Intellectual property (IP) rights might allow a business to obtain exclusive rights in some or all aspects of a product. Such IP rights can potentially include patents, trademarks (i.e., trade dress), copyrights, and trade secrets. But the types of IP that might apply will vary depending on the context of the product involved, and may require affirmative action to secure and maintain IP rights.
Consider patentability before any public disclosure or commercialization of a product in order to avoid potential loss of patent rights. Although other types of IP protection might be available, exclusivity in the design of a new useful product is first and foremost a question of potential patent protection.
Patent Protection
Patents can provide exclusive rights for a limited time in exchange for disclosure of an invention. An inventive product—and/or a process or method associated with making or using it—can be protected with a utility patent. However, a patent application must be filed within one year of public disclosure or commercialization (or, in other countries, before any public disclosure). The invention must also satisfy three criteria for patentability: utility, novelty, and non-obviousness. The latter two criteria depend on the scope and content of the prior art. A patentable invention cannot already be known and must represent a non-trivial advance over what was already known. These assessments are made in an absolute sense. Prior art is not limited to commercially available products. And it does not matter whether or not the inventor actually knew about the relevant prior art.
The ornamental appearance of a useful article can be protected with a design patent if the ornamental design is novel and non-obvious. Design patents can cover surface ornamentations for an article of manufacture, the ornamental shape or configuration of an article of manufacture itself, and combinations of those categories. Abstract designs (e.g., a picture standing alone) are not patentable.
Trade Dress / Trademark Protection
Trade dress (a form of trademark protection) may also protect the distinctive, nonfunctional appearance of a product or its packaging. However, trade dress protection only arises in aspects of product configuration that serve as a trademark to allow consumers to identify the source of the product. Trade dress never protects functional aspects of product configuration or packaging. In other words, it is limited to aspects that relate to the manufacturer or seller’s reputation and not to the usefulness of the thing itself.
In the U.S., trade dress protection requires achieving acquired distinctiveness once secondary meaning has developed in the minds of consumers based upon substantially continuous exclusive use for a sufficient period of time (generally a minimum of five years). Trade dress will not provide exclusive rights in product configuration at the time of a new product’s launch, though it might for packaging.
Copyright Protection
Copyright might apply to certain aspects of products, such as product labels or decorative graphics applied onto a product. But copyright will not protect useful or functional parts, only those creative aspects that are conceptually separable and capable of existing apart from the useful or functional parts. For example, a lamp that incorporates a sculpture could have copyright protection in the sculptural elements but purely functional electrical components that allow the lamp to illuminate would not have copyright protection. The text of software code can be copyrightable but not the functionality enabled by software (which might be patentable instead).
Trade Secret Protection
Trade secret protection will not apply to publicly visible or readily ascertainable aspects of a product. But things like the “secret formula”, manufacturing methods, or aspects of embedded software might be protectable as trade secrets if they are not generally known and not readily ascertainable and you take reasonable measures to keep such things secret.
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.
Patents are available for inventions. Software per se is not patent eligible—source code text is copyrightable instead. But a system, apparatus, or device configured to execute particular software-driven functions may be patent eligible and a method (or process) that is computer-implemented via software may also be patent eligible. Ornamental aspects of software-driven graphical user interfaces (GUIs) are also eligible for design patent protection. So, a software “app” (application) as a discrete whole is usually not patentable as such but a patentable invention might include or implicate some software-based aspect.
The U.S. Supreme Court has said that “abstract ideas” are not patent eligible, which narrows the types of software-based inventions that are patentable. A software-based invention that consists only of well-known concepts, mathematical calculations, data processing/manipulation/selection/presentation, what could otherwise be performed as purely mental steps, or the like plus merely generic computer hardware is generally not patent eligible. Software that provides no more than an allegedly improved user experience is also generally not patent eligible.
Patent eligibility hinges on the particular “claims” in a patent application or granted patent, which establish the scope of a patentee’s exclusive rights. More narrowly-drawn claims that focus on a particular inventive feature (e.g., a detailed computer-implemented algorithm) that solves a specific technological problem (e.g., improves computer hardware performance as a tool or transforms physical outputs in a new or improved way) are more likely to be patent eligible than broad, highly abstract claims (e.g., attempting to patent any insertion of an ad before an online streaming video plays). In this sense, software patent eligibility is highly dependent on how the claims are written, an area where patent applicants have wide latitude. Attempts to obtain a broad “preemptive” (or we might say greedy) patent monopoly that exceeds the quid pro quo of the inventor’s contribution to the useful arts raise the most concerns.
Additionally, a software-based invention must be both novel and non-obvious over the prior art to be patentable, just as with any type of invention. In this respect, all invention, software-based ones included, must represent a non-trivial advance over what is already known in order to be patentable. Whether the inventor actually knew about the closest prior art or not is irrelevant—any and all prior art represents a potential barrier to patenting a new invention.
In summary, while you generally cannot patent a software app as a stand-alone product, aspects of software-enabled products or processes may be patent eligible. The real answer to this question is that it often depends on the what invention is, what was known before, and how you try to claim a software-based invention in a patent application.
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.
Prosecution history estoppel can arise when the patentee relinquishes subject matter during the prosecution of the patent—that is, during examination of a patent application at the U.S. Patent & Trademark Office (USPTO)—either by amendment or argument. A narrowing amendment made to satisfy any requirement for patentability (under 35 U.S.C. §§ 101-103, 112, 161, or 171) may give rise to an estoppel. When it applies, prosecution history estoppel will prevent a patentee from relying on the Doctrine of Equivalents to establish infringement based on the particular equivalents surrendered. A given claim limitation might be given only its literal scope (as properly construed) but no more. This policy allows competitors to rely on prosecution history estoppel to ensure that their own devices/processes will not be found to infringe by equivalence.
The Basic Rule
The Doctrine of Equivalents is an equitable doctrine created by courts long ago. It is premised on language’s inability to capture the essence of innovation, allowing some protection beyond the literal scope of a claim where the claimed invention and the accused product or process are equivalent. Its purpose is to “temper unsparing logic” that “would place the inventor at the mercy of verbalism and would be subordinating substance to form” and it evolved in response to situations where accused infringers attempted to “practice a fraud on a patent” by introducing “minor variations to conceal and shelter the piracy.” However, there is a tension between such concerns and the need for patents to put the public on notice of what a patent does and does not cover.
Prosecution history estoppel is about interpreting patent claims by reference to the history that led to their grant. It limits the patentee’s ability to establish infringement by equivalence to help provide certainty to competitors about the enforceable scope of a U.S. patent. Accordingly, the Doctrine of Equivalents is not available where prosecution history shows the inventor was able to capture equivalent differences in words but chose narrower language. The patentee cannot later recapture what was previously surrendered under the guise of the Doctrine of Equivalents. Where the original patent application once embraced the purported equivalent but the patentee narrowed his claims to obtain the patent or to protect its validity, the patentee cannot assert that he or she lacked the words to describe the subject matter in question.
