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New and Upcoming Changes in U.S. Patent & Trademark Law for 2023

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Important Developments

At the beginning of 2023, following a year in which new filings declined, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.

Patents

Reduced official fees for small and micro entities

A change in the U.S. patent laws governing fee reductions for small and micro entities was passed as a small part of a wide-ranging legislative budgetary package at the very end of 2022.  The relevant portion was titled the Unleashing American Innovators Act of 2022.  It is characteristic of U.S. politics that certain non-budgetary matters like this are appended to budgetary legislation shortly before passage during a holiday season with little public discussion.  These patent fee reductions therefore came as somewhat of a surprise.  As of December 29, 2022, most official patent fees are now discounted by 60% for small entity applicants (previously this was only a 50% reduction) and by 80% for micro entity applicants (previously this was only a 75% reduction).  These reductions apply to most official fees associated with initial filing fees for new applications, actions during examination (such as extension of time fees, request for continued examination [RCE] fees, etc.), as well as fees after grant such as maintenance fees.  The requirements to qualify as a small or micro entity are unchanged. 

The newly amended law further gives the USPTO power to impose fines for false assertions of small or micro entity status of no less than three (3) times the fee underpayment—with no pre-defined upper limit on that amount.  Such fines are not yet in effect and will require the USPTO to first issue implementing regulations that will establish exactly how they will be assessed.  However, depending on the scope of later regulations, this creates the possibility of significant penalties for innocent or negligent errors.  Historically, a fraudulent assertion of small or micro entity status, done knowingly or willingly with intent to deceive the USPTO, would qualify as inequitable conduct that renders the associated patent unenforceable.  But the appeals court responsible for all patent appeals set the threshold for the required intent to deceive extremely high.  While the possibility for unenforceability due to intentional fraud will remain, the USPTO will have new authority to impose fines if the assertion of entitlement to small or micro entity fee reductions was merely “false”.  There is no explicit statutory requirement for such a “false” assertion to be made with intent to deceive.  Thus, the USPTO can potentially impose fines without establishing intent to deceive, potentially including even good faith mistakes.  Failure to pay such fines will likely have an impact of the enforceability and/or abandonment/lapse of an associated patent or application.  It is unclear how the USPTO will discover or otherwise come to know about false assertions of entity size in order to subject applicants and patentees to fines.  It will therefore be important to monitor subsequent USPTO regulations regarding these fines and to see how existing safe harbor provisions for correction of good faith errors will be affected, if at all.  In the meantime, this highlights the need to accurately determine entity size status and to notify the USPTO at the appropriate time if entitlement to reduced fees is lost. 

Non-DOCX filing format requirements postponed (again)

The highly unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed until January 17, 2024 [Update: this deadline has been again postponed beyond a previously-announced April 3, 2023 and June 30, 2023 implementation deadlines].  Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications.   Additionally, the USPTO has extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format indefinitely, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many objections from U.S. patent practitioners and practitioner organizations. 

The non-DOCX surcharge is part of the USPTO’s plans to automate certain administrative tasks to reduce administrative overhead costs and staffing associated with legacy systems for processing application materials.  While touted as providing benefits to applicants and practitioners, the reality is that there are no meaningful benefits to applicants or practitioners.  But, alarmingly, the USPTO has pushed forward with its cost-cutting objectives despite substantial problems apparent with its new Patent Center platform used for DOCX format filings and its tendency to introduce errors.  In effect, the USPTO has prioritized budgetary cost-cutting over maintaining the integrity of the contents of newly filed patent applications.  This is what has troubled practitioners most of all. 

