Author: Austen Zuege

Willful Patent Infringement: Lingering Questions

Post author By Austen Zuege

A version of this article previously appeared in Landslide magazine (Vol. 14, Issue 4, June/July 2022), published by the ABA Intellectual Property Law Section.

Introduction

What are the minimum requirements to establish enhanced damages for patent infringement after the passage of the America Invents Act (AIA) and the U.S. Supreme Court’s decision in Halo, and what evidence can be presented on this point? Post-Halo cases reveal areas of ambiguity and dispute. Some dispute involves willfulness theories falling close to the line between reckless conduct sufficient to establish willfulness and merely negligent conduct that is not willful. But a lingering ambiguity is how 35 U.S.C. § 298 may exclude from willful patent infringement certain conduct that might be considered reckless—and thus willful—in other areas of tort law. For whatever reason, § 298 has received little attention or treatment, which has even led to decisions contrary to that statutory provision.

A Brief History of Willfulness

Let us begin with some context for how willfulness has evolved in patent law.[i] Damages enhancement is governed by 35 U.S.C. § 284, even though the term “willful” does not explicitly appear there. In the early 1980s, the Federal Circuit established an affirmative duty of due care and an adverse inference of willfulness if the accused infringer did not both obtain advice of counsel and waive privilege to present an advice of counsel defense.[ii] Decades later, the Federal Circuit abolished the adverse inference in Knorr-Bremse.[iii] Then it abolished the affirmative duty of due care in Seagate, substituting a two-prong willfulness analysis requiring “objective recklessness” as a prerequisite.[iv] In the aftermath of those cases, the AIA introduced § 298, which prohibits use of the failure to obtain advice of counsel or make an advice of counsel defense to establish willfulness (or inducement).[v]

In 2016, the Supreme Court in Halo threw out the “objective recklessness” prerequisite, finding its “inelastic constraints” insufficient to allow courts to punish “the full range of culpable behavior.”[vi] The Court held that “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.”[vii] Therefore, “[t]he subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless.”[viii] The Court discussed how reckless conduct supports punitive damages where willful intent is required while merely negligent conduct does not, clarifying that “a person is reckless if he acts ‘knowing or having reason to know of facts which would lead a reasonable man to realize’ his actions are unreasonably risky.”[ix] The abrogated “objective recklessness” threshold had allowed classically reckless conduct to be exonerated by after-the-fact rationalizations, which meant that some reckless conduct was inappropriately shielded from punitive enhanced damages.[x]

Later Federal Circuit cases have interpreted Halo as abrogating the “objective recklessness” requirement in a relatively narrow way but leaving intact much other pre-Halo case law,[xi] which presents challenges for anyone trying to parse out the way older cases may have been abrogated only in part but are potentially still controlling as to other aspects. The Federal Circuit has maintained that “willfulness” is a question of intent involving the accused infringer’s state of mind that is for the finder of fact (jury) to decide,[xii] and knowledge of the asserted patent is a prerequisite to a finding of willfulness.[xiii] After willfulness is established, the question of enhancement of damages is then a question for the court (rather than jury) to decide[xiv]—though a willfulness verdict does not automatically entitle the patentee to enhanced damages.[xv] But a court’s discretionary moral judgment regarding enhancement does not depend on any preceding factual finding of a particular state of mind or level of intent of the infringer.[xvi]

District court decisions post-Halo have begun to explore the minimum requirements to plead and then introduce evidence of willfulness, though the Federal Circuit has not yet reached some of the new theories definitively. These various new theories address what it means to subjectively “have reason to know” that accused conduct presents an unreasonable risk of patent infringement in the absence of direct evidence that the accused party actually knew about the patent and that there was a high probability its conduct infringed, as well as the effect of the accused taking affirmative steps to avoid learning of such facts.[xvii]

New Theories of Willful Infringement

First, a number of district courts have found “willful blindness” to be an acceptable theory of willful patent infringement. Motiva from the Eastern District of Texas is perhaps the most widely known of these cases, holding that “[s]ince the Supreme Court has explained that willful blindness is a substitute for actual knowledge in the context of infringement, it follows that willful blindness is also a substitute for actual knowledge with respect to willful infringement.”[xviii] Willful blindness has two basic requirements: (1) the accused must subjectively believe that there is a high probability that a fact exists, and (2) the accused must take deliberate actions to avoid learning of that fact; these two requirements mean willful blindness has a limited scope that surpasses recklessness and negligence.[xix] To avoid dismissal, patentees must make “plausible” willfulness allegations regarding both requirements for willful blindness.[xx]

What has generated much discussion about willfulness theories relying on willful blindness is the role of “no patent review” corporate policies that (at least on paper) bar employees from reviewing competitor patents.[xxi] Yet the mere existence of such a “no patent review” policy is not per se sufficient to plead willful blindness for willful infringement unless there is also a plausible allegation that the accused party subjectively believed a high probability of patent infringement existed.[xxii] In practical terms, this means there must be something more than simply a blanket corporate policy that applies to any and all (competitor) patents and that “something more” must plausibly suggest a culpable state of mind with regard to infringement of the asserted patent.

Second, some courts have addressed other theories—distinct from “willful blindness”—that an accused infringer should have reasonably known about the asserted patent. For example, district courts are divided about whether actual knowledge of an unasserted family-related patent coupled with an allegation that the accused should have investigated that patent family to discover the asserted patent—such as a broader continuation or broadening reissue—is sufficient to support willfulness.[xxiii] At times, these other theories appear uncomfortably close to the old, abrogated affirmative duty of due care.[xxiv] These other theories seem less stringent and more expansive than willful blindness, partly because they fall close to the boundary between negligence and recklessness but also because decisions on these theories often contain little or no discussion of why the accused had reason to know that there was infringement of a later-issued patent and not merely reason to know that the later-asserted patent existed.[xxv]

Statutory Limits on Evidence of Willfulness Under § 298

But what about § 298? A curious feature of many post-Halo willfulness cases is how little that section introduced by the AIA is discussed or even cited by courts when dealing with issues to which it directly relates, namely the relevance of evidence under the second Read factor: “whether the infringer . . . investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed.”[xxvi] This is most troubling when courts proffer reasoning based on case law that was abrogated by § 298 (if not also by Seagate). Section 298 states:

“The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.”[xxvii]

There can be no question that § 298 excludes certain evidence from use to prove willfulness, including (1) the failure to consult an attorney and (2) the decision to maintain privilege over advice received from counsel. Yet an asymmetrical framework remains: the accused infringer is still free to obtain a legal opinion and later voluntarily present an advice of counsel defense based on that legal advice,[xxviii] but a “decision not to seek an advice-of-counsel defense is legally irrelevant under 35 U.S.C. § 298.”[xxix]

The key effect of § 298’s framework has to be that “having reason to know” for a (recklessness) willfulness theory must be limited to what the accused infringer reasonably should have known at the time without the assistance of counsel. The scope of the accused party’s (subjective) knowledge of the intricacies of patent law will vary considerably, though. For instance, lay parties might reasonably believe that broader later-issuing patents or reissues are not likely or that something like prosecution laches would apply to them.[xxx] This subjective knowledge may be difficult to even infer from circumstantial evidence in situations in which the accused did obtain advice of counsel but chooses not to waive privilege and not to make an advice of counsel defense based on that advice. And mere speculation on this point is generally inadequate. Moreover, as one district court held, attempts to suggest what the accused knew based on privileged communications not in evidence may be improper as a “disguised” attempt to circumvent the limits set forth in § 298.[xxxi] In a somewhat counterintuitive way, § 298 provides two distinct incentives to obtain advice of counsel because an accused party can either waive privilege in such advice and present an advice of counsel defense or maintain privilege and later potentially shield certain state of mind inquiries or inferences implicating that (maintained) privilege.[xxxii]

Does a Duty of Due Care Still Exist? And Does It Matter?

Seagate abrogated the affirmative duty of due care; but when Halo later abrogated the “objective recklessness” standard, a question arose as to the impact of Halo’s abrogation of the abrogation of the duty of due care.[xxxiii] The Federal Circuit has not explicitly weighed in on this point, and no Federal Circuit case since Halo mentions the term “duty of due care” at all. On the one hand, § 298 makes the existence or nonexistence of a judicially created duty of due care less important. But a real question remains about how patentee use of the second Read factor against an accused infringer may now be abrogated in whole or part. Can an accused party’s failure to conduct a nonlegal investigation of some sort regarding an asserted patent be used to establish willfulness today?