Estoppel Can Arise Through Amendment or Argument
Prosecution history estoppel can arise two ways: (1) by making a narrowing amendment to the claim (amendment-based estoppel) or (2) by surrendering claim scope through argument to the patent examiner (argument-based estoppel). These two possibilities are discussed in turn.
How Amendment-Based Estoppel Can Arise
The first way that prosecution history estoppel can arise is by way of a narrowing amendment to a claim during prosecution. The question of what constitutes a narrowing amendment will depend on the context of a particular patent claim. But a classic example is adding words that narrow the limitations of a claim to avoid a prior art reference cited in a rejection in an office action. As another example, which is less intuitive, courts have said rewriting a dependent claim in independent form is an amendment adding a new claim limitation, which constitutes a narrowing amendment that may give rise to an estoppel.
How Argument-Based Estoppel Can Arise
Argument-based estoppel arises when the prosecution history evinces a “clear and unmistakable” surrender of subject matter. Argument-based estoppel most often arises when the patentee tries to convince a patent examiner that the claims of an application recite something different from the prior art. For instance, a patentee may have argued that a claim term has a meaning that is narrow enough to avoid a disclosure or teaching in a cited prior art reference. In such a situation, the patentee will likely be estopped from later asserting that the Doctrine of Equivalents encompasses what was previously argued to be outside the scope of the claimed invention. Such arguments are treated like an acknowledgement that the patentee knew the meaning of the claim language and deliberately chose narrower language in order to obtain a patent.
Scope of the Estoppel
Though prosecution history estoppel can bar a patentee from challenging a wide range of alleged equivalents used by competitors, its reach requires examination of the particular subject matter surrendered. Even where prosecution history estoppel applies, the scope of the estoppel is not always absolute. These inquiries differ somewhat between amendment-based estoppel and argument-based estoppel.
Scope of Amendment-Based Estoppel
The scope of amendment-based estoppel depends on the claim language at issue and the reason for the amendment. For instance, where the reason for the amendment was not related to avoiding the prior art, it does not necessarily preclude infringement by equivalents of that element. But an amendment to clarify the recitation of the claimed invention to satisfy definiteness requirements for patentability would give rise to an estoppel, even though there was no prior art reference prompting the change. Also, cancellation of a claim can give rise to estoppel with regard to any claim(s) that remain (or are added). However, the reason for an amendment is often not clear from the prosecution history.
When no explanation for an amendment is provided, there is a rebuttable presumption that the Doctrine of Equivalents is not available at all. When the purpose underlying a narrowing amendment cannot be determined—and hence the rationale for limiting the estoppel to surrender of only particular equivalents—it is presumed that the patentee surrendered all subject matter between the broader and the narrower language. But that presumption of amendment-based estoppel can be overcome for a particular equivalent when (1) the equivalent in question was unforeseeable at the time of the application, (2) rationale underlying the amendment bears no more than a tangential relation to the equivalent in question, or (3) the patentee could not reasonably be expected to have described the insubstantial substitute in question.
Scope of Argument-Based Estoppel
The scope of argument-based estoppel is based on the scope of particular arguments made during prosecution. Unlike amendment-based estoppel, there is no presumption-and-rebuttal approach. Rather, the question is how far argument-based estoppel applies in the first place, if at all. The question is whether there was a clear and unmistakable argument-based surrender of particular subject matter. Courts have said that simple arguments and explanations to the patent examiner do not surrender an entire field of equivalents. But any arguments can still surrender some equivalents, even if they do not surrender all possible equivalents. This is very context-dependent. The key to this inquiry is whether a competitor would reasonably believe that the patentee’s argument had surrendered the relevant subject matter.
However, courts have said that any clear assertions made during prosecution in support of patentability, whether or not those assertions were actually required to secure allowance of a claim, may still create an argument-based estoppel. Also, once an argument is made regarding a claim term that creates an estoppel, that estoppel will apply to that term in other claims in the patent too.
Prosecution Disclaimer
Prosecution disclaimer is a separate but related concept. Rather than relating to the availability of the Doctrine of Equivalents to establish infringement, prosecution disclaimer or disavowal can limit the proper construction of a claim’s literal scope. Thus, it may affect whether or not literal infringement is found—prior to any consideration of the Doctrine of Equivalents. For example, it can arise when a patentee makes arguments during prosecution about how the pending claims differ from the prior art. This is meant to prevent patentees from opportunistically taking different (and broader) positions in court when asserting infringement than when obtaining the patent in the first place. Statements made during the prosecution of family-related applications, even later-filed ones and foreign counterparts, may sometimes result in prosecution disclaimer as well.
Questions about prosecution disclaimer pertain to proper claim construction. Claim terms are presumed to carry their full and customary meaning unless the patentee unequivocally imparted a novel meaning to those terms either in the patent application itself (called acting as her own lexicographer) or expressly relinquished claim scope during prosecution. Just as with argument-based estoppel, prosecution disclaimers must be “clear and unmistakable” in order to limit claim scope. An ambiguous statement during prosecution will not limit a claim term’s ordinary meaning.
An important difference between prosecution disclaimer and prosecution history estoppel is when they are taken into account. Prosecution disclaimer is a matter of claim construction. That is something courts do as a first step in patent infringement analyses, without reference to the specific product or process accused of infringement. In contrast, the Doctrine of Equivalents is bound up with the subsequent comparison of the accused product or process to the asserted patent claims as properly construed. Prosecution history estoppel is a question of whether a patent owner is permitted to invoke the Doctrine of Equivalents in particular ways in the second part of infringement analysis, after claim construction. But if literal infringement is found—despite any prosecution disclaimer—there is no need to reach the Doctrine of Equivalents.
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.
At a most basic level, patent infringement in the U.S. involves making, using, selling, offering for sale, importing into the USA a patented invention without authorization. Although there are some additional grounds for infringement that may apply in some other circumstances. All grounds for infringement fall into two general categories: direct infringement and indirect infringement. These categories refer to who is being accused and whether they are directly responsible or instead indirectly or partly responsible. There are multiple types of infringement under each category. These include literal or Doctrine of Equivalents infringement, and, for indirect infringement, active inducement of infringement, contributory infringement, and certain activities related to components for export from the USA. Each of these provisions, set forth in § 271 of the U.S. patent laws, is taken up further below.
Direct Infringement
Direct patent infringement means that an accused party is directly responsible for infringement a patent. Direct infringement requires that each and every limitation (or element) of at least one claim of an asserted patent is met either literally or under the Doctrine of Equivalents. If a limitation of a given patent claim is not present in the accused product or process, either literally or equivalently, then that claim is not infringed.
