If you are interested in patenting a new invention, or simply interested in assessing its patentability, a helpful early step is to prepare an invention disclosure. Such disclosures gather relevant technical information, as well as details about the identity of all potential inventors. The invention disclosure should be written and should further include drawings or other visual aids. It should be kept confidential. There is no “official” government form for an invention disclosure, though companies may have a form for internal use.
The following sample invention disclosure forms can be downloaded and used to document a new invention for patent purposes:
The main purpose of preparing an invention disclosure is to convey relevant detail details about the structure and configuration of the invention, how it functions, what is believed to be significant about the invention in relation to what has been done before (the “prior art”), and potentially other things that might affect the ability to patent the invention. This disclosure should be prepared by the inventor(s) themselves. It is usually not fancy or long. These sorts of disclosures are simply meant to gather basic, essential technical information and to point out what are considered the most important features. A patent attorney and/or patent searcher can then use the disclosure to gain an understanding of the invention in order to prepare a patent application or conduct a patentability search.
There may be additional documentation and information needed beyond what appears in an invention disclosure. Requests for more technical information are common. For example, patent attorneys will usually conduct at least one inventor interview to gather more technical information for purposes of patenting. But an invention disclosure is a starting point. Inventor interviews are much more productive if the patent attorney has some relevant drawings and other materials beforehand. That allows the patent attorney to have some sense of what the invention is about in order to ask better and more pointed questions.
It is important that an invention disclosure mention all the important features of the invention that might be patentable. Patent attorneys can ask follow-up questions, but they are not mind-readers. Omitting some major aspect of an invention on the invention disclosure entirely is a common mistake. Another common error is to focus on commercial marketability information, omitting technical details about what an invention really is and how it works that matter most for patenting.
An invention disclosure should also be relatively short and focused. While voluminous technical materials might have value for a patent attorney at certain stages of patent application preparation, it is inefficient for a patent attorney to read through dozens or hundreds of pages of such materials without some guidance. And an attorney might not fully or immediately appreciate what is new and inventive in merely “raw” technical data. An invention disclosure should be like a beacon pointing out what the inventor(s) consider to be most significant, at least as a starting point.
Invention disclosure forms that are signed and dated can sometimes provide useful records about who developed a given invention and when. Though a confidential write-up by itself will generally not preserve any patent rights—filing a patent application is required to do that. And there may be bar dates or deadlines by which a patent application must be filed.
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.
Maintaining rights in a trademark (or service mark) requires ongoing action. Failure to continue using a mark, or use in an improper or insufficient manner, can potentially result in loss of a registration for the mark or even loss of all exclusive rights. The following guidance provides suggestions about satisfying use requirements and the proper way to use marks in business and commercial advertising/marketing contexts. The focus is on U.S. federal trademark law, but this guidance is also informative about similar requirements at the state-level and for international usage scenarios.
Continued Use Requirement
In order to maintain rights in a mark it must continue to be used in connection with bona fide (good faith) commercial offerings of the associated goods or services. This means the most basic rule of maintaining rights in a mark is: use it or lose it!
Use on goods occurs when two conditions are met. First, a mark must be placed on the goods or their containers, or on attached tags or labels, or displays associated with the goods. If the nature of the goods makes those kinds of placements impracticable, then use of the mark on documents associated with the goods or their sale qualify. Second, for federal trademark rights, use requires that the goods (bearing the mark) be sold or transported in “commerce”, meaning interstate or foreign commerce and not merely locally. Mere advertising is generally insufficient as evidence of use of a mark on goods.
Use in connection with services occurs when a mark is used or displayed in the sale or advertising of services and those services are rendered in “commerce”, or the services are rendered in more than one state or in the United States and a foreign country. An important distinction is that use of mark in advertising may be sufficient to show use in connection with services, even though advertising alone is generally insufficient to show use with goods.
Use of the trademark by an authorized licensee can be sufficient to maintain a trademark registration as long as the owner maintains control over the quality of the goods or services. Failure to maintain quality control over licensed use can result in loss of rights. Preferably, a written license agreement with a quality control provision should be executed if licensing is desired.
Non-use may make a registration subject to cancellation or the like. Moreover, non-use without an intention to resume use will result in abandonment (loss) of rights.
Excusable non-use may allow an unused registration to still be maintained. However, the requirements to establish excusable non-use are rather strict and generally require non-use to be the result of special circumstances beyond the registrant’s control.
Marks registered in the U.S. based exclusively on a foreign priority registration are subject to cancellation or expungement if they have not been used in or with the U.S. after three (3) years of registration. This is an exception to the general rule that use in commerce is required to obtain a federal registration in the first place.
Proper Form of Use
In order to maintain rights in a mark, use should take a proper form. Improper usage may weaken rights or even result in loss of rights. An explanation of proper usage follows. This includes (1) using a mark as an adjective, (2) using a mark consistently, and (3) optionally using trademark identification/status symbols. More guidance is available from the International Trademark Association here and here.
Use Mark As an Adjective
Trademarks (and service marks) function to identify the source of goods or services. To do so, the distinctiveness of the mark must be maintained. A mark that becomes the generic name for the goods or services themselves will lose trademark protection. Therefore, a mark should always be used as an adjective that modifies a noun and never as a noun or as a verb. A helpful approach is to always couple use of a mark with an appropriate generic term immediately following the mark. For instance, “EXAMPLE widgets” represents proper use of the mark EXAMPLE together with the generic term widgets.
Another helpful exercise to determine if usage is proper is to insert the word “brand” immediately after the mark (along with a generic term). If the wording still reads appropriately, in English, then usage is likely to be proper. For instance, “Buy EXAMPLE brand widgets” still reads appropriately. But “Please EXAMPLE brand me those things” reads awkwardly because the mark is being improperly used as a verb. Beyond just a theoretical exercise, the word “brand” can also be inserted into actual commercial usage this same way.
Marks should also be used prominently. This means the mark should be used in such a way that consumers would understand that it functions as a trademark (or service) mark and identifies the source of the goods or services. Consider where the mark is placed in relation to other text, graphics, or the like. The mark should grab the attention of consumers and not be buried in other text, too small to see, etc.
Although not legally required, a helpful technique is to distinguish the mark from nearby text using all capital letters, boldface or italic font, underlining, quotation marks, color, or other stylized format. A trademark symbol—discussed below—can also be used to distinguish the mark from surrounding text. These aspects of the appearance and presentation of the mark help to convey a commercial impression of the mark as indicating the source goods or services rather than in a generic or merely descriptive way.
Use Mark Consistently
A mark is a specific indicator. So usage must be consistent. If a logo is changed or word(s) are modified that materially alter the mark (so as to no longer create essentially the same commercial impression) then it is possible that rights in the mark could be challenged or lost, or renewal of a registration refused. Spelling (and punctuation, if any) should always be the same. A “refresh” of branding can lead to loss of rights in previously-used marks when it materially alters the commercial impression given by the mark.
Also, do not pluralize or singularize a mark by adding or removing an “s”, and do not use a mark in a possessive form (unless the mark itself is possessive or a non-trademark use as a company name or trade name is involved). For example, LEVI’S® for jeans should not be changed to “LEVI” because the mark includes the possessive “‘S”. Such changes do not reflect proper usage.
Use Trademark Identification/Status Symbols
It is recommended—but not legally required in the U.S. to maintain rights—to include an appropriate trademark symbol with use of a mark.