In brief, the Patent Center system alters uploaded DOCX-format patent application files and has been shown to introduce errors in the substantive content of some uploaded applications.  These errors occur only some of the time, but in a significant enough percentage of cases for it to matter.  This creates new burdens on applicants and their U.S. patent counsel to review uploaded applications to try to identify errors introduced by the USPTO’s electronic filing platform.  These burdens are particularly difficult to manage for U.S. applications based on a Paris Convention foreign priority claim, where U.S. counsel did not prepare the original application and is therefore less familiar with the intended contents.  In addition, the USPTO has greatly limited opportunities to correct errors resulting from the way its (proprietary) systems process, convert, “validate”, and alter uploaded application documents.  In many circumstances (when a priority claim cannot be relied upon), corrections must be made within one year of initial U.S. filing and will require a petition fee larger than the non-DOCX surcharge.  The USPTO has indicated it will deny petitions filed more than a year after initial filing seeking to correct errors that its proprietary computer systems introduced.  Moreover, the non-DOCX surcharge is essentially punitive.  It far exceeds the estimated administrative savings of $3.15 per application that the USPTO has been able to quantify.  Most problems with the roll-out of the non-DOCX surcharge are the result of the USPTO committing to adopt certain proprietary computer systems based on a cursory and inadequate initial investigation of alternatives, greatly misunderstanding the stability and capabilities of the DOCX file format (and its alleged status as a “standard”), and having unrealistic goals for software development associated with implementation of a new proprietary filing platform (and unrealistic projections of net cost savings), coupled with a Kafkaesque disregard for the burdens imposed on applicants and the general public by its actions. 

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

Hard copies of patents still being issued (for now)

[UPDATE: The USPTO has announced that electronic patent grants, now being called “eGrants”, will begin April 18, 2023. There will also be a transition period of unspecified duration during which paper ceremonial copies (with a certification statement and a special ribbon and seal) will still be issued in addition to an eGrant electronic copy. A paper presentation copy, certified copy, or ceremonial copy can be ordered for a fee after the transition period.] The USPTO previously announced that sometime in 2022 it would cease issuing paper patents and would issue only digital patents instead.  However, the USPTO has continued to issue hard copies of granted patents and has made no further announcements about the date after which only electronic patents will be issued.  Presumably, the USPTO will eventually cease to issue hard copies of patents (except upon an express request) but it is unclear exactly when that will occur.

Patent public search tool

The USPTO’s legacy open-access patent and published patent application search tools (PatFT and AppFT) have been retired. The PubEAST and PubWEST systems previously only available in-person (and to examiners) have also been retired.  In their place a new Patent Public Search tool is now freely available online. It is based on the old PubEAST/PubWEST tools.  Its new USOCR database allows U.S. patents granted before 1970 to be keyword searched—the old PatFT system previously had a 1970 cut-off for keyword searching. The launch of this new tool was rather awkward, with little training or instructional information initially provided on how to use it.  But, since its launch, training guides and frequently asked questions (FAQs) have become available.  This tool currently exists with two different interfaces:  Patent Public Search Basic (PPUBS Basic) and an advanced search. Both allow U.S. patents and published applications to be searched simultaneously.

The Basic search interface allows granted U.S. patents and published patent applications to be fetched by number, and allows some keyword-based searches, but returns only PDF copies. 

As the name implies, the advanced search includes advanced search functionality.  Although the advanced interface is highly esoteric and non-intuitive, and the interface may not display properly on all computers (in particular, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens like laptops).  The advanced interface is currently the only way the USPTO provides “full text” of published patent documents.  PDF image 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.  Toggling that button allows switching between text or PDF image displays of a given patent document.   

Fetching a particular patent or published application by number is surprisingly difficult with the “advanced” interface.  A given patent can be queried using the “.pn.” field code or by typing in an “external search” URL to a web browser. But expect some frustration because these “external search” URLs do not seem to consistently work at all.

An alternative way to reach a particular U.S. patent or published application is to utilize the Patent Center interface and enter a patent or published patent application number.  From the resultant record, there are links available to the Patent Public Search text versions of the published application and granted patent (if any) under the Patent Center “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, you might say too many, using it may still be easier than the other alternatives available through the USPTO.

More information about using Patent Public Search is available here.

More U.S. patent filing information

Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim.

Trademarks

Shortened response periods in effect

The time period for responding to U.S. trademark office actions is now only three (3) months.  This shortened response period is indicated in new office actions.  Applicants can, however, request a single 3-month extension of time by paying an official fee (currently $125 if filed electronically). An extension must be expressly requested by the original 3-month deadline.  This shortened response period does not apply to Madrid Protocol extensions, which will still enjoy a full 6-month office action response period.  Moreover, shortened response periods will not apply to post-registration office actions until October 7, 2023. 

