Transcript
Common Ownership: Whose prior art is it anyway?
The following is a computer-generated transcript from the Patently Strategic Podcast. The results aren't always perfect, but we will continue working on improving the quality of the automation.
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Good day and welcome to the Patently Strategic Podcast, where we discuss all
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things at the intersection of business, technology and patents.
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This podcast is a monthly discussion amongst experts in the field of patenting.
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It is for inventors, founders and IP professionals alike, established or
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aspiring. And in today's episode, our experts help to demystify the
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concept of common ownership and how it can be leveraged to disqualify prior
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art that might otherwise cause a rejection during prosecution. Dr.
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Ashley Sloat, President and director of Patent Strategy here at Aurora, leads this
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discussion along with our all star patent panel, digging into common
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ownership exceptions, joint research exceptions, and terminal
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Disclaimer practice. And if this all sounds like a foreign language,
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or if you're wondering why you might care, do stay tuned for a primer
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that will help you quickly get up to speed on key concepts like inventorship,
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ownership assignments, prior art, and terminal disclaimers.
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One of the recurring themes of this podcast is helping inventors avoid sharp
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corners, and we've found that these concepts in particular trip up a lot of
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newer inventors, and the resulting problems that come from misunderstandings around
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these core concepts can be very difficult to untangle later.
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Ashley is joined today by are always exceptional group of IP experts,
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including David Cohen, principal at Cohen Sciences,
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Shelley Couturier, patent strategist and search specialist at Aurora,
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Amy Fiene petted attorney at Vancot, and adjunct professor at
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BYU, and David Jackerel, President of Jacque Consulting.
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Now about that primer. After giving the group discussion a second listen,
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we realize that there might be some gaps for some folks in the audience,
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and when that happens, we like to front load the episode with some extra context.
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I'm joined now by Ashley, who's going to help answer a few questions to get
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everyone on the same page before we dive into the thick of all of this.
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To understand the implications of common ownership, it's helpful to know how
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ownership is defined in the patent world, and also how it relates to
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inventorship. Inventorship and ownership are really two sides
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of a very similar coin as it pertains to patenting and who owns the idea
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and has the exclusive rights to practice it. Understanding how
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these concepts differ is critical to protecting your IP and avoiding
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costly legal disputes down the road. All right,
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Ashley, so toward the end of season one, we did an entire episode on inventorship
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that listeners should definitely check out, but at a
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high level, what is inventorship?
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Absolutely. So the US Constitution grants
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patents to inventors, and so what that means is
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that without additional legal frameworks,
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a patent will be issued to an inventor, and inventorship
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is dependent upon who conceived of the
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invention or who conceived of the idea.
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And even more so, taking it one step deeper.
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The claims of a patent define the meets and bounds
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of what is being protected. So if somebody contributed
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to one of those claims, they are determined to
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be an inventor. So just peer reduction to practice.
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So peer implementation does not necessarily make
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you an inventor, but it can if that implementation
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resulted in inventive concepts.
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So, for example, just the way you actually implemented
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the manufacturing process actually did result in
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it being inventive over existing methods,
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then you would be listed as an inventor even though you were taking somebody else's
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idea and implementing it. And so I guess to say it
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in another way, just because a company is paying
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inventors to invent for them or paying employees to invent for them,
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make new products, make new inventions, that does not necessarily mean
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that the company has the rights
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to the technology. It does rest in the inventors
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until the inventors assign their rights to the
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entity. Okay, that makes sense. So we'll get
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into the topic of this podcast, Common ownership in a little bit.
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Before we do that, could you explain what ownership is?
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So ownership is the entity
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that has the authority to file patent applications, at least under
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the America and Ben Sat, and take action in that pending application.
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So I think the most important aspect of that is that it's the
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owner that can enjoy all the rights of
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the patent, the right to exclude the right to prevent
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others from making, using, selling, offering for sale, or importing the claimed
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invention. Now, the inventor can be the
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owner. And that's the first
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instinct is that the inventor is the owner. But if the inventor assigns
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their ownership in the technology or in the package to
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a company, then the company becomes the owner. Or you could even assign it to
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another person, right? You could assign it to anybody, probably not your dog,
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but you could probably assign it to anybody or any entity. And then that entity
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now becomes the owner and has the right to kind of direct events
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related to that IP. And this is really important. There's been tons of Tesla
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around things not being done properly
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and entities or people thinking they own something and then coming to find
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out that they actually don't own it because things weren't done properly. So it's
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definitely an often confused balance between inventorship
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and ownership. All right, so in a situation like with an independent
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inventor, that's obviously pretty cut and dry, you have
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the idea to see you own the idea. But it also seems like
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things could get a little bit more complicated when you start talking about companies with
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employees or contractors who are doing the inventing.
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And it sounds like you were alluding to this earlier for sure. But if I'm
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understanding this correctly, the implication is that just
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because I own a company and pay employees or contractors who come up with ideas,
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that doesn't automatically give me ownership and the rights of the IP.
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Correct? Correct. As I said,
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the inventory owner are the same person without any kind of legal
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framework behind that. Just because you're paying the employee does
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not necessarily mean that you then have ownership
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of the idea. Ideally, our employees
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will assign their rights to a company so that the company can
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actually own the intellectual property and then do what it wants
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with it, and then they can then license the patent rights
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and do things like that. But ultimately,
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without some kind of legal framework, a legal tool,
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the inventor is going to be the owner. So then if employee
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inventors or contractors didn't assign their rights to the company,
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those inventors could profit from the invention even if no longer working
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for the company. Right. Like they could license the patents without sharing the royalties with
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the company. They could even become a competitor and sell a competing
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product. Absolutely. And like I said, there's been a lot of keys around that,
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too, even where it gets kind of grey
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as an employee who left a company,
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and they obviously conceived of ideas
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at the company, but then maybe they conceived of ideas afterwards,
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but maybe there's a continuum of ideas there
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at the company versus what they did independently. And then
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so how do you establish what was done at the company versus what was
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done independently and make sure that's clean and that you don't
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end up with an issue of someone trying to benefit from something that the company
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paid for and they were contractually obligated to assign
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versus somebody having a right to their thing that they did independent
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of the company. And so just making sure those lines are clear,
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there's been a lot of kids all around that where things were maybe
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not as clear as they needed to be, or there was some Gray area there.
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So very high level. What's the process then, for transferring those rights?
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It starts, at minimum, with employment agreements.
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Right. Every employment agreement should have a work for hire provision
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and or an assignment provision where it says something to be
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effective. The employee hereby assigned or
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has an obligation to assign any rights
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and intellectual property that was created
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as a result of their employment with the company. And so it needs
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to start there honestly, because when the second thing doesn't
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work out, which I'll tell you about in a second, when that second tool doesn't
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work out, we fall back on the employment contract. So the
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employment contract really has
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to have an assignment provision in there. So I would say this is highly important,
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even for super small companies where it's just you and your buddy.
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You should make an entity and assign the entity.
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So worst case scenario, you and your buddy don't
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get along anymore. At least there's an entity that has
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the rights and that you can then equally somehow separate from that company or
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get benefits from that company. It's kind of separate from the individual.
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So in the world where, God forbid,
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you don't have an employment assignment,
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an assignment provision in your employment contract, what we will always do
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is an assignment for the patent
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rights. So when you file a patent application, there's essentially like,
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one to two page assignment that basically says the
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inventors assign their rights to this entity.
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And it's pretty much common assignment language.
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There are some special assignments that you can do, but most of them are pretty
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boilerplate. And it basically just says that the inventors assign their rights
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to this entity, or they assign their rights to this other person or whatever the
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case may be, or this entity assigns their rights to another
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entity. So the assignment is kind of the legal
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tool that's used by a lot of practitioners like myself to make
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sure that the inventors rights are assigned to an entity. We will do it almost
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95% of the time. The other 5% being inventors who
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don't have an entity don't want to assign because it's just them.
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But even in those scenarios, I would actually recommend that inventors
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put their IP and their company into an entity
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just to kind of create a firewall between personal and business assets.
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And so I think it's honestly good practice, no matter your size.
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Okay, so inventorship is the conception of the idea, and ownership is by
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default. Ownership is possessing the rights and benefits of the granted
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patent, and assignment is how we get those rights from one to the other.
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This is a pretty solid baseline, but I'd also like to give the audience a
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high level overview of common ownership, which is really at the heart of
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this episode. To do that, we have to have an understanding of
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what prior art is and how prior art leads to section 102 and
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103 rejections from the patent office.
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I know this could be an entire episode of its own, but what is prior
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art, and how does it pertain to these rejections?
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Great question. So prior art is any evidence that
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is generally known to the public. So that could be websites,
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Journal articles, materials from trade
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shows, even dissertations material
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from books, obviously, patent documents. Right. Issue patents
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or patent publications. I mean, really, anything that,
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like, says publicly available. Again, there's definitely been case law
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around what,
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you know, how generally available to the public it has to
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be to actually count as public art. But suffice
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it to say a dissertation that you can prove that was
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never checked out at the library still counts as
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a prior art to your patent. So, I mean, it's pretty strong.
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Basically, if it's out there, when an examiner gets
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your patent application, he or she basically reviews
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the claims and does a search through the prior art through all
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these different databases. And if they find something
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that they believe is related to the claims that are on file, they'll basically
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give you a rejection in the office action. And so the rejection is
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around the ideas of industrial applicability,
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which almost everything has utility. Right. So that's a pretty low benchmark
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there. But then novelty and inventiveness and so they
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basically will give you rejections based on those grounds and a
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few others, of course. But for prior art, it's mostly these two.
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And so these novelty and inventiveness
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or non obviousness, as we call it in the US.
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These are in the US Code as 102 and 103,
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Sections 102. And so
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it's usually through these two avenues that the patent examiner
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will reject your application, and then it becomes kind of a bartering process
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or a back and forth argument process to
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prove to the examiner that your claims, your invention
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is indeed new and non obvious over
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any prior references that they found. That takes
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us nicely to common ownership. What is common ownership and what's the
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interplay with prior art? Yeah. So this topic
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is pretty thick. And honestly, I feel like you could look
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this up in several different places and have a slightly different interpretation
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no matter who you read. But suffice it to say
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that we're going to
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focus on the America and Ben's Act, we're not going to focus on
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pre AIA because further complaints the topic.
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But suffice it to say that there are situations in which you've
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created your own prior art. Right. So that prior art
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could be either public disclosures or like
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you've presented at some pitch event, or it could be a
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Journal article that you published or some kind of sales activity that
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you did. So that's one kind of disclosure
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that could create a problem for you. And so in those situations,
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if the examiner finds that material and obviously if you know of those things,
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you should disclose it to the Patent office. So let's say they see this
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activity, and if it falls within a one year
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Grace period, within one year of your filing date,
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there is an exception. Under 102,
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the prior art rejection would be one. And the exception
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is a Grace period exception of up to one year for disclosures
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that you've made. Right. You've essentially made your own prior art. But there's
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additional prior art under 102, a two that
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in this situation, if you again, have created your own art, but in this case,
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it would be a patent application. Let's say we're part of a company and
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we patent lots of things and we patent lots of iterations of
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things. So let's say that prior to our
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filing date, we had filed patent applications directed to a
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first generation product. And let's say later
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after that filing, after that original
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pen application publishes, we file another patent
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application. That's an improvement of that technology.
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And so in that case, again, examiner may find this prior publication
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patent publication inside it as a rejection under your
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later file patent application. In that
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scenario, you may be able to use a common ownership
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exception, basically showing the Patent Office that these two
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patent applications are commonly owned. Now, most generally
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speaking, that prior art
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patent publication needs to be within one year of
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your filing date. There are some probably rare, crazy rare
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circumstances where it could be greater than that. But once you get greater
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than that one year exception, now that prior art falls under 102,
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a one, and it's no longer available for the common ownership
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exceptions, this is where it gets really muddy. And so that's why essentially
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suffice it to stay in a really easy way. There's two exceptions
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under 102. A one, it's a one year Grace period.
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Under 122, it's essentially a common ownership exception,
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with most likely within a one year time frame.
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And that's the most common ways you're going to come across that. And so in
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order to disqualify that prior art
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due to a common ownership exception, you have
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to be able to prove that the
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00:16:26,492 --> 00:16:30,570
prior published patent application or issued patent and
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at the time of filing and your later filed patent application at
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00:16:34,856 --> 00:16:38,718
the time of filing were under common ownership. And that could be under
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00:16:38,804 --> 00:16:42,238
an obligation to assign based on contract language
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from your employment contract or could be due to an actual
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assignment that was filed in some examiners to
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request additional information. We had one case a number of years back where
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we had an assignment on file, but the assignment wasn't filed
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as of the filing date. It was filed a few days
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later with the Patent Office. Just the logistics of getting inventors
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to sign things. And so we actually had to go improve from employment
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contracts that they were under an obligation to assign as
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of the filing date. So, again, that's where having both of those pieces of
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00:17:15,980 --> 00:17:19,582
proof is helpful. So that's
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kind of the thick and the thin of it, if you will,
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a lot of dots to connect to get there. But I think that's
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super helpful. Toward the end of the upcoming discussion,
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you and the panel talk about terminal disclaimers and double patenting.
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Could you briefly explain both? Yeah. I mean,
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usually double patenting leads to terminal Disclaimer filing, but not
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always. But there are two types of double patenting.
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And basically what it comes down to is the
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whole part of the patent system is that you publicly disclose your technology
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in favor of getting a monopoly, a limited monopoly from the government to
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benefit from that invention. But then it promotes the progress of the useful art.
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People can read about your invention and build upon it. Right. But you still have
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that monopoly of the base invention. But there are some
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cases where maybe through
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continuation practice in the US, or because
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you're iterating on a technology that a later
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filed application is very similar to
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00:18:26,144 --> 00:18:29,898
an earlier filed application, or maybe just even claim sets arising from the
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00:18:29,924 --> 00:18:33,678
same disclosure are highly similar. Right. You could
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00:18:33,704 --> 00:18:37,690
end up with really similar claim sets or really similar fences
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00:18:37,750 --> 00:18:41,218
around your invention, but maybe slightly different. And the Patent Office doesn't
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00:18:41,254 --> 00:18:44,682
want you extending your 20 year monopoly by doing
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00:18:44,816 --> 00:18:47,962
these different things to kind of extend that 20 year time frame.
301
00:18:48,106 --> 00:18:51,982
And so when they feel like two patents
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00:18:52,066 --> 00:18:54,510
could protect essentially the same invention,
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00:18:54,890 --> 00:18:58,390
what they give you is a double patenting invention. And sometimes it's a statutory
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00:18:58,450 --> 00:19:02,226
one, which is not good, that basically says, like, this is the same thing,
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00:19:02,408 --> 00:19:06,562
not okay. In a non statutory double patenting
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situation, they say that this is an obvious variation of
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00:19:09,896 --> 00:19:13,398
this other one. And so you're basically trying to patent the same thing twice in
308
00:19:13,424 --> 00:19:16,914
a slightly different way. And so maybe a slightly different scope, but still not
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00:19:16,952 --> 00:19:20,994
okay. And so what they basically say is that for
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the later filed patent,
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any patent term that extends beyond
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00:19:28,714 --> 00:19:32,526
the term of the earlier filed one needs
313
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to be like, you basically are saying that it doesn't matter to me,
314
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and you can take that away.
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00:19:39,050 --> 00:19:42,414
So let's say that the parent package was going to expire on
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today and the layer file patent was going to
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expire ten days later.
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Your terminal Disclaimer basically says, I'm okay with you taking away those
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00:19:53,300 --> 00:19:56,574
ten days. If you give me these two patents, you can take away those extra
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00:19:56,612 --> 00:20:00,620
ten days. And so that's what terminal Disclaimer essentially does.
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00:20:01,370 --> 00:20:03,654
And so it's a way of just saying to the patent up, I said,
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00:20:03,692 --> 00:20:07,102
I want these two patents. I'm okay with them having the same patent term.
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00:20:07,246 --> 00:20:10,366
Fantastic. Thanks, Ashley. And with that, we will kick
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it over to the panel. So today I was going to talk about
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prior art and common ownership
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and all of that good stuff. Where that kind of started is I had some
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cases come up where it just seems like more and more nowadays people are sharing
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and selling stuff and doing things that they shouldn't do
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before we can help them. And so I was kind of curious
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about the common ownership piece. I think David Jack, I think you and I had
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talked about it at some point, too, and just were like, what are all the
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provisions around that? And so it was kind of an interesting little journey through
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some of the stuff I came to find.
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And so kind of started out with common ownership, but then kind of went through
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some joint research stuff and then kind of ended on some interesting
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terminal Disclaimer practice stuff that I think terminal
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Disclaimers we kind of take for granted. I think it's
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just like, you see one of those come up and you're like, oh, just follow
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terminal Disclaimer, no big deal. And there's actually some more interesting
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things that I think we don't always think about
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when we're doing that. And so that's kind of an interesting end to
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all of this. I'm going to go over obviously some of the things that we
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readily know around inventorship and ownership. But part of
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the reason I put these two up here at the beginning is that I feel
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like there's been a growing misunderstanding,
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at least from clients, of what inventorship means
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versus what ownership means. I have some clients who are
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concerned when you're talking about they
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think that because they are the owner of the company, then they start
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to be confused around why you would list people who worked on the technology
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00:21:53,948 --> 00:21:57,174
as inventors, because then they're like, well, then I don't own
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the technology. And you're like, well, no, you do.
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You can. Your company can as long as it's assigned to the company
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or you have different companies
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00:22:07,904 --> 00:22:12,200
making agreements with technology firms. And again,
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their company owns the technology because they paid a firm for it.
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But then they're not understanding that individuals at that company who
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contributed substantively to their technology should be listed
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as an inventor, and it doesn't take away your ownership. And so we've had
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some really weird things lately around that, and so just kind
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of wanted to start off with that distinction.
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As we all know, vendorship is who conceived
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of the invention and reduction to practice might not
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00:22:42,188 --> 00:22:46,602
matter, especially if it's really just somebody
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00:22:46,676 --> 00:22:50,550
receiving technical drawings and making it. Whereas if you're
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conceiving as you're reducing to practice, then of course,
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00:22:54,212 --> 00:22:57,778
then that reduction to practice counts in terms of inventorship. And there's
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00:22:57,814 --> 00:23:01,534
obviously a lot of great area in there. And then from an ownership
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00:23:01,582 --> 00:23:05,442
perspective. So with the America Invented Act
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00:23:05,576 --> 00:23:09,042
in 2012, the original applicant is presumed to be the
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00:23:09,056 --> 00:23:12,238
owner. So that's like the person you list on the application data sheet.