Use of the trademark registration symbol ® immediately after a mark is permitted and encouraged for any federally-registered mark, though it must not be used for an unregistered mark or for goods or services that are not listed in the the registration. For instance, a registered mark can be identified as “EXAMPLE® widgets.”
Sometimes the term “Registered Trademark” or its translation is used, or the phrases “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.,” but such terms are often less convenient than a symbol. An additional option is the use of a footnote or legend that indicates that the mark is a registered trademark, identifies the registered owner by name, and/or indicates that use of the mark is under license.
But registration in one or more U.S. states does not permit use of the ® symbol, or any wording that suggests federal registration.
The symbols ™ (for trademarks used with goods) or SM (for service marks used with services) can be used even with unregistered marks. For instance, an unregistered or registered trademark can be identified as “EXAMPLE™ widgets.” If there is doubt, or a given use of a mark encompasses both goods and services, use of the ™ symbol might be preferred because it is more widely recognizable.
An appropriate trademark symbol should be used with the first and/or the most prominent use of the mark on the goods, their packaging, or given advertising materials (such as a single web page or single print ad). It is not necessary to continually use trademark symbols with each and every instance of the mark on the same item. On the other hand, there is no legal penalty for unnecessary or redundant use of trademark symbols. Though over-use of trademark symbols may simply be less aesthetically pleasing in some circumstances.
Failing to use a trademark symbol does not result in the loss of U.S. federal trademark rights. However, such a failure may limit recovery of monetary damages. When a mark is federally registered in the U.S., either use of a symbol (or accepted alternative) or actual notice to an infringer is required in order to recover profits and damages for infringement. Use of the trademark registration symbol ® (or the phrase “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.”) along with a registered mark provides acceptable notice of federal registration to all potential infringers to allow recovery of monetary damages.
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. In the U.S., use of the ® symbol with an unregistered mark may bar remedies for alleged infringement due to unclean hands, may constitute fraud, and/or may create liability for false advertising.
Retain Evidence of Use
The requirement that a mark must be used to maintain rights gives rise to a need to keep and retain evidence of use of that mark with the relevant goods and/or services. If someone ever seeks to challenge the mark for alleged non-use, or if a registration is audited, such evidence can be important. For some marks subject to extensive use, evidence of use may be plentiful and easily obtained. However, for other marks, usage might be less widespread. For example, some marks might be used with a seasonal service business such that evidence of use is mostly available only at certain times of the year.
The first important point is that evidence of use should be maintained for all goods and services in which rights to the mark are claimed. For a registration, this means all of the explicitly-identified goods and services. Evidence of use with only some but not all of the identified goods or services will usually be insufficient (at least with respect to those goods and services for which evidence of use is lacking).
The sort of evidence retained should also show proper usage of the mark. Proper use is discussed above. It may be unhelpful to retain evidence that shows improper usage in a generic or merely descriptive sense rather than to identify the source of goods or services.
Also, evidence of use should be maintained for each jurisdiction where rights in a mark are claimed. Evidence of use in one country is usually insufficient to show use in a different country, for instance. If you wish to maintain rights to an international portfolio of marks, be sure to retain suitable evidence in each jurisdiction of use.
Lastly, if a registration was initially filed based on a claim of an intent to use the mark (including based on foreign priority without actual use in the USA), then evidence of that intent at the time of filing should be retained too. This sort of evidence can include written business plans or the like.
Renew Your Registration
A registration of a mark must periodically be renewed to stay in effect. Registrations can usually be renewed indefinitely so long as there is continued use. The U.S. requires renewals at ten-year intervals, plus a one-time certification of use after the first five years of registration. All renewals and declarations of use to maintain a registration require supporting evidence of use.
In the U.S., “common law” rights in a mark may continue to exist even if a registration in that mark is abandoned but commercial use of the mark continues. However, that may not be the case in other countries. If a registered mark is still in use, it is usually worthwhile to renew the registration.
Extensions of an international registration under the Madrid Protocol require that the underlying international registration be maintained too. This means that both the U.S. extension registration and the international registration must be renewed in order to maintain registration in the USA.
However, BEWARE of misleading, official-looking notices sent by private entities regarding a trademark registration requesting payment of fees. These are often scams. See examples of such misleading scam communications here (USPTO-related) and here (WIPO/Madrid-related).
Updating and Amending a Registration
If the use of a mark changes, or the ownership of the mark changes (including a merger or change of name or the owner), then a registration should be updated or amended. The owner and any legal representative also have a duty to maintain current and accurate addresses in official records. This allows for prompt receipt of any official post-registration correspondence, including notifications of any challenges to the registration.
Amendments to the scope of the registration may be possible, and even required. Selected goods and services can be deleted from a registration while others remain, if the scope of use is reduced. But expansion of use generally requires filing a new application—existing registrations cannot be expanded to add new identifications of goods and services. Amendments to the depiction of the mark itself are rarely permissible.
Monitor the Marketplace
It is helpful to proactively monitor the marketplace for potentially problematic activities by others. A few instances of infringement or improper usage of a mark will generally not result in loss of trademark rights in the USA. However, the widespread presence of infringing or simply improper uses might eventually lead to genericide, that is, the mark becoming generic, which would result in the loss of exclusive rights. Laches or other equitable doctrines might also bar certain forms of relief against an infringer if a lawsuit is inexcusably delayed—though this is very context-specific.
Additionally, the existence of similar marks and registrations by others can have the effect of weakening the scope of exclusive rights. So even if third party usage does not completely destroy rights in a mark those third party uses may still weaken it.
In theory, the existence of a registration should automatically block a later registration by someone else that is likely to cause confusion. That is the point of regular examination procedures for all new trademark applications. But examination is not always perfect. There are opportunities to challenge the applications and registrations of others. But the opportunities to do so decrease over time. In any event, potentially problematic uses by others must first be identified before they can be challenged.
When it comes to infringement, mark owners must police their own rights. That is, in most situations, the government will not police infringement for you. It is generally up to the brand owner to identify infringement and pursue legal action where appropriate and desired.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
For pending patent applications, office actions are commonly sent by the U.S. Patent & Trademark Office (USPTO) rejecting and/or objecting to aspects of the application on the merits. The applicant must respond to an office action within a certain response period in order to avoid abandoning the patent application. The back-and-forth communications between the USPTO and the applicant is called “prosecution”. Nearly all U.S. patent applications receive at least one office action. Yet most applicants are able to overcome the rejections/objections to obtain a patent. This means applicant responses to office actions are important in obtaining patents. But how should the applicant respond?
Overview
The best way to respond to an office action will vary for one case to the next. The most appropriate response strategy depends on the specific context. Generally, the following factors will influence how best to respond (if at all):
Specific rejections and/or objections made in the office action
Law and procedures governing the rejections/objections
Scope and content of the patent application:
current claims
original disclosure of the applicant’s invention (support/written description)
Applicant’s overall patenting strategy
In any situation, typical responses will consist of arguments or a combination of amendments and arguments. Any response that contains an amendment is called an “Amendment”. A response that contains only arguments can be called a “Response”, though the USPTO still classifies these as a type of amendment. Certain other types of information and accompanying filings, such as petitions, may also be submitted together with a response in some circumstances. Payment of official fees may also be required with a response, such as extra claim fees or extension of time fees.
The Specific Rejections/Objections
Not surprisingly, the appropriate way to respond to an office action depends on the particular rejections and/or objections being made. Though a compliant response generally needs to address all of the rejections and objections made in the office action. It is possible to informally group rejections and objections into three categories: (1) prior art-based rejections; (2) eligibility rejections; and (3) formality rejections and objections.
