Tag: Patent Prosecution

How Can I Determine Large, Small, or Micro Entity Status for Patent Fees?

Post author By Austen Zuege

Official fees for U.S. patent applications depend on the size of the applicant(s), plus that of any licensees, affiliates, or other associated parties. There are different fee rates applied to large, small, and micro entities. What follows is an explanation of how to determine if large, small, or micro entity fees apply.

Large Entity (Undiscounted) Status

By default, all applicants are subject to large entity official fees. Large entity fees are also called undiscounted fees. A for-profit business having more than 500 employees (including employees of affiliates) is a large entity. But, really, the best way to look at undiscounted or large entity status is to say that it applies whenever any applicant does not qualify for reduced fees as a small or micro entity.

If there are multiple applicants, undiscounted (large entity) fees must be paid if any of them fail to qualify for reduced fees as a small or micro entity.

Also, an applicant is required to pay undiscounted (large entity) fees if sufficiently connected with a large entity, such as through an affiliation, assignment, obligation to assign, licensing agreement, joint ownership, or shop rights.

Small Entity Status

Qualifying as a small entity allows for discounted official fees. Small entity fees are generally forty percent (40%) or two-fifths of large entity fees. Though not all fees or surcharges are eligible for a small entity discount.

To qua li fy for small entity status, the applicant(s) must each be a person, small business concern (having no more than 500 employees, including those of affiliates), or nonprofit organization (including non-profit universities and certain non-profit scientific or educational organizations). But an applicant is required to pay undiscounted (large entity) fees if associated with an entity that does not qualify as a small entity, such as through an affiliation (a potentially confusing circumstance explained further below), assignment, obligation to assign, licensing agreement (subject to certain exceptions discussed below), joint ownership, or shop rights.

In general, entities are affiliates when one has the power to control the other or a third party has power to control both. However, affiliation under that standard is assessed based on the totality of the circumstances. For instance, an affiliation with a single shareholder (or a group of shareholders) holding less than 50% of the voting stock can be present if that minority block of stock is large compared to other outstanding blocks of voting stock and provides “negative control” through veto power over an important aspect of the business concern. Accordingly, an affiliation with a venture capital firm or the like having sufficient control over a portfolio of multiple companies can mean that employees of all affiliate companies in that portfolio are aggregated together when assessing the 500-employee limit. As another example, an affiliation can be established when one firm relies on a second firm (including a customer) for 70% or more of its revenue in a longstanding relationship, due to economic dependence, meaning the employees of the second firm are counted against the total of the first firm. Contractual relationships short of ownership are also considered.

There are certain exceptions to the types of licenses that result in loss of small entity status. Firstly, a license or similar transfer of rights in the invention is only relevant if it involves a U.S. application or patent. A license involving only a related foreign application or patent would not affect U.S. small entity size status, for instance. Moreover, implied licenses to use and resell patented articles purchased from a small entity will not preclude the proper claiming of small entity status. Also, a use license to the U.S. Federal Government does not result in loss of small entity status.

A security interest (such as using a patent or application as collateral for a loan) does not result in loss of small entity status unless there is a default that triggers the security interest. An inventor or applicant retaining a firm to build a prototype of an invention for the applicant’s own use is not considered to constitute a license for purposes of the small entity definition.

Small entity status requires claiming that status, such as on an Application Data Sheet (ADS). However, there is no further certification or supporting evidence required.

If small entity status is lost, the applicant must submit a notification of a loss of entitlement to small entity status. However, once small entity status has been established, fees can continue to be paid at the small entity rate without regard to the change in status until the issue fee is due or any maintenance fee is due. In other words, an established small entity fee status remains in effect during ongoing examination of an application and discounted small entity fee rates are only formally lost at the time of issue fee payment (after allowance) or when the next patent maintenance fee is due.

