Tag: Patent Prosecution

New and Upcoming Changes in U.S. Patent & Trademark Law for 2025

Post author By Austen Zuege

Important Developments

As 2025 begins, some recent and upcoming changes in patent and trademark practice before the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention, along with developments from U.S. courts pertaining to those areas of intellectual property (IP) law. (Click the preceding links to jump to desired content).

Patents

Massive official patent fee increases for 2025

The USPTO will impose significant official patent fee increases starting January 19, 2025. Materials related to the patent fee increases can be found here, including an Executive Summary of the most notable official patent fee increases and wholly new official fees plus a spreadsheet showing all old and new fees and the difference between them. The Executive Summary and spreadsheet should be consulted because of the sweeping extent of the official fee schedule changes and because many initial proposals were modified or eliminated in the final rule.

The general nature of this round of fee setting activity is that the USPTO is charging much more and, in some areas, also doing less. As just a few selected examples, the USPTO is imposing new tiered fees for continuing applications (with large fees required if a new continuing application is filed more than six or nine years after the earliest priority date), new fees if the number of cumulative citations submitted with information disclosure statements (IDSs) exceed tiered thresholds of 50/100/200 references, higher excess claim fees, a huge increase in the fee for patent term extension (PTE) requests (which are not to be confused with patent term adjustment (PTA) determinations), and large increases in design patent application fees. Legislation a few years ago increased official fee discounts to small and micro entities, and the new official fees are in large part an effort by the USPTO to avoid any overall reductions in total fees collected.

AFCP 2.0 discontinued

The widely-used After-Final Consideration Pilot (AFCP) 2.0 program was discontinued as of December 15, 2024. The USPTO had previously proposed imposing a significant official fee for what previously carried no official fee. Feedback on the proposed fee requirement indicated that applicants did not believe the program provides enough benefit to justify the proposed cost. In response, the USPTO decided to eliminate the AFCP program entirely.

Applicants should understand that examiners spend very little time reviewing after-final responses and amendments, perhaps as little as 30 minutes, with a request for continued examination (RCE) and payment of the associated fee being needed in order for submissions to receive further consideration by the examiner. Applicants seeking to avoid RCE fees should also carefully consider how they respond to a first non-final office action on the merits, knowing that subsequent amendments and arguments after a final office action may receive only cursory consideration and may not be entered. Making claim amendments earlier can reduce the potential need for an RCE, if cost containment is more important than aggressive maximization of claim scope.

Assignment recordation developments

Legacy USPTO platforms for patent and trademark assignment recordation were replaced with a new unified platform called Assignment Center on February 5, 2024. There was no beta testing of this new platform prior to its launch.

While the new Assignment Center platform offers a graphical user interface with a modernized appearance, it eliminated certain features and provides reduced user functionality compared to the old systems. Submissions now require that the user login first. Most significantly, the ability to save draft submissions shared between different users was eliminated, making it more difficult for attorneys and support staff to meaningfully work together on assignment recordations. USPTO representatives have informally commented that there are plans to (re)introduce such collaboration functionality, but there have been no formal announcements about when (if ever) that functionality will be reintroduced. Also, the new platform no longer permits a patent assignment recordation submission to simultaneously serve as an inventor oath/declaration submission too (a separate oath/declaration submission in Patent Center is required).

Although the USPTO had recently proposed re-instituting a fee for electronic assignment recordations, that proposal was not implemented. Electronic assignment recordations will continue to carry no official fee, for the time being. Hard copy assignment recordations, submitted by mail, will continue to require an official fee.

Also, it was revealed in August of 2024 that the configuration of the USPTO’s Patent Center system led to the (potential) release of limited amounts of confidential information about unpublished patent applications between 2017 and 2024. This information was linked to recorded assignment data submitted through other assignment platforms, via an “Assignments” menu option in Patent Center listings for individual matters (which is now disabled unless applicants request that it be enabled). The information that was publicly accessible included the title of the application, application serial number, application owner name, application filing date, and name(s) of the inventor(s). Unauthorized viewing of confidential application information is not believed to be widespread, and substantive contents of unpublished applications was not made available. The limited nature of the information made public does not appear to pose significant concerns for most applicants. But this represents yet another problem added to a long list of debacles with USPTO online systems.

More types of e-signatures now accepted

Beginning March 22, 2024, the USPTO began accepting more types of electronic signatures on documents subject to USPTO signature rules. It is now possible to use a suitable document-signing software tool (DocuSign®, etc.) if two requirements are met: (i) the software tool must be specifically designed to generate an electronic signature and preserve signature data for later inspection in the form of a digital certificate, token, or audit trail; and (ii) the software tool must result in the signature page or electronic submission form bearing an indication that the page or form was generated or electronically signed using document-signing software. If those requirements are met, it is not necessary for this type of electronic signature to include slashes (as were previously required). Common commercial e-signature tools using will be able to satisfy these requirements, and typically will do so automatically under normal usage and settings. All of the previous types of electronic signatures accepted by the USPTO can continue to be used.

However, it is important to note that USPTO e-signature rules apply only to powers of attorney (POAs), inventor oaths/declarations, and other correspondence. USPTO signature rules do not control for assignments, for which applicable (local state/foreign) contract law will generally apply instead.

More information about electronic signatures in relation to U.S. patent matters can be found here.

AI-assisted inventorship

Guidance about inventorship when AI tools are utilized was issued by the USPTO in early 2024. In brief, the USPTO has so far taken the position that only humans can be inventors for patenting purposes. The issued guidance focuses on how to evaluate the use of AI to assist a human inventor, and the sufficiency of human contributions. A human must make a “significant contribution” to be an inventor, according to the USPTO. It is important to proactively consider the potential that AI was used in conceiving new inventions, so that inventorship can be determined and named properly. This remains an evolving area and the USPTO may possibly alter or elaborate its positions about AI-related issues at some time in the future.

Guidance regarding means-plus-function claiming

In March of 2024, a memorandum was issued to USPTO examiners providing guidance about interpreting means-plus-function limitations in patent application claims. That memo was intended to encourage examiners to identify means-plus-function limitations, to make relevant interpretations explicit in the prosecution history, and to ensure that such limitations have adequate support. U.S. patent law generally requires peripheral claiming, and prohibits central claims except under the limited exception of means-plus-function (or step-plus-function) limitations in a claim for a combination.

Means-plus-function recitations are often considered narrow, in contrast to treatment of “means” language in various other countries. Applicants and their counsel often seek to essentially obtain central claims without being limited to narrow means-plus-function interpretations, by using nonce words and functional terminology—like “[function] unit,” “[function] module,” “[function] system,” “[function] mechanism,” “[function] element,” “[function] member,” and the like. The main issue is whether a person of ordinary skill in the art would understand the term to refer to structure or instead merely be a generic placeholder for all possible ways of achieving the stated function (or functional result), with the latter approach raising concerns about impermissible central or preemptive claiming. The Federal Circuit has held that claim recitations that do not use the phrase “means for” may be interpreted as means-plus-function limitations in some circumstances. This approach tends to save applicants and patentees from themselves, because the alternative, as suggested by Supreme Court precedent and explained in detail in USPTO administrative decisions, is that purely functional claim limitations at the point of novelty that fail to use the phrase “means for” are invalid. Although a means-plus-function interpretation may still lead to indefiniteness concerns, if the accompanying description and figures fail to adequately disclose corresponding structure—such as by merely repeating the same functional language or conclusory statement of results without further explanation of the particular structure(s) used to achieve the stated function or result.

U.S. examiners have begun making means-plus-function interpretations more explicit more often in recent years, but they still fail to do so in all instances. More information about functional language in claims, disclosure requirements for means-plus-function claiming, and best practices are available here, here, and here.

New revision of MPEP released

The Manual of Patent Examining Procedure (MPEP) was updated in November 2024 to the 9th Edition, Rev. 01.2024. This revision is meant to be up-to-date with respect to USPTO policies and procedures as of January 31, 2024. A summary of changes can be found here, although this summary is very general and somewhat vague about specific changes.

Patent term adjustment calculation errors

In yet another instance of the USPTO incorrectly calculating patent term adjustment (PTA), it was announced that patents issued from March 19, 2024 through July 30, 2024 were subject to a software “coding error” that resulted in incorrect PTA numbers appearing on approximately 1% of granted patents from that time period. However, it is left to individual patentees to investigate PTA calculations and make a timely request for recalculation. People often express surprise that the term of a U.S. patent cannot be stated simply. Instead, determining patent term requires that members of the public (and the patentee) investigate numerous factors, including possible PTA, patent term extension (PTE), and terminal disclaimer term reductions, and then perform a calculation. Patentees must undertake their own analysis of USPTO PTA calculations, and if errors are discovered must request correction within certain time periods (two months extendable up to seven months from grant). Official fees are being waived for timely requests to correct USPTO errors due to this particular software error. But other petitions for PTA correction carry an official fee that is not refunded even if the PTA was incorrect due to some other USPTO calculation error.

Terminal disclaimer rulemaking abandoned

The USPTO has withdrawn proposed changes to terminal disclaimer requirements. The proposal would have more sharply limited patentee rights when a terminal disclaimer is filed to overcome a double patenting rejection. The proposal was met with significant opposition, including criticism that the USPTO lacked authority to impose the proposed rules. While the USPTO meant well by trying to address overreach and greediness by patentees who burden the public with large patent family “thickets” that are (by design) expensive to avoid or challenge, the proposal did seem to exceed USPTO authority and contradict statutory provisions. For now, the USPTO has left existing terminal disclaimer requirements and procedures as-is.

DOCX filing developments

The deeply unpopular official surcharge for U.S. non-provisional utility patent applications submitted in a non-DOCX file format has been in effect since January 2024. Since that requirement went into effect, the USPTO has belatedly clarified some policies and had modified how its electronic filing system Patent Center handles DOCX files, sometimes with formal announcements and sometimes without any clear notice. Practitioners and applicants have had to struggle to understand unclear and shifting treatment by the USPTO, making it difficult to provide clear guidance for how to avoid the official surcharge. There have been numerous instances of surprise official charges by the USPTO.

One belated clarification was that applications filed in a language other than English (with a simultaneous or later-filed English translation) must be in DOCX format to avoid the surcharge. Patent Center’s handling of DOCX files in other languages, using fonts and characters that may not be supported, presents challenges and risks to applicants. This requirement, which was first announced by the USPTO only in a Frequently Asked Questions (FAQ) response after the non-DOCX surcharge went into effect but not in any official rulemaking notice, provides no substantive benefits to the USPTO or to applicants, except that it provides another opportunity for the USPTO to impose official surcharges.

Also, the USPTO began imposing the non-DOCX surcharge (without warning or notice, and contrary to certain prior indications) when preliminary amendments are filed together with a new application in a non-DOCX format. This surprised many practitioners, because the USPTO had previously been recommending against submitting amendments in DOCX format. And it was not until November 13, 2024 that Patent Center was modified to permit a DOCX format preliminary amendment to be filed together with a DOCX application in a single submission (before then practitioners had to make separate submissions on the same day, which was cumbersome). The USPTO has still not clarified how substitute specifications should be submitted with preliminary amendments to avoid non-DOCX surcharges, meaning such submissions remain highly cumbersome and their treatment unclear unless the surcharge is paid.

