Author: Austen Zuege

How Can I Calculate Patent Term?

Post author By Austen Zuege

Patents have a maximum term and cannot be renewed. This is part of the quid pro quo underlying modern patent law. The patentee gets exclusive rights for a limited time but then the technology disclosed in expired patents can be freely used by the public (in at least the jurisdiction that issued the patent). Knowing how to calculate patent term is therefore important in order to determine when a given patent has expired. But, for better or worse, the term of any given patent can vary. There is no single fixed term for all U.S. patents. And the applicable term is not always apparent on the face of a given patent. So how is patent term calculated for U.S. patents?

USPTO Patent Term Calculator

One of the simplest and most practical ways to determine the term of a given U.S. patent is to utilize a patent term calculator provided by the U.S. Patent & Trademark Office (USPTO). Using this downloadable spreadsheet requires inputting certain information about a given patent. Only some of the necessary information appears printed on a granted patent. Other information must be researched in USPTO records, mainly through Patent Center.

The advantage of the USPTO’s patent term calculator is that it can be used by anyone, even people who do not understand the applicable patent laws. However, it still requires ascertaining the correct information to enter in the spreadsheet. That requires knowing where to find such information. The patent term calculator also requires a level of confidence that the correct information is being entered. That is, it still requires knowing some of the terminology so that correct, relevant information is entered.

Read on for more information about the sorts of information relevant to proper patent term calculations.

Relevant Factors

What follows is a more detailed explanation of factors that determine the enforceable term of a given patent. These factors include factors that influence how to calculate a given patent’s term, as well as things that might cut short the enforceable term of a given patent. In any given instance, consulting with a knowledgeable patent attorney is recommend to determine the correct term of any given U.S. patent.

Type of Patent

Paten term first of all depends on the type of patent involved.

U.S. utility and plant patents have a basic term of 20 years from the relevant filing date (35 U.S.C. § 154)—there being some nuance about which filing date is used here.

timeline graphic of basic 20-year patent term — Timeline Showing Basic Patent Term for U.S. Utility and Plant Patents (Including PCT National Phase Entries)

A priority claim to a foreign patent application (stemming from the Paris Convention or a PCT application that did not designate the USA) or to a prior U.S. provisional patent application does not count against the term (35 U.S.C. § 154(a)(3)). This means a foreign priority or prior provisional filing can effectively extend patent term.

timeline graphic for basic patent term involving provisional or foreign priority — Timeline Showing Basic Patent Term for U.S. Utility and Plant Patents Based on a Prior U.S. Provisional or Foreign Priority Application

For regular PCT national phase entries to the USA, the PCT international filing date is used for term calculation (not the date of later U.S. national phase entry). That is, a PCT international application designating the United States is treated as a U.S. application (see 35 U.S.C. §§ 372 and 375), with the national phase being just a different phase of the same application. So an ordinary national phase entry into the United States does not, by itself, involve a “priority” claim–although there may additionally be a priority claim involved.

The so-called domestic benefit of a prior U.S. non-provisional application (that is, for a continuation, continuation-in-part, or divisional application under 35 U.S.C. §§ 120, 121, 365(c), or 386(c), including PCT “bypass” applications) does count against patent term, so the term calculation should be based on the earliest such prior filing date. In other words, continuing applications that have priority/domestic benefit of a prior U.S. non-provisional application will have a reduced patent term. The related U.S. application data field (INID code 63) on the face of a patent, if present, can indicate an earlier filing date that may impact term.

timeline graphic of basic patent term involving domestic benefit claim in continuing application — Timeline Showing Basic Patent Term for Continuing U.S. Utility and Plant Patents Based on a Prior Domestic U.S. Application (Including PCT “Bypass” Applications)

Excerpt of U.S. Pat. No. 11,102,682 showing: "Related U.S. Application Data (63) Continuation of application No. 15/090,600, filed on Apr. 4, 2016, now Pat. No. 10,667,181" — Example of INID code 63 “Related U.S. Application Data” field on front page of U.S. Pat. No. 11,102,682, showing earliest filing date for patent term calculation of a continuing application

In contrast, U.S. design patents currently have a fixed basic term of 15-years from the date of grant (35 U.S.C. § 173). The filing date issues referenced above do not impact design patent term. This means that continuing design patents can potentially have later expiration dates, unlike with utility and plant patents.

timeline graphic of design patent term — Timeline Showing Basic Patent Term for U.S. Design Patents

Reissue patents are possible “for the unexpired part of the term of the original patent.” (35 U.S.C. § 251). This means that a reissue patent’s term is no longer than the term of the original patent, as subject to any extension or adjustment. It is possible that a reissue patent’s term could be shorter than that of the original patent (see discussion of terminal disclaimers below). But reissue does not lengthen patent term.

Filing Date and Changes in the Law

The laws around patent term have changed over time. Some patents applied for or granted prior to those changes in the law may be subject to a different term.

U.S. utility and plant patents applications filed before June 8, 1995 can have a term of 17 years from the date or grant rather than from the earliest applicable filing date. Any patent that was in force on June 8, 1995 will have a term that is the greater of the 20-year term as discussed above or 17 years from grant (35 U.S.C. § 154(c)).

For U.S. design patents, those issued from design applications filed before May 13, 2015 have a 14-year term from the date of grant (rather than 15-years from grant).

Of course, there may be future changes in the law that affect patent term calculations. And courts may issue decisions that affect the interpretation of laws that impact patent term calculations.

Patent Term Adjustment

Certain delays in examination can lead to an adjustment of patent term for a given original patent (but not for a reissue). This is called patent term adjustment (PTA) under 35 U.S.C. § 154(b). Normally, this PTA is calculated as the number of days beyond the basic 20-year term that the patent can remain in force. The PTA period normally appears on the face of each granted patent—typically in a “Notice” field denoted with an asterisk (*). The USPTO’s Patent Center portal also has a menu tab showing detailed PTA calculations for a given patent. However, it is possible for a patentee to challenge the USPTO’s PTA calculation in some circumstances, meaning the PTA period might be corrected later. PTA does not apply to design patents.

Excerpt of U.S. Pat. No. 10,000,000 showing: "(*) Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.C. 154(b) by 430 days." — Example of PTA notice on front page of U.S. Pat. No. 10,000,000, showing 430 days of additional patent term

Patent Term Extension

Patentees can potentially obtain patent term extension (PTE) under 35 U.S.C. § 156 based upon premarket regulatory review of certain human drugs, food or color additives, medical devices, animal drugs, and veterinary biological products. This restores some term lost while awaiting premarket government approval from a regulatory agency. An application for PTE must be submitted within sixty (60) days of when permission for commercial marketing or use occurred. Patentees have to affirmatively apply for PTE, which is not automatically granted. Also, PTE is only possible for patents on certain types of subject matter; it does not apply to design or plant patents. § 156 PTE is not indicated on granted patents and must be researched in USPTO records, mainly through Patent Center.

Disclaimers

A given patent may be subject to a disclaimer (35 U.S.C. § 253). The two types of disclaimers are a terminal disclaimer or a statutory disclaimer.

In a terminal disclaimer, the patentee disclaims or dedicates to the public a portion of the term of a given patent. That is, the term of the patent is shortened from what it might otherwise be. Terminal disclaimers are frequently used to overcome double patenting, by disclaiming the period of patent term (if any) that would extend beyond that of one or more other patents. They are also used when design patent applications are revived after abandonment, disclaiming a period of patent term equal to the period of abandonment. Terminal disclaimers do not affect § 156 PTE, however.

Excerpt of U.S. Pat. No. 11,102,682 showing the notice: "This patent is subject to a terminal disclaimer" — Example of terminal disclaimer notice on front page of U.S. Pat. No. 11,102,682

Excerpt of terminal disclaimer filed against U.S. Pat. No. 11,102,682 — Excerpt from example terminal disclaimer filed against U.S. Pat. No. 11,102,682, disclaiming term beyond that of U.S. Pat. No. 10,667,181

The USPTO has sometimes, but not always, printed an indication that a given patent is subject to a terminal disclaimer on the front page of the patent. Terminal disclaimers can also arise after a patent has been granted. In any event, the duration (and possibly also the existence) of a terminal disclaimer must be researched in the prosecution history of the relevant patent in USPTO records. This can generally be done using the online Patent Center portal and viewing the “Documents & Transactions”. Although the calculation of the disclaimed period may require additional research and analysis. For instance, it may be necessary to calculate the term of one or more other patents or the period of applicant delay for a design patent.

