Bench & Bar May/June 2025

IN THIS ISSUE: INTELLECTUAL PROPERTY

KENTUCKY BAR ASSOCIATION SINCE 1871

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vol. 89 no. 3 THIS ISSUE OF THE KENTUCKY BAR ASSOCIATION’S B&B-BENCH & BAR WAS PUBLISHED IN THE MONTH OF MAY. COMMUNICATIONS & PUBLICATIONS COMMITTEE EILEEN M. O’BRIEN chair , lexington PAUL ALLEY florence ELIZABETH M. BASS hendersonville , tenn . JENN L. BRINKLEY pensacola , fla . KYLE R. BUNNELL lexington FRANCES E. CATRON CADLE lexington ALLISON I. CONNELLY lexington JAMES P. DADY bellevue JOHN M. GHAELIAN lexington P. FRANKLIN HEABERLIN prestonsburg JESSICA R. C. MALLOY louisville SANDRA J. REEVES corbin JOHN SCHAAF georgetown GERALD R. TONER louisville ZACHARY M. VAN VACTOR louisville SAMUEL W. WARDLE louisville LITANY L. WEBSTER cincinnati , ohio MICHELE M. WHITTINGTON lexington

CONTENTS 2 President’s Page BY RHONDA JENNINGS BLACKBURN

6 Chief Justice Debra Hembree Lambert Formally Sworn In 8 Justice Pamela R. Goodwine Formally Sworn In

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2025 ANNUAL CONVENTION OVERVIEW

16 Basics of Patent Prosecution BY CHRIS EMERSON 20 Data Privacy has Come to Kentucky. What Should My Organization Do? BY KYLE MILLER AND DALTON CLINE FEATURE: INTELLECTUAL PROPERTY LAW

KATHRYN D. WILLIAMS louisville MARK A. WINSOR lawrenceburg

26 Protecting Proprietary Information of a Business BY PATRICK M. TORRE 30 Is the Value of Courtroom Science Waning? The Disturbing Trend of Bad Science BY JUDGE DAVID TAPP AND KATHERINE TAPP

PUBLISHER JOHN D. MEYERS EDITOR EILEEN M. O’BRIEN

COLUMNS

MANAGING EDITOR SHANNON H. ROBERTS DESIGN & LAYOUT JESI L. EBELHAR

38 Northern Kentucky University Salmon P. Chase College of Law 42 University of Louisville Louis D. Brandeis School of Law 44 Effective Legal Writing BY ALEXANDRA J. SIPES 52 Kentucky Bar Foundation 51 Kentucky Lawyer 54 Continuing Legal Education DEPARTMENTS Assistance Program

36 Young Lawyers Division BY DONALD H. COMBS III 40 University of Kentucky J. David Rosenberg College of Law

THE B&B - BENCH & BAR (ISSN-1521-6497) IS PUBLISHED BI-MONTHLY BY THE KENTUCKY BAR ASSOCIATION, 514 WEST MAIN STREET, FRANKFORT, KY 40601-1812. PERIODICALS POSTAGE PAID AT FRANKFORT, KY AND ADDITIONAL MAILING OFFICES. ALL MANUSCRIPTS FOR PUBLICATION SHOULD BE SENT TO THE MANAGING EDITOR. PERMISSION IS GRANTED FOR REPRODUCTION WITH CREDIT. PUBLICATION OF ANY ARTICLE OR STATEMENT IS NOT TO BE DEEMED AN ENDORSEMENT OF THE VIEWS EXPRESSED THEREIN BY THE KENTUCKY BAR ASSOCIATION, ITS BOARD OF GOVERNORS, SECTIONS, DIVISIONS, COMMITTEES, OR MEMBERS. ANNUAL DUES AND IS NOT LESS THAN 50% FOR THE LOWEST SUBSCRIPTION PRICE PAID BY SUBSCRIBERS. FOR MORE INFORMATION, CALL (502) 564-3795. POSTMASTER SEND ADDRESS CHANGES TO: B&B - BENCH & BAR 514 WEST MAIN STREET FRANKFORT, KY 40601-1812 SUBSCRIPTION PRICE: $20 PER YEAR. MEMBERS SUBSCRIPTION IS INCLUDED IN

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Law Practice Management BY STEVE EMBRY

46 Lawyer Wellbeing BY DR. ERIC Y. DROGIN 48 July Bar Applicant Listing BAR NEWS

50 Pro Hac

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60 Who, What, When and Where

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bench & bar

Cover and several inside graphics by ©istockphoto.com/JesiEbelhar

PRESIDENT'S PAGE

WHERE DO WE GO NOW?