Prior art-based rejections are ones that assert particular claims of an application are not patentable based on what was already known in one or more cited prior art references. These include rejections based on anticipation (35 U.S.C. § 102), also called lack of novelty, or based on obviousness (35 U.S.C. § 103). Whenever there are rejections made based on cited prior art, the applicant should consider what the cited art actually discloses, teaches, and suggests, and whether the office action accurately characterizes those teachings and disclosures. It is common for applicants to disagree with the patent examiner about the scope of the prior art. These are often factual arguments about what was or was not actually known in the prior art.
Eligibility rejections deal with questions of whether the subject matter of the invention is eligible for patent protection. These usually pertain to the utility requirement for utility patent applications (35 U.S.C. § 101). Though design patents (35 U.S.C. § 171) and plant patents (35 U.S.C. § 161) have different eligibility requirements. Abstract ideas, natural phenomena, and laws of nature are not patent eligible in the USA. Eligibility/lack of utility rejections tend to be most common for certain types of technologies, such as software-implemented inventions, methods of medical diagnosis and treatment, etc. Responding to these rejections can often be challenging.
Formality rejections are ones that generally deal with the form of the patent application. These are very often about the procedures and technicalities that applicants must comply with. These include rejections based on indefiniteness or lack of enablement (35 U.S.C. § 112), and objections to the drawings or specification or for informalities like typographical, spelling, or grammatical errors in the claims. Formality rejections are sometimes cured through corrective amendments, though they can also be argued sometimes.
Applicable Law and Procedures
Office actions are prepared by patent examiners who must follow the patent laws, and interpretations of those statutes by courts, as well as USPTO regulations and procedures. In general, patent examination in the U.S. follows the guidance and procedures set forth in the Manual of Patent Examining Procedures (MPEP). The MPEP is usually the first place to look for guidance about the legal standards and procedures that a patent examiner is supported to follow.
Any rejections or objections set out in an office action must comply with applicable law. Applicants will often disagree with an examiner about legal requirements to sustain a rejection. It is common for applicants to argue that an examiner has not met his or her burden to reject a particular claim of a patent application. These are often legal arguments about what the law requires (or does not require).
Scope and Content of the Patent Application
A suitable office action response will depend on what is recited in current claims and in the original disclosure (specification) of the application. Any office action will have been based on the way the applicant’s invention is disclosed and claimed. The way that the applicant has presented the invention in the application can vary a lot. Applicants have a lot of discretion in how they do so. This means the application itself is an important starting point in determining how best to respond to the office action.
The claims of the application recite the scope of the exclusive legal rights sought in the invention. That is, the claims define the invention sought to be patented. Applicants can usually amend the claims to adjust their scope and format. New claims can also sometimes be presented. Narrowing amendments might be made distinguish the claimed invention from cited prior art, for instance. Or clarifying claim amendments might be made to resolve formality rejections or objections. The implications of claim amendments can be significant. Narrowing amendments reduce the scope of exclusive rights in any resultant patent. And amendments can also result in prosecution history estoppel, which limits the interpretation and scope of enforceable rights. But the key is that the claims can potentially be amended in order to overcome rejections and/or objections.
The rest of the patent application (or specification) is significant in terms of how it discloses the invention. For instance, there may be explicit definitions of certain terms used in the claims that are implicated by a rejection in an office action. Also, the scope of the original disclosure (the “written description”, which includes any drawings) is in most respects fixed at the time the patent application was filed. An applicant cannot add “new matter” to the application after filing. This is often important because any claim amendments must have support in the original disclosure. An applicant cannot try to avoid cited prior art by amending the claims to recite something “new” that was not originally disclosed. So the original application constrains what sorts of later amendments are permitted.
Applicant’s Patenting Strategy
Lastly, the applicant’s overall patenting strategy will play a major role in how best to respond to an office action. These are often questions about what claim scope the applicant desires and what scope the applicant is willing to accept or settle for.
For example, business objectives are important. A patent application might disclose multiple possible embodiments of an invention with different configurations, features, etc. Some of those things might be merely optional or have been omitted from commercial versions of the invention. While certain response strategies might result in allowance and grant of a patent, any that depart from the embodiment(s) of the invention that the applicant is actively commercializing might have limited practical value. The relationship of a given application to other pending applications or granted patents, if any, can also be significant. As can the potential for a further, related (continuing) application.
There may be timing considerations too. Sometimes an applicant wants to obtain a granted patent as quickly as possible. Alternatively, it may be desirable to slow down patent examination to allow time to determine which disclosed embodiment of the invention seems the most commercially viable.
Additionally, the applicant’s budget and available resources can play a significant role. Official fees and attorney fees associated with further pursuit of patent protection can be significant. Applicants usually desire to have broad exclusive patent rights in their invention. But broad claims are often much harder to obtain. There is frequently greater effort and expense involved in pursuing broad claims, which is why applicants might settle for narrower claims. On the other hand, there can be long-term cost savings associated with maintaining a single patent rather than multiple patents, which might suggest making a more robust response to try to avoid additional patent filings. In short, budget constraints and business considerations will sometimes influence the way an office action response is prepared aside from the merits of the case.
Summary
There are many—sometimes competing—factors that will influence how to respond to a patent application office action. There is no one right way to respond. The most appropriate response strategy will take into account the many different considerations, backed by knowledge of the applicable law and procedures as well as an understanding of the technology involved with the invention. The overview given here is really only a basic introduction. Other options may be available in specific situations that are beyond the scope of this introduction. Given the complexity of patent law a patent attorney will generally be aware of the full range of options and can advise about specific cases.
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.
There are a number of different types of patents and patent applications. The available types of patents and patent applications also vary by country. Before turning to those specifics, an important initial distinction to note is between a patent application and a granted patent.
Patent Applications Versus Granted Patents
A patent and a patent application are not the same thing. This is a common source of confusion for those unfamiliar with patent law.
Patent Applications
A patent application is essentially a request by an inventor/applicant to obtain a patent. It is a custom-prepared document rather than a template form that is filled-in. Simply filing a patent application does not by itself entitle the applicant or inventor to enforceable legal rights. More is required to secure enforceable exclusive rights in an invention. Filing a patent application is just the first step in that process. Importantly, applications generally have to undergo an official examination to assess patentability. The applied-for invention may or may not be patentable.
Pending patent applications are normally (but not always) published after approximately 18 months. This means that there are publicly-available “patent application publications” or “published patent applications”. But these still only pertain to a (pending) patent application as opposed to a (granted) patent. A patent application publication, alone, is not enforceable.
There is really nothing final about a patent application when it comes to rights in an invention. Whether published or unpublished, the existence of a patent application really only means that someone currently is or was in the past pursuing patent protection. A good analogy is somebody filing a complaint to a commence a lawsuit: they hope to win, eventually, but merely initiating the lawsuit is not the same as a final judgement on the merits. There can be changes to a patent application while it is pending. So the published version of a given application may not fully reflect its current contents. And patent applications can be abandoned entirely.
Granted Patents
A patent is granted (or issued) by a government as a “public franchise” and gives the owner(s) exclusive rights to an invention. The scope of the enforceable legal rights are defined by the claim(s) of the patent. A patent is also enforceable only in a given jurisdiction. There is no such thing as an international patent enforceable throughout the world. So obtaining exclusive legal rights in multiple countries usually requires obtaining patents in each of those individual countries—though a few regionally-enforceable patents exist outside the USA. In the U.S., a granted patent is presumed valid because it has undergone pre-grant examination to assess patentability. Though even granted patents can still be challenged.