For statutory disclaimers, one or more claims of a patent are effectively surrendered. This means that some claims may no longer be in force, even though other claims might.

Lapse or Expiration for Non-Payment of Maintenance Fees

In order to keep a given U.S. utility patent in force, periodic maintenance fees are required (35 U.S.C. § 41(b)). These are due by four, eight, and twelve years from the grant of the patent. However, there are no maintenance fees required for U.S. design patents or plant patents (37 C.F.R. § 1.362(b)).

If a maintenance fee is not paid on time, then the patent will lapse or expire. This means that a given utility patent might no longer be in force even though it has not yet reached its maximum possible term.

What makes lapses/expirations complicated is that the patentee may be able to reinstate (that is, revive) the patent if a maintenance fee payment deadline was missed unintentionally. This may give rise to intervening rights (35 U.S.C. § 41(c)(2)). So, significantly, the expiration or lapse of the U.S. patent due to a missed maintenance fee may not mean the final and absolute end of rights in that patent if late payment is accepted.

Terminology describing this lapses/expiration for non-payment of maintenance fees has varied. The USPTO currently tends to use “expiration” but “lapse” is a better term because it differentiates situations where revival is possible from those in which a patent’s term has expired permanently because it has reached its maximum limit.

Invalidation and Cancellation

Patents can be invalidated by courts or cancelled by the USPTO, usually as the result of a challenge by another entity. This can affect all or merely some claims of a patent. Such an adverse ruling (after exhaustion of all rights of appeal) can end or limit rights in the patent short of its maximum possible term. It is necessary to research the existence and status of such an adverse ruling, if any.

Withdrawn Patents

Lastly, some patent numbers have been withdrawn by the USPTO. These were essentially never really patents in the first place, for various reasons, and thus have no term. Although, to complicate matters, the USPTO has also reinstated some previously withdrawn patents.

Laws Vary by Jurisdiction

The discussion above pertains only to U.S. patents. In other countries, laws may differ regarding the calculation of patent term, the availability of supplementary protection certificates, and so on.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Tags Freedom-to-Operate (FTO) & Clearance, Patent Infringement, Patent Prosecution, Patents

Articles

Federal Circuit Columbia Decision Both Clarifies and Muddies the Proper Use of Comparison Prior Art

Post author By Austen Zuege

When can prior art be used to assess alleged infringement of a design patent? This has been an evolving area of U.S. patent law. The question matters because looking at only the asserted patent and the accused product might not allow an ordinary observer to understand the ways in which the patented design is similar (or dissimilar) from known designs. A recent court decision sheds some light on the issue while at the same time muddies the waters in light of past cases that reached seemingly different results.

When assessing design patent infringement, “when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art. . . .” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc). This is essentially a three-way visual comparison, in which differences “that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer . . . .” Id. This is not about validity/invalidity but rather about how prior art informs the comparison of the patented design and the accused product to determine if there is infringement or not.

A recent Federal Circuit decision addressed what sort of prior art can qualify as comparison art. In the second appeal in an ongoing dispute, a Federal Circuit panel held that “to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim.” Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., Nos. 2021-2299 and 2021-2338, Slip Op. at *21-23 (Fed Cir. Sept. 15, 2023) (“Columbia II“).

In reaching that conclusion, the Columbia II panel cited one Supreme Court case from the 1800s, plus Egyptian Goddess and further said that “[s]imilar examples abound”. But do they really? The Columbia decision cites only a single post-Egyptian Goddess precedential case that was not abrogated (ABC Corp. I v. P’ship & Unincorporated Ass’ns Identified on Schedule “A”, 52 F.4th 934 (Fed. Cir. 2022)), plus one non-precedential case (Wallace v. Ideavillage Prods. Corp., 640 F. App’x 970, 971, 975–76 (Fed. Cir. 2016) (nonprecedential)).

Two other case citations in Columbia II rely on portions of opinions (Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1318, 1324–25 (Fed. Cir. 2007) and Unidynamics Corp. v. Automatic Prods. Int’l, Ltd., 157 F.3d 1311, 1313, 1324 (Fed. Cir. 1998)) that dealt with the “point of novelty” analysis that was specifically overruled by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678-79 (Fed. Cir. 2008) (en banc). Columbia II’s citations do not include any identifications any portions of the cited cases that were abrograted, or otherwise explain why or how specific aspects of those point of novelty analyses were still valid and relevant—as was the case in Egyptian Goddess, there might still be similarities although the theoretical framework and thus the purpose of looking at the prior art is different.

Then in a lengthy footnote 8 the Columbia II panel attempts to explain away a prior precedential case that reached a seemingly contrary outcome, Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020). If an attorney submitted a brief written in such a manner, she would at a minimum probably be harshly scolded by the presiding judge(s), and at worst be sanctioned. But apparently this Federal Circuit panel (Judges Prost, Reyna, and Hughes) has no qualms about doing this themselves. It is possible to argue that the Columbia II decision, although designated as precedential by the panel, is actually non-precedential due to being in conflict with Lanard Toys. See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988) (when Fed. Cir. panel decisions are in conflict, the later one is non-precedential).

In any event, one issue that footnote 8 of Columbia II does not fully address is the question of comparison art when the claimed article is specifically a simulation, and to the extent that it does that footnote may not be controlling. MPEP § 1504.01(d) (9^th Ed., Rev. 07.2022, Feb. 2023) deals designs attempting to claim articles that are simulations of something else. The Columbia case does not specifically address In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965), which dealt with the use of something other than the same article as prior art to affirm a rejection of a claimed design. There, the claimed design was a “promotional advertising souvenir”, whereas one of the prior art references was a mere “representation of a conventionalized teardrop.” Id. at 982-83. In particular, the claimed design showed a teardrop shape article that was hollow with transparent walls, within which appears a planar member shown in dotted lines, on which advertising matter is to be placed, and additional prior art was cited for the proposition that display devices inside of hollow transparent containers were known—the fact that the interior components were in broken lines meant that their specific content carried no patentable weight. Id. at 983-84. Partly the issue raised here is whether Wise was—or could be—abrogated by In re Surgisil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021), which did not specifically address Wise or a “simulation”-based rejection, or other seemingly contrary precedent like In re Glavas, 230 F.2d 447, 450 (CCPA 1956) (“the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is. Accordingly, so far as anticipation by a single prior art disclosure is concerned, there can be no question as to nonanalogous art in design cases”). Surgisil overturned a patent office rejection premised on the title of the application not limiting the scope of the claim of a pending design application, where the applied-for design was titled a “lip implant” but the cited prior art having essentially an identical shape was for an artist’s “stump” blending/smudging tool. That result in Surgisil stands in contrast to both Glavas, which said use and non-analagous art issues are irrelevant to patentability of designs, and Wise, which cited a mere representation of a teardrop that was not, specifically, a “promotional advertising souvenir” as claimed.

Another way to look at this is to say that footnote 8 of Columbia II is mere dicta and not binding, because Columbia II did not deal with allegations that an asserted patented design was a “simulation”. From that perspective, the footnote 8 discussion about waiver of arguments can be disregarded (the very fact that this discussion was placed in a footnote rather than in the main text provides some support for viewing it as mere dicta). This is significant because the Columbia II panel could not overrule Lanard Toys, and neither the Columbia II panel nor the Surgisil panel could overrule Wise or Glavas. See South Corp. v. U.S., 690 F.2d 1368, 1369 (Fed. Cir. 1982) (“the holdings of . . . the United States Court of Customs and Patent Appeals, announced . . . before the close of business September 30, 1982, shall be binding as precedent in this court.”); Newell, 864 F.2d at 765.

The Columbia II panel argues that “using the same scope for anticipatory prior art and comparison prior art makes good practical sense.” This is asserted without addressing the (“wise”) reasoning of the Wise decision, which set out contrary practicalities when an asserted design is alleged to be a simulation. That is, Wise pointed out that a design may not be patentable if it merely simulates a known shape from another context, and a patentee cannot obtain exclusive rights by merely reproducing essentially generic representations—a concern that in many ways mirrors cases about utility patent eligibility where results are recited coupled with only generic or conventional computerization hardware. Cf., e.g., Elec. Power Group, LLC v. Alstom SA, 830 F.3d 1350 (Fed. Cir. 2016) (claims were patent-ineligible abstract ideas because they did not require “use of anything but entirely conventional, generic technology.”).