The sorts of things that can constitute direct infringement include the following:
making (that is, manufacturing) the patented invention in the USA (35 U.S.C. § 271(a))
submitting a new drug application for U.S. regulatory approval (Hatch-Waxman Act; 35 U.S.C. § 271(e))
importing into the USA, or offering to sell, selling, or using within the USA, a product which is made outside the USA by a process patented in the USA, unless it is materially changed by subsequent processes or it becomes a trivial and nonessential component of another product (35 U.S.C. § 271(g))
Certain additional rights to exclude specific to plant patents (35 U.S.C. § 163)
There are two ways of finding infringement that differ in terms of how the accused product or process relates to the scope of the claim(s) of the asserted patent:
Literal Infringement
Infringement Under the Doctrine of Equivalents (also called infringement by equivalence)
Literal Infringement
Literal infringement means that the accused product or process falls within the scope of the asserted claim(s) as construed by a court. Under U.S. law, infringement analysis is a two-step process. It involves, first, construing the claims to ascertain their meaning to a person of ordinary skill in the art and to resolve any ambiguities or disputes over that meaning, and, second, comparing the accused product/process to the properly construed claim(s). Literal infringement is present when the accused infringer meets each and every limitation (or element) of an asserted patent claim exactly, as properly construed. Any deviation from a claim limitation (as properly construed) precludes a finding of literal infringement.
Infringement Under the Doctrine of Equivalents
Under the Doctrine of Equivalents, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless still be found to infringe if there is “equivalence” between the elements of the accused product or process and claimed elements of the patented invention. This type of infringement arises when the accused product or process is outside the literal scope of at least one limitation of an asserted claim, as properly construed. Patentees rely on the Doctrine of Equivalents under the second step of the infringement analysis, if at all, only if literal infringement cannot be established. Otherwise, the Doctrine of Equivalents can apply to the same set of activities as for literal infringement.
This is an equitable doctrine meant to “temper unsparing logic” that “would place the inventor at the mercy of verbalism and would be subordinating substance to form.” It evolved in response to situations where accused infringers attempted to “practice a fraud on a patent” by introducing “minor variations to conceal and shelter the piracy.” Of course, the doctrine is in tension with the policy requiring that claims put the public on notice of a patent’s scope. This is a reason the Doctrine of Equivalents is not meant to be routinely invoked and is not applied broadly. In other words, this type of infringement is a limited exception to the general rule that patent claims must reasonably put others on notice of the outermost boundaries of what constitutes infringement. Put another way, it allows a limited form of “central” claim enforcement in a regime of “peripheral” claiming.
The Doctrine of Equivalents is applied individual claim limitations rather than to the claimed invention as a whole. To find infringement, each claim limitation (or element) must be found either literally or equivalently in the elements of accused product/process. This is called the “all elements” rule. The question of equivalence is inapplicable if a claim limitation is totally missing from an accused device. The Doctrine of Equivalents cannot be used to re-draft claims and effectively eliminate limitations entirely. Though this inquiry always revolves around what differences can reasonably be considered equivalent. An undue expansion of a patent’s claim(s) is not permitted. After-arising technology can potentially be encompassed by the Doctrine of Equivalents (unlike for means-plus-function equivalents).
There are two approaches to assessing equivalents: the “insubstantial differences” test and the “function-way-result” test. The function-way-result test (also called the “triple identity” test) says that equivalence may be present for a given element if the accused product/process performs substantially the same function in substantially the same way with substantially the same result. This is not the only way to assess whether differences are insubstantial, but it is particularly useful for certain types of inventions such as mechanical devices. For biochemical inventions, however, looking at substantial differences may sometimes be more appropriate than the function-way-results test.
There are numerous limits on the Doctrine of Equivalents, which are really beyond this basic introduction. But an extremely important limit on the availability of the Doctrine of Equivalents is prosecution history estoppel. Things that the patentee did or said when obtaining the asserted patent might limit the patentee’s ability to later rely on the Doctrine of Equivalents. So the Doctrine of Equivalents is not always or automatically available.
Indirect Infringement
Indirect patent infringement means that an accused party is causing or enabling someone else to infringe. It can apply when an accused infringer meets some but not all of the limitations (or elements) of an asserted patent claim. It includes three types of infringement, which differ in terms of what the accused indirect infringer is doing:
Supplying Component for Export for Combination Outside the USA (35 U.S.C. § 271(f))
Generally speaking, there are additional requirements that must be satisfied to establish indirect infringement that are not required for direct infringement. Those additional requirements vary depending on what type of indirect infringement is asserted.
Also, relevant limitations of asserted claim(s) can be assessed under either their literal scope or under the Doctrine of Equivalents, if available—see discussions above of literal and Doctrine of Equivalents infringement for direct infringement. This is really to say that the Doctrine of Equivalents may still apply to indirect infringement scenarios.
Active Inducement of Infringement
Actively inducing someone else to infringe a patent constitutes inducement of infringement. Specifically, “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” (35 U.S.C. § 271(b)). This is a form of vicarious liability. Active inducement requires taking an affirmative steps to encourage infringement by another entity, as well as knowledge that the encouraged acts infringe the asserted patent. A key component of inducement is that it requires there be at least one direct infringer. But the difference here is that instead of suing the direct infringer, a different entity is sued for inducement.
Inducement commonly arises in situations involving claims to a method of using a product. Rather than sue the end user, which may be a potential customer, the patentee instead sues a competitor making and selling products used by others to (directly) perform and infringe the asserted method claim(s). It also sometimes arises where a corporate officer or owner induces his or her company to infringe, making that individual personally liable for infringement.
Contributory Infringement
Contributory infringement arises when selling, offering to sell, or importing components that are specially made or adapted for use to infringe a patent. However, contributory infringement excludes activities involving a staple article or commodity of commerce that is suitable for substantial noninfringing use. A “substantial noninfringing use” is any use that is not unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. So there is normally no liability for selling general-purpose commodities, even if they could be used in making or using a patented invention.
“(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”
In order for contributory infringement to be present, the infringer must know that the combination for which his component was especially designed was both patented and infringing. This knowledge requirement differentiates contributory infringement from direct infringement, which does not require any such knowledge of the patent or infringement (except to enhance damages).
Contributory infringement is important for situations involving the sale of repair or replacement parts for use in or with patented products or methods.
Supplying Component for Export for Combination Outside the USA
Section 271(f) of the patent laws creates two grounds for infringement involving activities in the USA relating to products made in a foreign country. They arise when components of a patented invention are supplied for export from the USA. These grounds for infringement are similar to yet distinct from active inducement and contributory infringement, discussed above. But these provisions do not require that the equivalent of “foreign” direct infringement occur. That is, the actual combination need not actual occur. However, these provisions apply exclusively to apparatus claims, and are not available for method/process claims. They also do not apply to activities that occur entirely outside the USA. Also, § 271(f)(1) has a quantitative requirement about the number of components involved and it does not apply to only a single component.
“(f)
(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.”
The grounds for infringement under § 271(f) are somewhat rarely invoked. This is largely because manufacturing costs are often higher in the USA than abroad. As a result, courts have not extensively clarified the scope and proper application of these provisions. But suffice it to say they may apply in situations where components are being produced and/or sold in the USA for export.
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.
Intellectual property (IP) litigation tends to be relatively expensive compared to other types of lawsuits. There are many reasons for that. Though the complexity of the legal issues involved and a tendency for extensive pre-trial discovery and use of expert witnesses contribute to the total costs.
