Prosecution history estoppel can arise when the patentee relinquishes subject matter during the prosecution of the patent—that is, during examination of a patent application at the U.S. Patent & Trademark Office (USPTO)—either by amendment or argument. A narrowing amendment made to satisfy any requirement for patentability (under 35 U.S.C. §§ 101-103, 112, 161, or 171) may give rise to an estoppel. When it applies, prosecution history estoppel will prevent a patentee from relying on the Doctrine of Equivalents to establish infringement based on the particular equivalents surrendered. A given claim limitation might be given only its literal scope (as properly construed) but no more. This policy allows competitors to rely on prosecution history estoppel to ensure that their own devices/processes will not be found to infringe by equivalence.
The Basic Rule
The Doctrine of Equivalents is an equitable doctrine created by courts long ago. It is premised on language’s inability to capture the essence of innovation, allowing some protection beyond the literal scope of a claim where the claimed invention and the accused product or process are equivalent. Its purpose is to “temper unsparing logic” that “would place the inventor at the mercy of verbalism and would be subordinating substance to form” and it evolved in response to situations where accused infringers attempted to “practice a fraud on a patent” by introducing “minor variations to conceal and shelter the piracy.” However, there is a tension between such concerns and the need for patents to put the public on notice of what a patent does and does not cover.
Prosecution history estoppel is about interpreting patent claims by reference to the history that led to their grant. It limits the patentee’s ability to establish infringement by equivalence to help provide certainty to competitors about the enforceable scope of a U.S. patent. Accordingly, the Doctrine of Equivalents is not available where prosecution history shows the inventor was able to capture equivalent differences in words but chose narrower language. The patentee cannot later recapture what was previously surrendered under the guise of the Doctrine of Equivalents. Where the original patent application once embraced the purported equivalent but the patentee narrowed his claims to obtain the patent or to protect its validity, the patentee cannot assert that he or she lacked the words to describe the subject matter in question.
Estoppel Can Arise Through Amendment or Argument
Prosecution history estoppel can arise two ways: (1) by making a narrowing amendment to the claim (amendment-based estoppel) or (2) by surrendering claim scope through argument to the patent examiner (argument-based estoppel). These two possibilities are discussed in turn.
How Amendment-Based Estoppel Can Arise
The first way that prosecution history estoppel can arise is by way of a narrowing amendment to a claim during prosecution. The question of what constitutes a narrowing amendment will depend on the context of a particular patent claim. But a classic example is adding words that narrow the limitations of a claim to avoid a prior art reference cited in a rejection in an office action. As another example, which is less intuitive, courts have said rewriting a dependent claim in independent form is an amendment adding a new claim limitation, which constitutes a narrowing amendment that may give rise to an estoppel.
How Argument-Based Estoppel Can Arise
Argument-based estoppel arises when the prosecution history evinces a “clear and unmistakable” surrender of subject matter. Argument-based estoppel most often arises when the patentee tries to convince a patent examiner that the claims of an application recite something different from the prior art. For instance, a patentee may have argued that a claim term has a meaning that is narrow enough to avoid a disclosure or teaching in a cited prior art reference. In such a situation, the patentee will likely be estopped from later asserting that the Doctrine of Equivalents encompasses what was previously argued to be outside the scope of the claimed invention. Such arguments are treated like an acknowledgement that the patentee knew the meaning of the claim language and deliberately chose narrower language in order to obtain a patent.
Scope of the Estoppel
Though prosecution history estoppel can bar a patentee from challenging a wide range of alleged equivalents used by competitors, its reach requires examination of the particular subject matter surrendered. Even where prosecution history estoppel applies, the scope of the estoppel is not always absolute. These inquiries differ somewhat between amendment-based estoppel and argument-based estoppel.
Scope of Amendment-Based Estoppel
The scope of amendment-based estoppel depends on the claim language at issue and the reason for the amendment. For instance, where the reason for the amendment was not related to avoiding the prior art, it does not necessarily preclude infringement by equivalents of that element. But an amendment to clarify the recitation of the claimed invention to satisfy definiteness requirements for patentability would give rise to an estoppel, even though there was no prior art reference prompting the change. Also, cancellation of a claim can give rise to estoppel with regard to any claim(s) that remain (or are added). However, the reason for an amendment is often not clear from the prosecution history.
When no explanation for an amendment is provided, there is a rebuttable presumption that the Doctrine of Equivalents is not available at all. When the purpose underlying a narrowing amendment cannot be determined—and hence the rationale for limiting the estoppel to surrender of only particular equivalents—it is presumed that the patentee surrendered all subject matter between the broader and the narrower language. But that presumption of amendment-based estoppel can be overcome for a particular equivalent when (1) the equivalent in question was unforeseeable at the time of the application, (2) rationale underlying the amendment bears no more than a tangential relation to the equivalent in question, or (3) the patentee could not reasonably be expected to have described the insubstantial substitute in question.
Scope of Argument-Based Estoppel
The scope of argument-based estoppel is based on the scope of particular arguments made during prosecution. Unlike amendment-based estoppel, there is no presumption-and-rebuttal approach. Rather, the question is how far argument-based estoppel applies in the first place, if at all. The question is whether there was a clear and unmistakable argument-based surrender of particular subject matter. Courts have said that simple arguments and explanations to the patent examiner do not surrender an entire field of equivalents. But any arguments can still surrender some equivalents, even if they do not surrender all possible equivalents. This is very context-dependent. The key to this inquiry is whether a competitor would reasonably believe that the patentee’s argument had surrendered the relevant subject matter.
However, courts have said that any clear assertions made during prosecution in support of patentability, whether or not those assertions were actually required to secure allowance of a claim, may still create an argument-based estoppel. Also, once an argument is made regarding a claim term that creates an estoppel, that estoppel will apply to that term in other claims in the patent too.
Prosecution Disclaimer
Prosecution disclaimer is a separate but related concept. Rather than relating to the availability of the Doctrine of Equivalents to establish infringement, prosecution disclaimer or disavowal can limit the proper construction of a claim’s literal scope. Thus, it may affect whether or not literal infringement is found—prior to any consideration of the Doctrine of Equivalents. For example, it can arise when a patentee makes arguments during prosecution about how the pending claims differ from the prior art. This is meant to prevent patentees from opportunistically taking different (and broader) positions in court when asserting infringement than when obtaining the patent in the first place. Statements made during the prosecution of family-related applications, even later-filed ones and foreign counterparts, may sometimes result in prosecution disclaimer as well.
Questions about prosecution disclaimer pertain to proper claim construction. Claim terms are presumed to carry their full and customary meaning unless the patentee unequivocally imparted a novel meaning to those terms either in the patent application itself (called acting as her own lexicographer) or expressly relinquished claim scope during prosecution. Just as with argument-based estoppel, prosecution disclaimers must be “clear and unmistakable” in order to limit claim scope. An ambiguous statement during prosecution will not limit a claim term’s ordinary meaning.
An important difference between prosecution disclaimer and prosecution history estoppel is when they are taken into account. Prosecution disclaimer is a matter of claim construction. That is something courts do as a first step in patent infringement analyses, without reference to the specific product or process accused of infringement. In contrast, the Doctrine of Equivalents is bound up with the subsequent comparison of the accused product or process to the asserted patent claims as properly construed. Prosecution history estoppel is a question of whether a patent owner is permitted to invoke the Doctrine of Equivalents in particular ways in the second part of infringement analysis, after claim construction. But if literal infringement is found—despite any prosecution disclaimer—there is no need to reach the Doctrine of Equivalents.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Novelty and non-obviousness requirements for patentability are assessed based on the contents of the “prior art”, which can include information previously published by anyone—even by an inventor. Section 102 of the patent laws formally defines what qualifies as prior art in the USA. An earlier “printed publication” will usually count as prior art for novelty (anticipation) and obviousness assessments against a later patent application. Though there are some exceptions, including a one-year grace period that may exclude prior disclosures by an inventor.
The question at hand is about the legal requirements for something to qualify as a “printed publication” for patentability in the U.S. (since the adoption of the America Invents Act [AIA]) This mostly depends on whether relevant technical disclosures appeared in something was generally publicly accessible long enough ago. For the discussion that follows, we will simply assume that given materials contain some kind of relevant technical disclosure.
Examples of Printed Publications
Printed publications can be all sorts of things. They can include books, technical journal articles, web pages, videos, audio recordings, etc. This type of prior art is not limited to the particular format of the materials. In the Internet age, printed publications encompass more than just written text, and more than just hard copy materials.
But “printed publications” generally exclude products themselves. That is, a commercial product or the public use of a method/process would not normally be considered a “printed publication”, although they might instead fall within on-sale and/or public use prior art categories. Yet associated product manuals, product advertisements, and the like might qualify as printed publications.
“Printed Publications” Versus a “Patent” or “Application for Patent Published or Deemed Published”
Before going any further, it is important to note that U.S. law calls out patents and published patent applications separately from “printed publications”. (35 U.S.C. § 102(a)). But patents and published patent applications can be considered “printed publications” too. Patent-related publications can potentially qualify as prior art as any (or all) of a “printed publication”, something “patented,” and/or as a “a patent issued under section 151, or in an application for patent published or deemed published under section 122(b).” In other words, those categories are not mutually exclusive.
The important point here, which may be counter-intuitive, is that “printed publications” include but also go beyond patent-related publications. For that reason, the term “non-patent literature” (NPL) is sometimes used to describe a typical kind of non-patent prior art that falls under the category of printed publications. That terminology sometimes helps to highlight unique issues that can arise when seeking to establish that an NPL reference qualifies as prior art.