Other areas that remain somewhat unresolved pertain to partial claims, multi-part articles, and language reflecting intended use. For instance, if a design patent is for a “motorcycle with windscreen,” is prior art to a motorcycle alone (without a windscreen) available as comparison art, or prior art to a windscreen in isolation? Or a combination of both motorcycle and windshield comparison references? Does the answer depend at all on whether or not broken lines are used in the patent to make a partial claim? There a risk that design patents could gain inappropriate coverage over combinations of known (useful) elements in their functional capacity if and when the only available prior art shows merely some but not all of the components together in a single reference. And what about mere intended use language in the title of the patent? If the claim is to a “cat toy” and the prior art was expressly marketed as a “dog toy”, can the dog toy be used as comparison art, when both cats and dogs could actually play with either toy? Both instances involve a toy (and an animal toy no less), and differ only in the intended use by a different animal. There is older precedent stating that “the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is.” Glavas, 230 F.2d at 450.

These sorts of questions put added emphasis on the still-ambiguous role of claim construction in design patent litigation, as well as the need to carefully select a title for a new design patent application. Parties to litigation now have added incentive to argue about claim construction in design patent cases, because the proper construction will determine not only the scope of the claim but also impact the availability of comparison prior art.

October 2023

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Tags Design Patents, Litigation, Patent Infringement, Patents

Patents Q&A

What Are Common Patent Drafting Mistakes?

Post author By Austen Zuege

Preparing new patent applications can be complicated. Patent applications in the U.S. and most other countries undergo pre-grant examination. So a patent application must be sufficient to establish patentability to the satisfaction of a patent examiner. And if the goal is to create enforceable exclusive legal rights in an invention, and it usually is, then there are many legal considerations that impact coverage and validity. In sum, while there are challenges to obtaining any patent at all, not all granted patents are equal.

What follows is a discussion of some of the most common mistakes when drafting a utility patent application. These are the sorts of mistakes frequently made by inventors preparing and filing an application themselves (pro se) without the aid of a patent attorney. These issues can also arise when applications prepared in another jurisdiction enters the USA and there are differences in the law and practices in the two jurisdictions.

A discussion of common mistakes in design patent applications is available elsewhere.

Focusing on the Old Rather than the New

One common mistake, especially with applications self-prepared by inventors, is to focus on the prior art and what is old and already known rather than on the new invention. Put another way, the mistake is to devote excessive effort to describing what the invention is not rather than what it is. While it is permitted to discuss the background of the invention, and sometimes this is helpful to highlight what is new and different about the invention, this provides little benefit when it takes up too large a proportion of an application.

As an example, criticizing existing products for being “too slow” and stating that it is desired to have an improved product that works faster might be helpful for context. But unless the application further explains how better results and faster speeds are achieved, such a discussion of the background context has fairly limited value. Also, if the discussion of what was known is far more detailed than the discussion of what is supposedly new, this can have the undesired effect of suggesting that the inventors have yet to adequately develop the invention to a point of being patentable.

Omitting How It Works, or “Black Box” Gaps

A big mistake is failing to describe what the new invention is and how it works in sufficient detail. Often this means describing what is new too superficially so that it is no more than a plan for future invention or a mere statement of a problem to be solved or a desired result. Modern patent laws a premised on a quid pro quo: in exchange for disclosing how to make and use an invention, exclusive rights are granted for a limited time. But you cannot get exclusive patent rights by withholding the “secret” of how to make and use the invention.

Occasionally, this problem arises by placing important aspects of the invention in a “black box”. If key steps, ingredients, or structures are withheld from the disclosure contained in a patent application, then the patentability requirement of enablement (35 U.S.C. § 112(a)) is not met.

Stated more generally, it is necessary to provide a disclosure that enables someone of ordinary skill in the art to make and use the full scope of the invention as defined by the claims. The more one claims, the more one must enable. So a more limited disclosure might only support more limited claims. Sometimes this is a genus/species issue — a question of the sufficiency of disclosure of particular species to claim an entire genus. It is therefore necessary to have claims that are commensurate with the scope of the disclosure and not overbroad, or, from another perspective, to have a disclosure that is robust enough to support the desired claim scope.

One helpful thing (good) patent attorneys do is that they explain how inventions work in a understandable way. The technology may still be complicated. So the explanatory disclosure might not be entirely “easy” to read and understand. But inventors are sometimes able to devise working inventions without being able to translate that technology into words and drawings of the sort required for patent applications. It may be because they take some things for granted, or sometimes they might not even fully grasp what is different about their new invention from what was known before.

Lastly, there is still a requirement that the “best mode” of practicing an invention be disclosed. Applicants and inventors cannot disclose only what they know to be their second-best embodiment, while retaining the best for themselves.

Confusing Ambiguity with Breadth

While a broad claim is not necessarily ambiguous merely due to breadth, the reverse is problematic. Ambiguity does not lead to a broad scope of protection in a patent. This is a issue even experienced patent attorneys wrestle with and sometimes get wrong. By far, the most common source of trouble is the use of functional language or results-based claiming to try to obtain preemptive exclusive rights over significantly more than what was actually invented. This is one of the trickiest and most contested aspects of patent law and policy, so any brief discussion is hardly comprehensive.

Patent law looks to what is generally understood by given language. Using coined terminology and nonce words — often with vaguely functional connotations — without providing a sufficiently clear definition sometimes leads to impermissible ambiguity. Generic structural terminology as understood in a given technological field is often not the same thing as coined terminology not adopted into use generally in that field. For instance, the coined word “parkulator” does not convey any accepted structural meaning sufficient to use that term in patent claims (without a sufficient express definition). All too often, patent language is specifically drafted to avoid the use of generally-understood terms, which invites ambiguity problems. But you cannot benefit from avoiding accepted meanings if others cannot reasonably determine the scope of a claim due to intentional ambiguities.

There are many other examples as well, sometimes the result of errors and inconsistencies. For instance, if a claimed inventions rests on a parameter like an angle between two things, or a specific concentration of an ingredient or chemical element, or performing a process at a particular pressure, then it may be important to explain — consistently — how such parameters are measured or evaluated. The percentage of a material by weight or by volume might be quite different depending on the density of all the materials involved. Or the pressure might be measure in relative or absolute terms. And the location or direction in which an angle is measured might matter. Similar issues can arise through poor English translations too, which are treated as intentional choices. So translating a non-English word as a “spoon-digger” rather than a “backhoe” can be problematic.

Not Understanding Terms with Special Legal Meaning

There is a concept, sometimes referred to as the Dunning-Kruger Effect, that those who are incompetent in a given area tend to be ignorant of their own incompetence. In patent law, certain language has special legal significance. Rather than being given their ordinary, everyday meaning, certain words in certain contexts can be legal “terms of art” that have a special meaning. The paradox is that unless these special meanings in patent law are known, they might be inadvertently or unintentionally invoked.

Perhaps the most frequent errors of this sort arises with means-plus function claiming (35 U.S.C. § 112(f)). Under this format, an element of apparatus is claimed as “means for…[performing a stated function]” or “[functional descriptor] means for…[performing a stated function].” This type of claiming is currently permitted in the U.S. but is given a special interpretation: it literally covers only the disclosed corresponding structure, material, or acts, plus their known equivalents. Such an interpretation might be narrower than intended. It also might raise other problems if the corresponding structure is not clearly identified and disclosed.

Even patent attorneys can struggle with means-plus-function claiming. Courts have (somewhat controversially) said that if a claim limitation is drafted in the same format as a means-plus-function limitation and merely replaces the term “means” with a nonce word or generic placeholder like “module”, “mechanism”, “element”, or “device”, then a means-plus-function interpretation may still apply. Speaking in practical terms, claim limitations that rely too much on non-structural functional language might be interpreted as means-plus-function claiming.

Irrelevant Disclosure

Including a lot of unnecessary information just because it is available can be another problem. It wastes time and effort, and time is money when preparing patent applications. It can also obscure what is important and lead to longer (and more expensive) prosecution and examination after initial filing. Of course, knowing what sort of information is relevant and what is not is something that requires knowledge and experience. It can also be a matter of understanding the closest prior art, which is the next point.

