I.

Chapter 1
D. Overview of Patent Rights and Patent Process
1. Utility Patent - useful creations
2. Design patents - decorative rather than useful
a) Ex: a new aesthetically pleasing lamp design
3. Plant patents - living plants
E. Appeals
1. PTAB
2. District
3. Supreme Court
F. Post-Issuance Proceedings - challenging the validity of an issued patent
1. Inter Partes Review
a) For only certain validity challenges
2. Post-Grant Review
a) Only available for 9 months after the patent issuance date
b) Wide range of challengeable material
3. Covered Business-Model
a) Challenging “business method” patents
4. Issued patents to do not enjoy a “presumption of validity”
G. Judicial Actions
1. Infringement
2. Declaratory Judgment
3. In both cases the infringer can challenge the validity of the patent
a) Patents enjoy a presumption of validity
b) The courts should respect the agency’s technical and
administrative competence
H. Globalization and Patent Rights
1. TRIPS
2. The patent Term
a) 20 years after filing date
(1) Disincentivize patent applicants from stretching out
prosecution timelines
b) Term Extensions for FDA Delays
(1) FDA can take years. May extend the patent timeframe to
make up for it
c) Term “Adjustments” for PTO Delays
3. Provisional Applications
a) Can be used to establish a right of priority for a regular application
filed within one year of the provisional
b) Time during which a provisional application is pending does not
count toward the new twenty year patent term
c) Can be seen as a way in which the US is “meeting the
competition” - not lagging behind other countries
4. Eighteen Month Publication of Applications
 a) Have to disclose information about the patent 18 months before
patent issuance
b) Provisional rights - protect the information disclosed in the
published patent application before the patent issues.
5. Continuing Evolution - International Harmonization