BY RHONDA JENNINGS BLACKBURN KBA PRESIDENT

A s this presidency closes (and another begins), I have been pondering how I got here and where I go from here? The Kentucky Bar Association (KBA) has been a huge part of my life for close to a decade. For the first 18 years of my legal career, I didn’t give much thought to the KBA. For me, it was merely an organization that I paid money to so I could practice law. I didn’t think about what the KBA could do for me or what I could do for the KBA. I suspect that this attitude is not unique. But approx imately 10 years ago, by chance, someone suggested that I run for bar governor. It sounded interesting, so I ran…and lost. I was disappointed but the seed had been planted and in the next election cycle, I ran again. I’m not sure what I expected from being a bar governor. Honestly, I figured that I would be treated as a “red-headed stepchild” because I was from Eastern Kentucky and would hate it. What I found was something quite different. I found a group of welcom ing attorneys who care very much about the lawyers of this Commonwealth, who always come to meetings well-prepared and ded icated to serving. As bar governors rotate off and newly elected bar governors join,

that consistent caring attitude and dedica tion never wavers. Each of these wonderful people are now great friends and I respect and admire each of them for their service. I found a staff who works very hard and very efficiently to make things run smoothly. There is always something in the works at the KBA to support its members. The KBA is run by the kindest, brightest, and most well-meaning people I have ever encoun tered, and the lawyers of Kentucky are lucky to have them in their corner. Serving as bar governor was also an educa tion into the work the KBA performs and programs it offers to support Kentucky attorneys. I have had the privilege of seeing the dedication of Kentucky Lawyer Assis tance Program and the substantial support available for those attorneys dealing with mental health and substance issues. I am proud of the work the KBA has done to pro vide a resource to obtain health insurance at competitive rates. Likewise, the efforts of the Continuing Legal Education staff to ensure quality programming at convention and the Kentucky Law Updates are impres sive. The provision of free legal software to all Kentucky attorneys is an amazing resource to every attorney. There are many more programs (check the website!) but these are the highlights of the services the KBA provides.

I did not want others to wait as long as I did to know about the benefits of the KBA and I want them to be used to their fullest extent. As my year as president came nearer, it became clear that my platform would be to promote these benefits. I have traveled thousands of miles all over this state to try and deliver the message. The theme of this year’s annual convention “Of Service” is an extension of this effort. The logo this year is representative of the burden a lawyer shoulders in representing the client. It’s important to know that the KBA is there to help shoulder this responsibility with sup portive programs and assistance. On this, the final president’s page, I want to express gratitude for this experience and hope that I have accomplished my mission in some way. It certainly wasn’t for lack of trying. I look forward to passing the gavel to our next president but I know that the KBA hasn’t seen the last of me. There are still ways to serve. I am still passionate about the KBA’s mission so they’re kind of stuck with me. Let’s see what kind of trouble I can get into next. PS: For the record (and if you know me, you know), our executive director didn’t believe that I could make it through the KLUs, numerous speeches, and these president’s pages without cursing so I win.

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TERMS EXPIRE ON THE KBA BOARD OF GOVERNORS

On June 30 of each year, terms expire for seven (7) of the fourteen (14) Bar Governors on the KBA Board of Governors. SCR 3.080 provides that notice of the expiration of the terms of the Bar Governors shall be carried in the Bench & Bar. SCR 3.080 also provides that a Board member may serve three consecutive two-year terms. Requirements for being nominated to run for the Board of Governors are contained in Section 4 of the KBA By-Laws and the requirements include filing a written petition signed by not less than twenty (20) KBA members in good standing who are residents of the candidate’s Supreme Court District. Board policy provides that “No member of the Board of Governors or Inquiry Commission shall represent an attorney in a discipline matter.” In addition, any member of the Bar who is considering seeking or plans to seek election to the Board of Governors or to a position as an Officer of the KBA will, if elected, be required to sign a limited waiver of confidentiality regarding any private discipline he or she may have received. Any such petition must be received by the KBA Executive Director at the Kentucky Bar Center in Frankfort prior to the close of business on the last business day in October. PLEASE VISIT THE KBA WEBSITE AT WWW.KYBAR.ORG/PETITION TO OBTAIN A PETITION.

THE CURRENT TERMS OF THE FOLLOWING BOARD MEMBERS WILL EXPIRE ON JUNE 30, 2026:

2 ND DISTRICT RYAN C. REED BOWLING GREEN 4 TH DISTRICT SUSAN D. PHILLIPS LOUISVILLE 6 TH DISTRICT JENNIFER M. GATHERWRIGHT CRESCENT SPRINGS

1 ST DISTRICT JAMES A. SIGLER PADUCAH 3 RD DISTRICT DOUGLAS G. BENGE LONDON 5 TH DISTRICT AMELIA M. ADAMS LEXINGTON

7 TH DISTRICT W. MITCHELL HALL, JR. ASHLAND

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LAMBERT SWORN IN AS CHIEF

LAMBERT CHIEF JUSTICE FORMALLY SWORN IN AS HEAD OF KENTUCKY COURT SYSTEM BY JAMIE NEAL, ADMINISTRATIVE OFFICE OF THE COURTS