Additionally, without any clear announcement, the functionality of Patent Center was changed sometime in 2024 so that tracked changes redlines in DOCX format amendments are now converted to strikethrough and underlining formatting during submission, instead of being “entered” and the mark-ups no longer being explicitly visible as Patent Center initially handled such formatting. This underscores how the operation of the USPTO’s Patent Center platform for the processing and rendering of DOCX-format files may suddenly be different than expected on any given day, without advance warning.

USPTO procedures for handling of DOCX format files continues to change over time. Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. But applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.

Revision to USPTO authority to impose fines

In 2022, a law was passed giving the USPTO authority to impose fines of up to three times the amount of official fees an entity failed to pay for “falsely” asserting small entity status or “falsely” certifying micro entity status. (codified in 35 U.S.C. §§ 41(j) and 123(f)). There is no time limit in the statute for imposition of such fines, nor any upper limit on the amount of those fines. Since then, the USPTO has not created any rules to implement its fining authority. For instance, the USPTO has not established any schedule of rates for such fines, nor any formal procedures for how determinations of false assertions/certifications are to be made. A worrying aspect of the original law was that it provided no exceptions for honest mistakes. So it appeared that even a clerical error or honest misunderstanding could lead to potentially large (even unlimited) fines. A December 2024 revision to those laws now adds exceptions to allow an entity to show that an assertion or certification was made in good faith to avoid a USPTO fine. This exception therefore limits USPTO fining authority to situations where a fine is justified as a penalty for bad faith action. However, the law as revised still places no upper limit on the amount of these fines.

Riyadh design law treaty signed

The diplomatic conference in Riyadh, Saudia Arabia in November 2024 concluded with the adoption of a design law treaty. The impact of this treaty on the United States remains to be seen. It will be some time before the treaty as negotiated is actually implemented anywhere. It is unclear if any significant changes to U.S. design practice will result form this treaty. Although the treaty may bring some other jurisdictions into further harmonization. But the treaty appears to stop well short of complete international harmonization of the treatment of designs. For instance, the U.S. will continue addressing designs as a type of patent right but other countries will continue treating design registrations as something other than a patent right.

Vidal steps down as director of USPTO

Kathi Vidal stepped down as Under Secretary of Commerce for Intellectual Property and Director of the USPTO as of December 13, 2024. Derrick Brent, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO has become acting Director until a new Trump administration appointee is confirmed.

More U.S. patent filing information

Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim. Additional basic information about patenting can be found in the Patent Basics guide.

Trademarks

New trademark fee structure and fee increases for 2025

The USPTO will impose official trademark fee increases and a new structure for trademark fees starting January 18, 2025. Materials related to the new trademark fees can be found here, including an Executive Summary of the most notable official trademark fee increases and new structure for trademark fees plus a spreadsheet showing all old and new fees and the difference between them.

As part of the new trademark fee rule, the naming convention and types of fees are changing. For example, a typical trademark application would see at least a $100 fee increase. And, if custom identifications of goods/services are used rather than merely selecting ones from pre-approved descriptions from the Trademark ID Manual, then new “premium” surcharges of $200 per class would apply. This means that typical new trademark applications will see official filing fees increase by at least $300, and possibly more if there are multiple classes of goods/services. Due to an inability to change the fee structure to impose new surcharges in Madrid Protocol extensions to the USA, the existing Madrid Protocol (§ 66) fee structure will remain but with those fees increasing by 20%.

Various other fees are being created or increased. For instance, a new $100 fee (per class) for “insufficient information” has been created, covering any deficiencies (or mistakes) in satisfying the first nineteen requirements of 37 C.F.R. § 2.22(a) (that is, all listed requirements except for a foreign applicant’s failure to designate a U.S. attorney). Those fees will include things like failure to include a translation or transliteration, failing to provide complete information about the applicant, failing to provide a description of a mark with graphical design elements or stylization, failure to include a statement about use of color, or a failure to claim ownership of prior registrations. Also, there is a new surcharge of $200 (per class) for each additional group of 1,000 characters beyond the first 1,000 characters. Some fees specific to intent-to-use (ITU) applications will increase by 25% or 50%, and post-registration maintenance/renewal fees will increase from 5-44%. Petition fees will generally increase by 60% or more, and there will be a 400% increase in the official fee for a letter of protest. However, extension of time fees in trademark matters have remained unchanged, without any increases.

Targeted trademark audits

USPTO audits of trademark registrations had been conducted on a random basis since 2017 during the post-registration maintenance process. However, given the rise of so-called “specimen farm” websites used to generate fake or fraudulent specimens of use in addition to the prevalence of digitally altered /or fraudulent specimens, the USPTO expanded its audit program to further include targeted or ”directed” audits starting October 28, 2024. The expanded audits are meant to address “systemic efforts to subvert the requirements for use in commerce of a mark to support registration.”

Once initiated, these directed audits will happen in the same manner as with random audits. The USPTO has said only that directed audits can take place when submitted documents “exhibit certain attributes that call into question whether a mark is in use in commerce in the ordinary course of trade.” But apart from vague references to altered specimens and specimen farms, the USPTO has not disclosed what “certain attributes” will trigger a directed audit, making this process essentially discretionary. On the one hand, the USPTO desires to keep its discretionary directed audit procedures secret, so that entities responsible for fraudulent submissions cannot seek to avoid detection and exposure. But, on the other hand, unlimited discretion raises due process and fairness concerns, including the possibility of scapegoating.

New trademark filing systems

In addition to having recently replaced the legacy trademark search platform and the trademark assignment filing platform, the USPTO will retire its Trademark Electronic Application System (TEAS) platform used for new application and prosecution filings on January 18, 2025. A new Trademark Center platform, currently in Beta release, will take the place of TEAS.

Additionally, the Trademark Trial and Appeal Board (TTAB) will retire its legacy Electronic System for Trademark Trials and Appeals (ESTTA) filing system sometime in the spring of 2025. A new TTAB Center platform, currently in beta release, will replace ESTTA.

New revision of TMEP released

The Trademark Manual of Examining Procedure (TMEP) was updated in November 2024. This update incorporates relevant precedential decisions issued since the prior May revision and before August 31, 2024. It also revises language to make the TMEP gender neutral and replaces references to the Trademark Electronic Application System (TEAS) and the Electronic System for Trademark Trials and Appeals (ESTTA) with generic wording, because they will be retired shortly and replaced with Trademark Center and TTAB Center, respectively. A complete change log can be found here.

More U.S. trademark filing information

Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications. Additional basic information about trademarks can be found in the Trademark Basics guide.

Significant Developments in U.S. Courts

Obviousness for design patents

U.S. design patent practice has seen a number of significant shifts and important court decisions in recent years. In the case LKQ Corp v. GM Global Tech. Operations LLC, the obviousness standard applied to design patents was clarified as being the same as that applied to utility patents. A different standard (called the Rosen-Durling framework) that had previously made it incredibly difficult to ever find a design obvious was finally overruled. But it has been emphasized that analogous arts requirements still apply to references cited for obviousness. However, what the analogous art requirements will or might mean specifically in the design context remains to be seen.

Following the LKQ decision, the USPTO issued some limited guidance to examiners. But that guidance leaves many open questions and it stopped well short of making the sorts of significant changes to design application examination for obviousness that LKQ suggests. It may take a many years before enough design patent obviousness questions reach courts before the true impact of the LKQ case will be clear.

Third-party litigation funding

The funding of court litigation by a third party has received much attention, particularly in relation to the relationship between such funding arrangements and so-called “patent troll” litigation. While litigation funding can help promote access to justice, on the other hand it can skew litigation towards frivolous claims that revolve more around actual or threatened litigation costs than the true merits of the case, and funders may end up capturing so much of the benefit that the inventor or patentee is exploited in ways the eviscerate any purported access to justice benefits. Third-party function of civil lawsuits involving IP assertion have a particularly high risk of using the high cost of a legal defense as a cudgel to seek a nuisance-value settlement.

In terms of new developments and investigations into this issue, there was a recent Government Accountability Office (GAO) report, and the Department of Justice (DOJ), U.S. Judicial Conference’s Advisory Committee on Civil Rules, and congress / the legislature are all investigating or contemplating action on the issue. However, some recent interest in this topic is sadly colored by politicized xenophobic and imperialist machinations rather than being purely about justice and fairness. Current activities have primarily focused around third-party funding disclosure requirements in civil litigation, like Chief Judge Connolly’s standing order for disclosure of funding arrangements for cases before him in the District of Delaware.

Crisis of legitimacy in judiciary continues

The legitimacy of U.S. courts remains low in the eyes of the general public, to the point that public confidence in the courts has been described as “withering”. The U.S. Supreme Court has engaged in blatantly partisan realpolitik activism of late. This comes on top of recent investigative reports by journalists and a U.S. Senate Committee on the Judiciary report on ethics challenges at the Supreme Court, which document ongoing and rampant ethics problems and what looks like bribery and influence peddling. And, specifically in the IP field, Judge Pauline Newman remains suspended from the Federal Circuit, the court with exclusive appellate jurisdiction over patent lawsuits, due to her ongoing refusal to cooperate with an investigation into her fitness due to health issues and her treatment of court staff. Judge Newman’s conduct has reflected poorly on her, although it also has a partisan character in relation to the presidential judicial appointment system that will determine who will replace her if she finally steps down from the bench.

Additionally, the Judicial Conference of the United States issued non-binding guidance in March 2024 promoting the random assignment of cases to deter “judge-shopping”. The Administrative Office of the U.S. Courts was considering a binding rule for random case assignment, but that possibility was later apparently abandoned. The issue of judge-shopping typically involves judicial districts with single-judge divisions, which create the possibility that cases dealing with issues of importance to the entire nation can be filed there knowing that they will be assigned to a judge with a favorable ideology and political persuasion. This is much like forum-shopping but is judge-specific and therefore even more potent. This tends to allow parties to leverage the attitudes of a few individual federal judges, which may be extremist minority views that are deeply unpopular, to try to reshape the laws and their interpretation across large regions or even the entire country. This is most often the case when politically reactionary positions hostile to civil rights or public benefits are laundered through courts in the U.S. south. But in the IP field this also has happened in Texas where certain judges have taken positions favorable to “patent trolls.” There is a profoundly undemocratic character to how this process unfolds. The very fact that random case assignment is being opposed is an embarrassment and a sign of the dysfunctional nature of the U.S. government these days, which shows signs of becoming worse rather than better in the near future.

PTAB procedural rules

Lastly, multiple new rules were implemented for Patent Trial & Appeal Board (PTAB) administrative court proceedings at the USPTO. The use of rulemaking, rather than less formal guidance and procedural mechanisms, was generally intended to provide more stability to PTAB proceedings despite changes in USPTO leadership. However, the practice of discretionary denials of PTAB trials and director review are still nothing more than tinkering at the edges of a system that remains plagued by political whims, an issue that has been with the USPTO since it was founded.

