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Patents Q&A

Can You Patent a Software App?

Patents are available for inventions.  Software per se is not patent eligible—source code text is copyrightable instead.  But a system, apparatus, or device configured to execute particular software-driven functions may be patent eligible and a method (or process) that is computer-implemented via software may also be patent eligible.  Ornamental aspects of software-driven graphical user interfaces (GUIs) are also eligible for design patent protection.  So, a software “app” (application) as a discrete whole is usually not patentable as such but a patentable invention might include or implicate some software-based aspect. 

The U.S. Supreme Court has said that “abstract ideas” are not patent eligible, which narrows the types of software-based inventions that are patentable.  A software-based invention that consists only of well-known concepts, mathematical calculations, data processing/manipulation/selection/presentation, what could otherwise be performed as purely mental steps, or the like plus merely generic computer hardware is generally not patent eligible.  Software that provides no more than an allegedly improved user experience is also generally not patent eligible.

Patent eligibility hinges on the particular “claims” in a patent application or granted patent, which establish the scope of a patentee’s exclusive rights.  More narrowly-drawn claims that focus on a particular inventive feature (e.g., a detailed computer-implemented algorithm) that solves a specific technological problem (e.g., improves computer hardware performance as a tool or transforms physical outputs in a new or improved way) are more likely to be patent eligible than broad, highly abstract claims (e.g., attempting to patent any insertion of an ad before an online streaming video plays).  In this sense, software patent eligibility is highly dependent on how the claims are written, an area where patent applicants have wide latitude.  Attempts to obtain a broad “preemptive” (or we might say greedy) patent monopoly that exceeds the quid pro quo of the inventor’s contribution to the useful arts raise the most concerns. 

Additionally, a software-based invention must be both novel and non-obvious over the prior art to be patentable, just as with any type of invention.  In this respect, all invention, software-based ones included, must represent a non-trivial advance over what is already known in order to be patentable.  Whether the inventor actually knew about the closest prior art or not is irrelevant—any and all prior art represents a potential barrier to patenting a new invention.

In summary, while you generally cannot patent a software app as a stand-alone product, aspects of software-enabled products or processes may be patent eligible. The real answer to this question is that it often depends on the what invention is, what was known before, and how you try to claim a software-based invention in a patent application.

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

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Q&A Trade Secrets

What Steps Must a Company Take to Protect Its Trade Secrets?

What Is a Trade Secret?

There are three basic elements of a trade secret: (1) it is not generally known to the public (and is not readily ascertainable by proper means); (2) it confers economic benefit on its holder because the information is not publicly known; and (3) the holder makes reasonable efforts to maintain its secrecy.  But it can be just about any type of information. 

Examples of trade secrets given in the Uniform Trade Secrets Act (UTSA) are “a formula, pattern, compilation, program, device, method, technique, or process” and the federal Defend Trade Secrets Act (DTSA) definition gives as examples “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes . . . .”  Trade secrets can also potentially encompass customer lists, marketing and distribution strategies, etc. 

Protecting Trade Secrets

Determining what steps must be taken to protect a trade secret will depend on the circumstances and the nature of the information in question but principally comes down to what constitutes reasonable efforts to maintain secrecy.  Such efforts must always involve affirmative acts.  At a minimum, you must be able to point to specific protective steps affirmatively taken to guard trade secrets that go beyond normal business practices applied to all business information.

To restate the obvious, remember that trade secrets must have been kept secret.  In this sense, you cannot “un-ring a bell” and later claim as a trade secret something that was not kept secret in the first place or was publicly disclosed at some point.  It is possible to abandon trade secrecy protections.  So whatever protective measures are put in place they must actually be followed. 

Example Affirmative Measures to Maintain Secrecy

Common affirmative measures to protect trade secrets include the following.  But, alone, any one of these steps may be insufficient. 

Contracts such as non-disclosure agreements (NDAs) or confidentiality clauses inserted in other types of agreements can help establish trade secret status while allowing necessary personnel access to information.  And such agreements may benefit from further terms defining or otherwise acknowledging that certain types of information qualify as enforceable trade secrets. 

Confidential materials can also be marked as such to explicitly make clear trade secret claims.  Marking can be especially important where materials are exchanged under an NDA.  More generally, make sure recipients of trade secrets understand applicable secrecy requirements. Though, for instance, the Minnesota UTSA states that “[t]he existence of a trade secret is not negated merely because an employee or other person has acquired the trade secret without express or specific notice that it is a trade secret if, under all the circumstances, the employee or other person knows or has reason to know that the owner intends or expects the secrecy of the type of information comprising the trade secret to be maintained.” 

Access to trade secret materials can also be limited, which can help minimize risks of accidental or unintended disclosures.  Departing employees should also be cut off from access to trade secret materials.  Computer/IT systems and physical spaces containing trade secret information should be secured and protected from unauthorized access. 

Lastly, an employee or executive could be appointed to oversee protection of some or all trade secrets.

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

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Q&A

What is the PCT Timeline for International Patent Applications?

The Patent Cooperation Treaty (PCT) provides a sort of clearinghouse system to facilitate filing for patent protection for an invention in participating countries. The PCT system is administered by the World Intellectual Property Organization (WIPO), together with local patent offices. Patents are still largely granted and enforced on an individual country basis. But the PCT system helps simplify and harmonize the filing of counterpart applications in multiple countries. But there are various deadlines and phases that are unique to PCT applications. What follows is an explanation of the PCT timeline for new international patent applications.

Typical timeline for PCT application up to national phase entry

In the timeline graphic above, applicant actions in the international phase are shown at the top and official actions are shown at the bottom. Items in dashed lines are optional, or are conditional upon optional action by the applicant. National phase entry, indicated at the right, requires applicant action in one or more individual countries or regions but is not shown in detail. There are other possible actions in PCT applications not specifically addressed here.

WIPO also provides a PCT time limit calculator that can be used to determine individual deadline dates for a given international application after initial filing.

The PCT system is not available for all types of patents in all participating countries. It is generally limited to utility (or invention) patents. Design patents (that is, for industrial/ornamental designs), plant patents (for certain asexually reproduced plants; plant-related inventions may still be eligible for a utility patent), and utility models (available in certain countries other than the USA) cannot be pursued directly through PCT applications.

International and National Phases

The PCT timeline has two major phases. The first is called the international phase. This runs from the time the PCT application is filed with a receiving office (RO) until the deadline to enter the national (or regional) phase. Then the national (or regional) phase begins with the filing of one or more national phase entries (NPEs) in individual participating national and/or regional patent offices. The international phase ends when the national phase begins.

The PCT application is called an international application and is assigned an international application number. The national (and regional) phase applications are assigned a local application number. But the national phase is just a different phase of the same PCT application and does not involve a priority claim between different applications.

Priority Claims

A PCT application can claim priority to one or more prior local (national or regional) patent application(s). Priority can be claimed to a prior application, including provisional applications, from any country that has joined the Paris Convention for the Protection of Industrial Property or is a member of the World Trade Organization (WTO). The deadline to file a PCT application is twelve (12) months from the earliest claimed priority date.

Of course, there is no need to file a local priority application. It is common to do so. But it is equally possible for a PCT application to be the first patent application filed, without any priority claim.

The PCT timeline graphic shown above uses month zero (0) as the earliest claimed priority date. This could be either the filing date of the earliest local priority application or the PCT international filing date if there is no priority claim. In either situation, many subsequent deadlines are calculated in relation to the earliest priority date.