Worth mentioning at the outset is the Federal Circuit’s Broadcom case regarding induced infringement. There, despite the abolishment of the duty of due care, “[b]ecause opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer ‘knew or should have known’ that its actions would cause another to directly infringe, . . . such evidence remains relevant.”[xxxiv] This is not at all straightforward. At first blush, failure to meet an abolished/nonexistent duty of due care hardly seems relevant, logically if not legally. But in any event, the passage of § 298 abrogated precedent like Broadcom with regard to failure to obtain advice of counsel (or to present such a defense).[xxxv] But if the duty of due care only ever pertained to advice of counsel, then its abrogation (by statute or case law) might have left intact some separate due inquiry obligation under the second Read factor.[xxxvi]

Tending to complicate matters here are cases reaching conclusions plainly contrary to § 298, or reaching conclusions as to the boundaries and implications of that section without meaningful explanation. For instance, one district court ruled that “failure to produce . . . an opinion for trial can be considered as a factor in the jury’s determination of willfulness.”[xxxvii] Astoundingly, that court discussed old cases without any reference to their abrogation, and its ruling ended up permitting use of statutorily barred evidence for willfulness.[xxxviii] Moreover, a nonprecedential Federal Circuit decision discussed the second Read factor and found that a lack of investigation of asserted patents provided some evidence of willfulness, reaching that conclusion without discussing legal relevance limits under § 298.[xxxix]

Justice Breyer’s concurrence in Halo suggested that a nonlawyer analysis of an asserted patent might be enough to show a lack of willfulness,[xl] though the majority opinion was silent about that scenario. But that very issue came up in a district court case that held a willfulness verdict to be supported by evidence that “years of lucrative infringing sales [occurred] after failing to respond to the . . . licensing letter with a minimally adequate analysis of whether a license would be necessary,” which the court said was not prohibited by § 298 because the jury was instructed to disregard such matters, although the accused did try to present evidence of a nonlawyer invalidity analysis that the court excluded at trial.[xli] This illustrates the problem of courts too often suggesting what is in effect an adverse inference in jury instructions and then trying to immediately unring the bell by stating that no adverse inference of willfulness is permitted.

Yet a contradiction often remains. A more defensible formulation is that a jury’s inferences of knowledge of the asserted patent and of infringement can support a willfulness finding in the absence of countervailing evidence. That is, an accused infringer simply runs a greater risk of a willfulness finding if no advice of counsel defense or the like is pursued to rebut willfulness allegations because a jury can properly infer minimally sufficient knowledge and intent even in the absence of direct evidence on those points, and this does not require going so far as to assign any probative value to a failure to act. There is an important difference between willfulness being inferred from unrebutted circumstantial evidence and the failure to act (e.g., to investigate or seek legal advice) itself being treated as positive evidence of willfulness.

It is fair to distinguish the possibility of the accused making a nonlawyer analysis or inquiry defense to a charge of willfulness from an affirmative duty to do so. On its face, § 298 bars patentees from arguing about failures to obtain or present “advice of counsel” evidence.[xlii] But nothing in the literal text of § 298 bars evidence of a failure to conduct a lay investigation of an affirmative claim of infringement. Yet excluding evidence of nonlawyer investigations or analyses by the accused runs against Justice Breyer’s Halo concurrence, if not also the implicit framework of § 298.

In these senses, the question of what evidence is relevant and what, if any, quasi “duty of due care” investigation/analysis requirement remains under the second Read factor becomes significant. While cases have relied on investigative failures to support willfulness, the reasoning and justifications for such conclusions are often shaky at best or simply stated in a confusing manner. Courts will need to sort this out more definitively. But, for their part, patent litigation counsel need to be more consciously aware of these issues so they can be raised and argued when appropriate.

Key Takeaways

Post-Halo, the Federal Circuit applies a two-step process to claims for enhanced patent infringement damages under § 284: willfulness is initially a question for the finder of fact, and then subsequent enhancement, if any, is at the court’s discretion.
Failure to obtain or present an opinion of counsel cannot be used to prove willfulness, though obtaining an opinion can still be valuable to rebut charges of willful infringement; however, the value or necessity of nonattorney patent infringement and validity investigations is not yet clear.
“Willful blindness” has been accepted by many district courts as a willfulness theory, but at the outset it requires plausible pleadings about the accused’s subjective belief that there was a high probability that the asserted patent both existed and was infringed and that the accused took deliberate actions to avoid learning of those facts; “no patent review” policies may or may not meet all of those requirements.
District courts are divided over whether willfulness can be plausibly supported by a failure to monitor or investigate a patent family after learning about an unasserted patent in that family (in the absence of affirmative avoidance of facts akin to willful blindness).
Relevance limits under § 298 have often been overlooked by courts but should be considered for evidentiary objections and motion practice.

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

[i]. See, e.g., Brandon M. Reed, “Who Determines What Is Egregious? Judge or Jury: Enhanced Damages after Halo v. Pulse,” 34 Ga. St. U. L. Rev. 389, 393–96 (2018).

[ii]. Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389–90 (Fed. Cir. 1983) (“Where . . . a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing,” including “the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity.”).

[iii]. Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1345–46 (Fed. Cir. 2004) (en banc) (“Although there continues to be ‘an affirmative duty of due care to avoid infringement of the known patent rights of others,’ the failure to obtain an exculpatory opinion of counsel shall no longer provide an adverse inference or evidentiary presumption that such an opinion would have been unfavorable.” (citation omitted)).

[iv]. In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).

[v]. 35 U.S.C. § 298; see also Carson Optical Inc. v. eBay Inc., 202 F. Supp. 3d 247, 260–61 (E.D.N.Y. 2016) (§ 298 applies if the action is commenced on or after January 14, 2013); Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. ___, ___, 136 S. Ct. 1923, 1936–37 (2016) (Breyer, J., concurring).

[vi]. Halo, 136 S. Ct. at 1933–34.

[vii]. Id. at 1933.

[viii]. Id. (citing Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1757 (2014)).

[ix]. Id.

[x]. Id. at 1932–35.

[xi]. E.g., WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016); WesternGeco L.L.C. v. ION Geophysical Corp., 837 F.3d 1358, 1362 (Fed. Cir. 2016), reinstated, 913 F.3d 1067, 1075 (Fed. Cir. 2019); see also Halo, 136 S. Ct. at 1934–35.

[xii]. WBIP, 829 F.3d at 1341; Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d 1332, 1353 (Fed. Cir. 2018) (“[T]he entire willfulness determination is to be decided by the jury.”); Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1377–79 (Fed. Cir. 2020).

[xiii]. WBIP, 829 F.3d at 1341; see also SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1310 n.6 (Fed. Cir. 2019) (when willfulness began is a factual issue).

[xiv]. Seventh Amendment questions remain regarding holdings that a jury cannot determine egregiousness of conduct. Compare WBIP, 829 F.3d at 1341 n.13, and Eko, 946 F.3d at 1378, with Halo, 136 S. Ct. at 1933 and n.*. See also United States v. Murdock, 290 U.S. 389, 394 (1933) (“willfulness” is a set of states of mind), overruled in part on other grounds by Murphy v. Waterfront Comm’n of N.Y. Harbor, 378 U.S. 52 (1964); Howard Wisnia & Thomas Jackman, “Reconsidering the Standard for Enhanced Damages in Patent Cases in View of Recent Guidance from the Supreme Court,” 31 Santa Clara High Tech. L.J. 461, 473–76 (2015). Yet punitive enhancement is a discretionary moral judgment, not a factual question. See Smith v. Wade, 461 U.S. 30, 52 (1983).

[xv]. Halo, 136 S. Ct. at 1933; Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1382 (Fed. Cir. 2017).

[xvi]. But questions arise where the Federal Circuit appears to suggest that certain levels of intent can support willfulness but not enhanced damages, which seems contrary to Halo. See SRI Int’l, Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1329–30 (Fed. Cir. 2021); see also Austen Zuege, “The Federal Circuit’s Standard for Enhanced Damages,” blue over gray (Oct. 12, 2021). This apparent discrepancy might allow courts to moot a jury’s willfulness finding. See Schwendimann v. Arkwright Advanced Coating, Inc., No. 11-cv-820, slip. op. at 50 (D. Minn. July 30, 2018).

[xvii]. See, e.g., Bos. Sci. Corp. v. Nevro Corp., 415 F. Supp. 3d 482, 495 (D. Del. 2019).

[xviii]. Motiva Pats., LLC v. Sony Corp., 408 F. Supp. 3d 819, 837 (E.D. Tex. 2019) (citing Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 769 (2011)).

[xix]. Global-Tech, 563 U.S. at 769–70; Motiva, 408 F. Supp. 3d at 837 (“By definition, willful avoidance requires more than mere recklessness—and Halo holds that recklessness alone is enough to show willful infringement.”).

[xx]. Bos. Sci., 415 F. Supp. 3d at 494–95; Nonend Inventions, N.V. v. Apple, Inc., No. 2:15-cv-466, 2016 WL 1253740, at *3 (E.D. Tex. Mar. 11, 2016), adopted, No. 2:15-cv-466, 2016 WL 1244973 (E.D. Tex. Mar. 30, 2016).

[xxi]. E.g., Charlotte Jacobsen et al., “Does Willful Blindness Beget Enhanced Patent Damages?,” Law360 (Feb. 28, 2020).

[xxii]. Nonend, 2016 WL 1253740, at *3; VLSI Tech. LLC v. Intel Corp., No. 18-cv-966, 2019 WL 1349468, at *2 (D. Del. Mar. 26, 2019); Ansell Healthcare Prods. LLC v. Reckitt Benckiser LLC, No. 15-cv-915, 2018 WL 620968, at *7 (D. Del. Jan. 30, 2018).