December 2024

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.

Contact Austen

Tags Design Patents, Patent Prosecution, Patents, Trademark Prosecution, Trademarks

Articles

Analogous Art for Design Patents

Post author By Austen Zuege

By Austen Zuege

The Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Tech. Operations LLC that substantially altered the obviousness analysis for design patents. The so-called Rosen–Durling framework was overruled (largely sidestepping the question of its abrogation by KSR). The patentability of ornamental designs of useful articles will now be under the same Graham v. John Deere obviousness standard that applies to utility patents. The LKQ decision emphasized that analogous arts requirements still apply to references cited for obviousness. But what will (or might) the analogous art requirements mean specifically in the design context? The following discussion explores some possibilities in a rough initial take on what might follow in the wake of LKQ.

Analogous and Non-Analogous Art: Two Tests or Prongs

In order to be used as a prior reference to try to establish obviousness, a given reference must be “analogous art”. There are two tests or prongs used to assess whether or not a given reference is analogous art (at least for utility patents). A reference is analogous art if: (a) it is from the same field of endeavor as the claimed invention (even if it addresses a different problem), or (b) if it is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). To be analogous, a given reference must satisfy only one of these two tests/prongs. Although the evidence and analysis may overlap, so some prior art might satisfy both tests.

The analogous arts framework has been around for a long time with respect to obviousness analyses for utility patents. Courts have generally taken a broad and expansive view of what constitutes analogous arts, especially in light of KSR. But it remains in place as a check against hindsight bias by establishing requirements for the factual foundation needed in order to rely on a given prior art reference for an obviousness argument. In that sense, it is about assessing whether a person of ordinary skill would have been motivated to look at or otherwise consider a reference at all in relation to the claimed invention at the time of invention (or effective filing date).

Analogous Art Analysis for Designs: Some Initial Thoughts

Although the LKQ decision paints its holding as something of a modification of the Rosen-Durling framework, that seems to be mainly a diplomatic attempt to counter the “chicken little” arguments that a disastrously chaotic free-for-all would ensue if design patents were held to the same standards as utility patents under KSR. Application of the non-analogous arts standard to designs going forward will likely not be merely a continuation of business-as-usual. LKQ represents a major shift in the patentability analysis for design patents. As a result, design patent prosecution will likely move further away from a quasi-registration process (a prospect that Robert Post once described as “intoxicating” applicants and their agents), with design examination extended beyond rejections for mere procedure and formality defects towards more substantive concerns. Obviousness rejections based on combinations of prior art references—long a ubiquitous feature of utility patent examination—should become more common. And similar effects should be seen in litigation and Patent Trial and Appeal Board (PTAB) challenges.

Yet the LKQ decision is hardly definitive about what will come next. For utility patents, the non-analogous arts test is rarely invoked and courts have generally taken a broad view of analogous art. But there are few if any prior cases applying analogous arts requirements to designs. That means there are many open questions and practical considerations about how it should be approached for designs. Let us turn to the two prongs/tests with those things in mind.

Analyzing the Same Field of Endeavor for Designs

The LKQ decision reaffirmed a statement from an old case that “[t]he scope of the prior art is not the universe of abstract design and artistic creativity, but designs of the same article of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” Even though design patents are short, all design patents have to specify an article of manufacture. Indeed, U.S. Patent & Trademark Office regulations specify that “[t]he title of the design must designate the particular article.” (37 C.F.R. § 1.153(a)). So an applicant cannot obtain a design patent without specifying a particular article in the title, even if no further textual description is required.

What is notable here is that LKQ quotes a prior case that encompasses not only the same article of manufacture, but also “articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” This matters in view of a string of rather questionable Federal Circuit cases that took narrow views that only prior art for the same article of manufacture qualifies as prior art for validity analysis or for three-way infringement comparisons. I call these cases questionable in part because they contradict earlier precedent, but also because their conclusions are poorly explained or highly tendentious. So, a key takeaway is that in an en banc decision the Federal circuit has ruled that the analogous arts same field of endeavor prong/test must extend beyond the same article. This has the effect of neutralizing the impact of In re SurgiSil on the obviousness question (without yet resolving the conflict between SurgiSil and older precedent for anticipation).

As one example, LKQ may permit some generalizing of the article for the field of endeavor prong/test. This can be thought of as saying that the field of endeavor may be a genus of which the claimed invention is a species. For instance, if a particular design patent is for a plow of the sort used with a tractor in a farm or garden, the field of endeavor might be considered to be farm or tractor implements rather than only plows. That might mean that other implements like harrows used with tractors are analogous art. This could mean that a design that merely carries over the ornamental appearance of one farm implement to a different one is merely obvious, even though the implements serve different functions. Or, a prior art reference for a cat toy might be in the same or similar field of endeavor as a claimed dog toy. Different articles might also be similar, or part of the same genus, if they are known substitutes/alternatives.

But there might other ways to look at “similarity” for the field of endeavor prong/test for designs. Take an example of different articles sold together as a set or kit. There might be, for instance, a cutting board plus a large wooden fork and spoon that are sold together as a set, with common ornamentation on each item. This might be common surface ornamentation and/or a similar shape/configuration of handles of each item. Even though cutting boards and forks/spoons are different articles with different characteristics and uses, their sale together as a set may support a conclusion that they fall within similar fields of endeavor. Or there may be different articles advertised together as part of a product line with similar ornamentation, even if the articles are only sold separately. Such approaches to field of endeavor similarity are not entirely unlike the evaluation of the relatedness of different goods/services in trademark cases by looking at proffered evidence that they commonly emanate from a single source under a single brand.

Analyzing What is Reasonably Pertinent to the Problem Faced for Designs

LKQ recognized that a design patent itself does not clearly or reliably indicate the particular problem with which the inventor is involved. The decision further stated that it does not foreclose that art from outside the same field of endeavor could also be analogous. Apart from stating that this is a fact question to be addressed on a case-by-case basis, the court explicitly left this an open question. It will therefore be up to future cases to further develop the application of this standard. It will be interesting to see how this open question will eventually be resolved. What follows are some initial thoughts and suggestions, which draw from insight from social sciences.

Before going further, though, let me say that it is fair to wonder what problem-solving means for non-functional ornamental designs. This opens a rather large can of worms that is the question of whether industrial designs regarding ornamental appearance really involve “invention” at all. This is a big question because, in turn, it implicates the question of whether design patents, first made possible in the 1842 Patent Act following a proposal to have copyright protection for designs modeled on then-recent British law, are constitutional or not. Justice Douglas observed long ago that “attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent.” Does that apply to the very existence of design patents? Although these concerns should be borne in mind, broader questions of constitutionality are for another day. Let us turn to the much narrower question of what designing really involves in terms of solutions it purports to offer.

Setting aside design patent protection pursued for improper purposes (such as to try to preclude functional interoperability), most industrial designs are about marketability. This is a topic Thorstein Veblen wrote about in terms of how the relationship between workmanship and salesmanship was often wrongly blurred by treating the cultivation of saleable appearances as a necessary engineering production cost.

Under that rubric, it may be helpful to look at the ways that designers approach their work. Reference to storytelling and narrative are common. It is easy to find assertions that “[t]he story is the primary motivating event that leads to design and innovation.” Or that design is cultural and tells a story about things like place/geography. It is also said that product design can “tap into users’ emotions” by building on a motivating narrative. Indeed, industrial design training courses in “form fundamentals” even emphasize “How Great Storytelling Leads to Great Industrial Design.”

The way that marketing proposals are presented to clients is also informative. It is typical for advertising pitches to include statements about things like “color psychology” to justify choices of colors in terms that are emotive and feelings-based. For instance, “this is yellow as a symbol of kindness, warmth, and empathy.” Whether this is deployed in a way that is scientific or more akin to pseudo-sciences like phrenology or alchemy is worth consideration here. But the fact remains that visual presentations are presented in this manner in real-world scenarios. Whatever criticisms might be made against the bases for these theories, or their use in a given situation, they might well be what a designer of ordinary skill would consider when devising a new industrial design. The crux is the purported link between social meaning and visual appearance that is known or otherwise already available in the art. And reference to marketing, advertising, and branding rather than product design specifically is still fair, because Federal Circuit panels have held—for better or worse—that design patent and trademark standards are analogous and that blurring distinctions between them is harmless. And talk about storytelling and narratives is often framed as simultaneously being about both product design and branding so that users/customers “understand the value of the product and to build a deeper connection with the brand.”

There have been many efforts to analyze social significance of visual representations. A fascinating example is the television documentary mini-series and corresponding book “Ways of Seeing” by John Berger et al. This looked at artworks and assessed, through critical studies, how certain depictions and themes reinforced things like sexism and patriarchy. The analyses presented are open to criticism, particularly in terms of their underlying essentialism (in somewhat the same way patent as claim construction ruling that seem to simply decree that a given term means one particular thing without explanation). After all, Beethoven’s “Ode to Joy” in his 9th Symphony has been used to represent just about every possible worldview (even fascists used it!), which tends to refute essentialist notions that there is any particular meaning inherent to it. But, still, the “Ways of Seeing” series and book presents a very useful reference (easily accessible to any viewer or reader) that informs how reasonably pertinent problems might be assessed for design patent analogous art. That is, it may be possible to ask what sort of (non-technical/non-functional) social objective is sought to be promoted, and then look at ways that other designers have sought to express those non-visual concepts visually before with the same or different types of articles.

The essentialism of Berger et al.’s approach might be softened or avoided by looking more to something like Pierre Bourdieu’s sociology, which investigates meaning in terms of social fields. Bourdieu’s famous book La Distinction [Distinction: a Social Critique of the Judgement of Taste] is useful in exploring how artistic tastes reflect attempts to draw social distinctions. People’s tastes associate them with one group and distance them from others. To (over)simplify this, taste is less about inherent qualities of artistic works or isolated individual preferences than reflecting social distinctions arising from social factors that have meaning as part of a larger field in which individual instances cluster as nodes. For example, if someone says they “like all types of music except country” they are are probably trying to convey that they are not like the sorts of people who listen to country music. And “disco sucks” epithets were, historically, often effectively dog-whistle homophobic slurs. While Bourdieu’s more formal methods involving surveys will be impractical to routinely apply in patent litigation, a book like David Lee’s Battle of the Five Spot, about why jazz musician Ornette Coleman’s 1959 performances at a New York City club were musicologically significant, shows that the general framework can be applied without extensive surveys.

And this comes up in more seemingly utilitarian contexts as well. A 2021 segment on the long-running British television series Gardeners’ World by Advolly Richmond explored the origins of lawns. These came into being in the later middle ages in Europe on aristocratic estates. They required having many servants to mow them, and technology that made such work feasible. The subsequent expansion of lawns can be seen—though the lens of Thorstein Veblen’s seminal book The Theory of the Leisure Class: An Economic Study of Institutions—as people of lesser means attempting to emulate feudal aristocracy with the aid of improvements to lawn mower technology. That is, lawns were a symbol of aristocratic wealth and privilege and the appearance of a “well kept” lawn evolved into widespread use as a visual symbol meant to convey the owner’s wealth (i.e., ability to hire a servant or available free time to mow him- or herself with a purchased lawnmower device) and/or connection to aristocratic values.