Unlimited window for expungement requests still open

Any party may request cancellation by expungement of some or all of the goods or services in a U.S. trademark registration because the registrant never used the mark in commerce with those goods or services.  Normally an expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, a temporarily unlimited expungement filing period is in effect until December 27, 2023 during which expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit.  In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023.  Expungement proceedings are available for all U.S. registrations but are especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required prior to registration.  Additional general information about expungement proceedings is available here, and a listing of reexamination and expungement requests made to date is available here. 

More U.S. trademark filing information

Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications.

January 2023
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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
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Articles

Assignor Estoppel for Patent Assignments

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The following article is available at SSRN:

“Assignor Estoppel for Patent Assignments: A Shifting Landscape”

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.

Photo of Austen Zuege

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
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Domain Names Q&A

Who Owns Rights to a Domain Name?

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Domain names are used as addresses on the Internet via “name servers” under the domain name system (DNS). A domain name is “example” in the URL “www.example.com.” For generic top-level domains (gTLDs) such as .com, .net, .org, and the like, domain registrations occur through various individual registrars on essentially a first-come, first-served basis—country-code top-level domains (ccTLDs) are treated slightly differently. Registration is not true “ownership” in the domain name but more like a lease. It is merely a contractual right to control use of the domain, in particular which server it resolves to—somewhat like assigning a phone number to a particular phone. It is more accurate to talk of holding domain rights than owning domains outright.

The way domains are registered can raise question over who actually holds the registration rights. So, how is the identity of the rights holder established for gTLDs?

Registrant Name and Registrant Organization Indications

When a gTLD domain is registered through a registrar, the indication of the registrant’s name and organization, if applicable, determines who holds the registration rights. Registration is really a contractual agreement between the registrant and the registrar. Questions of who holds the registration rights are thus a matter of contract law, in the context of registrar policies including those that registrars are required to follow by ICANN—the entity that oversees the international domain name system as a whole. Therefore, this question turns into one about how registrars (and ICANN) take in information that identifies the registrant when establish a domain registration contract.

Registration requires a name to be identified in a “Registrant Name” field. Inclusion of an individual’s name in that field, or a generic pseudo name like Domain Administrator or DNS Admin, will not give a corporate entity formal rights. A corporate entity holds domain registration rights only if that corporation’s legal name is currently indicated in the “Registrant Name” and/or “Registrant Organization” field(s) of the registrar’s records. But an employee or contractor/vendor registering a domain for an employer or client might list a personal name in the “Registrant Name” field and omit information in the “Registrant Organization” field necessary to make a corporate entity employer/client the formal registrant, for instance. Even inadvertent errors and omissions can change who is considered the rights holder. Such errors and omissions frequently occur because people registering domains often do not understand the legal significance of particular name/organization/contact data fields. Other times such omissions occur on purpose so that another entity can claim rights in the registration.

As an ICANN representative has stated:

“if the Registrant Organization field lists the name of an existing legal entity, that legal entity will be considered the registrant of the domain name. However, when the Registrant Organization field is empty, or when the name listed in it does not correspond to an actual legal entity (like ‘Domain Admin’, for example), the actual registrant will be whomever is listed in the Registrant Name field.

This situation happens sometimes when employees register names for their employers and don’t include the appropriate information in the corresponding fields. They may leave Registrant Organization blank, or include the name of their department and their own name in the field reserved for Registrant Name, turning themselves into the actual registrants of their company’s domains. In these cases, organizations face the risk of having the registrations disputed by their employees, who can claim the rights to the domains and attempt to transfer them away, on the basis that the particular organization is not a party to the agreement between the registrar and the registrant.”

Carlos Alvarez, “Good Practices for the Registration and Administration of Domain Name Portfolios (Part II)” ICANN Blog (June 23, 2017)

When domain registration is left to a lower lever employee, that employee may intentionally or unintentionally make him- or herself (individually) the registrant. This can happen out of sheer ignorance about the significance of filling out the “Registrant Name” and “Registrant Organization” fields. Similarly, when a vendor or outside contractor handles registrations, such as a web site designer or IT service provider, the vendor may list itself (or its employee) as the registrant, and thus the holder of the domain rights. This might be benign and might be easily remedied by raising the issue with the employee or vendor. Or it might be what was agreed to in a prior vendor service contract. Though in some situations this can lead to an employee, ex-employee, or vendor holding a domain registration hostage. Although a vendor’s refusal to transfer domain rights in light of a related payment for services dispute is sometimes permitted.