[xxiii]. Compare Vasudevan Software, Inc. v. TIBCO Software Inc., No. C 11-06638, 2012 WL 1831543, at *3 (N.D. Cal. May 18, 2012) (“requisite knowledge of the patent allegedly infringed simply cannot be inferred from mere knowledge of other patents,” such as “the [parent] patent, or, more generally, [the plaintiff’s] ‘patent portfolio’”), and Maxell, Ltd. v. Apple Inc., No. 5:19-cv-00036, slip op. at 9-10 (E.D. Tex. Oct. 23, 2019) (dismissing willfulness allegation based only on knowledge of application and not ultimately issued patent or knowledge of allowance of application), with SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., No. 1:18-cv-05427, slip op. at 7–9 (S.D.N.Y. Aug. 29, 2019) (rejecting Vasudevan), and Oxygenator Water Techs., Inc. v. Tennant Co., No. 20-cv-358, slip op. at 8–13 (D. Minn. Aug. 7, 2020), and SiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 609 (D. Mass. 2018).

[xxiv]. See, e.g., Schwendimann, No. 11-cv-820, slip. op. at 42 (duty of due care remains abrogated); Biedermann Techs. GmbH & Co. KG v. K2M, Inc., 528 F. Supp. 3d 407, 429 n.17 (E.D. Va. 2021) (noting abrogation issues and not intending to impose duty of due care; allegations were similar to willful blindness).

[xxv]. E.g., Oxygenator Water Techs., No. 20-cv-358, slip op. at 8–13 (passing over willful blindness to find failure to monitor/investigate willfulness theory plausible); Meridian Mfg., Inc. v. C & B Mfg., Inc., 340 F. Supp. 3d 808, 844 (N.D. Iowa 2018). But see Halo, 136 S. Ct. at 1936 (Breyer, J., concurring) (“‘[W]illful misconduct’ do[es] not mean that a court may award enhanced damages simply because the evidence shows that the infringer knew about the patent and nothing more.”).

[xxvi]. Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992), abrogated in part on other grounds by Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 (1996).

[xxvii]. 35 U.S.C. § 298.

[xxviii]. Omega Pats., LLC v. CalAmp Corp., 920 F.3d 1337, 1353 (Fed. Cir. 2019); Ultratec, Inc. v. Sorenson Commc’ns, Inc., No. 13-cv-346, 2014 WL 4976596, at *2 (W.D. Wis. Oct. 3, 2014).

[xxix]. SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1309 (Fed. Cir. 2019); see also Halo, 136 S. Ct. at 1936–37.

[xxx]. See Cancer Rsch. Tech. Ltd. v. Barr Labs., Inc., 625 F.3d 724, 728–32 (Fed. Cir. 2010).

[xxxi]. Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co., No. 15-C-1067, slip. op. at 5–6 (N.D. Ill. Mar. 8, 2019).

[xxxii]. See id. In contrast, enhanced damages were affirmed where the infringer delayed obtaining advice of counsel for years. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1371 (Fed. Cir. 2017). There, legal advice was (eventually) obtained and privilege waived, but the delay was held against the infringer.

[xxxiii]. See supra note xxiv.

[xxxiv]. Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 699 (Fed. Cir. 2008) (holding that “failure to procure . . . an opinion [of counsel] may be probative of [subjective] intent”).

[xxxv]. 35 U.S.C. § 298.

[xxxvi]. See SRI Int’l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1464–65 (Fed. Cir. 1997) (“[T]he primary consideration is whether the infringer, acting in good faith and upon due inquiry, had sound reason to believe that it had the right to act in the manner that was found to be infringing.” (emphasis added)). Broadcom is still cited without mentioning its statutory abrogation. Omega Pats., 920 F.3d at 1352–53. Compare Broadcom, 543 F.3d at 699, with 35 U.S.C. § 298.

[xxxvii]. Visteon Glob. Techs., Inc. v. Garmin Int’l, Inc., No. 10-cv-10578, slip op. at 13–17, 2016 U.S. Dist. LEXIS 109564 (E.D. Mich. Aug. 18, 2016).

[xxxviii]. Compare id., with 35 U.S.C. § 298.

[xxxix]. WCM Inds., Inc. v. IPS Corp., 721 F. App’x 959, 970, 970 n.4 (Fed. Cir. 2018) (nonprecedential) (questioning cases suggesting no duty to predict what claims will issue from a pending patent applicable because prosecution histories are now normally publicly available); see also SIMO Holdings, No. 1:18-cv-05427, slip. op. at 5–7; 35 U.S.C. §§ 154(d), 284.

[xl]. Halo, 136 S. Ct. at 1936 (Breyer, J., concurring); see also Schwendimann, No. 11-cv-820, slip. op. at 42–43; Idenix Pharms. LLC v. Gilead Scis., Inc., 271 F. Supp. 3d 694, 699 (D. Del. 2017). But see SSL Servs., LLC v. Citrix Sys., Inc., 769 F.3d 1073, 1092 (Fed. Cir. 2014) (excluding lay testimony of belief in invalidity and noninfringement to rebut willfulness).

[xli]. Milwaukee Elec. Tool Corp. v. Snap-On Inc., 288 F. Supp. 3d 872, 886–88, 890–91 (E.D. Wis. 2017) (citing SSL, 769 F.3d at 1092).

[xlii]. Section 298 might only bar this evidence to initially prove willfulness but not its use in a subsequent enhancement determination.

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

Patents Q&A

What Is an Election Requirement?

Post author By Austen Zuege

Election of species requirements are part of U.S. patent restriction practice. Examiners often caption these matters an “election/restriction” or the like. Election requirements deal with how genus and species inventions are disclosed and claimed. This differs from regular restriction practice, which requires an applicant to elect one group of claims from among different groups of claims to independent or distinct inventions identified by an examiner. Instead, an election requirement deals with an application in which there is a generic (genus) invention claimed as well as more than one species of invention within that genus claimed. In this sense, an election requirement is a special type of restriction. It is possible to have both types of restrictions, by groups of claims and by species, issued at the same time.

The Basics of an Election Requirement

More than one species of an invention, “not to exceed a reasonable number,” may be specifically claimed in different claims in a single U.S. patent application, provided that the application includes (i) an allowable claim generic to all the claimed species and (ii) all the claims to species in excess of one are written in dependent form or otherwise include all the limitations of the generic claim. But where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive.

A species restriction acts as a kind of cap on the amount of searching that a U.S. patent examiner has to do for a given application, limiting it to a reasonable number of species. It is possible for applicants to include dozens or even hundreds disclosed species embodiments in a single application. Genus/species election practice helps prevent examiners from being overwhelmed by the presence of voluminous numbers of species. Election requirements may arise where the examiner suspects that the generic claim will not be patentable/allowable but the number of disclosed species makes searching them all impractical.

A key aspect of election requirements is that they are based on an examiner identifying different disclosures—often by figure, but sometimes with reference to the detailed description of the specification. In reply, the applicant then has to elect one species and identify the claims that read on that elected species and those that are generic. Perhaps the most important point about elections of species is that the claims will be restricted to the elected species if no claim to the genus is found to be allowable. So, really, an election requirement is the examiner saying (contingently) that if there is ultimately no allowable generic claim, then there will be claims to independent and distinct inventions (species) and a serious examination burden will be present. This ties the election of disclosed species to a restriction between claims in the application.

Election requirements can arise in just about any patent application. However, election requirements are somewhat more common for chemical, biotech, and similar types of inventions. Election of species requires are a creation of USPTO regulations and are not explicitly provided for in statutory law, other than in relation to regular (statutory) restriction practice.

What is a “Species”?

Species always refer to the different embodiments of a generic (or genus) invention. In contrast, claims are definitions or descriptions of inventions. Claims themselves are never species as such. The scope of a given claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a given claim may encompass two or more of the disclosed embodiments (and thus be designated a generic or genus claim). Species may be either independent or related as disclosed in a given application.

As an example, consider a mechanical invention with a first part connected to a second part. In one species embodiment, they are connected by a mechanical fastener (e.g., bolt, screw, rivet, etc.). In another species embodiment, they are connected via an applied electromagnetic field. In yet another species embodiment, they are connected via a chemical reaction that occurs between the parts when treated in a chemical bath. These embodiments might be claimed in a mutually exclusive way, and searching one may not capture prior art relevant to the others. Although the there may be a generic invention to the first and second parts being connected, regardless of how they are connected.

What is “Generic” or a “Genus”?

Initially, it is important to distinguish between generic or genus inventions as disclosed, on one hand, and generic claims, on the other. Election of species practice begins with identification of disclosed species. However, generic disclosures do not matter much for election requirements and replies. Rather, election practice only really cares about generic claims, in relation to specific species claims.

What constitutes a generic claim depends upon the specific species claims that are present in a given application. The USPTO says that, in general, a generic claim should require no material element in addition to those required by the specific species claims, and each of the specific species claims must require all the limitations of the generic claim. If you have claims that are mutually exclusive, and there are material elements recited in one claim but not another, there may not be a generic claim and instead there may simply be independent or distinct claimed inventions—in other words something subject to conventional restriction practice.

PCT National Phase Entry Applications

Regular election/restriction practice does not apply to PCT national phase entry applications. Instead, a unity of invention standard governs, which requires having a common or corresponding special technical feature that defines a contribution over the prior art. However, U.S. examiners can still issue requirements to elect a particular species in national phase applications and to withdraw non-generic claims to unelected species, and the procedures are ultimately similar. Applicants must still make elections and rejoinder of withdrawn claims is still possible. This means that the ultimate effects are similar though the terminology differs somewhat. If anything, there is slightly greater leeway for applicants to amend the claims to keep them together under the unity of invention standard.