Fads are also relevant here. Take computer presentation slide deck templates. Companies often have these and there are trends/fads that develop such that different templates used by different companies share common features at given times. For instance, one fad was to use blocky sans serif fonts and high-contrast color schemes incorporating bright, vivid colors. Suffice it to say, fads are social determinants that can provide motivations to those devising ornamental designs. And designing slide deck templates is not altogether that different from, say, designing the ornamental appearance of graphical user interfaces and computer-generated icons, which are the subject of design patents. How many companies have explicitly tried to have a minimalist computer search interface that looks “like Google’s”?

What does all this social science framework really tell us about problems faced for those developing industrial designs? Well, if some bit of evidence (more on that later) establishes an intent to modify an existing product design to be more aggressive and powerful looking, then looking to prior art with bigger, thicker, taller, etc. characteristics that create a more aggressive and powerful visual appearance would seem to be analogous in terms of the problem faced, even if pertaining to a different type of article or different field of endeavor.

In a more direct way, there can be situations in which designers reproduce known ornamentation of their own or co-workers. For instance, there might be an explicit intention or goal to “create a sense of continuity and coherence across a brand’s products and services.” Some ornamental feature or general style of ornamentation might simply be copied or ported over to another design project. In the design patent context, this sort of motivation is undoubtedly relevant to questions about the obviousness of re-using and adapting known ornamental aspects of one product to another, even when dealing with different types of products/articles.

The parties in LKQ disputed whether designs solve problems at all. Perhaps another way of looking at that (in a Veblenian way) is to say that most or all designs address the problem of saleability, which is not specific enough to any particular claimed design to be of use for the obviousness analysis. And the word “problem” might imply functional solutions rather than ornamental ones—although dictionaries merely define that word as a question to be considered. But, in this author’s view, the social science guidance discussed above still bears on having a second prong or test for analogous arts for design patents. Perhaps it is simply a matter of renaming the second prong/test, maybe as being about the realization of a type of (visual/social) impression sought rather than the “problem” faced. Here again, we run up against the issue (for another day) of whether ornamental designs are really “inventions” at all.

Evidentiary Considerations

Design patents are scant on text. Their prosecution histories might contain some relevant information about the field of endeavor and/or problem faced, but only on occasion or inferentially (for instance, in terms of what prior art was cited or not cited, or through amendments to the title). And, unique to design patent practice, an unpublished appendix of the original application might contain information relevant to what is analogous art, but not always. Family-related or commonly-assigned or -invented utility patent applications, if they exist, will also be a rich source of information, as they have been for functional vs. ornamental analysis in the past.

In the longer term, design patent applicants might choose to voluntarily insert some sort of problem statement in an application (possibly in the appendix), or the Patent Office might institute a new rule requiring such a statement. While patentees might balk at doing this, it may give the patentee some measure of input or control over the way analogous art analysis proceeds.

Notably, the LKQ decision cites approvingly Airbus S.A.S. v. Firepass Corp., a case that looked at the analogous art “reasonably pertinent” prong/test and said that extrinsic evidence can be considered to link the claimed invention and cited prior art (that fell in a different field of endeavor) by a common technical problem. Airbus relied on KSR to hold that overly strict problem statements cannot be used to limit obviousness to express suggestions to combine references or to otherwise ignore or contradict the background knowledge possessed by a person having ordinary skill in the art. Extrinsic evidence can thus be used to help define the problem faced. And extrinsic evidence will undoubtedly play an even larger role in addressing questions about analogous art status for design patents than with utility patents, particularly when defining the “problem faced” or a similar inquiry.

In litigation, discovery around a designer’s intentions and objectives may be useful. This might convey the problem faced. Advertising by the patentee might also be a fertile source of that kind of information. Do ads highlight a “sleek” look or “curved” lines of the patented product, for instance, like televised car commercials often do? Information about the work experience of a designer named on a design patent might also be relevant to the field of endeavor and scope of “similar” articles.

One difficulty, however, is trying to evaluate any link between a cited prior art design patent or printed publication reference and a common problem faced. If the reference is silent on its face about this, what sort of evidence will either link it to the challenged patented design or differentiate it? A conventional approach is expert testimony. Just in the way copyright litigation can involve expert testimony from musicologists, or the way utility patent litigation involves scientific or engineering expert testimony, there are opportunities to present testimony about links or differences. And, following Airbus, additional extrinsic evidence such as textbooks, printed publications, other patents, etc. might be relevant to link (or differentiate) a given prior art reference. Evidence about fads, trends, or brand/product product line coherence might fall in this category. Another possible approach, less conventional historically, is a survey of ordinary consumers. If we return to the example of making something look more aggressive and powerful, would a significant percentage of ordinary observers use those same words to describe a given prior art reference? Or would a survey somewhat similar to a trademark likelihood of confusion survey also potentially provide relevant evidence? Perhaps such a survey might focus on something other than, or rather more specific than, the overall impression, like aspects of the prior art that are a material part of the overall visual impression to the ordinary observer (and which are shared in common with the claimed design being challenged). Testimony from the designer or author of the cited prior art might be possible, if also potentially subject to attack.

May 2024

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Tags Design Patents, Litigation, Patent Prosecution

Patents Q&A

What Is Non-Analogous Art?

Post author By Austen Zuege

Under U.S. patent law, a distinction between analogous versus non-analogous art sometimes arises. Understanding when this concept matters, and how to draw a line between these two possibilities may be important. The following article explains what analogous and non-analogous art is, why it matters, and how to determine whether a given piece of prior art is analogous art or not.

I handled a patent application years ago related to fishing lures. The examiner had cited a prior art patent directed to a rocket fuel additive for a rejection in an office action. This fishing lure application was not rocket science, as the saying goes. But could the examiner properly say that a fishing-related invention was obvious because of a prior teaching about rocket fuel additives? The concept of non-analogous art helps to answer that question.

When Non-Analogous Art Status Matters

In order for a prior art reference to be usable to establish obviousness, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Teachings in non-analogous art cannot be relied upon to establish obviousness. However, there is no analogous art requirement for a prior art reference being applied for anticipation. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).

There are two different ways to establish something is analogous art. Satisfying either one of them is sufficient. Under these tests or prongs, a prior art reference is analogous art to a claimed invention under either of the following circumstances:

the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or
the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)

In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).

Although, the evidence and analysis relating to the field of endeavor and reasonably pertinent prongs may overlap. And some prior art might satisfy both tests, even though the requirement is only that it satisfy one of them. However, the analysis for design patents might differ somewhat for the second prong/test.

A Burden To Meet When Disputed

The analogous art requirement is about the factual foundation needed to be able to rely on a given prior art reference for an obviousness argument. See In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995); In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed. Cir. 2007). This is not merely about what a given prior art reference literally teaches. It is about whether a person of ordinary skill would have been motivated to look at or otherwise consider a reference at all in relation to the claimed invention at the time of invention (or effective filing date). That makes this a kind of threshold that disallows obviousness arguments premised on obscure, remote, or out-of-context teachings.

This is also an aspect of the well-established notion that an obviousness analysis must not succumb to hindsight bias. Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1358-59 (Fed. Cir. 2023). Jorge Luis Borges wrote in “Kafka y sus precursores” [Kafka and His Precursors]” (La Nación, August 15, 1951) that a writer modifies our conception of the past to create precursors. After describing various prior works with elements that resemble Kafka’s later work, he said, “Kafka’s idiosyncracy is present in each of these writings, to a greater or lesser degree, but if Kafka had not written, we would not perceive it; that is to say, it would not exist.” This is not a bad way of thinking about non-analogous art that only appears as a relevant precursor in hindsight. While Borges refers to writers generally, what he really was referring to was Kafka’s new and unique genius rather than ordinary writing that might merely reuse commonplace ideas and styles. This is like talking about inventive genius with patenting.

In the end, establishing that a reference is analogous art is a factual, evidentiary burden that a patent examiner or challenger must satisfy as part of arguing that a claim is unpatentable or invalid as obvious. Although, normally, analogous art status is assumed unless the patentee or applicant asserts that a given reference is non-analogous art. That means this question is not routinely addressed. In practice, it only arises when a patentee or applicant believes that an obviousness argument is improper. So, it is up to the patentee/applicant to raise this issue when applicable. Then the examiner or challenger must be able to show that the reference relied upon is analogous. That involves pointing to evidence that satisfies at least one of the two tests.

Intrinsic evidence, contained in the patent/application and its prosecution history, is generally the best and most significant. It is helpful to look at what is said in the claims, the title, and the background section, for instance, where identifications of technical fields and discussions of problems to be solved are frequently found. Often, this type of evidence alone is sufficient to determine if a reference is analogous or non-analogous art. But extrinsic evidence can also be used. For instance, there might be expert testimony in court about the knowledge and skill of a person of ordinary skill in the art, or reliance on additional patents or publications that indicate the knowledge and skill that prevailed in the art.

The Same Field of Endeavor Test

The field of endeavor test or prong asks whether the art is from the same field of endeavor as the claimed invention, regardless of the problem addressed. Bigio, 381 F.3d at 1325. This test rests on an assessment of the nature of the patent or application and claimed invention in addition to the level of ordinary skill in the art. Bigio, 381 F.3d at 1326.

The field of endeavor is determined by reference to explanations of the invention’s subject matter in the patent or application. This includes the function and structure of the claimed invention, taking into account the complete factual description of all embodiments. So this involves considering similarities and differences in structure and function between the claimed invention and the cited art. The field of endeavor is not limited to the specific point of novelty, the narrowest possible conception of the field, or to a particular focus within a given field. Courts tend to take an expansive view of the relevant field of endeavor. Netflix, 80 F.4th at 1359.

In the Bigio case, it was found that that toothbrush art was analogous to a claimed hair brush invention. In support of that conclusion, the structure and function of the claimed hair brush invention was found to be similar to that of toothbrushes. Both were in the field of hand-held brushes having a handle segment and a bristle substrate segment. Also, it was found that toothbrush prior art could easily be used for brushing hair (e.g., human facial hair) in view of the size of the bristle segment and arrangement of the bristle bundles described in the reference.

Disputes over the proper application of this test are not particularly common, because it is often clear when a reference is or is not from the same field. But when disputes do arise, they tend to center around how broadly or narrowly the relevant field of endeavor should be defined. Patentees and patent applicants will tend to argue for a narrower definition of the field, which tends to exclude more potential prior art. Challengers and examiners may instead argue that the relevant field of endeavor is broad and generic. The correct approach in any particular case is the one best supported by the facts and evidence. In other words, this test requires both accurate identification of and careful review of the relevant facts.