372
00:23:12,274 --> 00:23:16,410
Right. Preaia, it was presumed to be the inventors.
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But then still today, you could transfer ownership
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00:23:20,870 --> 00:23:24,690
appropriately to whatever entity that you deem appropriate
375
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so that all the inventors could own the technology.
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00:23:30,084 --> 00:23:33,710
But then you can have them assign it to an entity so the entity
377
00:23:33,770 --> 00:23:36,960
owns it and can make decisions for that patent application.
378
00:23:38,370 --> 00:23:42,082
So then from a general overview for going deeper into the
379
00:23:42,096 --> 00:23:45,634
ownership side of things, obviously a brief overview or review
380
00:23:45,732 --> 00:23:48,658
of AIA 102 prior art,
381
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and then some of the common ownership exceptions. And if anybody has any
382
00:23:52,572 --> 00:23:55,860
experience with this or feedback, love to hear it, because it is,
383
00:23:57,030 --> 00:24:00,410
I think, just as we find with every area, lots of Gray
384
00:24:00,530 --> 00:24:04,510
area joint research exceptions, I don't have a time experience with
385
00:24:04,620 --> 00:24:08,362
a lot of joint research endeavors and then
386
00:24:08,376 --> 00:24:11,880
some interesting terminal Disclaimer practice that kind of stems from these.
387
00:24:13,290 --> 00:24:17,026
Yeah. So for AIA, prior art under 102 A,
388
00:24:17,208 --> 00:24:20,340
the first part of it, 102 A, one is all around
389
00:24:21,690 --> 00:24:25,630
publications, patented, printed publication on public use
390
00:24:25,680 --> 00:24:28,942
or sale prior to the effective filing date of the
391
00:24:28,956 --> 00:24:32,242
claimed invention, which the effective filing date now as of
392
00:24:32,256 --> 00:24:35,878
AIA is the date of the filing of your earliest application
393
00:24:36,024 --> 00:24:38,410
that claims that includes the invention.
394
00:24:39,810 --> 00:24:43,260
And so it's really anything in the world. And then
395
00:24:45,030 --> 00:24:49,018
invention was described in a patent issued or an application that
396
00:24:49,044 --> 00:24:53,162
was published or deemed published in which it names
397
00:24:53,186 --> 00:24:56,842
another inventor. And again, was effectively filed before the effective filing date of
398
00:24:56,856 --> 00:24:59,974
the claimed invention. So kind of basically, it's the whole
399
00:25:00,072 --> 00:25:02,400
on sale, in use,
400
00:25:02,970 --> 00:25:06,514
published, printed. And again,
401
00:25:06,552 --> 00:25:09,898
you can go a whole discussion around what
402
00:25:09,924 --> 00:25:12,960
is considered prior. There's been lots of discussion around that, right.
403
00:25:13,290 --> 00:25:16,522
Was it actually available to the public? Was a dissertation that sat on a
404
00:25:16,536 --> 00:25:19,918
library shelf that never got touched, never got checked out? Is that
405
00:25:19,944 --> 00:25:22,798
prior art? So obviously, a whole discussion around that that we're not going to go
406
00:25:22,824 --> 00:25:26,218
into today. So the exceptions that
407
00:25:26,244 --> 00:25:31,354
relate to these so you have for
408
00:25:31,512 --> 00:25:35,566
exceptions for this one are under
409
00:25:35,628 --> 00:25:39,322
B. One. So these are the issues when you have a
410
00:25:39,336 --> 00:25:42,758
client that within a year of their effective
411
00:25:42,794 --> 00:25:46,260
filing date, they have sold it,
412
00:25:46,830 --> 00:25:50,494
published it, or somebody got
413
00:25:50,532 --> 00:25:53,926
it from them and published it or sold it
414
00:25:53,988 --> 00:25:57,526
before the effective filing date. So basically says disclosure is made
415
00:25:57,588 --> 00:26:00,902
one year or less before the effective filing
416
00:26:00,926 --> 00:26:04,474
date of the claimed invention shall not be prior art if the disclosure was made
417
00:26:04,512 --> 00:26:07,942
by the inventor or joint inventor or obtained from
418
00:26:08,016 --> 00:26:11,726
the inventor or joint inventor or the subject matter disclosed
419
00:26:11,798 --> 00:26:15,322
had been publicly disclosed by the inventor or a joint inventor or
420
00:26:15,336 --> 00:26:18,360
another who obtained it. So again,
421
00:26:18,690 --> 00:26:21,670
it's coming directly from the inventor in some way, shape or form,
422
00:26:21,720 --> 00:26:25,380
but one year or less before the effective filing date.
423
00:26:25,890 --> 00:26:29,374
The 102 B.
424
00:26:29,412 --> 00:26:32,160
Two, which is exceptions for one,
425
00:26:34,290 --> 00:26:37,622
are that disclosures appearing in applications
426
00:26:37,646 --> 00:26:41,594
and patents shall not be prior art. The subject matter was disclosed,
427
00:26:41,642 --> 00:26:43,930
again, directly or indirectly by the inventor.
428
00:26:44,790 --> 00:26:48,370
Actually, they're very similar, as you can see, to the first one you just described.
429
00:26:48,810 --> 00:26:53,150
And then also this one brings in the common ownership.
430
00:26:53,270 --> 00:26:57,094
So the subject matter disclosed not later than the effective filing date
431
00:26:57,132 --> 00:27:00,610
of the claimed dimension was owned by the same person
432
00:27:00,660 --> 00:27:04,030
or subject to an obligation of assignment to the same person.
433
00:27:04,200 --> 00:27:07,354
So although this one does not say one
434
00:27:07,392 --> 00:27:10,822
year or less through lots of scouring talking to some other people,
435
00:27:10,896 --> 00:27:14,698
this also applies to a one year timeline. So if it's more
436
00:27:14,724 --> 00:27:18,574
than that, you're out of luck. The other
437
00:27:18,612 --> 00:27:21,670
interesting thing that I've seen personally, we haven't dealt with this a ton,
438
00:27:21,720 --> 00:27:25,342
but we do on occasion have it is that as just all
439
00:27:25,356 --> 00:27:29,338
things do with the Patent Office, it varies heavily by examiner. We have
440
00:27:29,484 --> 00:27:33,118
had some cases where you can essentially just say make
441
00:27:33,144 --> 00:27:36,862
a statement in a response that as of the effective filing date,
442
00:27:36,996 --> 00:27:40,620
these two, this prior art reference and the current application
443
00:27:41,370 --> 00:27:46,118
were coowned or subject to an assignment or obligation
444
00:27:46,154 --> 00:27:49,946
of assignment to the same company. But we've actually had an examiner
445
00:27:50,078 --> 00:27:53,638
that in one case, as you
446
00:27:53,664 --> 00:27:57,098
do sometimes you don't have all the signed paperwork at the time of filing
447
00:27:57,134 --> 00:28:00,650
just because things happen. Inventors are slow at returning documents,
448
00:28:00,710 --> 00:28:04,510
all that kind of stuff. We've had it where we file an application
449
00:28:04,680 --> 00:28:08,498
and then a few weeks later, a few days later, you filed the assignment.
450
00:28:08,654 --> 00:28:11,770
And so the assignment then is recorded a few weeks later,
451
00:28:11,820 --> 00:28:15,382
a few months later with USPTO, and we actually had an examiner at
452
00:28:15,396 --> 00:28:19,030
some point basically say look at the assignment record
453
00:28:19,080 --> 00:28:22,510
and say, well, as of the assignment record in the Uscto,
454
00:28:23,370 --> 00:28:26,758
it wasn't co owned. And so we actually had to go back to
455
00:28:26,784 --> 00:28:30,480
the client and find their
456
00:28:32,310 --> 00:28:36,058
company agreements with these inventors that actually showed that they
457
00:28:36,084 --> 00:28:39,300
indeed had an obligation to assign. And so
458
00:28:39,630 --> 00:28:43,318
I think I have some practical tips at the end, but I think that
459
00:28:43,344 --> 00:28:46,930
just further goes to the point of stressing two
460
00:28:46,980 --> 00:28:50,794
clients when at all possible to have agreements in place,
461
00:28:50,892 --> 00:28:55,322
because I think it's so easy to start working with somebody, especially in contractors
462
00:28:55,406 --> 00:28:58,562
and tech groups and things like that, before having agreements.
463
00:28:58,646 --> 00:29:01,942
But then you get into this situation where the examiner doesn't take your statement at
464
00:29:01,956 --> 00:29:05,880
face value, they want more information and you don't have it.
465
00:29:08,590 --> 00:29:12,386
Good point. Yeah. And so this kind of goes to
466
00:29:12,508 --> 00:29:15,654
some of the cases that I found around common ownership with the P tab,
467
00:29:15,702 --> 00:29:17,440
the patent trial, and the appeal board.
468
00:29:19,270 --> 00:29:22,482
So a lot of times you can make that statement of owned or subject
469
00:29:22,506 --> 00:29:25,926
to an obligation of assignment to the same person or entity
470
00:29:25,998 --> 00:29:30,314
as of the fact of filing date. But then the PTAB has at
471
00:29:30,352 --> 00:29:33,938
various points required objective evidence of
472
00:29:33,964 --> 00:29:38,130
such assignments, such as assignment documents, corporate records, employee agreements,
473
00:29:38,190 --> 00:29:41,798
contracts, and even employee pay stubs to prove that there was
474
00:29:41,824 --> 00:29:46,598
indeed common ownership. So I think, again, that just goes towards not
475
00:29:46,624 --> 00:29:50,382
playing Lucy Goosey with having contracts
476
00:29:50,406 --> 00:29:54,422
in place. I know it's easy to do, but it
477
00:29:54,436 --> 00:29:57,758
can be really important. As you'll see, too, I go through some actually here the
478
00:29:57,784 --> 00:30:01,050
next slide talks about common ownership
479
00:30:01,110 --> 00:30:04,554
and how it does not necessarily include subsidiaries.
480
00:30:04,722 --> 00:30:08,234
There was a PTAB case where
481
00:30:08,392 --> 00:30:11,154
Crops and AG owned Bayer Crop Signs,
482
00:30:11,202 --> 00:30:14,406
Envy and Biogen Idec NA,
483
00:30:14,598 --> 00:30:17,978
so basically at a parent company and then two subsidiaries. And so when
484
00:30:18,004 --> 00:30:22,194
the examiner looked at the case originally, he construed the commonly
485
00:30:22,242 --> 00:30:25,550
owned to include that the assignees were
486
00:30:25,600 --> 00:30:29,102
wholly owned subsidiaries of a common owner. So again,
487
00:30:29,176 --> 00:30:32,954
all of them kind of works together, in his
488
00:30:32,992 --> 00:30:36,950
view, had kind of ownership over the patent portfolio.
489
00:30:38,050 --> 00:30:41,570
But they were trying to argue that
490
00:30:41,620 --> 00:30:44,802
there wasn't common ownership because I don't believe they wanted they didn't
491
00:30:44,826 --> 00:30:48,054
want the terminal Disclaimer, they didn't want to lose some of that patent term.
492
00:30:48,162 --> 00:30:52,190
And so there was Lehman's patents that were rejected for double patenting over
493
00:30:52,240 --> 00:30:56,262
two Straws patents. The Lehman's patents were co assigned
494
00:30:56,406 --> 00:31:01,242
to both Bear Crop Science and the Biogenic companies, which were the subsidiaries.
495
00:31:01,386 --> 00:31:04,938
And the Straws patents were assigned to the parent company, the Bear Crop Science,
496
00:31:04,974 --> 00:31:08,754
AG. And so what the teacher had determined
497
00:31:08,802 --> 00:31:12,090
was that the Lehmans and Strash patents were not commonly
498
00:31:12,150 --> 00:31:15,710
owned because under US law,
499
00:31:15,820 --> 00:31:19,070
a parent company does not own or have
500
00:31:19,120 --> 00:31:22,958
legal title to its subsidiaries patents, even when
501
00:31:22,984 --> 00:31:26,838
the subsidiary company is incorporated in a US jurisdiction.
502
00:31:26,994 --> 00:31:30,210
So there is like, you would still have to seemingly
503
00:31:30,270 --> 00:31:33,818
assign patents or license patents between the subsidiaries to
504
00:31:33,844 --> 00:31:37,094
create some kind of co ownership relationship.
505
00:31:37,252 --> 00:31:41,680
And so in this case, they were subsidiary companies,
506
00:31:42,250 --> 00:31:45,614
and that parent company did not have right to those patents. And so for that
507
00:31:45,652 --> 00:31:49,540
reason, a requirement for
508
00:31:50,110 --> 00:31:53,090
Terminal Disclaimer or double patenting,
509
00:31:53,590 --> 00:31:57,522
basically, they would still have to build a show non obviousness
510
00:31:57,666 --> 00:32:01,346
over those patents. But there was no requirement then to have to do a
511
00:32:01,348 --> 00:32:04,706
terminal Disclaimer. And one of
512
00:32:04,708 --> 00:32:08,682
the interesting things that the PTAB has said is the legal authority and evidence
513
00:32:08,826 --> 00:32:12,400
for patent owners that Patine owners must rely on to support their position
514
00:32:13,210 --> 00:32:16,566
that an overlap in ownership does not exist between Lehman's
515
00:32:16,578 --> 00:32:20,886
and Strash Pants is more persuasive than the examiner's public policy justification.
516
00:32:21,078 --> 00:32:24,410
So the examiner was kind of saying, well, look, the whole point of this,
517
00:32:24,460 --> 00:32:28,218
he's kind of saying this was like an easy, like a loophole to skirt
518
00:32:28,374 --> 00:32:32,178
the whole issue that you don't want companies extending
519
00:32:32,214 --> 00:32:36,026
their patent term unfairly by having
520
00:32:36,088 --> 00:32:39,870
these really highly similar patent applications
521
00:32:39,930 --> 00:32:43,038
or patents issuing. So the effect of your 20 year term
522
00:32:43,074 --> 00:32:46,778
becomes a 25 year term. And they said, we understand your
523
00:32:46,804 --> 00:32:50,150
public policy justification, and we don't necessarily disagree with that.
524
00:32:50,200 --> 00:32:52,830
But the patent owner,
525
00:32:53,010 --> 00:32:56,138
basically they were right in the sense that based
526
00:32:56,164 --> 00:32:59,238
on US law, that overlap in ownership
527
00:32:59,274 --> 00:33:02,920
does not technically exist. I thought that's interesting.
528
00:33:03,370 --> 00:33:07,082
I'm sure there's also cases, and actually the next one is a
529
00:33:07,096 --> 00:33:10,670
little bit different, but kind of similar where common
530
00:33:10,720 --> 00:33:14,618
ownership does not necessarily include exclusive licenses either.
531
00:33:14,704 --> 00:33:18,642
So there was a court case with the Federal Circuit Immunex, the Sandals,
532
00:33:18,726 --> 00:33:22,098
and so the parties, the patent
533
00:33:22,134 --> 00:33:25,806
owner, Roche, an exclusive license alleged
534
00:33:25,878 --> 00:33:29,920
Infringer, and the infringer was Sandaw's. So again,
535
00:33:30,250 --> 00:33:33,470
Rosha is a patent owner, license is Immunex.
536
00:33:33,970 --> 00:33:37,514
Roche and Munich are kind of in a relationship, some kind of
537
00:33:37,552 --> 00:33:41,934
potential co common ownership, and then the infringer of Sandoz.
538
00:33:42,102 --> 00:33:46,298
And so there was an accord and satisfaction agreement between Rush and
539
00:33:46,324 --> 00:33:49,658
Immunex. And so what Santa was trying
540
00:33:49,684 --> 00:33:53,622
to argue was that, again, there was common ownership
541
00:33:53,766 --> 00:33:58,958
because of this agreement with terminal Disclaimer and
542
00:33:59,104 --> 00:34:03,210
different patent terms and so invalidity
543
00:34:03,270 --> 00:34:07,002
because of that. So Rush had but what
544
00:34:07,016 --> 00:34:10,614
the Federal Circuit had determined was that as part of their
545
00:34:10,652 --> 00:34:12,810
accord and satisfaction agreement,
546
00:34:13,550 --> 00:34:17,202
Immunex, originally as the exclusive license, had all rights to
547
00:34:17,216 --> 00:34:20,742
sue. However, if Immunex had decided at any one point in
548
00:34:20,756 --> 00:34:24,726
time to not sue, then that interest
549
00:34:24,848 --> 00:34:28,662
fell to Roche, and Immunex could not rectify the
550
00:34:28,676 --> 00:34:31,350
infringement or frustrate Roche's efforts in that regard.
551
00:34:31,400 --> 00:34:34,926
So once the rights to sue fell to Roche, there was nothing in
552
00:34:34,928 --> 00:34:38,274
Munich could do to change it, right? Because they decided not
553
00:34:38,312 --> 00:34:42,114
to, and Roche decided to do it. So the National Circuit said because that
554
00:34:42,152 --> 00:34:46,158
Roche could still retain their rights in the event that Munich decided not to
555
00:34:46,184 --> 00:34:49,458
act, that they still had
556
00:34:49,604 --> 00:34:56,482
some control over the patents basically
557
00:34:56,556 --> 00:35:00,914
this differentiated from seed play versus Bebop,
558
00:35:01,022 --> 00:35:04,418
where the licenser retained right to sue
559
00:35:04,574 --> 00:35:08,738
basically didn't really exist because the licensee
560
00:35:08,774 --> 00:35:12,074
could nullify their right by granting the alleged a royalty
561
00:35:12,122 --> 00:35:15,394
free sub license. So it was one of those
562
00:35:15,432 --> 00:35:19,034
things where because Roche could have the right to sue,
563
00:35:19,202 --> 00:35:22,774
they still fully owned it. So there was no common ownership because
564
00:35:22,812 --> 00:35:26,714
Roche completely still had ownership of the pens. They just had this license
565
00:35:26,762 --> 00:35:30,074
with them, but they still had full control in the event that in Munich
566
00:35:30,122 --> 00:35:32,820
decided not to pursue it.