Claim Amendments Under Article 19 (Optional)

An applicant can optionally file claim amendments under Article 19 of the PCT. The deadline for Article 19 claim amendments is either two (2) months from transmittal of the international search report (ISR) by the international search authority (ISA) or sixteen (16) months from the earliest priority date, whichever is later. However, late Article 19 claim amendments are still accepted if received by the International Bureau (IB) of WIPO before the technical preparations for international publication have been completed.

Article 19 amendments allow the applicant the option to amend the claims based on the results of the ISR for inclusion in the published PCT application. Article 19 also allows amendments to be made a single time during the international phase, as opposed to making separate amendments later on in individual countries/regions in the national phase. Applicants can still make amendments later on in the national phase, subject to local procedures.

Chapter II Demand and Article 34 Amendments and/or Arguments (Optional)

The designated international search authority (ISA) will issue an international search report (ISR) and written opinion (WO). These documents assess the patentability of the claims of the PCT application, but are not binding on individual patent offices during the national phase. The applicant can optionally make a Chapter II demand and submit Article 34 amendments and/or arguments in response. Amendments filed this way can be to the claims, description (Specification), and/or drawings, so long as they are supported by the original disclosure and do not add new matter. Chapter II demands require payment of a preliminary examination fee. The deadline to file the demand is three (3) months from transmittal of the ISR/WO or twenty-two (22) months from the earliest priority date, whichever is later. Late filed demands are ignored.

If a Chapter II demand is made, the international preliminary examining authority (IPEA) issues an international preliminary report on patentability (IPRP) under Chapter II. The IPEA is the same patent office previously-designated as the ISA. The IPRP under Chapter II takes into account all amendments and/or arguments submitted by the applicant. The point of making a Chapter II demand is generally to try to convince the IPEA to issue an IPRP that is more favorable than the prior WO with regard to patentability. (What is a little confusing here is that the IPRP is also referred to as an international preliminary examination report [IPER]; and if no Chapter II demand is made, the original WO of the ISA later becomes the IPRP under Chapter I automatically.)

Chapter II demands are entirely optional. Applicants can still make amendments and arguments later on in the national phase in the absence of a demand in the international phase. But making demand may be helpful in some situations. Whether it is worthwhile often depends on the applicant’s national phase filing strategy. For instance, some participating states extend the national phase entry deadline if a Chapter II demand is filed. Also, some national patent offices are more likely than others to defer to the results of international preliminary examination. At times, it also matters which patent office served as the IPEA in terms of how much weight and deference national phase offices will give to its conclusions.

Supplementary International Search Request (Optional)

Applicants have the option to request an additional search by a different search authority. This is called a supplementary international search (SIS). These require payment of additional fees and are not common. The deadline for a SIS request is twenty-two (22) months from the earliest priority date. When requested, these result in a SIS report (SISR).

National Phase Entry

After filing a PCT international application, the only further applicant action typically affirmatively required is to enter the national (or regional) phase. This is when the applicant commits to the individual countries and/or regions in which enforceable patent protection will be pursued. If no national or regional phase entry is filed, the international application is abandoned in all designated states.

The deadline for national phase entry varies by country, from 20-34 months from the earliest priority date. Most countries—including the U.S., Canada, Mexico, Japan, and P.R. China—have a thirty-month (30-month) national phase entry deadline. A significant number of countries and regional patent offices—including the regional European Patent Organization (EPO), South Korea, and Australia—have a thirty-one-month (31-month) national phase entry deadline. Some countries also extend the NPE deadline if a Chapter II demand is made. The shortest NPE deadlines are 20 months for Luxembourg (without a Chapter II demand; though a longer period is available via the EPO with later validation in LU) and 21 months for Tanzania (without a Chapter II demand). It is important to verify deadlines for the particular countries/regions of interest.

Early national phase entry is possible. It is not necessary to wait until close to the deadline to enter the national phase. Late national phase entry is sometimes possible, if local requirements are met (such as being unintentional, for delayed entry into the USA).

National phase entries are generally limited to utility (invention) patents. Although design, plant, and utility model patents are available in some countries, they must be pursued separately from a PCT international application. For instance, a U.S. design or plant patent application can potentially claim priority to a pending international application, though that is not common.

An important benefit of the PCT system is that the national phase entry deadline occurs relatively late. The applicant gains up to about eighteen additional months (about thirty months total) to decide which countries/regions will be pursued compared to the usual twelve-month foreign priority period (under the Paris Convention). And the international preliminary examination provides some assessment of patentability. The additional time and information available at the NPE deadline can allow more informed decisions about where further patent filing fees are worthwhile.

PCT “Bypass” Applications (Optional)

In the U.S., it is possible to file a so-called PCT “bypass” application in addition to or instead of a regular national phase entry (NPE). A bypass application is filed like a continuing application (continuation, divisional, or continuation-in-part) that claims priority to a pending PCT international application that designates the USA. However, bypass applications are rather unique to the U.S. and other countries may not permit these sorts of filings. Bypass applications must be filed while the PCT international application is still pending. This makes the bypass filing deadline thirty-month (30-months) from the earliest priority date—the same as the U.S. NPE deadline.

Bypass applications are occasionally useful because there are procedural differences in how PCT national phase entries and regular (non-PCT NPE) U.S. applications are handled and examined. For instance, Track One prioritized examination is not available for PCT national phase entries. A bypass application also avoids the need to file all signed invention oaths/declarations before a request for continued examination (RCE). Also, filing a bypass divisional application in parallel with a regular NPE and splitting up the original PCT claims between them may cost less in official fees than filing only the NPE and paying extra claim fees.

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

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Patents Q&A

What is Prosecution History Estoppel?

Prosecution history estoppel can arise when the patentee relinquishes subject matter during the prosecution of the patent—that is, during examination of a patent application at the U.S. Patent & Trademark Office (USPTO)—either by amendment or argument. A narrowing amendment made to satisfy any requirement for patentability (under 35 U.S.C. §§ 101-103, 112, 161, or 171) may give rise to an estoppel.  When it applies, prosecution history estoppel will prevent a patentee from relying on the Doctrine of Equivalents to establish infringement based on the particular equivalents surrendered. A given claim limitation might be given only its literal scope (as properly construed) but no more. This policy allows competitors to rely on prosecution history estoppel to ensure that their own devices/processes will not be found to infringe by equivalence

The Basic Rule

The Doctrine of Equivalents is an equitable doctrine created by courts long ago. It is premised on language’s inability to capture the essence of innovation, allowing some protection beyond the literal scope of a claim where the claimed invention and the accused product or process are equivalent.  Its purpose is to “temper unsparing logic” that “would place the inventor at the mercy of verbalism and would be subordinating substance to form” and it evolved in response to situations where accused infringers attempted to “practice a fraud on a patent” by introducing “minor variations to conceal and shelter the piracy.” However, there is a tension between such concerns and the need for patents to put the public on notice of what a patent does and does not cover.

Prosecution history estoppel is about interpreting patent claims by reference to the history that led to their grant. It limits the patentee’s ability to establish infringement by equivalence to help provide certainty to competitors about the enforceable scope of a U.S. patent. Accordingly, the Doctrine of Equivalents is not available where prosecution history shows the inventor was able to capture equivalent differences in words but chose narrower language. The patentee cannot later recapture what was previously surrendered under the guise of the Doctrine of Equivalents. Where the original patent application once embraced the purported equivalent but the patentee narrowed his claims to obtain the patent or to protect its validity, the patentee cannot assert that he or she lacked the words to describe the subject matter in question. 