Public Accessibility
The first question in determining if something qualifies as a printed publication is determining whether it was published. Courts have said that “public accessibility” isthe touchstone in determining whether a reference constitutes a “printed publication”. A given reference will be considered publicly accessible only if it was made available to the extent that persons interested and ordinarily skilled in the relevant subject matter (or art) exercising reasonable diligence can locate it. There is no formula or checklist for making that determination. Whether a reference is publicly accessible is determined on a case-by-case basis based on all the facts and circumstances surrounding disclosure of the reference to members of the public.
There are really three ways something can be established as publicly accessible in the eyes of U.S. courts:
Cataloging/indexing – By establishing that a document was catalogued or indexed in a publicly accessible archive (e.g., a library catalog or Internet search engine) so that persons interested and ordinarily skilled in the subject matter or art can locate it by exercising reasonable diligence and using available research tools, regardless of whether anyone actually accessed it;
Distribution/dissemination – By establishing that a document was distributed or disseminated (e.g., mailed, handedout in person, sent in a newsgroup electronic message, or announced orally at a conference and made available) in a sufficiently broad way, without a reasonable expectation of privacy, so that members of the public interested in and ordinarily skilled in the subject matter or art could obtain copies by exercising reasonable diligence; or
Public display (without literal distribution) – By establishing that materials (e.g., a temporarily displayed slide presentation, video shown on-site, poster, billboard, etc.) were publicly displayed for a sufficient time and in a sufficiently broad manner, without a reasonable expectation of privacy, so as to be sufficiently accessible to persons interested and ordinarily skilled in the subject matter or art by exercising reasonable diligence, even though copies of the materials were never distributed or indexed and the materials never physically left the presenter’s control.
Notably, courts have said that a sufficient public dissemination or display of materials can make them a “printed publication” even where those materials were never searchable and never indexed/cataloged. Cataloging or indexing something is just one among many ways that something can be considered published and publicly available.
Private communications do not count as printed publications, whether designed for the use of single persons or of a few restricted groups of persons. Anything that is reasonably expected to remain secret, such as private communications marked as confidential or not for distribution or exchanged under a non-disclosure agreement (NDA), will not qualify as printed publication prior art. Although, sometimes courts disregard ambiguous confidentiality restrictions or read alleged confidentiality terms narrowly to still find public accessibility. When dissemination or display is asserted as the basis for public accessibility, it is necessary to look at certain factors to determine the reference was sufficiently publicly accessible to count as a “printed publication”. For instance, establishing public display requires looking at where and how the display occurred, including the openness, size, and nature of the display venue.
Also, technical accessibility alone is not enough if no one of ordinary skill in the art could have reasonably found the materials except by accident. The materials have to sufficiently publicly accessible to be considered “published”, by doing something that reasonably alerts the relevant public to their existence. Materials that are in a library or on web server, or randomly left lying in a public place, but that have not been indexed, disseminated to, or otherwise affirmatively announced to the interested public will not be considered generally publicly accessible, for example.
It may be helpful to consider a push vs. pull distinction regarding the public accessibility threshold. Publication in effect requires that materials be pushed out in some manner that allows the interested public to know about them. Such a “push” could be any of the three options described above: cataloging/indexing, public dissemination, or public display. An interesting facet of this is that anyone can publish a “printed publication.” There is no hierarchy of worthy/unworthy publications. Publication is not limited to certain channels (controlled by gatekeepers). But the mere fact that someone could “pull” information by specifically requesting it is not enough. It begs the question to say that information could be requested if there was no reason for someone to know in the first place that it could (technically) be requested. In short, printed publication status for patentability requires some kind of “push” out of the realm of private knowledge and into the realm of public accessibility.
Date of Public Availability
In order to qualify as prior art against a given claim, a printed publication must also be old enough. The essence of something being “prior art” is that it pre-dated a later effort to patent an invention. This requires looking whether a given publication was publicly accessible (published) before a critical date. The term “critical date” is often used in order to implicitly acknowledge that the date that divides prior art from things that are not old enough to be prior art varies depending on whether or not an exception applies—possible exceptions are discussed below. For a typical “printed publication” by a third party, where no exception applies, the critical date means before the effective filing date of the patent claim at issue.
The date of public availability is sometimes easily determined, but not always. This question is easiest when the materials in question are the kind subject to a predictable and reliable means of publication. For instance, using a U.S. patent application publication as a “printed publication” is straightforward because the patents are official U.S. government documents that are publicly available from the time they are issues and the issue dates printed on the face of patents are reliable indicators of the actual date of issuance (publication). This question is also fairly easy for foreign patent documents.
When in comes to many types of materials, however, dates may not appear on the materials themselves or those dates might not be sufficiently reliable. To use a famous example, Sigmund Freud’s book Die Traumdeutung[The Interpretation of Dreams] was first published in November of 1899 but the title page was post-dated to 1900. Also, dates appearing on a document may indicate something other than a date of general public accessibility. For example, the mere presence of a copyright notice date, printing date, Internet server upload date, or the like on reference itself will not necessarily satisfy public availability evidentiary requirements. But publication by an “established” publisher on something bearing traditional hallmarks of publication (a book’s ISBN, etc.) may be sufficient in AIA trials before the USPTO’s Patent Trial & Appeal Board (PTAB).
There can also be disputes about revisions or different versions of a given publication. This is especially true for online materials. Sometimes a publication date may reflect only the initial publication date. But it may not account for the dates that revisions, modifications, or later additions took place. The date of public accessibility is assessed on the basis of the particular version put forward as potential prior art, and cannot be assumed to match that of a substantively different version.
Legal Standards for Evidence of Publication
To complicate matters, use of “printed publication” evidence in formal patent examination or disputes requires satisfying rules around the use and introduction of evidence. Different evidentiary standards will apply depending on where and how patentability or validity is being assessed.
During regular examination of a new patent application at the USPTO, a relatively low evidentiary standard is applied. A date appearing on a document can establish its publication for examination purposes unless the applicant challenges it. (MPEP § 2128).
However, higher standards are applied in contentious proceedings, including IPR proceedings and during infringement suits in courts. In those situations, there are rules against hearsay (Fed. R. Evid. 802 and 803) and rules requiring authentication of evidence (Fed. R. Evid. 901 and 902). These requirements may necessitate use of a witness to authenticate something put forward as a “printed publication” and its alleged publication date. This can include testimony from a librarian who cataloged something as of a particular date or a computer forensic expert able to retroactively determine the date of publication.
Web pages are a common type of printed publication evidence for which the publication date normally needs to be established beyond just a date that appears on the web page itself. Aside from witness testimony, demonstrating a clear reliable process for capturing, preserving, and presenting the web page, such as using the Internet Archive’s “Wayback Machine,” might be acceptable. (See https://archive.org/legal/faq.php).
Complicating matters still further is that a preponderance of the evidence standard is applied in all USPTO matters while a higher clear & convincing evidence standard is applied in courts. So the PTAB may accept something as a printed publication while a district court might not, based on these different evidentiary burdens (under essentially the same evidentiary rules).
Potential Exceptions
A printed publication will not count as prior art if (a) it was by an inventor within a one-year grace period before the patent application’s effective filing date or (b) the publication is by another but an inventor had previously publicly disclosed the invention (within the grace period).
“(a) Novelty; Prior Art.-A person shall be entitled to a patent unless-
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions.–
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.-A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.-A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. [see also § 102(c) regarding inventions under joint research agreements that may satisfy this provision]
This rather long list of possible exceptions is no doubt confusing. But some general points may aid in understanding the exceptions.
First, the exceptions under § 102(b) fall into two categories depending on whether the alleged prior art is put forward under § 102(a)(1) or under § 102(a)(2). Here, note that § 102(a)(2) applies only to U.S. patents and published patent applications (plus PCT international application publications designating the U.S.). So any non-patent materials like books, journal articles, web pages, and the like will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered. Similarly, any foreign patents or published applications will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered.
Second, under the § 102(b)(1) exceptions that apply to a “disclosure in a printed publication,” there are two possibilities: (A) disclosures made by (or on behalf of) an inventor within the one-year grace period, and (B) where an inventor made a qualifying public disclosure that pre-dated the printed publication. Where they apply, these exceptions establish a “critical date” one year before the effective filing date of the inventor’s patent application (assessed claim-by-claim). In practical terms, exception (B) will rarely arise, partly because it requires satisfying exception (A) plus additional requirements. The more common of the two exceptions is that an inventor’s own printed publication disclosures up to one year prior to a new patent application filing will not count against that inventor as prior art in the U.S.
Illustration of Timeline for U.S. Patent Filing Grace Period
One of the more important aspects of these exceptions is that an inventor’s own prior patent application may not qualify as prior art against that inventors own later application depending on when the prior application is published. This situation can arise when a later application does not formally claim priority to the inventor’s own prior application.
These exceptions to prior art status are rather unique to U.S. patent law. Most other countries follow more of an absolute novelty approach, with no grace period for delayed patent filings. So keep in mind that every jurisdiction will have its own rules for what counts as prior art and those rules offer differ from those in the U.S.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
If you are interested in patenting a new invention, or simply interested in assessing its patentability, a helpful early step is to prepare an invention disclosure. Such disclosures gather relevant technical information, as well as details about the identity of all potential inventors. The invention disclosure should be written and should further include drawings or other visual aids. It should be kept confidential. There is no “official” government form for an invention disclosure, though companies may have a form for internal use.
The following sample invention disclosure forms can be downloaded and used to document a new invention for patent purposes:
The main purpose of preparing an invention disclosure is to convey relevant detail details about the structure and configuration of the invention, how it functions, what is believed to be significant about the invention in relation to what has been done before (the “prior art”), and potentially other things that might affect the ability to patent the invention. This disclosure should be prepared by the inventor(s) themselves. It is usually not fancy or long. These sorts of disclosures are simply meant to gather basic, essential technical information and to point out what are considered the most important features. A patent attorney and/or patent searcher can then use the disclosure to gain an understanding of the invention in order to prepare a patent application or conduct a patentability search.