567
00:35:33,510 --> 00:35:36,442
And so again, it just really comes down to the devil in details about how
568
00:35:36,456 --> 00:35:40,310
these agreements are structured. If your licensee
569
00:35:40,370 --> 00:35:44,134
has full control and even if they decide not
570
00:35:44,172 --> 00:35:47,362
to take control, you still have no rights to do anything about it
571
00:35:47,376 --> 00:35:51,214
or as a licenser decide to control. But they can
572
00:35:51,252 --> 00:35:55,378
frustrate that by doing some kind of license, then you
573
00:35:55,404 --> 00:35:58,858
really don't own the patent anymore. I think
574
00:35:58,884 --> 00:36:02,866
that was kind of their takeaway. And so I think it's just again,
575
00:36:02,928 --> 00:36:06,778
it's not as cut and dried. I mean, I think most clients that we work
576
00:36:06,804 --> 00:36:10,238
with are pretty cut and dried. Right. It's one company that's having a license,
577
00:36:10,274 --> 00:36:14,434
but it can get sticky. I know we even have a client that has
578
00:36:14,592 --> 00:36:18,118
a US company and then a Belgian company,
579
00:36:18,204 --> 00:36:21,478
and we assign most of their patents to their Belgian company because they
580
00:36:21,504 --> 00:36:25,190
get tax benefits in Belgium.
581
00:36:25,370 --> 00:36:29,350
But then that creates a problem now because if
582
00:36:29,460 --> 00:36:33,178
some of them are retained by the US company and
583
00:36:33,204 --> 00:36:37,058
they have some with their Belgian company, you then have to be able to prove
584
00:36:37,154 --> 00:36:40,150
common ownership between those entities.
585
00:36:41,010 --> 00:36:45,490
If you were to want to overcome some kind of obviousness type double patenting
586
00:36:48,970 --> 00:36:50,750
kind of screwy.
587
00:36:53,090 --> 00:36:56,890
And then so the other common ownership is under joint research agreements.
588
00:36:57,070 --> 00:37:01,062
So the subject matter was developed in joint research agreement and
589
00:37:01,076 --> 00:37:04,594
the claimed invention wasn't made as a result of the agreement.
590
00:37:04,762 --> 00:37:08,590
And the application for patent discloses the names of the parties
591
00:37:08,650 --> 00:37:12,394
to the joint research agreement. So that can also be a common ownership.
592
00:37:12,562 --> 00:37:15,790
And so what they have regarded as joint research agreements,
593
00:37:15,850 --> 00:37:20,050
obviously a written contract, some kind of grant, some kind of cooperative agreement,
594
00:37:20,230 --> 00:37:23,838
and obviously it can be in the experimental field, developmental research
595
00:37:23,924 --> 00:37:27,114
work. And I think some of the interesting things
596
00:37:27,152 --> 00:37:30,690
that come out of this and now it's more complicated. Right. Because it's not
597
00:37:30,740 --> 00:37:34,534
just one company or a company with subsidiaries
598
00:37:34,642 --> 00:37:38,386
or a company with license fees. Now you have like two parties
599
00:37:38,458 --> 00:37:42,906
or more who effectively own it. Right. That has some parts of
600
00:37:43,028 --> 00:37:47,002
the pie who
601
00:37:47,136 --> 00:37:51,406
potentially could be at odds with one another at any given point. And so
602
00:37:51,528 --> 00:37:55,586
from a terminal Disclaimer practice, again, to overcome that obviousness
603
00:37:55,658 --> 00:37:58,966
type double patenting and
604
00:37:58,968 --> 00:38:02,770
you do a terminal Disclaimer, you are basically waiving the right to
605
00:38:02,820 --> 00:38:06,458
separately enforce any patent granted
606
00:38:06,494 --> 00:38:10,318
on that application. You have the disclaimed patent and
607
00:38:10,344 --> 00:38:13,982
the Disclaimer patent. And if those are ever sold
608
00:38:14,126 --> 00:38:17,278
separately, you can't enforce them, something that gets really
609
00:38:17,304 --> 00:38:21,502
sticky from a joint research perspective, because if company A all
610
00:38:21,516 --> 00:38:25,634
of a sudden decides that they're going to pursue more heavily
611
00:38:25,802 --> 00:38:29,206
Company X from this joint research,
612
00:38:29,388 --> 00:38:34,006
and Company B decides that they're going to more heavily pursue technology
613
00:38:34,128 --> 00:38:37,920
Y from the joint research, and they kind of go their separate ways,
614
00:38:38,550 --> 00:38:42,302
and those were terminally displayed to one another. Now you're kind of breaking
615
00:38:42,326 --> 00:38:46,226
that link between them, and you might not be able to enforce those patents
616
00:38:46,418 --> 00:38:50,350
at some later date. And so under the Create
617
00:38:50,400 --> 00:38:53,866
Act of 2004, two patent applications of different
618
00:38:53,928 --> 00:38:57,902
ownership are considered commonly owned. If the invention issue was made pursuant
619
00:38:57,926 --> 00:39:02,054
to a joint research agreement, the invention was within the scope of the agreement
620
00:39:02,222 --> 00:39:05,242
and the parties of the agreement of the applicants of the application. So,
621
00:39:05,256 --> 00:39:09,660
again, this goes towards having really good agreements in place of what
622
00:39:10,110 --> 00:39:13,402
each company brought to the table, what each
623
00:39:13,476 --> 00:39:17,314
company created as a part of this
624
00:39:17,472 --> 00:39:21,398
development. Because otherwise, if that's not clearly,
625
00:39:21,494 --> 00:39:25,226
clearly spelled out, I think it could have really problematic,
626
00:39:25,358 --> 00:39:28,802
you know, what happens with their existing portfolio
627
00:39:28,946 --> 00:39:31,800
that they bring to the table versus something that they share together.
628
00:39:33,750 --> 00:39:37,582
And so from kind of going back to
629
00:39:37,596 --> 00:39:40,774
this whole terminal Disclaimer, it's been
630
00:39:40,812 --> 00:39:44,230
kind of a crazy route through some of this stuff, kind of coming across different
631
00:39:44,280 --> 00:39:47,410
things. But some of the terminal Disclaimer practice that
632
00:39:47,460 --> 00:39:51,022
kind of came across, which is that the one way test,
633
00:39:51,096 --> 00:39:54,598
which I think is what most examiners do is very much the default is whether
634
00:39:54,624 --> 00:39:58,826
the asserted patent is obvious over or anticipated
635
00:39:58,898 --> 00:40:02,350
by an earlier issued patent. I think that's
636
00:40:03,210 --> 00:40:06,598
when you're prosecuting, that's kind of commonly what you see. Right. But then
637
00:40:06,624 --> 00:40:10,558
there is a rarer two way test where for
638
00:40:10,584 --> 00:40:15,480
whatever reason, a second filed patent application issues before
639
00:40:16,350 --> 00:40:19,546
an earlier filed patent application.
640
00:40:19,668 --> 00:40:22,922
So they're kind of even though one was filed earlier, for whatever reason it ends
641
00:40:22,946 --> 00:40:26,698
up issuing later. This has
642
00:40:26,724 --> 00:40:30,022
to be because the PTO is responsible for the delay in the issuance of the
643
00:40:30,036 --> 00:40:33,574
first filed application. And so in those cases, there may be some kind of
644
00:40:33,672 --> 00:40:36,874
more interesting terminal Disclaimer practice because they
645
00:40:36,912 --> 00:40:40,860
still may be obvious over one another, but one technically has an earlier date.
646
00:40:41,190 --> 00:40:44,890
Then how do you rectify that? Because you can't.
647
00:40:45,390 --> 00:40:48,662
I'd have to do more homework. Honestly, on the two way test, I think it's
648
00:40:48,686 --> 00:40:51,838
quite rare, but I don't know how they
649
00:40:51,864 --> 00:40:55,306
rectified in that situation because you have one that
650
00:40:55,368 --> 00:40:59,146
issues and you can't cut
651
00:40:59,208 --> 00:41:02,218
short. I guess you could cut short that one.
652
00:41:02,364 --> 00:41:05,458
In theory, you would cut short that one relative to the other one if they
653
00:41:05,484 --> 00:41:08,714
were coowned then part of this joint research agreement.
654
00:41:08,882 --> 00:41:11,962
But then the examiner would have to be aware of this other one, assuming that
655
00:41:11,976 --> 00:41:16,102
that one was published. Right. So I think it's a weird chicken or egg thing.
656
00:41:16,176 --> 00:41:20,438
I don't know. And if the PTO is responsible
657
00:41:20,474 --> 00:41:23,494
for the delay, there could be a patent term adjustment, right,
658
00:41:23,592 --> 00:41:24,240
right.
659
00:41:27,250 --> 00:41:30,650
Yeah. But then there's also the
660
00:41:30,700 --> 00:41:34,394
safe harbor, which I guess it makes sense. I just never really thought about
661
00:41:34,432 --> 00:41:38,238
it. But when you have an obvious type double
662
00:41:38,274 --> 00:41:42,134
patenting rejection, that this
663
00:41:42,172 --> 00:41:45,602
wouldn't apply for divisional applications. Right. Because a divisional I mean,
664
00:41:45,616 --> 00:41:48,482
in theory, it's kind of a different invention anyway. So the office has already kind
665
00:41:48,496 --> 00:41:52,022
of said these are different, and because they're different, pursue it
666
00:41:52,036 --> 00:41:55,526
in a separate application. But if you ever got
667
00:41:55,648 --> 00:41:58,730
an obvious type double patenting rejection individual,
668
00:41:58,900 --> 00:42:02,454
it's improper. There's a safe harbor provision
669
00:42:02,502 --> 00:42:05,882
around terminal disclaimers with that because probably because the
670
00:42:05,896 --> 00:42:08,922
patent office has already said this is different, pursue it separately,
671
00:42:09,066 --> 00:42:13,134
and then for an examiner to come back and say they're obvious variations
672
00:42:13,182 --> 00:42:16,310
of one another would kind of be against what they've already stated, I suppose.
673
00:42:18,010 --> 00:42:21,362
But yeah, I feel like practitioners are
674
00:42:21,376 --> 00:42:25,418
getting smarter and smarter around avoiding restriction requirements in
675
00:42:25,444 --> 00:42:28,922
general. And so I feel like I can count the number of times I've done
676
00:42:28,936 --> 00:42:32,798
a divisional, probably because I feel like you try to avoid the
677
00:42:32,824 --> 00:42:36,918
issue altogether. But anyways,
678
00:42:37,074 --> 00:42:39,878
so, yeah, a lot of weird things. I guess kind of the things that came
679
00:42:39,904 --> 00:42:43,540
up in terms of practice is that
680
00:42:44,230 --> 00:42:47,618
when at all possible, ensuring the assignment is filed the same day
681
00:42:47,644 --> 00:42:51,878
as the application. I know that's really difficult sometimes, but I think what
682
00:42:51,904 --> 00:42:54,998
we had learned with one of our clients was just any way that you can
683
00:42:55,024 --> 00:42:58,514
button up things to make it lock tight in terms
684
00:42:58,552 --> 00:43:02,534
of when things were owned and not
685
00:43:02,572 --> 00:43:06,446
having to delve into contracts and agreements that
686
00:43:06,448 --> 00:43:09,686
you have to look through and redact or put on file and stuff,
687
00:43:09,808 --> 00:43:13,754
the better. And then we've actually had this come up for
688
00:43:13,792 --> 00:43:16,610
multiple reasons lately. I don't know what it is,
689
00:43:16,660 --> 00:43:20,190
but verifying that clients have agreements
690
00:43:20,250 --> 00:43:24,414
in place around who owns the iPad.
691
00:43:24,522 --> 00:43:27,942
Obviously, this poses problems only just from an ownership perspective,
692
00:43:28,026 --> 00:43:31,600
from how do you assign it when you're doing these
693
00:43:32,470 --> 00:43:36,462
activities? But then longer term, if there's ever a common ownership
694
00:43:36,606 --> 00:43:40,082
play to be made, you have to know who should have
695
00:43:40,096 --> 00:43:43,514
owned it at that time as well. We've had clients that have entered into
696
00:43:43,552 --> 00:43:47,978
development agreements with firms that they're paying with
697
00:43:48,004 --> 00:43:51,926
the internal understanding that because they paid
698
00:43:51,988 --> 00:43:55,682
a firm to develop the technology for them, that they own it. But then
699
00:43:55,696 --> 00:43:59,260
you have the firm come back and say, well, look, we use our base technology
700
00:44:00,310 --> 00:44:03,602
to develop this for you. And because
701
00:44:03,676 --> 00:44:07,658
of that, we own it, or we own a portion of it, and that
702
00:44:07,684 --> 00:44:11,210
could have all been sold had they had an agreement in place
703
00:44:11,260 --> 00:44:14,882
that said, this is your base tech. This is what we ask you to
704
00:44:14,896 --> 00:44:17,918
do. This is what we develop together. And because we paid you for it,
705
00:44:17,944 --> 00:44:22,130
we own it. It was our idea. You just reduced it to practice or whatever
706
00:44:22,180 --> 00:44:25,840
the case may be. So some sticky things
707
00:44:27,130 --> 00:44:30,374
and this doesn't come up crazy often, but I think it's something
708
00:44:30,472 --> 00:44:34,022
when you're starting to do reports for clients around
709
00:44:34,096 --> 00:44:37,430
diligence or licensing or things like that,
710
00:44:37,600 --> 00:44:41,320
make sure you clearly label when
711
00:44:42,670 --> 00:44:46,578
patents have been terminally disclaimed and which are the Disclaimer
712
00:44:46,614 --> 00:44:49,898
patents, because there's an individual that I've been
713
00:44:49,924 --> 00:44:53,874
working with for another client. And he said it's a really interesting negotiation
714
00:44:53,982 --> 00:44:57,758
piece. He said, you'll see, that really savvy sellers and
715
00:44:57,784 --> 00:45:01,218
buyers that if for whatever reason the seller didn't disclose
716
00:45:01,254 --> 00:45:05,426
the terminal disclaimers or forgot to or didn't realize it, whatever the case may be,
717
00:45:05,608 --> 00:45:08,978
the buyer who knows these terminal disclaimers will
718
00:45:09,004 --> 00:45:13,058
kind of keep it to themselves until like the 9th hour and
719
00:45:13,084 --> 00:45:16,362
then throw them on the table and be like there's terminal
720
00:45:16,386 --> 00:45:19,646
disclaimers. And if some of
721
00:45:19,648 --> 00:45:23,702
the Disclaimer patents are in a different family now,
722
00:45:23,776 --> 00:45:27,618
for that buyer to be able to enforce the patents that they're purchasing,
723
00:45:27,774 --> 00:45:31,254
they also need a license or something, or you'll be able to purchase
724
00:45:31,302 --> 00:45:35,018
those other patents. And now because it's the 9th hour, they can get them
725
00:45:35,104 --> 00:45:38,318
at dirt cheap because the clocks run out right
726
00:45:38,344 --> 00:45:41,474
on the agreement or everybody's kind of over it.
727
00:45:41,512 --> 00:45:45,602
So I think the more that we remember
728
00:45:45,796 --> 00:45:48,998
or include those details around terminal disclaimers, I think
729
00:45:49,024 --> 00:45:52,566
it's better for everybody. It allows
730
00:45:52,698 --> 00:45:56,090
to hopefully get more maximum value for their portfolios.
731
00:45:56,710 --> 00:46:00,758
And this is an interesting thing that I had. Again, I think at
732
00:46:00,784 --> 00:46:04,646
least I've always kind of felt in some regard. I mean, I don't take it
733
00:46:04,768 --> 00:46:08,462
in a cavalier sense, but a lot of times these
734
00:46:08,476 --> 00:46:11,598
terminal disclaimers come up for me, at least in continuations,
735
00:46:11,634 --> 00:46:15,038
right where they're already essentially have the same patent term because they're all stemming from
736
00:46:15,064 --> 00:46:18,842
the same priority date. So PPA, the patent term adjustment may
737
00:46:18,856 --> 00:46:21,638
play into that a little bit, but you're looking at like 70 days difference,
738
00:46:21,724 --> 00:46:26,142
90 days or whatever. But in cases where it's
739
00:46:26,166 --> 00:46:29,514
more substantial than that, some practice
740
00:46:29,562 --> 00:46:33,110
tips that I read were really making sure that every
741
00:46:33,160 --> 00:46:37,098
single claim was rejected for an obviousness
742
00:46:37,134 --> 00:46:40,614
type double patenting. And if some weren't,
743
00:46:40,782 --> 00:46:44,762
consider letting those pass to issue and then
744
00:46:44,896 --> 00:46:48,470
consider going back at another, but at the Apple for the other ones
745
00:46:48,520 --> 00:46:53,774
to try to argue that they're distinct or
746
00:46:53,812 --> 00:46:57,102
change them a little bit to make them more distinct so that you can avoid
747
00:46:57,126 --> 00:47:00,882
the terminal Disclaimer, maybe have different claims
748
00:47:00,906 --> 00:47:04,190
of varying. I just thought that was interesting. Again,
749
00:47:04,360 --> 00:47:07,850
I think a lot of practitioners, myself included, until I thought more about
750
00:47:07,900 --> 00:47:11,486
this was just a terminal Disclaimer. It's only 90
751
00:47:11,548 --> 00:47:15,278
days. Like what's the big deal? But as those terms start
752
00:47:15,304 --> 00:47:19,418
to differ more drastically, thinking about it more and not
753
00:47:19,444 --> 00:47:22,778
being afraid to make some arguments back or
754
00:47:22,804 --> 00:47:26,262
letting some of them pass the issue anyways,
755
00:47:26,286 --> 00:47:28,562
I know that's kind of all over the place. A lot of different kind of
756
00:47:28,576 --> 00:47:32,378
topics but kind of all related. So if
757
00:47:32,404 --> 00:47:36,134
anybody has any thoughts or personal experiences, I have a question. I mean,
758
00:47:36,172 --> 00:47:39,050
thanks for this. This actually, it's a great topic. I think it's really interesting.
759
00:47:39,160 --> 00:47:42,398
And my question is you talked
760
00:47:42,424 --> 00:47:46,254
about 102 commonly
761
00:47:46,302 --> 00:47:49,538
owned issues under a 102 rejection. Is there any
762
00:47:49,564 --> 00:47:52,480
difference under a 103? No, you're right.