Every patent starts out as a patent application. And there may be multiple patent applications related to a given patent. But, on the other hand, any given patent application might or might not turn into a granted patent. A patent office may reject the patent application because the claimed invention is unpatentable, for instance. Or an applicant may simply abandon an application before a patent is granted for a variety of reasons.
Patent Families
Patents and patent applications that are formally related to each other are often referred to as a patent “family”. This includes reference to “parent” and “child” patents and applications.
Types of Patents
There are three types of patents available in the United States for different types of inventions:
Utility
Design
Plant
Utility patents are directed to useful inventions. If someone refers merely to a “patent”, chances are they mean a utility patent. Most U.S. patents are utility patents. In other countries these may have a slightly different name, like invention patents in the People’s Republic of China.
Design patents are directed to inventive ornamental designs of useful articles. They do not cover functional features or designs in the abstract—unconnected to an article of manufacture. In some other countries, designs are not covered under patent laws but instead as either “industrial designs” that are a unique type of protection or something closer to trademark (trade dress) protection.
Plant patents cover inventive asexually reproduced plants. Some inventions related to plants can be protected by utility patents, which is to say that a plant patent is not the only possible type of patent protection available for plant-related inventions.
The types of available patents are not the same around the world. In some countries, utility models or petty patents are available. But those types of patents do not exist in the USA.
Types of Patent Applications
There are a number of different types of patent applications in the USA:
Provisional
Nonprovisional
Continuing Applications:
Divisional
Continuation
Continuation-in-Part (CIP)
PCT International Application (and associated National Phase Entry)
Hague International Design Application
Reissue
Provisional applications are not examined but can be relied upon by a later-filed non-provisional application claiming “priority” to the provisional. They serve as a kind of temporary placeholder to preserve rights to file a nonprovisional application within a year. Provisional applications are available only for utility and plant inventions. They are not available for design inventions. The U.S. and a few other countries permit provisional applications but most countries do not.
A nonprovisional application is essentially just a regular patent application. It can be an application for a utility, design, or plant invention. Nonprovisional applications in the U.S. undergo substantive examination and can potentially result in a granted patent.
Continuing applications are special types of nonprovisional applications that claim priority to an earlier, co-pending domestic U.S. nonprovisional application or PCT international application designating the U.S. But an application with a priority claim to a prior foreign application or U.S. provisional application is not considered a continuing application. What is called a “divisional” application in many other countries might be called either a “continuation” or “divisional” application in the U.S.
The PCT system, which is administered by a United Nations agency (WIPO), provides a sort of application clearinghouse to facilitate the pursuit of patent protection in various participating countries. But the PCT system still requires action in individual countries or regions. At the start, a (single) PCT international application that designates selected participating countries (usually all participating countries) is filed in a “receiving office”. The international application can then later enter the national phase (or regional phase) in one or more designated countries or regions. A PCT national (or regional) phase entry is actually not separate from the PCT international application but merely represents a different (national/regional) phase in the life of the same international application.
Hague international design applications are roughly the equivalent of a PCT application but for design inventions.
Reissue applications are applications to correct an error in an issued patent. In other words, reissues only arise after a patent has already been granted. Broadening reissues, which enlarge the scope of the claim(s), must be filed within two years of grant of the underlying patent. Other (non-broadening) reissue applications are not subject to the two-year filing deadline. Grant of a reissue results in surrender of the original patent.
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.
There are three types of patents available in the United States: utility patents, plant patents, and design patents. Each type of patent addresses different types of inventions. What does a design patent cover?
A design patent covers a new, original ornamental design for an article of manufacture. (35 U.S.C. § 171). Put another way, a design patent protects the overall visual appearance of a useful article. This can involve surface ornamentation applied to or embedded in the article, the shape of the article itself, or combinations of such things.
Front Page of Albert Einstein’s U.S. Design Patent No. D101,756 (left) and Front Page of U.S. Design Patent No. D168,677 assigned to Apple, Inc. (right); see also, e.g., Thomas Rinaldi, Patented: 1,000 Design Patents (2021)
It is important to note what design patents do not cover. They do not protect designs in the abstract that are unconnected to an article of manufacture. An original artistic painting is copyrightable but cannot be the subject of a design patent because there is no article of manufacture present. Also, design patents do not cover useful features as such, only ornamentation. Useful aspects are properly addressed only in utility patents. Anything with an appearance entirely dictated by function lacks ornamentality. However, a design patent must relate to a useful article and aspects of the claimed design can be useful, so long as there is visual ornamentation that—as a whole—goes beyond the purely functional aspects.
In many other countries, designs are not covered by patent law but rather “industrial designs” are registered as a different type of intellectual property (IP). Other countries sometimes administer industrial design registrations in a manner adjacent to or related to trademarks.
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.
Businesses usually assign primary responsibility for patents and patenting of the company’s new inventions to a particular person or department. But who should have that responsibility? There is really no right or wrong answer. Different companies handle this differently. Though there are some things to consider that may suggest the best way to assign responsibility for patents.
If a company is active enough with patents, it may have a dedicated intellectual property (IP) department or group with in-house patent attorneys taking primary responsibility. However, the question dealt with here is really how to assign responsibility for patents in the absence of dedicated in-house IP staff.
There is a Range of Possibilities
First off, let us take a brief look at the possibilities. Responsibility for patents could be given to any of the following departments that exist in many companies:
Engineering/Research & Development (R&D)
Legal (including an IP group within legal)
Finance/Accounting
Sales & Marketing
Responsibility can also be assigned to individual people in a company, often an executive, officer, or in-house counsel. These people might be the heads of the departments listed above. In smaller businesses, we could add to that list the CEO, president, general manager, or a member-owner of a limited liability company (LLC).
Assigning primary responsibility does not mean other departments are excluded from patent decision-making. And sometimes budgetary allocations for patents might be split between different departments, such as allocating some or all patent-related fees to engineering/R&D’s budget while a legal department maintains responsibility for overseeing day-to-day patenting activities. Inter-departmental committees can also be formed.
Key Considerations
The ideal way to look at where primary responsibility for patenting should be placed within a company is to look at what will best achieve the company’s overall objectives and goals. Those will not always be the same. For some companies, filing as many patents as possible is the goal. For others, minimizing overhead and cost-cutting is more important than patents. There are endless possibilities. Though in many situations, the company’s goals will not explicitly address how patents fit into the picture. Figuring out how patents might advance larger company goals is usually part of those very responsibilities. But there are a few recurring issues that may influence who should have primary responsibility for patents.
First, consider typical patent expenses as a proportion of a company’s overall budget, and the anticipated volume of patent activity. In small companies, the cost of seeking even a single patent may be substantial compared to other expenses, whereas in a large multinational company any individual patent has an insignificant impact on a company-wide budget. This tends to affect how (and how much) responsibility is delegated. The volume of patenting is also important. This is both a matter of the cumulative budget needed for patent activities but also the likely workload that supervision of a patent portfolio presents to the responsible person or department.