Not Understanding the Closest Prior Art

Patentability largely depends on an invention being novel and nonobvious over what was already known. So, the catch is that to understand what is patentable it is unavoidably necessary to understand what is the closest prior art. Most of the time, that requires conducting a patentability search and analysis. However, applicants often wish to avoid the expense of a patentability search. This often leads to false economy, by requiring extensive post-filing efforts and expense to mitigate the problem of having not prepared a better initial application.

Knowing the closest prior allows a better patent application to be prepared — one that articulates what feature(s) of the invention differ from the closest prior art (and why that matters). For instance, a patentability search and analysis might suggest that additional technical information (another data table, figure, etc.) needs to be gathered for inclusion in a new application in order to sufficiently explain why the invention makes a patentable improvement. This may be the case where the prior art already achieves a similar result but in a different way, or where the prior art includes all the same parts but has them arranged or connected in a different way.

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Tags Patent Prosecution, Patents

Patents Q&A

What Are Common Mistakes in Design Patent Applications?

Post author By Austen Zuege

There are certain requirements and interpretive frameworks that apply U.S. design patent applications that may not be intuitive. Many of these U.S. standards also differ significantly from the rules the apply to industrial design registrations in other countries. What follows is a guide to some common mistakes and misunderstandings around design patents and applications.

Additional information about acceptable practices for design patent applications can be found in the U.S. Patent & Trademark Office’s (USPTO’s) design patent application guide and in the Manual of Patent Examining Procedure (MPEP) Chapter 1500.

“Engineering” Style Drawings Treated Unfavorably

Designers may create computer-aided drafting (CAD) drawings to document their designs. These often follow engineering conventions, including the use of “tangent” lines to show the boundaries of a curved surface. However, U.S. design patent practice relies on the use of surface shading lines or stippling . This is any entirely different style and approach than familiar engineering standards. But there is no single explicit rule or statute about the permitted format of shading lines in design patent drawings.

Shading lines or stippling that contrast with the rest of a drawing are used to show curves, tapers, and other three-dimensional (3D) contours in design patent drawings. The arrangement and variable spacing of straight shading lines is commonly used to indicate the character of curvature or contouring. Shading lines that are not straight may also be permissible. Surface shading lines can be broken/discontinuous and/or light/thin to differentiate them from lines indicating surface ornamentation and/or the ornamental shape of an article itself. Although they must be used sparingly, with as few in number as practicable.

Other characteristics can also be represented by shading lines. For instance, equally spaced shading lines arranged parallel to each other are used to indicate flat surfaces. Shading lines or stippling can be used to distinguish open areas (like holes) from solid material as well. Also, oblique line shading is used to show transparent, translucent, and highly polished or reflective surfaces, such as a mirror. Elements visible behind transparent/translucent surfaces should be shown in light, full lines rather than in broken lines.

The following is an example used in the USPTO’s design patent application guide to illustrate straight, parallel shading lines with their spacing using to show curved edges of a sink. These shading or contour lines are discontinuous, each having a long unbroken segment plus a short, dot-like segment slightly spaced from an end of the long segment. In this example, other discontinuous shading lines are used to illustrate flat surfaces too.

Drawing of a sink showing use of spaced, straight shading lines in design patents — USPTO example of use of shading lines in design application drawings

The following example is also from the USPTO’s design patent application guide, and shows a wheel hub with a combination of shading lines and stippling. The shading lines indicate contouring/curvature and well as flat surfaces. Some of those shading lines are discontinuous while others are continuous but light lines. Contrast in materials or surface texture may be shown by using line shading in one area and stippling in another. In this example, the stippling can show matte surfaces in contrast with highly polished surfaces shown in line shading.

Drawing of a wheel hub showing use of a combination of shading lines and stippling in a design patent drawing — USPTO example of use of shading lines in design application drawings

The following is an example of non-linear (curved) shading lines used to illustrate 3D curvature of a vehicle mirror. These shading or contour lines are discontinuous to distinguish them. These types of shading lines are appropriate for illustrating more complex 3D shapes. In this example, broken (dashed) line(s) further illustrate the boundary of the claimed design, meaning that only a portion of the depicted article is part of this claimed design.

FIG. 1 of U.S. Pat. D427,554, showing use of shading lines to illustrate 3D contours of a vehicle mirror — FIG. 1 of U.S. Pat. No. D427,554

The following examples are drawn from a case about alleged infringement of two design patents covering a trash can and a recycling bin. Red arrows indicate lines whose meaning was disputed by the parties. The court construed the patents’ engineering-style drawings with curvature boundary tangent lines to mean visible ornamentation in the form of seams, paint, or something else that appears as actual lines on the trash can or recycling bin rather than merely conveying the boundaries of 3D contours where they transition to flat surfaces.

Annotated views with red arrows and blue circles labeling disputed lines in two trash can/recycling bin design patents — Annotated verisons of FIG. 1 of U.S. Pat. No. D644,807 for a “Slim Open Trash Can” (left) and FIG. 1 of U.S. Pat. No. D729,485 for a “Dual Recycler” (right) with red arrows and blue circles indicating disputed lines in *Simplehuman LLC v. iTouchless Housewares and Prods., Inc.*, 506 F. Supp. 3d 830 (N.D. Cal. 2020)

The court reasoned that because the purported drafting technique in the examples above made it impossible to distinguish contour changes from ornamental lines, and because such ambiguous usage raises indefiniteness concerns that should be discouraged, a “plain meaning” interpretation was adopted, finding that the disputed lines are lines (that is, ornamental features in the form of seams, paint, or something else that appear as actual lines on the articles). The patentee’s arguments that the disputed lines were shading or contour lines merely meant to demonstrate the general shape of the trash can/recycling bin were rejected.

The case later settled, and was dismissed without a final ruling on infringement. But the patentee would undoubtedly have lost under the court’s construction that the disputed engineering-style lines meant visible ornamental lines — neither the patentee’s own products nor the accused products had any features that resembled visible lines in the relevant locations.

The Title is Limiting

U.S. design patents are directed to ornamental features of useful articles. Significantly, they cover only particular articles that embody the claimed design, and not simply a “view” or “look” in the abstract (as is the case for industrial designs in some other jurisdictions). The words of the claim — which always says “as shown and described” — will limit the scope of the exclusive patent legal rights. Courts have said that the title of a design patent is limiting, where it names a particular type of article. And that is the case even if the drawings of a design patent do not illustrate any particular article. So the title and other words in a design patent application should be chosen carefully.

FIG. 4 of U.S. Patent D677,946, showing claimed pattern — “Pattern for a Chair” illustrated in FIG. 4 of asserted U.S. Pat. No. D677,946 (left) and accused storage bin product (right) from *Curver Luxembourg, SARL v. Home Expressions, Inc.*, 938 F.3d 1334 (Fed. Cir. 2019)

Exhibit photo of a stack of storage bins accused of infringement due to use of material pattern — “Pattern for a Chair” illustrated in FIG. 4 of asserted U.S. Pat. No. D677,946 (left) and accused storage bin product (right) from *Curver Luxembourg, SARL v. Home Expressions, Inc.*, 938 F.3d 1334 (Fed. Cir. 2019)

In the example reproduced above, a figure from a design patent shows a “Y”-shaped, rattan wickerwork-style pattern formed by a web of material. None of the figures in the patent illustrated the design being applied to a particular article, only the pattern formed by a portion of material shown in isolation. But the title of the patent is “Pattern for a Chair”. A court ruled that the patent’s claim was limited to a pattern for a chair, as specified in the title, and a lawsuit against a seller of a basket (not a chair) with a similar pattern making up the basket/bin walls was dismissed for failure to state a plausible claim of design patent infringement.

Sole figure in App. Ser. No. No. 29/491,550 (now U.S. Pat. No. D979,060) for a “Lip Implant”

Image of prior art “stump” art tool considered in In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021)

Limits on claim scope by the title or other text might help distinguish prior art. In the example images above, a design patent claim for the “ornamental design for a lip implant” was limited to lip implants. A court said that a prior art tool made of tightly spiral-wound paper called a “stump”, used by artists for smoothing and blending large areas of pastel, charcoal, or pencil, was directed to a different article than the claimed lip implant. Therefore, the prior art “stump” did not affect the novelty of the claimed design even though their shapes were essentially the same. However, an older case held that if the prior art discloses any article of substantially the same appearance it is immaterial what its use was, so this lip implant decision is in tension with that precedent.