The Reasonably Pertinent Test

The reasonably pertinent test or prong asks whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved, even if the reference is not within the same field of endeavor. Bigio, 381 F.3d at 1325. Sometimes this is discussed in terms of a “purpose” instead of a “problem”, but this means the same thing.

When addressing whether a reference is analogous or non-analogous art to a claimed invention under a reasonable-pertinence theory, the problems to which the claimed invention and reference at issue relate must be identified and compared from the perspective of a person having ordinary skill in the art. The relevant question is whether a person of ordinary skill would reasonably have consulted the reference in solving a relevant problem. Although the dividing line between reasonable pertinence and less-than-reasonable pertinence is context dependent, it ultimately rests on the extent to which the reference and the claimed invention relate to a similar problem or purpose. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359-61 (Fed. Cir. 2020).

A reference can be analogous art with respect to a patent even if there are significant differences. Familiar items may have obvious uses beyond their primary purposes. And, for instance, a person of ordinary skill might reasonably consult a reference even if she would not understand every last detail of it, so long as she would understand the portions relevant to solving her problem well enough to glean useful information. Yet the pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement. Sci. Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).

Also, the articulation of the purpose of or problem to be solved by the patent cannot be so intertwined with the field of endeavor as to effectively exclude consideration of any references outside that field. The second prong cannot be collapsed into the first. It must remain a distinctly additional way of establishing analogousness. Donner, 979 F.3d at 1360. And, further, the so-called teaching, suggestion, or motivation (TSM) test for obviousness was overturned by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). That means overly strict problem statements cannot be used to limit obviousness to express suggestions to combine references or to otherwise ignore or contradict the background knowledge possessed by a person having ordinary skill in the art. Airbus SAS v. Firepass Corp., 941 F.3d 1374, 1383-84 (Fed. Cir. 2019).

The Airbus case involved a patent that claimed “A system for providing breathable fire-preventive and fire suppressive atmosphere in enclosed human-occupied spaces” and addressed the problem of fire prevention and fire suppression. The cited reference that the patentee alleged was non-analogous was a prior patent by the same inventor that disclosed equipment for providing hypoxic air in an enclosed area for the purposes of athletic training or therapy. Four additional prior art references (that is, other extrinsic evidence beyond the cited reference alleged to be non-analogous) established that use of normbaric hypoxic atmospheres in enclosed environments was well-known in the art of fire prevention and suppression at the time of the invention. The court found that an ordinarily skilled artisan seeking to address the problem identified by the patent in question would reasonably have consulted the cited reference relating to enclosed hypoxic environments because it was reasonably pertinent to a similar problem, even though it was from a different field of endeavor. The court therefor overturned a prior decision refusing to consider the extrinsic evidence about knowledge that was available in the art, which linked the challenged claim and the cited prior art reference by a common technical problem.

In re Klein, 647 F.3d 1343, 1350-51 (Fed. Cir. 2011), involved a claimed invention addressing the problem of “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” The purpose of a first group of references was separating solid objects. But none of them showed a partitioned container adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments. A second group of references was directed to containers that facilitate mixing two separated fluids together. But the second group did not show a movable divider or the ability to prepare different ratios. The court ruled that an inventor considering the relevant problem would not have been motivated to consider any of the cited references. Accordingly, they were non-analogous and did not qualify as prior art for purposes of obviousness. Rejections of the claims were reversed.

There tend to be more disputes over application of the reasonably pertinent prong than the field of endeavor prong. But just as with the other prong, patentees and applicants are incentivized to define the relevant problem narrowly. Examiners and challengers may define the problem more broadly and generically. Reasonable pertinence rests on what is best supported by the relevant facts. For example, a statement of the relevant problem that is inconsistent with the discussion in a patent or application, viewed as a whole, is likely incorrect—whether broader or narrower than they way the disclosed invention was described. And extrinsic evidence from other patents, expert testimony, etc. can be used to establish pertinence. So even if a given patent is very short and says relatively little about problems faced in the art, other evidence might inform that inquiry.

Conclusion

The analogous versus non-analogous art question establishes whether or not a given reference qualifies as prior art for purposes of obviousness. But it is not applicable to use of the same reference for an anticipation/novelty analysis. This factual question is rarely explicitly discussed in practice and usually it is assumed that any cited art is analogous. That is partly because courts have generally taken an expansive view of what qualifies as analogous. But, at the end of the day, whether a reference is analogous or not is just one facet of the fact-intensive obviousness analysis. An obviousness position requires solid evidence and a good, logical argument. Reliance on non-analogous art is simply a type of bad argument resting on deficient evidence.

In my example of a fishing lure invention and a rocket fuel additive reference, the examiner eventually did acknowledge that his cited reference could not be relied upon for an obviousness rejection. It was bad optics. The argument that “this is not rocket science” when dealing with the patentability of a fishing lure invention was clearly a winning one (and a fun one to be able to make!). In particular, rocket science and fishing lure design and manufacturing were different fields of endeavor. And prior art about fuel additives designed to influence combustion properties had no bearing on the purposes of the fishing lure invention, which was intended to provide certain weighting characteristics during use without causing environmental pollution. So this was a stark illustration of non-analogous art.

Sometimes looking to disparate fields and combining teachings that were, individually, already known can be the product of true invention. Of course, on the other hand, sometimes an alleged invention is obvious and unpatentable. Simply because an applicant or patentee finds a cited reference to be inconvenient does not make it non-analogous art. The non-anlogous arts tests are occasionally useful as a way to draw the line between patentable and unpatentable ideas.

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Tags Patent Prosecution, Patentability and Validity, Patents

Patents Q&A

What Is a Negative Limitation?

Post author By Austen Zuege

Patents and patent applications have claims that define an invention. Those claims can have various elements or limitations to recite aspects of the invention. But what is a negative limitation? This article explains what they are and some considerations about whether and when they are permitted.

Basic Definition

In the simplest terms, a negative limitation in a patent claim defines an invention in terms of what it is not, rather than what it is. Any limitation in a patent claim that does this can be considered a negative limitation. Although, there are many different ways negative limitations can arise or be worded. There is no standard format for a negative limitation. Indeed, whether or not something constitutes a negative limitation might even be disputed.

When design patent claims include negative limitations is an interesting question that courts have not definitively resolved. The discussion that follows focuses mostly on utility or invention patents.

Example Negative Limitations

The following are some examples of patent claims with negative limitations.

“1. An apparatus comprising: a first panel; and a second panel, wherein the second panel is arranged parallel to and in direct contact with the first panel, wherein the first panel is perforated, and wherein the second panel is a continuous sheet of material without perforations.”

In this example claim 1 above, the limitation that the second sheet is “without perforations” is a negative limitation. It states what is not present (perforations). The negative limitation further defines what the limitation “a continuous sheet of material” means. It also emphasizes a difference from the first panel, which is perforated.

“2. A system comprising a printed circuit board having a first electrical conductor, wherein the first electrical conductor does not have a sinusoidal shape.”

Example claim 2 above includes the negative limitation “wherein the first electrical conductor does not have a sinusoidal shape.” This limitation does not specify the shape of the first electrical conductor. Instead, it specifies the shape that it does not have. That is, this limitation excludes one possible type of shape.

“3. An apparatus comprising: a platform; and one and only one pillar connected to the platform.”

In example claim 3 above, the recitation of “one and only one pillar” includes a negative limitation. It is actually both a positive recitation of a pillar and a negative limitation excluding the presence of more than one pillar. Recitation of a “single” element—as in “a single pillar connected to the platform”—is a similar type of negative limitation.

Different But Related Concepts

There are some other concepts in patent law that have similarities to negative limitations but are distinguishable in some way.

Closed and Partially Closed Transitional Phrases

Transitional phrases in patent claims can be closed or partially closed. The closed transitional phrase “consisting of” excludes the possibility of other elements being present. For instance, in a chemical compound this closed transitional phrase can be used to exclude the presence of additional substances. The partially closed transitional phrase “consisting essentially of” is limited to the explicitly recited elements and those that do not materially affect the basic and novel characteristic(s) of the claimed invention.

Closed and partially closed transitional phrases are not negative limitations in the strict sense. That is because they are transitional phrases and not substantive claim limitations or elements. However, they may have a rather similar effect as exclusionary negative limitations.

Reciting Holes, Voids, Etc.

A limitation directed to “a hole,” “a gap,” etc. is not strictly a negative limitation. But it also can partly resemble one. It is generally preferable to claim surrounding structures that define a hole, aperture, passageway, void, empty space, or the like. This avoids the awkwardness of trying positively claim nothing or the absence of something.

Are Negative Limitations Permitted?

In the U.S., negative claim limitations are not categorically prohibited. But that does not mean they are necessarily proper. Whether they are permitted depends on the context, including the scope of the limitation, support (or lack thereof) in the original disclosure, and the timing of introduction of the negative limitation.

A negative limitation that seeks to exclude the prior art and claim everything else is often problematic. Such claims tend to be based on the desired scope of a patent monopoly rather than pointing out the subject matter regarded as the invention. In other words, this kind of claim tries to carve out and exclude the prior art while preempting everything else. That might mean reciting a given result (perhaps using functional language) while excluding unpatentable prior art solutions. Courts have long disfavored this kind of approach and tend invalidate such claims one way or another. For instance, such a claim may be indefinite. This makes sense because peripheral claiming rather than central claiming is used in the United States.

Attempts to add a negative limitation by way of a later amendment can raise additional issues about support. For instance, if the original disclosure explicitly listed multiple alternatives, that is generally sufficient to later introduce a limitation to exclude one or more of them. However, silence will not generally suffice to support a negative claim limitation. So the ability to later add one by amendment in response to a rejection may depend on the sufficiency of the original disclosure. Claims present at initial filing (including in a preliminary amendment) are considered part of the original disclosure and may support themselves.

Best Practices: Is a Negative Limitation a Good Idea?

Negative claim limitations are generally disfavored. Patent attorneys usually try to avoid using them. As already discussed, they can sometimes raise issues about validity. Negative limitations that make up the entire recitation of the point of novelty, without more, have a greater chance of raising those kinds of problems than ones that merely clarify or elaborate on positively-recited elements. Claims with negative limitations also are sometimes easier to avoid when designing around a patent. This may impact how valuable or desirable it is to have them.

Yet, there are times when negative limitations fairly and helpfully delineate an invention. They are permitted in many instances and may be useful in the right context.

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Tags Patent Prosecution, Patents

Patents Q&A

Does Your Patent Allow for Infringement Detection?

Post author By Austen Zuege

Patent law places the burden on the patentee to identify infringement and enforce the patent against infringers. This raises an important gating question. How can patent infringement be detected? Some patents—and more specifically some patent claims—can make detection of infringement either easier or more difficult. What follows are some important considerations about patent infringement detection, and a possible alternative to patenting for hard-to-detect inventions.

Proving Infringement

A patent establishes exclusive rights in an invention that provide a limited monopoly to the patentee. The claim(s) of a patent determine the scope of what is patented, and by implication what is not patented. There are different types of infringement possible under U.S. patent law. Each type has its own elements that must be proven.