S urrounded by family, friends and dignitaries, Chief Justice of the Com monwealth Debra Hembree Lambert was ceremonially sworn in April 15 as the head of the Kentucky court system in the historic Supreme Court Courtroom at the Capitol. She recited the oath of office as her predecessor, Chief Justice Laurance B. Van Meter (ret.), swore her in. She is Kentucky’s seventh chief justice and first woman chief. Chief Justice Lambert reflected in her remarks on her upbringing in a small East ern Kentucky community, where her father owned a body shop and her mother was a nurse’s aide. She said her parents knew edu cation was the key to success and that she was led by their philosophy to “work hard, be joyful and be fearless.” “I shared with you a bit of who I am, and I wanted to bring that to you so you could see where my personal passion for people and justice developed,” she said. “When you grow up so modestly, you develop a strong sense of a need for a level playing field and for everyone to be heard. Those concepts are foundational in my worldview, and I hope you will be satisfied with my work per formed as chief justice. You are my people, and following the rule of law does give me joy and makes me fearless about what lies

ahead. I hope to serve you well. Thank you for your confidence in my humble service.” In addition to being the first female chief justice, Chief Justice Lambert is leading the first female-majority Supreme Court. “Being the first woman elected by my fellow justices as chief justice I suppose is notable, as we’ve all discussed today, and it’s especially nice to be a part of the first female-majority court,” Chief Justice Lam bert said during her remarks. She said she’d “never given much thought to gender.” “So I don’t think you can expect good or bad decisions that I might make as chief to be either clouded or enhanced by my double X chromosomes. They will simply be either good or bad decisions and carefully made, though.” Chief Justice Lambert provided an update on court system progress, including the Supreme Court’s upcoming move from the Capitol for construction, a new case man agement system vendor for the trial courts and Judicial Branch budget discussions with the Kentucky General Assembly.

Speakers at the investiture included Gov. Andy Beshear, Senate President Robert Stivers, House Speaker David W. Osborne, Circuit Judge Gregory A. Lay (Knox and Laurel counties) and her fellow justices. “I am honored to be here to recognize this historic moment for our commonwealth,” Gov. Beshear said. “The Kentucky Supreme Court holds a special responsibility of not just upholding the law but sometimes defin ing it, and to do so without bias or favor to any person or to any party. Unlike offi cials in the other branches of government, our Kentucky Supreme Court justices are elected through nonpartisan contests. Because of that, the job of a top court jus tice is to move our commonwealth not to the left or the right but forward for all of our citizens. As the highest legal authority in our state, the Kentucky Supreme Court ensures clarity, uniformity and fairness. Our high court justices and the many people who support their important work make up the backbone of our democracy – the rule of law. This is the foundation of a functional system of government, one that’s designed to serve the people and not merely the powerful. Today this crucial institution welcomes a new leader and makes some history.”

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audience that the chief justice is personally fun-loving and free-spirited with great taste in music. Chief Justice Lambert’s fellow justices elected her for a four-year term as chief jus tice that started in January. (The investiture was postponed until April due to winter weather.) The chief justice is the adminis trative head of the Judicial Branch and is responsible for its operation. Justice Shea Nickell said, “History will for ever remember your ascendency from the dark hollers and deep coal mines of Eastern Kentucky to the high bench of Kentucky’s Supreme Court and now as the first female as that appellate tribunal’s chief justice. Your life has been a happy celebration of your rich Eastern Kentucky roots and through your impressive accomplishments, you have honored the many sacrifices and hardships of that region’s people. The proud region shaped you into the person you have become and enabled you to reach beyond the boundaries of those hills and hollers to share your gifts and blessings by seeking greater justice for all peoples of this great commonwealth.” Chief Justice Lambert is an imposing, dis tinguished, knowledgeable and friendly colleague, Justice Nickell said. “Given her broad skills, qualities and per sonal character, I was not surprised when she ascended to her new role as chief justice of our judicial tribunal,” he said.

Chief Justice Lambert looks at her remarks after taking the bench as chief justice of the commonwealth April 15 in the Supreme Court Courtroom at the Capitol. She is the first woman chief justice in Kentucky and is leading the first female-majority court. Photo by Mark Cornelison The Supreme Court is the state court of last resort and the final interpreter of Ken tucky law. Seven justices sit on the Supreme Court and all seven justices rule on appeals that come before the court. The justices are elected from seven appellate districts and serve eight-year terms. A chief jus tice, chosen for a four-year term by fellow justices, is the administrative head of the state’s court system and is responsible for its operation. The Supreme Court may order a ruling or opinion to be published, which means that the ruling becomes the case law governing all similar cases in the future in Kentucky. Justice Angela McCormick Bisig said, “She’s been leading our court for the past four months. She brings a graciousness to our oral arguments. She has a great patience in the conference room for vibrant discussion and debate. I’m grateful to her today for ser vice and leadership in our commonwealth and look forward to continuing to work together.” CHIEF JUSTICE LAMBERT Chief Justice Lambert is the justice from the 25 counties of the 3 rd Supreme Court District. She was elected as a justice in November 2018 and was the first chair of the Kentucky Judicial Commission on Mental Health, a groundbreaking commis sion that focuses on improving the judicial response to cases involving mental health, substance use and intellectual disabilities. Justice Lambert was the first woman from the 3 rd Supreme Court District to serve on the Supreme Court and the first from the 3 rd Appellate District (same counties as 3 rd Supreme District) to serve on the Court of Appeals, where she was a judge for four years before being elected to the Supreme Court. She is also the first justice to have served as a Family Court judge. SUPREME COURT OF KENTUCKY