There may be additional documentation and information needed beyond what appears in an invention disclosure. Requests for more technical information are common. For example, patent attorneys will usually conduct at least one inventor interview to gather more technical information for purposes of patenting. But an invention disclosure is a starting point. Inventor interviews are much more productive if the patent attorney has some relevant drawings and other materials beforehand. That allows the patent attorney to have some sense of what the invention is about in order to ask better and more pointed questions.
It is important that an invention disclosure mention all the important features of the invention that might be patentable. Patent attorneys can ask follow-up questions, but they are not mind-readers. Omitting some major aspect of an invention on the invention disclosure entirely is a common mistake. Another common error is to focus on commercial marketability information, omitting technical details about what an invention really is and how it works that matter most for patenting.
An invention disclosure should also be relatively short and focused. While voluminous technical materials might have value for a patent attorney at certain stages of patent application preparation, it is inefficient for a patent attorney to read through dozens or hundreds of pages of such materials without some guidance. And an attorney might not fully or immediately appreciate what is new and inventive in merely “raw” technical data. An invention disclosure should be like a beacon pointing out what the inventor(s) consider to be most significant, at least as a starting point.
Invention disclosure forms that are signed and dated can sometimes provide useful records about who developed a given invention and when. Though a confidential write-up by itself will generally not preserve any patent rights—filing a patent application is required to do that. And there may be bar dates or deadlines by which a patent application must be filed.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
For pending patent applications, office actions are commonly sent by the U.S. Patent & Trademark Office (USPTO) rejecting and/or objecting to aspects of the application on the merits. The applicant must respond to an office action within a certain response period in order to avoid abandoning the patent application. The back-and-forth communications between the USPTO and the applicant is called “prosecution”. Nearly all U.S. patent applications receive at least one office action. Yet most applicants are able to overcome the rejections/objections to obtain a patent. This means applicant responses to office actions are important in obtaining patents. But how should the applicant respond?
Overview
The best way to respond to an office action will vary for one case to the next. The most appropriate response strategy depends on the specific context. Generally, the following factors will influence how best to respond (if at all):
Specific rejections and/or objections made in the office action
Law and procedures governing the rejections/objections
Scope and content of the patent application:
current claims
original disclosure of the applicant’s invention (support/written description)
Applicant’s overall patenting strategy
In any situation, typical responses will consist of arguments or a combination of amendments and arguments. Any response that contains an amendment is called an “Amendment”. A response that contains only arguments can be called a “Response”, though the USPTO still classifies these as a type of amendment. Certain other types of information and accompanying filings, such as petitions, may also be submitted together with a response in some circumstances. Payment of official fees may also be required with a response, such as extra claim fees or extension of time fees.
The Specific Rejections/Objections
Not surprisingly, the appropriate way to respond to an office action depends on the particular rejections and/or objections being made. Though a compliant response generally needs to address all of the rejections and objections made in the office action. It is possible to informally group rejections and objections into three categories: (1) prior art-based rejections; (2) eligibility rejections; and (3) formality rejections and objections.
Prior art-based rejections are ones that assert particular claims of an application are not patentable based on what was already known in one or more cited prior art references. These include rejections based on anticipation (35 U.S.C. § 102), also called lack of novelty, or based on obviousness (35 U.S.C. § 103). Whenever there are rejections made based on cited prior art, the applicant should consider what the cited art actually discloses, teaches, and suggests, and whether the office action accurately characterizes those teachings and disclosures. It is common for applicants to disagree with the patent examiner about the scope of the prior art. These are often factual arguments about what was or was not actually known in the prior art.
Eligibility rejections deal with questions of whether the subject matter of the invention is eligible for patent protection. These usually pertain to the utility requirement for utility patent applications (35 U.S.C. § 101). Though design patents (35 U.S.C. § 171) and plant patents (35 U.S.C. § 161) have different eligibility requirements. Abstract ideas, natural phenomena, and laws of nature are not patent eligible in the USA. Eligibility/lack of utility rejections tend to be most common for certain types of technologies, such as software-implemented inventions, methods of medical diagnosis and treatment, etc. Responding to these rejections can often be challenging.
Formality rejections are ones that generally deal with the form of the patent application. These are very often about the procedures and technicalities that applicants must comply with. These include rejections based on indefiniteness or lack of enablement (35 U.S.C. § 112), and objections to the drawings or specification or for informalities like typographical, spelling, or grammatical errors in the claims. Formality rejections are sometimes cured through corrective amendments, though they can also be argued sometimes.
Applicable Law and Procedures
Office actions are prepared by patent examiners who must follow the patent laws, and interpretations of those statutes by courts, as well as USPTO regulations and procedures. In general, patent examination in the U.S. follows the guidance and procedures set forth in the Manual of Patent Examining Procedures (MPEP). The MPEP is usually the first place to look for guidance about the legal standards and procedures that a patent examiner is supported to follow.
Any rejections or objections set out in an office action must comply with applicable law. Applicants will often disagree with an examiner about legal requirements to sustain a rejection. It is common for applicants to argue that an examiner has not met his or her burden to reject a particular claim of a patent application. These are often legal arguments about what the law requires (or does not require).
Scope and Content of the Patent Application
A suitable office action response will depend on what is recited in current claims and in the original disclosure (specification) of the application. Any office action will have been based on the way the applicant’s invention is disclosed and claimed. The way that the applicant has presented the invention in the application can vary a lot. Applicants have a lot of discretion in how they do so. This means the application itself is an important starting point in determining how best to respond to the office action.
The claims of the application recite the scope of the exclusive legal rights sought in the invention. That is, the claims define the invention sought to be patented. Applicants can usually amend the claims to adjust their scope and format. New claims can also sometimes be presented. Narrowing amendments might be made distinguish the claimed invention from cited prior art, for instance. Or clarifying claim amendments might be made to resolve formality rejections or objections. The implications of claim amendments can be significant. Narrowing amendments reduce the scope of exclusive rights in any resultant patent. And amendments can also result in prosecution history estoppel, which limits the interpretation and scope of enforceable rights. But the key is that the claims can potentially be amended in order to overcome rejections and/or objections.
The rest of the patent application (or specification) is significant in terms of how it discloses the invention. For instance, there may be explicit definitions of certain terms used in the claims that are implicated by a rejection in an office action. Also, the scope of the original disclosure (the “written description”, which includes any drawings) is in most respects fixed at the time the patent application was filed. An applicant cannot add “new matter” to the application after filing. This is often important because any claim amendments must have support in the original disclosure. An applicant cannot try to avoid cited prior art by amending the claims to recite something “new” that was not originally disclosed. So the original application constrains what sorts of later amendments are permitted.
Applicant’s Patenting Strategy
Lastly, the applicant’s overall patenting strategy will play a major role in how best to respond to an office action. These are often questions about what claim scope the applicant desires and what scope the applicant is willing to accept or settle for.
For example, business objectives are important. A patent application might disclose multiple possible embodiments of an invention with different configurations, features, etc. Some of those things might be merely optional or have been omitted from commercial versions of the invention. While certain response strategies might result in allowance and grant of a patent, any that depart from the embodiment(s) of the invention that the applicant is actively commercializing might have limited practical value. The relationship of a given application to other pending applications or granted patents, if any, can also be significant. As can the potential for a further, related (continuing) application.
There may be timing considerations too. Sometimes an applicant wants to obtain a granted patent as quickly as possible. Alternatively, it may be desirable to slow down patent examination to allow time to determine which disclosed embodiment of the invention seems the most commercially viable.
Additionally, the applicant’s budget and available resources can play a significant role. Official fees and attorney fees associated with further pursuit of patent protection can be significant. Applicants usually desire to have broad exclusive patent rights in their invention. But broad claims are often much harder to obtain. There is frequently greater effort and expense involved in pursuing broad claims, which is why applicants might settle for narrower claims. On the other hand, there can be long-term cost savings associated with maintaining a single patent rather than multiple patents, which might suggest making a more robust response to try to avoid additional patent filings. In short, budget constraints and business considerations will sometimes influence the way an office action response is prepared aside from the merits of the case.
Summary
There are many—sometimes competing—factors that will influence how to respond to a patent application office action. There is no one right way to respond. The most appropriate response strategy will take into account the many different considerations, backed by knowledge of the applicable law and procedures as well as an understanding of the technology involved with the invention. The overview given here is really only a basic introduction. Other options may be available in specific situations that are beyond the scope of this introduction. Given the complexity of patent law a patent attorney will generally be aware of the full range of options and can advise about specific cases.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
There are a number of different types of patents and patent applications. The available types of patents and patent applications also vary by country. Before turning to those specifics, an important initial distinction to note is between a patent application and a granted patent.
Patent Applications Versus Granted Patents
A patent and a patent application are not the same thing. This is a common source of confusion for those unfamiliar with patent law.
Patent Applications
A patent application is essentially a request by an inventor/applicant to obtain a patent. It is a custom-prepared document rather than a template form that is filled-in. Simply filing a patent application does not by itself entitle the applicant or inventor to enforceable legal rights. More is required to secure enforceable exclusive rights in an invention. Filing a patent application is just the first step in that process. Importantly, applications generally have to undergo an official examination to assess patentability. The applied-for invention may or may not be patentable.
Pending patent applications are normally (but not always) published after approximately 18 months. This means that there are publicly-available “patent application publications” or “published patent applications”. But these still only pertain to a (pending) patent application as opposed to a (granted) patent. A patent application publication, alone, is not enforceable.