763
00:47:52,810 --> 00:47:55,814
I forgot about that part. Yeah, I didn't include that. But yeah.
764
00:47:55,852 --> 00:47:59,490
So it does apply to 103 as well. But the art cited
765
00:47:59,550 --> 00:48:03,770
as part of the 103 has to be under
766
00:48:03,880 --> 00:48:07,002
one of those 102 sections, which it normally would be, because that's the only sections
767
00:48:07,026 --> 00:48:11,094
of 102. Now with AIA, whereas I think pre AI,
768
00:48:11,202 --> 00:48:15,350
it got a little more interesting. So there's only certain sections
769
00:48:15,790 --> 00:48:19,434
of prior art that would apply to the common ownership.
770
00:48:19,542 --> 00:48:23,680
Okay. But now with obviousness as well, it does apply.
771
00:48:25,210 --> 00:48:29,126
But you still have common ownership exception even for 103
772
00:48:29,188 --> 00:48:33,546
only works within one year Grace period. That went
773
00:48:33,608 --> 00:48:36,858
round because I read so much about this,
774
00:48:37,004 --> 00:48:41,874
and it was like blowing my mind because some
775
00:48:41,972 --> 00:48:45,462
things I read said that if
776
00:48:45,656 --> 00:48:49,918
it's more than one year, stop now, there is no exception.
777
00:48:50,074 --> 00:48:54,210
But then when you really read the statute,
778
00:48:55,190 --> 00:48:58,086
the first part is 102,
779
00:48:58,088 --> 00:49:02,130
a one, and then these are all the exceptions for
780
00:49:02,240 --> 00:49:05,970
under 102. A one exceptions are the 102 B,
781
00:49:06,020 --> 00:49:09,202
one exceptions, which says one year or less, blah,
782
00:49:09,226 --> 00:49:12,978
blah, blah, blah, blah. And then you have 102 a two, and all the
783
00:49:13,004 --> 00:49:16,446
102 B, two exceptions apply for 102 a two,
784
00:49:16,508 --> 00:49:20,590
and there is no statement of a one year period.
785
00:49:20,770 --> 00:49:24,642
And so in my mind, I'm like there's no statement of
786
00:49:24,656 --> 00:49:27,990
a one year period. It seems like if it were longer than that,
787
00:49:28,040 --> 00:49:31,002
it should still apply. I mean, you might be opening yourself up to some kind
788
00:49:31,016 --> 00:49:35,194
of terminal Disclaimer, losing a lot of patent term. But then I was conversing
789
00:49:35,242 --> 00:49:38,682
with an attorney that works at a
790
00:49:38,756 --> 00:49:43,266
firm that we do some shared work with because
791
00:49:43,328 --> 00:49:46,542
a case came up, Ironically, where it had been more than a year, where a
792
00:49:46,556 --> 00:49:50,098
client had a published application and then one that we were filing
793
00:49:50,134 --> 00:49:53,262
or was like an office action. Right. So they were separated by more than a
794
00:49:53,276 --> 00:49:57,018
year. And I said, could this apply in this situation?
795
00:49:57,164 --> 00:50:00,726
And he said that he had delved into it recently a ton
796
00:50:00,788 --> 00:50:04,700
for a separate case and said that the one year applies for everything
797
00:50:06,470 --> 00:50:09,510
based on the MPEP. It seems like it doesn't.
798
00:50:09,830 --> 00:50:13,626
But seemingly how people are interpreting it is that I
799
00:50:13,628 --> 00:50:18,094
don't know. I'd be curious to almost press my luck a little bit examiner
800
00:50:18,202 --> 00:50:22,282
at some point and just be like greater
801
00:50:22,306 --> 00:50:27,270
than one year the supply anyway,
802
00:50:27,380 --> 00:50:30,440
that's my understanding. All one year or less.
803
00:50:31,370 --> 00:50:34,882
So I guess it does make sense. But in the sense of the terminal
804
00:50:34,906 --> 00:50:38,122
Disclaimer, I feel like you should be able to commonly own thing if you're willing
805
00:50:38,146 --> 00:50:42,018
to disclaim a whole bunch of patent terms like what do they care at
806
00:50:42,044 --> 00:50:44,418
that point? You know what I mean? If you had things that were separated by
807
00:50:44,444 --> 00:50:48,378
three years, for example, a published application and then
808
00:50:48,404 --> 00:50:52,170
something that was earlier issued or whatever, and they were separated by three
809
00:50:52,220 --> 00:50:55,400
years, if you're willing to terminally disclaim those,
810
00:50:56,030 --> 00:50:58,580
what does the patent office care that it were three years?
811
00:51:00,110 --> 00:51:01,280
Maybe I'm wrong.
812
00:51:04,290 --> 00:51:07,838
I thought there was no Grace period for a terminal
813
00:51:07,874 --> 00:51:11,302
Disclaimer. If it's a double patenting rejection. Right. But I was mean, I guess more
814
00:51:11,316 --> 00:51:14,662
common ownership if it were commonly owned, why would
815
00:51:14,676 --> 00:51:17,590
they care if you were willing to disclaim?
816
00:51:21,010 --> 00:51:24,470
Maybe I'm missing something, but I think at least in some scenarios,
817
00:51:24,850 --> 00:51:28,302
if the claims are co expensive, then it's
818
00:51:28,326 --> 00:51:31,698
a double patenting rejection. But if you have this priorit reference that doesn't claim
819
00:51:31,734 --> 00:51:34,818
it but just discloses it now, you can't
820
00:51:34,854 --> 00:51:37,878
terminally just claim it anymore because you haven't.
821
00:51:38,034 --> 00:51:41,980
Right. Equivalent claims. That's true.
822
00:51:42,550 --> 00:51:45,582
Yeah, that's true. That's fair. Yeah. Because it's not the claims
823
00:51:45,606 --> 00:51:48,998
at that point. It's just the disclosure of it.
824
00:51:49,144 --> 00:51:49,840
Yeah.
825
00:51:52,250 --> 00:51:55,482
Thank you for all your research on this. It's really helpful because this has
826
00:51:55,496 --> 00:51:58,302
come up for me a couple of times and people I work with are like,
827
00:51:58,436 --> 00:52:02,338
no, we can't. It's been more than a year co owned.
828
00:52:02,434 --> 00:52:06,262
But I have these random tidbits from other practitioners
829
00:52:06,346 --> 00:52:09,222
and from the bar exam,
830
00:52:09,296 --> 00:52:13,390
whatever that it's like some things are prior art for novelty,
831
00:52:13,450 --> 00:52:17,082
but not for obviousness. And I thought
832
00:52:17,156 --> 00:52:20,982
it was this common ownership thing because I remember
833
00:52:21,056 --> 00:52:24,750
working with other practitioners years ago and this is my
834
00:52:24,800 --> 00:52:28,590
issue and I need to go back and look probably more too, but that
835
00:52:28,760 --> 00:52:32,626
something was about to publish and we were scrambling.
836
00:52:32,698 --> 00:52:36,558
Not scrambling whatever. We were working to get
837
00:52:36,644 --> 00:52:39,882
something on file because it was going to be
838
00:52:40,016 --> 00:52:44,070
prior art for novelty, but not for obviousness. So we could still do,
839
00:52:44,180 --> 00:52:47,670
et cetera. That was part of the whole strategy. But now I'm kind of
840
00:52:47,780 --> 00:52:53,014
trying to figure out what that situation was because this was a very experienced
841
00:52:53,062 --> 00:52:56,446
attorney who was telling me this or was setting
842
00:52:56,458 --> 00:52:59,742
the strategy, but I can't remember what
843
00:52:59,756 --> 00:53:03,282
the situation was. Yeah. I took a look. Now, again, more I read
844
00:53:03,356 --> 00:53:07,098
countless blogs, but yeah, I've seen it come up like
845
00:53:07,124 --> 00:53:10,760
we had a client where I always tell clients it's like
846
00:53:11,270 --> 00:53:15,150
a good issue in some regard. Right. When your
847
00:53:15,200 --> 00:53:19,194
own art is the only art being
848
00:53:19,232 --> 00:53:22,818
cited. Right. Because that means that you're kind of occupying your own space.
849
00:53:22,904 --> 00:53:26,094
Right. That like nobody's moving in there. Then also, in the other sense,
850
00:53:26,132 --> 00:53:29,994
it creates a lot of problems because you can't argue against yourself, at least
851
00:53:30,032 --> 00:53:32,190
you shouldn't a whole bunch.
852
00:53:33,950 --> 00:53:38,310
But we've had these situations where the only rejection we get is 103
853
00:53:38,420 --> 00:53:41,782
with our clients prior stuff. And they're
854
00:53:41,806 --> 00:53:45,018
definitely coowned. Usually examiners are pretty on
855
00:53:45,044 --> 00:53:47,720
top of this stuff because usually in the offsettings will say,
856
00:53:48,110 --> 00:53:52,170
I do note that it is commonly owned hint hint.
857
00:53:53,750 --> 00:53:56,874
And I haven't seen it in those cases where it you know,
858
00:53:56,912 --> 00:53:59,240
we did have the case where it was one year or less.
859
00:54:00,530 --> 00:54:04,042
The examiner definitely gave, like the hint hints. I noticed that some of the inventors
860
00:54:04,066 --> 00:54:06,500
are the same. If you could prove common ownership or whatever.
861
00:54:08,970 --> 00:54:12,698
This is more like, I guess, disclaiming it just because they were the inventors
862
00:54:12,734 --> 00:54:17,766
that publicly. This was I guess that was that case. But I'm
863
00:54:17,778 --> 00:54:21,146
going to go back to and I'll send something out your email if
864
00:54:21,148 --> 00:54:24,462
you find something, David, because now I want to revisit in my throwing
865
00:54:24,486 --> 00:54:28,480
this together. I kind of forgot about the obviousness angle. And if maybe that
866
00:54:28,930 --> 00:54:32,090
has more latitude in terms of time frame,
867
00:54:34,390 --> 00:54:37,926
because maybe that's where the latitude comes from. But again, I was really surprised.
868
00:54:37,998 --> 00:54:40,600
Again, if you go back up here and look at this,
869
00:54:43,550 --> 00:54:46,890
this is the exact MPE language
870
00:54:47,750 --> 00:54:51,246
for exceptions under, and there is
871
00:54:51,308 --> 00:54:54,594
nothing around one year. If you go to the top
872
00:54:54,632 --> 00:54:58,270
one, it says one year or less. But that's not applying
873
00:54:58,330 --> 00:55:02,578
to all of the it
874
00:55:02,604 --> 00:55:06,120
doesn't apply to two because one is separate from two. I don't know.
875
00:55:06,450 --> 00:55:09,874
I had really convinced myself during
876
00:55:09,912 --> 00:55:13,178
this research that there was no one year. But then after talking to Albert,
877
00:55:13,214 --> 00:55:16,114
I was like, okay, maybe I'm missing something.
878
00:55:16,212 --> 00:55:20,002
So I don't know, I feel like I
879
00:55:20,016 --> 00:55:23,702
need to test the waters or something, like just throw out a common ownership
880
00:55:23,786 --> 00:55:27,106
statement at some point and be like, what do
881
00:55:27,108 --> 00:55:30,780
you think, examiner? Let's discuss this because,
882
00:55:31,290 --> 00:55:35,978
I don't know left
883
00:55:36,004 --> 00:55:38,834
you with we solved all the world problems, and now we can't solve a problem
884
00:55:38,872 --> 00:55:42,638
in patent law. Who knew that was
885
00:55:42,664 --> 00:55:43,780
the toughest problem?
886
00:55:48,950 --> 00:55:52,520
So I'll keep my diving into this a little bit because now it's puzzling me.
887
00:55:53,390 --> 00:55:56,970
Well, thank you for taking on such an arcane.
888
00:55:57,770 --> 00:56:00,020
I hope it was clear. I felt it like it was.
889
00:56:02,330 --> 00:56:04,940
I've been trying to avoid this for a long time.
890
00:56:05,930 --> 00:56:11,226
Well, we still didn't solve it fully. Now I
891
00:56:11,228 --> 00:56:14,960
don't know. More questions to answer. I know
892
00:56:15,470 --> 00:56:17,120
what keeps you up at night, right?
893
00:56:19,310 --> 00:56:22,918
Super helpful. Thank you, Ashley. Yeah. Thank you, Ashley.
894
00:56:22,954 --> 00:56:26,180
Yeah, thank you. No worries. I learned a lot.
895
00:56:29,790 --> 00:56:33,960
It's easy in corporate, right? Corporate already has all this stuff set up,
896
00:56:34,470 --> 00:56:37,942
right? Yeah. A small guy is going to
897
00:56:37,956 --> 00:56:39,010
figure it out ourselves.
898
00:56:40,950 --> 00:56:44,362
All right, everybody. Well, have a good rest of your week, and we'll talk to
899
00:56:44,376 --> 00:56:46,680
you later. Thank you, Ashley. Thanks.
900
00:56:47,250 --> 00:56:50,606
Bye bye. All right, so we're
901
00:56:50,618 --> 00:56:53,698
going to insert just a little addendum here. At the end, the group ran into
902
00:56:53,724 --> 00:56:57,610
a question around whether or not the one year time frame or Grace period
903
00:56:57,930 --> 00:57:01,282
applies to the common ownership exception. We hit on this
904
00:57:01,296 --> 00:57:03,442
a little bit in the intro. We just wanted to make it really clear in
905
00:57:03,456 --> 00:57:07,034
case that got lost a little bit. So we researched this issue further
906
00:57:07,082 --> 00:57:10,354
post recording, actually, what did we determine kind of going back
907
00:57:10,392 --> 00:57:13,750
to section 102 of US code. Right. That basically
908
00:57:13,800 --> 00:57:17,494
codifies novelty, the parameters of novelty in the US
909
00:57:17,592 --> 00:57:21,182
in post America and Ben's at there's
910
00:57:21,206 --> 00:57:24,070
basically 102 a one and 102 a two.
911
00:57:24,120 --> 00:57:29,342
And these two sections enumerate
912
00:57:29,366 --> 00:57:33,314
the kinds of prior art that fall into these two categories.
913
00:57:33,422 --> 00:57:37,226
Okay. And with that, there are exceptions
914
00:57:37,358 --> 00:57:40,762
to the prior art for each of these categories. So for
915
00:57:40,776 --> 00:57:44,590
102 a one, there is a Grace period exception of up to one year.
916
00:57:44,640 --> 00:57:48,322
If you do a trade show, some kind
917
00:57:48,336 --> 00:57:52,102
of literature publication, if it's within one year, you can say it
918
00:57:52,116 --> 00:57:55,714
doesn't count because I'm the inventor. I publish it. My bad.
919
00:57:55,872 --> 00:57:59,558
It doesn't count for 102 a two. There is technically
920
00:57:59,654 --> 00:58:03,746
no time limitation. Okay. If you look at the MPEP,
921
00:58:03,938 --> 00:58:07,778
you look at the US Code, there is technically no time limitation
922
00:58:07,874 --> 00:58:11,422
to exceptions. Under is a common
923
00:58:11,496 --> 00:58:15,410
ownership exception, though, right. And that common ownership exception
924
00:58:15,470 --> 00:58:19,354
says that if the prior art document and the
925
00:58:19,392 --> 00:58:22,574
instant patent application are commonly owned,
926
00:58:22,622 --> 00:58:26,038
as at the time of filing, then that prior art
927
00:58:26,064 --> 00:58:29,170
under 102 a two doesn't count. Right.
928
00:58:29,340 --> 00:58:32,482
However, there are going to
929
00:58:32,496 --> 00:58:36,106
be scenarios where art under 102 a
930
00:58:36,108 --> 00:58:40,140
two would also be considered art under 102 a one.
931
00:58:40,650 --> 00:58:43,582
And that's going to be actually the vast majority of the cases. Right. If you
932
00:58:43,596 --> 00:58:46,742
look at what kind of prior artists under each of those categories, the vast majority
933
00:58:46,766 --> 00:58:49,066
of times, if you get a 102 a two, you're going to get a 102
934
00:58:49,068 --> 00:58:52,260
a one. So in that case,
935
00:58:53,430 --> 00:58:56,650
then it has to be within that one year time frame.
936
00:58:57,090 --> 00:59:00,698
Even your common ownership exception has to be within that one year time frame.
937
00:59:00,794 --> 00:59:04,942
There's going to be a really rare sliver of prior art that
938
00:59:05,136 --> 00:59:08,280
is beyond one year and only under.
939
00:59:09,630 --> 00:59:13,526
And in that scenario, the common ownership exception has no time limit.
940
00:59:13,598 --> 00:59:17,086
Right. However, long ago however, like I said, that's going
941
00:59:17,088 --> 00:59:20,434
to be the super rare exception. And I've talked
942
00:59:20,472 --> 00:59:24,262
to tons of practitioners, and most people will tell you that the
943
00:59:24,276 --> 00:59:29,234
common ownership has a one year time frame limit. And that's technically
944
00:59:29,342 --> 00:59:32,758
inaccurate if you look at the EP. But I think where everybody kind
945
00:59:32,784 --> 00:59:36,578
of believes that it's just because it's so rare to find a piece of prior
946
00:59:36,614 --> 00:59:40,438
art from a condom and ownership perspective that wouldn't fall under both of
947
00:59:40,464 --> 00:59:43,858
these sections and thus require a one year time
948
00:59:43,884 --> 00:59:47,338
frame limit. Well, it's a good thing we
949
00:59:47,364 --> 00:59:51,310
have experts like you to sort this all out. Thanks for the clarification.
950
00:59:51,630 --> 00:59:54,650
Happy to do so. All right. That's all for today, folks.
951
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Thanks for listening. And remember to check us out at Aurora Patents.com for
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more great podcasts, blogs and videos covering all things patents strategy.
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And if you're an agent or attorney and would like to be part of the
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discussion or an inventor with a topic you'd like to hear discussed, email us
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at podcast@aurorapatins.com do remember that this podcast
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does not constitute legal advice and until next time keep calm and patent on.
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Good day and welcome to the Patently Strategic Podcast, where we discuss all
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things at the intersection of business, technology and patents.
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This podcast is a monthly discussion amongst experts in the field of patenting.