Stivers discussed the chief justice’s admin istrative responsibility as head of the court system and said he wished the new chief justice “wisdom, courage and Godspeed.” Osborne said, “Chief Lambert’s remark able career reflects a deep commitment to Kentucky values,” and “I look forward to the wisdom and the leadership that Chief Lambert will bring to our judiciary.” Lay, a longtime friend and colleague of Chief Justice Lambert, said she was of good character and had integrity and indepen dence. He made the motion for the Supreme Court to swear Chief Justice Lambert in. “I do believe that you will be an effective justice of the Supreme Court,” he said. “I believe you will serve with authority – not the type of authority that is derived from a title but the type of authority that is earned, and I believe that you will do it with grace and with elegance,” he said, telling the Chief Justice Debra Hembree Lambert (right) takes the oath of office from her predecessor, Chief Justice Laurance B. VanMeter, at her investiture April 15 in the Supreme Court Courtroom at the Capitol. Her son, John Lambert, holds the Bible. She is joined by stepdaughters (left to right) Chelsea Woolums and Jes sica Guffey, who hold her judicial robe, and husband Joe Sharpe (center) and daughter-in-law Taylor Lambert (far right). Photo by Mark Cornelison

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bench & bar

GOODWINE SWORN IN AS JUSTICE

FORMALLY SWORN IN AS SUPREME COURT JUSTICE APRIL 18 AT CAPITOL BY JAMIE NEAL, ADMINISTRATIVE OFFICE OF THE COURTS JUSTICE PAMELA R. GOODWINE

J ustice Pamela R. Goodwine was for mally sworn in April 18 as a justice of the Supreme Court of Kentucky during an investiture in the Supreme Court Courtroom at the state Capitol in Frank fort. Chief Justice Laurance B. VanMeter (ret.) administered the oath of office. Jus tice Goodwine makes history as the first Black woman to serve on Kentucky’s high est court, receiving two standing ovations at her swearing-in ceremony. Justice Goodwine, who said joining the Supreme Court was the realization of a 45-year dream, delivered her address to a full courtroom, reflecting on her life and sharing how she turned adversity into achievement and fulfilled her dreams. “I always say that I don’t give up on my dreams when life gets hard, I simply work harder to make my dreams come true,” she said. “If there is one philosophy and action I would like to be known for and for you all to recognize and live by as well, that is it. No matter what life brings your way, keep dreaming and keep working toward your goals.” She went on to say, “Our judiciary is entrusted with upholding the constitution and ensuring that the rights and freedoms of every individual are protected. Our legal system must remain vigilant in ensuring access to justice for all and continuing to serve as a pillar of our fairness and equity. It is my solemn duty to uphold these prin ciples, ensuring that every person who comes before our courts is met with dignity, impartiality and respect.”

Among the speakers at the investitures were Gov. Andy Beshear and attorney Barbara Edelman. “Kentucky can be proud and grateful that Justice Goodwine now brings the full wealth of experience to the highest court as a leader,” Gov. Beshear said. “We know that building a better commonwealth isn’t just about making a difference for our gen eration. It’s about making that difference for our kids and our grandkids and our great-grandkids, making sure that they can find opportunities and pursue their dreams right here in Kentucky and making sure they trust elected leaders to move this state forward, not right, not left, but forward.” Edelman, a longtime friend and mentor of Justice Goodwine’s, shared how the justice had persevered through being in foster care, needing 11 years to earn her undergradu ate degree and putting herself through law school. Edelman told the story of how the justice interviewed for a law clerk position, “And she sat down, and she said, ‘I want to work here, I’ve got a plan, my whole life has been dedicated to this. This is a place to start. I will work harder than anyone you can hire. I will do more than anybody that you’ve encountered. I really, really need this, want this. Trust me, I can do this job.” Edelman said Justice Goodwine shined at the firm: “So she comes in and sure enough she’s driven, she focused, she’s determined, she’s hardworking, she bills more time than anyone. She hits the road. She takes more depositions than anyone. She does every thing that’s asked and then some.”

Justice Goodwine’s fellow justices each gave remarks. Chief Justice Debra Hembree Lambert said that Justice Goodwine had found strength in her hardships. “The type of difficulty in life can certainly lead to a deeper understanding of oneself and give you a great perspective when you’re having to sit at the bench and make difficult decisions for others and for society,” Chief Justice Lambert said. Justice Angela McCormick Bisig said, “We don’t consider or discuss things like race and gender when we’re talking about a case, but for this court to do that very important work, it is best to have all lived experiences and points of view at the table. Because we can all strive to be compassionate and understanding, but we really can’t know what it’s like to be someone else and walk in their shoes. As is the case with the activities of all three branches of our government, we want the public to have confidence in the work that we do on behalf of our commu nities, in the knowledge that as we do that work, no one is left behind.” Justice Michelle M. Keller said, “Each time I walk into this building – its beauty, its his tory – I am reminded of both the beauty and the weight of history and that each one of us, no matter what our position, is just occupying that for a brief moment in his tory. But today, seating you on this court has forever altered the history of the Kentucky Court of Justice.”

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Justice Pamela R. Goodwine takes the oath of office from Chief Justice Laurance B. Van Meter (ret.) on April 18 in the Supreme Court Courtroom at the Capitol. She is joined by her husband, Lee A. Padgett Jr. (left), and great-grandson, Beckham Mourning (far right).