Intra-company rivalries may influence assignment of patent responsibilities. Different departments may compete against each other for resources and budget allocations. Responsibility for patenting might be seen as a way to exert control over certain budgetary issues. This has the potential to produce dysfunctional situations. One department with responsibility may try to under-utilize patenting in order to effectively (if somewhat surreptitiously) re-allocate budget resources elsewhere. Is that in line with company-wide goals? Consider the possibility and likelihood of this occurring when assigning these responsibilities.
Another important consideration is bandwidth. It makes little sense to assign patent responsibilities to a person or department with no time or capacity. This responsibility shouldn’t be like an unfunded mandate. Inaction due to lack of time is also a recipe for loss of patent rights. And yet, bandwidth concerns should, in theory, be temporary ones. In the long term, other considerations should take precedence. A company should eventually address bandwidth limitations through hiring or other organizational changes to allow the best-situated person or department the time and resources to meaningfully execute the company’s goals around patenting.
Individual temperament can be a significant factor. For example, an individual with a strong anti-patent bias may not be the ideal choice to lead a program intended to obtain the maximum number of patents. More generally, some people may not understand patents or legal issues well. This is often an is/ought problem. Some people act based on how they think the legal system—and patent examination in particular—ought to work, rather than based on how it actually operates. For instance, some engineers struggle with the ambiguities inherent to patent law and legal issues in general, and can get frustrated with legal matters that depart from the sort of scientific and engineering precision they expect elsewhere. As another example, some business people have ideas about legal definitions of what constitutes “prior art” or “obviousness” that are simply contrary to existing law. And on top of all that, some people simply lack the objectivity needed to oversee patent matters effectively.
Having a firewall between supervisors of patent matters and named inventors can be worthwhile. Particularly where bonuses are paid to inventors, conflicts of interest can arise when named inventors oversee their own patent applications. The main issue is that persons supervising patent applications sometimes show more interest in their personal bonuses than company goals. For instance, they may pursue futile or worthless patents or questionably name themself as an inventor simply to personally obtain a patent- or invention disclosure-related bonus. Having a policy in place that prohibits self-supervision of patent matters might be helpful, especially in larger organizations. Though, on the other hand, self-dealing is not always a problem, and in the absence of inventor bonuses this may be a minor concern.
What Is Most Common and Why?
Most commonly, responsibility for patents is assigned to (a) a legal department, (b) an engineering/research & development department, or (c) a patent committee specially formed to handle patent issues. Some combination of these possibilities is also common. In small companies where there are no “departments” as such, having the CEO or other high-level executive take responsibility is typical.
Because patents have a legal character, and often require working with an outside patent attorney specially licensed to practice patent law, it is very common to have an in-house legal department have responsibility. This way you have in-house lawyer(s) talking to outside patent lawyer(s). In-house counsel will understand legal concepts and may already be managing relationships with other outside attorneys. Also, having in-house legal departments involved can help funnel patent-related expenses through existing legal billing and expense tracking systems that the legal department may already be using in other contexts.
Because patents involve inventions with a technical or scientific character, it is also very common to place primary responsibility with an engineering or R&D department. Inventions typically arise out of that department anyway. So it often makes sense to have that department’s personnel closely involved. For similar reasons, engineering/R&D personnel might also have the greatest interest in patents and the technology involved. In this sense they are more likely to see this responsibility as an interesting opportunity rather than an unpleasant chore. Inventors also often take pride in their inventions, so they and their immediate co-workers are usually motivated to see them protected by patents.
Lastly, having some kind of specially-created patent committee involved is another common approach. This committee might have only partial responsibility, such as responsibility for reviewing invention disclosures and determining whether or not to proceed with patenting or to manage patent portfolio maintenance and annuity payments. An advantage of these committees is that they can allow for cross-disciplinary teams that encompass personnel from multiple departments. These committees can be a great way for companies to help keep everyone in alignment. These committees can also help alleviate concerns that an engineering/R&D department will be overly eager to patent everything and anything. Though such committees really only make sense when a company is of a certain size.
Less Common Approaches
Various companies have assigned responsibility for patents to nearly every possible department or person. Not all companies are organized the same, and their resources and ongoing business activities might suggest different approaches. Not every company has an in-house legal department, for instance. Though a common reason for assigning responsibility outside of a legal or engineering/R&D department is simply bandwidth and capacity to take on the responsibility.
Sometimes patents are overseen by finance/accounting. The reasoning sometimes goes that patents are an overhead expense, so finance should keep those in check. Another more subtle reason is that finance often understands revenue sources and therefore might represent a relatively neutral arbiter of what sort of patenting expenses make sense for the business. On the other hand, finance personnel may not grasp the technology involved in patents as well as others, or simply may not have much interest in patents.
Other times marketing or sales oversees patents. This might make sense if a company is heavily involved with trademarks and only occasionally has patentable inventions. Another reason is that some companies see patents as protecting their sales activities—rather than their inventions in the abstract—and so they give sales & marketing say. On the other hand, sales & marketing personnel sometimes have a negative or ambivalent attitude toward patents. That is partly because inventions rarely originate with them. It is just as common, if not more common, for sales & marketing to see patents as taking budget allocations away from their own projects, like advertising campaigns. Lastly, sales & marketing personnel frequently have expectations that are not aligned with actually-existing patents laws. This may take the form of unrealistically expecting a broad legal monopoly without regard for the quid pro quodisclosure of an invention.
The main reason that other departments like finance/accounting, sales & marketing, etc. rarely have responsibility for patenting programs is that these departments tend to be further removed from relevant facts and information. To the extent that there are disputes over who should have a say over patent matters, having a committee that includes personnel from these other departments can be a good compromise that allows for input and shared responsibility without creating awkward disconnects or glaring inefficiencies. For instance, having a committee to approve individual invention disclosures and/or to set high-level patenting goals can be worthwhile when coupled with passing responsibility for day-to-day management of patent applications and granted patents to a specific department or individual.
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.
Novelty and non-obviousness requirements for patentability are assessed based on the contents of the “prior art”. Older patents and publications generally count as prior art. But public uses and on sale activities can count as prior art too. Prior “on sale” and public use activities of others (competitors) generally constitute prior art. Though an inventor’s own activities can potentially be treated as prior art as well. An inventor placing his or her claimed invention on sale prior to filing a patent application may be treated as prior art against that later application, unless a patent filing grace period applies. To account for the 1-year statutory grace period, it is common to say that an “on-sale bar” arises when an invention is commercially exploited by an inventor before a “critical date” that is one year prior to the effective filing date of the relevant claim(s) of the patent application. If an “on-sale bar” applies, it qualifies as prior art under 35 U.S.C. § 102(a)(1) against a given claim, for both novelty and obviousness analyses. Under current U.S. law, the on-sale bar applies to commercial sales activities that happen anywhere in the world—though older (pre-AIA) laws limited it to on-sale activities involving the U.S.
There are some nuances as to what does or does not qualify as placing an invention “on sale”. A two-part test is applied in the U.S. A patent claim is invalid or unpatentable under the on-sale bar if, before the critical date, the invention was both:
the subject of a commercial sale or offer for sale; and
This analysis hinges on how an invention is claimed. Depending on what specific subject matter is claimed in a patent or patent application, and how broadly or narrowly it is claimed, the on-sale bar analysis may lead to different conclusions. Also, the on-sale bar is subject to an experimentation exception when an inventor’s own activities are involved.
On-sale bars differ by jurisdiction. Many other countries have an absolute novelty requirement without a patent filing grace period. And some other countries have no on-sale bar at all, or one that applies only to sales in that particular country. It is important to consider the specific law in each individual country where patent protection is sought if sales activities have already taken place. Commercial exploitation of an invention might bar patenting in some countries but not others, depending on the specific circumstances involved.