The title of a design application can also potentially limit the prior art available as “comparison” art in a later three-way comparison of the claimed design, an accused product, and the closest prior art for an infringement analysis. Such a comparison can highlight differences (or similarities) in the overall appearance that might not otherwise be apparent to an ordinary observer. To qualify as comparison prior art, a notable court decision said that the prior-art design must be applied to the article of manufacture identified in the claim of the asserted design patent.

Partial Claims Are Permitted

It is possible to depict an article while using a partial claim that addresses the design of only a portion of that article. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied, or applied to, that is not considered part of the claimed design. For instance, when the design is for surface ornamentation, the shape of article to which the design is applied can be shown in broken lines.

example design patent application drawings showing broken lines to indicate a partial claim to only surface ornamentation on a jewelry cabinet — Example of partial claim to only a surface pattern on a jewelry cabinet article, for USPTO design patent application guide

Moreover, unclaimed things may be shown in broken lines for the purpose of illustrating the environment in which the article embodying the design is used. For instance, a claimed design might be for the hood of a truck, only, with the rest of the truck shown in broken lines as unclaimed environment.

Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. A boundary line may be shown in broken lines if it is not intended to form part of the claimed design. Applicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary.Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. In this situation, broken (dashed) lines are used to define the boundary of a design patent application claim. This practice in the U.S. departs from that of some other countries where partial claims are not permitted.

Additionally, structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied, or applied to, that is not considered part of the claimed design.

USPTO Will Often Not Permit Changes in Claim Scope by Amendment

One controversial aspect of U.S. design practice is that changes in claim scope are usually not permitted. While partial claims are permitted in design applications, and while claim amendments in utility patent applications are routinely permitted (even to remove limitations), since 2013 the USPTO does not ordinarily permit lines to be changed from solid to broken (dashed) to broaden the claim, or the reverse to narrow the claim. Instead, applicants are often forced to file a separate application with a different claim scope. While examiners have some discretion to permit drawing changes, such as to fix discrepancies by changing lines to broken ones, and the text of disclaimers or statements in an appendix might have some impact, those things are not certain to be effective under current law and practice.

This practice of precluding changes in design application claim scope extends an already controversial position taken by a U.S. appeals court that reads a so-called “written description” possession requirement into the U.S. patent statutes (relating to enablement) against their plain language and grammar. Note that there is also a clear incentive for the USPTO to require new filings instead of amendments in order to generate more filing fees.

Multiple Embodiments are Sometimes Permitted

It is possible to include multiple embodiments in a single U.S. design application. However, restriction practice still applies and may require dividing different embodiments/designs into separate applications. Because design applications can have only a single claim, multiple embodiments must be patentably indistinct to remain in a single case.

On the one hand, because design patents have a 15-year term from grant, later-filed and later-granted divisional applications will expire later. This might be desirable for some patentees. On the other hand, a restriction determination also has an impact on the scope of exclusive rights. For instance, if the applicant elects one embodiment but declines to pursue an unelected embodiment in a divisional application, the unelected/abandoned embodiment will effectively be surrendered and dedicated to the public. These considerations emphasize the need to think through the implications and potentially commit to filing multiple applications when multiple distinct design embodiments are involved.

Drawings Must be Definite and Enabling

Drawings in a design patent application must be consistent with each other. Discrepancies between different views can create indefiniteness and/or lack of enablement issues. For instance, if certain features are shown in one view but omitted in another, this may make it unclear what design is really being claimed. The use of inconsistent drafting techniques in different drawings can also lead to similar concerns. For instance, discrepancies in the use of shading lines, stippling, and/or broken lines can detract from required clarity. Particularly for highly complex illustrations, it is important to carefully review the drawings to ensure that they are consistent.

A frequent issue is when there are holes, cavities, protrusions, or the like and their depth or height is potentially uncertain in plan or elevation views. Sometimes examiners may require cross-sectional views to show the depth of such features. But clarifying sectional views cannot always be added after initial filing without impermissibly adding new matter–instead a new continuation-in-part application might be necessary.

Mixing Photographs and Line Drawings is Not Permitted

Black and white line drawings are preferred and ordinarily required in U.S. design applications. However, photographs can sometimes be used, particularly where there is surface ornamentation that is not reproducible in line drawings. Such photographs can have added lines, such as broken lines to indicate a boundary of the claimed design. But it is not permitted to have both photographs and line drawings combined in a single design patent.

It is possible to include a mix of photographs and line drawings in a new U.S. design application, which might have significance for priority claims or divisional filings, but the drawings must be amended and limited to one or the other type before grant. If photographs are included as informal drawings in a new application, then a disclaimer included in the specification or on the photographs themselves should be used to disclaim any color, surface ornamentation, logos, written matter, etc. that forms no part of the claimed design.

Color Can Be Claimed

Use of color presents many opportunities for procedural problems and well as unintended impacts on the scope of claimed design patent rights. Color can be claimed in a design patent application. However, the use of color drawings (including color photographs) requires filing a petition and paying a petition fee to have color drawings accepted. Also, there is a requirement that the specification include the following statement:

“The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.”

Instead of using color drawings, an alternative is to use black & white line drawings lined for color in accordance with the drawing symbols in MPEP § 608.02 (and reproduced in the USPTO’s design patent application guide). Essentially there are particular line patterns usable to represent specific colors. If this is done, the application must state “The drawing is lined for color.” The specific colors lined in the drawing(s) may also be identified in the specification for clarity, as a kind of legend that explains the lining patterns from MPEP § 608.02.

USPTO drawing symbols for draftsmen — USPTO design patent application guide “Symbols for Draftsmen”

Also, if color photographs are initially submitted as informal drawings (to later be replaced with formal drawings) and the applicant does not consider the color to be part of the claimed design, a disclaimer should be added to the specification as follows: “The color shown on the claimed design forms no part thereof.” The USPTO will consider color an integral part of the disclosed and claimed design in the absence of a disclaimer filed with the original application.

Appendices Are Permitted

Although not specifically discussed in MPEP Chapter 1550, the USPTO’s design patent application guide, or reported court cases, the USPTO currently permits design applications to include an appendix. The appendix is never published in granted design patents. An appendix can include text statements, such as a purported reservation of the right to change solid lines to broken lines or vice-versa, additional views or embodiments, which could be in the form of line drawings, photographs, or both. The main purpose of an appendix is to potentially provide support for a greater range of amendments and/or continuing applications after initial filing.

Applicants will sometimes not include an appendix because they are unaware that it is possible to do so. After all, the USPTO does not expressly discuss them in any of its regulations or procedural guidelines. Courts have not definitively ruled on the permissible use of design application appendices, however. Yet design examiners generally allow applicants to include and rely on them and generally do not object to their use.

Functional Aspects Are Not Protected

Sometimes design patent applicants wrongly believe that a design patent will cover functional aspects or a general idea. They do not. The type of subject matter that can be claimed in design patents is different from utility patents.

Design patent protection is limited to protection of ornamental aspects of a useful article. Purely functional aspects or a broader general design concept are not protected. Also, anything dictated by function, no matter how aesthetically pleasing, cannot be protected by a design patent. Where this becomes less clear is where design features are only partly functional, and they contribute at least some minimal ornamentation to the overall design. In those situations, the functional aspects limit the scope of protection in the overall design without completely precluding protection of the minimally ornamental aspects.

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Tags Design Patents, Litigation, Patent Prosecution, Patents

Patents Q&A

How Should Invention Harvesting Be Conducted?

Post author By Austen Zuege

An important first step in obtaining patents is to identify potentially protectable inventions. The process of gathering up candidate ideas that might be the basis for new patent applications is sometimes termed invention harvesting. But that is an informal term. It generally connotes affirmatively investigating research and development efforts to draw out aspects that might be patentable. The following discussion explains when this sort of effort is worthwhile and how to go about it.

Who Should Consider Invention Harvesting?

There are two basic requirements in terms of who should consider invention harvesting, plus an important practical consideration. The first basic requirement is some desire to pursue a patent. Only companies that might want to pursue patents need to consider invention harvesting. For instance, budget constraints or company policy might mean that patenting is unlikely. The second is activity that comes reasonably close to what is potentially patent-eligible and patentable. For instance, if there is absolutely no technological or engineering activity underway, efforts to identify inventions might not be worthwhile until circumstances change.