Registrars will generally permit use of generic pseudo names in domain registration fields. For example, “IT Manager”, “DNS Admin”, and “Domain Administrator” are examples of pseudo names that can be utilized instead of individual legal names for various fields, including technical, administrative, and billing contact fields (such contact names do not establish who holds rights to the registration, but can establish who has authority to control aspects of it). Use of a pseudo name is generally permissible as long as a legal corporate name, such as “Acme, Inc.”, is also used in appropriate fields, such as for the “Registrant Name” and/or “Registrant Organization”.

Also, registration information can be changed after initial registration. So it is also possible for someone to later change rights holder information resulting in loss of rights to the domain registration, or at least loss of control of it and the associated potential for disruption. This can include removal of “Registrant Organization” information or changing such information to that of another entity. Such changes may stem from nefarious motives or simply incompetence.

Control Matters

When push comes to shove, domain registration is mainly about control of access to the registration’s information and technical settings. Control of such settings hinges on control of the login credentials with the registrar responsible for the registration. Anyone with those login credentials can potentially change registrant name or contact information, change the login credentials, transfer the registration to another person or entity, or redirect the domain to resolve to a different server IP address hosting a different web site. This can constitute domain “hijacking”. Conversely, anyone (including an employer) lacking those login credentials cannot make changes to reflect the “true” or “correct” holder when there is a mistake or omission.

Consider implementing best practice procedures to protect domain registrations, such as following the guidance of the ICANN Security and Stability Advisory Committee set forth in “A Registrant’s Guide to Protecting Domain Name Registration Accounts” (SAC 044) and “Measures to Protect Domain Registration Services Against Exploitation or Misuse” (SAC 040). For instance, as suggested in SAC 044, consider identifying separate administrative, technical, and billing contacts to avoid having all communications routed through a single point of contact that may be more susceptible to hijacking. Also, corporate registrants should consider policies against using individual (legal) names in registration records and instead use only the formal corporate holder name plus pseudo names like “Domain Admin”, to the extent permitted by the registrar.

Conclusion

Strictly speaking, international organizations controlling the entire Internet domain name system “own” all domain names. Individual domain registrants merely hold contractual rights to use them, subject to contractual terms and obligations agreed to during registration (but sometimes forgotten or ignored). The identity of the registrant is specified with a registrar. It is the registrant information that is provided—or omitted—during the registration process that initially determines who formally holds the rights. Accurately providing that registrant information as intended and maintaining control over access credentials to modify such information and other technical settings are the keys to establishing rights and maintaining smooth functioning of the domain.

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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
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Patents Q&A

How Should U.S. Patent Applications Be Formatted for Filing in DOCX Format?

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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 not apply 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 (stated only in a FAQ answer seemingly published only after the surcharge went into effect) that a preliminary amendment filed on the same day as an application subject to the DOCX requirement must also be in DOCX format. This places tremendous burdens on applicants. For one, the USPTO’s Patent Center electronic filing system does not permit DOCX format preliminary amendments to be filed simultaneously with a new application (!). Instead, applicants must make a separate preliminary amendment submission in DOCX. However, doing so is only possible if the original application is processed by USPTO systems to allow a follow-on submission, which in some instances takes many hours. 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. But doing so without the non-DOCX surcharge may be impractical or impossible. 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. Therefore, by imposing a non-DOCX surcharge to preliminary amendments tends to place applicants in a difficult, no-win situation, with no good options. And lastly, due to the USPTO deleting “tracked changes” in uploaded DOCX files, requirements to show (preliminary) amendments with marked-up text is made substantially more difficult for 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
  • Avoid use of highly customized application templates with macros or uncommon/complex embedded formatting settings
  • 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.

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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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Agreements Copyrights Patents Q&A Trademarks

How Can I Correct An Assignment?

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Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document.

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b)) and the U.S. Copyright Office (in Compendium 2308.1) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

  1. Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
  2. Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
  3. Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

Scanned excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials
Excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive (nunc pro tunc) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed (nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

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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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Q&A Trademarks

How Does a Trademark Office Action Extension of Time Work?

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For U.S. federal trademark applications, the standard deadline to make a response to an office action is three (3) months from the date the office action was sent. Failing to respond by the deadline will result in abandonment of the trademark application. However, it is possible to obtain an extension of time to respond.