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It is for inventors, founders and IP professionals alike, established or
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aspiring. And in today's episode, our experts help to demystify the
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concept of common ownership and how it can be leveraged to disqualify prior
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art that might otherwise cause a rejection during prosecution. Dr.
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Ashley Sloat, President and director of Patent Strategy here at Aurora, leads this
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discussion along with our all star patent panel, digging into common
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ownership exceptions, joint research exceptions, and terminal
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Disclaimer practice. And if this all sounds like a foreign language,
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or if you're wondering why you might care, do stay tuned for a primer
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that will help you quickly get up to speed on key concepts like inventorship,
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ownership assignments, prior art, and terminal disclaimers.
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One of the recurring themes of this podcast is helping inventors avoid sharp
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corners, and we've found that these concepts in particular trip up a lot of
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newer inventors, and the resulting problems that come from misunderstandings around
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these core concepts can be very difficult to untangle later.
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Ashley is joined today by are always exceptional group of IP experts,
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including David Cohen, principal at Cohen Sciences,
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Shelley Couturier, patent strategist and search specialist at Aurora,
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Amy Fiene petted attorney at Vancot, and adjunct professor at
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BYU, and David Jackerel, President of Jacque Consulting.
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Now about that primer. After giving the group discussion a second listen,
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we realize that there might be some gaps for some folks in the audience,
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and when that happens, we like to front load the episode with some extra context.
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I'm joined now by Ashley, who's going to help answer a few questions to get
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everyone on the same page before we dive into the thick of all of this.
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To understand the implications of common ownership, it's helpful to know how
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ownership is defined in the patent world, and also how it relates to
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inventorship. Inventorship and ownership are really two sides
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of a very similar coin as it pertains to patenting and who owns the idea
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and has the exclusive rights to practice it. Understanding how
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these concepts differ is critical to protecting your IP and avoiding
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costly legal disputes down the road. All right,
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Ashley, so toward the end of season one, we did an entire episode on inventorship
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that listeners should definitely check out, but at a
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high level, what is inventorship?
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Absolutely. So the US Constitution grants
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patents to inventors, and so what that means is
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that without additional legal frameworks,
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a patent will be issued to an inventor, and inventorship
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is dependent upon who conceived of the
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invention or who conceived of the idea.
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And even more so, taking it one step deeper.
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The claims of a patent define the meets and bounds
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of what is being protected. So if somebody contributed
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to one of those claims, they are determined to
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be an inventor. So just peer reduction to practice.
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So peer implementation does not necessarily make
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you an inventor, but it can if that implementation
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resulted in inventive concepts.
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So, for example, just the way you actually implemented
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the manufacturing process actually did result in
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it being inventive over existing methods,
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then you would be listed as an inventor even though you were taking somebody else's
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idea and implementing it. And so I guess to say it
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in another way, just because a company is paying
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inventors to invent for them or paying employees to invent for them,
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make new products, make new inventions, that does not necessarily mean
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that the company has the rights
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to the technology. It does rest in the inventors
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until the inventors assign their rights to the
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entity. Okay, that makes sense. So we'll get
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into the topic of this podcast, Common ownership in a little bit.
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Before we do that, could you explain what ownership is?
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So ownership is the entity
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that has the authority to file patent applications, at least under
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the America and Ben Sat, and take action in that pending application.
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So I think the most important aspect of that is that it's the
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owner that can enjoy all the rights of
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the patent, the right to exclude the right to prevent
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others from making, using, selling, offering for sale, or importing the claimed
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invention. Now, the inventor can be the
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owner. And that's the first
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instinct is that the inventor is the owner. But if the inventor assigns
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their ownership in the technology or in the package to
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a company, then the company becomes the owner. Or you could even assign it to
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another person, right? You could assign it to anybody, probably not your dog,
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but you could probably assign it to anybody or any entity. And then that entity
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now becomes the owner and has the right to kind of direct events
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related to that IP. And this is really important. There's been tons of Tesla
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around things not being done properly
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and entities or people thinking they own something and then coming to find
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out that they actually don't own it because things weren't done properly. So it's
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definitely an often confused balance between inventorship
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and ownership. All right, so in a situation like with an independent
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inventor, that's obviously pretty cut and dry, you have
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the idea to see you own the idea. But it also seems like
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things could get a little bit more complicated when you start talking about companies with
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employees or contractors who are doing the inventing.
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And it sounds like you were alluding to this earlier for sure. But if I'm
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understanding this correctly, the implication is that just
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because I own a company and pay employees or contractors who come up with ideas,
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that doesn't automatically give me ownership and the rights of the IP.
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Correct? Correct. As I said,
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the inventory owner are the same person without any kind of legal
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framework behind that. Just because you're paying the employee does
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not necessarily mean that you then have ownership
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of the idea. Ideally, our employees
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will assign their rights to a company so that the company can
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actually own the intellectual property and then do what it wants
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with it, and then they can then license the patent rights
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and do things like that. But ultimately,
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without some kind of legal framework, a legal tool,
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the inventor is going to be the owner. So then if employee
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inventors or contractors didn't assign their rights to the company,
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those inventors could profit from the invention even if no longer working
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for the company. Right. Like they could license the patents without sharing the royalties with
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the company. They could even become a competitor and sell a competing
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product. Absolutely. And like I said, there's been a lot of keys around that,
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too, even where it gets kind of grey
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as an employee who left a company,
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and they obviously conceived of ideas
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at the company, but then maybe they conceived of ideas afterwards,
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but maybe there's a continuum of ideas there
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at the company versus what they did independently. And then
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so how do you establish what was done at the company versus what was
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done independently and make sure that's clean and that you don't
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end up with an issue of someone trying to benefit from something that the company
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paid for and they were contractually obligated to assign
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versus somebody having a right to their thing that they did independent
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of the company. And so just making sure those lines are clear,
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there's been a lot of kids all around that where things were maybe
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not as clear as they needed to be, or there was some Gray area there.
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So very high level. What's the process then, for transferring those rights?
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It starts, at minimum, with employment agreements.
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Right. Every employment agreement should have a work for hire provision
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and or an assignment provision where it says something to be
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effective. The employee hereby assigned or
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has an obligation to assign any rights
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and intellectual property that was created
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as a result of their employment with the company. And so it needs
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to start there honestly, because when the second thing doesn't
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work out, which I'll tell you about in a second, when that second tool doesn't
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work out, we fall back on the employment contract. So the
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employment contract really has
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to have an assignment provision in there. So I would say this is highly important,
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even for super small companies where it's just you and your buddy.
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You should make an entity and assign the entity.
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So worst case scenario, you and your buddy don't
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get along anymore. At least there's an entity that has
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the rights and that you can then equally somehow separate from that company or
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get benefits from that company. It's kind of separate from the individual.
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So in the world where, God forbid,
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you don't have an employment assignment,
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an assignment provision in your employment contract, what we will always do
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is an assignment for the patent
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rights. So when you file a patent application, there's essentially like,
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one to two page assignment that basically says the
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inventors assign their rights to this entity.
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And it's pretty much common assignment language.
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There are some special assignments that you can do, but most of them are pretty
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boilerplate. And it basically just says that the inventors assign their rights
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to this entity, or they assign their rights to this other person or whatever the
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case may be, or this entity assigns their rights to another
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entity. So the assignment is kind of the legal
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tool that's used by a lot of practitioners like myself to make
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sure that the inventors rights are assigned to an entity. We will do it almost
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95% of the time. The other 5% being inventors who
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don't have an entity don't want to assign because it's just them.
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But even in those scenarios, I would actually recommend that inventors
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put their IP and their company into an entity
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just to kind of create a firewall between personal and business assets.
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And so I think it's honestly good practice, no matter your size.
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Okay, so inventorship is the conception of the idea, and ownership is by
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default. Ownership is possessing the rights and benefits of the granted
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patent, and assignment is how we get those rights from one to the other.
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This is a pretty solid baseline, but I'd also like to give the audience a
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high level overview of common ownership, which is really at the heart of
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this episode. To do that, we have to have an understanding of
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what prior art is and how prior art leads to section 102 and
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103 rejections from the patent office.
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I know this could be an entire episode of its own, but what is prior
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art, and how does it pertain to these rejections?
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Great question. So prior art is any evidence that
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is generally known to the public. So that could be websites,
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Journal articles, materials from trade
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shows, even dissertations material
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from books, obviously, patent documents. Right. Issue patents
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or patent publications. I mean, really, anything that,
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like, says publicly available. Again, there's definitely been case law
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around what,
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you know, how generally available to the public it has to
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be to actually count as public art. But suffice
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it to say a dissertation that you can prove that was
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never checked out at the library still counts as
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a prior art to your patent. So, I mean, it's pretty strong.
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Basically, if it's out there, when an examiner gets
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your patent application, he or she basically reviews
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the claims and does a search through the prior art through all
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these different databases. And if they find something
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that they believe is related to the claims that are on file, they'll basically
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give you a rejection in the office action. And so the rejection is
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around the ideas of industrial applicability,
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which almost everything has utility. Right. So that's a pretty low benchmark
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there. But then novelty and inventiveness and so they
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basically will give you rejections based on those grounds and a
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few others, of course. But for prior art, it's mostly these two.
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And so these novelty and inventiveness
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or non obviousness, as we call it in the US.
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These are in the US Code as 102 and 103,
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Sections 102. And so
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it's usually through these two avenues that the patent examiner
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will reject your application, and then it becomes kind of a bartering process
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or a back and forth argument process to
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prove to the examiner that your claims, your invention
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is indeed new and non obvious over
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any prior references that they found. That takes
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us nicely to common ownership. What is common ownership and what's the
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interplay with prior art? Yeah. So this topic
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is pretty thick. And honestly, I feel like you could look
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this up in several different places and have a slightly different interpretation
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no matter who you read. But suffice it to say
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that we're going to
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focus on the America and Ben's Act, we're not going to focus on
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pre AIA because further complaints the topic.
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But suffice it to say that there are situations in which you've
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created your own prior art. Right. So that prior art
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could be either public disclosures or like
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you've presented at some pitch event, or it could be a
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Journal article that you published or some kind of sales activity that
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you did. So that's one kind of disclosure
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that could create a problem for you. And so in those situations,
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if the examiner finds that material and obviously if you know of those things,
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you should disclose it to the Patent office. So let's say they see this
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activity, and if it falls within a one year
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Grace period, within one year of your filing date,
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there is an exception. Under 102,
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the prior art rejection would be one. And the exception
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is a Grace period exception of up to one year for disclosures
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that you've made. Right. You've essentially made your own prior art. But there's
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additional prior art under 102, a two that
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in this situation, if you again, have created your own art, but in this case,
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it would be a patent application. Let's say we're part of a company and
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we patent lots of things and we patent lots of iterations of
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things. So let's say that prior to our
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filing date, we had filed patent applications directed to a
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first generation product. And let's say later
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after that filing, after that original
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pen application publishes, we file another patent
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application. That's an improvement of that technology.
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And so in that case, again, examiner may find this prior publication
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patent publication inside it as a rejection under your
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later file patent application. In that
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scenario, you may be able to use a common ownership
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exception, basically showing the Patent Office that these two
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patent applications are commonly owned. Now, most generally
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speaking, that prior art
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patent publication needs to be within one year of
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your filing date. There are some probably rare, crazy rare
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circumstances where it could be greater than that. But once you get greater
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than that one year exception, now that prior art falls under 102,
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a one, and it's no longer available for the common ownership
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exceptions, this is where it gets really muddy. And so that's why essentially
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suffice it to stay in a really easy way. There's two exceptions
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under 102. A one, it's a one year Grace period.
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Under 122, it's essentially a common ownership exception,
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with most likely within a one year time frame.
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And that's the most common ways you're going to come across that. And so in
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order to disqualify that prior art
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due to a common ownership exception, you have
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to be able to prove that the
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00:16:26,492 --> 00:16:30,570
prior published patent application or issued patent and
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00:16:30,680 --> 00:16:34,842
at the time of filing and your later filed patent application at
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00:16:34,856 --> 00:16:38,718
the time of filing were under common ownership. And that could be under
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00:16:38,804 --> 00:16:42,238
an obligation to assign based on contract language
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00:16:42,274 --> 00:16:45,500
from your employment contract or could be due to an actual
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assignment that was filed in some examiners to
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request additional information. We had one case a number of years back where
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we had an assignment on file, but the assignment wasn't filed
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00:16:58,090 --> 00:17:01,614
as of the filing date. It was filed a few days
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later with the Patent Office. Just the logistics of getting inventors
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to sign things. And so we actually had to go improve from employment
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contracts that they were under an obligation to assign as
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of the filing date. So, again, that's where having both of those pieces of
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00:17:15,980 --> 00:17:19,582
proof is helpful. So that's
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kind of the thick and the thin of it, if you will,
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a lot of dots to connect to get there. But I think that's
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super helpful. Toward the end of the upcoming discussion,
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you and the panel talk about terminal disclaimers and double patenting.
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Could you briefly explain both? Yeah. I mean,
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usually double patenting leads to terminal Disclaimer filing, but not
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always. But there are two types of double patenting.
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And basically what it comes down to is the
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whole part of the patent system is that you publicly disclose your technology
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in favor of getting a monopoly, a limited monopoly from the government to
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benefit from that invention. But then it promotes the progress of the useful art.
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People can read about your invention and build upon it. Right. But you still have
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that monopoly of the base invention. But there are some
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cases where maybe through
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continuation practice in the US, or because
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00:18:18,332 --> 00:18:22,398
you're iterating on a technology that a later
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00:18:22,484 --> 00:18:26,118
filed application is very similar to
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an earlier filed application, or maybe just even claim sets arising from the
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00:18:29,924 --> 00:18:33,678
same disclosure are highly similar. Right. You could
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00:18:33,704 --> 00:18:37,690
end up with really similar claim sets or really similar fences
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00:18:37,750 --> 00:18:41,218
around your invention, but maybe slightly different. And the Patent Office doesn't
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00:18:41,254 --> 00:18:44,682
want you extending your 20 year monopoly by doing
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these different things to kind of extend that 20 year time frame.
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And so when they feel like two patents
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00:18:52,066 --> 00:18:54,510
could protect essentially the same invention,
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00:18:54,890 --> 00:18:58,390
what they give you is a double patenting invention. And sometimes it's a statutory
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00:18:58,450 --> 00:19:02,226
one, which is not good, that basically says, like, this is the same thing,
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00:19:02,408 --> 00:19:06,562
not okay. In a non statutory double patenting
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00:19:06,586 --> 00:19:09,882
situation, they say that this is an obvious variation of
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00:19:09,896 --> 00:19:13,398
this other one. And so you're basically trying to patent the same thing twice in
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00:19:13,424 --> 00:19:16,914
a slightly different way. And so maybe a slightly different scope, but still not
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00:19:16,952 --> 00:19:20,994
okay. And so what they basically say is that for
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the later filed patent,
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any patent term that extends beyond
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00:19:28,714 --> 00:19:32,526
the term of the earlier filed one needs
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to be like, you basically are saying that it doesn't matter to me,
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and you can take that away.
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00:19:39,050 --> 00:19:42,414
So let's say that the parent package was going to expire on
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00:19:42,452 --> 00:19:46,326
today and the layer file patent was going to
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expire ten days later.
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Your terminal Disclaimer basically says, I'm okay with you taking away those
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00:19:53,300 --> 00:19:56,574
ten days. If you give me these two patents, you can take away those extra
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ten days. And so that's what terminal Disclaimer essentially does.
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00:20:01,370 --> 00:20:03,654
And so it's a way of just saying to the patent up, I said,
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I want these two patents. I'm okay with them having the same patent term.
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00:20:07,246 --> 00:20:10,366
Fantastic. Thanks, Ashley. And with that, we will kick
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it over to the panel. So today I was going to talk about
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prior art and common ownership
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and all of that good stuff. Where that kind of started is I had some
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cases come up where it just seems like more and more nowadays people are sharing
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and selling stuff and doing things that they shouldn't do
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before we can help them. And so I was kind of curious
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about the common ownership piece. I think David Jack, I think you and I had
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talked about it at some point, too, and just were like, what are all the
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provisions around that? And so it was kind of an interesting little journey through
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some of the stuff I came to find.
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And so kind of started out with common ownership, but then kind of went through
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some joint research stuff and then kind of ended on some interesting
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terminal Disclaimer practice stuff that I think terminal
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Disclaimers we kind of take for granted. I think it's
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just like, you see one of those come up and you're like, oh, just follow
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terminal Disclaimer, no big deal. And there's actually some more interesting
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things that I think we don't always think about
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when we're doing that. And so that's kind of an interesting end to
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all of this. I'm going to go over obviously some of the things that we
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readily know around inventorship and ownership. But part of
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the reason I put these two up here at the beginning is that I feel
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like there's been a growing misunderstanding,
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at least from clients, of what inventorship means
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versus what ownership means. I have some clients who are
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concerned when you're talking about they
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think that because they are the owner of the company, then they start
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to be confused around why you would list people who worked on the technology
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00:21:53,948 --> 00:21:57,174
as inventors, because then they're like, well, then I don't own
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the technology. And you're like, well, no, you do.
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You can. Your company can as long as it's assigned to the company
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or you have different companies
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00:22:07,904 --> 00:22:12,200
making agreements with technology firms. And again,
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their company owns the technology because they paid a firm for it.
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But then they're not understanding that individuals at that company who
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00:22:20,024 --> 00:22:23,482
contributed substantively to their technology should be listed
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as an inventor, and it doesn't take away your ownership. And so we've had
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some really weird things lately around that, and so just kind
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of wanted to start off with that distinction.
362
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As we all know, vendorship is who conceived
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00:22:38,722 --> 00:22:42,066
of the invention and reduction to practice might not
364
00:22:42,188 --> 00:22:46,602
matter, especially if it's really just somebody
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00:22:46,676 --> 00:22:50,550
receiving technical drawings and making it. Whereas if you're
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00:22:50,930 --> 00:22:54,114
conceiving as you're reducing to practice, then of course,
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00:22:54,212 --> 00:22:57,778
then that reduction to practice counts in terms of inventorship. And there's
368
00:22:57,814 --> 00:23:01,534
obviously a lot of great area in there. And then from an ownership
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00:23:01,582 --> 00:23:05,442
perspective. So with the America Invented Act
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00:23:05,576 --> 00:23:09,042
in 2012, the original applicant is presumed to be the
371
00:23:09,056 --> 00:23:12,238
owner. So that's like the person you list on the application data sheet.