Photo by Mark Cornelison

JUSTICE GOODWINE Justice Goodwine serves the eight counties of Kentucky’s 5 th Supreme Court District. She was elected in November and began serving in January after six years on the Kentucky Court of Appeals, where she served as deputy chief judge. Her legal career began in 1979 as a legal secretary and court reporter. Today, she holds the distinction of being the first woman and the fifth person to serve at all four levels of Kentucky’s judiciary. SUPREME COURT OF KENTUCKY The Supreme Court is the state court of last resort and the final interpreter of Ken tucky law. Seven justices sit on the Supreme Court and all seven justices rule on appeals that come before the court. The justices are elected from seven appellate districts and serve eight-year terms. A chief jus tice, chosen for a four-year term by fellow justices, is the administrative head of the state’s court system and is responsible for its operation. The Supreme Court may order a ruling or opinion to be published, which means that the ruling becomes the case law governing all similar cases in the future in Kentucky.

654 Mission Feature

449 KENTUCKY CHILDREN as SECONDARY BENEFICIARIES

KENTUCKIANS SERVED

121 SURVIVORS of DOMESTIC VIOLENCE

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2025 DISTINGUISHED AW

CHIEF JUSTICE’S SPECIAL SERVICE AWARD

Senate President Robert Stivers manchester

Senator Brandon J. Storm london

Representative Daniel B. Elliott danville

Representative Patrick C. Flannery olive hill

Representative Jason M. Nemes louisville

Representative Jason K. Petrie elkton

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AWARDS TO BE PRESENTED AT THE ANNUAL BANQUET ON JUNE 5 IN LEXINGTON! WARD RECIPIENTS

Distinguished Lawyer Award Donald H. Combs (posthumously) pikeville

President’s Special Service Award Dean Judith Daar chase college of law highland heights

Distinguished Judge Award Judge Eddy Coleman pikeville

Bruce K. Davis Bar Service Award Judge Lucinda Masterton (Ret.) lexington

Donated Legal Services Award Rebecca Simpson bowling green

Thomas B. Spain Award Stephen E. Embry louisville

ADDITIONAL AWARDS ON THE NEXT PAGE

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2025

YOUNG LAWYERS DIVISION AWARDS AWARDS TO BE PRESENTED AT THE YLD LUNCHEON ON JUNE 5 IN LEXINGTON!

Young Lawyer Service to Community Award Seth T. Church lexington

Outstanding Young Lawyer Award Elizabeth A. Combs lexington

Service to Young Lawyers Award Yvette Hourigan lexington

Nathaniel R. Harper Award Chief Justice Debra Hembree Lambert somerset

Nathaniel R. Harper Award Justice Pamela R. Goodwine lexington

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THANK YOU TO OUR SPONSORS & EXHIBITORS!

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FEATURE: INTELLECTUAL PROPERTY

BASICS OF PATENT PROSECUTION BY CHRIS EMERSON

WHAT IS A PATENT? In plain English, a patent may be con sidered a temporary legal monopoly. 1 A patent may be granted for an invention, which is typically defined as a product or a process offering a new technical solution to a problem. 2 United States (US) patent laws are generally similar to those of for eign jurisdictions. However, there are many caveats and distinctions in US patent law relative to even the most similar of foreign jurisdictions. 3 This article will focus exclusively on United States’ (US) patent law, as those rules and regulations are likely to be most pertinent to Kentucky residents and practitioners. This article will also focus on “patent prosecu tion,” which is the process of filing a patent application and trying to get it issued into a patent by working with the United States Patent and Trademark Office (USPTO). This is in contrast to “patent litigation,” which typically occurs after a patent has been issued and when there is an alleged infringer ( e.g. , someone allegedly illegally encroaching on the coverage of a patent). Patent prosecution is an exclusively fed eral law practice and relies on many facets of federal administrative laws due to the abundance of interaction with the USPTO, a federal agency. Patents grant negative rights, that is, the rights to exclude others from doing

are primarily prosecuted, granted, and stored electronically, though the USPTO still offers certified printed copies. 5 The market value of a patent transcends the physical or electronic medium that it is exhibited on. Rather, the market value of a patent is derived from the exclusionary rights it bestows. 6 By holding those exclu sionary rights, a patent owner may regulate competition in a given market, monopo lize a product and/or service for exclusive production and/or sale themselves, and/or license a patent right to another in exchange for consideration. Patent rights may be exchanged for an inexhaustible list of pos sible assets such as money, royalties from sales from products utilizing the patent right, and even equity in a company formed to market the products derived from the patent’s coverage. BASIC REQUIREMENTS FOR A PATENT A patent may be granted for the creation of something novel, 7 non-obvious, 8 useful, 9 enabled, 10 and patent eligible. 11 Patents protect the work product of humans and not the work generated solely by a com puter. For example, something designed solely by artificial intelligence (AI) would not be an eligible creation to be protected by the patent process. 12 “Novel” is generally appreciated to be dif ferent over what is known to the public as