How to Obtain a Trademark Extension of Time

An extension of time to take action following a trademark office action—whether non-final or final—requires filing an explicit request for an extension by the original 3-month deadline and paying an official fee (currently $125 if filed electronically). The official fee is a fixed amount and it does not matter how many classes of goods or services are in the application. The extension is basically automatically granted upon filing the request and paying the fee. It provides a single 3-month extension of the original deadline to make a substantive response or appeal. In other words, after obtaining an extension the applicant is able to substantively respond to the office action, or to appeal from a final office action, up to six (6) months from the date the office action was sent.

Only one extension of each office action deadline is possible, however. Six (6) months is the maximum period to take action when such a response is necessary. Although it is still possible to separately obtain extensions for each of the different deadlines associated with different office actions.

Also, the extensions discussed here only apply to office action response deadlines. For instance, extensions of time to file a statement of use (SOU) following allowance of an intent-to-use (ITU) application are treated differently—those are for six (6) month periods and up to five (5) such extensions are available.

Additionally, the shortened 3-month response deadline, and the possibility of requesting a 3-month extension of time, will only arise for post-registration office actions beginning sometime in the spring or early summer of 2024. Until then, post-registration office actions will have 6-month response deadlines.

Extensions Inapplicable to Madrid Protocol Extensions

For Madrid Protocol extension applications based on foreign priority rights the response deadline for an office action is instead always six (6) months. There are no extensions available to that 6-month response deadline in Madrid Protocol extension trademark applications.

Missed Deadlines

If a response deadline is missed, it may be possible to file a petition to revive an application with the payment of an official fee. Alternatively, an applicant can often re-apply and start the application process over again after abandonment.

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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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Q&A

What Are the Origins of Modern Patent Law?

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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 long been debated.  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.

Need assistance with a patent, trademark, or other IP issue?

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Patents Q&A

What Are Common Issues Around Software Patenting?

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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 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.

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.

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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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Patents Q&A

What Patent Application Extensions of Time Are Available?

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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.

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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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Patents Q&A

What Are the Costs to Obtain a Patent?

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The total costs to obtain a patent and to maintain it vary. This is true because patenting costs in different jurisdictions vary but is also due to each patent by its very nature being directed to a unique invention. There is always a speculative aspect to patenting that means there are no guarantees of success or efficiency. Uncertainty about the total expenses can make planning and budgeting more difficult. However, upfront budget planning can be aided by grouping typical costs into three categories:

  1. Preparation and Filing
  2. Prosecution (Examination)
  3. Issuance and Maintenance

These categories of costs generally arise one after another and not all at once. Each of them is discussed in more detail below. The present discussion is not meant to provide specific price ranges. Rather, the goal is to understand what sorts of fees are generally foreseeable and when they arise. Hopefully this helps applicants to request desired cost estimates from a patent practitioner, and to understand what such estimates do—and do not—cover. Though sometimes a good analogy is that the total cost to obtain a utility patent can be comparable to buying a car, running anywhere from approximately $15,000 to $50,000 or more.

Preparation and Filing

The first and often largest category of expenses is the preparation and filing of a new patent application. These costs can be broken in two: official filing fees and professional fees for a patent attorney. Additionally, because patent rights are territorial, filing related patent applications in multiple countries or jurisdictions will generate costs associated with each of them, though not necessarily all at the exact same time. Translation costs may be significant for foreign filings.

Official Filing Fees

There are official government fees required when filing a patent application. These official fees are paid to a given patent office. There are basic filing fees, plus the possibility of extra claim fees, multiple dependent claim fees, application size fees, late filing surcharges, and other miscellaneous additional official fees and surcharges. Strictly speaking, the basic filing fees can include search and examination fees, which in some countries may be deferred for a period of time.

Only a certain number of claims can be included without paying additional official fees in most countries. This means the total official fees will depend on the content and length of a given application, including the number of claims. This also means that the need for extra claim fees may not be known until the application and claims are drafted. For U.S. patent applications there are extra claim fees for having more than twenty (20) total claims and/or more than three (3) independent claims.