372
00:23:12,274 --> 00:23:16,410
Right. Preaia, it was presumed to be the inventors.
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00:23:16,790 --> 00:23:20,250
But then still today, you could transfer ownership
374
00:23:20,870 --> 00:23:24,690
appropriately to whatever entity that you deem appropriate
375
00:23:27,030 --> 00:23:29,998
so that all the inventors could own the technology.
376
00:23:30,084 --> 00:23:33,710
But then you can have them assign it to an entity so the entity
377
00:23:33,770 --> 00:23:36,960
owns it and can make decisions for that patent application.
378
00:23:38,370 --> 00:23:42,082
So then from a general overview for going deeper into the
379
00:23:42,096 --> 00:23:45,634
ownership side of things, obviously a brief overview or review
380
00:23:45,732 --> 00:23:48,658
of AIA 102 prior art,
381
00:23:48,804 --> 00:23:52,534
and then some of the common ownership exceptions. And if anybody has any
382
00:23:52,572 --> 00:23:55,860
experience with this or feedback, love to hear it, because it is,
383
00:23:57,030 --> 00:24:00,410
I think, just as we find with every area, lots of Gray
384
00:24:00,530 --> 00:24:04,510
area joint research exceptions, I don't have a time experience with
385
00:24:04,620 --> 00:24:08,362
a lot of joint research endeavors and then
386
00:24:08,376 --> 00:24:11,880
some interesting terminal Disclaimer practice that kind of stems from these.
387
00:24:13,290 --> 00:24:17,026
Yeah. So for AIA, prior art under 102 A,
388
00:24:17,208 --> 00:24:20,340
the first part of it, 102 A, one is all around
389
00:24:21,690 --> 00:24:25,630
publications, patented, printed publication on public use
390
00:24:25,680 --> 00:24:28,942
or sale prior to the effective filing date of the
391
00:24:28,956 --> 00:24:32,242
claimed invention, which the effective filing date now as of
392
00:24:32,256 --> 00:24:35,878
AIA is the date of the filing of your earliest application
393
00:24:36,024 --> 00:24:38,410
that claims that includes the invention.
394
00:24:39,810 --> 00:24:43,260
And so it's really anything in the world. And then
395
00:24:45,030 --> 00:24:49,018
invention was described in a patent issued or an application that
396
00:24:49,044 --> 00:24:53,162
was published or deemed published in which it names
397
00:24:53,186 --> 00:24:56,842
another inventor. And again, was effectively filed before the effective filing date of
398
00:24:56,856 --> 00:24:59,974
the claimed invention. So kind of basically, it's the whole
399
00:25:00,072 --> 00:25:02,400
on sale, in use,
400
00:25:02,970 --> 00:25:06,514
published, printed. And again,
401
00:25:06,552 --> 00:25:09,898
you can go a whole discussion around what
402
00:25:09,924 --> 00:25:12,960
is considered prior. There's been lots of discussion around that, right.
403
00:25:13,290 --> 00:25:16,522
Was it actually available to the public? Was a dissertation that sat on a
404
00:25:16,536 --> 00:25:19,918
library shelf that never got touched, never got checked out? Is that
405
00:25:19,944 --> 00:25:22,798
prior art? So obviously, a whole discussion around that that we're not going to go
406
00:25:22,824 --> 00:25:26,218
into today. So the exceptions that
407
00:25:26,244 --> 00:25:31,354
relate to these so you have for
408
00:25:31,512 --> 00:25:35,566
exceptions for this one are under
409
00:25:35,628 --> 00:25:39,322
B. One. So these are the issues when you have a
410
00:25:39,336 --> 00:25:42,758
client that within a year of their effective
411
00:25:42,794 --> 00:25:46,260
filing date, they have sold it,
412
00:25:46,830 --> 00:25:50,494
published it, or somebody got
413
00:25:50,532 --> 00:25:53,926
it from them and published it or sold it
414
00:25:53,988 --> 00:25:57,526
before the effective filing date. So basically says disclosure is made
415
00:25:57,588 --> 00:26:00,902
one year or less before the effective filing
416
00:26:00,926 --> 00:26:04,474
date of the claimed invention shall not be prior art if the disclosure was made
417
00:26:04,512 --> 00:26:07,942
by the inventor or joint inventor or obtained from
418
00:26:08,016 --> 00:26:11,726
the inventor or joint inventor or the subject matter disclosed
419
00:26:11,798 --> 00:26:15,322
had been publicly disclosed by the inventor or a joint inventor or
420
00:26:15,336 --> 00:26:18,360
another who obtained it. So again,
421
00:26:18,690 --> 00:26:21,670
it's coming directly from the inventor in some way, shape or form,
422
00:26:21,720 --> 00:26:25,380
but one year or less before the effective filing date.
423
00:26:25,890 --> 00:26:29,374
The 102 B.
424
00:26:29,412 --> 00:26:32,160
Two, which is exceptions for one,
425
00:26:34,290 --> 00:26:37,622
are that disclosures appearing in applications
426
00:26:37,646 --> 00:26:41,594
and patents shall not be prior art. The subject matter was disclosed,
427
00:26:41,642 --> 00:26:43,930
again, directly or indirectly by the inventor.
428
00:26:44,790 --> 00:26:48,370
Actually, they're very similar, as you can see, to the first one you just described.
429
00:26:48,810 --> 00:26:53,150
And then also this one brings in the common ownership.
430
00:26:53,270 --> 00:26:57,094
So the subject matter disclosed not later than the effective filing date
431
00:26:57,132 --> 00:27:00,610
of the claimed dimension was owned by the same person
432
00:27:00,660 --> 00:27:04,030
or subject to an obligation of assignment to the same person.
433
00:27:04,200 --> 00:27:07,354
So although this one does not say one
434
00:27:07,392 --> 00:27:10,822
year or less through lots of scouring talking to some other people,
435
00:27:10,896 --> 00:27:14,698
this also applies to a one year timeline. So if it's more
436
00:27:14,724 --> 00:27:18,574
than that, you're out of luck. The other
437
00:27:18,612 --> 00:27:21,670
interesting thing that I've seen personally, we haven't dealt with this a ton,
438
00:27:21,720 --> 00:27:25,342
but we do on occasion have it is that as just all
439
00:27:25,356 --> 00:27:29,338
things do with the Patent Office, it varies heavily by examiner. We have
440
00:27:29,484 --> 00:27:33,118
had some cases where you can essentially just say make
441
00:27:33,144 --> 00:27:36,862
a statement in a response that as of the effective filing date,
442
00:27:36,996 --> 00:27:40,620
these two, this prior art reference and the current application
443
00:27:41,370 --> 00:27:46,118
were coowned or subject to an assignment or obligation
444
00:27:46,154 --> 00:27:49,946
of assignment to the same company. But we've actually had an examiner
445
00:27:50,078 --> 00:27:53,638
that in one case, as you
446
00:27:53,664 --> 00:27:57,098
do sometimes you don't have all the signed paperwork at the time of filing
447
00:27:57,134 --> 00:28:00,650
just because things happen. Inventors are slow at returning documents,
448
00:28:00,710 --> 00:28:04,510
all that kind of stuff. We've had it where we file an application
449
00:28:04,680 --> 00:28:08,498
and then a few weeks later, a few days later, you filed the assignment.
450
00:28:08,654 --> 00:28:11,770
And so the assignment then is recorded a few weeks later,
451
00:28:11,820 --> 00:28:15,382
a few months later with USPTO, and we actually had an examiner at
452
00:28:15,396 --> 00:28:19,030
some point basically say look at the assignment record
453
00:28:19,080 --> 00:28:22,510
and say, well, as of the assignment record in the Uscto,
454
00:28:23,370 --> 00:28:26,758
it wasn't co owned. And so we actually had to go back to
455
00:28:26,784 --> 00:28:30,480
the client and find their
456
00:28:32,310 --> 00:28:36,058
company agreements with these inventors that actually showed that they
457
00:28:36,084 --> 00:28:39,300
indeed had an obligation to assign. And so
458
00:28:39,630 --> 00:28:43,318
I think I have some practical tips at the end, but I think that
459
00:28:43,344 --> 00:28:46,930
just further goes to the point of stressing two
460
00:28:46,980 --> 00:28:50,794
clients when at all possible to have agreements in place,
461
00:28:50,892 --> 00:28:55,322
because I think it's so easy to start working with somebody, especially in contractors
462
00:28:55,406 --> 00:28:58,562
and tech groups and things like that, before having agreements.
463
00:28:58,646 --> 00:29:01,942
But then you get into this situation where the examiner doesn't take your statement at
464
00:29:01,956 --> 00:29:05,880
face value, they want more information and you don't have it.
465
00:29:08,590 --> 00:29:12,386
Good point. Yeah. And so this kind of goes to
466
00:29:12,508 --> 00:29:15,654
some of the cases that I found around common ownership with the P tab,
467
00:29:15,702 --> 00:29:17,440
the patent trial, and the appeal board.
468
00:29:19,270 --> 00:29:22,482
So a lot of times you can make that statement of owned or subject
469
00:29:22,506 --> 00:29:25,926
to an obligation of assignment to the same person or entity
470
00:29:25,998 --> 00:29:30,314
as of the fact of filing date. But then the PTAB has at
471
00:29:30,352 --> 00:29:33,938
various points required objective evidence of
472
00:29:33,964 --> 00:29:38,130
such assignments, such as assignment documents, corporate records, employee agreements,
473
00:29:38,190 --> 00:29:41,798
contracts, and even employee pay stubs to prove that there was
474
00:29:41,824 --> 00:29:46,598
indeed common ownership. So I think, again, that just goes towards not
475
00:29:46,624 --> 00:29:50,382
playing Lucy Goosey with having contracts
476
00:29:50,406 --> 00:29:54,422
in place. I know it's easy to do, but it
477
00:29:54,436 --> 00:29:57,758
can be really important. As you'll see, too, I go through some actually here the
478
00:29:57,784 --> 00:30:01,050
next slide talks about common ownership
479
00:30:01,110 --> 00:30:04,554
and how it does not necessarily include subsidiaries.
480
00:30:04,722 --> 00:30:08,234
There was a PTAB case where
481
00:30:08,392 --> 00:30:11,154
Crops and AG owned Bayer Crop Signs,
482
00:30:11,202 --> 00:30:14,406
Envy and Biogen Idec NA,
483
00:30:14,598 --> 00:30:17,978
so basically at a parent company and then two subsidiaries. And so when
484
00:30:18,004 --> 00:30:22,194
the examiner looked at the case originally, he construed the commonly
485
00:30:22,242 --> 00:30:25,550
owned to include that the assignees were
486
00:30:25,600 --> 00:30:29,102
wholly owned subsidiaries of a common owner. So again,
487
00:30:29,176 --> 00:30:32,954
all of them kind of works together, in his
488
00:30:32,992 --> 00:30:36,950
view, had kind of ownership over the patent portfolio.
489
00:30:38,050 --> 00:30:41,570
But they were trying to argue that
490
00:30:41,620 --> 00:30:44,802
there wasn't common ownership because I don't believe they wanted they didn't
491
00:30:44,826 --> 00:30:48,054
want the terminal Disclaimer, they didn't want to lose some of that patent term.
492
00:30:48,162 --> 00:30:52,190
And so there was Lehman's patents that were rejected for double patenting over
493
00:30:52,240 --> 00:30:56,262
two Straws patents. The Lehman's patents were co assigned
494
00:30:56,406 --> 00:31:01,242
to both Bear Crop Science and the Biogenic companies, which were the subsidiaries.
495
00:31:01,386 --> 00:31:04,938
And the Straws patents were assigned to the parent company, the Bear Crop Science,
496
00:31:04,974 --> 00:31:08,754
AG. And so what the teacher had determined
497
00:31:08,802 --> 00:31:12,090
was that the Lehmans and Strash patents were not commonly
498
00:31:12,150 --> 00:31:15,710
owned because under US law,
499
00:31:15,820 --> 00:31:19,070
a parent company does not own or have
500
00:31:19,120 --> 00:31:22,958
legal title to its subsidiaries patents, even when
501
00:31:22,984 --> 00:31:26,838
the subsidiary company is incorporated in a US jurisdiction.
502
00:31:26,994 --> 00:31:30,210
So there is like, you would still have to seemingly
503
00:31:30,270 --> 00:31:33,818
assign patents or license patents between the subsidiaries to
504
00:31:33,844 --> 00:31:37,094
create some kind of co ownership relationship.
505
00:31:37,252 --> 00:31:41,680
And so in this case, they were subsidiary companies,
506
00:31:42,250 --> 00:31:45,614
and that parent company did not have right to those patents. And so for that
507
00:31:45,652 --> 00:31:49,540
reason, a requirement for
508
00:31:50,110 --> 00:31:53,090
Terminal Disclaimer or double patenting,
509
00:31:53,590 --> 00:31:57,522
basically, they would still have to build a show non obviousness
510
00:31:57,666 --> 00:32:01,346
over those patents. But there was no requirement then to have to do a
511
00:32:01,348 --> 00:32:04,706
terminal Disclaimer. And one of
512
00:32:04,708 --> 00:32:08,682
the interesting things that the PTAB has said is the legal authority and evidence
513
00:32:08,826 --> 00:32:12,400
for patent owners that Patine owners must rely on to support their position
514
00:32:13,210 --> 00:32:16,566
that an overlap in ownership does not exist between Lehman's
515
00:32:16,578 --> 00:32:20,886
and Strash Pants is more persuasive than the examiner's public policy justification.
516
00:32:21,078 --> 00:32:24,410
So the examiner was kind of saying, well, look, the whole point of this,
517
00:32:24,460 --> 00:32:28,218
he's kind of saying this was like an easy, like a loophole to skirt
518
00:32:28,374 --> 00:32:32,178
the whole issue that you don't want companies extending
519
00:32:32,214 --> 00:32:36,026
their patent term unfairly by having
520
00:32:36,088 --> 00:32:39,870
these really highly similar patent applications
521
00:32:39,930 --> 00:32:43,038
or patents issuing. So the effect of your 20 year term
522
00:32:43,074 --> 00:32:46,778
becomes a 25 year term. And they said, we understand your
523
00:32:46,804 --> 00:32:50,150
public policy justification, and we don't necessarily disagree with that.
524
00:32:50,200 --> 00:32:52,830
But the patent owner,
525
00:32:53,010 --> 00:32:56,138
basically they were right in the sense that based
526
00:32:56,164 --> 00:32:59,238
on US law, that overlap in ownership
527
00:32:59,274 --> 00:33:02,920
does not technically exist. I thought that's interesting.
528
00:33:03,370 --> 00:33:07,082
I'm sure there's also cases, and actually the next one is a
529
00:33:07,096 --> 00:33:10,670
little bit different, but kind of similar where common
530
00:33:10,720 --> 00:33:14,618
ownership does not necessarily include exclusive licenses either.
531
00:33:14,704 --> 00:33:18,642
So there was a court case with the Federal Circuit Immunex, the Sandals,
532
00:33:18,726 --> 00:33:22,098
and so the parties, the patent
533
00:33:22,134 --> 00:33:25,806
owner, Roche, an exclusive license alleged
534
00:33:25,878 --> 00:33:29,920
Infringer, and the infringer was Sandaw's. So again,
535
00:33:30,250 --> 00:33:33,470
Rosha is a patent owner, license is Immunex.
536
00:33:33,970 --> 00:33:37,514
Roche and Munich are kind of in a relationship, some kind of
537
00:33:37,552 --> 00:33:41,934
potential co common ownership, and then the infringer of Sandoz.
538
00:33:42,102 --> 00:33:46,298
And so there was an accord and satisfaction agreement between Rush and
539
00:33:46,324 --> 00:33:49,658
Immunex. And so what Santa was trying
540
00:33:49,684 --> 00:33:53,622
to argue was that, again, there was common ownership
541
00:33:53,766 --> 00:33:58,958
because of this agreement with terminal Disclaimer and
542
00:33:59,104 --> 00:34:03,210
different patent terms and so invalidity
543
00:34:03,270 --> 00:34:07,002
because of that. So Rush had but what
544
00:34:07,016 --> 00:34:10,614
the Federal Circuit had determined was that as part of their
545
00:34:10,652 --> 00:34:12,810
accord and satisfaction agreement,
546
00:34:13,550 --> 00:34:17,202
Immunex, originally as the exclusive license, had all rights to
547
00:34:17,216 --> 00:34:20,742
sue. However, if Immunex had decided at any one point in
548
00:34:20,756 --> 00:34:24,726
time to not sue, then that interest
549
00:34:24,848 --> 00:34:28,662
fell to Roche, and Immunex could not rectify the
550
00:34:28,676 --> 00:34:31,350
infringement or frustrate Roche's efforts in that regard.
551
00:34:31,400 --> 00:34:34,926
So once the rights to sue fell to Roche, there was nothing in
552
00:34:34,928 --> 00:34:38,274
Munich could do to change it, right? Because they decided not
553
00:34:38,312 --> 00:34:42,114
to, and Roche decided to do it. So the National Circuit said because that
554
00:34:42,152 --> 00:34:46,158
Roche could still retain their rights in the event that Munich decided not to
555
00:34:46,184 --> 00:34:49,458
act, that they still had
556
00:34:49,604 --> 00:34:56,482
some control over the patents basically
557
00:34:56,556 --> 00:35:00,914
this differentiated from seed play versus Bebop,
558
00:35:01,022 --> 00:35:04,418
where the licenser retained right to sue
559
00:35:04,574 --> 00:35:08,738
basically didn't really exist because the licensee
560
00:35:08,774 --> 00:35:12,074
could nullify their right by granting the alleged a royalty
561
00:35:12,122 --> 00:35:15,394
free sub license. So it was one of those
562
00:35:15,432 --> 00:35:19,034
things where because Roche could have the right to sue,
563
00:35:19,202 --> 00:35:22,774
they still fully owned it. So there was no common ownership because
564
00:35:22,812 --> 00:35:26,714
Roche completely still had ownership of the pens. They just had this license
565
00:35:26,762 --> 00:35:30,074
with them, but they still had full control in the event that in Munich
566
00:35:30,122 --> 00:35:32,820
decided not to pursue it.