Furthermore, it is important to note that the on-sale bar is just one among many potential bars to patentability. Public use or printed publication bars, for instance, might arise out an inventor’s or competitor’s activities occurring prior to filing a patent application.
Purpose
The on-sale bar serves a number of purposes. Principally, it avoids an extension of patent protection beyond the statutory term. Modern patent laws are premised on granting only a limited monopoly in a claimed invention in exchange for disclosure of the invention. If an inventor could commercially exploit or profit from an invention and then much later still seek a patent, the expiration of that patent would effectively be extended beyond the intended duration limits. Also, the public notice function around the exclusive rights granted in patents would be frustrated if patent rights could spring up long after an invention became commercially available. The on-sale bar also protects the public’s right to retain knowledge already in the public domain.
When dealing with an inventor’s own actions, this means an inventor has to make a choice between patenting his or her invention or keeping it secret:
“it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly.”
Inventors are not permitted to have things both ways, or, to have their cake and eat it too. Though, in practical terms, not all inventions lend themselves to secrecy. It may be possible to maintain secrecy over certain manufacturing processes or the identities of certain materials used in a liquid solution—like a proverbial “secret formula”. But it is usually impossible to keep the physical/mechanical configuration of a product secret except by not selling or publicly using it at all. That means patent protection may be the only way to have market exclusivity in certain types of inventions.
U.S. patent laws do, however, provide a one-year grace period for patent filings, unlike many other countries. And an inventor’s own experimental activities are excepted from the on-sale bar. But these are essentially the only exceptions to a general policy requiring that inventors promptly seek patent protection or forfeit rights patent rights by commercializing their inventions.
Another important purpose of the on-sale bar mentioned above is to prevent patents from removing things that are already commercially available from the public domain. While much of the discussion that follows emphasizes inventors’ own activities, which is often the primary question when these issues arise, on-sale bars can apply to commercial activity by anyone. If someone else had already placed something on sale, it usually counts as prior art against a later-filed patent claim (unless the later-filing inventor qualifies for the prior disclosure exception under 35 U.S.C. § 102(b)(1)(B)). It does not matter if the person or entity that previously commercialized something chose not to patent it. The on-sale bar is an independent bar to later patenting that does not depend on someone having previously patented or attempted to patent something.
Sales
Commercial sale of an invention before the critical date gives rise to an on-sale bar. Though a sale for experimental purposes is distinguished from a commercial sale and is excluded from the on-sale bar. A commercial sale normally involves transferring property rights (that is, title to the goods) for consideration that the buyer pays or promises to pay the seller for the thing bought or sold. However, in this context, commercially leasing an inventive product is treated as a commercial sale even though title to the goods is not transferred—this includes standard computer software licenses for software-enabled inventions, for example. Even a single commercial sale can give rise to an on-sale bar. It does not matter whether or not the details of the invention are made available to the public through the sale, or that it was a sale subject to buyer approval (that is, in a “sale on approval” where the buyer could potentially return the goods to the seller). Moreover, using an inventive product while providing commercial services triggers the on-sale bar too.
When an invention is for a method or process, a sale of that inventive method or process before the critical date will give rise to an on-sale bar. For example, if an invention is a method of manufacturing something, selling goods manufactured using that inventive process constitutes a sale. Additionally, selling a product that embodies the essential features of an inventive method of use will constitute an on-sale bar for the claimed method of use. However, whether inventive activity pertains to an invention involving a method, an apparatus, or both, may not be apparent until a patent application is prepared—or possibly not until much later when particular claims are allowed or granted.
Merely licensing or assigning rights to an invention does not constitute a sale. Though a commercial sale of an invention by a licensee before the critical date would give rise to an on-sale bar, because the licensee is considered to stand in the shoes of the patentee, and that would include commercial use of a method of making a product by a licensee.
However, an inventor outsourcing manufacturing to validate the manufacturing process for regulatory approval only and stockpiling the invention only for that inventor do not, without more, constitute a sale where the inventor maintains control of the invention. But commercial agreements between a patentee and its supplier or distributor are not exempt from the on-sale bar, such as where title to the goods passes to the distributor or where the manufacturer/supplier is free to market the product or disclose the process for manufacturing the product to others. Also, method or process inventions cannot be stockpiled, and outsourcing the commercial use of an inventive method/process of making something would generally trigger the on-sale bar.
Commercial Offers for Sale
A commercial offer for sale before the critical date, without a sale actually being completed, also establishes an on-sale bar. The U.S. Supreme Court has described commercial offers for sale as occurring when an invention is first marketed commercially. The offer must be commercial rather than experimental in character, just as with completed sales. Also, as with completed sales, a commercial offer for sale of a method/process invention before the critical date give rise to an on-sale bar, though mere licenses and assignments of rights do not.
However, lower courts have effectively read-in a significant limitation on what constitutes a “commercial offer for sale” based on commercial contract law. “Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale . . . .” Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir. 2001). Lower courts have pointed to general commercial law for these determinations rather than the law of the particular state where the transaction took place, looking to the Uniform Commercial Code (UCC) for guidance. Though the UCC does not define “offer”. So courts have further looked to the Restatement (Second) of Contracts, which says, “An offer is the manifestation of willingness to enter into a bargain, so made as to justify another person in understanding that his assent to that bargain is invited and will conclude it.” (§ 24). The Restatement also says there must be intent to be bound, because “[a] manifestation of willingness to enter into a bargain is not an offer if the person to whom it is addressed knows or has reason to know that the person making it does not intend to conclude a bargain until he has made a further manifestation of assent.” (§ 26). Although no particular language is required to constitute an offer for sale, lower courts have said (citing and extending § 33(3) of the Restatement, which says that leaving proposed term(s) open indicates a non-“offer”) that a communication that fails to include material terms (such as quantities, time of delivery, place of delivery, or product specifications) is not an “offer” in the contract sense. Though a “quote” (sent in response to a request for quotation) has been considered equivalent to a commercial offer for sale when it included essential price, delivery, and payment terms (plus alternative product amounts that reflected multiple distinct offers for sale).
These judicially-created limitations on commercial offers for sale mean that the standard is an ambiguous one based on the involved parties’ subjective intents and understandings, rather than a bright-line one. As long as current lower court interpretations prevail, whether a communication naming a price constitutes a commercial offer for sale or mere preparations for future offers for sale (that alone do not give rise to an on-sale bar) depends upon the facts and circumstances of each particular case. So early sales, marketing, and promotional efforts may or may not trigger the on-sale bar, depending on the circumstances (including whether and how a customer responds to them). A salesperson vaguely discussing the possibility of offering a product in the future without the potential customer actually being able to accept a specific offer on specific terms may not qualify as a “offer for sale” under current lower court case law.
Keep in mind that other types of bars to patentability might apply even if there was no sale or commercial offer for sale. For instance, an advertisement of an invention before the critical date might qualify as a “printed publication” bar instead of (or in addition to) an on-sale bar. And a non-experimental public use of an invention before the critical date would give rise to a public use bar. The on-sale bar is only one among many potential bars to patentability that must be considered.