Generally speaking, direct patent infringement in the U.S. requires that each and every element or limitation—as properly construed—of at least one claim of a patent is found either literally or (sometimes) equivalently in an accused product or method. The infringement analysis always involves comparing the asserted patent claim(s) to an accused product or method. Importantly, a patent only covers what is claimed. So the comparison for an infringement analysis always depends on what is (or is not) claimed. And literal infringement requires meeting each element of the claim exactly. Any deviation from a claim limitation (as properly construed) will preclude a finding of literal infringement.

Example Comparison for Infringement Analysis

The following illustration helps explain how patent claims are compared to a potentially infringing product (or process). This example is highly simplified and assumes that the hypothetical claim has no negative limitations and no closed or partially-closed transitional phrases following the preamble, and that no Doctrine of Equivalents issues arise.

graphic comparing claim elements A, B and C to an accused product with elements, A, B, Y, and C, with the respective elements A, B, and C connected by arrows, that is infringing

In the simplified example graphic above, a claim with elements A, B, and C is compared to an accused product. Here, the accused product contains each claim element A, B, and C. The accused product meets all the limitations of the claim, so there is infringement. Ordinarily, the presence of an additional element Y in the accused product does not change this result. The accused product does not have to be identical to embodiments disclosed in the patent. It only matters that the accused product falls within the scope of the given claim by meeting all of the claim limitations.

Alleging Infringement

In order to bring a lawsuit for infringement, there must be a reasonable basis to believe that infringement has occurred. Federal Rule of Civil Procedure 11 requires “an inquiry reasonable under the circumstances” before commencing a lawsuit. This encompasses both legal and factual aspects and bars complaints made for improper purposes (such as to harass). Courts can issue sanctions on attorneys, law firms, and parties for violations of this rule.

Courts have said that in patent cases Rule 11 requires, at a minimum, interpreting the asserted patent claim(s) in a non-frivolous manner and comparing the accused device with those claims before alleging infringement. See Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1300-03 (Fed. Cir. 2004).

“In bringing a claim of infringement, the patent holder, if challenged, must be prepared to demonstrate to both the court and the alleged infringer exactly why it believed before filing the claim that it had a reasonable chance of proving infringement. Failure to do so should ordinarily result in the district court expressing its broad discretion in favor of Rule 11 sanctions . . . .”
View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000)

So it is not permitted to simply wildly guess or casually speculate that an accused product meets all the limitations of a patent claim. But applicable rules means that judges ultimately decide what is reasonable or non-frivolous under the circumstances.

Detectability

Establishing infringement means proving that all the elements of an asserted claim are present. And bringing a lawsuit in the first place requires reasonable confidence you will prevail. But what if you can’t tell exactly how a potentially infringing product is configured or how it was made or operates during use? For instance, what if there are inaccessible internal components, the composition of certain materials cannot be tested, manufacturing methods are not apparent from resulting physical characteristics, or the performance of certain software-based computer processing steps is unclear? Or what if a method of use requires that an end user operate a device but it is unknown if or when that has happened? These are all problems with detecting infringement.

The crux of the detectability issue is that you need to have a level of information about potentially infringing products commensurate with the level of detail recited in the claim(s) of a patent. Investigations to locate that information can range from the simple to the complex and expensive to the impossible. Sometimes merely reviewing marketing materials for competing products is insufficient to understand if claimed elements are present or not. Then it may be necessary to obtain one of the products for evaluation, or look for some other source of the missing information.

Example Detectability Problems

In the simplified example graphic immediately below, another accused product is compared to the claim with elements A, B, and C. This accused product meets claim element A and B. However, it is unclear whether claim element C is found in the accused product or not. This is a detectability problem. Whether infringement has occurred or not here is not yet known because it has not yet been established that the accused product falls within the claim. More information about the accused product is required to make a final determination.

graphic comparing claim elements A, B and C to an accused product with elements, A, B, and an unknown "?", with the elements A and B connected by arrows and an arrow pointing to the question mark, that presents a detectability problem

Take as another example a patented software-driven device that produces a particular result based on a certain type of calculation (following a specific algorithm). If it is possible for competing products to achieve the same result using different calculations, then it may be hard to detect infringement. It may not even be possible to reverse-engineer how particular software commands are written. In this situation, detection of infringement may be difficult even if all the physical hardware components are the same.

Yet another example involves a claim to a chemical with a particular molecular structure. You must have the means to test for the presence of that molecular structure to detect infringement. This might necessitate obtaining product samples and sending them to a lab for analysis.

Patentability and Detection

Ideally patent claims will only recite elements that are easily detected through convenient forms of inspection or testing of an accused product. This aids with enforcement of the patent. During patent preparation and prosecution, care should be taken to write claims that recite what is detectable rather than what is not. Although, this is sometimes more easily said than done.

Before enforcing a patent you first have to obtain a patent. This means convincing at least one patent examiner that the claimed invention is patentable. The broader the claim, the more difficult it can be to establish patentability. It is fairly easy to want broad claims. What patentee wouldn’t want wider coverage? But you can’t always get what you want. Sometimes difficult- or impossible-to-detect elements are precisely what make inventions patentable over the prior art. Without them, the claims may be rejected as unpatentable. In those situations, the choice may be between claims that make it hard to detect infringement or having no patent at all.

Trade Secrecy as an Alternative to Patenting

There is an alternative to patenting. And that is trade secrecy. Of course, not all inventions lend themselves to being kept secret. But an invention that is not detectable in physical products, or only involves steps performed away from public view, may be a good candidate for trade secrecy. An example is a manufacturing method, or a machine, tool, or fixture used in manufacturing. These sorts of things can often be keep secret inside a private factory. Another example is a “secret formula” for a chemical composition that cannot be reverse-engineered through testing. So an inventor may have a choice between either pursuing a patent or instead maintaining a non-detectable invention as a trade secret.

An important consideration when relying on secrecy is the level of confidence you can have that it is practical to do so. Trade secret protections are lost when something is publicly disclosed. So foregoing patent protection means thinking long and hard about what steps can be taken to maintain secrecy and how effective those steps are likely to be.

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Tags Patent Infringement, Patent Prosecution, Patents

Patents Q&A Trademarks

What Is the Federal Circuit?

Post author By Austen Zuege

In the field of U.S. intellectual property (IP) law, there are often references to the Federal Circuit. What is the Federal Circuit? This brief article will explain it.

Overview

The United States Court of Appeals for the Federal Circuit, or “Federal Circuit” for short, is a U.S. Federal appeals court. It hears cases appealed from various places including U.S. federal district courts and certain Federal agencies including the U.S. Patent & Trademark Office (USPTO) and the International Trade Commission (ITC). It was created in 1982. It replaced and merged the prior U.S. Court of Customs and Patent Appeals and the appellate division of the U.S. Court of Claims, which no longer exist.

Jurisdiction

What makes the Federal Circuit rather unique is that it has exclusive subject matter jurisdiction for certain types of cases. (28 U.S.C. § 1295). In general, appeals in Federal cases are made to regional circuit courts. That is, federal appeals courts are mostly divided into geographic “circuits”. They hear appeals from lower (district) courts within their respective geographic areas. But, instead, the Federal Circuit hears appeals from any district court in the country relating to patents and certain other matters, as well as appeals from certain executive branch agencies.

Map of geographic boundaries of U.S. courts of appeals (and U.S. district courts)

tree graphic illustrating Federal Circuit jurisdiction

In particular, the Federal Circuit has exclusive appellate jurisdiction over all U.S. federal cases involving patents, plant variety protection, trademark registrations, government contracts, veterans’ benefits, public safety officers’ benefits, federal employees’ benefits, and various other types of cases. Appeals involving Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) decisions and patent and trademark prosecution (that is, cases related to the examination and granting of patents and trademark registrations) all go to the Federal Circuit. There are some exceptions, however. Cases involving assignments of patents may go to a regional circuit court instead. Trademark infringement matters are appealed from district courts to regional circuits, not to the Federal Circuit.

Conclusion

Because of the number of patent and trademark cases it hears, and its exclusive jurisdiction over cases involving U.S. patent laws, the Federal Circuit is important to know about in order to understand IP law in the United States. Federal Circuit opinions and orders (i.e., decisions in individual cases) can be found here, or via proprietary case reporter publications and databases.

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Tags Litigation, Patent Infringement, Patent Prosecution, Patents, Trademark Prosecution

Patents Q&A

What Are Claims in a Patent?

Post author By Austen Zuege

Patents and patent applications typically have one or more “claims”. But what are claims? What is the significance of claims in patent law? This article offers a brief explanation of what they are and why they matter. It also explains some common misunderstandings and misconceptions about patent claims that can lead to great confusion.

Purpose of Claims

Patents provide exclusive rights in the form of a limited monopoly to an invention. Claims define the scope of exclusive legal rights in a granted patent or, in the case of a patent application, the scope of exclusive rights being sought. In other words, when thinking of patents as being premised on a quid pro quo, claims define the boundaries of the exclusive rights granted by a government to the patentee in exchange for disclosing an invention.

A common way to explain patent rights is to analogize them to real property (that is, land ownership). The claims are what establish the boundaries or metes-and-bounds of legal rights to a given patented invention. So claims are a bit like lot lines that establish the perimeter of a plot of land. Anything falling within the scope of a claim is protected. Just like the area within lot line boundaries belongs to the landowner.

Consider this simple guideline for granted patents: anything claimed is patented, and anything not claimed is not patented. In that sense, claims put others on notice of the scope of exclusive rights held by a patentee. And, when a new patent application is filed, the claims are the main focus of examination to determine if the invention (as claimed) is patentable. A patent is only being sought for what the claims of a given application recite.

Legal Definition

Under U.S. patent law, claims are considered a part of the “specification” of a patent application. The basic requirements for claims are set forth in Section 112 of those patent statutes:

“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
35 U.S.C. § 112(b)

When the U.S. patent laws set out what constitutes infringement of a “patented invention” (35 U.S.C. § 271). This is a reference to the claims. That is because the claims are what define the scope of the patented invention.

However, patent laws may differ between countries. For instance, the USA follows what is called peripheral claiming. Peripheral claims set forth the outermost boundaries of the exclusive rights with reasonable clarity, and anything outside the claims is generally not protected (with a rare exception under the doctrine of equivalents). But some other countries follow central claiming instead. Under central claiming regimes, the claims set out a basic inventive concept and the exclusive patent rights encompass an area that might extend beyond the literal scope of the claim language based upon the inventor(s)’s contribution over the prior art (as later determined by a court). Peripheral claiming makes the scope of rights more certain prior to an infringement lawsuit.

Content

What claims say and how they say it varies. They are unique to each application or patent. They are also written by patent applications, who have considerable discretion over what they recite and how they are formulated. Claims are meant to define inventions, so they necessarily vary to reflect the particular subject matter of a given invention. But any given claim might define an invention broadly or narrowly in scope, relatively speaking.