Any attempt to intentionally establish inaccurate status as a small entity, or pay fees as a small entity, is considered fraud on the USPTO. Such fraud can make a resultant patent unenforceable. Also, the USPTO can assess a fine—even after a patent has issued—of no less than three (3) times the amount that was unpaid due to a false certification of small entity status.

It may be possible to correct errors related to payments at the small entity rate. If small entity status is established and small entity fees are paid in good faith, and it is later discovered that small entity status was established in error or through error the USPTO was not notified of a loss of small entity status, the error will be excused upon compliance with separate submission and itemization requirements plus a fee deficiency payment. The deficiency amount owed is calculated using rates in effect on the date upon which the deficiency is paid, not the fee rates at the time of the original (but deficient) payment. There is no time limit for such corrections.

A refund is possible, for fees timely paid in full (that is, at the undiscounted large entity rate) prior to establishing small entity status. However, such refund requests must be made within three months of the date of the timely payment of the full fee. Yet the costs and burdens associated with requesting such refunds may exceed the value of the refund in many cases.

Micro Entity Status

There are two possible bases for micro entity status: gross income basis and institution of higher education basis. The requirements for each are rather confusing. Micro entity compliance requirements are also more burdensome than for small entity status. Micro entity fees are generally half (50%) of small entity fees and a fifth (20%) of large entity fees. Though not every official fee/surcharge is eligible for a micro entity discount.

Micro Entity---Gross Income Basis Certification Form PTO/SB/15A — Micro Entity—Gross Income Basis Certification Form PTO/SB/15A

To qualify for micro entity status—gross income basis, the applicant(s) must each certify the following:

(i) the applicant qualifies as a small entity
(ii) no applicant or inventor has been named as an inventor on more than four previously filed U.S. non-provisional patent applications (including PCT applications designating the U.S.)
(iii) no applicant or inventor had a gross income in the previous year of more than the “Maximum Qualifying Gross Income,” which is three times the median household income (as of September 10, 2024 that was $241,830 (USD) but that amount changes yearly), and
(iv) no applicant or inventor has assigned, granted, or conveyed, or is under an obligation to assign, grant, or convey, a license or other ownership interest to another entity that does not meet the “Maximum Qualifying Gross Income” limit.

For the previously filed application limit, applications resulting from prior employment are not counted against the total. So an applicant/inventor is not considered to be named on a previously-filed application for micro entity status purposes if he or she has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of his or her previous employment—this exception does not apply to prior applications as part of current employment, however. Also excluded from the total are any PCT applications for which the basic national phase entry fee to enter the U.S. was not paid. Lastly, USPTO guidelines say that the filing of a future application will not jeopardize entitlement to micro entity status in any of the (up to five) applications already filed.

Income in a foreign currency must be converted to U.S. dollars using Internal Revenue Service (IRS) exchange rates.

To qualify for micro entity status—institution of higher education basis, the applicant(s) must each qualify as a small entity and certify micro-entity status. But there are two possibilities. Each micro entity applicant (that qualifies as a small entity) must either:

(A) obtain the majority of their income from a United States institution of higher education; or
(B) have assigned, granted, or conveyed, or be under an obligation by contract or law to assign, grant, or convey an ownership interest in the application to such a United States institution of higher education.

Micro Entity---Institution of Higher Education Basis Certification Form PTO/SB/15B — Micro Entity—Institution of Higher Education Basis Certification Form PTO/SB/15B

Importantly, the institution of higher education basis for micro entity status also requires that the inventor(s) be the applicant(s), not the university.

Both possibilities for micro entity status require that all applicant(s) qualify as a small entity. Small entity status might be lost if there is a license granted to a large entity, for example. However, the micro entity requirements do not exclude licenses for U.S. Federal Government use, meaning that an exception allowing certain applicants to qualify for small entity status does not apply for micro entity status. Also, the micro entity regulations do not explicitly refer to security interests, making it unclear if they are treated the same as for small entity status.

All applicants must still be entitled to micro entity status to pay a fee in the micro entity amount at the time of any official payments. Written certification is required to initially establish micro entity status. But more is required after establishing that status. It is further necessary to determine whether the requirements for micro entity status exist at the time each fee payment is made. Also, if the prosecution of an application under the gross income basis status extends across multiple calendar years, each applicant, inventor, and joint inventor must verify that the gross income limit for the requisite calendar year is met to maintain eligibility for the micro entity—gross income basis discount. And under the institution of higher education basis, each applicant, inventor, and joint inventor potentially must verify that a majority of his or her income comes from a U.S. institution of higher education. These requirements make micro entity status compliance more onerous than for small entity status. Unlike with small entity status, micro entity status can be lost during ongoing examination of an application.

Whenever micro entity status is lost, it is necessary to file a formal notification of loss of entitlement to micro entity status. As explained above, loss of micro entity status can potentially occur at any time. So a notification of loss of micro entity status can generally not be deferred and must be filed promptly (and before any official payments) when an applicant or inventor’s status changes. Small entity status may or may not still be available if micro entity status is lost.

Any attempt to intentionally establish incorrect status as a micro entity, or pay fees as a micro entity, is considered fraud. Such fraud can make a resultant patent unenforceable. Also, the USPTO can assess a fine—even after a patent has issued—of no less than three (3) times the amount that was unpaid due to a false certification of micro entity status.

It may be possible to correct errors related to payments at the micro entity rate. If micro entity status is established and micro entity fees are paid in good faith, and it is later discovered that micro entity status was established in error or through error the USPTO was not notified of a loss of micro entity status, the error will be excused upon compliance with separate submission and itemization requirements plus the fee deficiency payment. The deficiency amount owed is calculated using the date on which the deficiency is belatedly paid, not the fee rates at the time of the original (but deficient) payment.

There is no possibility for refunds of previously-paid fees based on later establishment of micro entity status. In this respect, micro entity status does not provide a window for requesting a refund of previously-paid fees as is possible for subsequent establishment of small entity status. Although if the fees were originally paid at a large entity rate a refund of the difference between undiscounted and small entity rates may be possible when micro entity status is establish, because micro entity status requires that the applicant also qualify as a small entity.

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

Contact Austen

Tags Patent Prosecution, Patents

Patents Q&A

When Should a Provisional Patent Application Be Considered?

Post author By Austen Zuege

A provisional patent application — sometimes called a “provisional application”, “provisional” or “PPA” for short — is a type of patent application that can be filed in the United States. They were intended to provide lower-cost first patent filings for new inventions. A provisional acts kind of like a placeholder for up to one year. It is never substantively examined for patentability. And a provisional can never directly be granted as an enforceable patent. But you can file a further non-provisional application that claims “priority” back to the provisional application filing date. A provisional filing lets you put a stake in the ground to preserve patent rights, so-to-speak.

The question at hand is really what factors weigh in favor or against filing a provisional. In short, what are the pros and cons of filing a provisional?

provisional application for patent cover sheet form PTO/SB/16 — USPTO Provisional Application Cover Sheet Form (PTO/SB/16)

Advantages and Benefits

Some of the most common advantages and benefits of a provisional patent application are the following:

Extends patent expiration date (patent term benefit)
Allows products to be marked “patent pending”
Establishes filing date (priority) to cut-off potential later-arising “prior art”
- Allows commercial potential of invention to be explored for up to a year without losing patent rights
- Helps win race to the patent office if others are working on similar inventions
No need to comply with formalities for drawings, etc.
- Might be filed quickly in the face of an impending loss of patent rights associated with a public disclosure/use or sales activity
Kept confidential (at least until cited in a later-published application or granted patent, such as through a priority claim)
Evidence of inventorship as of filing date
Lower initial official filing fees than a non-provisional application
Can later claim priority to multiple provisional applications

One of the biggest benefits of a U.S. provisional application is that the time period between the provisional filing date and the filing date of a non-provisional application claiming priority back to the provisional is not counted against patent term. This means that a provisional can push out the patent expiration date by up to a year (but this happens partly by delaying the grant of any patent by roughly the same amount of time). It can effectively extend the patent term to 21 years from filing. For some inventions, the most valuable period of patent protection may be later in the term, making such an extension valuable.

A pending provisional application also allows products to be marked as “patent pending.” That serves as a warning to potential copyists. It may also provide marketing and business development benefits.

Filing a provisional application establishes an official “filing date” for the disclosed invention. This is significant because patent rights generally go to the first inventor to file a patent application. So provisionals help win the race to the patent office. If there is some public disclosure that occurs after the provisional filing date it will not count as “prior art” against a later claim with “priority” to the provisional filing date. Prior art can potentially bar patentability. It can stem from your own disclosures and activities or someone else’s. Either way, a provisional can potentially exclude later-arising disclosures from being used as prior art against you. It is this aspect that allows you to disclose the invention to potential customers, etc. during the year after the provisional filing without loss of rights.

Another advantage is that provisionals do not require formal drawings, claims, etc. Here we can loosely distinguish between “informal” and “formal”/”full” provisionals. A “formal” or “full” provisional is one that could be filed as a non-provisional because it is written up in full detail to comply with all the requirements of a regular non-provisional utility patent application. An “informal” provisional is one that would not be sufficient or compliant as a non-provisional utility patent application.

A formal/full provisional generally offers no savings on preparation costs and effort compared to a non-provisional application. But the official filing fee is less and an eventual patent expiration date can be extended. The main advantage is that you reduce the risks of having inadequate disclosure of the invention. Not all provisional applications are equal. A provisional is really only as good as the disclosure it contains. If a provisional application omit details that are essential to patentability of an invention the provisional may be ineffective or even worthless. Putting in the effort to prepare a full disclosure of the invention reduces such risk.

An informal provisional departs from the format of non-provisional applications and granted patents somehow. It might have drawings with shading or lacking reference characters (labels), pages pulled from presentation slides with text in different orientations, figures (graphical illustrations, diagrammatic views, flowcharts, and/or diagrams) inserted into the middle of pages of descriptive text, etc. They sometimes repurpose existing documentation. Such informality may allow for quick filing. For example, if disclosure of the invention at a trade show or customer meeting is immanent, an informal provisional can be filed on an urgent basis to preserve patent rights.

Any type of provisional allows exploration of the commercial possibilities of the disclosed invention before deciding if a non-provisional application is worthwhile. The USPTO keeps provisional applications secret initially. If you abandon the provisional without claiming priority to it or disclosing it in some other way, its contents will never be made public by the USPTO. That means you might be able to still pursue patent protection later (despite loss of priority) if there was no intervening public disclosure or commercialization of the invention by you or anyone else. But if you claim priority to a provisional in a non-provisional application the contents are made public (upon publication or grant).

When seeking to generate interest in an invention or make sales, do keep in mind the scope of protection a provisional will and will not offer. A provisional is generally effective if it includes as much or more disclosure as what is publicly disclosed, publicly used, sold, or offered for sale (or what has already been publicly disclosed, publicly used, sold, or offered for sale within the prior year). The limits of protection are discussed in the disadvantages and risks section below.

Provisionals are also occasionally useful in providing evidence of inventorship. For instance, a provisional might provide some evidence of independent invention as of the provisional filing date (as part of self-authenticating official U.S. government records), although this is not always sufficient by itself.

Additionally, if research and development is ongoing, it is possible to file multiple provisional applications. A later non-provisional application can claim priority to any or all of those provisionals — assuming they are all filed within a year and have at least one common inventor. And one (or more) of those provisionals could be abandoned and kept confidential if unnecessary to later patenting strategies. In other words, with up to a year of hindsight, you could pick and chose some but not all of the provisionals for priority claims. And new matter can still be added to a later non-provisional application too. That new matter just won’t receive priority to an earlier provisional filing date.

Disadvantages and Risks

Some of disadvantages and risks associated with filing a provisional patent application are the following:

Adds to total cost of obtaining a patent
Delays the (potential) grant of a patent
Risk of inadequate disclosure in an “informal” provisional
- If foreign patent protection is eventually sought, the disclosure requirements may differ from U.S. law
Patentability might already be barred before filing (that is, the provisional is already too late)
Not available for designs
Foreign law may necessitate first filing in a foreign country or obtaining a foreign filing license before filing the provisional for inventions made wholly or partly outside the United States

Filing a provisional adds to the total cost of obtaining a patent. If you simply file a non-provisional application from the start you avoid the provisional filing fees entirely, plus any attorney fees associated with the provisional.

A provisional also delays the grant of a patent (assuming the invention is patentable). Though, in exchange, the expiration date of the patent is pushed out the same amount of time. Sometimes that trade-off is acceptable. But if the invention is likely to be copied, delays in obtaining a patent might delay enforcement action against infringers.

The main risk of a provisional filing stems from it containing an inadequate disclosure. From one perspective, filing a patent application (provisional or non-provisional) is better than not filing when it comes to helping protect an invention. But not all provisional applications are equal. put another way, the question is not merely about filing or not filing a provisional but about filing an adequate and sufficient provisional or not. A poorly-prepared provisional application may inadequately or unfavorably disclose the invention. In that sense, it may create a false sense of security. Never forget that a provisional is only as good as the disclosure it contains. Whether a given provisional is good enough comes down to what public disclosure and commercialization takes place, the scope of the prior art, and your overall patenting strategy and expectations.

If you file a provisional application to avoid a patentability analysis or even just to avoid hard thought about what is really the invention and how to claim it, you can’t know if the provisional application contains sufficient disclosure of a patentable invention. This might be risky if you rely on an “informal” provisional that cuts corners compared to a “full” or “formal” provisional (see definitions above). That is a particular concern if you sell or publicly use a product but important technical details about that product were omitted from the provisional.

Legally, the provisional application disclosure (written description) must enable one of ordinary skill in the art to practice the entire invention claimed in a later non-provisional application. There have been many cases where omission of some detail in a provisional application (that turns out to be important to patentability of a later-filed claim) resulted in a loss of priority to the provisional filing date for one or more claims. So you have to understand what will be later claimed in order to know if a provisional’s disclosure is sufficient. Complex or highly abstract technologies raise this issue. For example, an invention related to signal processing is probably not directly observable, meaning a provisional write-up must sufficiently capture the unobservable.

An important legal concern is that you cannot preempt a future invention before it has arrived. So you need a disclosure in the provisional that corroborates conception of the invention you will later claim. If you later try to claim an entire “genus”, this often turns into a question of whether the provisional disclosure was limited to a particular “species” (i.e., specific embodiment) within that genus or made clear that an entire genus was invented and enabled — usually by disclosing either a representative number of species in that genus or structural features common to the genus sufficient for member species to be recognized. Another potential issue involves claiming ranges of particular values. If you later claim a narrow numerical range, perhaps to avoid prior art falling in a different range, previously disclosing only a broader range might not be sufficient. These are fact-intensive inquiries.

Legal requirements in other countries vary. For instance, other countries may have stricter requirements about claims using nearly the identical language as the preceding description of the invention. And other countries may not permit reliance on disclosures contained only in drawings. They may instead look for textual descriptions of what is in a drawing. If foreign patent protection is (or might be) contemplated, differences in disclosure requirements should also be considered when preparing the provisional.

A provisional application also won’t save you when patentability is already barred. For instance, if the invention was already sold or publicly disclosed by the inventor more than a year before, then patentability is already barred in the United States. Any pre-filing public disclosure by the inventor may bar patenting in some other countries too. And an invention that lacks utility, is anticipated, or is obvious won’t be patentable either, regardless of whether a provisional was filed.

Additionally, provisional applications cannot be used in connection with designs. If your invention pertains to an ornamental design of a useful article, a regular (non-provisional) design patent application is the only option.

Lastly, some countries have laws that require patent applications to be filed in that country first if the invention was made or conceived in that country, or that a license be obtained to file abroad first. If any inventor resides in a foreign country or performed inventive activity while temporarily outside the United States, any applicable foreign laws should be considered. Those laws may impose penalties for making a provisional filing in the United States rather than in the foreign country. Foreign priority cannot be claimed in a U.S. provisional application.

Concluding Thoughts

Provisional patent applications are routinely used by applicants ranging from individual inventors to large corporations. There are many excellent reasons to file a provisional, including extending the expiration date of any resultant patent. It is always worthwhile to consider filing a provisional application. But a hastily- or poorly-prepared provisional may be insufficient to preserve a priority claim. Cutting corners to file a provisional cheaply or quickly imposes some limits on the scope of protection obtained. Always remember that a provisional is only as good as the disclosure it contains — that point is worth repeating.

A common mistake in applications self-prepared by inventors is to focus on the prior art or problem to be solved but omit the crucial disclosure of the substance and structure of the new invention — or do so only with general, vague, and conclusory statements that fail to establish anything more than a hope that an invention will be discovered later. A provisional also won’t be effective if key enabling aspects of the invention are purposefully withheld from the application. For instance, a disclosed algorithm cannot obscure key steps of the purported invention within a “black box”. Another common mistake is to characterize the invention in a way that limits the ability to claim the invention more broadly (or narrowly) later on.

Whether a provisional patent application is worthwhile will ultimately depend on circumstances such as the subject matter of the invention(s), the state of the art, any looming bars to patentability, the business goals and objectives of the applicant, the realistic commercial value of the invention, and the applicant’s worldwide patent strategy.

Contact Austen

Tags Patent Prosecution, Patents, Provisional Patent Applications

Patents Q&A

What Are the Requirements for Patentability?

Post author By Austen Zuege

3 Basic Requirements

In order to get a patent for an invention it must be patentable. There are three basic requirements for patentability:

Utility

Novelty

Non-Obviousness

An applicant gets to define an invention in “claims” of a patent application. Patentability is always analyzed by looking at those claims. If a claims fails any requirements for patentability, then the applicant is not entitled to a patent on it. Though it is still possible to consider the patentability of an invention in an informal sense even before any claims are written. However, judgments about patentability (or validity) can be challenging and subject to dispute.

There are other patentability requirements, such as enablement and definiteness. But these other requirements go more to the form and content of a patent application. You might even say those other requirements are about an application being presented in a patentable form rather than being about the patentability of an underlying invention in the abstract. Only the three basic requirements are discussed below.

Utility

Utility is about the nature of the invention itself. If you write a novel it can never be patented. That is because it is not “useful”. So it fails the utility requirement. But that is an easy example. Nobody thinks of the contents of a book as an invention. So what “useful” inventions are patent-eligible? U.S. patent law states, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . .” Despite that broad definition, laws of nature, natural phenomena, and abstract ideas are not patent-eligible. A claimed invention that is nothing more than one of those things is “preemptive” and fails the utility requirement.

Most man-made inventions have utility. Questions about patent eligibility (utility) tend to arise most for software, methods of medical diagnosis and treatment, biotechnology/life sciences, and business methods. In those areas, the way a patent application and its claims are drafted tends to get a lot of scrutiny.

For design patents, ornamentality is required instead of utility. Ornamentation can be (a) the shape of an article itself, (b) something applied to or embedding in an article, such as surface ornamentation, or (c) a combination of the first two possibilities. Also, the ornamentation must be applied to an “article of manufacture”. A picture standing alone is not eligible for design patent protection. But aside from ornamentality replacing the utility requirement, both of the other patentability requirements (novelty and non-obviousness) still apply to designs.

Novelty

Novelty means that an invention cannot be identical to something already known. For instance, if a claimed invention was already disclosed in someone else’s earlier patent then it lacks novelty. In this respect, assessing novelty involves a comparison that first requires an understanding of what came before. Lack of novelty is commonly referred to as “anticipation”.

However, only certain documents and information can be considered for patentability. Whether or not something qualifies as “prior art” against a given patent claim must first be established. Usually the question is whether a given patent or publication is old enough to be considered prior art. U.S. patent laws set forth somewhat complicated definitions of prior art and novelty. But, in general, earlier patents, printed publications, public uses, and sales can all potentially qualify as prior art. Even inventors’ own past actions and writings can count as prior art against them.

Sometimes novelty is described as “absolute novelty” because inventors are charged with constructive knowledge of all prior art. In other words, it doesn’t matter whether the inventor actually knew about the relevant prior art or not. The novelty requirement bars more than inventions copied from elsewhere. Even obscure disclosures about inventions that are not commercial available—and may never have been—may bar patentability.

Novelty also takes into account inherent teachings. It goes beyond explicit, literal prior art disclosures to further encompass what is unstated but necessarily implied. So, for example, if the prior art structure is the same as what is claimed, then previously unappreciated properties and benefits of that structure are likely inherent even if unstated in an earlier patent.

Novelty and anticipation always refer to what was (explicitly or inherently) disclosed in a single prior art reference. This distinguishes novelty from obviousness, which is discussed below.

Non-Obviousness (or Inventive Step)

Non-obviousness means an invention must represent a significant advance over what was already known in order to be patentable. U.S. patent laws say that even if the claimed invention has novelty, it will not be patentable “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” Many other countries use the term “inventive step” to refer to the concept of non-obviousness.

Obviousness is formally analyzed by first determining the scope and content of the prior art, the differences between the prior art and the claim at issue, and the level of ordinary skill in the relevant art. Those facts must be taken into account when drawing a legal conclusion about obviousness or non-obviousness. So-called secondary considerations for non-obviousness can also be considered. But such secondary evidence is often not available.

obviousness graphic — Conceptual Illustration of Anticipation/Obviousness/Non-Obviousness

It is possible to conceptualize obviousness as a fuzzy zone around the closest prior art. In that zone the invention is too trivial to be patentable. An invention must go far enough beyond the prior art to be worthy of a patent. Though exactly how far is hard to establish with a bright line. The main way to reach non-obviousness is to claim something that solves a technical problem in the prior art. You do need an invention and cannot merely claim the absence of the prior art or the absence of a problem. After all, patentability is about encouraging inventions that positively contribute to human knowledge. That is how this ties in to the reason patents exist.

In practical terms, patent application claims are often rejected by an examiner for obviousness based on a combination of multiple prior art patents. In those situations, no single earlier patent discloses all the features or elements of a given patent claim. But the examiner can assert that someone would have been motivated to combine or modify the different teachings of multiple earlier patents to arrive at the claimed invention (with a reasonable chance of success). These are often difficult judgments to make. And there can be a temptation to slide into hindsight bias. These are some of the reasons why obviousness is sometimes called the ultimate condition for patentability.

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

Tags Design Patents, Patent Prosecution, Patentability and Validity, Patents

Patents Q&A Trademarks

What is an Office Action?

Post author By Austen Zuege

“Office actions” are official communications about patent or trademark applications. In general, an office action specifies a reason (or perhaps multiple reasons) why an examiner believes that a patent or trademark registration cannot be issued. Applicants can generally file a response to an office action within a specified period of time. Specific types of office actions are discussed below. Skip to: patent or trademark.

Patent Office Actions

For patent applications, an office action makes a rejection or objection, or both, for some aspect of the application. Office actions are part of patent “examination” or “prosecution”. An office action is prepared by a patent examiner assigned to examine the given application to assess patentability. So, in other words, the office action indicates why the examiner believes a patent cannot be granted.