something, such as manufacturing, sell ing, using, etc., an invention in the United States. Patents do not grant positive rights to make, sell, use, etc., an invention in the United States. 4 Put another way, an applicant could be granted a patent on an invention, but may not be able to manufac ture, sell, and/or use the invention without prior authorization from other regulatory authorities, for example the Nuclear Reg ulatory Commission for the invention of an innovation to a nuclear reactor. This is possible because prototypes of inventions are not necessary to obtain a patent. For instance, someone could design a unique firearm on paper and get a patent for it prior to getting permits and licenses to actually manufacture, sell, and/or use the patented firearm. So, to reiterate, such a patent would only grant the patent owner rights to exclude others from making, sell ing, etc., the patented firearm. The patent itself would in no way alleviate the need for the patent owner to get any and all licenses and permits necessary to legally manufac ture, sell, use, etc., a patented invention. Consequently, many patents are issued for inventions that never materialize beyond the patent prosecution stage, as navigating regulatory and/or marketing challenges may render full-scale manufacturing of an innovation to be cost-prohibitive even with an issued patent. Historically, patents were printed on a tan gible medium, paper. Nowadays patents

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disclosed in a single reference. For example, if a single disclosure (“D1”) discloses each and every feature of an invention, then the invention is not novel. “Non-obvious” is generally appreciated to be different over what is known to the public as disclosed by multiple references in view of each other. For example, if multiple references (“D1” and “D2”) disclose each and every feature of an invention, then that invention is obvious. “Useful” can generally be demonstrated by showing how an innovation accomplishes something, e.g., the invention’s “use.” For example, if an inventor engineers a unique speck of dust that is subjectively appealing to the inventor, but objectively has no prac tical use, then that invention is not useful. “Enablement” may be demonstrated if a person having ordinary skill in the art (a “PHOSITA”) could review the disclosure in a patent and replicate the disclosed inven tion without undue experimentation. 13 For example, if an inventor contemplates an inter-stellar UFO, but cannot disclose the mechanisms such that a PHOSITA could build and use the invention, then it lacks enablement. “Patent eligible subject matter” is defined by many statutes, rules, and cases, and it is more efficient to discuss subject matter that is not eligible for patent protection than the greater range that is eligible for patent pro tection. Mathematical equations, methods of organizing human activity, and mental processes are examples of subject matter that are ineligible for patent protection. 14 As a practical example, software-related patent applications are notorious for being rejected on the basis of claiming steps which are arguably performable by a human mind ( e.g. , processing millions of computations) without doing significantly more and/or without having a technical benefit, e.g. , rendering the claim ineligible for encom passing a mental process. 15 As one might expect, these issues are frequently contested by patent prosecution attorneys and exam iners during the patent prosecution process. FILING A PATENT Filing an application for a patent may be done by a patent attorney or pro se by an

applicant. 16 Patent applications are dense legal documents requiring many hours of technical drawing, writing, researching, and citing. Thus, many people choose to hire a patent attorney with expertise in their preparation in order to prosecute patent applications. 17 Patent attorneys are uniquely qualified to prosecute patents. They must sit for and pass a rigorous exam - the United States Patent and Trademark Office (USPTO) Registration Examination (the “patent bar”). 18 Upon passing the “patent bar,” an attorney becomes federally registered with the USPTO and can practice patent matters before it. Notably, patent agents also exist, who have very similar qualifications as a patent attorney (such as passing the patent bar), but do not possess a state law license. Examination of a Filed Patent Application After filing an application, the USPTO will assign an examiner to review the application and look for deficiencies. 19 An examiner will do their best to ensure that an appli cation enables a PHOSITA to practice an invention. An examiner will also do their best to ensure that an application is related to patent-eligible subject matter. But per haps most importantly, an examiner will do their best to ensure that an application is, in fact, novel and non-obvious. Examiners serve other roles, but these duties sum up their primary function- to “serve as a judge on patentability with respect to inventions claimed in a patent application under con ditions for patentability set forth in Title 35 of the United States Code.” 20 During the Examination phase, a patent attorney (or agent, or pro se inventor) typ ically corresponds with an examiner to address alleged defects, and/or to accept an indication of allowable subject matter. Typically – though not always - an exam iner will have an initial rejection (aka, a “non-final rejection) of the originally-filed application. This rejection may indicate errors such as typos, illustrative defects, lack of enablement, and/or proximity of prior art. Prior art can be one or more publicly available documents that the examiner cites as disclosing the features claimed in the patent application that existed before the application’s filing date. This prior art would indicate a lack of novelty or lack of

