Ryan Cagle

Most U.S. patent practitioners are keenly aware of the foreign filing license requirement for filing of U.S. patent applications abroad. Since it is common for U.S. based companies to file a U.S. priority patent application and take advantage of the one-year grace period for foreign filing, a foreign filing license is typically issued without much thought to the matter. Given the propensity for international companies and many universities to routinely carry out inventive activities in multiple countries by inventors of varied citizenships, the opportunities to run afoul of foreign filing license requirements is of growing concern, and this concern extends well beyond the walls of the U.S. Patent and Trademark Office (USPTO).

Although the patent prosecution process is adversarial in nature, patent practitioners must be keenly aware of their duty to maintain the integrity of any subsequently issued patent by supplying the patent examiner with all prior art that is believed to be relevant and also avoiding any misrepresentations of the prior art.  Patent litigators have long been aware of the potential pitfall of having a patent invalidated based on inequitable conduct due to activities of a patent prosecutor carried out months or years prior to the litigation proceedings.  In light of a recent decision by the Federal Circuit in Regeneron Pharmaceuticals v. Merus, however, it now appears that inequitable conduct by a patent prosecutor may be inferred due to activities of a patent litigator carried out month or years after patent prosecution has concluded.

Interactions between patent examiners and patent practitioners are often tense. At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain for one another. This adversarial approach can stall prosecution and run adverse to the practitioner’s purpose – i.e., to obtain the best patent claim scope possible for his or her client. Patent practitioners thus could benefit in many instances by having a better understanding of an examiner’s expectations and approaching prosecution with a mind toward working with the examiner instead of against the examiner. A conversation with an Examiner in a mechanical art unit provided the following tips for how practitioners may expedite the examination process by working (to the extent possible) within the examiner’s expectations.

While much attention has been given to the recent, significant changes in U.S. patent law arising from the America Invents Act (“AIA”), lesser attention has been given to patent law changes brought about by further congressional action. Specifically, the Patent Law Treaties Implementation Act (“PLTIA”) enacted December 18, 2012, implements the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. In making several important changes to U.S. design patent law, implementation of the Geneva Act importantly provides U.S. design patent applicants with increased flexibility and, like the AIA, further harmonizes U.S. patent laws with international norms.