Estoppel Can Arise Through Amendment or Argument

Prosecution history estoppel can arise two ways: (1) by making a narrowing amendment to the claim (amendment-based estoppel) or (2) by surrendering claim scope through argument to the patent examiner (argument-based estoppel). These two possibilities are discussed in turn.

How Amendment-Based Estoppel Can Arise

The first way that prosecution history estoppel can arise is by way of a narrowing amendment to a claim during prosecution. The question of what constitutes a narrowing amendment will depend on the context of a particular patent claim. But a classic example is adding words that narrow the limitations of a claim to avoid a prior art reference cited in a rejection in an office action. As another example, which is less intuitive, courts have said rewriting a dependent claim in independent form is an amendment adding a new claim limitation, which constitutes a narrowing amendment that may give rise to an estoppel. 

How Argument-Based Estoppel Can Arise

Argument-based estoppel arises when the prosecution history evinces a “clear and unmistakable” surrender of subject matter. Argument-based estoppel most often arises when the patentee tries to convince a patent examiner that the claims of an application recite something different from the prior art. For instance, a patentee may have argued that a claim term has a meaning that is narrow enough to avoid a disclosure or teaching in a cited prior art reference. In such a situation, the patentee will likely be estopped from later asserting that the Doctrine of Equivalents encompasses what was previously argued to be outside the scope of the claimed invention. Such arguments are treated like an acknowledgement that the patentee knew the meaning of the claim language and deliberately chose narrower language in order to obtain a patent.

Scope of the Estoppel

Though prosecution history estoppel can bar a patentee from challenging a wide range of alleged equivalents used by competitors, its reach requires examination of the particular subject matter surrendered. Even where prosecution history estoppel applies, the scope of the estoppel is not always absolute. These inquiries differ somewhat between amendment-based estoppel and argument-based estoppel.

Scope of Amendment-Based Estoppel

The scope of amendment-based estoppel depends on the claim language at issue and the reason for the amendment. For instance, where the reason for the amendment was not related to avoiding the prior art, it does not necessarily preclude infringement by equivalents of that element. But an amendment to clarify the recitation of the claimed invention to satisfy definiteness requirements for patentability would give rise to an estoppel, even though there was no prior art reference prompting the change. Also, cancellation of a claim can give rise to estoppel with regard to any claim(s) that remain (or are added). However, the reason for an amendment is often not clear from the prosecution history.

When no explanation for an amendment is provided, there is a rebuttable presumption that the Doctrine of Equivalents is not available at all.  When the purpose underlying a narrowing amendment cannot be determined—and hence the rationale for limiting the estoppel to surrender of only particular equivalents—it is presumed that the patentee surrendered all subject matter between the broader and the narrower language.  But that presumption of amendment-based estoppel can be overcome for a particular equivalent when (1) the equivalent in question was unforeseeable at the time of the application, (2) rationale underlying the amendment bears no more than a tangential relation to the equivalent in question, or (3) the patentee could not reasonably be expected to have described the insubstantial substitute in question. 

Scope of Argument-Based Estoppel

The scope of argument-based estoppel is based on the scope of particular arguments made during prosecution. Unlike amendment-based estoppel, there is no presumption-and-rebuttal approach. Rather, the question is how far argument-based estoppel applies in the first place, if at all. The question is whether there was a clear and unmistakable argument-based surrender of particular subject matter. Courts have said that simple arguments and explanations to the patent examiner do not surrender an entire field of equivalents. But any arguments can still surrender some equivalents, even if they do not surrender all possible equivalents. This is very context-dependent. The key to this inquiry is whether a competitor would reasonably believe that the patentee’s argument had surrendered the relevant subject matter.

However, courts have said that any clear assertions made during prosecution in support of patentability, whether or not those assertions were actually required to secure allowance of a claim, may still create an argument-based estoppel. Also, once an argument is made regarding a claim term that creates an estoppel, that estoppel will apply to that term in other claims in the patent too.

Prosecution Disclaimer

Prosecution disclaimer is a separate but related concept. Rather than relating to the availability of the Doctrine of Equivalents to establish infringement, prosecution disclaimer or disavowal can limit the proper construction of a claim’s literal scope. Thus, it may affect whether or not literal infringement is found—prior to any consideration of the Doctrine of Equivalents. For example, it can arise when a patentee makes arguments during prosecution about how the pending claims differ from the prior art. This is meant to prevent patentees from opportunistically taking different (and broader) positions in court when asserting infringement than when obtaining the patent in the first place. Statements made during the prosecution of family-related applications, even later-filed ones and foreign counterparts, may sometimes result in prosecution disclaimer as well.

Questions about prosecution disclaimer pertain to proper claim construction. Claim terms are presumed to carry their full and customary meaning unless the patentee unequivocally imparted a novel meaning to those terms either in the patent application itself (called acting as her own lexicographer) or expressly relinquished claim scope during prosecution. Just as with argument-based estoppel, prosecution disclaimers must be “clear and unmistakable” in order to limit claim scope. An ambiguous statement during prosecution will not limit a claim term’s ordinary meaning.

An important difference between prosecution disclaimer and prosecution history estoppel is when they are taken into account. Prosecution disclaimer is a matter of claim construction. That is something courts do as a first step in patent infringement analyses, without reference to the specific product or process accused of infringement. In contrast, the Doctrine of Equivalents is bound up with the subsequent comparison of the accused product or process to the asserted patent claims as properly construed. Prosecution history estoppel is a question of whether a patent owner is permitted to invoke the Doctrine of Equivalents in particular ways in the second part of infringement analysis, after claim construction. But if literal infringement is found—despite any prosecution disclaimer—there is no need to reach the Doctrine of Equivalents.

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

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Patents Q&A

What Types of Patent Infringement Are Possible?

At a most basic level, patent infringement in the U.S. involves making, using, selling, offering for sale, importing into the USA a patented invention without authorization. Although there are some additional grounds for infringement that may apply in some other circumstances. All grounds for infringement fall into two general categories: direct infringement and indirect infringement. These categories refer to who is being accused and whether they are directly responsible or instead indirectly or partly responsible. There are multiple types of infringement under each category. These include literal or Doctrine of Equivalents infringement, and, for indirect infringement, active inducement of infringement, contributory infringement, and certain activities related to components for export from the USA. Each of these provisions, set forth in § 271 of the U.S. patent laws, is taken up further below.

Direct Infringement

Direct patent infringement means that an accused party is directly responsible for infringement a patent. Direct infringement requires that each and every limitation (or element) of at least one claim of an asserted patent is met either literally or under the Doctrine of Equivalents. If a limitation of a given patent claim is not present in the accused product or process, either literally or equivalently, then that claim is not infringed.