If a U.S. examiner applies conventional election/restriction practice requirements to PCT national phase entry applications, that is a procedural error that should be called to the examiner’s attention. That sort of mistake does happen from time to time.

Keep in mind that prior indications by the international search authority or international preliminary examining authority in the international phase of a PCT application are not binding in the national phase. That means that even if a prior PCT written opinion indicated that claims posses unity of invention, the U.S. examiner could disagree and still issue a unity of invention election of species restriction in the national phase.

Requirements for an Election of Species Response

Patent applicants are required to elect a species for examination in reply to an election requirement and to identify the claim(s) that read on the elected species, as well as any generic claim(s). A reply (or response) is considered incomplete if no election of a particular species is made.

To the extent that a restriction between groups of claims to independent or distinct claimed inventions was also made, that election by claim group needs to be made in addition to the species election. Those different elections effectively stack on top of each other. The only claims that will be examined are those that are part of both the elected species requirement and the elected group of claims. In other words, the claims that will be examined will only be those that are the net result of the two elections (by claim group and by species).

An election of species can be either “with traverse” or “without traverse”. “Traverse” means that the applicant is arguing that the restriction requirement is incorrect or improper and should be reconsidered and withdrawn in whole or part. Traversing a species election/restriction requirement requires actually making an argument about why the species restriction is wrong. An election that is made subject to a traversal is called a provisional election. Traversing the election requirement is necessary to later file a petition to challenge it. However, it is highly uncommon to traverse an election of species requirement.

The applicant can also make an assertion about which claim(s) are generic that may differ from the examiner’s indication of the generic claim(s). This is often an critical aspect of responding to the election requirement.

Strategic Considerations for Election Requirement Responses

There are a few strategic considerations the go into deciding how to reply to an election of species requirement. Consider the following, for example:

What is the most commercially important embodiment of the invention, or which embodiment has the most commercial potential? Many times this is the most important consideration.
What generic claims are present? An examiner will generally indicate which claim(s) he or she thinks are currently generic. Applicants might not agree, and might indicate that additional or different claims are generic to all claimed species. Indications of generic claims, as well as indications of which specific species claims read on the elected species, can have significant impacts on later enforcement of any resultant patent. Such indications, or a failure to argue that certain claims are generic, may play a significant role in claim construction and the ability of competitors to avoid or design-around granted claims. These indications may also impact the scope and availability of the doctrine of equivalents.
Which embodiment is covered by the most claims? All else being equal, sometimes an applicant might make an election simply to retain the largest number of claims.
How does the election of species requirement relate to an accompanying restriction by groups of claims? Examiners will often issue both a restriction by identified groups of claims, and also require election of a disclosed species. Because only the claims that are encompassed by both elections will be examined, this sometimes favors making certain elections that will retain a reasonable number of claims.
Might claims be amended? One or more claims might be amended in order to make them generic, to depend from a generic claim, and/or to make provide a linking claim. Claim amendments might be used to try to facilitate later rejoinder of claims directed to an unelected species.
Are you willing to file one or more divisional application(s) to pursue unelected claims? A election/restriction requirement is an indication that filing unelected claims in a new divisional application will prohibit a double patenting rejection in the later-filed divisional. However, whether or not the applicant is willing to incur further expense associated with a divisional filing (or perhaps multiple divisionals) may influence which species is elected in response to the restriction. It is possible to defer a divisional filing decision so long as the current application remains pending. This may allow an opportunity for claim rejoinder to be considered. Ensure that there is a clear demarcation between restricted species and claims to preserve divisional filing safe harbor protections against double patenting. Keep in mind both short-term (e.g., costs to traverse and/or petition a restriction) and long-term costs (e.g., divisional filing and maintenance fees) associated with each option.
Which species have the best chance of patentability? This may not be known. But, depending on the scope of the prior art or potential patent-eligibility issues, certain disclosed embodiments and corresponding specific species claims might face either easier or more difficult examinations. Sometimes an applicant has a sense of which claimed embodiment(s) are the most unique.
Is it important to obtain a patent very quickly, or not? Certain elections of species may make examination take longer, such as if the election results in reassignment of the application to a different examiner in a different group art unit. Although the effect on the speed of examination may be speculative at the time of the species election.

When strategizing how to respond to an election of species requirement, the main issues are usually which species to elect and which claims to designate as being elected species-specific claims or generic.

It is often not advisable to challenge an election of species requirement by traversing it. Doing so usually involves admitting that the species are not patentably distinct, that is, that they are obvious variations of each other. That may limit the sorts of arguments that can be made later on to distinguish prior art, etc. Of course, there are situations in which examiners identify species incorrectly (e.g., incorrectly identifying different views of a single embodiment as different species), in which case traversal may be appropriate and worthwhile. Traversal is necessary to preserve the right to later petition against the restriction, however.

An experienced patent attorney can help an applicant assess possible election requirement response strategies for any given case.

Petitions Against Election Requirements

It is possible to file a petition against a election/restriction requirement that has been made final. Such petitions are decided by technology center directors, as opposed to the Office of Petitions or some other centralized USPTO authority. However, such petitions may not be worth the effort and cost in attorney fees–unless, for instance, the applicant faces a need for multiple divisional applications with a large total cost. Importantly, such a petition against an election requirement may be deferred until after final action on or allowance of claims to the invention elected, but must be filed no later than an appeal.

In order to preserve the ability to file a petition against an election requirement, it is necessary to traverse the election requirement in the initial response. Failing to traverse a restriction waives the opportunity to later file a petition against the election/restriction requirement.

Rejoinder

Unelected, withdrawn claims can potentially be rejoined upon the allowance of an elected claim. Claims that depend from or otherwise require all the limitations of an allowable claim are eligible for rejoinder. If a generic claim is allowed, then the election requirement effectively disappears and all claims are rejoined by default. Rejoinder is also possible when there is a “linking claim”. Rejoinder practice means that unelected claims might still have a chance to be included in a granted patent despite a prior restriction.

Contact Austen

Tags Patent Prosecution, Patents, Restriction/Election Requirements (& Unity of Invention)

Patents Q&A

How Should I Respond to a Restriction Requirement?

Post author By Austen Zuege

Introduction

Patent examiners may issue a restriction requirement against a pending patent application. Restriction is permitted under U.S. patent law if two or more independent and distinct inventions are claimed in one patent application. Knowing how to respond to a restriction requirement, and what types of responses are possible, first requires understanding what they are. There are some strategic and practical considerations that make some types of responses more worthwhile than others. What makes the most sense will depend on the particular claims involved, the basis of the restriction, and the application’s patenting strategy. Experienced U.S. patent attorneys tend to have a sense or intuition about what sorts of restriction requirements are proper and which sorts of responses are worthwhile in any given case.

Restriction practice centers around how much work the USPTO has to do to examine a given application. Applicants are sometimes frustrated by restriction requirements that have the appearance of an examiner trying to avoid work or to game the “count” system that is used internally by the USPTO to track examiner productivity, by forcing the applicant to file a divisional application. At times, the rationales given for restrictions can seem unconvincing or circular. On the other hand, applicants seeking to avoid the official fees normally associated with filing separate patent applications for independent and distinct inventions that necessitate separate examination are rightfully subject to restriction requirements.

The Basics of a Restriction Requirement

A conventional restriction requirement means the examiner believes there are multiple independent or distinct inventions being claimed. A restriction requirement will identify different inventions by groups of claims. The examiner is insisting that the applicant pick one claimed invention, by group, to be substantively examined for patentability. That is called making an election.

Claims are “independent” if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. This type of restriction is straightforward. It does not come up that often.

Restrictions between related but “distinct” inventions are more common. These restrictions are closely tied to prohibitions against double patenting. The precise requirements for a proper distinctness restriction will depend on the types of claims involved. A lower standard applies to restrict out inventions in different statutory categories—generally referring to the difference between apparatus and method/process claims. However, for applications with so-called combination and subcombination claims (e.g., claims to an overall device and to a subassembly usable in it), or with claims to related products or related processes (i.e., claims in the same statutory category), a higher standard is applied. Further, even when claims are distinct, the examiner must also show that examining those claims together would pose a serious burden. This refers to the burden to search for prior art and evaluate the claimed invention against the search results.

Where the claims of an application define the same essential characteristics of a single disclosed embodiment of an invention, restriction between them should never be required. This is because the claims are not directed to distinct inventions. Rather, they are simply different definitions of the same disclosed subject matter, merely varying in breadth or scope of definition. Many if not most patent applications do disclose multiple embodiments, which can raise questions about whether particular claims are directed to the same or different embodiments.

Examiners have considerable discretion about issuing restriction requirements. Even when a restriction requirement could be made, an examiner is not affirmatively required to do so. There is considerable variation in how restriction practice is utilized by different examiners, and also between different technology centers and group art units at the USPTO.

Following a restriction requirement, the applicant is required to elect one group of claim(s) for examination. Unelected (or nonelected) claims will be withdrawn and will not be substantively examined. Importantly, an applicant will generally be prohibited from later adding claims to an invention independent or distinct from the elected claims. There is generally no opportunity to change your election later on. Although “rejoinder” may permit previously unelected claims to be allowed if they depend from or otherwise require all the limitations of an allowable claim. Rejoinder is discussed further below.