Below are graphs showing average costs through various stages of a an infringement or misappropriation lawsuit in the U.S. A summary graph compares average costs for “small” patent, copyright, trademark, and trade secret cases with less than $1,000,000 at risk. There are also individual graphs for patent, copyright, trademark, and trade secret cases with different amounts at risk, that is, with different amounts of potential damages for infringement or misappropriation (in U.S. dollars). All data comes from the 2021 AIPLA Report of the Economic Survey.
Comparison of Average “Small” IP Lawsuit Costs by Type of Case and Stage
Average Patent Litigation CostsAverage Copyright Litigation Costs
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.
Novelty and non-obviousness requirements for patentability are assessed based on the contents of the “prior art”, which can include information previously published by anyone—even by an inventor. Section 102 of the patent laws formally defines what qualifies as prior art in the USA. An earlier “printed publication” will usually count as prior art for novelty (anticipation) and obviousness assessments against a later patent application. Though there are some exceptions, including a one-year grace period that may exclude prior disclosures by an inventor.
The question at hand is about the legal requirements for something to qualify as a “printed publication” for patentability in the U.S. (since the adoption of the America Invents Act [AIA]) This mostly depends on whether relevant technical disclosures appeared in something was generally publicly accessible long enough ago. For the discussion that follows, we will simply assume that given materials contain some kind of relevant technical disclosure.
Examples of Printed Publications
Printed publications can be all sorts of things. They can include books, technical journal articles, web pages, videos, audio recordings, etc. This type of prior art is not limited to the particular format of the materials. In the Internet age, printed publications encompass more than just written text, and more than just hard copy materials.
But “printed publications” generally exclude products themselves. That is, a commercial product or the public use of a method/process would not normally be considered a “printed publication”, although they might instead fall within on-sale and/or public use prior art categories. Yet associated product manuals, product advertisements, and the like might qualify as printed publications.
“Printed Publications” Versus a “Patent” or “Application for Patent Published or Deemed Published”
Before going any further, it is important to note that U.S. law calls out patents and published patent applications separately from “printed publications”. (35 U.S.C. § 102(a)). But patents and published patent applications can be considered “printed publications” too. Patent-related publications can potentially qualify as prior art as any (or all) of a “printed publication”, something “patented,” and/or as a “a patent issued under section 151, or in an application for patent published or deemed published under section 122(b).” In other words, those categories are not mutually exclusive.
The important point here, which may be counter-intuitive, is that “printed publications” include but also go beyond patent-related publications. For that reason, the term “non-patent literature” (NPL) is sometimes used to describe a typical kind of non-patent prior art that falls under the category of printed publications. That terminology sometimes helps to highlight unique issues that can arise when seeking to establish that an NPL reference qualifies as prior art.
Public Accessibility
The first question in determining if something qualifies as a printed publication is determining whether it was published. Courts have said that “public accessibility” isthe touchstone in determining whether a reference constitutes a “printed publication”. A given reference will be considered publicly accessible only if it was made available to the extent that persons interested and ordinarily skilled in the relevant subject matter (or art) exercising reasonable diligence can locate it. There is no formula or checklist for making that determination. Whether a reference is publicly accessible is determined on a case-by-case basis based on all the facts and circumstances surrounding disclosure of the reference to members of the public.
There are really three ways something can be established as publicly accessible in the eyes of U.S. courts:
Cataloging/indexing – By establishing that a document was catalogued or indexed in a publicly accessible archive (e.g., a library catalog or Internet search engine) so that persons interested and ordinarily skilled in the subject matter or art can locate it by exercising reasonable diligence and using available research tools, regardless of whether anyone actually accessed it;
Distribution/dissemination – By establishing that a document was distributed or disseminated (e.g., mailed, handedout in person, sent in a newsgroup electronic message, or announced orally at a conference and made available) in a sufficiently broad way, without a reasonable expectation of privacy, so that members of the public interested in and ordinarily skilled in the subject matter or art could obtain copies by exercising reasonable diligence; or
Public display (without literal distribution) – By establishing that materials (e.g., a temporarily displayed slide presentation, video shown on-site, poster, billboard, etc.) were publicly displayed for a sufficient time and in a sufficiently broad manner, without a reasonable expectation of privacy, so as to be sufficiently accessible to persons interested and ordinarily skilled in the subject matter or art by exercising reasonable diligence, even though copies of the materials were never distributed or indexed and the materials never physically left the presenter’s control.
Notably, courts have said that a sufficient public dissemination or display of materials can make them a “printed publication” even where those materials were never searchable and never indexed/cataloged. Cataloging or indexing something is just one among many ways that something can be considered published and publicly available.
Private communications do not count as printed publications, whether designed for the use of single persons or of a few restricted groups of persons. Anything that is reasonably expected to remain secret, such as private communications marked as confidential or not for distribution or exchanged under a non-disclosure agreement (NDA), will not qualify as printed publication prior art. Although, sometimes courts disregard ambiguous confidentiality restrictions or read alleged confidentiality terms narrowly to still find public accessibility. When dissemination or display is asserted as the basis for public accessibility, it is necessary to look at certain factors to determine the reference was sufficiently publicly accessible to count as a “printed publication”. For instance, establishing public display requires looking at where and how the display occurred, including the openness, size, and nature of the display venue.
Also, technical accessibility alone is not enough if no one of ordinary skill in the art could have reasonably found the materials except by accident. The materials have to sufficiently publicly accessible to be considered “published”, by doing something that reasonably alerts the relevant public to their existence. Materials that are in a library or on web server, or randomly left lying in a public place, but that have not been indexed, disseminated to, or otherwise affirmatively announced to the interested public will not be considered generally publicly accessible, for example.
It may be helpful to consider a push vs. pull distinction regarding the public accessibility threshold. Publication in effect requires that materials be pushed out in some manner that allows the interested public to know about them. Such a “push” could be any of the three options described above: cataloging/indexing, public dissemination, or public display. An interesting facet of this is that anyone can publish a “printed publication.” There is no hierarchy of worthy/unworthy publications. Publication is not limited to certain channels (controlled by gatekeepers). But the mere fact that someone could “pull” information by specifically requesting it is not enough. It begs the question to say that information could be requested if there was no reason for someone to know in the first place that it could (technically) be requested. In short, printed publication status for patentability requires some kind of “push” out of the realm of private knowledge and into the realm of public accessibility.
Date of Public Availability
In order to qualify as prior art against a given claim, a printed publication must also be old enough. The essence of something being “prior art” is that it pre-dated a later effort to patent an invention. This requires looking whether a given publication was publicly accessible (published) before a critical date. The term “critical date” is often used in order to implicitly acknowledge that the date that divides prior art from things that are not old enough to be prior art varies depending on whether or not an exception applies—possible exceptions are discussed below. For a typical “printed publication” by a third party, where no exception applies, the critical date means before the effective filing date of the patent claim at issue.
The date of public availability is sometimes easily determined, but not always. This question is easiest when the materials in question are the kind subject to a predictable and reliable means of publication. For instance, using a U.S. patent application publication as a “printed publication” is straightforward because the patents are official U.S. government documents that are publicly available from the time they are issues and the issue dates printed on the face of patents are reliable indicators of the actual date of issuance (publication). This question is also fairly easy for foreign patent documents.