The sorts of things that can constitute direct infringement include the following:

  • making (that is, manufacturing) the patented invention in the USA (35 U.S.C. § 271(a))
  • using the patented invention in the USA (35 U.S.C. § 271(a))
  • offering to sell the patented invention in the USA (35 U.S.C. § 271(a))
  • selling the patented invention in the USA (35 U.S.C. § 271(a))
  • importing the patented invention into the USA (35 U.S.C. § 271(a))
  • submitting a new drug application for U.S. regulatory approval (Hatch-Waxman Act; 35 U.S.C. § 271(e))
  • importing into the USA, or offering to sell, selling, or using within the USA, a product which is made outside the USA by a process patented in the USA, unless it is materially changed by subsequent processes or it becomes a trivial and nonessential component of another product (35 U.S.C. § 271(g))
  • Certain additional rights to exclude specific to plant patents (35 U.S.C. § 163)

There are two ways of finding infringement that differ in terms of how the accused product or process relates to the scope of the claim(s) of the asserted patent:

  • Literal Infringement
  • Infringement Under the Doctrine of Equivalents (also called infringement by equivalence)

Literal Infringement

Literal infringement means that the accused product or process falls within the scope of the asserted claim(s) as construed by a court. Under U.S. law, infringement analysis is a two-step process. It involves, first, construing the claims to ascertain their meaning to a person of ordinary skill in the art and to resolve any ambiguities or disputes over that meaning, and, second, comparing the accused product/process to the properly construed claim(s). Literal infringement is present when the accused infringer meets each and every limitation (or element) of an asserted patent claim exactly, as properly construed. Any deviation from a claim limitation (as properly construed) precludes a finding of literal infringement.

Infringement Under the Doctrine of Equivalents

Under the Doctrine of Equivalents, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless still be found to infringe if there is “equivalence” between the elements of the accused product or process and claimed elements of the patented invention. This type of infringement arises when the accused product or process is outside the literal scope of at least one limitation of an asserted claim, as properly construed. Patentees rely on the Doctrine of Equivalents under the second step of the infringement analysis, if at all, only if literal infringement cannot be established. Otherwise, the Doctrine of Equivalents can apply to the same set of activities as for literal infringement.

This is an equitable doctrine meant to “temper unsparing logic” that “would place the inventor at the mercy of verbalism and would be subordinating substance to form.” It evolved in response to situations where accused infringers attempted to “practice a fraud on a patent” by introducing “minor variations to conceal and shelter the piracy.” Of course, the doctrine is in tension with the policy requiring that claims put the public on notice of a patent’s scope. This is a reason the Doctrine of Equivalents is not meant to be routinely invoked and is not applied broadly. In other words, this type of infringement is a limited exception to the general rule that patent claims must reasonably put others on notice of the outermost boundaries of what constitutes infringement. Put another way, it allows a limited form of “central” claim enforcement in a regime of “peripheral” claiming.

The Doctrine of Equivalents is applied individual claim limitations rather than to the claimed invention as a whole. To find infringement, each claim limitation (or element) must be found either literally or equivalently in the elements of accused product/process. This is called the “all elements” rule. The question of equivalence is inapplicable if a claim limitation is totally missing from an accused device. The Doctrine of Equivalents cannot be used to re-draft claims and effectively eliminate limitations entirely. Though this inquiry always revolves around what differences can reasonably be considered equivalent. An undue expansion of a patent’s claim(s) is not permitted. After-arising technology can potentially be encompassed by the Doctrine of Equivalents (unlike for means-plus-function equivalents).

There are two approaches to assessing equivalents: the “insubstantial differences” test and the “function-way-result” test. The function-way-result test (also called the “triple identity” test) says that equivalence may be present for a given element if the accused product/process performs substantially the same function in substantially the same way with substantially the same result. This is not the only way to assess whether differences are insubstantial, but it is particularly useful for certain types of inventions such as mechanical devices. For biochemical inventions, however, looking at substantial differences may sometimes be more appropriate than the function-way-results test.

There are numerous limits on the Doctrine of Equivalents, which are really beyond this basic introduction. But an extremely important limit on the availability of the Doctrine of Equivalents is prosecution history estoppel. Things that the patentee did or said when obtaining the asserted patent might limit the patentee’s ability to later rely on the Doctrine of Equivalents. So the Doctrine of Equivalents is not always or automatically available.

Indirect Infringement

Indirect patent infringement means that an accused party is causing or enabling someone else to infringe. It can apply when an accused infringer meets some but not all of the limitations (or elements) of an asserted patent claim. It includes three types of infringement, which differ in terms of what the accused indirect infringer is doing:

Generally speaking, there are additional requirements that must be satisfied to establish indirect infringement that are not required for direct infringement. Those additional requirements vary depending on what type of indirect infringement is asserted.

Also, relevant limitations of asserted claim(s) can be assessed under either their literal scope or under the Doctrine of Equivalents, if available—see discussions above of literal and Doctrine of Equivalents infringement for direct infringement. This is really to say that the Doctrine of Equivalents may still apply to indirect infringement scenarios.

Active Inducement of Infringement

Actively inducing someone else to infringe a patent constitutes inducement of infringement. Specifically, “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” (35 U.S.C. § 271(b)). This is a form of vicarious liability. Active inducement requires taking an affirmative steps to encourage infringement by another entity, as well as knowledge that the encouraged acts infringe the asserted patent. A key component of inducement is that it requires there be at least one direct infringer. But the difference here is that instead of suing the direct infringer, a different entity is sued for inducement.

Inducement commonly arises in situations involving claims to a method of using a product. Rather than sue the end user, which may be a potential customer, the patentee instead sues a competitor making and selling products used by others to (directly) perform and infringe the asserted method claim(s). It also sometimes arises where a corporate officer or owner induces his or her company to infringe, making that individual personally liable for infringement.

Contributory Infringement

Contributory infringement arises when selling, offering to sell, or importing components that are specially made or adapted for use to infringe a patent. However, contributory infringement excludes activities involving a staple article or commodity of commerce that is suitable for substantial noninfringing use. A “substantial noninfringing use” is any use that is not unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. So there is normally no liability for selling general-purpose commodities, even if they could be used in making or using a patented invention.

“(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”

35 U.S.C. § 271(c)

In order for contributory infringement to be present, the infringer must know that the combination for which his component was especially designed was both patented and infringing.  This knowledge requirement differentiates contributory infringement from direct infringement, which does not require any such knowledge of the patent or infringement (except to enhance damages).

Contributory infringement is important for situations involving the sale of repair or replacement parts for use in or with patented products or methods.

Supplying Component for Export for Combination Outside the USA

Section 271(f) of the patent laws creates two grounds for infringement involving activities in the USA relating to products made in a foreign country. They arise when components of a patented invention are supplied for export from the USA. These grounds for infringement are similar to yet distinct from active inducement and contributory infringement, discussed above. But these provisions do not require that the equivalent of “foreign” direct infringement occur. That is, the actual combination need not actual occur. However, these provisions apply exclusively to apparatus claims, and are not available for method/process claims. They also do not apply to activities that occur entirely outside the USA. Also, § 271(f)(1) has a quantitative requirement about the number of components involved and it does not apply to only a single component.

“(f)

(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.”

35 U.S.C. § 271(f)

The grounds for infringement under § 271(f) are somewhat rarely invoked. This is largely because manufacturing costs are often higher in the USA than abroad. As a result, courts have not extensively clarified the scope and proper application of these provisions. But suffice it to say they may apply in situations where components are being produced and/or sold in the USA for export.

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

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Copyrights Patents Q&A Trade Secrets Trademarks

What Are Typical IP Litigation Costs?

Intellectual property (IP) litigation tends to be relatively expensive compared to other types of lawsuits. There are many reasons for that. Though the complexity of the legal issues involved and a tendency for extensive pre-trial discovery and use of expert witnesses contribute to the total costs.

Below are graphs showing average costs through various stages of a an infringement or misappropriation lawsuit in the U.S. A summary graph compares average costs for “small” patent, copyright, trademark, and trade secret cases with less than $1,000,000 at risk. There are also individual graphs for patent, copyright, trademark, and trade secret cases with different amounts at risk, that is, with different amounts of potential damages for infringement or misappropriation (in U.S. dollars). All data comes from the 2021 AIPLA Report of the Economic Survey.

graph of average patent, trademark, copyright, and trade secret litigation costs by stage.  Initial Case Management: $57,000 (Patent), $24,000 (Copyright), $22,000 (Trademark), $60,000 (Trade Secret); Discovery, Motions (incl. Claim Const.): $369,000 (Patent), $161,000 (Copyright), $200,000 (Trademark), $367,000 (Trade Secret); Trial, + Any Appeal: $771,000 (Patent), $1,143,000 (Copyright), $415,000 (Trademark), $776,000 (Trade Secret).
Comparison of Average “Small” IP Lawsuit Costs by Type of Case and Stage
Clustered bar graph of average patent litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.
Initial Case Management: $57,000 	$122,000 	$421,000 	$361,000; Discovery, Motions (incl. Claim Const.): $369,000 	$1,033,000 	$1,621,000 	$3,556,000; Trial, + Any Appeal:	$771,000 	$1,910,000 	$3,728,000 	$5,568,000
Average Patent Litigation Costs
Clustered bar graph of average copyright litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  Initial Case Management: $24,000 	$77,000 	$136,000 	$292,000; Discovery, Motions: $161,000 	$882,000 	$1,125,000 	$2,501,000; Trial, + Any Appeal: $1,143,000 	$1,421,000 	$2,358,000 	$5,778,000
Average Copyright Litigation Costs
Clustered bar graph of average trademark litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  Initial Case Management: $22,000 	$48,000 	$83,000 	$194,000; Discovery, Motions: $200,000 	$514,000 	$837,000 	$1,718,000; Trial, + Any Appeal: $415,000 	$892,000 	$1,592,000 	$3,381,000
Average Trademark Litigation Costs
Clustered bar graph of average trade secret litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  Initial Case Management: $60,000 	$102,000 	$171,000 	$469,000; Discovery, Motions: $367,000 	$977,000 	$1,708,000 	$2,112,000; Trial, + Any Appeal	$776,000 	$1,717,000 	$3,309,000 	$4,582,000
Average Trade Secret Litigation Costs

Additional reports on IP litigation are available from various sources, including PWC’s 2018 Patent Litigation Study, Lex Machina’s 2023 Patent Litigation Report (and infographic), Bloomberg Law’s 2023 Litigation Statistics Series: Patent Litigation, and UnifiedPatents’ Patent Dispute Report: 2023 in Review, as well as Lex Machina’s 2021 Copyright and Trademark Litigation Report (and trademark infographic and copyright infographic).

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

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Patents Q&A

What is a “Printed Publication” for Patentability?

Novelty and non-obviousness requirements for patentability are assessed based on the contents of the “prior art”, which can include information previously published by anyone—even by an inventor. Section 102 of the patent laws formally defines what qualifies as prior art in the USA. An earlier “printed publication” will usually count as prior art for novelty (anticipation) and obviousness assessments against a later patent application. Though there are some exceptions, including a one-year grace period that may exclude prior disclosures by an inventor.

The question at hand is about the legal requirements for something to qualify as a “printed publication” for patentability in the U.S. (since the adoption of the America Invents Act [AIA]) This mostly depends on whether relevant technical disclosures appeared in something was generally publicly accessible long enough ago. For the discussion that follows, we will simply assume that given materials contain some kind of relevant technical disclosure.

Examples of Printed Publications

Printed publications can be all sorts of things. They can include books, technical journal articles, web pages, videos, audio recordings, etc. This type of prior art is not limited to the particular format of the materials. In the Internet age, printed publications encompass more than just written text, and more than just hard copy materials.

But “printed publications” generally exclude products themselves. That is, a commercial product or the public use of a method/process would not normally be considered a “printed publication”, although they might instead fall within on-sale and/or public use prior art categories. Yet associated product manuals, product advertisements, and the like might qualify as printed publications.

“Printed Publications” Versus a “Patent” or “Application for Patent Published or Deemed Published”

Before going any further, it is important to note that U.S. law calls out patents and published patent applications separately from “printed publications”. (35 U.S.C. § 102(a)). But patents and published patent applications can be considered “printed publications” too. Patent-related publications can potentially qualify as prior art as any (or all) of a “printed publication”, something “patented,” and/or as a “a patent issued under section 151, or in an application for patent published or deemed published under section 122(b).” In other words, those categories are not mutually exclusive.

The important point here, which may be counter-intuitive, is that “printed publications” include but also go beyond patent-related publications. For that reason, the term “non-patent literature” (NPL) is sometimes used to describe a typical kind of non-patent prior art that falls under the category of printed publications. That terminology sometimes helps to highlight unique issues that can arise when seeking to establish that an NPL reference qualifies as prior art.

Public Accessibility

The first question in determining if something qualifies as a printed publication is determining whether it was published. Courts have said that “public accessibility” is the touchstone in determining whether a reference constitutes a “printed publication”. A given reference will be considered publicly accessible only if it was made available to the extent that persons interested and ordinarily skilled in the relevant subject matter (or art) exercising reasonable diligence can locate it. There is no formula or checklist for making that determination. Whether a reference is publicly accessible is determined on a case-by-case basis based on all the facts and circumstances surrounding disclosure of the reference to members of the public.

There are really three ways something can be established as publicly accessible in the eyes of U.S. courts:

  • Cataloging/indexing – By establishing that a document was catalogued or indexed in a publicly accessible archive (e.g., a library catalog or Internet search engine) so that persons interested and ordinarily skilled in the subject matter or art can locate it by exercising reasonable diligence and using available research tools, regardless of whether anyone actually accessed it;
  • Distribution/dissemination – By establishing that a document was distributed or disseminated (e.g., mailed, handed out in person, sent in a newsgroup electronic message, or announced orally at a conference and made available) in a sufficiently broad way, without a reasonable expectation of privacy, so that members of the public interested in and ordinarily skilled in the subject matter or art could obtain copies by exercising reasonable diligence; or
  • Public display (without literal distribution) – By establishing that materials (e.g., a temporarily displayed slide presentation, video shown on-site, poster, billboard, etc.) were publicly displayed for a sufficient time and in a sufficiently broad manner, without a reasonable expectation of privacy, so as to be sufficiently accessible to persons interested and ordinarily skilled in the subject matter or art by exercising reasonable diligence, even though copies of the materials were never distributed or indexed and the materials never physically left the presenter’s control.

Notably, courts have said that a sufficient public dissemination or display of materials can make them a “printed publication” even where those materials were never searchable and never indexed/cataloged. Cataloging or indexing something is just one among many ways that something can be considered published and publicly available.

Private communications do not count as printed publications, whether designed for the use of single persons or of a few restricted groups of persons. Anything that is reasonably expected to remain secret, such as private communications marked as confidential or not for distribution or exchanged under a non-disclosure agreement (NDA), will not qualify as printed publication prior art. Although, sometimes courts disregard ambiguous confidentiality restrictions or read alleged confidentiality terms narrowly to still find public accessibility. When dissemination or display is asserted as the basis for public accessibility, it is necessary to look at certain factors to determine the reference was sufficiently publicly accessible to count as a “printed publication”. For instance, establishing public display requires looking at where and how the display occurred, including the openness, size, and nature of the display venue.