567
00:35:33,510 --> 00:35:36,442
And so again, it just really comes down to the devil in details about how
568
00:35:36,456 --> 00:35:40,310
these agreements are structured. If your licensee
569
00:35:40,370 --> 00:35:44,134
has full control and even if they decide not
570
00:35:44,172 --> 00:35:47,362
to take control, you still have no rights to do anything about it
571
00:35:47,376 --> 00:35:51,214
or as a licenser decide to control. But they can
572
00:35:51,252 --> 00:35:55,378
frustrate that by doing some kind of license, then you
573
00:35:55,404 --> 00:35:58,858
really don't own the patent anymore. I think
574
00:35:58,884 --> 00:36:02,866
that was kind of their takeaway. And so I think it's just again,
575
00:36:02,928 --> 00:36:06,778
it's not as cut and dried. I mean, I think most clients that we work
576
00:36:06,804 --> 00:36:10,238
with are pretty cut and dried. Right. It's one company that's having a license,
577
00:36:10,274 --> 00:36:14,434
but it can get sticky. I know we even have a client that has
578
00:36:14,592 --> 00:36:18,118
a US company and then a Belgian company,
579
00:36:18,204 --> 00:36:21,478
and we assign most of their patents to their Belgian company because they
580
00:36:21,504 --> 00:36:25,190
get tax benefits in Belgium.
581
00:36:25,370 --> 00:36:29,350
But then that creates a problem now because if
582
00:36:29,460 --> 00:36:33,178
some of them are retained by the US company and
583
00:36:33,204 --> 00:36:37,058
they have some with their Belgian company, you then have to be able to prove
584
00:36:37,154 --> 00:36:40,150
common ownership between those entities.
585
00:36:41,010 --> 00:36:45,490
If you were to want to overcome some kind of obviousness type double patenting
586
00:36:48,970 --> 00:36:50,750
kind of screwy.
587
00:36:53,090 --> 00:36:56,890
And then so the other common ownership is under joint research agreements.
588
00:36:57,070 --> 00:37:01,062
So the subject matter was developed in joint research agreement and
589
00:37:01,076 --> 00:37:04,594
the claimed invention wasn't made as a result of the agreement.
590
00:37:04,762 --> 00:37:08,590
And the application for patent discloses the names of the parties
591
00:37:08,650 --> 00:37:12,394
to the joint research agreement. So that can also be a common ownership.
592
00:37:12,562 --> 00:37:15,790
And so what they have regarded as joint research agreements,
593
00:37:15,850 --> 00:37:20,050
obviously a written contract, some kind of grant, some kind of cooperative agreement,
594
00:37:20,230 --> 00:37:23,838
and obviously it can be in the experimental field, developmental research
595
00:37:23,924 --> 00:37:27,114
work. And I think some of the interesting things
596
00:37:27,152 --> 00:37:30,690
that come out of this and now it's more complicated. Right. Because it's not
597
00:37:30,740 --> 00:37:34,534
just one company or a company with subsidiaries
598
00:37:34,642 --> 00:37:38,386
or a company with license fees. Now you have like two parties
599
00:37:38,458 --> 00:37:42,906
or more who effectively own it. Right. That has some parts of
600
00:37:43,028 --> 00:37:47,002
the pie who
601
00:37:47,136 --> 00:37:51,406
potentially could be at odds with one another at any given point. And so
602
00:37:51,528 --> 00:37:55,586
from a terminal Disclaimer practice, again, to overcome that obviousness
603
00:37:55,658 --> 00:37:58,966
type double patenting and
604
00:37:58,968 --> 00:38:02,770
you do a terminal Disclaimer, you are basically waiving the right to
605
00:38:02,820 --> 00:38:06,458
separately enforce any patent granted
606
00:38:06,494 --> 00:38:10,318
on that application. You have the disclaimed patent and
607
00:38:10,344 --> 00:38:13,982
the Disclaimer patent. And if those are ever sold
608
00:38:14,126 --> 00:38:17,278
separately, you can't enforce them, something that gets really
609
00:38:17,304 --> 00:38:21,502
sticky from a joint research perspective, because if company A all
610
00:38:21,516 --> 00:38:25,634
of a sudden decides that they're going to pursue more heavily
611
00:38:25,802 --> 00:38:29,206
Company X from this joint research,
612
00:38:29,388 --> 00:38:34,006
and Company B decides that they're going to more heavily pursue technology
613
00:38:34,128 --> 00:38:37,920
Y from the joint research, and they kind of go their separate ways,
614
00:38:38,550 --> 00:38:42,302
and those were terminally displayed to one another. Now you're kind of breaking
615
00:38:42,326 --> 00:38:46,226
that link between them, and you might not be able to enforce those patents
616
00:38:46,418 --> 00:38:50,350
at some later date. And so under the Create
617
00:38:50,400 --> 00:38:53,866
Act of 2004, two patent applications of different
618
00:38:53,928 --> 00:38:57,902
ownership are considered commonly owned. If the invention issue was made pursuant
619
00:38:57,926 --> 00:39:02,054
to a joint research agreement, the invention was within the scope of the agreement
620
00:39:02,222 --> 00:39:05,242
and the parties of the agreement of the applicants of the application. So,
621
00:39:05,256 --> 00:39:09,660
again, this goes towards having really good agreements in place of what
622
00:39:10,110 --> 00:39:13,402
each company brought to the table, what each
623
00:39:13,476 --> 00:39:17,314
company created as a part of this
624
00:39:17,472 --> 00:39:21,398
development. Because otherwise, if that's not clearly,
625
00:39:21,494 --> 00:39:25,226
clearly spelled out, I think it could have really problematic,
626
00:39:25,358 --> 00:39:28,802
you know, what happens with their existing portfolio
627
00:39:28,946 --> 00:39:31,800
that they bring to the table versus something that they share together.
628
00:39:33,750 --> 00:39:37,582
And so from kind of going back to
629
00:39:37,596 --> 00:39:40,774
this whole terminal Disclaimer, it's been
630
00:39:40,812 --> 00:39:44,230
kind of a crazy route through some of this stuff, kind of coming across different
631
00:39:44,280 --> 00:39:47,410
things. But some of the terminal Disclaimer practice that
632
00:39:47,460 --> 00:39:51,022
kind of came across, which is that the one way test,
633
00:39:51,096 --> 00:39:54,598
which I think is what most examiners do is very much the default is whether
634
00:39:54,624 --> 00:39:58,826
the asserted patent is obvious over or anticipated
635
00:39:58,898 --> 00:40:02,350
by an earlier issued patent. I think that's
636
00:40:03,210 --> 00:40:06,598
when you're prosecuting, that's kind of commonly what you see. Right. But then
637
00:40:06,624 --> 00:40:10,558
there is a rarer two way test where for
638
00:40:10,584 --> 00:40:15,480
whatever reason, a second filed patent application issues before
639
00:40:16,350 --> 00:40:19,546
an earlier filed patent application.
640
00:40:19,668 --> 00:40:22,922
So they're kind of even though one was filed earlier, for whatever reason it ends
641
00:40:22,946 --> 00:40:26,698
up issuing later. This has
642
00:40:26,724 --> 00:40:30,022
to be because the PTO is responsible for the delay in the issuance of the
643
00:40:30,036 --> 00:40:33,574
first filed application. And so in those cases, there may be some kind of
644
00:40:33,672 --> 00:40:36,874
more interesting terminal Disclaimer practice because they
645
00:40:36,912 --> 00:40:40,860
still may be obvious over one another, but one technically has an earlier date.
646
00:40:41,190 --> 00:40:44,890
Then how do you rectify that? Because you can't.
647
00:40:45,390 --> 00:40:48,662
I'd have to do more homework. Honestly, on the two way test, I think it's
648
00:40:48,686 --> 00:40:51,838
quite rare, but I don't know how they
649
00:40:51,864 --> 00:40:55,306
rectified in that situation because you have one that
650
00:40:55,368 --> 00:40:59,146
issues and you can't cut
651
00:40:59,208 --> 00:41:02,218
short. I guess you could cut short that one.
652
00:41:02,364 --> 00:41:05,458
In theory, you would cut short that one relative to the other one if they
653
00:41:05,484 --> 00:41:08,714
were coowned then part of this joint research agreement.
654
00:41:08,882 --> 00:41:11,962
But then the examiner would have to be aware of this other one, assuming that
655
00:41:11,976 --> 00:41:16,102
that one was published. Right. So I think it's a weird chicken or egg thing.
656
00:41:16,176 --> 00:41:20,438
I don't know. And if the PTO is responsible
657
00:41:20,474 --> 00:41:23,494
for the delay, there could be a patent term adjustment, right,
658
00:41:23,592 --> 00:41:24,240
right.
659
00:41:27,250 --> 00:41:30,650
Yeah. But then there's also the
660
00:41:30,700 --> 00:41:34,394
safe harbor, which I guess it makes sense. I just never really thought about
661
00:41:34,432 --> 00:41:38,238
it. But when you have an obvious type double
662
00:41:38,274 --> 00:41:42,134
patenting rejection, that this
663
00:41:42,172 --> 00:41:45,602
wouldn't apply for divisional applications. Right. Because a divisional I mean,
664
00:41:45,616 --> 00:41:48,482
in theory, it's kind of a different invention anyway. So the office has already kind
665
00:41:48,496 --> 00:41:52,022
of said these are different, and because they're different, pursue it
666
00:41:52,036 --> 00:41:55,526
in a separate application. But if you ever got
667
00:41:55,648 --> 00:41:58,730
an obvious type double patenting rejection individual,
668
00:41:58,900 --> 00:42:02,454
it's improper. There's a safe harbor provision
669
00:42:02,502 --> 00:42:05,882
around terminal disclaimers with that because probably because the
670
00:42:05,896 --> 00:42:08,922
patent office has already said this is different, pursue it separately,
671
00:42:09,066 --> 00:42:13,134
and then for an examiner to come back and say they're obvious variations
672
00:42:13,182 --> 00:42:16,310
of one another would kind of be against what they've already stated, I suppose.
673
00:42:18,010 --> 00:42:21,362
But yeah, I feel like practitioners are
674
00:42:21,376 --> 00:42:25,418
getting smarter and smarter around avoiding restriction requirements in
675
00:42:25,444 --> 00:42:28,922
general. And so I feel like I can count the number of times I've done
676
00:42:28,936 --> 00:42:32,798
a divisional, probably because I feel like you try to avoid the
677
00:42:32,824 --> 00:42:36,918
issue altogether. But anyways,
678
00:42:37,074 --> 00:42:39,878
so, yeah, a lot of weird things. I guess kind of the things that came
679
00:42:39,904 --> 00:42:43,540
up in terms of practice is that
680
00:42:44,230 --> 00:42:47,618
when at all possible, ensuring the assignment is filed the same day
681
00:42:47,644 --> 00:42:51,878
as the application. I know that's really difficult sometimes, but I think what
682
00:42:51,904 --> 00:42:54,998
we had learned with one of our clients was just any way that you can
683
00:42:55,024 --> 00:42:58,514
button up things to make it lock tight in terms
684
00:42:58,552 --> 00:43:02,534
of when things were owned and not
685
00:43:02,572 --> 00:43:06,446
having to delve into contracts and agreements that
686
00:43:06,448 --> 00:43:09,686
you have to look through and redact or put on file and stuff,
687
00:43:09,808 --> 00:43:13,754
the better. And then we've actually had this come up for
688
00:43:13,792 --> 00:43:16,610
multiple reasons lately. I don't know what it is,
689
00:43:16,660 --> 00:43:20,190
but verifying that clients have agreements
690
00:43:20,250 --> 00:43:24,414
in place around who owns the iPad.
691
00:43:24,522 --> 00:43:27,942
Obviously, this poses problems only just from an ownership perspective,
692
00:43:28,026 --> 00:43:31,600
from how do you assign it when you're doing these
693
00:43:32,470 --> 00:43:36,462
activities? But then longer term, if there's ever a common ownership
694
00:43:36,606 --> 00:43:40,082
play to be made, you have to know who should have
695
00:43:40,096 --> 00:43:43,514
owned it at that time as well. We've had clients that have entered into
696
00:43:43,552 --> 00:43:47,978
development agreements with firms that they're paying with
697
00:43:48,004 --> 00:43:51,926
the internal understanding that because they paid
698
00:43:51,988 --> 00:43:55,682
a firm to develop the technology for them, that they own it. But then
699
00:43:55,696 --> 00:43:59,260
you have the firm come back and say, well, look, we use our base technology
700
00:44:00,310 --> 00:44:03,602
to develop this for you. And because
701
00:44:03,676 --> 00:44:07,658
of that, we own it, or we own a portion of it, and that
702
00:44:07,684 --> 00:44:11,210
could have all been sold had they had an agreement in place
703
00:44:11,260 --> 00:44:14,882
that said, this is your base tech. This is what we ask you to
704
00:44:14,896 --> 00:44:17,918
do. This is what we develop together. And because we paid you for it,
705
00:44:17,944 --> 00:44:22,130
we own it. It was our idea. You just reduced it to practice or whatever
706
00:44:22,180 --> 00:44:25,840
the case may be. So some sticky things
707
00:44:27,130 --> 00:44:30,374
and this doesn't come up crazy often, but I think it's something
708
00:44:30,472 --> 00:44:34,022
when you're starting to do reports for clients around
709
00:44:34,096 --> 00:44:37,430
diligence or licensing or things like that,
710
00:44:37,600 --> 00:44:41,320
make sure you clearly label when
711
00:44:42,670 --> 00:44:46,578
patents have been terminally disclaimed and which are the Disclaimer
712
00:44:46,614 --> 00:44:49,898
patents, because there's an individual that I've been
713
00:44:49,924 --> 00:44:53,874
working with for another client. And he said it's a really interesting negotiation
714
00:44:53,982 --> 00:44:57,758
piece. He said, you'll see, that really savvy sellers and
715
00:44:57,784 --> 00:45:01,218
buyers that if for whatever reason the seller didn't disclose
716
00:45:01,254 --> 00:45:05,426
the terminal disclaimers or forgot to or didn't realize it, whatever the case may be,
717
00:45:05,608 --> 00:45:08,978
the buyer who knows these terminal disclaimers will
718
00:45:09,004 --> 00:45:13,058
kind of keep it to themselves until like the 9th hour and
719
00:45:13,084 --> 00:45:16,362
then throw them on the table and be like there's terminal
720
00:45:16,386 --> 00:45:19,646
disclaimers. And if some of
721
00:45:19,648 --> 00:45:23,702
the Disclaimer patents are in a different family now,
722
00:45:23,776 --> 00:45:27,618
for that buyer to be able to enforce the patents that they're purchasing,
723
00:45:27,774 --> 00:45:31,254
they also need a license or something, or you'll be able to purchase
724
00:45:31,302 --> 00:45:35,018
those other patents. And now because it's the 9th hour, they can get them
725
00:45:35,104 --> 00:45:38,318
at dirt cheap because the clocks run out right
726
00:45:38,344 --> 00:45:41,474
on the agreement or everybody's kind of over it.
727
00:45:41,512 --> 00:45:45,602
So I think the more that we remember
728
00:45:45,796 --> 00:45:48,998
or include those details around terminal disclaimers, I think
729
00:45:49,024 --> 00:45:52,566
it's better for everybody. It allows
730
00:45:52,698 --> 00:45:56,090
to hopefully get more maximum value for their portfolios.
731
00:45:56,710 --> 00:46:00,758
And this is an interesting thing that I had. Again, I think at
732
00:46:00,784 --> 00:46:04,646
least I've always kind of felt in some regard. I mean, I don't take it
733
00:46:04,768 --> 00:46:08,462
in a cavalier sense, but a lot of times these
734
00:46:08,476 --> 00:46:11,598
terminal disclaimers come up for me, at least in continuations,
735
00:46:11,634 --> 00:46:15,038
right where they're already essentially have the same patent term because they're all stemming from
736
00:46:15,064 --> 00:46:18,842
the same priority date. So PPA, the patent term adjustment may
737
00:46:18,856 --> 00:46:21,638
play into that a little bit, but you're looking at like 70 days difference,
738
00:46:21,724 --> 00:46:26,142
90 days or whatever. But in cases where it's
739
00:46:26,166 --> 00:46:29,514
more substantial than that, some practice
740
00:46:29,562 --> 00:46:33,110
tips that I read were really making sure that every
741
00:46:33,160 --> 00:46:37,098
single claim was rejected for an obviousness
742
00:46:37,134 --> 00:46:40,614
type double patenting. And if some weren't,
743
00:46:40,782 --> 00:46:44,762
consider letting those pass to issue and then
744
00:46:44,896 --> 00:46:48,470
consider going back at another, but at the Apple for the other ones
745
00:46:48,520 --> 00:46:53,774
to try to argue that they're distinct or
746
00:46:53,812 --> 00:46:57,102
change them a little bit to make them more distinct so that you can avoid
747
00:46:57,126 --> 00:47:00,882
the terminal Disclaimer, maybe have different claims
748
00:47:00,906 --> 00:47:04,190
of varying. I just thought that was interesting. Again,
749
00:47:04,360 --> 00:47:07,850
I think a lot of practitioners, myself included, until I thought more about
750
00:47:07,900 --> 00:47:11,486
this was just a terminal Disclaimer. It's only 90
751
00:47:11,548 --> 00:47:15,278
days. Like what's the big deal? But as those terms start
752
00:47:15,304 --> 00:47:19,418
to differ more drastically, thinking about it more and not
753
00:47:19,444 --> 00:47:22,778
being afraid to make some arguments back or
754
00:47:22,804 --> 00:47:26,262
letting some of them pass the issue anyways,
755
00:47:26,286 --> 00:47:28,562
I know that's kind of all over the place. A lot of different kind of
756
00:47:28,576 --> 00:47:32,378
topics but kind of all related. So if
757
00:47:32,404 --> 00:47:36,134
anybody has any thoughts or personal experiences, I have a question. I mean,
758
00:47:36,172 --> 00:47:39,050
thanks for this. This actually, it's a great topic. I think it's really interesting.
759
00:47:39,160 --> 00:47:42,398
And my question is you talked
760
00:47:42,424 --> 00:47:46,254
about 102 commonly
761
00:47:46,302 --> 00:47:49,538
owned issues under a 102 rejection. Is there any
762
00:47:49,564 --> 00:47:52,480
difference under a 103? No, you're right.