When in comes to many types of materials, however, dates may not appear on the materials themselves or those dates might not be sufficiently reliable. To use a famous example, Sigmund Freud’s book Die Traumdeutung[The Interpretation of Dreams] was first published in November of 1899 but the title page was post-dated to 1900. Also, dates appearing on a document may indicate something other than a date of general public accessibility. For example, the mere presence of a copyright notice date, printing date, Internet server upload date, or the like on reference itself will not necessarily satisfy public availability evidentiary requirements. But publication by an “established” publisher on something bearing traditional hallmarks of publication (a book’s ISBN, etc.) may be sufficient in AIA trials before the USPTO’s Patent Trial & Appeal Board (PTAB).
There can also be disputes about revisions or different versions of a given publication. This is especially true for online materials. Sometimes a publication date may reflect only the initial publication date. But it may not account for the dates that revisions, modifications, or later additions took place. The date of public accessibility is assessed on the basis of the particular version put forward as potential prior art, and cannot be assumed to match that of a substantively different version.
Legal Standards for Evidence of Publication
To complicate matters, use of “printed publication” evidence in formal patent examination or disputes requires satisfying rules around the use and introduction of evidence. Different evidentiary standards will apply depending on where and how patentability or validity is being assessed.
During regular examination of a new patent application at the USPTO, a relatively low evidentiary standard is applied. A date appearing on a document can establish its publication for examination purposes unless the applicant challenges it. (MPEP § 2128).
However, higher standards are applied in contentious proceedings, including IPR proceedings and during infringement suits in courts. In those situations, there are rules against hearsay (Fed. R. Evid. 802 and 803) and rules requiring authentication of evidence (Fed. R. Evid. 901 and 902). These requirements may necessitate use of a witness to authenticate something put forward as a “printed publication” and its alleged publication date. This can include testimony from a librarian who cataloged something as of a particular date or a computer forensic expert able to retroactively determine the date of publication.
Web pages are a common type of printed publication evidence for which the publication date normally needs to be established beyond just a date that appears on the web page itself. Aside from witness testimony, demonstrating a clear reliable process for capturing, preserving, and presenting the web page, such as using the Internet Archive’s “Wayback Machine,” might be acceptable. (See https://archive.org/legal/faq.php).
Complicating matters still further is that a preponderance of the evidence standard is applied in all USPTO matters while a higher clear & convincing evidence standard is applied in courts. So the PTAB may accept something as a printed publication while a district court might not, based on these different evidentiary burdens (under essentially the same evidentiary rules).
Potential Exceptions
A printed publication will not count as prior art if (a) it was by an inventor within a one-year grace period before the patent application’s effective filing date or (b) the publication is by another but an inventor had previously publicly disclosed the invention (within the grace period).
“(a) Novelty; Prior Art.-A person shall be entitled to a patent unless-
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions.–
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.-A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.-A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. [see also § 102(c) regarding inventions under joint research agreements that may satisfy this provision]
This rather long list of possible exceptions is no doubt confusing. But some general points may aid in understanding the exceptions.
First, the exceptions under § 102(b) fall into two categories depending on whether the alleged prior art is put forward under § 102(a)(1) or under § 102(a)(2). Here, note that § 102(a)(2) applies only to U.S. patents and published patent applications (plus PCT international application publications designating the U.S.). So any non-patent materials like books, journal articles, web pages, and the like will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered. Similarly, any foreign patents or published applications will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered.
Second, under the § 102(b)(1) exceptions that apply to a “disclosure in a printed publication,” there are two possibilities: (A) disclosures made by (or on behalf of) an inventor within the one-year grace period, and (B) where an inventor made a qualifying public disclosure that pre-dated the printed publication. Where they apply, these exceptions establish a “critical date” one year before the effective filing date of the inventor’s patent application (assessed claim-by-claim). In practical terms, exception (B) will rarely arise, partly because it requires satisfying exception (A) plus additional requirements. The more common of the two exceptions is that an inventor’s own printed publication disclosures up to one year prior to a new patent application filing will not count against that inventor as prior art in the U.S.
Illustration of Timeline for U.S. Patent Filing Grace Period
One of the more important aspects of these exceptions is that an inventor’s own prior patent application may not qualify as prior art against that inventors own later application depending on when the prior application is published. This situation can arise when a later application does not formally claim priority to the inventor’s own prior application.
These exceptions to prior art status are rather unique to U.S. patent law. Most other countries follow more of an absolute novelty approach, with no grace period for delayed patent filings. So keep in mind that every jurisdiction will have its own rules for what counts as prior art and those rules offer differ from those in the U.S.
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.
Patent marking can be important for obtaining full recovery of infringement damages. When enforcing a patent against an infringer in the United States, damages for infringement of a patented article can usually be recovered only from the date the infringer had actual or constructive notice of the patent(s), whichever comes first. Actual notice requires the affirmative communication of a specific charge of infringement by the patentee to the accused infringer, such as in a cease-and-desist letter or filing an infringement lawsuit. Constructive notice is established by the patentee properly marking patented articles, regardless of whether a particular infringer actually sees that patent notice on products.
The following is a brief overview of basic U.S. patent marking legal requirements as well as guidance about how to properly implement patent marking. A more detailed treatment (with extensive examples) is provided in the Patent Marking Guide.
The U.S. Marking Requirement
The U.S. patent laws provide the following statutory marking requirement:
“Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.”
These statutory marking requirements apply to all types of U.S. patents: utility, design, and plant. Having a marking requirement helps to avoid innocent infringement situations, among other things.
Patent Marking Provides Constructive Notice
Marking patented articles provides constructive notice to the public that an article is patented. To be legally sufficient to establish constructive notice, the patentee must be able to prove that substantially all of the patented articles being distributed were properly marked, and that once marking was begun, the marking was substantially consistent and continuous. If marking is defective at first, curing those defects going forward is possible. But full compliance with marking requirements to provide constructive notice to infringers is not achieved until the time the patentee consistently marked substantially all of the patented products, and if marking was deficient for a time then constructive notice will not be provided unless and until proper marking occurs with subsequent sales.
Possible Exceptions to Marking Requirements
The most important exception to the marking requirement is where the patentee has not sold any patented articles. When there are no products to mark, there is no failure to mark and therefore no bar to recovery of pre-suit damages.
Additionally, because the marking statute refers only to a “patented article”, patents with method or process claims are treated differently. Neither marking (constructive notice) nor actual notice is required to obtain back damages for infringement of asserted patents having only method or process claims. For patents having both apparatus and method claims, marking might still be required (if apparatus claims are asserted) and is therefore recommended.