Unelected claims can remain in an application, denoted as “withdrawn”. Examiners essentially ignore withdrawn claims. It is possible to amend withdrawn claims if desired. However, withdrawn claims must either be rejoined or canceled when an application is in condition for allowance. If the elected claims are patentable, it is common for patent examiners to call counsel of record to request approval of an examiner’s amendment to cancel withdrawn claims, in order to permit a notice of allowance to be sent. If restriction was not traversed, examiners can also unilaterally cancel withdrawn claims at allowance by way of an examiner’s amendment.

Election of species requirements are related to but distinct from basic restriction requirements among groups of claims. Considerations for election requirements are discussed elsewhere. If present, they require a separate and distinct response by the applicant in addition to a responsive election of a group of claims.

PCT National Phase Entry Applications

Regular restriction practice does not apply to PCT national phase entry applications. Instead, a unity of invention standard governs, which requires having a common or corresponding special technical feature that defines a contribution over the prior art. However, U.S. examiners can still issue requirements to elect a particular invention in national phase applications and withdraw unelected claims and the procedures are similar. Applicants must still make elections and rejoinder of withdrawn claims is still possible. This means that the ultimate effects are similar though the terminology differs somewhat. If anything, there is slightly greater leeway for applicants to amend the claims to keep them together under the unity of invention standard.

If a U.S. examiner applies conventional restriction practice requirements to PCT national phase entry applications, that is a procedural error that should be called to the examiner’s attention. That sort of mistake does happen from time to time.

However, it is important to note that prior indications by the international search authority or international preliminary examining authority in the international phase of a PCT application are not binding in the national phase. That means that even if a prior PCT written opinion indicated that claims posses unity of invention, the U.S. examiner could disagree and still issue a unity of invention restriction in the national phase.

Requirements for Replying to a Restriction Requirement

Patent applicants are required to elect a claim group for examination in reply to a restriction requirement. A reply (or response) is considered incomplete if no election is made.

An election can be either “with traverse” or “without traverse”. “Traverse” means that the applicant is arguing that the restriction requirement is incorrect or improper and should be reconsidered and withdrawn in whole or part. An election of claims made with traverse is called a provisional election. Traversing a restriction requires actually making an argument about why the restriction requirement is wrong. Simply saying “with traverse” without making a substantive argument will be treated as an election without traverse.

Once restriction is required, a nonelected claim is only “withdrawn” once the examiner withdraws it from consideration. When initially responding to a restriction requirement, the examiner has not yet withdrawn any claims (and has not considered any traversal arguments). So when reproducing the claims in a restriction reply, such as to make claim amendments, the “withdrawn” identifier should not yet be used. But in any subsequent amendments, following the examiner’s indication that claims are withdrawn in an office action, the withdrawn claims withdrawn must be indicated as “withdrawn”.

Strategic Considerations for Restriction Responses

There are a few strategic considerations the go into deciding how to reply to a restriction requirement. Consider the following, for example:

What is the most commercially important aspect of the invention, and which group of claim(s) best covers that aspect? Many times this is the most important consideration.
How many claims are in each group (i.e., which group contains more claims)? Sometimes electing a group with more or the most claims might provide better value, in the sense of having a larger number of existing claims examined. Although the elected group of claims could potentially be expanded by adding new claims and/or amending existing claims.
Is the restriction between apparatus and method/process claims? Elections in this situation raise special considerations that sometimes make election of apparatus claims more desirable. If the apparatus claims are elected, rejoinder of the unelected claims to a method of making and/or using the product might be later rejoined and granted. However, if the method/process claims are elected, then rejoinder of the apparatus claims is not permitted.
Might claims be amended? One or more independent claims might be amended to recite a common essential inventive feature as part of a traversal argument to try to make the restriction moot. Alternatively, or additionally, new claims might be added, such as by canceling unelected claims and adding new dependent claims to the elected group (canceling unelected claims may avoid official extra claim fees in this scenario). Unelected, withdrawn claims can also potentially be amended later, to try to facilitate rejoinder. However, claim amendments might have prosecution history estoppel implications and claim amendments cannot have the effect of contradicting a prior election.
Are you willing to file one or more divisional application(s) to pursue unelected claims? A restriction requirement is an indication that filing unelected claims in a new divisional application will prohibit a double patenting rejection in the later-filed divisional. However, whether or not the applicant is willing to incur further expense associated with a divisional filing (or perhaps multiple divisionals) may influence which claims are elected in response to the restriction. It is possible to defer a divisional filing decision so long as the current application remains pending. This may allow an opportunity for claim rejoinder to be considered. Ensure that there is a clear demarcation between restricted claims to preserve divisional filing safe harbor protections against double patenting, particularly if an election of species is involved. Keep in mind both short-term (e.g., costs to traverse and/or petition a restriction) and long-term costs (e.g., divisional filing and maintenance fees) associated with each option.
Which group(s) of claims have the best chance of patentability? This may not be known. But, depending on the scope of the prior art or potential patent-eligibility issues, certain groups of claims might face easier or more difficult examinations. If the restriction requirement cites prior art as justification for restriction, that cited art may inform how to make a claim election. If the restriction alludes to prior art without specifically citing any references, it may be possible to call the examiner to obtain further information about the particular prior art that the examiner has in mind.
Did you intend different claims to cover different inventions, or simply want different claims to have distinct scope? In some situations, the claims may have been originally drafted to purposefully have significantly different scope. In that case, traversing the restriction might be contrary to an existing patenting strategy.
Is it important to obtain a patent very quickly, or not? Certain elections or traversals of restriction may make examination take longer, such as if they result in an application being reassigned to a different examiner in a different group art unit. However, the effect on the speed of examination may be speculative at the time of the claim election.
Has the examiner made a procedural error or omission in the restriction? For instance, the MPEP says, “Examiners must provide reasons and/or examples to support conclusions . . . .” As another example, an examiner might list nonexistent or inapplicable search classifications. Moreover, examiners may state grounds for restriction that are contrary to statutory, regulatory, or MPEP provisions. Examiners might apply domestic restriction practice to a PCT national phase entry application where unity of invention instead applies, for example.

Sometimes it is not worthwhile to challenge a questionable restriction by traversing it. Doing so requires effort. It may be more expedient and cost-effective to pursue other options, such as by amending claims and/or by cancelling claims and filing them in a new divisional application. Examiners often maintain rejections regardless of any traversal arguments, and will simply adjust the stated rationale slightly. Patent attorneys sometimes consider traversing a restriction to be a waste of time. Though if an examiner has made a substantial mistake by overlooking or misstating claim language, for instance, traversal may be worthwhile. Also, traversal is necessary to preserve the right to later petition against the restriction.

Design patent applications with multiple claimed embodiments also present unique questions with regard to the effect of an election on the doctrine of equivalents, because the concepts of literal infringement and equivalents infringement are intertwined for design patents.

An experienced patent attorney can help an applicant assess possible restriction response strategies for any given case.

Petitions Against Restriction Requirements

It is possible to file a petition against a restriction that has been made final. Such petitions are decided by technology center directors, as opposed to the Office of Petitions or some other centralized USPTO authority. However, such petitions may not be worth the effort and cost in attorney fees—unless, for instance, the applicant faces a need for multiple divisionals with a large total cost. Importantly, such a petition against a restriction may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than an appeal.

In order to preserve the ability to file a petition against a restriction, it is necessary to traverse the restriction in the initial response. Failing to traverse a restriction waives the opportunity to later file a petition against that restriction.

Rejoinder

Unelected, withdrawn claims can potentially be rejoined upon the allowance of an elected claim. Claims that depend from or otherwise require all the limitations of an allowable claim are eligible for rejoinder. Rejoinder is also possible when there is a “linking claim”. Rejoinder practice means that unelected claims might still have a chance to be included in a granted patent despite a prior restriction.

What is unintuitive about rejoinder practice, however, is that when a restriction is between product/apparatus claims and claims to a method of making and/or using the product, rejoinder is only possible if the product or apparatus claims are elected. Election of the method claims will not allow later rejoinder of the unelected product/apparatus claims. This means withdrawn method claims might be keep in the application for possible later rejoinder but, when method claims are elected, withdrawn apparatus claims might instead be cancelled at an appropriate time. This is a somewhat arbitrary aspect of USPTO procedure, but nonetheless needs to be considered at the time an election is made.

Contact Austen

Tags Patent Prosecution, Patents, Restriction/Election Requirements (& Unity of Invention)

Patents Q&A

What Is a Restriction Requirement?

Post author By Austen Zuege

The Basics of a Restriction Requirement

Patent examiners may issue a restriction requirement against a pending patent application. If two or more independent and distinct inventions are claimed in one patent application, the USPTO may require the application to be restricted to one of the inventions. A conventional restriction requirement means the examiner believes there are multiple independent or distinct inventions being claimed. The examiner will identify the different inventions by groups of claims. The applicant must then pick one claimed invention to be substantively examined for patentability. That is called making an election.

Every requirement to restrict has two aspects: (A) the reasons why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction was not required. The second aspect refers to the burden to search for prior art and evaluate the claimed invention against the search results.

A restriction requirement is not considered to be an office action on the merits. That is, it is not considered to be a substantive determination as to patentability. Restriction requirements normally arise before a first office action on the merits. However, it is also possible for restriction to arise after a first action on the merits, such as where an applicant later adds or amends claims to recite an independent or distinct invention from what was originally presented.