In order for a patent application to be found patentable, its claims have to meet the requirements for patentability. Among other things, this means that the claims must distinguish the invention over the prior art. Accordingly, claims of a given application may try to distinguish the prior art by reciting elements (also called limitations) that go beyond what was already known.

Claims can be—and often are—amended, and may between an original application, a pre-grant published application, and/or a later-granted patent. Claims might also be canceled/deleted or new claims added during examination (which is also called “prosecution”). There are even procedures to amend or correct claims after a patent has issued. This means that the substantive content of the claims can change over time. Sometimes this means that a given claim is narrowed by amendment to establish patentability. This can give rise to prosecution history estoppel.

The interpretation or construction of terms in a patent claim is very important. For instance, certain terms of art may have special legal or technical meaning. The way claims are interpreted can vary greatly between different jurisdictions.

Format

The format in which claims are written follow some general guidelines, even if their substantive content varies. For instance, they always appear at the very end of U.S. patents. They are each written as a single sentence. Parts of a claim may start on separate lines with special indenting to highlight distinct clauses. Although any given clause might contain multiple discrete limitations or elements. It is common for claims to use words like “wherein” and “comprising” that are not often used in everyday speech.

Means-plus-function (or step-plus-function) limitations are also a special type of claiming format permitted in the USA (35 U.S.C. § 112(f)). These limitations are interpreted to cover corresponding structures, materials, or acts disclosed elsewhere in the patent or application (and their known equivalents). Understanding when means-plus-function claiming is invoked or applies, and how to properly interpret the scope of that limitation, is sometimes difficult. But one rule is clear. There can be no “single means” claims, because a claim that contains only a single limitation in means-plus-function format would be an impermissible central claim rather than a peripheral claim.

A patent may have only one, a few, or very many claims. Typically, each claim is separately numbered. Some claims may refer back to prior claims by number. However, U.S. design patents have only a single unnumbered claim. U.S. plant patents also have only a single claim but it is numbered. Regardless of how many are present, each claim is generally considered separately. In this respect, claim numbering helps indicate how many different definitions of a given invention must be considered when evaluating either patentability/validity or infringement.

Types of Claims

Independent Claims vs. Dependent Claims

Claims can be either independent or dependent (35 U.S.C. § 112(c)). An independent claim stands on its own. In contrast, a dependent claim refers back to a prior claim (by number) and incorporates the limitations of all base claims (35 U.S.C. § 112(d)). The status of a given claim as either independent or dependent can have important legal significance for patentability/validity and other analyses.

The following is an example of a set of four claims in which claims 1 and 4 are independent claims and claims 2 and 3 are dependent claims:

1. An apparatus comprising an element A, an element B, and an element C.
2. The apparatus of claim 1, wherein the element A and the element B are each made of metal.
3. The apparatus of claim 2, wherein the element A is welded to the element B.
4. A method comprising step X, step Y, and step Z.

In the example above, claim 2 depends from claim 1. Because of that dependency, claim 2 incorporates all of the elements or limitations of independent base claim 1 and further adds an additional limitation. Claim 3 depends from claim 2, which in turn depends from claim 1. This means claim 3 incorporates all of the limitations of both base claims 1 and 2 and further adds an additional limitation. Claim 4 is another independent claim, which stands on its own. The limitations of claims 1-3 are not incorporated into claim 4.

Claim 1 of any patent or patent application is always an independent claim, because there is no prior claim to refer back to. Any claims that follow claim 1 might also be independent, or might be dependent. This depends on how they are written. Patentees have considerable latitude over how many claims and what types of claims are present. Although dependent claims are not permitted in U.S. design or plant patents.

When analyzing patents and patent applications, independent claims usually always require consideration, while dependent claims might not in some situations. For example, when assessing potential infringement, a dependent claim can only be infringed if its independent base claim is also infringed. But an independent claim might be infringed even if no dependent claim is infringed. So, in many contexts, dependent claims can be thought of as reciting optional features. Yet dependent claims might still be important. Validity and patentability are assessed on a claim-by-claim basis, so while an independent claim might be unpatentable (or invalid), dependent claims depending from it might still be patentable (or valid).

Multiple Dependent Claims

Multiple dependent claims are also possible (35 U.S.C. § 112(e)). A multiple dependent claim refers back to multiple prior claims in the alternative. Examples of multiple dependent claim references are “the method of any preceding claim” or “the apparatus of claim 1 or 2” or “the system of any of claims 2, 4, and 8.” The easiest way to think about multiple dependent claims is that they always present a single claim that is equivalent to having a number of separate dependent claims that each depend from different base claims.

Omnibus Claims

An omnibus claim makes a general incorporation into a claim of some other disclosure, without specifically defining the invention or even a central inventive concept. An example is “The apparatus substantially as shown and described.” Omnibus claims are permitted in some jurisdictions, but not in U.S. utility patents. Except U.S. design patents always have only a single omnibus claim reciting the design “as shown and described” (37 C.F.R. § 1.153(a)). And U.S. plant patents always have a single claim in omnibus format that states “as described and illustrated” (37 C.F.R. § 1.164)—although plant patents cover only asexual reproduction of the patented plant, through grafting, cuttings, etc., which distinguishes their claims from true omnibus claims in terms of their effect.

Other Types

There are a number of other names given to certain types of claims, often more informally. For instance, Jepson claims specifically identify the point of novelty (in a manner called two-part form in many jurisdictions), combination claims recite a particular combination of components, a Beauregard claim recites a computer-readable medium on which computer program instructions are encoded, product-by-process claims recite an apparatus in terms of how it is made, etc.

Difference Between Claims and Other Disclosures

One of the most important things to understand is that the claims of a given patent—and not other parts of a patent like the detailed description or drawings— define exclusive rights to a patented invention. As already mentioned, what is claimed is patented and what is not claimed is not patented. This means it is possible to have unclaimed disclosures in a given patent. For instance, a patent might include a drawing illustrating a prior art device but not claim it. In other cases, a patent might claim only one or a few particular embodiments or “species” of an invention and not a generic invention (or entire “genus”).

When trying to understand if their is risk of infringing someone else’s patent, a mistake frequently made by people unfamiliar with patent law is to look at the drawings or some other text in the specification (like the detailed description section) and assume that any and all such disclosures are “patented”. That is incorrect. Only the claims define the patented invention. There are many reasons why there might be unclaimed subject mater disclosed in a patent—including a patent office determining that some aspects were or are not patentable. But often those reasons are unimportant. It is the claims, as properly construed, that define the scope of the patentee’s exclusive rights.

In contrast, if a given prior art patent or published patent application is cited as prior art, it usually makes no difference whether the relevant prior art teachings were claimed or not. Most of the time the claims are irrelevant to the value of a given reference as prior art—with some exceptions for situations like double patenting.

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

Patents Q&A

How Do AFCP 2.0 Requests Work?

Post author By Austen Zuege

The U.S. Patent & Trademark Office (USPTO) has a patent-related pilot program called the After Final Consideration Pilot 2.0 or “AFCP 2.0”. How does this AFCP program work, and how can these requests be made? This article addresses those basic questions.

Important Note: the AFCP 2.0 pilot program is being terminated after December 14, 2024. It will no longer be available after that date.

Basic Contours of the Pilot Program

AFCP 2.0 is meant to foster compact prosecution. It aims to reduce the number of requests for continued examination (RCEs) and to foster examiner-applicant collaboration. To do that, the program authorizes additional time for examiners to search and/or consider qualifying responses after a final rejection. The program also involves an examiner-initiated interview if the response does not result in allowance. Some information about the program is available from the USPTO online, including some limited answers to frequently asked questions (FAQs).

The crux of the AFCP 2.0 program is that it expands the amount of time examiners have to act on a given after-final amendment to a pending patent application. Understanding how time constraints work during examination and how AFCP alters them is therefore important in order to grasp how the program may or may not benefit an applicant. However, the USPTO does not widely publicize how much time examiners have to begin with to consider an after-final response, or how much additional time is provided. These time constraint matters are taken up below.

Currently, participation in the program is free, but the USPTO has proposed an official fee requirement intended to go into effect in 2025.

As a pilot program, AFCP is implemented yearly. But it has been renewed every year since its inception.

Examination Time Constraints

The first point to understand is the “count” system that governs USPTO examiners’ work. Essentially, it is tied to a collective bargaining agreement with the unionized examination corps. This count system is complex. But the most important feature is that it basically allocates a fixed amount of time for examiners to spend on a patent application, based upon pre-determined levels of technological complexity and the particular assigned examiner’s seniority status. This averages only about nineteen or twenty hours per application, but can be much less or much more than that for a given application. For instance, some examples of these time variations by technology area are given here and here. And an explanation of examiner seniority-based variations is found here.

Under normal circumstances (not under the AFCP program), an examiner may spend only about 30 minutes considering an after-final response.

The USPTO’s Federal Register notice and web page about AFCP mentions only “a set amount of time”, without specifying the length of additional time allocated. But relevant information is available elsewhere. In actuality, the additional examination time allocated for each granted AFCP 2.0 request is 2-3 hours. For utility and plant applications, there is an additional two hours of substantive search/consideration time plus one extra hour of time for an interview (which can be reallocated for substantive examination potentially, in the absence of an interview). For design applications, there is only one additional hour of substantive examination time, plus the same one hour of additional interview time (which can also be reallocated in the absence of an interview).

Eligibility Requirements

There are a number of requirements to for an after-final amendment to qualify for this pilot program. The most important ones are:

There is an outstanding final rejection of at least one claim
An amendment is made to at least one independent claim that does not broaden the scope of that independent claim in any aspect
A certification and request (on USPTO form PTO/SB/434) is filed with the responsive amendment

The complete requirements can be found on the USPTO’s AFCP request form or via the USPTO’s program explanation web page.

Importantly, the required amendment to an independent claim does not have to be a narrowing amendment. It could merely be a clarification or correction of an error. Also, the program does not preclude a broadening amendment to another claim.

How to Make an AFCP Request

The key to making an AFCP request is to submit the required USPTO form along with an after-final amendment that meets the eligibility requirements discussed above. These requests must be filed electronically and not in hard copy by mail. The request form looks like this:

Image of main page of the USPTO's "Certification and Request for Consideration Under the After Final Consideration Pilot Program 2.0", form PTO/SB/434 (version 3-22) — USPTO AFCP 2.0 Certification and Request form PTO/SB/434 (version 3-22 shown)

Currently, there is no fee for this request. However, the USPTO has proposed an official fee requirement intended to go into effect in 2025.

The certification on the form indicates that the applicant is willing and able to conduct an interview. Nonetheless, substantive program materials contemplate that an applicant might later be unavailable or refuse an interview—contrary to what is stated at the end of section 8 of the USPTO’s certification and request form.

Is an AFCP Request Worthwhile?

Is it worthwhile, or a good idea, to make an AFCP request? Every case is different and there is no one correct approach. From an applicant’s perspective, an AFCP request is relatively easy to file. And the time needed for an interview may be short and not by itself a deterrent to making a request. So an AFCP request is often worth making if an independent claim is being amended. Whether it is desirable to amend a claim merely to qualify for AFCP 2.0 is another question entirely, and not something automatically recommended as a general matter (but possibly worthwhile in some circumstances).