In practical terms, however, invention harvesting is typically a process that takes place within companies of a significant size. When there are multiple people or departments with different responsibilities, there is the possibility that inventive activity might be taking place somewhere that has not yet come to the attention of other people who make decisions about patenting. The basic idea is that “invention harvesting” is a proactive way to bring people or teams with different responsibilities together to help them meet shared or company-wide objectives. It rests on an understanding that simply expecting scientists and engineers to step forward when they believe they have an important invention may not capture all patentable inventions.

When Should Invention Harvesting Take Place?

Generally speaking, invention harvesting should be considered around the time that inventions are sufficiently developed to be “ready for patenting” but prior to any public disclosure or commercialization.

“Ready for patenting” means the invention is sufficiently developed that the inventor(s)—with the aid of a patent attorney—can describe how to make and use it. Vague goals and undeveloped business objectives are not enough if they amount to little more than a plan or hope to invent something in the future. The same goes for high-level business plans to meet some kind of customer demand without any definite ideas of how to achieve any specific results—those things are not sufficient. But anything that has been “reduced to practice” in the form of a working prototype is likely sufficiently developed, even if there still is ongoing testing and development work.

There can be public disclosure, public use, and on-sale bars to patenting. This makes it important to consider any potential inventions before any part of a new product is disclosed to someone else, from potential customers to potential business partners or even industry trade groups. This is true even though some countries, like the U.S., have patent filing grace periods.

Key product development stages or milestones, such as engineering “design reviews”, can be excellent times to proactively assess potentially patentable inventions. Also, any planned non-confidential disclosures or sales activities also make good prompts to consider patenting before those disclosures or sales activities take place. But there is no single right time to consider patenting. In fact, it may be a question that needs to be revisited over time.

What Should Invention Harvesting Activity Look For?

Of course, patentable invention might arise at different levels of generality and at different times during development. A product as a whole might not be patentable but specific features of it might be. Those narrower patentable aspects might not be identifiable at the outset of new product development and may only arise later on after considerable work has been completed. On the other hand, investment in research & development (R&D) is no guarantee that any patentable invention will arise. But the catch is that if you sometimes will miss patentable inventions unless you look for them. From that perspective, it is not a waste of effort to consider patentability even if nothing patentable is identified yet.

How Should Invention Harvesting be Conducted?

Some key foundations of invention harvesting are education, communication, and having resources in place to retain and act upon information gathered.

Education starts with emphasizing a desired to consider patenting. It also means cultivating, or bringing in by way of retaining an outside patent attorney, a reasonable awareness of patent law. Inventors might not have a good understanding of patent law and therefore may misunderstand what can (and cannot) be patented, for example. Education also means informing patent counsel about what kind of patenting strategy is desired from a business perspective. Some inventions might be more challenging than others to patent. There is an element here of establishing a comfort level with risk tolerance: do you want to aggressively pursue patent applications including ones that might not succeed, or take a more conservative approach and only file patent applications that seem to have a high probability of success?

Communication is about bringing the right people together to talk about potentially inventive activities. Sometimes, inventors may be very humble or shy and not willing to step forward and promote their own work. As another example, an invention may be patentable even if its inventor does not subjectively consider it to be “important”, such as where the inventor applies an idiosyncratic standard of “importance” that does not align with current laws around patentability. Sometimes having an explicit “invention harvesting” session with patent counsel is worthwhile, in which potential inventors talk about their ongoing work in an open-ended way to try to tease out potentially patentable inventions.

Resources like having a plan to document inventions and giving people or committees responsibility to approve patenting are really the lase piece of the puzzle. Having some sort of “invention disclosure” form to document potential inventions in writing is worthwhile. Such a form can not only provide a written record of the substance of a potential invention, it can also collect supporting information. Such supporting information can include the names of the potential inventor(s), any planned commercial release or public disclosure date(s), relationships between the invention and business initiatives, and other information that can be useful when making patent filing decisions and reporting on company activities.

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Tags Patent Prosecution, Patents

Patents Q&A Trademarks

What Is a File Wrapper?

Post author By Austen Zuege

A file wrapper, synonymously called a file history, is the written record associated with a given patent or trademark application and any resultant granted patent or trademark registration. It is the official record for a given matter. Generally, the file wrapper includes more information than is formally published by a patent or trademark office in patents, published patent applications, or trademark registration certificates.

The sorts of materials maintained in file wrappers, the period of time those materials are retained, and the level and ease of public accessibility to them varies by jurisdiction. For instance, in the USA, patent application information is kept confidential initially and generally only made publicly available for published applications and granted patents, with pending applications normally published 18 months from the earliest filing or priority date (subject to potential non-publication requests). (35 U.S.C. § 122).

How & Where to Obtain a File Wrapper

In the past, file wrappers were only available as hard copies in on-site storage at official offices. Today, many patent and trademark offices make at least some file wrapper contents available online—though whether online versions are the official ones or not and whether the online versions are complete or not are questions that can vary by jurisdiction. File wrapper materials are generally also available as certified copies that must be specially ordered (and may have to be physically mailed). Usually a given file wrapper must be obtained from the relevant patent or trademark office that maintains it, although centralized file wrapper access for a few global patent offices is available.

The U.S. Patent & Trademark Office (USPTO) has “Patent Center” and Trademark Status and Document Retrieval (TSDR) online portals. Very old materials are not always available through these portals. Moreover, some materials are not accessible through Patent Center to the general public, like copies of non-patent literature. The USPTO also has a separate Certified Copy Center that allows officially-certified copies of file wrappers or specific documents from them to be ordered, upon payment of required fees. Certified copies of file wrapper may include materials that are not otherwise publicly available, and include official seals and signatures attesting to their authenticity.

The European Patent Office (EPO) has a European Patent Register with file wrapper information. These materials are also accessible via the Espacenet portal, by clicking the “Register” link within a given record.

There are also separate systems for file wrappers for PCT international patent applications and Madrid Protocol trademark registrations. These are the Patentscope and Madrid Monitor online portals maintained and administered by the World Intellectual Property Organization (WIPO). It is also possible to order certified copies of Madrid international trademark registration materials from WIPO, or for applicants to order certified copies of PCT applications from individual PCT receiving offices.

Additionally, Global Dossier portals provide access to file wrapper contents from a number of the most active patent offices worldwide, together with machines translations. Global Dossier has gone by other names in some jurisdictions, like “One Portal Dossier” in Japan and South Korea. Because of the availability of machine translations, these portals can be highly convenient for gathering information about foreign patent applications in other languages. But some documents may not be immediately available through these portals, either due to technical glitches or database update lags.

Why Might You Need a Wrapper?

There are many reasons a file wrapper might be consulted. For instance, they can provide a record of the prosecution history that may inform the status or interpretation of something related to a given patent or trademark. A record of official actions like rejections/refusals and/or applicant amendments or arguments might be found in the file wrapper. Particular documents within a file wrapper might be relied upon for various purposes, or might be needed for submission in other contexts. For instance, in U.S. patent law, the file wrapper might be relied upon for claim construction, doctrine of equivalents analysis, inequitable conduct inquiries, and more.

File wrapper materials in informal, online formats might be sufficient for many purposes, and may be free and easy to access. Information materials might be used for competitive intelligence purposes or as a reference example for work on an unrelated matter, for example. Certified copies or an entire file wrapper, or one or more selected documents from it, might be required for certain formal uses, such as to make priority claims in foreign applications or to be relied upon in legal proceedings where authentication of the materials is important.

The legal important of a file wrapper often depends on the substantive law of the relevant jurisdiction. Under U.S. patent law, prosecution history estoppel or prosecution disclaimer found in a file wrapper might arise and bind the patentee. But many other jurisdictions do not have any such patent prosecution estoppel doctrines, making file wrappers less formally significant. And, moreover, the USPTO does not accept formal file wrapper estoppel in trademark matters.

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Tags Patent Prosecution, Patents, Trademark Prosecution, Trademarks

Patents Q&A Trademarks

What Is Prosecution History?

