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CHAPTER TWENTY
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Proceedings In the US Patent and Trademark Of ce After the application is led with the appropriate fee ($365 to $730 basic fee for utility patents; $150 to $300 for design patent; and $245 to $290 for plant patent), an examiner in the PTO reviews the application to ensure compliance with all statutory requirements as to the form of the application and to independently assess the patentability of the claims in the application in light of prior art If found to be patentably distinct from the prior art, a patent will be granted upon payment of another fee ($605 to $1,210 for a utility patent; $210 to $420 for a design patent; $305 to $610 for a plant patent) If the examiner concludes the invention claimed in the application is not patentable over prior art, all such claims will be rejected An administrative appeal to the Patent Of ce Board of Appeals is available to challenge such rejection and a further appeal to the federal courts is available from an adverse decision of the Board of Appeals (35 USC 134, 141, 145) To maintain a patent, the owner must also make periodic payments to the PTO before the fourth, eighth, and twelfth anniversaries of the patent grant These maintenance payments increase from $480 to $960 to $1,450 to $2,900 as the patent ages Since the above-mentioned fees change annually, all fees should be determined in advance to avoid the consequences of fee underpayment Rights of a Patent Owner A patent gives the patent owner (either original applicant or her or his assignee) the right to prevent anyone else from infringing upon his or her patent rights by making, using, offering to sell, selling within the United States, or importing the patented invention into the United States If someone else does infringe a patent, the patent owner can seek an injunction against further infringement and / or damages for such unauthorized use of his or her invention (35 USC 28l 284) The federal courts have exclusive jurisdiction over suits relating to patents A patent owner may commercially exploit his or her patent by selling (assigning) or licensing it to another Multiple licenses can be granted under a single patent giving each licensee nonexclusive rights under the patent Geographic and use limitations in a license are also possible as a means of maximizing the patent owner s bene t from his or her patent Reissue and Reexamination of Patent If through inadvertence, accident, or mistake, the original patent was defective or claimed too much or too little, the error may be repaired by a reissue proceeding provided the subject matter needed to correct the mistake appeared in the original patent (35 USC 251) The term of a reissued patent expires the day the original patent would have expired Also, if the patentability of a patent is put in question, either the patent owner or a third party may ask the PTO to reexamine and reevaluate the patent vis-a-vis ` the prior art The PTO then proceeds to examine the patent much the same as it would with an original application
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2 Foreign Countries
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International Convention for the Protection of Industrial Property The important provision of the convention is that any person who has duly applied for a patent in one of the contracting states shall have a right of priority for 12 months in making application in the other states
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ENGINEERING ECONOMY, PATENTS, AND COPYRIGHTS
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Patent Cooperation Treaty (PCT) and European Patent Convention (EPC) To simplify the process of obtaining foreign patents, it is now possible to le a single application, eg, in the United States, and have that application mature into a patent in each country worldwide which is a member of the Patent Cooperation Treaty Similarly, if the focus of intended patent protection is in Europe, a single application in the European Patent Of ce located in Berlin, Munich, or the Hague can be issued as a patent in most of the countries on the European continent under the European Patent Convention Use of either the PCT or EPC provisions will generally be cost-effective versus separate lings in individual countries, since, for example, translation costs are usually minimized or eliminated However, as in all such complex matters, knowledgeable patent professional counsel should be consulted
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