Also, technical accessibility alone is not enough if no one of ordinary skill in the art could have reasonably found the materials except by accident. The materials have to sufficiently publicly accessible to be considered “published”, by doing something that reasonably alerts the relevant public to their existence. Materials that are in a library or on web server, or randomly left lying in a public place, but that have not been indexed, disseminated to, or otherwise affirmatively announced to the interested public will not be considered generally publicly accessible, for example.

It may be helpful to consider a push vs. pull distinction regarding the public accessibility threshold. Publication in effect requires that materials be pushed out in some manner that allows the interested public to know about them. Such a “push” could be any of the three options described above: cataloging/indexing, public dissemination, or public display. An interesting facet of this is that anyone can publish a “printed publication.” There is no hierarchy of worthy/unworthy publications. Publication is not limited to certain channels (controlled by gatekeepers). But the mere fact that someone could “pull” information by specifically requesting it is not enough. It begs the question to say that information could be requested if there was no reason for someone to know in the first place that it could (technically) be requested. In short, printed publication status for patentability requires some kind of “push” out of the realm of private knowledge and into the realm of public accessibility.

Date of Public Availability

In order to qualify as prior art against a given claim, a printed publication must also be old enough. The essence of something being “prior art” is that it pre-dated a later effort to patent an invention. This requires looking whether a given publication was publicly accessible (published) before a critical date. The term “critical date” is often used in order to implicitly acknowledge that the date that divides prior art from things that are not old enough to be prior art varies depending on whether or not an exception applies—possible exceptions are discussed below. For a typical “printed publication” by a third party, where no exception applies, the critical date means before the effective filing date of the patent claim at issue.

The date of public availability is sometimes easily determined, but not always. This question is easiest when the materials in question are the kind subject to a predictable and reliable means of publication. For instance, using a U.S. patent application publication as a “printed publication” is straightforward because the patents are official U.S. government documents that are publicly available from the time they are issues and the issue dates printed on the face of patents are reliable indicators of the actual date of issuance (publication). This question is also fairly easy for foreign patent documents.

When in comes to many types of materials, however, dates may not appear on the materials themselves or those dates might not be sufficiently reliable. To use a famous example, Sigmund Freud’s book Die Traumdeutung [The Interpretation of Dreams] was first published in November of 1899 but the title page was post-dated to 1900. Also, dates appearing on a document may indicate something other than a date of general public accessibility. For example, the mere presence of a copyright notice date, printing date, Internet server upload date, or the like on reference itself will not necessarily satisfy public availability evidentiary requirements. But publication by an “established” publisher on something bearing traditional hallmarks of publication (a book’s ISBN, etc.) may be sufficient in AIA trials before the USPTO’s Patent Trial & appeal Board (PTAB).

There can also be disputes about revisions or different versions of a given publication. This is especially true for online materials. Sometimes a publication date may reflect only the initial publication date. But it may not account for the dates that revisions, modifications, or later additions took place. The date of public accessibility is assessed on the basis of the particular version put forward as potential prior art, and cannot be assumed to match that of a substantively different version.

Legal Standards for Evidence of Publication

To complicate matters, use of “printed publication” evidence in formal patent examination or disputes requires satisfying rules around the use and introduction of evidence. Different evidentiary standards will apply depending on where and how patentability or validity is being assessed.

During regular examination of a new patent application at the USPTO, a relatively low evidentiary standard is applied. A date appearing on a document can establish its publication for examination purposes unless the applicant challenges it. (MPEP § 2128).

However, higher standards are applied in contentious proceedings, including IPR proceedings and during infringement suits in courts. In those situations, there are rules against hearsay (Fed. R. Evid. 802 and 803) and rules requiring authentication of evidence (Fed. R. Evid. 901 and 902). These requirements may necessitate use of a witness to authenticate something put forward as a “printed publication” and its alleged publication date. This can include testimony from a librarian who cataloged something as of a particular date or a computer forensic expert able to retroactively determine the date of publication.

Web pages are a common type of printed publication evidence for which the publication date normally needs to be established beyond just a date that appears on the web page itself. Aside from witness testimony, demonstrating a clear reliable process for capturing, preserving, and presenting the web page, such as using the Internet Archive’s “Wayback Machine,” might be acceptable. (See https://archive.org/legal/faq.php).

Complicating matters still further is that a preponderance of the evidence standard is applied in all USPTO matters while a higher clear & convincing evidence standard is applied in courts. So the PTAB may accept something as a printed publication while a district court might not, based on these different evidentiary burdens (under essentially the same evidentiary rules).

Potential Exceptions

A printed publication will not count as prior art if (a) it was by an inventor within a one-year grace period before the patent application’s effective filing date or (b) the publication is by another but an inventor had previously publicly disclosed the invention (within the grace period).

“(a) Novelty; Prior Art.-A person shall be entitled to a patent unless-

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) Exceptions.

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.-A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents.-A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. [see also § 102(c) regarding inventions under joint research agreements that may satisfy this provision]

35 U.S.C. § 102(a) and (b) (emphasis added)

This rather long list of possible exceptions is no doubt confusing. But some general points may aid in understanding the exceptions.

First, the exceptions under § 102(b) fall into two categories depending on whether the alleged prior art is put forward under § 102(a)(1) or under § 102(a)(2). Here, note that § 102(a)(2) applies only to U.S. patents and published patent applications (plus PCT international application publications designating the U.S.). So any non-patent materials like books, journal articles, web pages, and the like will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered. Similarly, any foreign patents or published applications will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered.

Second, under the § 102(b)(1) exceptions that apply to a “disclosure in a printed publication,” there are two possibilities: (A) disclosures made by (or on behalf of) an inventor within the one-year grace period, and (B) where an inventor made a qualifying public disclosure that pre-dated the printed publication. Where they apply, these exceptions establish a “critical date” one year before the effective filing date of the inventor’s patent application (assessed claim-by-claim). In practical terms, exception (B) will rarely arise, partly because it requires satisfying exception (A) plus additional requirements. The more common of the two exceptions is that an inventor’s own printed publication disclosures up to one year prior to a new patent application filing will not count against that inventor as prior art in the U.S.

Illustration of Timeline for U.S. Patent Filing Grace Period
Illustration of Timeline for U.S. Patent Filing Grace Period

One of the more important aspects of these exceptions is that an inventor’s own prior patent application may not qualify as prior art against that inventors own later application depending on when the prior application is published. This situation can arise when a later application does not formally claim priority to the inventor’s own prior application.

These exceptions to prior art status are rather unique to U.S. patent law. Most other countries follow more of an absolute novelty approach, with no grace period for delayed patent filings. So keep in mind that every jurisdiction will have its own rules for what counts as prior art and those rules offer differ from those in the U.S.

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

Categories
Patents Q&A

How Should Patent Marking Be Used?

Patent marking can be important for obtaining full recovery of infringement damages.  When enforcing a patent against an infringer in the United States, damages for infringement of a patented article can usually be recovered only from the date the infringer had actual or constructive notice of the patent(s), whichever comes first.  Actual notice requires the affirmative communication of a specific charge of infringement by the patentee to the accused infringer, such as in a cease-and-desist letter or filing an infringement lawsuit.  Constructive notice is established by the patentee properly marking patented articles, regardless of whether a particular infringer actually sees that patent notice on products. 

The following is a brief overview of basic U.S. patent marking legal requirements as well as guidance about how to properly implement patent marking. A more detailed treatment (with extensive examples) is provided in the Patent Marking Guide.

The U.S. Marking Requirement

The U.S. patent laws provide the following statutory marking requirement:

“Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.”

