be covered by a single patent. Withdrawal of the restriction instead of pursuing a divisional filing may result in a significant reduction of fees over the life of the patent (e.g., filing fees, maintenance fees, and attorney fees). The arguments available to the organization will depend on several factors, including the patent application’s U.S. filing strategy.

Should the organization choose to enter the U.S. national stage via a PCT application, the national stage patent application would be subject to PCT restriction practice. PCT restriction practice requires strict “unity of invention.” PCT restriction practice defines “unity of invention” as relating “to one invention only or to a group of inventions so linked as to form a single general inventive concept.”

However, a U.S. nonprovisional application that does not claim priority to a PCT application is subject to U.S. restriction practice. U.S. restriction practice is somewhat more flexible than PCT restriction practice. For U.S. restriction practice, if the examiner identifies multiple “independent and distinct” inventions, the examiner must additionally set forth one or more reasons why there would be a “serious burden on the examiner” to examine the pending patent claim set. Thus, for U.S. nonprovisional applications that do not claim priority to a PCT application, the applicant may argue that either 1) the identified inventions are not “independent and distinct,” and/or 2) a serious burden on the examiner does not exist. In other words, the examiner has a greater burden under U.S. restriction practice.

Of course, even when applying U.S. restriction practice, there is no guarantee that the restriction will be withdrawn. Should a restriction be withdrawn and a single patent issue instead of two, the patent holder would save over $12,000 during the life of the patent in official fees alone as compared to owning two patents.

Avoiding restriction is not always warranted or even desired. However, the patent applicant should consider choice of restriction practice in its U.S. filing strategy.