Bench & Bar May/June 2025

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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