35 U.S.C. § 287(a)

These statutory marking requirements apply to all types of U.S. patents: utility, design, and plant. Having a marking requirement helps to avoid innocent infringement situations, among other things.

Patent Marking Provides Constructive Notice

Marking patented articles provides constructive notice to the public that an article is patented.  To be legally sufficient to establish constructive notice, the patentee must be able to prove that substantially all of the patented articles being distributed were properly marked, and that once marking was begun, the marking was substantially consistent and continuous.  If marking is defective at first, curing those defects going forward is possible.  But full compliance with marking requirements to provide constructive notice to infringers is not achieved until the time the patentee consistently marked substantially all of the patented products, and if marking was deficient for a time then constructive notice will not be provided unless and until proper marking occurs with subsequent sales. 

Possible Exceptions to Marking Requirements

The most important exception to the marking requirement is where the patentee has not sold any patented articles. When there are no products to mark, there is no failure to mark and therefore no bar to recovery of pre-suit damages.

Additionally, because the marking statute refers only to a “patented article”, patents with method or process claims are treated differently.  Neither marking (constructive notice) nor actual notice is required to obtain back damages for infringement of asserted patents having only method or process claims.  For patents having both apparatus and method claims, marking might still be required (if apparatus claims are asserted) and is therefore recommended. 

Licensee(s) and Other Authorized Parties Must Mark Too

Marking requirements apply not only to the patentee but anyone making, selling, or offering for sale the patented article “for or under” the patentee or importing it into the U.S.  Where a patent is licensed to another, expressly or impliedly, or is the subject of a covenant not to sue or the like, the other entity is required to mark as well.  Authorized activities by an outsourced manufacturer or authorized seller are treated as if they are by the patentee in terms of marking requirements in this respect.  Failure of a licensee or other authorized user to consistently mark substantially all licensed products will frustrate efforts to establish constructive notice.  This requirement for licensees and authorized users is subject to a rule of reason.  Some instances of omitted marking by others might be excused so long as the patentee makes reasonable efforts to ensure their compliance with marking requirements.  It is recommended that any license for a U.S. patent obligate the licensee to comply with marking requirements. If that cannot be done, but a part (sub-component) is sold so that an authorized downstream reseller or importer will use it to assemble a patented article, that the part specifically intended for use in the patented combination carry a “for use under” patent marking notice.

How to Implement Patent Marking: Two Possibilities

There are two ways to mark patented articles in accordance with U.S. law: physical or virtual marking.

Physical Marking

Physical patent marking (which can also be called conventional or traditional marking) involves fixing notices on the patented articles themselves in a way that associates the patented article with the number of the patent.  Such a notice must include the word “patent” or the abbreviation “pat.”, together with the number of the patent. 

If the nature of the patented article means such a notice cannot be fixed to the patented article itself, such as due to size constraints or where the article is a fluid or powder, the notice can instead be placed on a label fixed either to the patented article or to a package containing one or more of the patented articles. This is an alternate form of physical marking that is appropriate if (and only if) there is a legitimate reason the marking notice cannot be directly fixed to the article. And that reason should involve more than mere convenience or subjective preference.

An example of a proper physical patent marking notice (for the fictitious U.S. Pat. No. 00,000,000) would be the following fixed directly on an article covered by the claims of the indicated patent:

Pat. 00,000,000

If multiple patents apply to the same patented article, they can be listed together.  It is not necessary to repeat the word “patent” or abbreviation “pat.” before each patent number in such a list.  Pluralizing the word “patent” is generally fine, as is the presence of an additional word or abbreviation, such as in “patent number 00,000,000” or “pat. nos. XX,XXX,XXX and YY,YYY,YYY”.  The use of “U.S. patent” or “U.S. pat.” would also be acceptable. The text of the notice should be in English.

Virtual Marking

Virtual patent marking is an acceptable alternative to physical marking.  It can be useful in situations where all the patent information required to provide constructive notice cannot easily fit on the patented article or even its label, such as where there are multiple patents that apply to an article that is fairly small in size.  As the number of digits in patent numbers increase, this sort of difficulty increases.  Virtual marking can also be helpful in situations where different patents are associated with different products but having multiple product-specific notices is burdensome—a single notice template might be used listing a URL for a web page with patent association information for multiple products.  For instance, virtual marking can help minimize the need to replace or modify molds used to create a patent marking notice directly on molded articles as new patents issue.

Implementing virtual patent marking involves fixing notices on the patented articles themselves in a way that associates the patented article with the number of the patent.  Such a virtual marking notice must use the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet (that is, a web page URL), accessible to the public without charge for accessing the address. 

If the nature of the patented article makes means such a notice cannot be fixed to the patented article itself, the virtual marking notice (indicating “patent” or “pat.” together with a URL) can instead be placed on a label fixed either to the patented article or to a package containing one or more of the patented articles. This is an alternate form of virtual marking that is appropriate if (and only if) there is a legitimate reason the virtual marking notice cannot be directly fixed to the article. And that reason should involve more than mere convenience or subjective preference.

An example of a proper virtual patent marking notice fixed on a patented article or its label is the following:

Pat. www.example.com/patents

The main feature of virtual patent marking is that the information associating the patented article with the number(s) of the patent(s) that cover it appears on a freely-accessible web page rather than directly on the article or its label.  There is still a requirement for a notice on the patented product or its label.  A marking web page, alone, is insufficient unless there is also a proper notice on the patented product or its label to direct people to that web page’s address. Moreover, a virtual marking notice on a product or its package is insufficient without an acceptable posting accessible from the identified Internet address.

The difference between physical and virtual marking really involves the manner of conveying the required association between the patent number(s) and the patented article.  With traditional physical patent marking, the association is implicit in terms of which patent numbers are including in or omitted from a notice fixed to a particular product or its label.  In virtual marking, the notice fixed to the product or its label merely directs the public to a web page but the web page must further provide an association between given patent(s) and the specific product(s) that practice those patent(s). 

Courts have said that virtual patent marking does not allow a patentee to avoid the traditional burden of determining which patent(s) apply to specific products and indicating that patent-to-product association.  The patentee cannot shift that burden to the public.  A web page that presents a “research project” forcing visitors to determine patent-to-product association(s) on their own fails to provide constructive notice.  Any web page lacking the required “association” between the patent(s) and patented article(s) is legally deficient and will not provide constructive notice allowing recovery of pre-suit infringement damages. 

Certain courts have found the following to be insufficient for virtual marking:

  • A web page listing all of a company’s patents with an indication that “one or more” listed patents “may be used” by unspecified products within a stated product category (cite)
  • A web page listing multiple patent numbers/titles and grouping them by product category, without indicating which specific products within each category were covered by specific patents (cite)
  • A table on a web page listing patent numbers and titles but lacking any product information (where the company sold multiple products and one was unrelated to its patents) (cite)
  • Patent-to-product associations indicated somewhere other than on the virtual patent marking web page (cite)
  • Failing to put a notice indicating a virtual marking URL on hardware sold by a licensee that had pre-installed software that made the combined hardware-plus-software product subject to an asserted patent (cite)

False Patent Marking Prohibited

An important related concept is false patent marking.  False marking generally involves marking products as patented when they are not, or marking products as “patent pending” when no patent application has been filed, with an intent to deceive.  It also applies to intentional counterfeiting.  Penalties apply to intentional false marking (35 U.S.C. § 292).  Although the patent laws exclude from the scope of false marking the indication of an expired patent that once applied to the marked product.   Also, there is no liability for honest mistakes about whether or not a patent applies. 