There is really nothing final about a patent application when it comes to rights in an invention. Whether published or unpublished, the existence of a patent application really only means that someone currently is or was in the past pursuing patent protection. A good analogy is somebody filing a complaint to a commence a lawsuit: they hope to win, eventually, but merely initiating the lawsuit is not the same as a final judgement on the merits. There can be changes to a patent application while it is pending. So the published version of a given application may not fully reflect its current contents. And patent applications can be abandoned entirely.
Granted Patents
A patent is granted (or issued) by a government as a “public franchise” and gives the owner(s) exclusive rights to an invention. The scope of the enforceable legal rights are defined by the claim(s) of the patent. A patent is also enforceable only in a given jurisdiction. There is no such thing as an international patent enforceable throughout the world. So obtaining exclusive legal rights in multiple countries usually requires obtaining patents in each of those individual countries—though a few regionally-enforceable patents exist outside the USA. In the U.S., a granted patent is presumed valid because it has undergone pre-grant examination to assess patentability. Though even granted patents can still be challenged.
Every patent starts out as a patent application. And there may be multiple patent applications related to a given patent. But, on the other hand, any given patent application might or might not turn into a granted patent. A patent office may reject the patent application because the claimed invention is unpatentable, for instance. Or an applicant may simply abandon an application before a patent is granted for a variety of reasons.
Patent Families
Patents and patent applications that are formally related to each other are often referred to as a patent “family”. This includes reference to “parent” and “child” patents and applications.
Types of Patents
There are three types of patents available in the United States for different types of inventions:
Utility
Design
Plant
Utility patents are directed to useful inventions. If someone refers merely to a “patent”, chances are they mean a utility patent. Most U.S. patents are utility patents. In other countries these may have a slightly different name, like invention patents in the People’s Republic of China.
Design patents are directed to inventive ornamental designs of useful articles. They do not cover functional features or designs in the abstract—unconnected to an article of manufacture. In some other countries, designs are not covered under patent laws but instead as either “industrial designs” that are a unique type of protection or something closer to trademark (trade dress) protection.
Plant patents cover inventive asexually reproduced plants. Some inventions related to plants can be protected by utility patents, which is to say that a plant patent is not the only possible type of patent protection available for plant-related inventions.
The types of available patents are not the same around the world. In some countries, utility models or petty patents are available. But those types of patents do not exist in the USA.
Types of Patent Applications
There are a number of different types of patent applications in the USA:
Provisional
Nonprovisional
Continuing Applications:
Divisional
Continuation
Continuation-in-Part (CIP)
PCT International Application (and associated National Phase Entry)
Hague International Design Application
Reissue
Provisional applications are not examined but can be relied upon by a later-filed non-provisional application claiming “priority” to the provisional. They serve as a kind of temporary placeholder to preserve rights to file a nonprovisional application within a year. Provisional applications are available only for utility and plant inventions. They are not available for design inventions. The U.S. and a few other countries permit provisional applications but most countries do not.
A nonprovisional application is essentially just a regular patent application. It can be an application for a utility, design, or plant invention. Nonprovisional applications in the U.S. undergo substantive examination and can potentially result in a granted patent.
Continuing applications are special types of nonprovisional applications that claim priority to an earlier, co-pending domestic U.S. nonprovisional application or PCT international application designating the U.S. But an application with a priority claim to a prior foreign application or U.S. provisional application is not considered a continuing application. What is called a “divisional” application in many other countries might be called either a “continuation” or “divisional” application in the U.S.
The PCT system, which is administered by a United Nations agency (WIPO), provides a sort of application clearinghouse to facilitate the pursuit of patent protection in various participating countries. But the PCT system still requires action in individual countries or regions. At the start, a (single) PCT international application that designates selected participating countries (usually all participating countries) is filed in a “receiving office”. The international application can then later enter the national phase (or regional phase) in one or more designated countries or regions. A PCT national (or regional) phase entry is actually not separate from the PCT international application but merely represents a different (national/regional) phase in the life of the same international application.
Hague international design applications are roughly the equivalent of a PCT application but for design inventions.
Reissue applications are applications to correct an error in an issued patent. In other words, reissues only arise after a patent has already been granted. Broadening reissues, which enlarge the scope of the claim(s), must be filed within two years of grant of the underlying patent. Other (non-broadening) reissue applications are not subject to the two-year filing deadline. Grant of a reissue results in surrender of the original patent.
Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.
Businesses usually assign primary responsibility for patents and patenting of the company’s new inventions to a particular person or department. But who should have that responsibility? There is really no right or wrong answer. Different companies handle this differently. Though there are some things to consider that may suggest the best way to assign responsibility for patents.
If a company is active enough with patents, it may have a dedicated intellectual property (IP) department or group with in-house patent attorneys taking primary responsibility. However, the question dealt with here is really how to assign responsibility for patents in the absence of dedicated in-house IP staff.
There is a Range of Possibilities
First off, let us take a brief look at the possibilities. Responsibility for patents could be given to any of the following departments that exist in many companies:
Engineering/Research & Development (R&D)
Legal (including an IP group within legal)
Finance/Accounting
Sales & Marketing
Responsibility can also be assigned to individual people in a company, often an executive, officer, or in-house counsel. These people might be the heads of the departments listed above. In smaller businesses, we could add to that list the CEO, president, general manager, or a member-owner of a limited liability company (LLC).
Assigning primary responsibility does not mean other departments are excluded from patent decision-making. And sometimes budgetary allocations for patents might be split between different departments, such as allocating some or all patent-related fees to engineering/R&D’s budget while a legal department maintains responsibility for overseeing day-to-day patenting activities. Inter-departmental committees can also be formed.
Key Considerations
The ideal way to look at where primary responsibility for patenting should be placed within a company is to look at what will best achieve the company’s overall objectives and goals. Those will not always be the same. For some companies, filing as many patents as possible is the goal. For others, minimizing overhead and cost-cutting is more important than patents. There are endless possibilities. Though in many situations, the company’s goals will not explicitly address how patents fit into the picture. Figuring out how patents might advance larger company goals is usually part of those very responsibilities. But there are a few recurring issues that may influence who should have primary responsibility for patents.
First, consider typical patent expenses as a proportion of a company’s overall budget, and the anticipated volume of patent activity. In small companies, the cost of seeking even a single patent may be substantial compared to other expenses, whereas in a large multinational company any individual patent has an insignificant impact on a company-wide budget. This tends to affect how (and how much) responsibility is delegated. The volume of patenting is also important. This is both a matter of the cumulative budget needed for patent activities but also the likely workload that supervision of a patent portfolio presents to the responsible person or department.
Intra-company rivalries may influence assignment of patent responsibilities. Different departments may compete against each other for resources and budget allocations. Responsibility for patenting might be seen as a way to exert control over certain budgetary issues. This has the potential to produce dysfunctional situations. One department with responsibility may try to under-utilize patenting in order to effectively (if somewhat surreptitiously) re-allocate budget resources elsewhere. Is that in line with company-wide goals? Consider the possibility and likelihood of this occurring when assigning these responsibilities.
Another important consideration is bandwidth. It makes little sense to assign patent responsibilities to a person or department with no time or capacity. This responsibility shouldn’t be like an unfunded mandate. Inaction due to lack of time is also a recipe for loss of patent rights. And yet, bandwidth concerns should, in theory, be temporary ones. In the long term, other considerations should take precedence. A company should eventually address bandwidth limitations through hiring or other organizational changes to allow the best-situated person or department the time and resources to meaningfully execute the company’s goals around patenting.
Individual temperament can be a significant factor. For example, an individual with a strong anti-patent bias may not be the ideal choice to lead a program intended to obtain the maximum number of patents. More generally, some people may not understand patents or legal issues well. This is often an is/ought problem. Some people act based on how they think the legal system—and patent examination in particular—ought to work, rather than based on how it actually operates. For instance, some engineers struggle with the ambiguities inherent to patent law and legal issues in general, and can get frustrated with legal matters that depart from the sort of scientific and engineering precision they expect elsewhere. As another example, some business people have ideas about legal definitions of what constitutes “prior art” or “obviousness” that are simply contrary to existing law. And on top of all that, some people simply lack the objectivity needed to oversee patent matters effectively.
Having a firewall between supervisors of patent matters and named inventors can be worthwhile. Particularly where bonuses are paid to inventors, conflicts of interest can arise when named inventors oversee their own patent applications. The main issue is that persons supervising patent applications sometimes show more interest in their personal bonuses than company goals. For instance, they may pursue futile or worthless patents or questionably name themself as an inventor simply to personally obtain a patent- or invention disclosure-related bonus. Having a policy in place that prohibits self-supervision of patent matters might be helpful, especially in larger organizations. Though, on the other hand, self-dealing is not always a problem, and in the absence of inventor bonuses this may be a minor concern.
What Is Most Common and Why?
Most commonly, responsibility for patents is assigned to (a) a legal department, (b) an engineering/research & development department, or (c) a patent committee specially formed to handle patent issues. Some combination of these possibilities is also common. In small companies where there are no “departments” as such, having the CEO or other high-level executive take responsibility is typical.
Because patents have a legal character, and often require working with an outside patent attorney specially licensed to practice patent law, it is very common to have an in-house legal department have responsibility. This way you have in-house lawyer(s) talking to outside patent lawyer(s). In-house counsel will understand legal concepts and may already be managing relationships with other outside attorneys. Also, having in-house legal departments involved can help funnel patent-related expenses through existing legal billing and expense tracking systems that the legal department may already be using in other contexts.
Because patents involve inventions with a technical or scientific character, it is also very common to place primary responsibility with an engineering or R&D department. Inventions typically arise out of that department anyway. So it often makes sense to have that department’s personnel closely involved. For similar reasons, engineering/R&D personnel might also have the greatest interest in patents and the technology involved. In this sense they are more likely to see this responsibility as an interesting opportunity rather than an unpleasant chore. Inventors also often take pride in their inventions, so they and their immediate co-workers are usually motivated to see them protected by patents.
