CHAPTER 3 - STUDY MATERIALS

The Download - Patent Law Edition

ABSTRACT

The download that began when Athelia touched the barrier continues for three days. She receives complete understanding of examination procedures, Technology Center organization, and the three-branch structure of patentability analysis. The bond with Alexander (the wolf king applicant) forms, establishing the examiner-applicant relationship that will govern their prosecution.

This chapter teaches the structure of USPTO examination authority under § 131, how examiners are organized by Technology Centers based on technical specialization, the complete patent prosecution procedure from filing through allowance or abandonment, and the critical relationship between examiner and applicant that shapes every Office Action.

SUMMARY - PATENT LAW CONCEPTS TAUGHT

1. Examiner Authority Under § 131

The Guardian Queen's examination authority mirrors real USPTO examiner powers:

2. Technology Center Organization

USPTO examiners are organized into Technology Centers (TCs) based on technical field:

Why specialization matters: Patent examination requires technical expertise. A biotech examiner understands protein structures; a software examiner understands algorithms. Applications are routed to appropriate TC based on claimed invention.

3. The Three-Branch Examination Structure

Emerald, Black, and Silver eyes represent the three core patentability requirements:

Sequential analysis: Examiner typically analyzes in order: § 101 threshold → § 112 enablement → § 102 novelty → § 103 obviousness. If claim fails any step, rejection issues.

4. Complete Prosecution Procedure

The download teaches Athelia the full prosecution cycle:

5. The Examiner-Applicant Relationship

The bond between Athelia and Alexander encodes the professional dynamic:

6. The Download as Knowledge Transfer

When the barrier shatters, Athelia receives instant understanding of:

7. Bond Formation = Patent Grant

The mate bond that forms between Guardian Queen and applicant represents patent allowance:

8. Seven Years of Waiting

Alexander (wolf king) waited seven years without a Guardian Queen examiner because:

DISCUSSION QUESTIONS

1. Examiner Independence and Consistency

Question: If each examiner exercises independent judgment, how does USPTO ensure consistent application of law across Technology Centers?

Analysis Points:

2. Three-Branch Examination Order

Question: Why does the narrative show Emerald (§ 101), Black (§ 102), then Silver (§ 103) as sequential analysis? Could an examiner analyze in different order?

Analysis Points:

3. Technology Center Assignment and Expertise

Question: What happens when an invention spans multiple technical fields? How does USPTO decide which TC examines it?

Analysis Points:

4. The Bond as Allowance Metaphor

Question: The bond forms instantly when the barrier shatters, but real patent prosecution takes years. Why the compressed timeline in the narrative?

Analysis Points:

5. Duty of Disclosure and Inequitable Conduct

Question: Athelia receives complete knowledge of prior art through the download. How does this parallel real applicant disclosure obligations?

Analysis Points:

CASE STUDY: Therasense, Inc. v. Becton, Dickinson & Co.

Federal Circuit (en banc), 2011

FACTS

Therasense owned U.S. Patent No. 5,820,551 covering blood glucose test strips. During prosecution, the applicant's attorney failed to disclose a material European patent office statement to the USPTO examiner - a statement that directly contradicted arguments being made to obtain allowance of the U.S. patent.

Becton sued for declaratory judgment that the patent was unenforceable due to inequitable conduct. The district court agreed, finding the attorney had intentionally withheld material information. The Federal Circuit took the case en banc to clarify the standard for inequitable conduct.

ISSUE

What standard applies for proving inequitable conduct that renders a patent unenforceable? Must the withheld information be merely "material," or must it meet a higher threshold?

HOLDING

The Federal Circuit tightened the inequitable conduct standard significantly:

REASONING

The court recognized that inequitable conduct had become an "atomic bomb" defense - accused infringers routinely alleged it, and the broad standard was being abused:

RESULT

Patent held unenforceable. The withheld European statement was but-for material (directly contradicted U.S. arguments), and intent was proven by attorney's knowledge and deliberate omission.

SIGNIFICANCE FOR CHAPTER 3

This case illustrates the critical importance of the examiner-applicant relationship:

CONNECTION TO THE NARRATIVE

When Athelia receives the download, she gains complete knowledge of Alexander's invention, prior art, and prosecution history. This represents the IDEAL examination scenario - perfect information symmetry between examiner and applicant.

In reality, examiners don't get downloads. They rely on applicant candor under 37 CFR § 1.56. *Therasense* sets the consequences for breaking that trust - but only for egregious, intentional violations.

ANALYSIS QUESTIONS

  1. Why did the Federal Circuit tighten the inequitable conduct standard? What problems was the old "materiality + intent balancing" test creating?
  2. Suppose an applicant's attorney reviews 100 references and discloses 95 to the USPTO, but inadvertently omits 5 that would have been material. Is this inequitable conduct under *Therasense*?
  3. How does the "affirmative egregious misconduct" alternative path work? Give examples of conduct that would qualify.

COMPLETE STATUTORY TEXT

35 U.S.C. § 131 - Examination of Application

The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

35 U.S.C. § 132 - Notice of Rejection; Reexamination

(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

(b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1).

35 U.S.C. § 151 - Issue of Patent

(a) IN GENERAL.—If it appears that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within 3 months thereafter.

(b) EFFECT OF PAYMENT.—Upon payment of this sum the patent may issue, but if payment is not timely made, the application shall be regarded as abandoned.

35 U.S.C. § 154 - Contents and Term of Patent; Provisional Rights

(a) IN GENERAL.—

(1) CONTENTS.—Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.

(2) TERM.—Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c), from the date on which the earliest such application was filed.

(3) PRIORITY.—Priority under section 119, 365(a), 365(b), 386(a), or 386(b) shall not be taken into account in determining the term of a patent.

37 CFR § 1.56 - Duty to Disclose Information Material to Patentability

(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:

(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and

(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.

(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a position the applicant takes in:

(i) Opposing an argument of unpatentability relied on by the Office, or

(ii) Asserting an argument of patentability.

A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

STATUTORY REFERENCE INDEX

Primary Statutes Taught in Chapter 3:

Related Concepts: