A file wrapper, synonymously called a file history, is the written record associated with a given patent or trademark application and any resultant granted patent or trademark registration. It is the official record for a given matter. Generally, the file wrapper includes more information than is formally published by a patent or trademark office in patents, published patent applications, or trademark registration certificates.
The sorts of materials maintained in file wrappers, the period of time those materials are retained, and the level and ease of public accessibility to them varies by jurisdiction. For instance, in the USA, patent application information is kept confidential initially and generally only made publicly available for published applications and granted patents, with pending applications normally published 18 months from the earliest filing or priority date (subject to potential non-publication requests). (35 U.S.C. § 122).
How & Where to Obtain a File Wrapper
In the past, file wrappers were only available as hard copies in on-site storage at official offices. Today, many patent and trademark offices make at least some file wrapper contents available online—though whether online versions are the official ones or not and whether the online versions are complete or not are questions that can vary by jurisdiction. File wrapper materials are generally also available as certified copies that must be specially ordered (and may have to be physically mailed). Usually a given file wrapper must be obtained from the relevant patent or trademark office that maintains it, although centralized file wrapper access for a few global patent offices is available.
The U.S. Patent & Trademark Office (USPTO) has “Patent Center” and Trademark Status and Document Retrieval (TSDR) online portals. Very old materials are not always available through these portals. Moreover, some materials are not accessible through Patent Center to the general public, like copies of non-patent literature. The USPTO also has a separate Certified Copy Center that allows officially-certified copies of file wrappers or specific documents from them to be ordered, upon payment of required fees. Certified copies of file wrapper may include materials that are not otherwise publicly available, and include official seals and signatures attesting to their authenticity.
The European Patent Office (EPO) has a European Patent Register with file wrapper information. These materials are also accessible via the Espacenet portal, by clicking the “Register” link within a given record.
There are also separate systems for file wrappers for PCT international patent applications and Madrid Protocol trademark registrations. These are the Patentscope and Madrid Monitor online portals maintained and administered by the World Intellectual Property Organization (WIPO). It is also possible to order certified copies of Madrid international trademark registration materials from WIPO, or for applicants to order certified copies of PCT applications from individual PCT receiving offices.
Additionally, Global Dossier portals provide access to file wrapper contents from a number of the most active patent offices worldwide, together with machines translations. Global Dossier has gone by other names in some jurisdictions, like “One Portal Dossier” in Japan and South Korea. Because of the availability of machine translations, these portals can be highly convenient for gathering information about foreign patent applications in other languages. But some documents may not be immediately available through these portals, either due to technical glitches or database update lags.
Why Might You Need a Wrapper?
There are many reasons a file wrapper might be consulted. For instance, they can provide a record of the prosecution history that may inform the status or interpretation of something related to a given patent or trademark. A record of official actions like rejections/refusals and/or applicant amendments or arguments might be found in the file wrapper. Particular documents within a file wrapper might be relied upon for various purposes, or might be needed for submission in other contexts. For instance, in U.S. patent law, the file wrapper might be relied upon for claim construction, doctrine of equivalents analysis, inequitable conduct inquiries, and more.
File wrapper materials in informal, online formats might be sufficient for many purposes, and may be free and easy to access. Information materials might be used for competitive intelligence purposes or as a reference example for work on an unrelated matter, for example. Certified copies or an entire file wrapper, or one or more selected documents from it, might be required for certain formal uses, such as to make priority claims in foreign applications or to be relied upon in legal proceedings where authentication of the materials is important.
The legal important of a file wrapper often depends on the substantive law of the relevant jurisdiction. Under U.S. patent law, prosecution history estoppel or prosecution disclaimer found in a file wrapper might arise and bind the patentee. But many other jurisdictions do not have any such patent prosecution estoppel doctrines, making file wrappers less formally significant. And, moreover, the USPTO does notaccept formal file wrapper estoppel in trademark matters.
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 patents and trademarks, the term “prosecution history” refers to the back and forth between an applicant and the patent or trademark office. It includes submissions by the applicant, starting with an original application and extending though any amendments or arguments the applicant might later make during official examination of the application. It also encompasses official communications, like office actions, and the particular rejections, objections, refusals, and other notifications that may be contained in them. Oral communications like interviews are a part of it too.
But “prosecution history” refers to more than just a set of documents or particular communications. It is a blanket or umbrella term that refers to all the actions and events involving the patent or trademark office from the time a new application is filed to through grant or registration and even beyond that to post-grant or post-registration actions involving corrections, maintenance or renewals, and the like. So, even if a particular document is purged or deleted or never made part of the permanent record, such a document and the events surrounding it are still part of the prosecution history.
Prosecution histories are important for many reasons. As reflected in “file wrappers,” they are often consulted to understanding the status of a pending application or of a granted patent or issued trademark registration. They can provide insight into why a patent or trademark registration was issued in a particular form, or why a application was abandoned. Sometimes events or materials from the prosecution history of a given patent or trademark registration can even impact the scope or validity of enforceable legal rights.
The prosecution history tends to matter most where prosecution history estoppel or prosecution disclaimer might arise and legally bind the applicant later on. In the U.S., it tends to be more important for patents than for trademarks. Many other countries have different laws that make prosecution history less consequential.
Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.
This presentation and downloadable materials addresses basic requirements and best practices for virtual patent marking, as well as requirements for traditional/physical marking, alternative marking on a label or package, and false marking. Suggestions for implementing virtual patent marking are provided along with examples and hypotheticals used to discuss some of the practical challenges of virtual marking and where there continues to be areas uncertainty. More information about patent marking is available in this detailed guide and this brief overview.
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.
Materials from a presentation by Austen Zuege and Jonathan Bench about patent assignments and rights of priority, including presentation slides and an on-demand video recording, are available here:
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.
The U.S. Patent & Trademark Office (USPTO) makes granted U.S. patents and published U.S. patent applications publicly available. Patent Public Search is its open-access patent searching platform, available online to anyone free of charge. It exists with two different interfaces: Patent Public Search Basic (PPUBS Basic) and advanced search. Both allow U.S. patents and published applications to be searched simultaneously. Coverage is limited to only U.S. patent documents.
Screenshot of the USPTO’s Patent Public Search landing web page, with links to the “Basic Search” and “Advanced Search” interfaces
There are official training guides and frequently asked questions (FAQs) available for Patent Public Search. These provide detailed guidance about how to use the tool, particularly the advanced features. What follows are basic explanations of how to fetch individual patents from the USPTO and find either PDF images or selectable/copyable text from U.S. patents and published applications.
Screenshot of the USPTO’s Patent Public Search FAQs
The Basic (PPUBS Basic) search interface allows granted U.S. patents and published patent applications to be fetched by number (“Quick Lookup”), and allows some keyword-based searches (“Basic Search”). But it returns only PDF copies.
Screenshot of the USPTO’s PPUBS Basic search interface
This interface is simple and mostly self-explanatory. Although, if desired, consulting the USPTO’s basic search interface overview may be helpful. One important thing to note is that the search input fields allow only a single word or number in each and a maximum of two keywords can be used. So, for searches using two distinct keywords, it is necessary to use different input fields for each of them and to select a Boolean operator (AND, OR, or NOT).
Screenshot of an example search result for a “Quick Lookup” of U.S. Pat. No. 10,000,000 via the USPTO’s PPUBS Basic search interface
The Basic interface is most useful for fetching PDF copies of granted patents and published patent applications when the patent or publication number is known. The trade-off is that its functionality is rather limited for subject-matter searches and “full text” is not available for returned results.
Using the Advanced Search Interface
As the name implies, the advanced search includes much more advanced search functionality than the “Basic” interface. However, the advanced interface is highly esoteric and non-intuitive. It may not even display properly on all computers. For instance, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens, like laptops.
Screenshot of the USPTO’s Patent Public Search Advanced Search interface, showing the results of a search for U.S. Pat. No. 10,000,000 using the “.pn.” field code
The Advanced Search interface allows queries of up to three distinct databases simultaneously:
US-PGPUB — containing U.S. pre-grant patent application publications from March 2001 onward;
USPAT — containing full-text granted U.S. patents from 1970 onward plus allowing classification and patent number searching from 1790 onward; and
USOCR — containing text-searchable optical character recognition [OCR] scanned pre-1970 U.S. patents
Fetching a particular patent or published application by number is surprisingly difficult with the “advanced” interface. Use of the “.pn.” (for patent number) code is highly unforgiving and the period at the end is required. The USPTO has said it is possible to manually type in the URL https://ppubs.uspto.gov/pubwebapp/external.html?q=(00000000).pn. and replace “00000000” with the desired patent number in order to reach it directly though an “external search”. Use leading zeros to fill a 7-digit entry if the patent number is 6 or less digits (for example, “0654321”). And do not forget the period at the end! Unfortunately, Patent Public Search modifies this URL as displayed in a browser once it is visited so there is no simple way to bookmark it. Also, expect some frustration because these “external search” URLs do not seem to consistently work (especially if Patent Public Search was previously opened in your browser).
Annotated screenshot of Patent Public Search Advanced Search Interface “Document Viewer” “T / [camera icon]” button to toggle between text and PDF image views
The advanced interface is currently the only way the USPTO provides “full text” of published patent documents. PDF versions are also available by clicking the “T / [camera icon]” button at the top left of the “Document Viewer” panel that normally appears at the right-hand side of the screen along with the text (annotated in the figure above). Toggling that button allows switching between text or PDF image displays of a given patent document.
Other commands are available by clicking on rather confusing and esoteric icons in the “Document Viewer” panel, such as various quotation mark buttons that allow forward and backward searching of citations. Note that references cited listed on the front page of granted patents are omitted from the “full text” display in Patent Public Search, meaning that “full text” is not truly available for all text of a given patent document. Foreign and non-patent literature citations will appear only in the PDF image of the granted patent and thus are not selectable to copy-and-paste them.
Annotated screenshot of Patent Public Search Advanced Search Interface “Document Viewer” quotation mark buttons to forward and/or backward search U.S. patent documents from the “References Cited” section of a granted U.S. patent
If you plan to conduct extensive searching by subject matter, using keywords and/or classification codes, you may want to consult the USPTO’s official Patent Public Search training guides and FAQs as well as the “Help” menu tab inside the interface’s “Search Results” panel. The “Search Overview” Quick Reference Guide and the FAQs may be the most useful places to start, followed by “Searchable Indexes” (that is, field code) list and the “Help” menu tab inside the interface. Some content found in the “Help” menu tab of the “Search Results” panel inside the interface (such as explanations of proximity operator syntax) does not appear anywhere else at present—quite unhelpfully!
Also be aware that Patent Public Search uses search string syntax that is unlike commercial patent searching tools. Familiarity with other search tools (other than the USPTO’s old PubEAST and PubWEST tools) will not translate into any understanding of how to use Patent Public Search.
Alternatives: Patent Center, International Open-Access Tools, and Proprietary Tools
An alternative way to reach a particular U.S. patent or published application in USPTO databases is to utilize the Patent Center interface. Patent Center’s main interface provides a simple query field where you can enter a U.S. patent or published U.S. patent application number. Once the results of a given query appear on screen, there are links available to the Patent Public Search text versions of the given published application and granted patent (if any) under Patent Center’s “Application Data” tab. The button with the “T/[camera icon]” label can be clicked to toggle between a text view and a PDF image of the patent document in Patent Public Search. While navigating to patent documents through Patent Center requires many clicks, using it may be easier than using Patent Public Search.
However, links to patents and published applications in Patent Center are often broken or non-functional. This is a major problem. And Patent Center intentionally blocks copy-and-paste operations to copy patent or publication numbers into a different database that does function properly. The system has also been plagued by a lack of capacity. Rather cryptic error messages (usually colored red) may appear when attempting searches on the platform. These errors reflect that the computer infrastructure on which Patent Center runs has reached a capacity limit, forcing users to re-run searches. This can be seen as a form of under-funding the Patent Center infrastructure.
Another alternative for fetching PDFs of U.S. patents and published patent applications is to use a privately-operated site or a foreign patent office site with international coverage. There are many proprietary patent searching tools that require a subscription. But there are also open-access or semi-open-access tools available online that contain at least U.S. patent documents, including:
Compared to many other online patent searching tools, Patent Public Search has substantial usability flaws. Although it has more coverage and capabilities than it predecessors PatFT and AppFT, it is much less user-friendly and eliminated some features of the old systems. Tabbed browsing to open multiple documents at once is prohibited by the “advanced” interface, for instance. Also, the “advanced” interface frequently has long delays to load or fails to load, and the “basic” interface often stalls without loading patent PDFs—making them effectively inaccessible. These are faults with the USPTO’s computer infrastructure and the design of these tools. Even compared to other open-access platforms, like Espacenet, Patent Public Search is harder to use. It is even inferior in many ways to the “Delphion” tool from the early 2000s (which was converted into one of the leading proprietary platforms and is no longer open-access).
Proprietary searching platforms are still generally the best option. Although subscription fees will be prohibitive if you only perform patent searches occasionally.
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.
Abstract: This article provides critical analysis of the doctrine of assignor estoppel for patent assignments following the Supreme Court’s Minerva v. Hologic decision, which limited the situations in which the doctrine is available to those that involve a “contradiction” by the assignor that violate norms of “fair dealing”. An overview of the likely abrogation of prior Federal Circuit cases is provided. Although, as explained, there are significant policy disputes that underlie the doctrine that have not been definitively resolved, which will undoubtedly be the subject of dispute in future cases. Also addressed, and questioned, are corollaries and related Federal Circuit precedents involving privity, the effect of purported assignments of future inventions and the role of claim construction to preserve validity defenses. For the latter, an “assignor estoppel donut” is conceptualized to highlight the multiple boundaries involved, of which Minerva’s holding addressed only one. Lastly, an analysis of pragmatic assignment scenarios and potential areas of dispute around them is set forth, in order to inform both assignment drafting and negotiation, on the one hand, and legal disputes over existing assignments, on the other.
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.
The U.S. Patent & Trademark Office (USPTO) requires that non-provisional patent applications filed on or after January 17, 2024 be submitted electronically in Office Open XML “DOCX” file format in order to avoid a non-DOCX official surcharge. This means applications can still be filed electronically in PDF format, or by paper, but doing so will require payment of an additional official fee that varies according to the applicant’s entity size (initially $400/$160/$80 for large/small/micro entities).
What Types of Applications Must be in DOCX Format?
The DOCX filing requirement and non-DOCX surcharge currently applies only to the following U.S. patent applications:
Utility patent applications (non-provisional) under 35 U.S.C. § 111(a)
Includes direct U.S. filings with a Paris Convention foreign priority claim
Includes PCT “bypass” applications
However, the non-DOCX surcharge currently does notapply to the following types of U.S. patent applications:
Provisional patent applications
Design patent applications
Plant patent applications
PCT national phase entries
Additionally, only certain portions of an application are covered by these requirements. In order to avoid the non-DOCX surcharge, the specification/description, claims, and abstract must all be in a compliant DOCX format. However, the drawings of an application do not need to be submitted in DOCX format. PDF format can be used for electronic submissions of figures without paying a non-DOCX surcharge.
In an answer to a frequently asked question (FAQ), the USPTO has said that the non-DOCX surcharge applies to U.S. applications filed in a language other than English under 37 C.F.R. § 1.52(d)(1). That is, avoiding the surcharge requires filing a DOCX copy of the non-English original. This approach was not officially announced prior to implementation of the surcharge. Of course, that position is at odds with the USPTO’s justification for implementing the non-DOCX surcharge in the first place, because only the English translation is published.
Potential Problems
When application documents are electronically filed with the USPTO’s Patent Center system in DOCX format, they are “validated” to create a new DOCX file and also converted into another format (PDF) by the USPTO with a proprietary conversion/rendering engine prior to submission. For instance, tracked changes strikethrough and underlining/underscore formatting are automatically removed as part of file “validation”. However, that “validation” and conversion process can produce errors. Yet it is the “validated” DOCX file as modified by the USPTO’s system that is considered the “as filed” version that the USPTO actually relies upon for subsequent actions, and not the DOCX file as originally uploaded. The original applicant-created DOCX file is discarded by the USPTO as part of the “validation” process, meaning the USPTO does not preserve the original source file in unaltered (pre-validation) form. Underlying these concerns is the fact that DOCX format is not platform-stable, and rendering of a given document varies depending on the configuration of the computer that opens it. These aspects of DOCX filing are the major sources of concern.
Experience to date has shown that USPTO-side DOCX conversion error issues are particularly significant for application documents involving:
Embedded mathematical equations created with a word processing program’s built-in equation editing functionality
Embedded chemical formulas created with a word processing program’s built-in formula editing functionality
Pseudo computer code with special indenting having technical meaning or special significance
Data tables, particularly if the table introduces landscape page orientation that varies from other pages with portrait orientation or if there is complex table formatting with special formatting like substantively meaningful indenting within table cells
Text in unusual characters/symbols or fonts, including Greek letters and/or uncommon accent marks with technical significance
Claim autonumbering using automatic numbered list formatting
Document creation using a word processing program other than a version of Microsoft Word® using a Latin-alphabet interface
Document creation or editing with word processing program plug-ins or macros for machine translations, automatic application content population, and the like, especially when such plug-ins lock application formatting or content against further editing
Many of these things are fairly common in patent applications.
The USPTO treats a DOCX version as the definitive record copy, potentially allowing later correction of USPTO-side conversion errors by filing a petition. However, the USPTO has clarified that only the “validated” DOCX file as modified by the USPTO’s systems during the filing process are treated as authoritative and not the applicant’s pre-“validation” source version. The USPTO has also said that petitions requesting a correction more than one year after a DOCX submission will not ordinarily be granted (except that, if applicable, incorporation by reference of a priority application or filing a pre-English-translation version may provide a different, independent basis to request correction more than a year later). This time limit stemmed from the USPTO saying it may discard applicant submissions after one year, retaining only a USPTO-converted/validated file — although a later USPTO rule announcement indicated that applicant-generate PDFs will now be maintained as part of the permanent record and not discarded. There remain some ambiguities and inconsistencies in these USPTO statements, particularly because the USPTO never specifically retracted its statement that petitions filed more than one year after an application is filed will not ordinarily be granted.
The USPTO has permitted a limited opportunity to file a back-up applicant-generated PDF version (“Auxiliary PDF”) of an application filed in DOCX format that can further allow for later correction of USPTO-side conversion errors. However, this Auxiliary PDF submission is being permitted indefinitely, during which time there are no extra official fees associated with submitting an Auxiliary PDF or to petition to correct a USPTO-side conversion error based on such an Auxiliary PDF. And the USPTO has said that the Auxiliary PDF will be retained as part of the permanent record for a given application. However, there is significant effort (and associated time cost) required for an applicant to prepare and file a petition to correct a USPTO error, and there is no guarantee that such a petition will be granted. Indeed, some petitions to correct USPTO-side DOCX conversion errors have been denied and/or have significantly delayed examination.
Another very significant point is that the USPTO has taken the position (first stated in a FAQ answer published only after the surcharge went into effect, then further clarified in a notice in May of 2024) that a preliminary amendment filed on the same day as an application subject to the DOCX requirement must also be in DOCX format. Failing to file the preliminary amendment on the same day as the new application means it will not be treated as part of the original application. This places additional burdens on applicants. For one, it was not until November 13, 2024 that the USPTO’s Patent Center electronic filing system permitted DOCX format preliminary amendments to be filed simultaneously with a new application (!). When doing so, an “Auxiliary PDF” can be submitted that combines the PDF of the original application and the PDF of the preliminary amendment. However, the USPTO has not provided any guidance about its treatment of substitute specifications in DOCX format, and therefore the ability to file those while avoiding the non-DOCX surcharge remains unclear and prone to risks for applicants. Also, the USPTO had for a long time informed practitioners that DOCX amendment filings in Patent Center did not work properly and should be avoided. One reason was that DOCX-format files with “tracked changes” to show amendment mark-ups would be entered thus removing the mark-up indications when submitted to the USPTO. However, as some unspecified time during 2024, and without any prominent announcement, the USPTO changed the functionality of Patent Center such that “tracked changes” mark-ups in DOCX-format files are converted into fixed-formatting underlining and strikethrough. Whether that conversion/rendering process at the USPTO side works properly or produces errors is difficult and burdensome to verify. Therefore, by imposing a non-DOCX surcharge to preliminary amendments tends to increase burdens and risks on applicants.
The possibility of conversion errors arising at all and the burdens of requesting corrections have the potential to negatively impact applicants. Moreover, the increased applicant burden to format DOCX files, proofread converted files, and make separate preliminary amendment submissions is potentially significant unto itself. In effect, DOCX filing saves some effort and expense for the USPTO by pushing or shifting certain very large burdens and risks onto applicants. The supposed benefits to applicants are trivial or meaningless.
Best Practices for DOCX Filing
The following are some suggested practices for DOCX filing. These are meant to supplement or clarify USPTO-provided guidance and frequently-asked-question (FAQ) responses that often serve more as disingenuous “gaslighting” to deny problems filers have encountered and conceal unstated, de facto requirements than to provide reliable, practical, actionable guidance. While a document might be modified shortly before filing to meet minimum requirements or best practices, there can be risks and potential problems associated with doing so, including the introduction of inadvertent errors and potential file corruption. It also may be significantly more time-consuming to later modify an application document for filing than to prepare it in a compliant way from the start.
Top DOCX application compliance tips:
Use paragraph numbering (required), preferably paragraph autonumbering using at least four digits inside square brackets (“[0001]”)
Omit line numbering
Manual paragraph numbering is compliant but makes changes and amendments very burdensome
Often the lack of paragraph numbering in an existing application document is the single most burdensome formatting change required for DOCX filing compliance
Use a supported font, such as times new roman or arial (note that supported fonts are subject to change without notice)
There have been reports that some fonts the USPTO has explicitly identified as being supported are not actually fully supported
While a document-wide font change action can be performed, it may not alter font in embedded equations or formulas, inserted images with text or alphanumeric characters, headers and footers, and the like
Manually number claims with plain text numbers and avoid automatic “list” formatting using word processing program functionality
USPTO systems will sometimes modify claims in numbered list format to number each clause within a claim separately, disrupting intended claim numbering
Use of auto-updating cross-reference fields to indicate claim dependencies sometimes leads to errors in conversion, such as converting all claim dependency references to a prior claim from various numbers to zero (0)
Consider using an inserted image of a complex formula or equation rather than using one generated by a word processing program’s equation editor
Inserted images must have sufficient resolution to be readable
Images should be inserted in-line with text, without text wrapping (text wrapping for images and tables can produce errors with PDF conversions for an “Auxiliary PDF” submission)
Provide figures in a separate document, rather than as pages of the same document containing the application text (specification)
Deletion of pages containing drawings can sometimes produce unintended changes to the formatting of remaining pages in a DOCX file, such as deletion of page numbering, changes to margins, and the like
Use an English version of the proprietary Microsoft Word® word processing program
There are variants of the DOCX format and other nominally DOCX compatible word processing programs will not necessarily create files that will be processed the same way by the USPTO’s proprietary conversion engine
Use of versions of the Microsoft Word® program intended for use with non-Latin character alphabets may render differently on an English-language version of that program, such as removing inter-word spacing. For example, “Balance SBCS and DBCS character(s)” options create warnings in Patent Center about possible reduction of pages
Avoid use of highly customized application templates with macros or uncommon/complex embedded formatting settings
Remove all “content controls”. The presence of “content controls” will make a DOCX file non-processable and unsubmittable. “Content controls” can be made visible by selecting File –> options –> customize ribbon and then selecting the box to make the “developer” tab visible, then, under the (now visible) developer tab, selecting “design mode”; the content controls should now be visible in the document between unique-looking (usually gray) leading and trailing tags.
Simplify! In general, documents with simpler formatting are more likely to be compliant and less likely to result in conversion errors than more complexly formatted ones. Use complex, customized formatting only when strictly necessary or unavoidable
The “.docx” file extension must be in all lowercase letters
The USPTO provides DOCX-compliant utility patent application templates that could optionally be used. There is a basic template and another with essentially all possible application section headings identified. The basic template will like be more appropriate in most situations, with fewer extraneous section headings that are likely inapplicable. However, the use of automatic list claim numbering in these templates can still cause conversion errors and is not seen as actually compliant; thus, manual text-only claim numbering should be used in place of the list-style autonumbering in those templates.
While the USPTO asserts that DOCX file metadata is automatically removed from documents when filed, it is recommended to independently assess and remove any sensitive metadata before filing. Such metadata could relate to document revisions and the like. While such information is not necessarily harmful to an applicant’s interests, its presence in filed documents might possibly increase litigation discovery burdens if a resultant patent is ever enforced. In Microsoft Word, accessing the “File” > “Info” menu and utilizing the “Inspect Document” feature can help identify and then remove metadata. But be careful not to remove necessary document fields like page numbers appearing in footer margins.
One difficulty with identifying errors is that meaningful proofreading requires first uploading the DOCX file to the USPTO’s Patent Center and then reviewing a USPTO-converted file. While Patent Center provides some feedback about certain possible DOCX compatibility issues during the file upload and submission process, such automated feedback will never identify substantive content errors such as unintended changes to numerical values or technically (that is, substantively) meaningful formatting.
An Auxiliary PDF can be filed without charge in addition to a DOCX file, and doing so is recommended. Although it is still a best practice to utilize a reliable DOCX file or pay the non-DOCX surcharge. That is because corrections premised on the contents of the Auxiliary PDF require, at a minimum, significant time and effort associated with formal petitions for correction. Also, in worst case scenarios, such petitions to correct DOCX-related errors might be denied, even if they result from USPTO-side problems. In this sense, Auxiliary PDFs might provide some benefit but are not an ideal or complete solution to the problems posed by DOCX filing.
Non-DOCX Filing Alternatives
In some instances, electronically filing an application in PDF format and paying the non-DOCX surcharge may be more efficient than spending considerable time proofreading converted documents to check for errors. “Last minute”, urgent, or rush filings of applications with potentially problematic equations, formulas, data tables, text formatting, or the like may not allow sufficient time for proofreading, and may suggest PDF format filing and payment of the non-DOCX surcharge.
Filing a PCT application and entering the U.S. via the national phase (perhaps early) is another approach. Because PCT national phase entries are not currently subject to the non-DOCX surcharge, many difficulties are avoided. However, there are different rules and official fees associated with PCT applications that may (or may not) be significant. For instance, for national phase entries, “Track One” prioritized examination is not available and filing a request for continued examination (RCE) requires first submitting all inventor declarations/oaths. And this approach is usually more expensive than paying the non-DOCX surcharge, although some fee deferrals and other additional benefits can arise through PCT filings.
Additionally, if the USPTO’s Patent Center system is unavailable and paper (hard copy) filing via express mail is required to meet a filing deadline or bar date, payment of official non-DOCX and paper-filing surcharges might be necessary.
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.
Most people are well aware that patents are available. And patents are commonly known to relate to inventions. But what are the historical origins of patents and patent law? And, specifically, when did modern forms of patent laws emerge? The following is a short historical overview of how, and where, modern patent law developed, and how it was adopted in the USA.
Early Patents and the Emergence of Modern Patent Law
Patents have existed in some form for thousands of years, dating to at least 500 BCE in the ancient Greek city of Sybaris (located in what is currently Italy). But such ancient and other extremely old patents tended to differ in significant respects from the institutionalized patent laws of today. Then in medieval times patents began to emerge in a more modern form. Although such medieval patents appeared only on an isolated, erratic, and ad hoc basis, as with one in the city-state of Florence granted a single time around 1421 in response to an architect’s refusal to disclose an invention for an iron-clad ship without obtaining limited exclusive rights in it.
The very first modern patent law was in the Republic of Venice city-state in 1474, which provided ten year protection for “any new ingenious contrivance, not made heretofore in our dominion, as soon as it is reduced to perfection, so that it can be used and exercised . . . .” At that time, Venice had a mercantilist economy built on maritime trade, but also developed conditions for commercial capitalism. Although the city-state of Venice subsequently declined in world influence, without passing its legal customs on to many other states, its patent law was historically the first to institutionalize important characteristics of modern patents.
The British Statue of Monopolies enacted in 1624 is often considered the source for modern patent laws as adopted in the USA and through much of the world. It limited the ability of the British monarchy to grant “odious” long-term monopolies over entire industries, partly limiting letters patents to manners of “new manufactures” (inventions) for only a limited period of time. See Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229-30 and n.6 (1964). As a former British colony, it was British (rather than Venetian) legal norms that were adopted in the USA. See Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 18,20 (1829).
These Venetian and English statutes established the concept of patents being based upon a quid pro quo. In exchange for disclosure of an invention its inventor could obtain a monopoly in that invention (and only that disclosed invention) for a limited time, thus preserving a general system of competition. This concept of patents as limited monopolies granted by governments (on behalf of the public) as an incentive to individual inventors in a competitive economy has been tied to the transition from feudalism to capitalism in European history. That is, the incentives to have patent laws tended to arise alongside the historical emergence of capitalism.
History of the U.S. Patent System
U.S. patent law was derived from English law. See Pennock, 27 U.S. at 18, 20. There is a patent and copyright clause in Article 1, § 8, clause 8 of the U.S. Constitution, granting congress the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” This constitutional provision is both a grant of congressional authority and a limit on congressional authority. Trademark and trade secret law both lack such an explicit constitutional authorization.
Federal statutes providing for the granting of patents have been around since the very earliest days after U.S. independent from England—the first U.S. patent act was passed in 1790. The U.S. patent system has always sought to make patent fees reasonable, to allow ordinary people to apply for and obtain for patents on their inventions.
However, the U.S. Patent Office was not founded until 1810 (its first employee having been hired in 1802 as “superintendent of patents”) and modern pre-grant examination only began in 1836. This actually was a unique American contribution to patent law: the idea of institutionalized pre-grant examination of patent applications under established legal standards. Previously, U.S. patents were subject to either an erratic ad hoc pre-grant examination (from 1790-93, by a board initially comprised of Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph) or were registered and patentability assessed only later in court when the patent was asserted (from 1793-1836).
Then, in the mid-Nineteenth Century, the U.S. Supreme Court established the concept of non-obviousness as a condition for patentability, which subsequently became a component of patent laws around the world. See Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851).The U.S. Supreme Court also formally established other doctrines such as exceptions to patent eligibility. E.g., Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852). Many of these concepts now exist in some form in the patent laws of many other countries.
The current patent laws are codified in Title 35 of the U.S. Code. These federal patent laws preempt state law, so there are no state patents or state patent laws. Though some peripheral issues around assignments, deceptive enforcement practices, etc. are still subject to state laws.
International Patent Harmonization
In contemporary times, most countries have some form of patent available. Even the former Soviet Union had forms of patents and inventor’s certificates as incentives. Patents generally remain territorial rights, limited to a particular country or region. This means patent laws do vary by country. But there are numerous treaties that have sought to harmonize some aspects of patent law between countries.
The most important patent-related treaties currently in effect are the Patent Cooperation Treaty (PCT), The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provisions applicable to members of the World Trade Organization (WTO), and the Paris Convention for the Protection of Industrial Property. For design patents (only), the Hague Agreement Concerning the International Registration of Industrial Designs is also significant. These treaties establish the basis for claims of “priority” when filing counterpart patent applications in foreign countries (under the Paris Convention), for instance. Other, less significant treaties exist that deal with formalities, procedures, classification systems related to patent publications, etc.
The Future of Modern Patent Law
The history of patent laws is still being written. Laws and treaties are amended and changed over time. There is not unanimous agreement on the best way to administer patents (or to have them at all). The proper scope and administration of the patent system have longbeendebated. These are often policy debates over who should benefit from the patent system, how much, and in what ways. Yet such disputes may not be apparent because they are often framed technocratic language about specific procedures and legal standards that conceal or deny their normative policy effects. Whenever laws involve a “balance” of interests some people seek to tilt it more in their favor.
For example, long ago that led to the U.S. Patent Office devoting considerable resources to preparing an agricultural report beneficial to rural areas to offset the perceived subsidy to urban areas provided by the patent system — eventually the U.S. Department of Agriculture (USDA) was created as a spin off. Patent eligibility debates sometimes seem like efforts to obtain less limited monopolies or at least to expand them beyond technological inventions. Today, expansive use of patents has even been described as a neofeudal reversion (to a kind of pre-capitalist parcellated sovereignty).
Yet, despite various challenges and criticisms, the “modern” quid pro quo model that began in Venice still formally prevails as the justification for patent systems in much of the world, at least for now.
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Patenting inventions based around software, artificial intelligence (AI), machine learning, and the like presents a number of challenges. Of course, these types of inventions must be novel and non-obvious over what was already known (the “prior art”) to be patentable. That is no different for software patenting than for any other kind of invention. But software-based inventions frequently present concerns about patent eligibility as well as who is viewed as an inventor.
Software Patent Eligibility
Patent subject matter eligibility has been a highly contested area of patent law in recent decades. Because computers, software, and electronics in general have become widespread and the subject of considerable investment, patents on those sorts of technologies are potentially valuable. There are currently a large volume of computer software-related patent applications pursued every year.
Software-based invention patent eligibility is highly dependent on how the claims are written. Attempts to obtain a broad “preemptive” (or we might say greedy or “odious”) patent monopoly that exceeds (or is decoupled from) the quid pro quo of the inventor’s contribution to the useful arts raise the most concerns. Today’s software patent eligibility debates tend to be veiled policy arguments about that quid pro quo balance. That is, how broad a monopoly (if any) should be awarded through a patent and how much (or little) must the purported inventor disclose to get it? These questions go to the heart of modern patent law and its origins when feudalism gave way to capitalism.
The U.S. Supreme Court has said “abstract ideas” are not patent eligible. This narrows the types of software-based inventions that can be patented. There must be a substantial inventive concept beyond an underlying abstract idea. A trivial or superficial reference to something more concrete is not enough. It really has to be a technical contribution to the “useful arts”. Attempts to monopolize part of the economy simply by claiming to be the first to use computers, generically, is not enough. And a patent applicant simply agreeing to accept a monopoly over just one field of use for an abstract idea falls short of limiting patent claims a specific, patent-eligible inventive (technological) contribution.
In practice, this means a software-based invention consisting of only well-known concepts, mathematical calculations, data processing/manipulation/selection/presentation, what could otherwise be performed as purely mental steps, or the like plus merely generic computer hardware is generally not patent eligible. Software that provides no more than an allegedly improved user experience is also generally not patent eligible. What makes software saleable is not always a technological improvement. Such an improvement should solve a technical problem rather than a non-technical one, and it should consist of more than just a business model or business plan that happens to involve computers. Claims for software-based inventions should accordingly capture the essential part(s) that make a technical achievement possible. A claim reciting only abstract result + generic computer components may be broad but it stops short of capturing an inventive concept necessary for patent eligibility — reference to generic computerization is considered insignificant post-solution activity.
Software-based inventions at the level of particular coding and/or specific hardware interactions tend to be narrower. This leaves open the possibility that someone else could avoid patent claims narrowly draw to such things. Such claims therefore potentially provide a less valuable monopoly. Often times disputes about patent eligibility, and complaints about the state of the law, are really about a refusal to accept narrower rights commensurate with an actual technological contribution (if any). It is a historical quirk that software became widely used around the time that social transformations led some people to consider greed to be “good”. That may explain why patent eligibility issues so often arise around software (and biotechnology)—even though greed and selfishness have always played a role in patenting so this is matter of degree. The volume of that kind of patenting rose in step with changes in certain social and moral values held by larger and larger segments of business people while the patent laws stayed the same.
Sufficient Disclosure
Another requirement for patentability is that any patent application must provide an enabling disclosure that informs persons of ordinary skill in the art how to make and use the full scope of the invention claimed, as part of the quid pro quo underlying the patent system. Key technical requirements of a software-based invention must therefore be disclosed in sufficient detail and cannot be omitted or concealed behind vague “black box” placeholders that tend to merely identify functional results without meaningful details about specific technical mechanisms to achieve those results. For instance, referring to a “[software function] module” or “[software function] unit” in a block diagram figure without further explanation of what that “module” or “unit” is or how it operates is one potential type of deficiency.
An applicant can invoke means-plus-function (or step-plus-function) claim format to utilize certain functional language in a combination claim. This is frequently utilized for claiming inventions utilizing computer software. Means-plus-function claim language is construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Importantly, however, the specification (including the figures) must provide an adequatedisclosure of structure corresponding to the means-plus-function claim language elsewhere in the patent. Patentees cannot avoid providing a sufficient disclosure of the invention through means-plus-function claiming. Failure to sufficiently indicate the corresponding structure elsewhere in a patent renders a means-plus-function claim limitation deficient.
Inventors and Software
Something that repeatedly comes up when dealing with software patents is a disconnect around who is the “inventor”. Sometimes managers, executives, or other higher-level employees setting out objectives and requirements view themselves as inventors of something patentable. Yet they rely on others to actually write software code that meets those objectives and requirements. Implicitly that view sees what the coders do as not being inventive. But is that accurate?
First, a bit of a detour. I have dealt with software-related technologies when performing patent freedom-to-operate or clearance studies to evaluate the risk of infringing an existing patent. A rather curious thing happened numerous times. Managers and supervisors would again and again evade or delay responding to inquiries seeking technical information sufficient to compare the configuration and operation of the proposed design against an existing patent. Eventually it became clear why. They did not know how the software was structured. That was assigned to lower-level employees. At times, this was even outsourced to temporary contractors who were no longer around. The managers and supervisors I spoke to did not want to review the source code to find the information I was seeking. Also, they were reluctant to admit that they did already not know what was in the code. This was perhaps embarrassment from not knowing what employees reporting to them had previously done. But also it seemed like a reluctance to admit that what lower-level employees and contractors had worked out in source code was more important for patent law purposes than what fell in the supervisors’ direct area of knowledge.
This anecdote about patent clearance analyses highlights a pragmatic issue around software patenting. Some people take a very hierarchical view that considers software coding and similar tasks to be routine and unimportant. Those efforts are taken for granted. What is valued is setting objectives and requirements. Such tasks are often something reserved for people in top positions within an organization. It is usually chain-of-command authority that permits certain people to make those decisions rather than their technical insights. But this type of thinking can be at odds with the patent laws. General objectives and requirements for software development that merely articulate desired results are often limited to the realm of abstract ideas. The technical achievements and inventive contributions that establish how the desired results are achieved might really be at the level of coding and/or detailed software/hardware interactions that improve computer functioning. But those things might have been devised by different people than those setting general requirements.
When the wrong people are in the room talking about an “invention” and directing patenting efforts there is a greater risk of resultant patent claims being directed to ineligible subject matter. The people who made technological contributions that solve technical problems need to be involved. If the only people with input are those who are “in charge”—with the authority to set high-level goals, requirements, and investments for a project—it is more likely that only patent-ineligible “abstract ideas” will be captured. Those people might not really know about the real patent-eligible inventive contributions. Navigating these hurdles may require candid, up-front discussions about what matters under the patent laws and potentially challenging assumptions about corporate hierarchies and individual contributions.
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 U.S. patent applications, official communications from the U.S. Patent & Trademark Office (USPTO) may require a response by a particular deadline. Failing to respond will result in the application being abandoned. If more time is needed to respond, extensions of time may be available, with the payment of official extension of time fee(s). What follows is a brief explanation of how the USPTO handles extensions of time for responses involving patent applications.
The Basics of Response Periods and Availability of Extensions of Time
Statutes plus USPTO regulations and guidelines determine periods for reply and how those time limits are calculated for patent applications. These deadlines are based on the date an official communication is sent to the applicant. Office actions generally have a three (3) month response deadline (called a “shortened statutory period for reply”), extendable by up to three additional months upon payment of official monthly extension of time fees. The maximum time period to reply, with extension, is six (6) months.
However, some other types of actions, such as responses to restriction/election requirements, responses to deficiencies notices, and appeal briefs have shorter deadline periods but may allow for longer extensions. Certain appeal deadlines and non-standard extension requests under 37 C.F.R. §1.136(b) are subject to other limits or requirements than for ordinary extensions to respond to office actions, including a need to request leave for an extension within the original deadline period.
Issue fee payment deadlines after allowance are not extendable (37 C.F.R. §1.311). This means an applicant has only three (3) months after a notice of allowance is sent to pay the issue fee.
Weekends and Holidays
If a USPTO deadline falls on Saturday, Sunday, or a U.S. Federal holiday, the applicant can take action by the next succeeding secular or business day. In other words, a deadline on a weekend or a holiday is automatically extended to the next regular business day without needing a request for an extension of time.
Requesting an Extension of Time
Extensions of time for responding to patent application office actions are essentially freely available. They can be obtained simply by making a request (petition) and paying necessary official fees at the time a substantive response is filed. That is, in most cases, there is no need to request the extension of time within the original shortened period for reply (or otherwise in advance of a substantive response). Instead, the applicant files a response after the shortened period of reply, but within the maximum 6-month period, and at that point concurrently files an explicit request for extension along with payment of the extension fees.
Ordinary extensions of time are calculated monthly, based upon the month in which a substantive response is made. The extension of time fees increase with each subsequent month of extension. This means the fee for a 2-month extension is more than twice the fee for a 1-month extension, and so forth. The fees do not stack. So a response in the second month of extension requires only the 2-month extension fee, rather than both the 1-month and 2-month extension fees. The official extension fees also depend on the applicant’s entity size.
Special Considerations After a Final Office Action — Advisory Action Practice
For final office actions in patent cases, the USPTO has a special procedure involving advisory action practice that can help avoid extension of time fees. This amounts to an optional further shortened period with certain benefits. Filing a response to a final office action within two (2) months potentially allows further action to be taken (within the maximum 6-month response period) without an official extension of time. In practical terms, meeting the 2-month deadline is most useful when making after-final claim amendments but is perhaps less significant for other types of after-final actions. This requires some further explanation and context to fully understand.
Amendments after final are not entered as a matter of right. If an examiner believes that such an amendment raises “new issues” that require further searching, that is, an updated search for prior art, and there was no good and sufficient reason for not presenting the amendment earlier, then an advisory action is issued indicating that the amendment after final will not be entered. The applicant can then consider a request for continued examination (RCE), appeal, or other action to continue to seek a patent. However, such other possible actions are still subject to the original reply periods set by the final office action.
Because an advisory action does not establish a new response deadline, both the shorted and 6-month maximum response deadlines set by the final office action still apply. This means any further action after the end of the 3-month shortened statutory period requires an extension of time and associated fees. An important exception is that if the applicant responded by the 2-month deadline and the advisory action is sent by the USPTO after the shortened statutory period, the applicant can take action on that same day without an extension of time. This is essentially a limited exception to having to pay for an extension of time when an advisory action is issued.
The 2-month after final deadline is optional. An applicant can still take action within the shortened 3-month period without any extension of time, and after that with an extension of time. But submitting a claim amendment after final beyond the 2-month deadline increases the chances that extension of time fees may be required in order to take still further action—unless the amendment merely cancels claims, adopts allowable subject matter or an examiner suggestion, or corrects a minor error that does not require significant further examination.
Other Options Related to Deadlines and Extensions of Time
If a reply is not possible yet even with extensions of time, there may be other options to avoid losing rights. For instance, it is sometimes possible to file a new continuation application and allow the current one to go abandoned, although payment of extension of time fees in the parent case is still required if the continuation application is filed after the shortened statutory period. Moreover, if there was an error in the USPTO reporting an office action or the applicant did not receive it, or if the office action contains an error that affects the applicant’s ability to reply, filing a petition might be possible. An experienced U.S. patent attorney can advise about when and how such other options might be utilized.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
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