Secret Sales & Offers for Sale
In the U.S., the on-sale bar still applies to a confidential, private, or otherwise secret commercial sale or offer for sale before the critical date. This means that merely having a non-disclosure agreement (NDA) or other contractual confidentiality terms in place will not avoid triggering an on-sale bar. An NDA might still help establish that a sale or offer for sale was primarily experimental rather than commercial, depending on all the other relevant circumstances. And the existence of an NDA may mean that a given use of an invention does not give rise to a public use bar or that the confidential exchange of documents does not constitute a printed publication bar. Moreover, an NDA may make discovery of prior sales by third parties difficult to identify. But any commercial sale or offer for sale of an invention triggers the on-sale bar, regardless of the public versus confidential/secret nature of such commercial exploitation. While having an NDA in place may have certain advantages for the parties involved, it will not avoid an on-sale bar in the U.S. when there has been non-experimental commercial exploitation.
Applicable law in other countries may be different, however. Indeed, countries that lack a distinct on-sale bar might even allow a later inventor to obtain a patent and enforce it against the prior inventor who did not patent or publicly use the invention (because all use was confidential rather than public).
Experimentation Exception
There is an experimental sale exception to the on-sale bar. A sale or offer for sale that is primarily for experimental purposes, as opposed to commercial exploitation, does not raise an on-sale bar. Though the experimental sale exception applies only if the commercial exploitation is merely incidental to the primary purpose of experimentation to perfect the invention.
Only certain activities are considered experimental, depending on the purpose or intent behind them. A use may be “experimental” only if it is designed to: (1) test claimed features of the invention, or (2) determine whether an invention will work for its intended purpose. This judicial definition of what is experimental applies to both the public use bar and the on-sale bar. But experimental use cannot occur after an invention has actually been “reduced to practice”; once an inventor realizes that the invention as later claimed indeed works for its intended purpose, further alleged “experimentation” may constitute a public use and/or on-sale bar. Similarly, a contract characterizing commercial activities as “equipment testing” will be insufficient to establish experimental use if unnecessary, that is, if the testing could have been performed satisfactorily before or without the sale.
Courts have applied the following factors to determine if a sale constitutes experimentation or commercial exploitation, though not all factors will apply in any given situation:
the necessity for public testing,
the amount of control over the experiment retained by the inventor,
the nature of the invention,
the length of the test period,
whether payment was made,
whether there was a secrecy obligation,
whether records of the experiment were kept,
who conducted the experiment,
the degree of commercial exploitation during testing,
whether the invention reasonably requires evaluation under actual conditions of use,
whether testing was systematically performed,
whether the inventor continually monitored the invention during testing, and
the nature of contacts made with potential customers.
While the experimentation exception to the on-sale bar has long been recognized in the U.S., it is rather difficult for an inventor to qualify for it. Successfully invoking it might even be more rare in the on-sale bar context than in the public use context. So think of it almost like a unicorn defense against invalidity. And when a patent is enforced, any reliance on this experimentation exception by the patentee is certain to be challenged by the accused infringer. Therefore, it may be advisable in many situations to avoid relying on it (other than as a backup plan or “plan B” fallback position). A better strategy is to file a patent application before accepting or seeking any payment for an invention, or at least to file within one year of any payment, request for payment, or any other activities that could potentially be seen as exploiting or seeking to profit from an invention.
All this makes sense if we turn back to the basic purposes of the on-sale bar. The experimentation exception arises because the inventor is not really extending the expiration of patent rights when he or she is not yet certain that the invention is viable or complete. A key reason the experimentation exception against the on-sale bar is so rarely established is that inventors normally don’t try to sell inventions that they know are not yet in working order. When they have sold or offered to sell things, that tends to give rise to an inference that the inventor really did believe the invention was sufficiently workable for the buyer’s purposes (despite after-the-fact inventor denials that often come across as self-serving). If anything, the exception is more likely to apply where the only reasonable experimental testing involves using the invention in connection with commercial services under close supervision—as in the famous case City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878) where the inventor garnered more sympathy than most.
“Ready for Patenting”
An invention is “ready for patenting” when, prior to the critical date, the invention is either: (1) reduced to practice; or (2) depicted in drawings or described in writings of sufficient nature to enable a person of ordinary skill in the art to practice the invention.
Reduction to practice means being embodied in a distinct form, like through construction of a working prototype. Reduction to practice happens when occurs when the inventor/seller had possession of the claimed subject matter and that it was shown or known to work for its intended purpose. For something to qualify as a reduction to practice, it must show that the invention works for its intended purpose beyond a probability of failure but that need not be established beyond a possibility of failure. Importantly, reduction to practice does not require that the invention, when tested, be in a commercially satisfactory stage of development—for utility patents this analysis is from the standpoint of technical feasibility rather than marketability or saleable appearances. It does not, however, require that the seller recognize that his or her on-sale invention possesses specific later-claimed characteristics when there was no question that the invention was useful at the time it was placed on sale.
Whether or not an enabling disclosure has been documented (in the absence of actual reduction to practice) is generally assessed in the same way as for priority claims. In any event, any time there are engineering specifications available that are sufficient for use to manufacture an invention, or to allow a customer to know specifically what is being purchased, the invention will usually be considered ready for patenting.
Difficult questions arise when advance development agreements or pre-availability contracts are involved. In some situations, a contract may be signed for a seller to deliver to a customer at a later date something not yet invented. In other words, the customer understands that goods meeting certain requirements do not yet exist but believes that the seller will be able to devise one or more inventions that will make delivery of suitable goods possible in the future. This is a situation where the customer does not know upfront exactly how those goods will be configured. But certain general requirements, goals, or objectives that the goods be better, faster, lighter, etc. would likely be set forth in such an advance contract. When does the on-sale bar arise in these situations? The answer is it depends when the invention was conceived subsequent to the signing of the contract. For purposes of the on-sale bar, it is initially viewed as an open offer to sell an idea for a product (or service) that is converted into a “commercial offer for sale” at whatever time the relevant invention is later conceived:
“[A]n invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.”
When, exactly, conception happens may very well be disputed. But once there are drawings that might enable the invention to be made and used, or it is actually reduced to practice (even if the inventive aspect is not yet appreciated or recognized), an on-sale bar can arise.
Joint research & development agreements potentially raise further limits on application of the on-sale bar where they do not bear commercial fruit and are cloaked in confidentiality. That is to say that research & development activities, even where conducted jointly, may pertain only to the process of invention or related experimentation rather than to commercial activities. But, as always, this will depend on the specific circumstances involved, including what the applicable contract(s) say. There is not always a bright line separating research & development and on-sale activities when joint efforts are involved.
Anytime there is already a contract or commercial proposal of an idea for a product (or process), the inventor must diligently pursue a patent filing after something inventive is actually conceived to ensure that filing occurs within the one-year U.S. grace period. Though keep in mind that the ways these issues are treated in other countries may differ.
Best Practices and Words of Caution
Assessments of potential on-sale bars must be approached with caution. The treatment of potential on-sale bar activities is governed by somewhat subjective and imprecise standards in the USA. The consequences of incorrectly relying on an experimental sale exception to the on-sale bar can be severe for both the patentee and the patentee’s legal counsel. For instance, if a court later rejects an inventor’s determination that a pre-critical date sale was experimental, an entire patent might be found unenforceable in addition to specific claims being found invalid—if information about the on-sale bar was withheld from the USPTO with deceptive intent (which can be inferred). Moreover, because on-sale bar activities apply to obviousness analyses too, commercialization of an earlier version of a product or process before the critical date potentially be relevant to the obviousness of a later-developed variation or improvement.
