When PTO receives a patent application, it assigns it to a team of patent examiners with relevant technology expertise. PTO does not begin examining patent applications upon receiving them and PTO’s data shows that, as of June 2013, the average time between filing and an examiner’s initial decision on the application was about 18 months. On average, it takes 30 months for PTO to issue a patent once an application is submitted. The focus of patent examination is determining whether the patent application satisfies the statutory requirements for a patent, including: (1) novelty, (2) nonobviousness, (3) utility, and (4) patentable subject Generally, other patents, publications, and publicly disclosed but matter. unpatented inventions that pre-date the patent application’s filing date are known as prior art. During patent examination, the examiner, among other things, compares an application’s claims to the prior art to determine whether the claimed invention is novel and nonobvious. The examiner then decides to reject or grant the claims in the application and deny the application or grant a patent. U.S. patents include the specification and the claims: The specification is a written description of the invention that, among other things, sufficiently discloses the invention and the manner and process of making and using it. The specification must be written in full, clear, concise, and exact terms so as to enable any person skilled in the art to make and use the invention. As an example, an excerpt from the specification for a cardboard coffee cup and insulator invention describes “corrugated containers and container holders which can be made from existing cellulosic materials, such as paper.” The claims define the scope of the invention for which protection is granted and must be definite. There are often a dozen or more claims per patent, and they can often be difficult for a layperson to understand, according to legal commentators. For example, one claim for the cardboard coffee cup insulator begins by referring to “a recyclable, insulating beverage container holder, comprising a corrugated tubular member comprising cellulosic material and at least a first opening therein for receiving and retaining a beverage container.” A patent’s claims can be written broadly or be more narrowly defined, according to legal commentators, and applicants can change the wording of claims—which can affect their scope— during examination based on examiner feedback. Patents are a property right and—like land—their claims define their boundaries. When a property right is not clearly defined, it can lead to boundary disputes, although to some extent uncertainty is inherent. Consequently, legal commentators define high-quality patents as those whose claims clearly define and provide clear notice of their boundaries. Once issued by PTO, a patent is presumed to be valid. However, the patentability of its claims can be challenged in administrative proceedings before PTO or its Patent Trial and Appeal Board and its validity can be challenged in federal court. For example, the AIA established three new administrative proceedings for entities to challenge the patentability of a patent’s claims: Inter partes review.patent owner to request review of an issued patent by presenting prior art to PTO—either patents or other publications—to challenge the claimed invention’s patentability as obvious or not novel. This review proceeding became available on September 16, 2012, 1 year after the enactment of the AIA, but entities cannot request this review until the This proceeding allows anyone who is not the later of (1) 9 months after a patent is granted or (2) completion of post-grant review, if such a proceeding is held. Post-grant review. This proceeding allows anyone who is not the patent owner to request a review of an issued patent that challenges at least one of the claims’ patentability in more circumstances than inter partes review—such as the invention not being useful—and not solely based on prior art. This proceeding is available for patents issued from patent applications with a filing date of March 16, 2013, or later and requests must be filed within 9 months of the patent’s issuance. Transitional program for covered business method patents. This proceeding allows anyone who is sued or charged with infringing a covered business method patent to request a review of the patent to challenge a claim’s patentability in generally the same circumstances as post-grant review. This review proceeding became available on September 16, 2012, and requests must be filed within 9 months of the patent’s issuance. In addition, a patent’s validity can be challenged in the 94 federal district courts throughout the country by, for example, presenting additional prior art that PTO may have been unaware of when it granted the patent. Challenges to a patent’s validity are often brought by an accused infringer Patent owners can bring who has been sued for infringing the patent. infringement lawsuits against anyone who uses, makes, sells, offers to sell, or imports the patented invention without authorization because a patent is a right to exclude others from practicing the invention. Exactly what a patent covers and whether another product infringes the patent’s claims are rarely easy questions to resolve in litigation, according to legal commentators. As noted, appeals of district court decisions in infringement cases are heard in the U.S. Court of Appeals for the Federal Circuit in Washington D.C. In patent infringement lawsuits, the accused infringer often challenges the patent’s validity as an “affirmative defense,” meaning that even if the infringement allegations are true, the would-be infringer is not liable because the patent is invalid. A party accused of infringement can also file a lawsuit to obtain a court decision on whether they are infringing or whether the patent is valid, which is known as a declaratory judgment action. If a patent infringement lawsuit is not dismissed in the initial stages, it proceeds to discovery (a process that exists in all federal civil litigation) and claim construction. Discovery requires the accused infringer to produce documents or other information that shows, among other things, how the allegedly infringing product is made and operates to help the patent owner establish infringement. Similarly, the patent owner must produce documents or other information that the accused infringer can use to challenge the patent’s validity, among other things. However, parties that do not offer products or services using the patents at issue often have far fewer documents to disclose—because they do not have any documents related to their products or services—than patent owners or accused infringers who do offer products or services. With this information the patent owner specifies which patent claims allegedly are infringed and the alleged infringer responds by explaining why the allegedly infringing product is not covered by the patent’s claims. This identifies the patent claims the court needs to interpret. Known as claim construction, this is a fundamental issue in patent cases, and each party tries to persuade the court to interpret the patent claims in its favor. The court has broad discretion in how it goes about this process, which can involve a hearing with testimony from witnesses, according to legal In addition, if the patent’s validity is being challenged, commentators. the alleged infringer specifies why the patent allegedly is not valid, including any prior art. This hearing is often referred to as a Markman hearing after the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). for the infringement that are at least what a reasonable royalty would be for the use made of the invention by the infringer. In addition to being enforced in the federal courts, patents can also be enforced at ITC, which handles investigations into allegations of certain unfair practices in import trade. Specifically, certain patent owners can file a complaint with ITC if imported goods infringe their patent or are made by a process covered by the patent’s claims. If ITC determines after an investigation that an imported good infringes a patent, the agency can issue an exclusion order barring the products at issue from entry into the United States, which the President can disapprove for policy reasons. ITC decisions can be appealed to the U.S. Court of Appeals for the Federal Circuit. Legal commentators have reported that a 2006 Supreme Court decision led to increased complaints alleging imported goods infringed U.S. patents being filed with ITC, and recent ITC data show that the number of investigations instituted by ITC increased from 32 in 2006 to 37 in 2012. According to PTO data, applications for all types of patents have increased in recent years, and patents granted for software-related technologies have seen dramatic increases over the past 2 decades (see fig. 1). Software-related patents occur in a variety of technologies containing at least some element of software, and cover things like sending messages or conducting business over the Internet (e.g. e- commerce). Patents related to software can, but do not generally, detail computer software programming code in the specification, but often provide a more general description of the invention, which can be programmed in a variety of ways. According to legal commentators, the number of software-related patents grew as computers were integrated into a greater expanse of everyday products. By 2011 patents related to software made up more than half of all issued patents. Software was not always patentable, and Supreme Court decisions in the 1970s found mathematical formulas used by computers were not patentable subject matter. However, a 1981 Supreme Court decision overturned PTO’s denial of a patent application for a mathematical formula and a programmed digital computer because, as a process, it was patentable subject matter. Subsequently, in 1998, the Federal Circuit ruled that a mathematical formula in the form of a computer program is patentable if it is applied in a useful way. According to PTO officials, the agency interpreted these cases as limiting their ability to reject patent applications for computer processes.