A Publication of Volpe and Koenig, P.C.

i nsider
Spring 2016
The Intellectual Property
A Publication of Volpe and Koenig, P.C.
Inside this
Issue
Fixing Patents After
the Fact .....................................1
It’s Your Duty!
Disclosing Information
to the United States
Patent and Trademark
Office.....................................4
Inventorship:
Looking at Inventor
Contributions.........................5
Fixing Patents After The Fact
Firm News...................................6
By Michael F. Snyder and Randolph J. Huis
After a long process that took more than a year, you’ve finally obtained
a United States patent. As you are admiring the document and reading
through the issued patent, you notice a mistake. What now?
Mistakes in issued patents can take various forms, including
typographical errors, mistakes that render the patent inoperative, or
mistakes as to the scope of the claims. Thankfully, there are several
ways to correct mistakes even after a patent has issued.
Certificates of Correction
The Patent Laws provide a vehicle for correcting mistakes of a “minor
character” through a Certificate of Correction. These types of errors
continued on page 2
continued from cover
can be due to either the applicant’s mistake or a
mistake by the United States Patent and Trademark
Office (USPTO).
In the case of an applicant’s mistake, there are two
separate statutory requirements that must be met
before a Certificate of Correction will issue. The
first requirement concerns the type or nature of the
mistake. The mistake must be of a clerical nature,
of a typographical nature, or a mistake of minor
character. Where there is a spelling error, a missing
word, missing antecedent basis, or obviously wrong
language, a Certificate of Correction can be used. A
Certificate of Correction can also be used to correct
inventorship in certain circumstances where a patent
lists the wrong inventors, or to add or correct an
assignee name.
The second requirement relates to the scope of the
proposed correction. A Certificate of Correction
cannot be used to make a change to the patent that
would constitute new matter or require reexamination
by the USPTO.
The USPTO fee for a Certificate of Correction is
currently $100. Where a mistake is made by the
USPTO, a Certificate of Correction can also be used,
although no fee is required.
Reissue Patents
A reissue patent is precisely what its name suggests
-- a patent that has been put back into the prosecution
process to be issued yet again.
Under the Patent Act, 35 U.S.C. § 251, a reissue patent
may be filed under three circumstances: (i) when,
based on an error, the patent may be considered
wholly or partly inoperative or invalid, or (ii) when the
specification or drawing is discovered to be defective,
or (iii) when the patent applicant has claimed more or
less than they had a right to claim in the patent.
Therefore, a reissue patent can not only “fix” errors
in a patent, but it can also be filed to obtain better
claims than in the originally issued patent. Thus, a
patent owner can correct a mistake that devalues
the patent as issued, or the patent owner can try and
obtain even broader claims.
In addition to reissue patent prosecution following
some highly technical rules, there are two rules in
particular of note. First, the timing of filing a reissue
patent application is critical. Under the Patent Act,
35 U.S.C. § 251, no reissued patent shall be granted
enlarging the scope of the claims of the original patent
unless applied for within two years from the grant
of the original patent. Therefore, if the purpose of a
reissue patent application filing is to try and obtain
broader claims than in the original patent, the reissue
patent application must be filed within the first two
years after the patent issues. After the two-year date,
a reissue patent application can still be filed to correct
other errors and maintain claims of the same scope
as in the original patent, or where narrower claims are
sought in view of later-discovered prior art.
Second, even if the reissue patent application is
filed within the two-year deadline from the original
patent issue date, the reissue patent still faces the
“recapture” rule. A reissue patent will not be granted
allowing the patent owner to "recapture" subject
matter in the claims that was surrendered in order to
obtain the original patent. Application of the recapture
rule involves a three-step process: (i) a determination
is made regarding how the reissue claims are
broader in scope than the original patent claims;
(ii) a determination is made regarding whether the
broader aspects of the reissue claims relate to subject
matter surrendered in the original prosecution; and
(iii) a determination is made regarding whether the
continued on page 3
2
Spring 2016 Insider Volpe and Koenig, P.C.
continued from page 2
reissue claims are materially narrowed overall so that
the scope of the claims may not have been enlarged.
By way of example, if a patent was originally filed
for elements A-B-C, and the patent was obtained
by adding element D to overcome prior art showing
A-B-C, the patent owner will not be able to file a
reissue patent in order to eliminate element D.
Accordingly, before a reissue patent application
is filed, it is critical that the prosecution file of the
originally issued patent is reviewed in detail to
determine whether the patent claims might face a
recapture problem.
Request for Supplemental
Examination
The America Invents Act (AIA) added another tool
for patent owners who need to fix issued patents,
namely, supplemental examination. Under 35 U.S.C.
§ 257, "[a] patent owner may request supplemental
examination of a patent in the Office to consider,
reconsider, or correct information believed to be
relevant to the patent." Supplemental examination
became available on September 16, 2012.
Summary
Even after a patent
issues, there are still
several ways to correct
mistakes in the patent.
Patent owners who find
errors in patents should
act diligently
in pursuing
the proper
avenue for
making
corrections.