Lastly, having some kind of specially-created patent committee involved is another common approach. This committee might have only partial responsibility, such as responsibility for reviewing invention disclosures and determining whether or not to proceed with patenting or to manage patent portfolio maintenance and annuity payments. An advantage of these committees is that they can allow for cross-disciplinary teams that encompass personnel from multiple departments. These committees can be a great way for companies to help keep everyone in alignment. These committees can also help alleviate concerns that an engineering/R&D department will be overly eager to patent everything and anything. Though such committees really only make sense when a company is of a certain size.
Less Common Approaches
Various companies have assigned responsibility for patents to nearly every possible department or person. Not all companies are organized the same, and their resources and ongoing business activities might suggest different approaches. Not every company has an in-house legal department, for instance. Though a common reason for assigning responsibility outside of a legal or engineering/R&D department is simply bandwidth and capacity to take on the responsibility.
Sometimes patents are overseen by finance/accounting. The reasoning sometimes goes that patents are an overhead expense, so finance should keep those in check. Another more subtle reason is that finance often understands revenue sources and therefore might represent a relatively neutral arbiter of what sort of patenting expenses make sense for the business. On the other hand, finance personnel may not grasp the technology involved in patents as well as others, or simply may not have much interest in patents.
Other times marketing or sales oversees patents. This might make sense if a company is heavily involved with trademarks and only occasionally has patentable inventions. Another reason is that some companies see patents as protecting their sales activities—rather than their inventions in the abstract—and so they give sales & marketing say. On the other hand, sales & marketing personnel sometimes have a negative or ambivalent attitude toward patents. That is partly because inventions rarely originate with them. It is just as common, if not more common, for sales & marketing to see patents as taking budget allocations away from their own projects, like advertising campaigns. Lastly, sales & marketing personnel frequently have expectations that are not aligned with actually-existing patents laws. This may take the form of unrealistically expecting a broad legal monopoly without regard for the quid pro quodisclosure of an invention.
The main reason that other departments like finance/accounting, sales & marketing, etc. rarely have responsibility for patenting programs is that these departments tend to be further removed from relevant facts and information. To the extent that there are disputes over who should have a say over patent matters, having a committee that includes personnel from these other departments can be a good compromise that allows for input and shared responsibility without creating awkward disconnects or glaring inefficiencies. For instance, having a committee to approve individual invention disclosures and/or to set high-level patenting goals can be worthwhile when coupled with passing responsibility for day-to-day management of patent applications and granted patents to a specific department or individual.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Novelty and non-obviousness requirements for patentability are assessed based on the contents of the “prior art”. Older patents and publications generally count as prior art. But public uses and on sale activities can count as prior art too. Prior “on sale” and public use activities of others (competitors) generally constitute prior art. Though an inventor’s own activities can potentially be treated as prior art as well. An inventor placing his or her claimed invention on sale prior to filing a patent application may be treated as prior art against that later application, unless a patent filing grace period applies. To account for the 1-year statutory grace period, it is common to say that an “on-sale bar” arises when an invention is commercially exploited by an inventor before a “critical date” that is one year prior to the effective filing date of the relevant claim(s) of the patent application. If an “on-sale bar” applies, it qualifies as prior art under 35 U.S.C. § 102(a)(1) against a given claim, for both novelty and obviousness analyses. Under current U.S. law, the on-sale bar applies to commercial sales activities that happen anywhere in the world—though older (pre-AIA) laws limited it to on-sale activities involving the U.S.
There are some nuances as to what does or does not qualify as placing an invention “on sale”. A two-part test is applied in the U.S. A patent claim is invalid or unpatentable under the on-sale bar if, before the critical date, the invention was both:
the subject of a commercial sale or offer for sale; and
This analysis hinges on how an invention is claimed. Depending on what specific subject matter is claimed in a patent or patent application, and how broadly or narrowly it is claimed, the on-sale bar analysis may lead to different conclusions. Also, the on-sale bar is subject to an experimentation exception when an inventor’s own activities are involved.
On-sale bars differ by jurisdiction. Many other countries have an absolute novelty requirement without a patent filing grace period. And some other countries have no on-sale bar at all, or one that applies only to sales in that particular country. It is important to consider the specific law in each individual country where patent protection is sought if sales activities have already taken place. Commercial exploitation of an invention might bar patenting in some countries but not others, depending on the specific circumstances involved.
Furthermore, it is important to note that the on-sale bar is just one among many potential bars to patentability. Public use or printed publication bars, for instance, might arise out an inventor’s or competitor’s activities occurring prior to filing a patent application.
Purpose
The on-sale bar serves a number of purposes. Principally, it avoids an extension of patent protection beyond the statutory term. Modern patent laws are premised on granting only a limited monopoly in a claimed invention in exchange for disclosure of the invention. If an inventor could commercially exploit or profit from an invention and then much later still seek a patent, the expiration of that patent would effectively be extended beyond the intended duration limits. Also, the public notice function around the exclusive rights granted in patents would be frustrated if patent rights could spring up long after an invention became commercially available. The on-sale bar also protects the public’s right to retain knowledge already in the public domain.
When dealing with an inventor’s own actions, this means an inventor has to make a choice between patenting his or her invention or keeping it secret:
“it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly.”
Inventors are not permitted to have things both ways, or, to have their cake and eat it too. Though, in practical terms, not all inventions lend themselves to secrecy. It may be possible to maintain secrecy over certain manufacturing processes or the identities of certain materials used in a liquid solution—like a proverbial “secret formula”. But it is usually impossible to keep the physical/mechanical configuration of a product secret except by not selling or publicly using it at all. That means patent protection may be the only way to have market exclusivity in certain types of inventions.
U.S. patent laws do, however, provide a one-year grace period for patent filings, unlike many other countries. And an inventor’s own experimental activities are excepted from the on-sale bar. But these are essentially the only exceptions to a general policy requiring that inventors promptly seek patent protection or forfeit rights patent rights by commercializing their inventions.
Another important purpose of the on-sale bar mentioned above is to prevent patents from removing things that are already commercially available from the public domain. While much of the discussion that follows emphasizes inventors’ own activities, which is often the primary question when these issues arise, on-sale bars can apply to commercial activity by anyone. If someone else had already placed something on sale, it usually counts as prior art against a later-filed patent claim (unless the later-filing inventor qualifies for the prior disclosure exception under 35 U.S.C. § 102(b)(1)(B)). It does not matter if the person or entity that previously commercialized something chose not to patent it. The on-sale bar is an independent bar to later patenting that does not depend on someone having previously patented or attempted to patent something.
Sales
Commercial sale of an invention before the critical date gives rise to an on-sale bar. Though a sale for experimental purposes is distinguished from a commercial sale and is excluded from the on-sale bar. A commercial sale normally involves transferring property rights (that is, title to the goods) for consideration that the buyer pays or promises to pay the seller for the thing bought or sold. However, in this context, commercially leasing an inventive product is treated as a commercial sale even though title to the goods is not transferred—this includes standard computer software licenses for software-enabled inventions, for example. Even a single commercial sale can give rise to an on-sale bar. It does not matter whether or not the details of the invention are made available to the public through the sale, or that it was a sale subject to buyer approval (that is, in a “sale on approval” where the buyer could potentially return the goods to the seller). Moreover, using an inventive product while providing commercial services triggers the on-sale bar too.
When an invention is for a method or process, a sale of that inventive method or process before the critical date will give rise to an on-sale bar. For example, if an invention is a method of manufacturing something, selling goods manufactured using that inventive process constitutesa sale. Additionally, selling a product that embodies the essential features of an inventive method of use will constitute an on-sale bar for the claimed method of use. However, whether inventive activity pertains to an invention involving a method, an apparatus, or both, may not be apparent until a patent application is prepared—or possibly not until much later when particular claims are allowed or granted.
Merely licensing or assigning rights to an invention does not constitute a sale. Though a commercial sale of an invention by a licensee before the critical date would give rise to an on-sale bar, because the licensee is considered to stand in the shoes of the patentee, and that would include commercial use of a method of making a product by a licensee.
However, an inventor outsourcing manufacturing to validate the manufacturing process for regulatory approval only and stockpiling the invention only for that inventor do not, without more, constitute a sale where the inventor maintains control of the invention. But commercial agreements between a patentee and its supplier or distributor are not exempt from the on-sale bar, such as where title to the goods passes to the distributor or where the manufacturer/supplier is free to market the product or disclose the process for manufacturing the product to others. Also, method or process inventions cannot be stockpiled, and outsourcing the commercial use of an inventive method/process of making something would generally trigger the on-sale bar.
Commercial Offers for Sale
A commercial offer for sale before the critical date, without a sale actually being completed, also establishes an on-sale bar. The U.S. Supreme Court has described commercial offers for sale as occurring when an invention is first marketed commercially. The offer must be commercial rather than experimental in character, just as with completed sales. Also, as with completed sales, a commercial offer for sale of a method/process invention before the critical date give rise to an on-sale bar, though mere licenses and assignments of rights do not.
However, lower courts have effectively read-in a significant limitation on what constitutes a “commercial offer for sale” based on commercial contract law. “Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale . . . .” Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir. 2001). Lower courts have pointed to general commercial law for these determinations rather than the law of the particular state where the transaction took place, looking to the Uniform Commercial Code (UCC) for guidance. Though the UCC does not define “offer”. So courts have further looked to the Restatement (Second) of Contracts, which says, “An offer is the manifestation of willingness to enter into a bargain, so made as to justify another person in understanding that his assent to that bargain is invited and will conclude it.” (§ 24). The Restatement also says there must be intent to be bound, because “[a] manifestation of willingness to enter into a bargain is not an offer if the person to whom it is addressed knows or has reason to know that the person making it does not intend to conclude a bargain until he has made a further manifestation of assent.” (§ 26). Although no particular language is required to constitute an offer for sale, lower courts have said (citing and extending § 33(3) of the Restatement, which says that leaving proposed term(s) open indicates a non-“offer”) that a communication that fails to include material terms (such as quantities, time of delivery, place of delivery, or product specifications) is not an “offer” in the contract sense. Though a “quote” (sent in response to a request for quotation) has been considered equivalent to a commercial offer for sale when it included essential price, delivery, and payment terms (plus alternative product amounts that reflected multiple distinct offers for sale).