In the U.S., official filing fees also depend on the entity size of the patent applicant. Discounted rates for many official fees are available to applicants who qualify as a small entity or micro entity. Therefore, to determine the official fees for a new U.S. patent application, it is necessary to first determine the entity size. Keep in mind that the highest, undiscounted (large entity) fees will apply if a discounted entity size status (small or micro) cannot be established.

The type of patent application filed can also affect the applicable fees. For instance, provisional, utility (non-provisional), design, and PCT international applications are possible and the official fees vary for each.

Professional Fees (Attorney Fees)

A patent application is customized and specially-prepared for each invention. The costs to have a patent attorney prepare a new application are often one of the single largest in the entire process of obtaining a patent. These costs vary widely. Some important factors are the particular patent attorney’s billing rate as well as the complexity of the invention and the scope of desired patent coverage.

The patenting process is complex. Attorney’s fees for patent application preparation and drafting reflect the need to anticipate how a patent will later be examined and possibly later enforced against an infringer. Sometimes extra effort to prepare a better initial application can result in lower costs later on during examination and/or enforcement. Many times a well-drafted patent application can also help enhance the scope of coverage and the chances of obtaining a granted patent.

Conducting a patentability search and analysis prior to drafting a new application can also be helpful. This is usually not legally required. But a patentability search has many benefits, including the potential to avoid further costs if the invention is determined to be unpatentable or helping to allow preparation of a better patent application through knowledge of the closest prior art (potentially reducing prosecution costs). It does, however, add to the total costs of preparing and filing a new patent application.

Prosecution (Examination)

In most countries, including the USA, patent applications must undergo an official pre-grant examination that determines if the claimed invention is patentable. It may be many months or years after initial filing before examination actually begins. The vast majority of patent applications receive a rejection indicating that the application cannot be granted as a patent for one or more reasons. Such rejections and objections are made in office actions. The applicant can then respond to try to establish that the claimed invention is patentable. This back-and-forth is referred to as patent “prosecution”.

The number of office actions and the amount of effort to respond to them varies from one application to the next. It is common to have at least one or two—the average in the U.S. is between two and three. A given office action often does not require payment of any further official fees. But there can be official fees required at times during examination, such as for extensions of time to respond, to add extra claims, to extend or reopen examination (e.g., a request for continued examination), to file an appeal or petition, etc. The professional fees will vary depending upon the patent attorney’s rates and the total amount of effort involved.

For budgeting purposes, the total costs of prosecution are perhaps the most variable and least easy to predict. Though some non-zero prosecution expenses should be expected. It may be easiest to estimate these costs per office action and response, and to plan for at least two or three such office actions and responses. Further examination costs can always be avoided by abandoning an application, although this results in loss of rights.

Prosecution costs tend to vary depending on what invention is being claimed. The closer the invention is to the prior art the more effort may be required to articulate what is patentable. Moreover, seeking a broader scope of protection frequently translates into higher prosecution costs. Of course, broader patent claims are usually more valuable than narrower ones, which may make those higher costs worthwhile. Patent applicants have a good deal of control over their patenting strategy and its effect on prosecution costs. But some aspects are not fully under an applicant’s control.

In some countries, but not in the U.S, official annuity fees may be due on a yearly basis in order to keep an application active during examination. These annuity fees vary by jurisdiction.

Filing additional continuing (or divisional) patent applications is also possible while a given application is pending. Such optional additional filings carry their own costs. These may be worthwhile if a given application encompasses multiple inventions, and can arise following a restriction requirement.

Issuance and Maintenance

There are generally official issuance or grant fees required in order to obtain a patent after an application is determined to be patentable. In the USA, this is called an issue fee. In other countries these fees may have a different name or be structured differently, such as validations of a European patent in one or more participating countries. The official fees must be paid and there is typically some professional fee to have a patent attorney handle the payment and related matters like forwarding the granted patent.

After a patent is granted, additional fees are later required in order to keep the patent in force. In the U.S., official maintenance fees must periodically be paid by the 4th, 8th, and 12th year of a given patent’s term. The amounts of these official fees increase over the term of the patent. There are also late payment surcharges. The patent will lapse if a maintenance fee is not paid. However, maintenance fees are not required for U.S. design patents.

In most other countries, post-grant annuity fees are required on a yearly basis to keep a patent in force. Annuity fees are like maintenance fees just on a different schedule.

Photo of Austen Zuege

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