Licensee(s) and Other Authorized Parties Must Mark Too
Marking requirements apply not only to the patentee but anyone making, selling, or offering for sale the patented article “for or under” the patentee or importing it into the U.S. Where a patent is licensed to another, expressly or impliedly, or is the subject of a covenant not to sue or the like, the other entity is required to mark as well. Authorized activities by an outsourced manufacturer or authorized seller are treated as if they are by the patentee in terms of marking requirements in this respect. Failure of a licensee or other authorized user to consistently mark substantially all licensed products will frustrate efforts to establish constructive notice. This requirement for licensees and authorized users is subject to a rule of reason. Some instances of omitted marking by others might be excused so long as the patentee makes reasonable efforts to ensure their compliance with marking requirements. It is recommended that any license for a U.S. patent obligate the licensee to comply with marking requirements. If that cannot be done, but a part (sub-component) is sold so that an authorized downstream reseller or importer will use it to assemble a patented article, that the part specifically intended for use in the patented combination carry a “for use under” patent marking notice.
How to Implement Patent Marking: Two Possibilities
There are two ways to mark patented articles in accordance with U.S. law: physical or virtual marking.
Physical Marking
Physical patent marking (which can also be called conventional or traditional marking) involves fixing notices on the patented articles themselves in a way that associates the patented article with the number of the patent. Such a notice must include the word “patent” or the abbreviation “pat.”, together with the number of the patent.
If the nature of the patented article means such a notice cannot be fixed to the patented article itself, such as due to size constraints or where the article is a fluid or powder, the notice can instead be placed on a label fixed either to the patented article or to a package containing one or more of the patented articles. This is an alternate form of physical marking that is appropriate if (and only if) there is a legitimate reason the marking notice cannot be directly fixed to the article. And that reason should involve more than mere convenience or subjective preference.
An example of a proper physical patent marking notice (for the fictitious U.S. Pat. No. 00,000,000) would be the following fixed directly on an article covered by the claims of the indicated patent:
Pat. 00,000,000
If multiple patents apply to the same patented article, they can be listed together. It is not necessary to repeat the word “patent” or abbreviation “pat.” before each patent number in such a list. Pluralizing the word “patent” is generally fine, as is the presence of an additional word or abbreviation, such as in “patent number 00,000,000” or “pat. nos. XX,XXX,XXX and YY,YYY,YYY”. The use of “U.S. patent” or “U.S. pat.” would also be acceptable. The text of the notice should be in English.
Virtual Marking
Virtual patent marking is an acceptable alternative to physical marking. It can be useful in situations where all the patent information required to provide constructive notice cannot easily fit on the patented article or even its label, such as where there are multiple patents that apply to an article that is fairly small in size. As the number of digits in patent numbers increase, this sort of difficulty increases. Virtual marking can also be helpful in situations where different patents are associated with different products but having multiple product-specific notices is burdensome—a single notice template might be used listing a URL for a web page with patent association information for multiple products. For instance, virtual marking can help minimize the need to replace or modify molds used to create a patent marking notice directly on molded articles as new patents issue.
Implementing virtual patent marking involves fixing notices on the patented articles themselves in a way that associates the patented article with the number of the patent. Such a virtual marking notice must use the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet (that is, a web page URL), accessible to the public without charge for accessing the address.
If the nature of the patented article makes means such a notice cannot be fixed to the patented article itself, the virtual marking notice (indicating “patent” or “pat.” together with a URL) can instead be placed on a label fixed either to the patented article or to a package containing one or more of the patented articles. This is an alternate form of virtual marking that is appropriate if (and only if) there is a legitimate reason the virtual marking notice cannot be directly fixed to the article. And that reason should involve more than mere convenience or subjective preference.
An example of a proper virtual patent marking notice fixed on a patented article or its label is the following:
Pat. www.example.com/patents
The main feature of virtual patent marking is that the information associating the patented article with the number(s) of the patent(s) that cover it appears on a freely-accessible web page rather than directly on the article or its label. There is still a requirement for a notice on the patented product or its label. A marking web page, alone, is insufficient unless there is also a proper notice on the patented product or its label to direct people to that web page’s address. Moreover, a virtual marking notice on a product or its package is insufficient without an acceptable posting accessible from the identified Internet address.
The difference between physical and virtual marking really involves the manner of conveying the required association between the patent number(s) and the patented article. With traditional physical patent marking, the association is implicit in terms of which patent numbers are including in or omitted from a notice fixed to a particular product or its label. In virtual marking, the notice fixed to the product or its label merely directs the public to a web page but the web page must further provide an association between given patent(s) and the specific product(s) that practice those patent(s).
Courts have said that virtual patent marking does not allow a patentee to avoid the traditional burden of determining which patent(s) apply to specific products and indicating that patent-to-product association. The patentee cannot shift that burden to the public. A web page that presents a “research project” forcing visitors to determine patent-to-product association(s) on their own fails to provide constructive notice. Any web page lacking the required “association” between the patent(s) and patented article(s) is legally deficient and will not provide constructive notice allowing recovery of pre-suit infringement damages.
Certain courts have found the following to be insufficient for virtual marking:
A web page listing all of a company’s patents with an indication that “one or more” listed patents “may be used” by unspecified products within a stated product category (cite)
A web page listing multiple patent numbers/titles and grouping them by product category, without indicating which specific products within each category were covered by specific patents (cite)
A table on a web page listing patent numbers and titles but lacking any product information (where the company sold multiple products and one was unrelated to its patents) (cite)
Patent-to-product associations indicated somewhere other than on the virtual patent marking web page (cite)
Failing to put a notice indicating a virtual marking URL on hardware sold by a licensee that had pre-installed software that made the combined hardware-plus-software product subject to an asserted patent (cite)
False Patent Marking Prohibited
An important related concept is false patent marking. False marking generally involves marking products as patented when they are not, or marking products as “patent pending” when no patent application has been filed, with an intent to deceive. It also applies to intentional counterfeiting. Penalties apply to intentional false marking (35 U.S.C. § 292). Although the patent laws exclude from the scope of false marking the indication of an expired patent that once applied to the marked product. Also, there is no liability for honest mistakes about whether or not a patent applies.
It is important to only use patent marking where there is a reasonable basis to believe that the product is covered by the indicated patent(s). Patents that do not apply to a given product must not be marked on it (consider also any invalidation or cancellation of a given patent for continued marking). In the virtual marking context, patent-to-product associations must be specific enough to avoid false marking. Imprecise, blanket statements on virtual marking web pages implicating multiple patents and multiple products might give rise to false marking if done for purposes of deceiving the public about which patents, if any, apply to particular products. More generally, avoid marking products with any “patented” language that is confusing, geographically vague, or misleading with respect to that product’s patent status in the USA.
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.
If you are interested in patenting a new invention, or simply interested in assessing its patentability, a helpful early step is to prepare an invention disclosure. Such disclosures gather relevant technical information, as well as details about the identity of all potential inventors. The invention disclosure should be written and should further include drawings or other visual aids. It should be kept confidential. There is no “official” government form for an invention disclosure, though companies may have a form for internal use.
The following sample invention disclosure forms can be downloaded and used to document a new invention for patent purposes:
The main purpose of preparing an invention disclosure is to convey relevant detail details about the structure and configuration of the invention, how it functions, what is believed to be significant about the invention in relation to what has been done before (the “prior art”), and potentially other things that might affect the ability to patent the invention. This disclosure should be prepared by the inventor(s) themselves. It is usually not fancy or long. These sorts of disclosures are simply meant to gather basic, essential technical information and to point out what are considered the most important features. A patent attorney and/or patent searcher can then use the disclosure to gain an understanding of the invention in order to prepare a patent application or conduct a patentability search.
