Can you depose a patent examiner

However, office employees should refuse to provide a determination or express an opinion addressing any patent owner or public inquiries as to a specific patent's expiration date, except as provided above in items A-H. A number of factors may affect calculation of a patent term expiration date, both pre- and post-issuance, that may create difficulty in accurately calculating the term of a patent. When a field of search for an invention is requested, examiners should routinely inquire whether the invention has been patented in the United States.

If the invention has been patented, no field of search should be suggested. Employees of the USPTO, particularly patent examiners who examined an application which matured into a patent or a reissued patent or who conducted a reexamination proceeding, should not discuss or answer inquiries from any person outside the USPTO as to whether or not a certain reference or other particular evidence was considered during the examination or proceeding and whether a claim would have been allowed over that reference or other evidence had it been considered during the examination or proceeding.

Likewise, employees are cautioned against answering any inquiry concerning any entry in the patent or reexamination file, including the extent of the field of search and any entry relating thereto. The record of the file of a patent or reexamination proceeding must speak for itself. Practitioners shall not make improper inquiries of members of the patent examining corps. Inquiries from members of the public relating to the matters discussed above must out of necessity be refused and such refusal should not be considered discourteous or an expression of opinion as to validity, patentability or enforceability.

The definitions set forth in 37 CFR Any employee who testifies contrary to this policy will be dismissed or removed. Any individual desiring the testimony of an employee of the USPTO, including the testimony of a patent examiner or other quasi-judicial employee, must comply with the provisions of 37 CFR Part , Subpart C. A request by a third party to take deposition testimony of a patent examiner in a pending ex parte reexamination proceeding will generally be denied in view of the ex parte nature of the reexamination proceeding.

The district court concluded that there was no justification for taking the deposition outside of the discovery period. The witness merely testified how he would seek out this information, not how Defendants must necessarily seek out this information. The district court also was not convinced that there were no other means to obtain the information than to depose Mr. Defendants merely seek Mr. Here, the potentially relevant information is the content of the conversation between Mr. Kaler and Mr.

In practice, this gives you a year to decide how many countries you wish to include in your patent protection. A search report is sent to you, listing and including copies of all prior art documents found by an experienced examiner and regarded as relevant to your invention.

The search is based mainly on your claims for novelty, but your description and any drawings will also be taken into account. The report will often include an initial opinion on the patentability of your invention.

Your application is published 18 months after the filing date. Your invention will appear in databases accessible to other people around the world.

It will act as prior art against any future patent applications from other inventors or companies for similar inventions. After your patent is granted, you may claim damages for infringements originating as far back as the publication date of your application. However, to enjoy this right in some countries it may be necessary to file a translation of your claims with their national IP office and for them to publish the translated claims.

If you request substantive examination , the EPO has to decide whether your invention and your application meet the requirements of the European Patent Convention. For maximum objectivity there are usually three EPO examiners, one of whom maintains contact with your patent attorney. This stage will often involve dialogue between the examiners and your patent attorney, which may result in the re-drafting of key parts of your application. Your patent attorney will defend your application, and this is one more reason why it is essential to have professional representation.

If the examiners decide to grant a patent, and all fees have been paid and any claims translations filed, the decision is reported in the European Patent Bulletin. The decision to grant takes effect on the date of publication. After the EPO decision to grant is published, your patent has to be validated in each designated state within a specific time limit. If this is not done, your patent may not be enforceable in that state.

In some states, validation may include having to file and pay for a translation of the whole patent, or just a translation of the granted claims. A granted patent may be opposed by third parties - usually the applicant's competitors - if they believe it should not have been granted.

After the grant is reported in the European Patent Bulletin they have nine months in which to file notice of opposition. The most common charge is that the invention is not novel or lacks an inventive step. The case will be examined by an EPO team, again of three examiners.

Opposition is the last chance to attack a European patent as a single entity in a single forum. Later, the patent can only be challenged in national courts and a ruling in one country has no effect on the patents for the same invention in other countries.

This gives competitors a strong incentive to challenge an invention during the opposition period, as challenging patents in separate national courts can be much more expensive. All EPO decisions are open to appeal. Responsibility for decisions on appeals is taken by independent boards of appeal. An invention is patentable only if it is: New and previously undisclosed.

Distinguished by an inventive step not obvious to someone expert in that technology. Capable of industrial application - that is, it is physically possible to make the invention.

Business methods may be patentable in the USA but not easily patentable elsewhere. Some issues to consider before deciding to patent See also Patenting strategy later. Do you really need a patent?