non-obviousness relative to the pending patent application. An attorney is permit ted to reply to this rejection in an attempt to rectify alleged deficiencies and expedite prosecution. The examiner has wide discre tion to flag and/or suggest allowable subject matter at various stages of prosecution which could obviate the need for additional rejections and/or responses. If an examiner deems the reply to the non-final rejection to be insufficient for any reason ( e.g. , it did not rectify previ ously presented issues, it presents new and/or additional issues, etc.) the examiner may follow-up with a subsequent rejec tion known as a “final rejection.” Despite the nomenclature, an attorney or pro se applicant may reply in a similar fashion to the reply to a non-final rejection. Both non-final rejections and final rejections are referred to as “office actions.” Based on the reply to the final rejection, the examiner may provide an “advisory action” indicating that the application is allowed or indicating that additional pros ecution is necessary. 21 If the advisory action indicates that the application is allowed, that is typically the end of prosecution. Some post-allowance amendments may be entered to clear up clerical issues that might have occurred along the way. If the advisory action indicates that the application is not allowed, then it is typically a business deci sion for the applicant whether to abandon the application, or to pay additional fees for continued examination. The payment of additional fees allows the USPTO examiner to engage in further examinations of two more replies by the patent attorney or pro se applicant, and to provide for two more office actions to move the patent application toward allowance. 22 There are two primary outcomes from the examination phase – allowance or abandonment. 23 Abandonment occurs if an applicant, for various intentional or unintentional reasons, fails to appropriately reply to a notification from the USPTO. If aban donment occurs, the applicant does not ALLOWANCE AND ABANDONMENT

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FEATURE: INTELLECTUAL PROPERTY

POST-ISSUANCE PATENT INVALIDATION Many non-patent practitioners and pro spective patent holders may be surprised to learn that patents can be partially or wholly invalidated after issuance. 29 After all that time (and money) spent during prosecu tion, a patent may still be invalidated by the Patent Trial and Appeal Board (PTAB)30 and/or a court. 31 There are a few different ways in which a patent may be invalidated post-issuance, but frequently competitors of a patent holder (or alleged infringers of a patent) will file administrative proceed ings in an attempt to invalidate a patent on grounds that allegedly should have been raised during initial prosecution. 32 Common grounds for an attempted inval idation include the omission of prior art, 33 the examiner’s failure to appropriately assess and apply the prior art which was cited in the application, 34 and lack of enablement. 35

POST-ISSUANCE PATENT USAGE

receive a patent. Abandonment may also occur post-issuance of a patent, e.g. , if the applicant fails to pay maintenance fees. Maintenance fees are payable three, seven and 11 years after grant to keep the patent active and enforceable. 24 In some sce narios, an abandoned application may be revived if certain actions (often costly and time-barred) are taken: however, revival of abandoned applications is usually discre tionary for the USPTO. 25 Allowance occurs at the discretion of an examiner, and only with an allowance may an application mature into a patent. An examiner has wide discretion for granting an allowance. Put another way, there is no requirement for an examiner to issue a spe cific quantity of rejections, objections, or allowances in a given office action. How ever, an applicant may petition 26 or appeal 27 an office action if the applicant believes that one or more aspects of any office action is of insufficient quality. 28

In late 2017, Forbes indicated that “[a]round 97% of all patents never recoup[ed] (for the patent holder) the cost of filing.” 36 A patent is only as valuable as someone considers it to be, and a patent covering an innovation that is never sought to be produced or sold may have prosecution costs exceeding its’ monetary value. That being said, many entities – people, corporations, etc. - have become very wealthy from patents. 37 A patent holder may exchange licensing rights for compensation ( e.g. , allow an entity to manufacture and sell the patented product in exchange for a lump sum or a portion of each unit sold). A patent holder may also assert the patent in an infringement law suit ( e.g. , sue an entity that does not hold the patent rights for the damages due to lost profits). To complicate things further, patent rights may become valuable at var ious times. For example, an invention that is ahead of the curve, but otherwise game changing, may be more valuable five years

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ABOUT THE AUTHOR CHRIS EMERSON works on intellectual property (IP) legal solutions for clients in various technology sectors, including artificial intelligence (AI), electrical, electro-mechanical, and software sectors. Emerson has experience drafting and prose cuting patents, drafting and responding to USPTO office actions, and advising clients on IP strategies and risks.

down the road rather than immediately upon issuance. Some examples of how patents may be used short of a sale include licensing the rights of the patent to another, suing an entity based on alleged infringement, and boost ing a company’s portfolio by marketing the patent itself. A patent holder may license the rights of a patent to an entity wishing to use the patented coverage without risk ing infringement proceedings. In many instances, patent rights may be licensed in exchange for royalties corresponding to each unit manufactured or sold, or in exchange for flat fees. Additionally, patent rights may be cross-licensed in the event that a patent holder and an alternative patent holder both want to manufacture something that includes features of the respective other’s patent. Infringement suits may yield impressive damages, including reasonable royalties and lost profits. 38 In some cases, if an infringer is aware of a patent through either actual or construc tive notice 39 but chooses to go ahead with production and/or sale anyways, a patent holder may even receive treble damages. 40 Infringement suits may also yield equitable damages, such as injunctions. Patents may also serve to buffer a company’s portfolio. For example, patents may be used as negotiating chips for mergers and acqui sitions. Many companies have intellectual property portfolios with monetary worth exceeding some of their real property val uations. 41 Put another way, an abundance of valuable patent rights may compensate for a lack of physical assets. Patents are not a one-size-fits-all form of intellectual property protection for the inventor. This is a complex and ever devel oping area of law. The USPTO maintains a website for inventors and entrepreneurs which provides access to a host of unique resources and assistance for Kentucky resi dents. 42 Questions about patent prosecution, litigation, and/or portfolio management should be addressed to knowledgeable local patent practitioners. Nothing in this article constitutes legal advice.