Examiners will frequently call the applicant’s counsel of record by phone to present a restriction requirement. This use of oral elections is meant to speed up examination and avoid the need to send written documents back-and-forth.

Election of species requirements are related to but distinct from restriction requirements among claims. Election requirements for disclosed species are discussed in detail elsewhere.

Determining Whether Claims Are Independent or Distinct

For purposes of restriction practice, claims are “independent” if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. This type of restriction is straightforward. It does not come up that often. An example of independent inventions is an application that discloses and claims an invention for a dental prosthetic device and another, unrelated invention for a chemical compound for polishing shoes.

For example, a device disclosed in a patent application might have a unique mechanical actuator, a special chemical composition for a coating on the actuator, and a unique electronic controller. If each of those aspects is set forth in separate and distinct independent claims, it is understandable that a single examiner may not have expertise in mechanical, chemical, and electrical technologies to examiner each of them together. That is true even when each of the distinct invention is related in the sense of being usable together in the same device. But claiming distinct inventions in a way that means they could be used separately, without the use of the other inventions, presents the possibility of a restriction.

After a Restriction Requirement Is Issued

Restriction requirements can be important for later determinations. Going forward, the examiner is bound by the restriction. For instance, an examiner cannot later claim that certain claim limitations have no patentable significance when a prior restriction requirement insisted otherwise. A restriction requirement also means that double patenting is inapplicable. This means an applicant can file a new divisional application to unelected claims without receiving a double patenting rejection, avoiding the need for a terminal disclaimer. This might result in patent term adjustment that extends the expiration of the divisional patent beyond that of the earlier (parent) application.

Considerations for how to respond to a restriction of claims in a patent application are discussed here.

Why Are Restriction Requirements Made?

Because applicants can prepare patent applications any way they choose, it is possible a given application could include multiple inventions. The existence of U.S. restriction practice is the other side of the coin to the availability of divisional applications. A divisional application allows an applicant to file a further patent application to another disclosed invention. Restriction practice is meant to prevent applicants from imposing unreasonable examination demands on patent examiners. Although if an examiner chooses not to restrict claims in a given application that has no effect on validity of a resultant patent.

Examiners have considerable discretion about issuing restriction requirements. There is considerable variation in how restriction practice is utilized by different examiners, and also between different art units or technology centers at the USPTO.

Applicants are sometimes frustrated by restriction requirements. They can have the appearance of an examiner trying to avoid work or to game the “count” system, which the USPTO uses internally to track examiner productivity, by forcing the applicant to file a divisional application. At times, rationales given for restrictions can seem unconvincing or circular. Also, while the USPTO’s guidance (see, e.g., MPEP 801.02) states that restriction is permitted when there are either independent or distinct inventions claimed, some argue that the patent statutes (and corresponding regulations) should be interpreted to permit restriction only among claimed inventions that are both independent and distinct. Others complain that the USPTO has overstepped its authority by allowing an alleged serious “examination burden” to justify restriction without showing a serious “search burden”. On the other hand, applicants seeking to avoid official fees normally associated with filing separate patent applications for independent and distinct inventions are rightfully subject to restriction requirements.

PCT National Phase Entry Applications

It is important to note that the USPTO can make an independent determination of unity of invention. Prior indications by the international search authority or international preliminary examining authority in the international phase of a PCT application are not binding in the national phase. That means that even if a prior PCT written opinion indicated that claims posses unity of invention, the U.S. examiner could disagree and still issue a unity of invention restriction in the national phase.

Contact Austen

Tags Patent Prosecution, Patents, Restriction/Election Requirements (& Unity of Invention)

Copyrights Patents Q&A Trade Secrets Trademarks

What Should I Do If Another Business is Infringing My IP?

Post author By Austen Zuege

An appropriate response to infringement (or misappropriation) will depend on which type(s) of intellectual property (IP) rights are involved. While some forms of infringement can be enforced by the government, prosecutors rarely take up disputes between competitor businesses. This leaves it up to the IP owner to pursue a civil remedy. Therefore, the first step is generally to conduct your own investigation to ascertain your IP ownership rights, ascertain the identity of the infringing party or parties, preserve evidence of the infringement, and perform a legal analysis to confirm that the conduct in question is prohibited by law. Following an investigation, a cease & desist (demand) letter could be sent, a lawsuit initiated, or possibly other action taken.

Tip: Consider implementing a proactive monitoring program to search for and identify potential infringement of your IP. No one else will identify infringement for you.

As part of your initial investigation of infringement, the legal analysis should consider:

do you have a chain of title to the IP (that is, can you prove ownership)?
does the conduct fall within the scope of your enforceable exclusive rights or is the conduct permitted by law (such as a “fair use” under copyright law)?
did the other party have permission? , perhaps impliedly
what jurisdiction(s) is the infringer located in?
what remedies are available for the type of infringement involved?

Following an initial investigation, which should be performed with the assistance of a knowledgeable attorney, it is common to send a cease & desist or other demand letter. This puts the infringer on notice of the claim of infringement, which can remove innocent infringer defenses going forward, trigger the accrual of damages, etc. A letter might be sent to a publisher, distributor, web host, etc. as well, which can have significance under safe harbor provisions for some types of IP. If a letter is ineffective, or simply not desired, litigation or certain non-litigation action should be considered.

As to litigation, patent and copyright actions are handled exclusively by U.S. federal courts and generally require having a patent or copyright registration (at least for copyrightable United States works) before filing suit. Trademark, trade secret, cybersquatting, and false advertising actions can sometimes be brought in either federal or state court. A trademark registration is not required to bring suit in the U.S. A statute of limitations or equitable limits may apply, such as a 3-year limit for copyright infringement claims and a 6-year limit on back damages for patent infringement.

Remedies may be available outside of courts as well, though often without monetary recovery. For example, administrative agencies such as Customs & Border Protection and the International Trade Commission can block or exclude importation of infringing goods, and a copyright small claims action may be available. Online platforms and marketplaces may also have their own IP dispute resolution procedures and mandatory arbitration (e.g., UDRP, URS) may apply to domain name disputes.

With some exceptions, many IP rights are generally enforceable on a jurisdictional or territorial basis. If infringement implicates activities in another country, the available remedies and requirements to pursue a claim can vary widely and you may need to consult competent foreign legal counsel.

Many IP disputes reach settlements, though it cannot be assumed that parties will be able to reach a pretrial settlement. When considering bringing an infringement or misappropriation suit, bear in mind that awards of attorney’s fees are not always available or likely. The cost to pursue an IP lawsuit might exceed the monetary recovery, though the benefits of stopping infringement or misappropriation may still be worth the unrecoverable expenses of a suit in some situations.

Contact Austen

Tags Copyright Infringement, Infringement, Patent Infringement, Trade Secret Misappropriation, Trademark Infringement

Copyrights Patents Q&A Trade Secrets Trademarks

What Should I Do to Avoid Infringing Anyone Else’s IP When Releasing a New Product?

Post author By Austen Zuege

Here is a common scenario. Your business is planning to release a new product but wants to avoid infringing anyone else’s IP. What should you do? To avoid infringing anyone else’s IP, you should consider proactive clearance or freedom-to-operate (FTO) efforts, ideally before the new product is commercially launched. Such efforts are not legally mandated but should be tailored to your businesses’ risk tolerance in light of the typical costs of patent, trademark, copyright, and trade secret litigation. The scope of these efforts will depend upon the type of IP involved. Specific efforts may also depend on where you are planning to release the product, geographically. The following discussion focuses on the USA.

General Tips

Consider implementing overarching policies and protocols to reduce IP infringement (or misappropriation) risks. Educate and supervise staff accordingly. Do not simply assume that employees will already understand or care about IP infringement and misappropriation risks.

Make reasonable efforts to avoid infringement, including proactive clearance/FTO efforts where appropriate. But accept, as a cost of doing business, that despite those efforts there will always remain some risk that a “troll” will make an IP infringement claim of dubious merit. Failing to make reasonable efforts will just make it easier for others to target you with infringement claims that are expensive to defend.

When making goods or materials at the request of a customer (e.g., private label goods), be cautious of harsh and potentially predatory indemnity or warranty terms in purchase agreements. These can come into play if the customer is requesting infringement—either intentionally or merely negligently—while passing all infringement liability onto your business. You might be agreeing to assume IP infringement risks that far exceed the commercial value of the contract. This is also a concern where infringement liability may depend on customer actions outside your control.

It is also recommended to obtain a business insurance policy with coverage for unintentional trademark and copyright infringement (e.g., “advertising injury” coverage without major exclusions or limiting definitions). However, patent infringement coverage is not found in typical general business policies and is uncommon (because its cost/benefit tradeoff is rarely attractive).

Patents

For patents, the most common type of patent infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s patent(s). However, though knowledge and intent (willfulness) can impact damages. Also, indirect infringement—a category of certain types of infringement—may require knowledge of the patent and that your activities infringe.

Consider a pre-launch patent FTO study that initially involves a search for any potentially conflicting patents, followed by a legal analysis. Proactively performing a patent FTO study allows you to find potentially problematic patents before they find you. That makes possible certain risk reduction efforts, such as an opinion of counsel, a design around, seeking a license, etc.

Trademarks

For trademarks, infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s trademark. Liability can arise if there is a likelihood of confusion, even in the absence of any actual confusion by consumers. Trademark infringement does not have to be willful to result in a damages award. Also, there is a presumption that a trademark owner can obtain an injunction against use of an infringing mark.

