What are the additional issues in patent prosecution?
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What are the additional issues in patent prosecution? Video Transcript
In this section, I am going to talk about additional issues that might arise during patent application prosecution. One issue is interference. When the patent office believes that there are one application and one patent that are claiming the same invention - usually the patent may be enforced for a year or less and the Patent Office is saying, look, you and this other party are claiming the same invention and we want to decide who is the actual monopoly right holder. In that case, the interference will basically involve a determination by the Patent Office of who first invented the particular concept or invention. That is what is referred to as an interference proceeding which could occur at the USPTO. Another issue that could come up is divisional applications in which an application is split apart into multiple cases. Often this happens during a restriction requirement where the Patent Office says, look, you are trying to file one patent application with multiple different inventions in the same application and we want you to separately file cases on each invention. We are forcing you to restrict each invention to distinct group sets. In that case, a divisional application should be filed in which the base invention is split apart into multiple separate applications. That is another issue that could come up. There are other things such as a secrecy order where if the Patent Office believes that your invention has something to do with the US national defense, they will issue potentially a secrecy order where the application will not get published and will be subject to a secondary review to determine whether that invention should ever make it to a public disclosure or not, or to go into the walls of the US Government. There are other things that can come up like re-issue within two years of a patent being issued. One can broaden the claims if required by filing a re-issue application. It is a very expensive thing. Sometimes it is done. You could file narrowing re-issues if you determine there is some prior art and you want to clarify things. These are other issues that might arise during the prosecution or lifetime of a patent. Re-issue happens after the patent is issued. Double patenting rejections can come up, in which the Patent Office says there are two inventions that are either claiming the same thing or both owned by the same party. There are ways of overcoming that so that the Patent Office does not want to give additional monopoly rights beyond the 20 years from the original filing date. Sometimes these double patenting rejections arise during prosecution. Those are some additional issues that arise in patent application processes.