763
00:47:52,810 --> 00:47:55,814
I forgot about that part. Yeah, I didn't include that. But yeah.
764
00:47:55,852 --> 00:47:59,490
So it does apply to 103 as well. But the art cited
765
00:47:59,550 --> 00:48:03,770
as part of the 103 has to be under
766
00:48:03,880 --> 00:48:07,002
one of those 102 sections, which it normally would be, because that's the only sections
767
00:48:07,026 --> 00:48:11,094
of 102. Now with AIA, whereas I think pre AI,
768
00:48:11,202 --> 00:48:15,350
it got a little more interesting. So there's only certain sections
769
00:48:15,790 --> 00:48:19,434
of prior art that would apply to the common ownership.
770
00:48:19,542 --> 00:48:23,680
Okay. But now with obviousness as well, it does apply.
771
00:48:25,210 --> 00:48:29,126
But you still have common ownership exception even for 103
772
00:48:29,188 --> 00:48:33,546
only works within one year Grace period. That went
773
00:48:33,608 --> 00:48:36,858
round because I read so much about this,
774
00:48:37,004 --> 00:48:41,874
and it was like blowing my mind because some
775
00:48:41,972 --> 00:48:45,462
things I read said that if
776
00:48:45,656 --> 00:48:49,918
it's more than one year, stop now, there is no exception.
777
00:48:50,074 --> 00:48:54,210
But then when you really read the statute,
778
00:48:55,190 --> 00:48:58,086
the first part is 102,
779
00:48:58,088 --> 00:49:02,130
a one, and then these are all the exceptions for
780
00:49:02,240 --> 00:49:05,970
under 102. A one exceptions are the 102 B,
781
00:49:06,020 --> 00:49:09,202
one exceptions, which says one year or less, blah,
782
00:49:09,226 --> 00:49:12,978
blah, blah, blah, blah. And then you have 102 a two, and all the
783
00:49:13,004 --> 00:49:16,446
102 B, two exceptions apply for 102 a two,
784
00:49:16,508 --> 00:49:20,590
and there is no statement of a one year period.
785
00:49:20,770 --> 00:49:24,642
And so in my mind, I'm like there's no statement of
786
00:49:24,656 --> 00:49:27,990
a one year period. It seems like if it were longer than that,
787
00:49:28,040 --> 00:49:31,002
it should still apply. I mean, you might be opening yourself up to some kind
788
00:49:31,016 --> 00:49:35,194
of terminal Disclaimer, losing a lot of patent term. But then I was conversing
789
00:49:35,242 --> 00:49:38,682
with an attorney that works at a
790
00:49:38,756 --> 00:49:43,266
firm that we do some shared work with because
791
00:49:43,328 --> 00:49:46,542
a case came up, Ironically, where it had been more than a year, where a
792
00:49:46,556 --> 00:49:50,098
client had a published application and then one that we were filing
793
00:49:50,134 --> 00:49:53,262
or was like an office action. Right. So they were separated by more than a
794
00:49:53,276 --> 00:49:57,018
year. And I said, could this apply in this situation?
795
00:49:57,164 --> 00:50:00,726
And he said that he had delved into it recently a ton
796
00:50:00,788 --> 00:50:04,700
for a separate case and said that the one year applies for everything
797
00:50:06,470 --> 00:50:09,510
based on the MPEP. It seems like it doesn't.
798
00:50:09,830 --> 00:50:13,626
But seemingly how people are interpreting it is that I
799
00:50:13,628 --> 00:50:18,094
don't know. I'd be curious to almost press my luck a little bit examiner
800
00:50:18,202 --> 00:50:22,282
at some point and just be like greater
801
00:50:22,306 --> 00:50:27,270
than one year the supply anyway,
802
00:50:27,380 --> 00:50:30,440
that's my understanding. All one year or less.
803
00:50:31,370 --> 00:50:34,882
So I guess it does make sense. But in the sense of the terminal
804
00:50:34,906 --> 00:50:38,122
Disclaimer, I feel like you should be able to commonly own thing if you're willing
805
00:50:38,146 --> 00:50:42,018
to disclaim a whole bunch of patent terms like what do they care at
806
00:50:42,044 --> 00:50:44,418
that point? You know what I mean? If you had things that were separated by
807
00:50:44,444 --> 00:50:48,378
three years, for example, a published application and then
808
00:50:48,404 --> 00:50:52,170
something that was earlier issued or whatever, and they were separated by three
809
00:50:52,220 --> 00:50:55,400
years, if you're willing to terminally disclaim those,
810
00:50:56,030 --> 00:50:58,580
what does the patent office care that it were three years?
811
00:51:00,110 --> 00:51:01,280
Maybe I'm wrong.
812
00:51:04,290 --> 00:51:07,838
I thought there was no Grace period for a terminal
813
00:51:07,874 --> 00:51:11,302
Disclaimer. If it's a double patenting rejection. Right. But I was mean, I guess more
814
00:51:11,316 --> 00:51:14,662
common ownership if it were commonly owned, why would
815
00:51:14,676 --> 00:51:17,590
they care if you were willing to disclaim?
816
00:51:21,010 --> 00:51:24,470
Maybe I'm missing something, but I think at least in some scenarios,
817
00:51:24,850 --> 00:51:28,302
if the claims are co expensive, then it's
818
00:51:28,326 --> 00:51:31,698
a double patenting rejection. But if you have this priorit reference that doesn't claim
819
00:51:31,734 --> 00:51:34,818
it but just discloses it now, you can't
820
00:51:34,854 --> 00:51:37,878
terminally just claim it anymore because you haven't.
821
00:51:38,034 --> 00:51:41,980
Right. Equivalent claims. That's true.
822
00:51:42,550 --> 00:51:45,582
Yeah, that's true. That's fair. Yeah. Because it's not the claims
823
00:51:45,606 --> 00:51:48,998
at that point. It's just the disclosure of it.
824
00:51:49,144 --> 00:51:49,840
Yeah.
825
00:51:52,250 --> 00:51:55,482
Thank you for all your research on this. It's really helpful because this has
826
00:51:55,496 --> 00:51:58,302
come up for me a couple of times and people I work with are like,
827
00:51:58,436 --> 00:52:02,338
no, we can't. It's been more than a year co owned.
828
00:52:02,434 --> 00:52:06,262
But I have these random tidbits from other practitioners
829
00:52:06,346 --> 00:52:09,222
and from the bar exam,
830
00:52:09,296 --> 00:52:13,390
whatever that it's like some things are prior art for novelty,
831
00:52:13,450 --> 00:52:17,082
but not for obviousness. And I thought
832
00:52:17,156 --> 00:52:20,982
it was this common ownership thing because I remember
833
00:52:21,056 --> 00:52:24,750
working with other practitioners years ago and this is my
834
00:52:24,800 --> 00:52:28,590
issue and I need to go back and look probably more too, but that
835
00:52:28,760 --> 00:52:32,626
something was about to publish and we were scrambling.
836
00:52:32,698 --> 00:52:36,558
Not scrambling whatever. We were working to get
837
00:52:36,644 --> 00:52:39,882
something on file because it was going to be
838
00:52:40,016 --> 00:52:44,070
prior art for novelty, but not for obviousness. So we could still do,
839
00:52:44,180 --> 00:52:47,670
et cetera. That was part of the whole strategy. But now I'm kind of
840
00:52:47,780 --> 00:52:53,014
trying to figure out what that situation was because this was a very experienced
841
00:52:53,062 --> 00:52:56,446
attorney who was telling me this or was setting
842
00:52:56,458 --> 00:52:59,742
the strategy, but I can't remember what
843
00:52:59,756 --> 00:53:03,282
the situation was. Yeah. I took a look. Now, again, more I read
844
00:53:03,356 --> 00:53:07,098
countless blogs, but yeah, I've seen it come up like
845
00:53:07,124 --> 00:53:10,760
we had a client where I always tell clients it's like
846
00:53:11,270 --> 00:53:15,150
a good issue in some regard. Right. When your
847
00:53:15,200 --> 00:53:19,194
own art is the only art being
848
00:53:19,232 --> 00:53:22,818
cited. Right. Because that means that you're kind of occupying your own space.
849
00:53:22,904 --> 00:53:26,094
Right. That like nobody's moving in there. Then also, in the other sense,
850
00:53:26,132 --> 00:53:29,994
it creates a lot of problems because you can't argue against yourself, at least
851
00:53:30,032 --> 00:53:32,190
you shouldn't a whole bunch.
852
00:53:33,950 --> 00:53:38,310
But we've had these situations where the only rejection we get is 103
853
00:53:38,420 --> 00:53:41,782
with our clients prior stuff. And they're
854
00:53:41,806 --> 00:53:45,018
definitely coowned. Usually examiners are pretty on
855
00:53:45,044 --> 00:53:47,720
top of this stuff because usually in the offsettings will say,
856
00:53:48,110 --> 00:53:52,170
I do note that it is commonly owned hint hint.
857
00:53:53,750 --> 00:53:56,874
And I haven't seen it in those cases where it you know,
858
00:53:56,912 --> 00:53:59,240
we did have the case where it was one year or less.
859
00:54:00,530 --> 00:54:04,042
The examiner definitely gave, like the hint hints. I noticed that some of the inventors
860
00:54:04,066 --> 00:54:06,500
are the same. If you could prove common ownership or whatever.
861
00:54:08,970 --> 00:54:12,698
This is more like, I guess, disclaiming it just because they were the inventors
862
00:54:12,734 --> 00:54:17,766
that publicly. This was I guess that was that case. But I'm
863
00:54:17,778 --> 00:54:21,146
going to go back to and I'll send something out your email if
864
00:54:21,148 --> 00:54:24,462
you find something, David, because now I want to revisit in my throwing
865
00:54:24,486 --> 00:54:28,480
this together. I kind of forgot about the obviousness angle. And if maybe that
866
00:54:28,930 --> 00:54:32,090
has more latitude in terms of time frame,
867
00:54:34,390 --> 00:54:37,926
because maybe that's where the latitude comes from. But again, I was really surprised.
868
00:54:37,998 --> 00:54:40,600
Again, if you go back up here and look at this,
869
00:54:43,550 --> 00:54:46,890
this is the exact MPE language
870
00:54:47,750 --> 00:54:51,246
for exceptions under, and there is
871
00:54:51,308 --> 00:54:54,594
nothing around one year. If you go to the top
872
00:54:54,632 --> 00:54:58,270
one, it says one year or less. But that's not applying
873
00:54:58,330 --> 00:55:02,578
to all of the it
874
00:55:02,604 --> 00:55:06,120
doesn't apply to two because one is separate from two. I don't know.
875
00:55:06,450 --> 00:55:09,874
I had really convinced myself during
876
00:55:09,912 --> 00:55:13,178
this research that there was no one year. But then after talking to Albert,
877
00:55:13,214 --> 00:55:16,114
I was like, okay, maybe I'm missing something.
878
00:55:16,212 --> 00:55:20,002
So I don't know, I feel like I
879
00:55:20,016 --> 00:55:23,702
need to test the waters or something, like just throw out a common ownership
880
00:55:23,786 --> 00:55:27,106
statement at some point and be like, what do
881
00:55:27,108 --> 00:55:30,780
you think, examiner? Let's discuss this because,
882
00:55:31,290 --> 00:55:35,978
I don't know left
883
00:55:36,004 --> 00:55:38,834
you with we solved all the world problems, and now we can't solve a problem
884
00:55:38,872 --> 00:55:42,638
in patent law. Who knew that was
885
00:55:42,664 --> 00:55:43,780
the toughest problem?
886
00:55:48,950 --> 00:55:52,520
So I'll keep my diving into this a little bit because now it's puzzling me.
887
00:55:53,390 --> 00:55:56,970
Well, thank you for taking on such an arcane.
888
00:55:57,770 --> 00:56:00,020
I hope it was clear. I felt it like it was.
889
00:56:02,330 --> 00:56:04,940
I've been trying to avoid this for a long time.
890
00:56:05,930 --> 00:56:11,226
Well, we still didn't solve it fully. Now I
891
00:56:11,228 --> 00:56:14,960
don't know. More questions to answer. I know
892
00:56:15,470 --> 00:56:17,120
what keeps you up at night, right?
893
00:56:19,310 --> 00:56:22,918
Super helpful. Thank you, Ashley. Yeah. Thank you, Ashley.
894
00:56:22,954 --> 00:56:26,180
Yeah, thank you. No worries. I learned a lot.
895
00:56:29,790 --> 00:56:33,960
It's easy in corporate, right? Corporate already has all this stuff set up,
896
00:56:34,470 --> 00:56:37,942
right? Yeah. A small guy is going to
897
00:56:37,956 --> 00:56:39,010
figure it out ourselves.
898
00:56:40,950 --> 00:56:44,362
All right, everybody. Well, have a good rest of your week, and we'll talk to
899
00:56:44,376 --> 00:56:46,680
you later. Thank you, Ashley. Thanks.
900
00:56:47,250 --> 00:56:50,606
Bye bye. All right, so we're
901
00:56:50,618 --> 00:56:53,698
going to insert just a little addendum here. At the end, the group ran into
902
00:56:53,724 --> 00:56:57,610
a question around whether or not the one year time frame or Grace period
903
00:56:57,930 --> 00:57:01,282
applies to the common ownership exception. We hit on this
904
00:57:01,296 --> 00:57:03,442
a little bit in the intro. We just wanted to make it really clear in
905
00:57:03,456 --> 00:57:07,034
case that got lost a little bit. So we researched this issue further
906
00:57:07,082 --> 00:57:10,354
post recording, actually, what did we determine kind of going back
907
00:57:10,392 --> 00:57:13,750
to section 102 of US code. Right. That basically
908
00:57:13,800 --> 00:57:17,494
codifies novelty, the parameters of novelty in the US
909
00:57:17,592 --> 00:57:21,182
in post America and Ben's at there's
910
00:57:21,206 --> 00:57:24,070
basically 102 a one and 102 a two.
911
00:57:24,120 --> 00:57:29,342
And these two sections enumerate
912
00:57:29,366 --> 00:57:33,314
the kinds of prior art that fall into these two categories.
913
00:57:33,422 --> 00:57:37,226
Okay. And with that, there are exceptions
914
00:57:37,358 --> 00:57:40,762
to the prior art for each of these categories. So for
915
00:57:40,776 --> 00:57:44,590
102 a one, there is a Grace period exception of up to one year.
916
00:57:44,640 --> 00:57:48,322
If you do a trade show, some kind
917
00:57:48,336 --> 00:57:52,102
of literature publication, if it's within one year, you can say it
918
00:57:52,116 --> 00:57:55,714
doesn't count because I'm the inventor. I publish it. My bad.
919
00:57:55,872 --> 00:57:59,558
It doesn't count for 102 a two. There is technically
920
00:57:59,654 --> 00:58:03,746
no time limitation. Okay. If you look at the MPEP,
921
00:58:03,938 --> 00:58:07,778
you look at the US Code, there is technically no time limitation
922
00:58:07,874 --> 00:58:11,422
to exceptions. Under is a common
923
00:58:11,496 --> 00:58:15,410
ownership exception, though, right. And that common ownership exception
924
00:58:15,470 --> 00:58:19,354
says that if the prior art document and the
925
00:58:19,392 --> 00:58:22,574
instant patent application are commonly owned,
926
00:58:22,622 --> 00:58:26,038
as at the time of filing, then that prior art
927
00:58:26,064 --> 00:58:29,170
under 102 a two doesn't count. Right.
928
00:58:29,340 --> 00:58:32,482
However, there are going to
929
00:58:32,496 --> 00:58:36,106
be scenarios where art under 102 a
930
00:58:36,108 --> 00:58:40,140
two would also be considered art under 102 a one.
931
00:58:40,650 --> 00:58:43,582
And that's going to be actually the vast majority of the cases. Right. If you
932
00:58:43,596 --> 00:58:46,742
look at what kind of prior artists under each of those categories, the vast majority
933
00:58:46,766 --> 00:58:49,066
of times, if you get a 102 a two, you're going to get a 102
934
00:58:49,068 --> 00:58:52,260
a one. So in that case,
935
00:58:53,430 --> 00:58:56,650
then it has to be within that one year time frame.
936
00:58:57,090 --> 00:59:00,698
Even your common ownership exception has to be within that one year time frame.
937
00:59:00,794 --> 00:59:04,942
There's going to be a really rare sliver of prior art that
938
00:59:05,136 --> 00:59:08,280
is beyond one year and only under.
939
00:59:09,630 --> 00:59:13,526
And in that scenario, the common ownership exception has no time limit.
940
00:59:13,598 --> 00:59:17,086
Right. However, long ago however, like I said, that's going
941
00:59:17,088 --> 00:59:20,434
to be the super rare exception. And I've talked
942
00:59:20,472 --> 00:59:24,262
to tons of practitioners, and most people will tell you that the
943
00:59:24,276 --> 00:59:29,234
common ownership has a one year time frame limit. And that's technically
944
00:59:29,342 --> 00:59:32,758
inaccurate if you look at the EP. But I think where everybody kind
945
00:59:32,784 --> 00:59:36,578
of believes that it's just because it's so rare to find a piece of prior
946
00:59:36,614 --> 00:59:40,438
art from a condom and ownership perspective that wouldn't fall under both of
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00:59:40,464 --> 00:59:43,858
these sections and thus require a one year time
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00:59:43,884 --> 00:59:47,338
frame limit. Well, it's a good thing we
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00:59:47,364 --> 00:59:51,310
have experts like you to sort this all out. Thanks for the clarification.
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00:59:51,630 --> 00:59:54,650
Happy to do so. All right. That's all for today, folks.
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00:59:54,710 --> 00:59:58,102
Thanks for listening. And remember to check us out at Aurora Patents.com for
952
00:59:58,116 --> 01:00:02,138
more great podcasts, blogs and videos covering all things patents strategy.
953
01:00:02,234 --> 01:00:04,618
And if you're an agent or attorney and would like to be part of the
954
01:00:04,644 --> 01:00:08,278
discussion or an inventor with a topic you'd like to hear discussed, email us
955
01:00:08,304 --> 01:00:12,110
at podcast@aurorapatins.com do remember that this podcast
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01:00:12,170 --> 01:00:15,820
does not constitute legal advice and until next time keep calm and patent on.