When adopting new branding, it is not unusual for a first-choice mark (and second-choice…) to be already taken by another business. Many marks are already taken by others, which limits the universe of marks freely available for your business’ use at the time of adoption. It may be preferable to select a different mark from the start than to later re-brand, because re-branding tends to become more burdensome, costly, and disheartening as time passes.

Consider a pre-launch trademark clearance that initially involves a search for any potentially conflicting trademarks, followed by a legal analysis. Such a search should encompass all the relevant jurisdictions (e.g., all countries where your brand or mark will be used). Registration is not required to have enforceable trademark rights in the U.S. So a clearance search should ideally assess possible unregistered marks too.

Copyrights

For copyrights, there must be unauthorized copying of protected expression. Though there can be risks from copying that happens through inattention or negligent conduct. Fair use limits the copyright owner’s exclusive rights, but fair use will not always apply (and usually won’t when simply making commercial use of a work rather than making critical commentary about the work). There are many misconceptions about copyright law. For instance, just because something is available on the Internet does not make it “fair game” for your business’ use—even if denoted as being “free” or “royalty free”.

Have an awareness of copyright infringement risks. Also be aware of the ways that employees might commit infringement. For instance, employees posting materials to online platforms under via company accounts can present copyright infringement risks. Consider ways to educate employees about copyright and supervise employee activities.

Perform copyright clearance for any materials that you did not wholly create yourself that you plan to use, and obtain written permission or a license or assignment of ownership. Retain records of written authorizations. And make sure that you adhere to the terms of any license. Also consider seeking an indemnity for any licensed materials, because you could be licensing materials that are themselves infringing.

Trade Secrets

For trade secrets, there must be misappropriation of secret materials. Though there can be risks from misappropriation that happens though inattention or negligent conduct. However, trade secret misappropriation will generally only arise if your business had received secret information from someone else. This could occur by hiring an employee who knows confidential information from a prior employer.

For trade secrets, review any non-disclosure agreements (NDAs) in place and consider clean room or other protocols if any confidential materials were or will be received by staff.

Contact Austen

Tags Copyrights, Freedom-to-Operate (FTO) & Clearance, Patents, Trade Secrets, Trademarks

Agreements Copyrights Patents Q&A Trade Secrets Trademarks

How Can My Business Acquire and Own IP Rights?

Post author By Austen Zuege

Some intellectual property (IP) rights arise automatically under certain circumstances while others require affirmative action.

PRACTICAL TIP: Think about IP early to avoid waiving potential rights and consider the benefits of optional protections.

Copyrights

Copyright attaches automatically to the author when a new creative work (e.g., text, photo, etc.) is fixed in a tangible medium of expression. Registration is not required for copyright to exist. Copyright ownership is also independent of possession and ownership of a copy of a work—even the “original” or sole copy.

Trademarks

Trademark rights can arise through use of a mark to identify the source of goods or services, provided that the mark is distinctive. Registration is not required to have enforceable trademark rights in the U.S. However, registration of a mark, particularly a federal registration on the Principal Register, helps to secure rights through the entire country and over time can limit the possibility for others to challenge the trademark rights in the registration.

Trade Secrets

Trade secret rights can attach to information that derives economic value from not being generally known and not being readily ascertainable so long as you take reasonable measures to keep it secret, meaning the existence of trade secret rights depends on the affirmative steps you take to maintain secrecy.

Patents

Patent rights require applying for and then obtaining a patent following an examination to determine if the invention satisfies criteria for patentability, which include novelty and nonobviousness. In the U.S., a patent must be applied for within one year of any disclosure, public use, or commercialization of the invention by the inventor. In most other countries, a patent must be applied for before any public disclosure.

International Considerations

Patent and trademark rights are territorial and rights in the U.S. will generally not provide exclusive rights abroad. Copyright and trade secret rights may have international enforceability in both the U.S. and some foreign jurisdictions.

Assignments and Licenses

IP rights can also be obtained from others via assignment (i.e., a transfer of ownership) or licensing (i.e., authorization to use the IP without a transfer of ownership). For many types of IP, assignments must be in writing and/or satisfy other criteria to be valid. Trademark rights are tied to underlying customer goodwill and cannot be assigned apart from that goodwill. A “naked” assignment of a trademark without associated goodwill can result in abandonment, as can licensing without quality control.

Employee- and Vendor-Created IP and Joint Development

When employees create things that may be subject to IP rights, the general rule—with some exceptions (notably for copyrightable works made for hire created by an employee within the scope of his or her job duties)—is that the employee rather than the employer is the owner. Businesses wanting to obtain ownership of employee-created IP should consider a written agreement (e.g., employment agreement) that establishes either an obligation to assign IP (to be followed later by execution of an assignment) or a prospective assignment of expected future IP.

When hiring a vendor to create or develop something, or jointly developing something with a business partner, consider who will own the IP at the outset. Merely paying for development will not automatically result in the transfer of ownership of vendor-created IP. Joint development can raise complex questions about who will own what, and ownership of particular IP may depend on which person(s) or entity contributed to that particular subject matter in the absence of a written agreement.

A common mistake is to ignore ownership of IP rights until there is infringement or a big business deal. Attempting to “fix” or alter IP ownership after the fact is usually much more complicated than sorting that out from the start of a vendor/partner/employee relationship (or even at the start of a particular project).

Online Resources:

IP Guides from blue over gray
U.S. Patent & Trademark Office
U.S. Copyright Office
World Intellectual Property Organization

Contact Austen

Tags Copyrights, Patents, Trade Secrets, Trademarks

Q&A Trademarks

How Do I Protect My Business’ Name and Logo?

Post author By Austen Zuege

Trademark law can protect a brand name (in words), graphical logo, or the like—a “mark”—used to identify the source of goods or services. But not all marks are protectable. It is not unusual for a first-choice mark (and second-choice…) to already be taken or simply not be protectable. The following is an explanation of the basics of how a business’ name and logo can be protected under trademark law.

The first step is to select a mark that is distinctive enough to be protectable. Generic terms (or functional aspects) are never entitled to protection under trademark law. Merely descriptive terms are not protectable but descriptive marks can potentially develop “secondary meaning” and acquire distinctiveness in consumers’ minds over time, through extensive use and promotion, so as to become protectable. Suggestive, arbitrary, or fanciful marks are inherently distinctive and thus always protectable. Arbitrary and fanciful marks have the greatest legal strength, in conceptual terms.

A common problem is that businesses select marks that are not conceptually strong enough to merit exclusive rights as trademarks. Businesses people are frequently drawn to descriptive or generic terms because they require less initial investment to obtain consumer recognition. But the tradeoff is that generic and descriptive marks are considered conceptually “weak” and offer less or no legal exclusivity. In this respect, business and marketing considerations can be in tension with legal considerations under trademark law. If exclusive trademark rights are important to your business, make sure you select a mark that is good enough in legal terms to be protectable under trademark law.

Keep in mind that a mark must be one specific thing. Materially different spellings or visual depictions potentially reflect use of different marks. It is possible to have multiple different marks that are each in use, potentially even simultaneously with the same goods or services. But consistency in usage is important. This generally means settling on the exact mark or marks that will be used and sticking to those decisions.

Secondly, trademark rights generally go to the senior user. This means many marks are already taken by others, which limits the universe of marks freely available for your business’ use at the time of adoption. If your business’ mark creates a likelihood of confusion with an existing mark, the prior user will have superior rights. There can be a likelihood of confusion even if there are differences between the respective marks or goods/services, and evidence of actual confusion in the market is not required. Also, a protectable but weak mark, such as one that resembles numerous other coexisting marks, will have more limited scope of exclusivity than a stronger mark.

Geographically separate but otherwise similar uses of trademarks can sometimes coexist. Although businesses operating on the Internet tend to encompass wide geographic areas of use without much opportunity for separation. Moreover, a prior user might consent to coexistence in some circumstances—often subject to certain conditions to avoid confusion, such as agreements limiting the scope of the goods/services with which a mark is used. But, in general, the possibility of coexistence or consent is very context-specific and cannot simply be assumed to be possible.

Trademark rights in the U.S. arise from commercial use of a mark. “Common law” rights can accrue automatically through use of a mark but are generally limited to the geographic area in which the mark is actually used. Registering a mark has benefits, and a federal registration on the Principal Register can secure rights over the entire country and can be used to prevent unauthorized importation of goods bearing the mark. Federal registration generally requires use in interstate commerce, territorial commerce, or foreign/tribal commerce (with a limited exception if a foreign registration exists).

Trademarks are also territorial. Rights in one country generally provide no exclusivity in another. But most countries have no use requirement; many follow a first-to-file system and may provide little or no rights based on use alone. Also, many other countries are more restrictive than the U.S. in terms of the level of distinctiveness required for a mark to be registrable.

After adoption of a mark, use it properly and consistently, and monitor for potential infringing uses. Additional steps can also be taken to enhance protection of a trademark.

Trademark rights can potentially last indefinitely if still in use but can be abandoned through nonuse without intention to resume. Federal rights are presumptively abandoned after three years of nonuse. A branding “refresh” or other changes to a mark may result in the loss of existing trademarks rights and/or registrations and be treated as the adoption of a new mark or marks. Moreover, reduction in the goods and services with which a mark is used can lead to partial abandonment (just as expansion of use can potentially lead to new infringement risks).