This program tends to be most effective with relatively straightforward amendments. Or with amendments resulting from an examiner interview. Amendments implementing something essentially already suggested by the prosecution history tend to get a lot of benefit from it.

But the additional time allocated by an AFCP 2.0 request is not that large. That is particularly true if significant searching and consideration by the examiner is necessitated by a given response. Substantial, complex, or extensive amendments and/or arguments often require more examiner time to evaluate. These might not be resolved through the program. Applicants cannot expect miracles. All this is to say that after-final practice runs up against the count system and the time examiners are willing and able to allot to handling applicant responses. AFCP 2.0 may give examiners a little more time, but whether that additional time is enough time will vary widely on a case-by-case basis.

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Tags Patent Prosecution, Patents

Patents Q&A

What Is the Deadline to File a Continuing Patent Application?

Post author By Austen Zuege

A continuing patent application such as a divisional, continuation, or continuation-in-part (CIP) is possible in the USA. But what is the deadline to file one of these applications?

What Is a Continuing Patent Application?

A continuing patent application is one that claims priority to (or the domestic benefit of) a prior U.S. patent application or PCT international application that designated the USA. (See 35 U.S.C. §§ 120 and 121 and 37 C.F.R. § 1.53(b)). That means these are follow-on patent applications. They always relate back to one or more prior “parent” application(s). These can also be referred to as “child” applications in a patent “family”.

In other countries, the terminology for continuing applications may differ. For instance, many countries permit only subsequent “divisional” applications, and do not have different names for different types of continuing applications.

Deadline to file a Divisional, Continuation, or CIP Patent Application

Section 120 of the U.S. patent laws establishes that a continuing application (including divisionals, continuations, and CIPs) must be filed “before the patenting or abandonment of or termination of proceedings” of a parent application. In addition, USPTO regulations under 37 CFR § 1.78(d) state that a continuing application can be filed while the parent application is “copending”.

The Federal Circuit has ruled that so-called “same-day” continuing application filings are permitted, meaning a continuing application can be filed on the same day that a parent application issues as a patent. This confirmed longstanding U.S. Patent & Trademark Office (USPTO) practice, despite the statutory language literally saying “before” rather than “copending” or referring to the same day of patenting. Currently, this means that continuing applications can be filed up to and including the date that a parent application issues as a granted patent.

The USPTO’s tradition has been to issue new patents on Tuesdays. This aligns with publication of the USPTO’s Official Gazette for Patents. While that tradition is not formally codified as a rule/regulation and therefore might change in the future, the issuance of a patent will normally by no earlier than the next Tuesday following payment of the issue fee.

Another important aspect of the USPTO’s “copending” requirement is that the parent case cannot be abandoned. If the parent case will not issue, but an office action or the like is outstanding, then it is necessary to file the continuing application either (a) during the shortened statutory response period in the parent case or (b) after the shortened statutory period but before the maximum six-month statutory period along with the payment of monthly extension of time fees in the parent application. In other words, extension of time fees may be required in the parent case in order for the continuing application to be considered “copending”. This is referenced obliquely in MPEP § 710.02(e) and more clearly in old USPTO notices.

For continuing applications related to a prior PCT international application, such as a PCT “bypass” application in the U.S., the USPTO’s “copending” requirement means that the continuing application must be filed by the national phase entry deadline. In the U.S. this is 30 months from the earliest priority date.

The deadlines for continuing applications in other jurisdictions (often referred to only as divisionals) varies considerably. Deadlines for divisional or other continuing applications in foreign patent offices may arise much sooner than the deadlines under U.S. patent law and practice. For instance, Brazil requires divisional filing before a final office action or allowance is issued, which is a date that cannot be precisely determined in advance.

Best Practices

It is a best practice to file any continuing application as early as possible, and in the USA no later than with the payment of the issue fee or by the shortened statutory period deadline for a response in the parent case. While it may be possible to file a continuing application after such a date, problems and additional fees could arise.

For example, the Federal Circuit decision allowing continuing application filings on the same day as issuance of the parent is contrary to the literal language of the status, and might be overturned someday. There may also be filing system outages, illnesses or other complications that make a last-minute same-day filing difficult as a practical matter.

Also, the USPTO’s switch to “eGrant” electronic-only patents means that the delay between issue fee payment and subsequent issuance will become shorter than when hard copies were printed and mailed in the past. Indeed, on this point the USPTO has formally commented that reducing patent pendency is required by statute, while giving applicants time to file continuing applications is not, so “[a]pplicants should file their continuing applications as early as possible, preferably prior to payment of the issue fee to avoid any loss of rights.”

If an office action is outstanding in a parent case that will be abandoned, filing continuing applications early also avoids the need to pay an extension of time fee in the parent. The need to pay that extension of time fee in the parent might also be easily overlooked and missed, jeopardizing any resultant patent.

Also, delayed continuing application filings can implicate other considerations such as double patenting (and terminal disclaimers), prosecution laches, and the prior art status of a publication of a parent application (particularly for CIP applications).

Lastly, delays in filing a continuing application may also delay examination and erode the available term for any resultant utility or plant patent issuing from a continuing application. (However, this point is not a concern for design patents, which have a fixed term from issuance).

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Tags Patent Prosecution, Patents

Patents Q&A

What Is a Published Patent Application?

Post author By Austen Zuege

People unfamiliar with patents and patent law are often confused about published patent applications. This article provides a brief overview of what a published patent application is and, importantly, how it differs from a granted patent.

Contents of a Published Application

Pre-grant publication means that patent applications that have not yet been fully examined are published while still pending. This gives the general public a view of the contents of the pending application. And even if no patent is ever granted, the contents of the published application are normally still made public (with some exceptions). Published patent applications can be relied upon as prior art against later applications. In the USA, only non-provisional utility and plant patent applications are subject to pre-grant publication. Pre-grant publication normally occurs after eighteen months have elapsed from the earliest priority date.

A published patent application—or patent application publication—will take a form determined the relevant jurisdiction. In the USA, for example, each application is specially formatted for pre-grant publication in a two-column format using paragraph numbers. This means the appearance of the published application will differ from what the applicant(s) originally filed.

Excerpt of the front page of United States Patent Application Publication Number US 2023/0000001 A1 to Weinan Wu for an "Assembled Garden Tool" — Example excerpt from front page of U.S. patent application publication no. 2023/0000001

Excerpt of the first page of text of US 2023/0000001 A1 for an "Assembled Garden Tool" showing two-column format with paragraph numbers — Example excerpt from first page of text of U.S. patent application publication no. 2023/0000001

The published application might also include amendments, such as amendments to the claims or drawings. In some uncommon instances, amendments might be published that are later disallowed and omitted from a subsequent granted patent. But amendments submitted too late for inclusion might not be included with the publication. And appendices included in patent applications are generally not published. The USPTO can refuse to publish certain information prohibited by law or that is offensive or disparaging. Additionally, as a consequence of official preparations and formatting efforts for publication, there can sometimes be discrepancies and printing errors, in which the published version unintentionally differs from the applicant’s original application.

In some other jurisdictions, such a PCT application publications, published applications merely take copies of the application as filed by the applicant and add a cover sheet. In other words, the application is not reformatted and reflects what the applicant submitted.

Publication Numbers

Each patent application publication is assigned an official publication number. In the USA, and with PCT matters, the publication number differs from the application serial number assigned upon filing by the relevant patent office. Although in some jurisdictions the publication number may be the same or nearly the same as an application serial number.

The anatomy of a publication number in the USA is shown as follows:

graphic labeling the country code, pub. year, unique number and kind code for the publication number of U.S. patent application publication no. US 2023/0000001 A1 — Anatomy of a U.S. patent application publication number

There is a four-digit year followed by a slash followed by a seven-digit number unique to each published application, and the concluded with a kind code. The unique-seven digit numbers are sequentially assigned to each newly published application. The kind code indicates the type of publication, with “A” generally indicating a published application and “B” generally indicating a granted patent. A two-letter country-code prefix to patent publication numbers can also be present, or appended, to indicate the jurisdiction of the patent publication.

Be aware that some patent searching databases use confusing variations on official patent publication numbers and kind codes. For instance, the Espacenet portal from the European patent Office (EPO) truncates U.S. published application numbers and shortens the unique seven-digit number to a six-digit number (but dropping a leading zero). Also, some databases will retroactively apply an “A” kind code to old granted U.S. patents, from before the USPTO began printing kind codes on patents or making pre-grant publications at all.

Each jurisdiction has a slightly different format for publication numbers. For instance, PCT publication numbers have a “WO” country-code prefix and use a six-digit unique identification number.

Example publication number for PCT international publication number WO 2023/000001 A1, published in German — Example publication number for PCT international publication number WO 2023/000001 A1

Publication Makes File Wrapper Available Too

Before publication, the substantive contents of pending patent applications are kept confidential by the U.S. Patent & Trademark Office (USPTO). But upon publication, which normally happens after eighteen months from the earliest priority date, the file wrapper of a published patent application is also made public by the USPTO. This allows the public to monitor the status and ongoing prosecution history of the corresponding application. While the “published application” is a discrete, stand-alone document, its publication also makes other information publicly available too. But, strictly speaking, a published application refers only to the stand-alone published version of the application and not to other materials in a file wrapper made available to the public through other channels.

Differences From a Granted Patent

A published patent application is much different from a granted patent (also called an issued patent). This is often misunderstood. Although the differences between published applications and granted patents are very significant.

In all but a few countries, patent applications must undergo a substantive pre-grant examination that establishes patentability before a patent is granted. A pre-grant patent publication merely indicates that the applicant(s) are seeking—or previously sought—a patent. But there are no enforceable patent rights unless and until a patent is granted. The existence of a published application for an application that is still pending simply means that a patent might be granted. Plus, the scope of the claims in any later-granted patent may differ from those in the published application. By way of analogy, just because someone files a lawsuit does not mean that he or she will win the case or that all the allegations are all true.

A common mistake is to refer to a published patent application as a patent. But they are not patents! It is reasonable to call them patent documents, or patent-related documents. But a published application is not directly enforceable by itself. Only a granted patent can be enforced. This is the most important distinction. A published patent application does not present immediate and direct infringement risks like a granted patent. Although the technical teachings and disclosures in a published patent application may still be prior art against later patent application claims. Yet a published application and a later related patent are often merely cumulative, meaning (apart from different publication dates) they are redundant in terms of their substantive teachings.

Another potentially confusing aspect of published patent applications is that you cannot understand the current status of the underlying patent application from the published patent application alone. A given published application may have matured into a granted patent since publication, or might have been abandoned (and/or another related “child” application might have been filed too). It is necessary to look up the current status in official records, such as though the USPTO’s Patent Center portal. Most paywalled, proprietary patent searching databases provide at least some status information, and a few (but definitely not all) free, open-access patent searching databases provide some status information. But finding and interpreting current status information is not always straightforward.

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