Reexamination of Patents

After a patent is issued by the United States Patent and Trademark Office (USPTO), the discovery of prior art or publications not noticed prior to the patent's issue may raise questions as to the validity of the issued patent. In such a case, a patentee or a third party may file an application for reexamination of the patent in the USPTO. For a third party, reexamination provides a lower cost alternative to a conventional lawsuit for challenging the validity of a patent. If the third party is an unsuccessful infringement defendant, a reexamination that results in the invalidation of a patent may provide vindication of that defendant's rights despite the results of the court case. For the patentee, the reexamination process may reveal the need to narrow a patent's claims in order to be in a better position to fend off a challenge to the patent's validity. In addition, the USPTO may take it upon itself to reexamine a patent without it being requested by the patentee or a third party.

Patents

In order to encourage the advancement of science and technology, the federal government gives an incentive to inventors to disclose new ideas that have been embodied in inventions by granting a patent, which is a temporary right to exclude others from making, using, selling, offering to sell, or importing the patented invention without the inventor's permission. Activity that encroaches upon the right given by a patent is said to infringe the patent, for which an inventor may bring a lawsuit in order to obtain a remedy.

Publication

Publication was the key to obtaining federal copyright under the Copyright Act of 1909. Publication is still important to copyright owners but it is no longer the key. Publication is defined in the Copyright Act of 1976 as "the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not of itself constitute publication."

Patents

After a patent is issued by the United States Patent and Trademark Office, the patent owner may mark the patented articles with the word "Patent" or the abbreviation "Pat." along with the patent number assigned by the USPTO. This marking of the patent number on the product constitutes notification of the patent, which is essential to a monetary recovery in a patent action. Although that patent statute states that a patent owner "may give notice" of the patent by marking the patented article, monetary damages for the infringement of an unmarked item can only be recovered from the time that the alleged infringer has been notified of the infringement by a cease and desist letter, by service of a summons and a copy of the complaint, or by other means. In such a case, if the alleged infringer ceases the infringing activity immediately upon notification, a monetary recovery could not be had at all in an infringement suit.

Jurisdiction and Procedure in Patent Disputes

A patent gives the patent owner an exclusive right in the subject matter of the patent. If another person or company makes, uses, sells, offers for sale, or imports the subject matter of the patent, that other person or company is said to be infringing on the patent rights of the patent owner. The patent owner in such a situation may wish to have the infringing conduct stop or may be entitled to monetary compensation for the infringing conduct. Because the United States Patent and Trademark Office (USPTO) has no jurisdiction over a patent once it issues it nor has any enforcement powers with regard to patent rights, the ordinary course of action to take against an act of patent infringement is to bring a lawsuit in court. In addition, a non-patent owner who believes that a patent issued by the USPTO is not valid may bring a lawsuit to challenge the validity of that patent.