These judicially-created limitations on commercial offers for sale mean that the standard is an ambiguous one based on the involved parties’ subjective intents and understandings, rather than a bright-line one. As long as current lower court interpretations prevail, whether a communication naming a price constitutes a commercial offer for sale or mere preparations for future offers for sale (that alone do not give rise to an on-sale bar) depends upon the facts and circumstances of each particular case. So early sales, marketing, and promotional efforts may or may not trigger the on-sale bar, depending on the circumstances (including whether and how a customer responds to them). A salesperson vaguely discussing the possibility of offering a product in the future without the potential customer actually being able to accept a specific offer on specific terms may not qualify as a “offer for sale” under current lower court case law.
Keep in mind that other types of bars to patentability might apply even if there was no sale or commercial offer for sale. For instance, an advertisement of an invention before the critical date might qualify as a “printed publication” bar instead of (or in addition to) an on-sale bar. And a non-experimental public use of an invention before the critical date would give rise to a public use bar. The on-sale bar is only one among many potential bars to patentability that must be considered.
Secret Sales & Offers for Sale
In the U.S., the on-sale bar still applies to a confidential, private, or otherwise secret commercial sale or offer for sale before the critical date. This means that merely having a non-disclosure agreement (NDA) or other contractual confidentiality terms in place will not avoid triggering an on-sale bar. An NDA might still help establish that a sale or offer for sale was primarily experimental rather than commercial, depending on all the other relevant circumstances. And the existence of an NDA may mean that a given use of an invention does not give rise to a public use bar or that the confidential exchange of documents does not constitute a printed publication bar. Moreover, an NDA may make discovery of prior sales by third parties difficult to identify. But any commercial sale or offer for sale of an invention triggers the on-sale bar, regardless of the public versus confidential/secret nature of such commercial exploitation. While having an NDA in place may have certain advantages for the parties involved, it will not avoid an on-sale bar in the U.S. when there has been non-experimental commercial exploitation.
Applicable law in other countries may be different, however. Indeed, countries that lack a distinct on-sale bar might even allow a later inventor to obtain a patent and enforce it against the prior inventor who did not patent or publicly use the invention (because all use was confidential rather than public).
Experimentation Exception
There is an experimental sale exception to the on-sale bar. A sale or offer for sale that is primarily for experimental purposes, as opposed to commercial exploitation, does not raise an on-sale bar. Though the experimental sale exception applies only if the commercial exploitation is merely incidental to the primary purpose of experimentation to perfect the invention.
Only certain activities are considered experimental, depending on the purpose or intent behind them. A use may be “experimental” only if it is designed to: (1) test claimed features of the invention, or (2) determine whether an invention will work for its intended purpose. This judicial definition of what is experimental applies to both the public use bar and the on-sale bar. But experimental use cannot occur after an invention has actually been “reduced to practice”; once an inventor realizes that the invention as later claimed indeed works for its intended purpose, further alleged “experimentation” may constitute a public use and/or on-sale bar. Similarly, a contract characterizing commercial activities as “equipment testing” will be insufficient to establish experimental use if unnecessary, that is, if the testing could have been performed satisfactorily before or without the sale.
Courts have applied the following factors to determine if a sale constitutes experimentation or commercial exploitation, though not all factors will apply in any given situation:
the necessity for public testing,
the amount of control over the experiment retained by the inventor,
the nature of the invention,
the length of the test period,
whether payment was made,
whether there was a secrecy obligation,
whether records of the experiment were kept,
who conducted the experiment,
the degree of commercial exploitation during testing,
whether the invention reasonably requires evaluation under actual conditions of use,
whether testing was systematically performed,
whether the inventor continually monitored the invention during testing, and
the nature of contacts made with potential customers.
While the experimentation exception to the on-sale bar has long been recognized in the U.S., it is rather difficult for an inventor to qualify for it. Successfully invoking it might even be more rare in the on-sale bar context than in the public use context. So think of it almost like a unicorn defense against invalidity. And when a patent is enforced, any reliance on this experimentation exception by the patentee is certain to be challenged by the accused infringer. Therefore, it may be advisable in many situations to avoid relying on it (other than as a backup plan or “plan B” fallback position). A better strategy is to file a patent application before accepting or seeking any payment for an invention, or at least to file within one year of any payment, request for payment, or any other activities that could potentially be seen as exploiting or seeking to profit from an invention.
All this makes sense if we turn back to the basic purposes of the on-sale bar. The experimentation exception arises because the inventor is not really extending the expiration of patent rights when he or she is not yet certain that the invention is viable or complete. A key reason the experimentation exception against the on-sale bar is so rarely established is that inventors normally don’t try to sell inventions that they know are not yet in working order. When they have sold or offered to sell things, that tends to give rise to an inference that the inventor really did believe the invention was sufficiently workable for the buyer’s purposes (despite after-the-fact inventor denials that often come across as self-serving). If anything, the exception is more likely to apply where the only reasonable experimental testing involves using the invention in connection with commercial services under close supervision—as in the famous case City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878) where the inventor garnered more sympathy than most.
“Ready for Patenting”
An invention is “ready for patenting” when, prior to the critical date, the invention is either: (1) reduced to practice; or (2) depicted in drawings or described in writings of sufficient nature to enable a person of ordinary skill in the art to practice the invention.
Reduction to practice means being embodied in a distinct form, like through construction of a working prototype. Reduction to practice happens when occurs when the inventor/seller had possession of the claimed subject matter and that it was shown or known to work for its intended purpose. For something to qualify as a reduction to practice, it must show that the invention works for its intended purpose beyond a probability of failure but that need not be established beyond a possibility of failure. Importantly, reduction to practice does not require that the invention, when tested, be in a commercially satisfactory stage of development—for utility patents this analysis is from the standpoint of technical feasibility rather than marketability or saleable appearances. It does not, however, require that the seller recognize that his or her on-sale invention possesses specific later-claimed characteristics when there was no question that the invention was useful at the time it was placed on sale.
Whether or not an enabling disclosure has been documented (in the absence of actual reduction to practice) is generally assessed in the same way as for priority claims. In any event, any time there are engineering specifications available that are sufficient for use to manufacture an invention, or to allow a customer to know specifically what is being purchased, the invention will usually be considered ready for patenting.
Difficult questions arise when advance development agreements or pre-availability contracts are involved. In some situations, a contract may be signed for a seller to deliver to a customer at a later date something not yet invented. In other words, the customer understands that goods meeting certain requirements do not yet exist but believes that the seller will be able to devise one or more inventions that will make delivery of suitable goods possible in the future. This is a situation where the customer does not know upfront exactly how those goods will be configured. But certain general requirements, goals, or objectives that the goods be better, faster, lighter, etc. would likely be set forth in such an advance contract. When does the on-sale bar arise in these situations? The answer is it depends when the invention was conceived subsequent to the signing of the contract. For purposes of the on-sale bar, it is initially viewed as an open offer to sell an idea for a product (or service) that is converted into a “commercial offer for sale” at whatever time the relevant invention is later conceived:
“[A]n invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.”
When, exactly, conception happens may very well be disputed. But once there are drawings that might enable the invention to be made and used, or it is actually reduced to practice (even if the inventive aspect is not yet appreciated or recognized), an on-sale bar can arise.
Joint research & development agreements potentially raise further limits on application of the on-sale bar where they do not bear commercial fruit and are cloaked in confidentiality. That is to say that research & development activities, even where conducted jointly, may pertain only to the process of invention or related experimentation rather than to commercial activities. But, as always, this will depend on the specific circumstances involved, including what the applicable contract(s) say. There is not always a bright line separating research & development and on-sale activities when joint efforts are involved.
Anytime there is already a contract or commercial proposal of an idea for a product (or process), the inventor must diligently pursue a patent filing after something inventive is actually conceived to ensure that filing occurs within the one-year U.S. grace period. Though keep in mind that the ways these issues are treated in other countries may differ.
Best Practices and Words of Caution
Assessments of potential on-sale bars must be approached with caution. The treatment of potential on-sale bar activities is governed by somewhat subjective and imprecise standards in the USA. The consequences of incorrectly relying on an experimental sale exception to the on-sale bar can be severe for both the patentee and the patentee’s legal counsel. For instance, if a court later rejects an inventor’s determination that a pre-critical date sale was experimental, an entire patent might be found unenforceable in addition to specific claims being found invalid—if information about the on-sale bar was withheld from the USPTO with deceptive intent (which can be inferred). Moreover, because on-sale bar activities apply to obviousness analyses too, commercialization of an earlier version of a product or process before the critical date potentially be relevant to the obviousness of a later-developed variation or improvement.
The best strategy to avoid an on-sale bar worldwide is to file a patent application before any activities that could potentially be seen (in the light least favorable to the patentee) as exploiting or attempting to profit from an invention, or, at least in the USA, to file within one year of any such activities. But if there has already potentiallybeen definite commercial sales activity before the critical date, or anything that might potentially be viewed as the commercial exploitation of an invention before the critical date, consider explicitly disclosing it to the USPTO in order to satisfy the duty of disclosure. This is because court rulings about experimental sales will happen only many years later and may be driven by sympathies and impressions given by witnesses at least as much as the “cold” factual record. And there are risks of self-serving biases when inventors make these determinations themselves.