Useful Tips:

Use care when selecting a mark to avoid having to later re-brand, which becomes more burdensome over time. Identify and evaluate potentially conflicting existing marks as part of initial mark selection. In doing so, consider all jurisdictions and scenarios under which your business plans to operate, including likely future expansion as to goods/services and geographic areas. A trademark legal clearance can help identify potentially conflicting marks and associated infringement risks.
Registration of an Internet domain name, a corporate name (trade name), an assumed name (d/b/a), or even all of them, does not alone establish any exclusive rights in a brand or mark under trademark law.

Contact Austen

Tags Trademarks

Q&A Trademarks

What is the Process to Register a Trademark?

Post author By Austen Zuege

The process to register a trademark (or service mark) involves submitting an application, which is then substantively examined and a registration is ultimately either issued or refused. Post-registration action is required to maintain a registration, which can potentially last indefinitely provided that the registered mark is still in use. Both federal and state trademark registrations are available in the USA, and registration is also available in foreign countries. In many jurisdictions, including for U.S. federal applications, marks are published for potential opposition by others prior to registration. Trademark registrations are also subject to cancellation (or expungement, etc.) under certain circumstances.

Federal registrations are handled by the U.S. Patent & Trademark Office (USPTO), which oversees two registers: the Principal Register and the Supplemental Register. Only registration on the Principal Register establishes a presumption of exclusive rights in a mark.

Not all Registrations are Equal in the U.S.: Federal trademark registration on the Principal Register is almost always preferable to state registration because much more expansive national rights are obtained, which is significant in the age of the Internet. Also keep in mind that a federal registration on the Supplemental Register does not by itself establish exclusive rights, although it can block a later conflicting registration. The value of state-level registrations varies. Some state trademark registrations provide no presumption of exclusive rights.

Basic Requirements of a Federal U.S. Trademark Application

A U.S. federal trademark application must identify the mark, the associated goods and/or services, and a filing basis.

Identification of Mark

The identification of the mark establishes what, exactly, constitutes the mark, which can include words (e.g., in “standard characters”) and/or graphical elements (e.g., color, stylized typeface/font, design element(s)), depending on the nature of the mark. Importantly, a mark must be one specific thing. Different spellings or different visual depictions potentially represent different marks. A trademark application must be limited to one mark, with any other potential marks pursued in separate applications.

Identification of Goods and Services

The goods and services must be identified and grouped according to a classification system, with filing fees calculated based on the number of classes of goods/services included. There is some skill involved in wording these identifications of goods and services appropriately. One important consideration is that for U.S. federal registrations it is not possible to simply “reserve” a mark, that is, merely to block others from using it. Use of the mark with all the identified goods and services must have already occurred or at least be intended in the future. Therefore, crafting a proper identification of goods and services requires first understanding how the applicant is currently using and/or legitimately intends to use the mark.

Filing Basis

As to filing bases, first, an application can be based on actual use in commerce, that is, the mark is already in use. Evidence of use in the form of a “specimen” must be submitted with such an application and the date of first use in commerce must be specified.

Alternatively, a federal application can be filed based on a bona fide intent-to-use (ITU). In this case, the mark has not yet been used in commerce but the applicant has a good faith intention to do so. The ITU application filing date establishes constructive use in commerce. But a statement of use (with a specimen) is still eventually required in an ITU application in order to obtain a registration—with paid extensions of time the applicant has up to about three years to do so.

Federal U.S. registrations based upon prior foreign registrations and applications as well as Madrid Protocol extensions based on a foreign application or registration are also possible.

Lastly, it is possible for a given application to include multiple filing bases. This is most common when a mark has already been used with some but not all goods or services, but use with the further goods/services in the future is intended. It is also common when priority to a foreign trademark registration or application is involved.

The Examination Process

Trademark office examination involves a search for conflicting registrations and an analysis of whether the applied-for mark meets applicable legal criteria. This is called trademark “prosecution”. Applicants can respond to any refusal sent in an “office action” by making amendments and arguments. Appeals from refusals are also possible. Additionally, even if a trademark examiner believes a mark is registrable, third parties can oppose registration and can later challenge an issued registration.

Federal registrations can take anywhere from a matter of months to years to obtain, provided that the mark is registrable at all. The timeline tends to be longer when there is a refusal (for instance, based on a prior conflicting registration or application) or an opposition to registration is lodged. State registrations may take only a matter of days to weeks, provided the mark is registrable. Foreign registration timelines vary widely.

Helpful Tips:

Although U.S. applicants can apply for registration themselves, subject to identity verification, legal advice from a knowledgeable attorney can help in obtaining the best and most appropriate coverage. Foreign trademark applicants are generally required to hire a licensed U.S. attorney.
Registrations of word marks in “standard characters” are usually the broadest because they do not include any limiting claim as to color, font, or other graphical elements in a mark that includes one or more words. On the other hand, words that are unregistrable in standard characters alone can sometimes become registrable when distinctive graphical elements are added as part of a “composite” mark that includes both word(s) and graphical element(s).
Consider the effect of expanded, reduced, or otherwise changed use of a mark over time. Such changes may may suggest pursuing one or more additional registrations. Some changes may also affect the ability to maintain an existing registration (e.g., due to a substantial changes to a graphical logo or ceasing use with certain goods/services).
State-level registration might be worthwhile if usage does not qualify for federal registration, such as purely local usage that is not part of interstate commerce.
Trademark registrations are territorial. A registration in one country will generally not provide exclusive rights in any other country. Consider foreign registration(s) if a mark is or will be used in multiple countries.
Registrations are generally even more important in other countries, where trademark rights are often determined on a first-to-register basis—sometimes without regard to priority of actual use.
- For example, unrelated companies concurrently using similar brands in two different countries but later expanding to a common third country can sometimes lead to disputes.
- As another example, outsourced manufacturing can also sometimes lead to trademark disputes. Export-only manufacturing in a foreign country of goods having trademarks applied to them may still be considered trademark use under foreign law (e.g., “OEM” manufacturing in China), even without any local commercial sales in that foreign country.

Contact Austen

Tags Trademark Prosecution, Trademarks

Copyrights Patents Q&A Trade Secrets Trademarks

How Can I Protect the Design of My Business’ Products?

Post author By Austen Zuege

Intellectual property (IP) rights might allow a business to obtain exclusive rights in some or all aspects of a product. Such IP rights can potentially include patents, trademarks (i.e., trade dress), copyrights, and trade secrets. But the types of IP that might apply will vary depending on the context of the product involved, and may require affirmative action to secure and maintain IP rights.

Consider patentability before any public disclosure or commercialization of a product in order to avoid potential loss of patent rights. Although other types of IP protection might be available, exclusivity in the design of a new useful product is first and foremost a question of potential patent protection.

Patent Protection

Patents can provide exclusive rights for a limited time in exchange for disclosure of an invention. An inventive product—and/or a process or method associated with making or using it—can be protected with a utility patent. However, a patent application must be filed within one year of public disclosure or commercialization (or, in other countries, before any public disclosure). The invention must also satisfy three criteria for patentability: utility, novelty, and non-obviousness. The latter two criteria depend on the scope and content of the prior art. A patentable invention cannot already be known and must represent a non-trivial advance over what was already known. These assessments are made in an absolute sense. Prior art is not limited to commercially available products. And it does not matter whether or not the inventor actually knew about the relevant prior art.

The ornamental appearance of a useful article can be protected with a design patent if the ornamental design is novel and non-obvious. Design patents can cover surface ornamentations for an article of manufacture, the ornamental shape or configuration of an article of manufacture itself, and combinations of those categories. Abstract designs (e.g., a picture standing alone) are not patentable.

Trade Dress / Trademark Protection

Trade dress (a form of trademark protection) may also protect the distinctive, nonfunctional appearance of a product or its packaging. However, trade dress protection only arises in aspects of product configuration that serve as a trademark to allow consumers to identify the source of the product. Trade dress never protects functional aspects of product configuration or packaging. In other words, it is limited to aspects that relate to the manufacturer or seller’s reputation and not to the usefulness of the thing itself.

In the U.S., trade dress protection requires achieving acquired distinctiveness once secondary meaning has developed in the minds of consumers based upon substantially continuous exclusive use for a sufficient period of time (generally a minimum of five years). Trade dress will not provide exclusive rights in product configuration at the time of a new product’s launch, though it might for packaging.

Copyright Protection

Copyright might apply to certain aspects of products, such as product labels or decorative graphics applied onto a product. But copyright will not protect useful or functional parts, only those creative aspects that are conceptually separable and capable of existing apart from the useful or functional parts. For example, a lamp that incorporates a sculpture could have copyright protection in the sculptural elements but purely functional electrical components that allow the lamp to illuminate would not have copyright protection. The text of software code can be copyrightable but not the functionality enabled by software (which might be patentable instead).

Trade Secret Protection

Trade secret protection will not apply to publicly visible or readily ascertainable aspects of a product. But things like the “secret formula”, manufacturing methods, or aspects of embedded software might be protectable as trade secrets if they are not generally known and not readily ascertainable and you take reasonable measures to keep such things secret.

Contact Austen

Tags Copyrights, Design Patents, Patents, Trade Dress, Trade Secrets