Most commonly, office actions will reject some or all claims of the application for (allegedly) being unpatentable in light of cited “prior art”, which might be an existing patent for a similar invention, for example. Though an office action might also indicate that some claims are patentable (allowable).

Example patent office action summary (form PTOL-326) — Sample Patent Office Action Summary Page

The first page of an office action is a cover sheet with important mailing/sending date information. The next page is a summary. The remainder explains the substantive basis for the rejection or objection. Multiple office actions can be issued for a given patent application. Though eventually an office action will be made “final”, meaning the examiner considers prosecution closed.

There are other types of official communications that are not “on the merits”, like restriction and election requirements. Patent practitioners typically use different terms to refer to those other communications. That distinguishes them from regular office actions dealing with patentability.

Office actions are common. The overwhelming majority (almost 90%) of all new patent applications receive some sort of rejection or objection in an office action. So there is nothing unusual about receiving one. Most importantly, an applicant is generally still able to file a response to continue pursuing patent protection even if a rejection is made. An office action just opens up the opportunity for back-and-forth dialog between the applicant and the examiner regarding patentability.

However, an important feature of an office action is that it establishes a response deadline. The applicant will need to take action to respond to the office action by that deadline in order to keep the patent application active. Failure to respond will result in abandonment and loss of rights. Extensions of time to respond to an office action are available, though such extensions carry an official fee.

In other countries, different terminology may be used. Office actions may instead be called notices of reasons for refusal, examination reports, search reports, written opinions, etc.

Trademark Office Actions

For federal trademark (and service mark) applications, an office action (or official letter) will state grounds for refusal of registration. Office actions are part of trademark “examination” or “prosecution”. Office actions are prepared by trademark examining attorneys assigned to particular applications. The office action indicates why the examiner believes a mark cannot be registered.

example trademark office action — Sample Trademark Office Action

Office actions will often reject part or all of the application for (allegedly) creating a “likelihood of confusion” with a conflicting prior registration. Though it is also common for trademark office actions to raise formalities requiring action or amendment, such as to change the wording in some part of the application.

Multiple office actions can be issued for a given trademark application. Though eventually an office action will be made “final”.

Trademark office actions are common. There is nothing unusual about receiving an office action for a trademark application. Most importantly, an applicant can generally still file a response to continue pursuing trademark registration even if a refusal is made. An office action just opens up the opportunity for a conversation between the applicant and the examiner regarding registrability.

An important feature of an office action is that usually establishes a response deadline. The trademark applicant will need to take action to respond to the office action by that deadline in order to keep the application active. Failure to respond will result in abandonment of the application. An extension of time to respond to an office action is available, though such extensions carry an official fee.

However, because U.S. trademark rights are based on use in commerce and registration is optional, abandonment of trademark application may not affect so-called “common law” rights stemming from ongoing use of a mark. Though the existence of a conflicting registration may mean there is a risk of infringement. And, if there has not yet been use of the mark, abandonment for failure to respond to an office action may result in a loss of a priority date—potentially allowing someone else to claim the mark.

Tags Patent Prosecution, Trademark Prosecution

Articles

Strategic Third-Party Submissions Against Patent Applications

Post author By Austen Zuege

Here is a copy of an old article about pre-grant submissions (observations) that third-parties can submit to challenge or weigh-in on someone else’s pending patent application:

“Strategic Third-Party Submissions Against Patent Applications,” Intellectual Property Today, Vol. 19, No. 12 (December 2012)

This information is still mostly timely, though the fee for submitting 4-10 documents has since changed. There is now a separate fee schedule for third-party submissions under 37 C.F.R. § 1.290 and the official fee under 37 C.F.R. § 1.17(o) for 4-10 references is $180/$72 for a large/small entity as of April 2023 (there is no micro entity fee available).

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Tags Patent Prosecution, Patents, Third-Party Submissions (Observations)