Post author By Austen Zuege

For patents and trademarks, the term “prosecution history” refers to the back and forth between an applicant and the patent or trademark office. It includes submissions by the applicant, starting with an original application and extending though any amendments or arguments the applicant might later make during official examination of the application. It also encompasses official communications, like office actions, and the particular rejections, objections, refusals, and other notifications that may be contained in them. Oral communications like interviews are a part of it too.

But “prosecution history” refers to more than just a set of documents or particular communications. It is a blanket or umbrella term that refers to all the actions and events involving the patent or trademark office from the time a new application is filed to through grant or registration and even beyond that to post-grant or post-registration actions involving corrections, maintenance or renewals, and the like. So, even if a particular document is purged or deleted or never made part of the permanent record, such a document and the events surrounding it are still part of the prosecution history.

Prosecution histories are important for many reasons. As reflected in “file wrappers,” they are often consulted to understanding the status of a pending application or of a granted patent or issued trademark registration. They can provide insight into why a patent or trademark registration was issued in a particular form, or why a application was abandoned. Sometimes events or materials from the prosecution history of a given patent or trademark registration can even impact the scope or validity of enforceable legal rights.

The prosecution history tends to matter most where prosecution history estoppel or prosecution disclaimer might arise and legally bind the applicant later on. In the U.S., it tends to be more important for patents than for trademarks. Many other countries have different laws that make prosecution history less consequential.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

Tags Patent Prosecution, Patents, Trademark Prosecution, Trademarks

Articles

Virtual Patent Marking Program

Post author By Austen Zuege

Materials from a presentation by Austen Zuege, Grant Peters, and Bryan Wheelock about virtual patent marking are available here:

“Virtual Patent Marking: Practical Considerations, Recent Court Guidance, and Ideas for Designing Your Own Virtual Patent Marking Program”

This presentation and downloadable materials addresses basic requirements and best practices for virtual patent marking, as well as requirements for traditional/physical marking, alternative marking on a label or package, and false marking. Suggestions for implementing virtual patent marking are provided along with examples and hypotheticals used to discuss some of the practical challenges of virtual marking and where there continues to be areas uncertainty. More information about patent marking is available in this detailed guide and this brief overview.

Tags Patent Infringement, Patent Marking, Patents

Articles

Patent Assignments and Priority in an International Context

Post author By Austen Zuege

Materials from a presentation by Austen Zuege and Jonathan Bench about patent assignments and rights of priority, including presentation slides and an on-demand video recording, are available here:

“Patent Assignments and Priority in an International Context”

Tags Assignments, Assignor Estoppel, Litigation, Patent Prosecution, Patents

Copyrights Q&A Trademarks

How Should Advertising Legal Review Occur?

Post author By Austen Zuege

It is beneficial to have advertising undergo legal review prior to release. Such review should generally cover a number of different concerns, including false advertising, trademark infringement, right of publicity/privacy, copyright infringement, special considerations for regulated industries (i.e., industry-specific laws and regulations requiring certain disclosures, etc.), medium-specific requirements (for commercial email, phone marketing, TV/radio broadcasting, etc.), and more. The following addresses legal treatment in the USA. Laws may differ in other countries. Legal review of particular advertisements should be directed to a knowledgeable attorney in the relevant jurisdiction(s).

Establish Advertising Review Procedures

In general, have a procedure for advertising review before that advertising is released. Be clear about how such protocols apply to business-related social media or other online accounts, which are usually just another form of advertising. Also be clear how these procedures apply to vendors, consultants, and spokespersons operating on your behalf. You very well may be responsible and liable for their actions, and you should not assume they will automatically comply with the law or your own requirements. Periodically check to see that these protocols are actually being followed.

Make sure that appropriate documentation is created and maintained. For instance, require sufficient record-keeping to preserve any licenses, authorizations, releases, objective evidence supporting ad claims, and the like. Retain those records for a sufficient time and in a place where they can be located (by others) if and when needed. Online advertisements may be active for many years, and various portions of ads might be reused for later ones, so such records should ideally be kept as least as long as as the advertising material is in use.

The scope and thoroughness of advertising reviews should take into account the prominence and scope of the advertising. Major mass media ad campaigns deserve extra attention. Also, anything that “feels” questionable, or seems to push boundaries of legal or ethical acceptability, should also receive appropriate review. Lastly, focus should be drawn to things that are most material to prospective consumers.

Many laws regulating advertising exist because businesses often have incentives to be less than truthful or accurate. The point of marketing is to create demand, which can easily turn into a matter of lying or dubiously creating meaning out of nothing. Moreover, marketing and sales people, as individual employees or vendors, may feel pressured to put out legally prohibited or at least questionable content to satisfy management or others. People may also argue for a race to the bottom, pointing to questionable if not clearly illegal conduct by others as justification for doing the same—or worse. On top of that, some illegal advertisements go unpunished simply due to lack of resources by enforcement agencies and there may be arguments to try to get away with something on that basis. Advertising reviews should allow an opportunity to put a halt to efforts that run afoul of the law or that simply put a business in an undesired light (even if legal).

Trademarks

Trademarks should be legally cleared as part of initial selection. That is, make sure you select a mark that will not create a likelihood of confusion with one already in use by another entity. Trademark infringement can arise even if the marks are not identical and even if the goods and services are not the same. This is the best way to avoid infringement allegations. Of course, this is less about use of a mark in a specific advertisement than about overall branding strategies.

Another issue to consider in any given ad is proper usage of your own trademark(s). This is about maintaining rights in your own mark(s). Use your mark(s) consistently, as a source-identifying trademark (as an adjective rather than a noun or verb), and use appropriate symbols (®, ™, ^SM) or comparable trademark identifications (like “Reg. U.S. Pat. & Tm. Off.”). Even if marketing folks think it is appealing to misuse trademarks in an ad, doing so can damage trademark rights or even result in loss of trademark rights—sometimes called genericide.

The next issue to consider is any usage of someone else’s trademark(s). While comparative advertising is permissible, and nominative or descriptive fair use may apply, intentionally using someone else’s trademark or something confusingly similar to someone else’s mark should receive extra scrutiny. Use of comparative advertising has marketing benefits but also tends to heighten the risk of a legal dispute under trademark and/or advertising law.

To help reduce risks associated with comparative advertising, you should at a minimum make sure statements are not false or misleading (including both express statements and any implied meanings even if not the only possible interpretation), material information is not omitted, comparisons are fair (and not “apples to oranges”), and material support for claims is documented before making them. Consider also the context, and avoid anything that makes a competitor’s trademark more prominent than your own or that otherwise may confuse consumers about the source of the goods or services.

Also think about what you would think if the situation was reversed. That is, what if your competitor was using your trademark in the way you plan to use your competitor’s mark? Would you have concerns?

“Dilution” is another area of law that gives special additional rights to famous brands. Tarnishing or blurring the rights of a famous brand can give rise to liability. Advertising that looks like it rides on or nips at the coattails of a famous brand could give rise to dilution issues, potentially, even if it would not raise trademark concerns for an ordinary, non-famous brand.

False Advertising and Truth in Advertising

The Federal Trade Commission (FTC) has national authority to prevent unfair methods of competition and unfair or deceptive acts or practices in or affecting interstate and foreign commerce. Federal trademark law also allows private businesses to sue on certain false advertising claims. Additionally, states have various advertising, unfair competition, and deceptive trade practices laws. Most of these laws are somewhat open-ended. But, in general, they can apply to advertising and generally require that ads not be unfair or deceptive/misleading.

The standards for truthful advertising can be a little fuzzy. These matters are prone to judgment calls. But some of the most basic considerations and requirements are as follows (see also FAQs from the FTC).

Advertising claims must be substantiated by evidence in advance. It is not sufficient to make a statement based on a hunch that you can (try to) justify it later if needed. This is because advertisers imply that there is a reasonable basis for such a claim. Even statements in ads that later turn out to be true are legally prohibited if there is not a “reasonable basis” for the claims, meaning there is objective evidence that supports the claim. Tests or studies used to support advertising claims must be conducted using methods that experts in the field accept as accurate. They also must be commensurate with the advertising claims actually being made.

Mere “puffery” that reflects a purely subjective claim that consumers would not take seriously/literally is generally permissible without substantiation. For instance, a claim to offering “the best cup of coffee in the world” or that “our widgets are excellent” is often acceptable because consumers will recognize it as a purely subjective statement of opinion. But a claim with an objective (factual) component like “rated the best by most doctors” or “more consumers prefer our widgets to any other” or “our widgets last longer than the most popular brands” would not be seen as mere puffery by consumers. These latter types of objective advertising claims must be both true and substantiated. Context can also matter in these distinctions.