There may be additional documentation and information needed beyond what appears in an invention disclosure. Requests for more technical information are common. For example, patent attorneys will usually conduct at least one inventor interview to gather more technical information for purposes of patenting. But an invention disclosure is a starting point. Inventor interviews are much more productive if the patent attorney has some relevant drawings and other materials beforehand. That allows the patent attorney to have some sense of what the invention is about in order to ask better and more pointed questions.
It is important that an invention disclosure mention all the important features of the invention that might be patentable. Patent attorneys can ask follow-up questions, but they are not mind-readers. Omitting some major aspect of an invention on the invention disclosure entirely is a common mistake. Another common error is to focus on commercial marketability information, omitting technical details about what an invention really is and how it works that matter most for patenting.
An invention disclosure should also be relatively short and focused. While voluminous technical materials might have value for a patent attorney at certain stages of patent application preparation, it is inefficient for a patent attorney to read through dozens or hundreds of pages of such materials without some guidance. And an attorney might not fully or immediately appreciate what is new and inventive in merely “raw” technical data. An invention disclosure should be like a beacon pointing out what the inventor(s) consider to be most significant, at least as a starting point.
Invention disclosure forms that are signed and dated can sometimes provide useful records about who developed a given invention and when. Though a confidential write-up by itself will generally not preserve any patent rights—filing a patent application is required to do that. And there may be bar dates or deadlines by which a patent application must be filed.
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.
For pending patent applications, office actions are commonly sent by the U.S. Patent & Trademark Office (USPTO) rejecting and/or objecting to aspects of the application on the merits. The applicant must respond to an office action within a certain response period in order to avoid abandoning the patent application. The back-and-forth communications between the USPTO and the applicant is called “prosecution”. Nearly all U.S. patent applications receive at least one office action. Yet most applicants are able to overcome the rejections/objections to obtain a patent. This means applicant responses to office actions are important in obtaining patents. But how should the applicant respond?
Overview
The best way to respond to an office action will vary for one case to the next. The most appropriate response strategy depends on the specific context. Generally, the following factors will influence how best to respond (if at all):
Specific rejections and/or objections made in the office action
Law and procedures governing the rejections/objections
Scope and content of the patent application:
current claims
original disclosure of the applicant’s invention (support/written description)
Applicant’s overall patenting strategy
In any situation, typical responses will consist of arguments or a combination of amendments and arguments. Any response that contains an amendment is called an “Amendment”. A response that contains only arguments can be called a “Response”, though the USPTO still classifies these as a type of amendment. Certain other types of information and accompanying filings, such as petitions, may also be submitted together with a response in some circumstances. Payment of official fees may also be required with a response, such as extra claim fees or extension of time fees.
The Specific Rejections/Objections
Not surprisingly, the appropriate way to respond to an office action depends on the particular rejections and/or objections being made. Though a compliant response generally needs to address all of the rejections and objections made in the office action. It is possible to informally group rejections and objections into three categories: (1) prior art-based rejections; (2) eligibility rejections; and (3) formality rejections and objections.
Prior art-based rejections are ones that assert particular claims of an application are not patentable based on what was already known in one or more cited prior art references. These include rejections based on anticipation (35 U.S.C. § 102), also called lack of novelty, or based on obviousness (35 U.S.C. § 103). Whenever there are rejections made based on cited prior art, the applicant should consider what the cited art actually discloses, teaches, and suggests, and whether the office action accurately characterizes those teachings and disclosures. It is common for applicants to disagree with the patent examiner about the scope of the prior art. These are often factual arguments about what was or was not actually known in the prior art.
Eligibility rejections deal with questions of whether the subject matter of the invention is eligible for patent protection. These usually pertain to the utility requirement for utility patent applications (35 U.S.C. § 101). Though design patents (35 U.S.C. § 171) and plant patents (35 U.S.C. § 161) have different eligibility requirements. Abstract ideas, natural phenomena, and laws of nature are not patent eligible in the USA. Eligibility/lack of utility rejections tend to be most common for certain types of technologies, such as software-implemented inventions, methods of medical diagnosis and treatment, etc. Responding to these rejections can often be challenging.
Formality rejections are ones that generally deal with the form of the patent application. These are very often about the procedures and technicalities that applicants must comply with. These include rejections based on indefiniteness or lack of enablement (35 U.S.C. § 112), and objections to the drawings or specification or for informalities like typographical, spelling, or grammatical errors in the claims. Formality rejections are sometimes cured through corrective amendments, though they can also be argued sometimes.
Applicable Law and Procedures
Office actions are prepared by patent examiners who must follow the patent laws, and interpretations of those statutes by courts, as well as USPTO regulations and procedures. In general, patent examination in the U.S. follows the guidance and procedures set forth in the Manual of Patent Examining Procedures (MPEP). The MPEP is usually the first place to look for guidance about the legal standards and procedures that a patent examiner is supported to follow.
Any rejections or objections set out in an office action must comply with applicable law. Applicants will often disagree with an examiner about legal requirements to sustain a rejection. It is common for applicants to argue that an examiner has not met his or her burden to reject a particular claim of a patent application. These are often legal arguments about what the law requires (or does not require).
Scope and Content of the Patent Application
A suitable office action response will depend on what is recited in current claims and in the original disclosure (specification) of the application. Any office action will have been based on the way the applicant’s invention is disclosed and claimed. The way that the applicant has presented the invention in the application can vary a lot. Applicants have a lot of discretion in how they do so. This means the application itself is an important starting point in determining how best to respond to the office action.
The claims of the application recite the scope of the exclusive legal rights sought in the invention. That is, the claims define the invention sought to be patented. Applicants can usually amend the claims to adjust their scope and format. New claims can also sometimes be presented. Narrowing amendments might be made distinguish the claimed invention from cited prior art, for instance. Or clarifying claim amendments might be made to resolve formality rejections or objections. The implications of claim amendments can be significant. Narrowing amendments reduce the scope of exclusive rights in any resultant patent. And amendments can also result in prosecution history estoppel, which limits the interpretation and scope of enforceable rights. But the key is that the claims can potentially be amended in order to overcome rejections and/or objections.
The rest of the patent application (or specification) is significant in terms of how it discloses the invention. For instance, there may be explicit definitions of certain terms used in the claims that are implicated by a rejection in an office action. Also, the scope of the original disclosure (the “written description”, which includes any drawings) is in most respects fixed at the time the patent application was filed. An applicant cannot add “new matter” to the application after filing. This is often important because any claim amendments must have support in the original disclosure. An applicant cannot try to avoid cited prior art by amending the claims to recite something “new” that was not originally disclosed. So the original application constrains what sorts of later amendments are permitted.
Applicant’s Patenting Strategy
Lastly, the applicant’s overall patenting strategy will play a major role in how best to respond to an office action. These are often questions about what claim scope the applicant desires and what scope the applicant is willing to accept or settle for.