In order to make a legal determination about whether or not an on-sale bar applies, there must first be a sufficient investigation of the relevant facts. It would be nice if the legal standards for on-sale bars allowed for a straightforward and uncomplicated assessment. But the reality is that these are complicated, nuanced legal determinations that depend on a variety of specific facts that will differ from one situation to the next. If important relevant facts are unknown, overlooked, or even concealed, then it may be impossible to reliably determine whether an on-sale bar applies in a given situation. So, beyond the lack of bright-line legal standards as to certain aspects, the dependency of these legal analyses on underlying fact gathering is yet another reason caution is merited.
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.
Obtaining rights in an invention requires affirmatively filing a patent application. There is a limited one-year grace period in the U.S. to file a patent application after the invention has been disclosed or commercialized before patent rights are lost. In the context of an inventor’s own prior activities, the term “critical date” refers to the beginning of the grace period one year before the “effective filing date” of a claimed invention. Understanding this grace period is important in order to know when patenting becomes barred, or may have already been barred, due to an inventor’s own prior actions.
The U.S. patent laws generally bar patenting if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or if “the claimed invention was described in a patent . . . or in an application for patent published or deemed published . . . [that] names another inventor and was effectively filed before the effective filing date of the claimed invention.” (35 U.S.C. § 102(a)). In other words, disclosures and commercial exploitation of an invention prior to the critical date qualify as “prior art” that can be held against a later-filed patent or patent application. Such prior art is used to evaluate the patentability (or validity) of a claimed invention.
Illustration of Timeline for U.S. Patent Filing Grace Period
However, there is a one-year grace period for filing a patent application following a disclosure or commercialization of the invention by an inventor (or someone who obtained that subject matter from an inventor). This grace period is formally stated as follows:
(b) Exceptions.-
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor
***
(2) Disclosures appearing in applications and patents.-A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
*** or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. [see also § 102(c) regarding inventions under joint research agreements that may satisfy this provision]
So if an inventor has publicly disclosed an invention or placed it on sale, the clock has begun on the one-year deadline to file a patent application. Under current U.S. law, disclosures and on-sale activities happening anywhere in the world trigger the grace period filing deadline. But disclosure of an invention more than one year earlier represents a complete bar to patentability. The grace period is not extendable.
This 1-year grace period is somewhat unique to U.S. patent law. Most other countries have what is called an absolute novelty requirement. That means a patent application must be filed before there is any disclosure of the invention. Though the specific things that do or do not count as a prior disclosure vary somewhat by country (for instance, sometimes the country in which the disclosure was made matters, and sometimes secret sales are not considered public disclosures). What this means is that even though the U.S. has a patent filing grace period, the applicant needs to consider the most restrictive patenting requirements among all relevant jurisdictions. If it is desired to pursue foreign patent protection, or even just to preserve the possibility of foreign filings, then it is important to file a patent application before any disclosure or sales activity to ensure that patent rights are preserved for all foreign countries.
Another aspect of this grace period is the exception set forth in 35 U.S.C. § 102(b)(1)(B), which says a disclosure by another falling within the grace period does not qualify as prior art (under § 102(a)(1)) if “the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” In other words, a disclosure by someone other than the applicant (occurring one year or less before the effective filing date) can potentially be defeated and removed from the realm of “prior art” if the inventor had previously publicly disclosed the claimed invention (one year or less before the effective filing date). So, in very limited situations, a prior public disclosure within the statutory grace period can also potentially aid a patent applicant against competitors trying to patent or commercialize the invention.
In general, the initial filing of a patent application to preserve U.S. patent rights and stop the clock on the 1-year grace period encompasses both U.S. and foreign applications. The “effective filing date” (as defined in 35 U.S.C. § 100(i)) is the earlier of the filing date of a given U.S. patent application or, if there is a qualifying foreign priority or domestic benefit claim to earlier application(s), the filing date of such an earlier U.S., PCT international, or foreign application that disclosed the claimed invention. Where this can become complicated is that there may be multiple prior applications but the effective filing date is assessed on a claim-by-claim basis. The effective filing date is not necessarily the earliest prior application if the relevant “claimed invention” (as defined in 35 U.S.C. § 100(j)) was not yet disclosed in it.
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.
A question that comes up frequently is whether functional language is permitted in patent claims. Sometimes this is called functional claiming. This has long been a fundamental yet unresolved issue in patent law. In general, functional language is permitted in U.S. patents and patent applications. But that does not mean it is always acceptable. The acceptability of functional claim language depends on where and how the functional language is used in a given claim and also on how the functional claim language relates to what was actually invented (and disclosed). These questions are often about whether the applicant/patentee’s intentions behind the particular use of functional claim language are proper or not.
To be clear, functional claiming generally refers to describing something by what it does rather than what it is (structurally). Method claims naturally use functional language. The focus here is on functional language in apparatus claims.
The first question to ask is whether the functional claim language is used to recite the point of novelty—the limitation(s) that purportedly distinguish the claimed invention from the prior art. If not, the use of functional language is much more likely to be acceptable and free from dispute. For instance, using functional language in a claim preamble to highlight intended use (possibly in a non-limiting way) is generally acceptable. Though functional recitations appearing anywhere in a claim could still raise concerns. But the situation is most critical when the functional claim language appears right where the claim purports to recite the point of novelty. Suspicions are often raised when a claim includes many structural recitations related to what was already known in the art but then conveniently switches to functional language when setting forth the point of novelty.
When the functional claim language appears at the point of novelty, further analysis is merited. Some other questions should be asked. Is the functional language an attempt to draft a preemptive claim that covers all possible solutions to a technical problem? Or is the functional language an attempt to claim an entire genus of possible solutions? Those are questions about overbreadth in light of the quid pro quo policy underlying modern patent law. This is a matter of preventing an improper extension of a patent’s scope beyond what was actually invented. Also, does the use of functional render the scope of the claim indefinite? This tends to be a concern about whether the functional language makes the claim’s scope unclear by obfuscating what is or is not encompassed. It also reflects concerns about attempts to circumvent the required “peripheral” claim format and instead utilize “central” claiming; that is, attempting to recite merely a vague central inventive concept without informing those of ordinary skill in the art about the scope (outermost boundaries) of the claimed invention with reasonable certainty.
With regard to questions of claim breadth, functional language must be assessed based upon its meaning within the claim as a whole and in light of the entire disclosure of what was actually invented. This inquiry involves looking at the particular functional claim language in context to see if it is purely functional language or only partially functional language that is limited by associated structural recitations or by the invocation of means-plus-function format (“means for . . . [a recited function]”) specifically authorized by statute (35 U.S.C. § 112(f)).
For example, consider the claim, “An assembly comprising part A, part B, and a connection between part A and part B, wherein the connection is configured to rigidly fix a base portion of part A to an end of part B.” Such a claim seems acceptable even though the “configured to” language is followed by “rigidly fix” language that might be seen as functional if viewed in isolation. In other words, this example uses partly but not wholly functional claim language. The functional recitations are limited by further structural recitations of part A, part B, and a connection.
On the other hand, consider the claim to an improved widget that recites, “A widget configured to achieve good result X.” Such a claim is not structural but instead uses results-based and purely functional language at the point of novelty to try to claim all solutions to a problem. This latter claim is preemptive of all possible solutions that “achieve good result X”, even those that have not yet been invented. Claims directed merely to a desired result have long been considered objectionable primarily because they cover any means which anyone may ever discover of producing the stated result.
Also, it is possible to add structural recitations such that the functional language is only partially functional. We can continue here from the last example. Consider an amended claim that recites “A widget configured to achieve good result X, comprising:” as merely the claim preamble, and then proceeds to recite the structure that achieves the “good result X” in the body of the claim, such as “substrate Y; and a coating Z applied to the substrate Y, wherein the coating Z comprises a thermally insulating material containing at least 5% yttria by weight.” That claim would not be purely function because of the functional language in the preamble—we can just assume here that “good result X” has something to do with high temperature operation. In this case, the additional structural recitations in the body of the claim would explain what the invention is (in structural terms) rather than stopping with merely a statement of the result it achieves.
There may also be situations where functional-looking language really has a structural meaning (to a person of ordinary skill in the art). For instance, the portmanteau term “screwdriver”—derived from the German word schraubenzieher (screwpuller) and/or the French word tournevis (turnscrew) from the middle ages—could be seen as functional. But, today, anyone would recognize the word “screwdriver” as referring to a generic name for a kind of tool, in a structural way. If we imagine that a patent claim using the term “screwdriver” was presented in the early middle ages, before there was an accepted structural meaning for that term, such medieval usage could raise concerns about its breadth in relation to what was really invented—would it have also covered a pair of pliers that might be used to grip a screw in order to “drive” it, or a hammer? This example in medieval times would look like purely functional claiming of merely a desired result—driving a screw. Whereas, today, usage of “screwdriver” would be an unremarkable structural reference to a genus of tools (having a tip that can can engage one of the many different types of screw drives, but excluding pliers and hammers).
A patent claim that uses functional language to refer to an entire genus may (or may not) be acceptable. Genus/species issues are also among the most fundamental in patent law. The philosophical idea behind reference to an entire genus is that it encompasses an unknown or unstated species. For a patentee, this is usually the intent! Patentees often want to get the broadest possible monopoly rights, including blocking rights over later inventions. But a key component of modern patent law is that patents should be limited to what the patentee actually invented. So, very often, questions about the use of functional claim language are about the reasonableness of claim scope that goes beyond what was actually invented—or at least what was actually disclosed in a patent application. These questions often turn on the breadth of the disclosure of an invention and whether that disclosure is robust enough to support a claim covering an entire genus or not. Functional claim language is frequently used to recite something like a genus or class rather than merely one or more particular species. A recitation encompassing multiple species may or may not be improper. It is a matter of degree and context.