The FTC especially scrutinizes health & fitness and safety claims, for instance, and advertising directed at children (especially those under age 13) is also regulated more. Claims and implications that products are made in the USA, and “green” or environmental-friendliness claims also tend to be areas of frequent concern. Competitors may also take issue with false or misleading comparative advertising claims, which are discussed above with respect to trademarks. Certain types of claims may also implicate other agencies or laws, such as the Food & Drug Administration (FDA), which has other requirements for certain drugs and cosmetics and associated advertising.

Warranties and guarantees are subject to special legal requirements. Some of these pertain to how they are advertised. Others pertain to disclosure requirements for stating the terms and conditions as well as making those available pre-sale.

Endorsements and testimonials, including those by “influencers”, can raise many questions about whether their use is truthful and not misleading. The FTC provides an endorsement guide that is worth consulting. Some common concerns involve failing to disclose that someone is a paid endorser/influencer or misleading consumers about an endorser’s use or familiarity with the product or service in question (or lack thereof).

Copyrights

Copyright clearance is an important part of advertising review. Materials used in ads like photos, graphics, text, etc. that are not completely original creations require permission to be used. Unauthorized use may constitute copyright infringement. Copyright clearance should involve obtaining and documenting—in writing—authorization for use of any copyrighted materials that are used, including legally reasonable verification that the materials are uncopyrighted or have fallen into the public domain.

There are many nuances about who owns copyright and what is permissible to do with someone else’s copyrighted work. When vendors or consultants are involved, and they often are when it comes to ad copy, you do not automatically own the copyright just because you paid for it. There can be implied licenses. But new, unexpected, or gradually expanded use might exceed an implied license. Also, there are many myths about what is legally permitted. For instance, there is no bright-line legal rule that says changing 10% of a copyrighted work or four things in a work—or some other percentage or number—avoids infringement liability.

When you get a license, make sure the scope covers your intended use. It is fairly easy to slip up and get the wrong license, or misunderstand the scope of the license you paid for. Also, consider getting an indemnity from the party licensing materials to you.

Fair use may apply, sometimes. But that is a context-specific, multi-factor analysis without any bright lines. And in the advertising context, the commercial nature of the use is a factor explicitly counted against a finding of fair use by statute. It is true that parody and criticism can occur even in a commercial advertisement as a fair use. Yet such things may only support fair use if they parody or criticize the particular work in question as opposed to merely using it without authorization to parody or criticize something else. There is a tendency for claims of “fair use” to be overused and unjustified in the context of commercial advertisements. Many times, you simply need authorization, such as a paid license.

And, no, just because something was available on the Internet does not mean that is can be freely used in an advertisement.

Rights of Publicity and Privacy

The rights of publicity/privacy are potentially implicated any time advertising materials contain a person’s name or likeness without their consent or authorization. These issues most often arise in the context of the unauthorized commercial use of photos or videos that depict famous people or celebrities or that thrust a private person into the public spotlight.

Review of advertising should include verification that their is an appropriate release from any persons whose name or likeness is used. A release of this sort is sometimes called a “model release”. Although in other industries this might go by other names or be included within another agreement, such as a “materials release” in film or TV productions.

Bear in mind, however, that having a copyright license to a photo, video, or the like is not enough, alone, to clear any right of publicity/privacy issues. These releases and copyright licenses often need to come from different people. For instance, a copyright license or assignment for a photograph would often come from the photographer while the publicity/privacy release would come from the person(s) appearing in that photograph (or a parent/guardian).

Some states have laws limited rights of publicity for deceased people. There can also be exceptions for references to public figures, although those exceptions probably will not apply to commercial advertisements that give the impression of an endorsement or approval.

If obtaining stock images, consult the terms of a license to see if a model release is included. If not, use of the stock photo may still give rise to issues. For example, sometimes a minor celebrity’s likeness might appear in a stock photo unintentionally. Or, as another example, if your intended use would tend to portray the person depicted in a false light, such as implying that the person has a disease, committed wrongdoing, or would embarrass them, there may be a claim for invasion of privacy or a similar “false light” claim.

Disclaimers

A disclaimer may be helpful but is not a “get-out-of-jail-free” card. Use of a disclaimer will not undo otherwise false, misleading, or confusing ad content. That is to say a disclaimer is only helpful to the extent it is actually effective on the viewing audience. This is something you can generally only speculate about in advance. Accordingly, while a disclaimer may be worthwhile, it may be a helpful exercise to ignore any such disclaimer as part of an initial legal review and consider the other content of the advertisement as if the declaimer was not present at all.

Email Advertisements and Anti-SPAM Law

The CAN-SPAM Act governs commercial advertising emails. Those are emails whose primary purpose is commercial. Emails whose primary purpose is to provide transactional or relationship content (which facilitates an already agreed-upon transaction or updates a customer about an ongoing transaction) or other content (which is neither commercial nor transactional or relationship, such as political campaign information) is not covered by the federal CAN-SPAM laws. States also have various email marketing laws but those are mostly preempted by federal law and therefore inapplicable to commercial emails (except for fraud and deception issues).

General requirements for compliant email advertising, as explained in an FTC guide, include:

Accurately identify the person or business who initiated the message and do not use false header information
Don’t use deceptive subject lines
Clearly and conspicuously disclose that your message is an advertisement (not required if the recipient has previously expressly opted-in to such emails)
Include your valid physical postal address
Include a clear and conspicuous explanation of how the recipient can unsubscribe (opt out) from future messages, such as a reasonably prominent, working “unsubscribe” link
Honor unsubscribe (opt out) requests promptly
Make sure vendors and employees are following the law

Some additional guidance is available in the FTC’s “Candid answers to CAN-SPAM questions.”

One area that can give rise to issues involves use of purchased email lists. Despite the fact that vendors sell them does not mean that it is legal for you to use them in any and every possible way for mass email marketing purposes. It still matters how you send email messages and the specific content of those messages. For instance, use of a purchased list should not override a prior opt-out request. But, on the other hand, use of purchased email lists is not expressly prohibited under CAN-SPAM and prior consent (that is, an opt-in) is not required, so long as the sender (initiator) of the message clearly and conspicuously identifies a commercial email as an advertisement.

In practical terms, mass email service providers may have their own policies that are more restrictive that any applicable laws. Such providers are sensitive to spam reports and may take action to block you or terminate your account if too many complaints are received. That could happen even if complaints fail to allege anything illegal or are baseless (such as a spam report by someone who expressly opted in). For instance, some providers prohibit the use of their services or platform to send emails to purchased email lists—even if laws do not specifically prohibit doing so.

Phone and Broadcast Advertisements

The Federal Communications Commission (FCC) has authority over phone and TV/radio broadcasts. There are additional rules and regulations that apply to advertisements and commercial messages in those formats. For instance, randomly dialed robocalls are generally prohibited. In addition, the FTC maintains a “do not call” registry for telemarketing that must be honored.

Consumer Privacy and Handicap Accessibility

There is also a growing body of laws regulating collection and retention of consumer data, particularly at the state level (e.g., California’s CCPA) and in foreign countries—like GDPR in Europe and PIPEDA in Canada. But some federal laws may apply too. These laws can be implicated by online advertising, for instance. Collection and use of personally identifying consumer information should be scrutinized. In some cases, even laws involving biometric information privacy could be implicated. The sale, purchase, and/or exchange of consumer personal information to or from brokers, business partners, or other third parties and the collection of online ad or web page tracking data are of particular significance here.

Additionally, consider whether online advertisements implicate laws requiring accessibility for persons with disabilities. These can arise from state or federal law, potentially. General online accessibility standards and best practices are useful here, and might be worthwhile to implement even if not strictly required by law for certain commercial advertisements. Bear in mind, however, that “accessibility” is something of a moving target and is not defined by bright lines.

When working with vendors and contractors, be aware that they may try to push compliance burdens onto you via contractual terms. This might even extend to situations where vendors are selling services or tools that cannot conceivably be used in a legally compliant manner, or at least not in ways with any practical value to the advertiser.

Tags Copyright Infringement, False Advertising, Right of Publicity/Right of Privacy, Trademark Infringement