Ch9. Patent Law Basics — High-Frequency Error Analysis

Error Type 1 — Confusing Patent Term Start Dates

Commonly Confused Points:
Utility Patent: 20 years from earliest effective FILING date (NOT grant date)
Utility Model: 10 years from FILING date
Trademark: 10 years from REGISTRATION date (renewable indefinitely)
Design Patent: 15 years from GRANT date (US; AIA for post-May 13, 2015 filings)

Key Distinction:
Utility Patent & Utility Model: measured from FILING date
Trademark & Design Patent: measured from REGISTRATION / GRANT date

Common Exam Traps:
"A utility patent lasts 20 years from its grant date" → WRONG
"A trademark lasts 10 years from its filing date" → WRONG
"A design patent lasts 20 years" → WRONG (it's 15 years in the US)

Error Type 2 — Exclusive vs. Non-Exclusive Licenses

Commonly Confused Points:
Exclusive License: writing required; recordation at USPTO strongly advised
Non-Exclusive License: oral license can be valid; no recordation required

When an Exclusive License is Granted:
Patent owner may be excluded from practicing the invention depending on
the scope and terms of the license agreement
→ "Patent owner can always practice the patent" → WRONG (depends on the agreement)

Non-Exclusive License:
Multiple licensees may hold licenses to the same patent simultaneously
→ "Non-exclusive license requires recording at USPTO" → WRONG

Statutory / Implied License:
Government use (28 USC § 1498): US government may use any patent;
compensation required but no prior authorization needed
Patent exhaustion: implied license arises from authorized first sale

Error Type 3 — Grace Period and Priority Periods

AIA Grace Period:
Inventor's own disclosure: within 12 months of filing date → excluded from prior art
→ Must be affirmatively claimed in response to a § 102 rejection
→ "The grace period applies automatically" → WRONG (must be invoked)

Paris Convention Priority:
Patents and Utility Models: 12 months from first filing
Trademarks and Design Patents: 6 months from first filing
→ "Trademark priority period is 12 months" → WRONG (it's 6 months)

PCT National Phase:
Standard entry deadline: 30 months from priority date
→ "PCT national phase must be entered within 12 months" → WRONG (30 months)

Request for Examination (US vs. other systems):
US: examination is automatic for non-provisional applications
Korea/Japan: separate examination request must be filed within 3 years
→ "US applicants must separately request examination within 3 years" → WRONG

Error Type 4 — PTAB Proceedings and Invalidity

Inter Partes Review (IPR):
Any person (except the patent owner) may petition PTAB
Must be filed within 1 year of being served an infringement complaint
Grounds limited to §§ 102 and 103 (prior art only)

After Invalidity is Confirmed:
Patent is void ab initio — treated as never having existed
→ Pre-cancellation royalties: generally NOT refunded absent a contract provision

Federal Circuit Exclusive Jurisdiction:
ALL appeals from PTAB proceedings and patent-related district court cases
go to the United States Court of Appeals for the Federal Circuit (CAFC)
Infringement suits are filed in US district courts (not the Federal Circuit)

IPR vs. Scope Determination:
IPR: validity challenge at PTAB (anyone may petition)
Declaratory judgment of non-infringement: district court action by
an interested party to confirm no infringement (cf. Korean scope confirmation trial)

Key Concept Cards

Utility Patent = Filing Date; Trademark = Registration Date ★★★★★ : The single most-tested distinction in IP term calculations. Memory hook: patent → filing; trademark → registration

Exclusive = Writing Required; Non-Exclusive = Writing Not Required ★★★★★ : Property-like (exclusive) vs. contractual (non-exclusive) distinction. Memory hook: exclusive = writing; non-exclusive = oral OK

Grace Period = Must Be Claimed (Not Automatic) ★★★★☆ : Invoke the § 102(b)(1) grace period in your Office Action response. Memory hook: grace period = claim it

Practice Questions

Q. True or false: “A patent owner who grants an exclusive license can still practice the invention.” Explain.

It depends entirely on the terms of the license agreement. An exclusive license grants the licensee the exclusive right to practice within the licensed scope, but the agreement may expressly reserve rights for the patent owner. If the license is silent on this point, courts generally interpret an exclusive license as excluding the patent owner from the licensed field. This is what makes an exclusive license analogous to a property conveyance (as opposed to a mere contractual obligation). On an exam: “always” = wrong; “only if the agreement permits” = correct.

Q. What happens if a patent owner fails to enter national phase in a country after PCT filing?

Missing the 30-month national phase deadline in a designated country is treated as a withdrawal of the application in that country — the applicant loses patent rights in that jurisdiction. The PCT international application itself remains intact for other designated countries. Some national offices (e.g., the European Patent Office, some Asian offices) allow late entry with additional fees. This deadline management is a core function of patent practitioners managing international portfolios. In countries where national phase was not entered, anyone may freely practice the technology.