It is important to only use patent marking where there is a reasonable basis to believe that the product is covered by the indicated patent(s).  Patents that do not apply to a given product must not be marked on it (consider also any invalidation or cancellation of a given patent for continued marking).  In the virtual marking context, patent-to-product associations must be specific enough to avoid false marking.  Imprecise, blanket statements on virtual marking web pages implicating multiple patents and multiple products might give rise to false marking if done for purposes of deceiving the public about which patents, if any, apply to particular products. More generally, avoid marking products with any “patented” language that is confusing, geographically vague, or misleading with respect to that product’s patent status in the USA.

More comprehensive information available in the Patent Marking Guide

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

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Q&A Trademarks

What Should I Do Now That My Trademark is Registered?

Maintaining a U.S. trademark registration requires certain post-registration action. The following is a brief summary of the most important actions a registration should take or consider taking to maintain a trademark (or service mark) registration.

Continue Using the Mark

Continue using the mark in commerce in a consistent and non-generic manner.  Such usage should be prominent enough to be recognized as a distinctive mark by consumers.  Also ensure use is proper trademark usage, as an adjective that modifies a noun rather than as a noun or verb.  Abandoned marks are subject to cancellation.  For marks registered based solely on foreign priority, use in or with the USA must begin within three years of registration or be subject to cancellation or expungement. 

Use Registration Symbol

It is recommended to use the registration symbol ® with a mark in jurisdictions where registered, or alternatively the ™ symbol.  At least the first or most prominent appearance of the mark on a given article, advertisement, etc. should carry such a symbol.  Use of “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” is also permitted for U.S. federally registered marks as well. For U.S. federal rights, there is no legal requirement to use ® or ™ symbols or the like (that is, marking is not required) in order to preserve rights in a mark. However, U.S. federal law does say that failing to use the ® symbol or an equivalent phrase can limit monetary recovery for infringement of a registered mark.

Note that some jurisdictions prohibit the use of the ® symbol with an unregistered mark. So be careful about usage across multiple jurisdictions—the ™ symbol can be used instead with a mark that is unregistered in a given jurisdiction. Moreover, registration in one or more U.S. states does not permit use of the ® symbol.

Maintain Control

If a mark is licensed for use by another, the mark owner must maintain control over the quality of the associated goods and services.  Any such license should be in writing and should include an explicit quality control provision. 

Retain Evidence of Use

It is recommended to periodically collect and retain in your records evidence of use of the registered mark in commerce in the U.S., particularly if not routinely documented in the ordinary course of business.  Such evidence can be useful as a specimen of use or to defend against a challenge to the registration by another entity.  If registration was filed on an intent-to-use (ITU) basis, or a foreign priority basis with an intent to use in the USA, it is further recommended to retain written records of that intent at the time of U.S. filing, such as detailed business plans. 

Evaluate Expanded or Changed Use Over Time

If your use of the mark has expanded to encompass new or different goods/services that are not identified in the registration, it may be worthwhile to pursue an additional registration to ensure full protection.  If use has ceased with some but not all of the goods/services identified in the registration, an amendment can be filed to delete only the unused goods/services.  If your branding has changed, such as a “refresh” that materially alters the commercial impression of a graphical logo or the wording of a mark, it is important to evaluate whether the that new usage supports the existing registration and whether a new application should be filed. 

Make Required Filings and Renew the Registration

If the owner’s name or address has changed, official records must be updated. 

Maintaining a U.S. federal registration also requires submission of a Declaration of Use, with supporting evidence, between the 5th & 6th years of registration.  Additionally, renewal is required between the 9th and 10th years of registration and at ten-year intervals after that, each such requiring a Declaration of Use and supporting evidence.  Madrid Protocol extensions to the USA further require that the underlying international registration be maintained. 

Beware of misleading, official-looking notices sent by private entities seeking payment of trademark-related fees as scams. Have a trusted trademark attorney review such notices if in doubt about whether they are a scam.

More Information

More information about maintaining trademark rights is available here.

More information about strengthening protection of a registered trademark is available here.

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

Categories
Q&A Trademarks

How Can I Strengthen Protection of a Trademark?

Simply establishing trademark (or service mark) rights through use and registering that mark is not the end of the story. Of course, registering a mark is the most important step that can be taken to protect a mark. But certain additional steps can be taken to further enhance or strengthen protection of a brand. The following are possible additional steps to consider in order to increase protection and exclusivity around a given mark in the United States.

Register Domain Name(s)

If not already done, consider registering domain names based upon or incorporating a mark to reduce the chances of cybersquatting.  Consider also registering domains with variations on your brand and mark, such as:

  • Typographical errors and misspellings
  • Phonetic equivalents and alternate spellings (such as British vs. American English)
  • Abbreviations and acronyms
  • Transliterations or translations into other languages
  • Added or modified punctuation (such as dashes)
  • Added or synonymously substituted generic, descriptive, or disparaging terms (such as geographic, corporate, or good/service terms)
  • Alternate top-level domains (TLDs) that may have meaning in connection with your mark, such as country-code TLDs (ccTLDs) or generic TLDs (gTLDs) with letters that make up part of your mark or that have generic, descriptive, or disparaging meaning when used in connection with your mark

Additionally, registered trademarks can optionally be recorded in the Trademark Clearinghouse. This provides benefits that can complement defensive registration of alternate domains. For instance, the trademark holder is notified of any new gTLD domain name registrations matching the recorded trademark.

Secure Social Media Handle(s) and Account/User Name(s)

If not already done, consider locking up social media handles and accounts based upon or incorporating the mark—and maybe also variations on that brand similar to those noted above for domain names

Record Registration with Customs

Consider recording a trademark registration with U.S. Customs and Border Protection (CBP).  Such a recordation allows CBP to help block importation of counterfeit and infringing goods into the USA.  However, CBP recordation requires having a valid registration on the Principal Register and further requires periodic renewal of the recordation.  It is also possible to provide product identification (Product ID) guides, product test kits/tools, and other online or in-person training to CBP to aid in the identification of suspect goods by customs field agents at ports of entry.  CBP recordation to block importation is a significant exception to the general rule that trademark owners have to police infringement themselves.

Record Registration with Online Marketplace Platforms

Certain online marketplaces allow trademark registrations to be recorded in their own private brand registries, such as Amazon.com’s Amazon Brand Registry and Wal-Mart’s Walmart Brand Portal.  The policies and procedures for such registries vary by platform.  They typically require having a granted registration on the Principal Register. Generally speaking, recording in such private registries can assist in blocking the appearance of counterfeit and infringing goods (sometimes automatically) and can also help reduce the risk that your own brand and associated goods will be blocked by the platform. 

Proactively Monitor the Commercial Market

Proactively monitor both online and offline markets for potentially problematic activities by others that implicate your mark.  Aside from CBP recordation (see above), the U.S. government will not monitor private trademark rights, which is left to the mark holder.  Monitoring can involve visiting stores, reviewing advertising media and publications, following competitor activities, and periodic online and/or trademark database searches.

For example, monitoring allows for:

  • Enforcement actions, including infringement lawsuits and demand or cease & desist letters
  • Oppositions, cancellations, and other challenges to TM registrations and applications by others
  • Domain name cybersquatting actions in court or through mandatory arbitration (UDRP, URS)
  • Takedown requests to online platforms (availability and procedures vary by platform)
Photo of Austen Zuege

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