Information considered to be relevant to the
issued patent is not limited to patents and printed
publications. The information may include anything
that the patent owner believes is relevant to the
patent. Some examples of the information that can be
submitted in support of a supplemental examination
include: a technical or journal article, a sales invoice,
a video recording of a sales meeting, or a trade
show brochure. Further, supplemental examination
can concern any ground of patentability, such as
enablement, indefiniteness, or double-patenting.
Additionally, supplemental examination can be used
to bring information that the patent owner was aware
of while the original patent was being obtained to the
attention of the USPTO in order to avoid a charge of
failing to comply with the Duty of Disclosure owed
to the USPTO that is often raised in the context of
patent litigation.
Volpe and Koenig, P.C. 215-568-6400 vklaw.com
3
It’s
Your Duty!
Disclosing Information
to the United States Patent
and Trademark Office
By Michael F. Snyder and Ryan W. O'Donnell
W
hile it is not the case when applying for patents
in all countries, the United States and a few other
select countries require that an applicant for a patent
disclose information relating to the patentability of the
patent application.
Under Section 1.56 of the Code of Federal Regulations, each
individual associated with the filing and prosecution of a
patent application has “a duty of candor and good faith”
in dealing with the Unites States Patent and Trademark
Office (USPTO). This duty includes sharing certain known
information with the USPTO.
The individuals “associated with the filing or prosecution of
a patent application” include patent attorneys, each named
inventor, and other people who are substantively involved
with a patent application. This could include, for example,
a business owner or head of research and development at
a company who participates actively in the patent process,
even if they are not a named inventor.
The duty of disclosure extends to all information known to
be “material to patentability.” Information is considered
to be material to patentability when it is new information
(i.e., non-cumulative) and establishes, either alone or in
combination with other information, a prima facie case
of unpatentability of a claim. In addition, information is
material if it is inconsistent with a position taken by an
4
Spring 2016 Insider Volpe and Koenig, P.C.
applicant when prosecuting a patent application before the
USPTO.
The intentional failure to comply with the disclosure
requirements can have serious consequences. The willful
failure to disclose material information to the USPTO can
be considered inequitable conduct, rendering the patent
unenforceable. Thus, a good faith effort must be made to
cite material information of which the inventors and others
associated with the patent application are aware.
To ensure compliance with the duty of disclosure,
the following steps are a good starting point:
•
•
•
•
•
•
•
Have each inventor listed on a patent review their files
for potentially material information.
Make sure each person involved in the patent
prosecution process is aware that the duty of disclosure
extends to them as well.
Consider information cited by foreign patent offices
in related worldwide applications and by or to the
USPTO in related continuing or parent applications for
potentially material information.
If any person associated with the patent application
believes information might be relevant to the invention
under consideration, err on the side of disclosing it to
the USPTO. 
Inventorship: Looking At Inventor Contributions
By Michael F. Snyder and Ryan W. O’Donnell
Every patent application must name each inventor of
the patent. Determining inventorship is not always as
straightforward as it appears.
of the invention and make a contribution to the invention
that is not insignificant. Finally, a joint inventor must have
made a contribution to the claims of the patent.
The threshold question in determining inventorship is who
conceived the invention. “Conception” is a term of art in
patent law. Conception has been defined as “the complete
performance of the mental part of the inventive act.” In
other words, conception occurs when an inventor forms
a definite idea of the complete and operative invention.
Unless a person contributes to the conception of the
invention, they are not an inventor.
The validity of a patent can be challenged if the patent
identifies the incorrect inventor(s). Even if an issue with
inventorship is discovered, the United States Patent and
Trademark Office (USPTO) has provisions for correcting
inventorship.
Inventors usually do not work alone. People working
together on an invention may be joint inventors. A joint
inventor must contribute in some manner to the conception
Patent claims may change requiring the addition of, or
deletion of, inventors. In view of the foregoing, it may be
prudent to review the inventorship for a particular patent
application as it undergoes the patent examination
process. 
Volpe and Koenig, P.C. 215-568-6400 vklaw.com
5
firm news
Volpe and Koenig a 2016 "Best Law Firm"
Volpe and Koenig has been recognized as a top law firm in the 2016 edition of “Best Law Firms” issued by U.S. News & World Report
and Best Lawyers®. The firm was ranked Tier 1 in the Philadelphia metropolitan area for the following practice areas: Copyright Law,
Litigation – Intellectual Property, Litigation – Patent, Patent Law, and Trademark Law. Rankings are based on factors that include client
and lawyer evaluations and peer review from leading attorneys in each evaluated field.
Neil Maskeri
Neil Maskeri visited the White House on February 24th to meet with members of the Senate Judiciary Committee for discussion about
potential candidates for the late Justice Antonin Scalia’s Supreme Court seat. Neil also participated in a New York University School
of Law Intellectual Property panel on March 26th.
C. Frederick Koenig III
C. Frederick Koenig III conducted the Symposium of the SIPO/U.S. Bar Liaison Council with China’s State Intellectual Property Office
(SIPO) at the USPTO on December 2, 2015.
John C. Donch Jr.