With regard to enablement requirements, “If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable.” And this is directly tied to the breadth of monopoly the applicant or patentee demands, and whether, commensurate with that demand for a monopoly, the inventor’s disclosure identifies a quality common to every functional embodiment. This means that the acceptability of functional language that effectively claims an entire genus or class rests not only on the claim language but also on the entirety of the disclosure and the level of predictability in the relevant technological field or art.
For instance, these issues often do not turn merely on whether a given claim uses “configured to” vs. “adapted to” vs. “operable to” language (or the like). Though patent attorneys and judges sometimes try to reduce the larger and more fundamental questions to such superficial formalities—sometimes as a matter of “university discourse” (i.e., making highly ideological policy arguments through the guise of seemingly neutral and objective technical rationales).
With regard to definiteness or clarity concerns, partially functional language is frequently acceptable and might sometimes be more clear and definite than certain alternative types of claim limitations (like a negative limitation). For instance, with a mechanical invention, partially functional claim language used to recite the way certain enumerated structures are connected and moveable—or not movable—relative to each other may be perfectly clear and uncontroversial. But when purely functional claim language is substituted for structural language such that the (purely) functional language entirely displaces structural language, as a way to consciously avoid limiting the scope of the claim to particular structures, then it might not be acceptable. This is more like the “good result X” or medieval “screwdriver” examples given above. It is the broadness, ambiguity, and overhanging threat of purely functional claiming that is problematic. The public cannot tell what does or does not fall within the scope of the purely functional language.
Another legal issue around functional claim language under U.S. patent law is the use of means-plus-function format (under 35 U.S.C. § 112(f) or pre-AIA § 112, ¶ 6)—also called step-plus-function format for method/process claims. An applicant can invoke means-plus-function claim format to utilize functional language in the claim, in which case the claim language is construed to cover the corresponding structures, materials, or acts described in the specification and equivalents thereof. A catch is that the specification (including the figures) must provide an adequate disclosure of structure corresponding to the means-plus-function claim language. Means-plus-function format can sometimes be useful to recite known (prior art) elements but with recitations at the point of novelty it is often considered a narrow and less desirable claim format. That is because an equivalent structure for means-plus-function purposes must have been available at the time of the issuance of the claim, but does not extend to after-arising technology developed after the issuance of the patent (except under the the Doctrine of Equivalents, if it applies).
There have been many, many cases that deal with functional claiming. However, U.S. courts have not not definitely and conclusively resolved these issues. That is not really surprising because patent applicants have numerous incentives to try to obtain monopoly rights over more than what they invent.
In the USPTO’s Board of Patent Appeals and Interferences’ (BPAI) precedential case Ex parte Miyazaki (which now seems to stand in conflict with Federal Circuit cases, at least in major part), it was explained that “when [a] limitation encompasses any and all structures or acts for performing a recited function, including those which were not what the applicant had invented, the disclosure fails to provide a scope of enablement commensurate with the scope of the claim . . . .” Such purely functional claim language is unpatentable unless the applicant has given the public notice that the limiting conditions of 35 U.S.C. § 112, sixth paragraph (now § 112(f)) are being invoked. Therefore, according to Miyazaki, purely functional claim language is unpatentable when it is “unlimited either by (1) the application of 35 U.S.C. § 112[(f)], or (2) the additional recitation of structure.” (emphasis in original).
Where this has been complicated is that the Federal Circuit has (controversially) held that purely functional language that does not use “means for” to explicitly invoke § 112(f) might still be interpreted as means-plus-function language. This stands in contrast to the more convincingly-argued BPAI Miyazaki decision regarding the need for notice to the public regarding invocation of § 112(f) limitations. The Federal Circuit is trying to save applicants from themselves (and potentially from the invalidity or unpatentability of the purely functional claims they chose to pursue) at the expense of the general public’s entitlement to clarity and predictability regarding the scope and validity of patent claims. This is also another example of Federal Circuit hostility to Supreme Court precedent regarding breadth- or preemption-related invalidity issues other than for sliding-scale enablement requirements.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
At the beginning of 2022, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.
Patents
“DOCX” filing format deadline extended
The deadline for the implementation of a surcharge for non-DOCX patent application filings has been extended until January 1, 2023. In recent years, most U.S. patent applications have been filed electronically in PDF format. DOCX-format filings are currently possible but non-DOCX PDF-format filings are still permitted without any surcharge. The non-DOCX surcharge will eventually be $400/$200/$100 for large/small/micro entities. Note that the non-DOCX surcharge will not apply to PCT national phase entries into the USA. The applicability of the non-DOCX surcharge to U.S. applications filed in a language other than English is still rather unclear (it is not clear if a DOCX copy of only the English translation, only the non-English original, or both the original and translation is required to avoid the surcharge).
In general, the greatest concerns about DOCX format have to do with rendering of complex application content, such as embedded mathematical equations created with a word processing program’s equation editing functionality, which may not render as the applicant intended at the USPTO side. The official reason given for the implementation delay is to “provide the public an opportunity to more fully comprehend the nature of, and prepare to comply with, the DOCX format[.]” But while the DOCX format is an administrative convenience for the USPTO, its mandated use is a more of a burden than a benefit for applicants. The need for applicants and their counsel to review and correct potential USPTO-side DOCX rendering errors (which may occur more frequently than with certain PDF-format filings) may make PDF-format filing and payment of the non-DOCX surcharge preferable in some situations. Though for applications containing only simple text, without complex or unusual formatting or embedded equations (other than equations inserted as images), DOCX-format filing should not pose any major problems.
Digital-only patents
Starting sometime in 2022, the USPTO will cease issuing paper patents and will issue digital patents instead. However, paper “presentation copies” (also called ribbon copies) of patents (on heavy paper with an embossed gold seal and the USPTO Director’s signature) will still be available upon request for a $25 (US) official fee per copy. The USPTO says that digital patent issuance will speed up the process of issuance after payment of the issue fee, with a target of one week to issuance. This will shorten the time available to file a divisional or continuation patent application, which must be filed no later than the day of issuance of the parent patent. Though it has always been—and will remain—a recommended best practice to file any desired divisional/continuation application no later than the date of issue fee payment.
Bilateral exchange of certified priority documents with EPO ending
The USPTO’s bilateral electronic priority document exchange (PDX) program with the European Patent Office (EPO) is ending. For any U.S. applications filed on or after January 01, 2022 with a priority claim to an earlier EP application, a WIPO Digital Access Service (DAS) code will need to be provided in order to electronically retrieve a certified copy through PDX. This will require registering the EP application with the WIPO DAS exchange. This change will not affect PCT national phase entries into the USA where the EP priority document is made available under PCT Rule 17.
Starting December 1, 2022, the time to respond to trademark office actions (under 37 C.F.R. § 2.62(a)) will be shortened to three (3) months. A single three-month extension of time to respond can be requested, which will carry an official fee of $125 (US). The extension must be affirmatively requested within the original three-month period. However, the shortened response periods will not apply to Madrid extensions to the USA. For refusals in Madrid extension cases (§66), the applicant will still have a full six-month response period available without paying any extension fees.
Digital-only registration certificates
Starting in spring 2022 the USPTO will cease issuing paper trademark registration certificates and will issue digital certificates instead. [UPDATE: the USPTO began issuing only electronic registration certificates on May 24, 2022.] However, paper “presentation copy” trademark registration certificates (on heavy paper with an embossed gold foil seal, the name(s) of the owner(s), the mark, bibliographic data, and the classes of goods and/or services) will still be available upon request for a $25 (US) official fee per copy. Registrants who filed an initial trademark application before the implementation date (a date that is not yet fixed) will be able to order presentation copies with no official fee. Additionally, certified copies of U.S. trademark registration certificates with current title and status information are also available with payment of an official fee, currently $30 (US).
Filer Identify Verification
[UPDATE: the USPTO has postponed the deadline for filer identity verification to August 6, 2022.] By April 9, 2022, persons filing trademark applications, responses, and the like must complete identity verification in order to electronically file with the USPTO. These identity verification procedures will be available starting January 8, 2022.
New expungement and reexamination proceedings
Two new proceedings are available for an existing trademark registration to be challenged. Both of these new proceedings are conducted on an ex parte basis. That is, a challenger files a petition to request expungement or reexamination and, if granted, the rest of the proceeding is conducted only between the USPTO and the registrant in a manner similar to original examination. Unlike traditional cancellation (or opposition) proceedings, after institution of an expungement or reexamination proceeding, the challenger cannot substantively participate. Summaries of the two new proceedings follow, but more details about applicable procedures can be found in the USPTO Examination Guide 1-21. In addition to the two new types of proceedings, expungement is also available as a new ground for a traditional cancellation proceeding after three years of registration (15 U.S.C. § 1064(6)).
Expungement proceedings:Any party may request cancellation of some or all of the goods or services in a registration because the registrant never used the mark in commerce with those goods or services. The official filing fee for an expungement proceeding is currently $400 (US) per class. An expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, there is currently an extended expungement filing period. Until December 27, 2023, expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit. In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023. Expungement proceedings are available for all registrations but will be especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required to initially obtain a U.S. registration.
Reexamination proceeding: Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before either (1) the application filing date (when the underlying application was initially filed based on use of the trademark in commerce under §1(a)) or (2) the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired (when the underlying application was filed with an intent-to-use basis under §1(b)). Reexamination proceedings are available for registrations under 15 U.S.C. §1051 (§1) but are not available for marks registered under the Paris Convention (§44) or the Madrid protocol (§66). The official filing fee for a reexamination proceeding is currently $400 (US) per class. Reexamination must be requested within the first five (5) years after registration.
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.