For example, business objectives are important. A patent application might disclose multiple possible embodiments of an invention with different configurations, features, etc. Some of those things might be merely optional or have been omitted from commercial versions of the invention. While certain response strategies might result in allowance and grant of a patent, any that depart from the embodiment(s) of the invention that the applicant is actively commercializing might have limited practical value. The relationship of a given application to other pending applications or granted patents, if any, can also be significant. As can the potential for a further, related (continuing) application.
There may be timing considerations too. Sometimes an applicant wants to obtain a granted patent as quickly as possible. Alternatively, it may be desirable to slow down patent examination to allow time to determine which disclosed embodiment of the invention seems the most commercially viable.
Additionally, the applicant’s budget and available resources can play a significant role. Official fees and attorney fees associated with further pursuit of patent protection can be significant. Applicants usually desire to have broad exclusive patent rights in their invention. But broad claims are often much harder to obtain. There is frequently greater effort and expense involved in pursuing broad claims, which is why applicants might settle for narrower claims. On the other hand, there can be long-term cost savings associated with maintaining a single patent rather than multiple patents, which might suggest making a more robust response to try to avoid additional patent filings. In short, budget constraints and business considerations will sometimes influence the way an office action response is prepared aside from the merits of the case.
Summary
There are many—sometimes competing—factors that will influence how to respond to a patent application office action. There is no one right way to respond. The most appropriate response strategy will take into account the many different considerations, backed by knowledge of the applicable law and procedures as well as an understanding of the technology involved with the invention. The overview given here is really only a basic introduction. Other options may be available in specific situations that are beyond the scope of this introduction. Given the complexity of patent law a patent attorney will generally be aware of the full range of options and can advise about specific cases.
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.
There are a number of different types of patents and patent applications. The available types of patents and patent applications also vary by country. Before turning to those specifics, an important initial distinction to note is between a patent application and a granted patent.
Patent Applications Versus Granted Patents
A patent and a patent application are not the same thing. This is a common source of confusion for those unfamiliar with patent law.
Patent Applications
A patent application is essentially a request by an inventor/applicant to obtain a patent. It is a custom-prepared document rather than a template form that is filled-in. Simply filing a patent application does not by itself entitle the applicant or inventor to enforceable legal rights. More is required to secure enforceable exclusive rights in an invention. Filing a patent application is just the first step in that process. Importantly, applications generally have to undergo an official examination to assess patentability. The applied-for invention may or may not be patentable.
Pending patent applications are normally (but not always) published after approximately 18 months. This means that there are publicly-available “patent application publications” or “published patent applications”. But these still only pertain to a (pending) patent application as opposed to a (granted) patent. A patent application publication, alone, is not enforceable.
There is really nothing final about a patent application when it comes to rights in an invention. Whether published or unpublished, the existence of a patent application really only means that someone currently is or was in the past pursuing patent protection. A good analogy is somebody filing a complaint to a commence a lawsuit: they hope to win, eventually, but merely initiating the lawsuit is not the same as a final judgement on the merits. There can be changes to a patent application while it is pending. So the published version of a given application may not fully reflect its current contents. And patent applications can be abandoned entirely.
Granted Patents
A patent is granted (or issued) by a government as a “public franchise” and gives the owner(s) exclusive rights to an invention. The scope of the enforceable legal rights are defined by the claim(s) of the patent. A patent is also enforceable only in a given jurisdiction. There is no such thing as an international patent enforceable throughout the world. So obtaining exclusive legal rights in multiple countries usually requires obtaining patents in each of those individual countries—though a few regionally-enforceable patents exist outside the USA. In the U.S., a granted patent is presumed valid because it has undergone pre-grant examination to assess patentability. Though even granted patents can still be challenged.
Every patent starts out as a patent application. And there may be multiple patent applications related to a given patent. But, on the other hand, any given patent application might or might not turn into a granted patent. A patent office may reject the patent application because the claimed invention is unpatentable, for instance. Or an applicant may simply abandon an application before a patent is granted for a variety of reasons.
Patent Families
Patents and patent applications that are formally related to each other are often referred to as a patent “family”. This includes reference to “parent” and “child” patents and applications.
Types of Patents
There are three types of patents available in the United States for different types of inventions:
Utility
Design
Plant
Utility patents are directed to useful inventions. If someone refers merely to a “patent”, chances are they mean a utility patent. Most U.S. patents are utility patents. In other countries these may have a slightly different name, like invention patents in the People’s Republic of China.
Design patents are directed to inventive ornamental designs of useful articles. They do not cover functional features or designs in the abstract—unconnected to an article of manufacture. In some other countries, designs are not covered under patent laws but instead as either “industrial designs” that are a unique type of protection or something closer to trademark (trade dress) protection.
Plant patents cover inventive asexually reproduced plants. Some inventions related to plants can be protected by utility patents, which is to say that a plant patent is not the only possible type of patent protection available for plant-related inventions.
The types of available patents are not the same around the world. In some countries, utility models or petty patents are available. But those types of patents do not exist in the USA.
Types of Patent Applications
There are a number of different types of patent applications in the USA:
Provisional
Nonprovisional
Continuing Applications:
Divisional
Continuation
Continuation-in-Part (CIP)
PCT International Application (and associated National Phase Entry)
Hague International Design Application
Reissue
Provisional applications are not examined but can be relied upon by a later-filed non-provisional application claiming “priority” to the provisional. They serve as a kind of temporary placeholder to preserve rights to file a nonprovisional application within a year. Provisional applications are available only for utility and plant inventions. They are not available for design inventions. The U.S. and a few other countries permit provisional applications but most countries do not.
A nonprovisional application is essentially just a regular patent application. It can be an application for a utility, design, or plant invention. Nonprovisional applications in the U.S. undergo substantive examination and can potentially result in a granted patent.
Continuing applications are special types of nonprovisional applications that claim priority to an earlier, co-pending domestic U.S. nonprovisional application or PCT international application designating the U.S. But an application with a priority claim to a prior foreign application or U.S. provisional application is not considered a continuing application. What is called a “divisional” application in many other countries might be called either a “continuation” or “divisional” application in the U.S.
The PCT system, which is administered by a United Nations agency (WIPO), provides a sort of application clearinghouse to facilitate the pursuit of patent protection in various participating countries. But the PCT system still requires action in individual countries or regions. At the start, a (single) PCT international application that designates selected participating countries (usually all participating countries) is filed in a “receiving office”. The international application can then later enter the national phase (or regional phase) in one or more designated countries or regions. A PCT national (or regional) phase entry is actually not separate from the PCT international application but merely represents a different (national/regional) phase in the life of the same international application.
Hague international design applications are roughly the equivalent of a PCT application but for design inventions.
Reissue applications are applications to correct an error in an issued patent. In other words, reissues only arise after a patent has already been granted. Broadening reissues, which enlarge the scope of the claim(s), must be filed within two years of grant of the underlying patent. Other (non-broadening) reissue applications are not subject to the two-year filing deadline. Grant of a reissue results in surrender of the original patent.
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.