ENDNOTES 1 David R. Henderson, Patents , Library of Economics and Liberty, https://www.econlib.org/library/ Enc1/Patents.html. 2 Patents, WIPO, https://www.wipo.int/patents/en/. 3 Id. 4 Richard H. Shear & Thomas E. Kelley. A researcher’s guide to patents. Plant physiology, 132(3): 1127–1130. (2003). https://doi.org/10.1104/pp.103.022301. 5 https://www.uspto.gov/about-us/news-updates/uspto-ushers-new-era-introduction-electronic-pat ent-grants. 6 Alexander Ljungqvist, What Is a Patent Worth? Evidence from the U.S. Patent “Lottery” , CATO Institute, https://www.cato.org/research-briefs-economic-policy/what-patent-worth-evidence-us-patent-lottery#. 7 35 U.S. Code § 102 - Conditions for patentability; novelty. 8 35 U.S. Code § 103 - Conditions for patentability; non-obvious subject matter. 9 35 U.S. Code § 101 - Inventions patentable. 10 35 U.S. Code § 112 - Specification. 11 MPEP 2106 (e9 r10. 2019). 12 https://www.reuters.com/legal/us-supreme-court-rejects-computer-scientists-lawsuit-over-ai-generat ed-2023-04-24/ 13 Gordon K. Hill and A. John (Jack) Pate, Avoiding Confusion of PHOSITA, AIPLA, https://www.aipla.org/ list/innovate-articles/avoiding-confusion-of-phosita. 16 Patent Process Overview: Step 2 , USPTO, https://www.uspto.gov/patents/basics/patent-process-overview. 17 Dennis Crouch, Grant Rate by Size and Representation, Patentlyo , https://patentlyo.com/patent/2021/04/ grant-rate-by-size-and-representation.html. “[O]ver 99% of patent applicants were represented by a US patent practitioner.” 18 Becoming a patent practitioner , USPTO, https://www.uspto.gov/learning-and-resources/patent-and-trade mark-practitioners/becoming-patent-practitioner. 19 Patent Process Overview: Step 3 , USPTO, https://www.uspto.gov/patents/basics/patent-process-overview. 20 Sue A. Purvis, The role of the Patent Examiner, USPTO, https://www.uspto.gov/sites/default/files/about/ offices/ous/04082013_StonyBrookU.pdf. 21 MPEP 710.02(e) Extension of Time (e9 r1. 2024). 22 MPEP 706.07(h) Request for Continued Examination (RCE) Practice (e9 r1. 2024). 23 Patent Process Overview: Step 3, USPTO. 24 35 U.S. Code § 41 - Patent fees; patent and trademark search systems. 25 MPEP 711.03 Reconsideration of Holding of Abandonment; Revival (e9 r8. 2012). 26 MPEP 1002 Petitions to the Director of the USPTO (e9 r7. 2022). 27 MPEP 1204 Notice of Appeal (e9 r1. 2024). 32 Inter Partes Review, USPTO, https://www.uspto.gov/patents/ptab/trials/inter-partes-review. 33 Inter Partes Review, USPTO, https://www.uspto.gov/patents/ptab/trials/inter-partes-review. 34 Inter Partes Review, USPTO, https://www.uspto.gov/patents/ptab/trials/inter-partes-review. 35 MPEP 2258 Scope of Ex Parte Reexamination (e9 r10. 2019). 36 Stephen Key, In Today’s Market, Do Patents Even Matter? Forbes, https://www.forbes.com/sites/stephen key/2017/11/13/in-todays-market-do-patents-even-matter/?sh=29cd771a56f3. 37 The high value of U.S. patents, ShareAmerica, https://share.america.gov/high-value-of-us-patents/. “Pat entVector has found 65 inventors are responsible for patents worth at least $1 billion.” 38 35 U.S. Code § 284 – Damages. 39 Mark Supko and Siri Rao, Should the Federal Circuit’s “Actual Notice” Test for Pre suit Patent Damages Be on the Supreme Court’s Chopping Block? , ABA, https://www.americanbar.org/groups/intellectual_proper ty_law/publications/landslide/2020-21/september-october/should-federal-circuit-s-actual-notice-test-for presuit-patent-damages-be-on-supreme-court-s-chopping-block/. 40 Id. 41 Will Kenton, What Is Intellectual Property, and What Are Some Types? , Investopedia, https://www.investo pedia.com/terms/i/intellectualproperty.asp. “Although it’s an intangible asset, intellectual property can be far more valuable than a company’s physical assets.” 42 Kentucky , USPTO, https://www.uspto.gov/learning-and-resources/inventors-entrepreneurs/kentucky. 14 MPEP 2106 Patent Subject Matter Eligibility (e9 r10. 2019). 15 MPEP 2106 Patent Subject Matter Eligibility (e9 r10. 2019). 28 MPEP 1308.03 Quality Review for Examined Patent Applications (e9 r1. 2024). 29 MPEP 2286 Ex Parte Reexamination and Litigation Proceedings (e9 r10. 2019). 30 MPEP 1214 Procedure Following Decision by Board (e9 r7. 2022). 31 MPEP 2286 Ex Parte Reexamination and Litigation Proceedings (e9 r10. 2019).

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