John C. Donch Jr. joined WOGL-FM’s Brad Segall for an in depth “Philadelphia Agenda” interview about the 2015 IPromise Charitable
Giving Fund grants. The interview aired on January 24th.
Anthony S. Volpe
Anthony S. Volpe served as a judge at the finals of the local National History Day® 2016 competition held on March 19th at Ursinus
College in Collegeville, PA. Tony also participated in other events leading up to the final competition, which was organized by the
Mercer Museum in Doylestown, PA, and involved students in Grades 6-12.
Article Appearances
“Inter Partes Review: Three Years Later and the Difference Is?” by Anthony S. Volpe, Dionne D. Heard, and Steven M. Landolfi appeared
in the Fall 2015 edition of the Pennsylvania Bar Association’s Intellectual Property Law Newsletter.
“Offensive Trademarks and the Right to Federal Registration,” by Anthony S. Volpe and Meghan Mills, appeared in the March 2nd
edition of The Legal Intelligencer. Tony’s article, “Enjoying the Benefits of Provisional Patent Applications,” appeared in the publication
on January 6th.
6
Spring 2016 Insider Volpe and Koenig, P.C.
continued on page 7
continued from page 6
Volpe and Koenig Awards $20,000
IPromise™ Grants to ElderNet of Lower
Merion and Narberth and Smith Memorial
Playground and Playhouse
Established in 2007, the IPromise Charitable Giving Fund awards annual $20,000 grants to two qualifying nonprofit organizations based in the Greater Philadelphia or Princeton, NJ, areas. Almost 50 applied for grants in
2015’s eligible categories -- arts and culture and health and human services. ElderNet of Lower Merion and
Narberth helps older and disabled adults remain independently in their homes by providing free volunteer and
social work services. Smith Memorial Playground and Playhouse in East Fairmount Park provides opportunities
for unstructured, creative, and safe play for children 10 years of age and younger who might not have such
opportunities otherwise. To date, Volpe and Koenig has awarded $360,000 in funding to IPromise grant winners.
Volpe and Koenig Shareholder Joseph Gushue and
Executive Director Beth Collins present an IPromise
grant to ElderNet of Lower Merion and Narberth.
Volpe and Koenig Shareholder Robert Leonard and
Executive Director Beth Collins join "Story Time in
the Playhouse" to present an IPromise grant to
Smith Memorial Playground and Playhouse.
Volpe and Koenig Sponsors the 2015 Central Bucks Chamber
of Commerce Young Citizens Awards
Special guest Bucks County Commissioner Diane
Ellis-Marseglia and keynote speaker Bucks County
Assistant District Attorney Matthew Weintraub
joined Volpe and Koenig Shareholder Ryan O’Donnell
and Executive Director Beth Collins at the Warrington
Country Club on November 13, 2015, to celebrate 11
exemplary young people for their community
service, character, skills, and courage.
Photo by Chris Whitney, Whitney Photography
continued on page 8
Volpe and Koenig, P.C. 215-568-6400 vklaw.com
7
Volpe and Koenig Firm News continued from page 7
Lending a Helping Hand in East Africa and at Home -- the Malawi
Project, Philadelphia Ronald McDonald House, Toys for Tots, and
Fox Chase Cancer Center
Everyone at Volpe and
Koenig has been diligently
collecting empty pill bottles
that will be delivered to
rural areas in Malawi by the
Malawi Project. Medicine
in the East African country
often has to be wrapped in
torn pieces of paper given the lack of other materials, and
the collected bottles will afford a much cleaner and safer
alternative.
Volpe and Koenig’s Marilyn Wilson assists a representative
from the U.S. Marines as he collects overflowing Toys for
Tots donation boxes.
Upholding Volpe and Koenig’s annual tradition, we were
delighted to fill two giant Toys for Tots donation boxes with
holiday gifts to brighten the lives of local children.
The Intellectual Property Insider is a publication from Volpe and Koenig, P.C. For a
complimentary subscription, please email your contact information to [email protected]
or visit our website at vklaw.com. To opt-out of an email subscription, please send your
name and email address, with “unsubscribe” in the subject line, to [email protected]. This
publication is intended for informational purposes only and should not be considered legal
advice. Please consult an attorney regarding your specific situation. Receipt of this newsletter
does not constitute an attorney-client relationship. © 2016 Volpe and Koenig, P.C.
8
Spring 2016 Insider Volpe and Koenig, P.C.
A group from Volpe and Koenig was privileged to prepare
and serve a lovely dinner to families staying at the
Philadelphia Ronald McDonald House. More than enough
food was made, and leftovers were taken to the “family
room” in the oncology department at the Children’s
Hospital of Philadelphia (CHOP) to feed those staying at
the bedsides of their sick children. A deeply moving and
rewarding experience for all involved…
Tom Selleck has nothing on these guys!
The gentlemen of Volpe and Koenig were proud to
participate in No Shave November to raise funds for renal
cancer research at Fox Chase Cancer Center.
News Credits
Editor . . . . . . . . . . . . . . . . . . . Michael F. Snyder
Contributing Authors . . . . . Randolph J. Huis
Ryan W. O’Donnell
Michael F. Snyder