The best strategy to avoid an on-sale bar worldwide is to file a patent application before any activities that could potentially be seen (in the light least favorable to the patentee) as exploiting or attempting to profit from an invention, or, at least in the USA, to file within one year of any such activities. But if there has already potentiallybeen definite commercial sales activity before the critical date, or anything that might potentially be viewed as the commercial exploitation of an invention before the critical date, consider explicitly disclosing it to the USPTO in order to satisfy the duty of disclosure. This is because court rulings about experimental sales will happen only many years later and may be driven by sympathies and impressions given by witnesses at least as much as the “cold” factual record. And there are risks of self-serving biases when inventors make these determinations themselves.
In order to make a legal determination about whether or not an on-sale bar applies, there must first be a sufficient investigation of the relevant facts. It would be nice if the legal standards for on-sale bars allowed for a straightforward and uncomplicated assessment. But the reality is that these are complicated, nuanced legal determinations that depend on a variety of specific facts that will differ from one situation to the next. If important relevant facts are unknown, overlooked, or even concealed, then it may be impossible to reliably determine whether an on-sale bar applies in a given situation. So, beyond the lack of bright-line legal standards as to certain aspects, the dependency of these legal analyses on underlying fact gathering is yet another reason caution is merited.
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.
Obtaining rights in an invention require affirmatively filing a patent application. There is a limited one-year grace period in the U.S. to file a patent application after the invention has been disclosed or commercialized before patent rights are lost. In the context of an inventor’s own prior activities, the term “critical date” refers to the beginning of the grace period one year before the “effective filing date” of a claimed invention. Understanding this grace period is important in order to know when patenting becomes barred, or may have already been barred, due to an inventor’s own prior actions.
The U.S. patent laws generally bar patenting if “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 if “the claimed invention was described in a patent . . . or in an application for patent published or deemed published . . . [that] names another inventor and was effectively filed before the effective filing date of the claimed invention.” (35 U.S.C. § 102(a)). In other words, disclosures and commercial exploitation of an invention prior to the critical date qualify as “prior art” that can be held against a later-filed patent or patent application. Such prior art is used to evaluate the patentability (or validity) of a claimed invention.
Illustration of Timeline for U.S. Patent Filing Grace Period
However, there is a one-year grace period for filing a patent application following a disclosure or commercialization of the invention by an inventor (or someone who obtained that subject matter from an inventor). This grace period is formally stated as follows:
(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
***
(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;
*** 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]
So if an inventor has publicly disclosed an invention or placed it on sale, the clock has begun on the one-year deadline to file a patent application. Under current U.S. law, disclosures and on-sale activities happening anywhere in the world trigger the grace period filing deadline. But disclosure of an invention more than one year earlier represents a complete bar to patentability. The grace period is not extendable.
This 1-year grace period is somewhat unique to U.S. patent law. Most other countries have what is called an absolute novelty requirement. That means a patent application must be filed before there is any disclosure of the invention. Though the specific things that do or do not count as a prior disclosure vary somewhat by country (for instance, sometimes the country in which the disclosure was made matters, and sometimes secret sales are not considered public disclosures). What this means is that even though the U.S. has a patent filing grace period, the applicant needs to consider the most restrictive patenting requirements among all relevant jurisdictions. If it is desired to pursue foreign patent protection, or even just to preserve the possibility of foreign filings, then it is important to file a patent application before any disclosure or sales activity to ensure that patent rights are preserved for all foreign countries.
Another aspect of this grace period is the exception set forth in 35 U.S.C. § 102(b)(1)(B), which says a disclosure falling within the grace period does not qualify as prior art (under § 102(a)(1)) if “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.” In other words, a disclosure by someone other than the applicant (occurring one year or less before the effective filing date) can potentially be defeated and removed from the realm of “prior art” if the inventor or applicant had previously publicly disclosed the claimed invention (one year or less before the effective filing date). So, in very limited situations, a prior public disclosure within the statutory grace period can also potentially aid a patent applicant against competitors trying to patent or commercialize the invention.
In general, the initial filing of a patent application to preserve U.S. patent rights and stop the clock on the 1-year grace period encompasses both U.S. and foreign applications. The “effective filing date” (as defined in 35 U.S.C. § 100(i)) is the earlier of the filing date of a given U.S. patent application or, if there is a qualifying foreign priority or domestic benefit claim to earlier application(s), the filing date of such an earlier U.S., PCT international, or foreign application that disclosed the claimed invention. Where this can become complicated is that there may be multiple prior applications but the effective filing date is assessed on a claim-by-claim basis. The effective filing date is not necessarily the earliest prior application if the relevant “claimed invention” (as defined in 35 U.S.C. § 100(j)) was not yet disclosed in it.
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.
There are many situations where it is desirable to challenge the validity or patentability of a granted patent or pending patent application. For instance, an invalidity search can be useful for an invalidity opinion to mitigate infringement liability, an invalidity defense in litigation, a proactive challenge to patentability at the U.S. Patent & Trademark Office (USPTO), or a pre-issuance submission (observations) to try to restrict or prevent a patent from being issued. But what is the best timing for such an invalidity search?
In one sense, an invalidity search is never strictly legally required. Though, practically speaking, invalidity searches are often crucial to avoiding or reducing liability for patent infringement in many contexts. These searches must be performed in a timely manner to obtain the greatest value from them. That includes performing searches in time to meet deadlines that require having suitable search results available.
Patent invalidity searches are reactive in the sense of being conducted in response to some infringement risk arising. That could be the receipt of a cease & desist letter, the filing of an infringement lawsuit against you, or other knowledge of a potentially problematic patent (e.g., via a freedom-to-operate study). In any event, an invalidity search requires first knowing which patent is the subject of the invalidity search. That is because an invalidity search depends on the scope of the particular claim(s) of concern and their effective filing date(s)—including any priority date(s).
It is a best practice to consider an invalidity search after a tangible risk of patent infringement comes to your attention. Knowledge of a patent coupled with a reasonable belief that infringement might be present can potentially give rise to enhanced damages for infringement. And knowledge of a pending patent application can potentially give rise to so-called “provisional rights” to pre-issuance infringement damages.
There may be deadlines that determine when invalidity search results are needed. For instance, in patent litigation in a district court, the court will issue a scheduling order that often sets a deadline to set for invalidity contentions. In is necessary to have search results available in order to formulate those invalidity contentions and prepare a suitable report. Other times, invalidity contentions might be requested through discovery requests, such as interrogatories. Either way, it is crucial to perform the invalidity search far enough in advance of such deadlines to allow for subsequent legal analysis of the search results.
Moreover, there are situations where a proactive challenge to a granted patent is desired. Proceedings such as inter partes review (IPR), post-grant review (PGR), oppositions, and the like may have various different deadlines by which a challenge must be filed. Such deadlines drive the timeline for completing invalidity searching. Just as in litigation, the search must be completed with time to spare to allow for legal analysis and preparation of any formal filing papers for the patent challenge, which may require considerable effort to prepare. Additionally, a pre-issuance submission (or observation) might be filed against a pending patent application and there likewise are both formal and practical deadlines to do so.
Lastly, if an opinion of counsel setting forth grounds for liability is desired to mitigate potential infringement damages, such an opinion should ideally be obtained before your relevant product (or process) is commercially launched. If patent in question is discovered only later, then such an opinion should be obtained without unreasonable delay. Having invalidity search results is a prerequisite to completing an invalidity opinion.
In all these possible settings, it is common for multiple invalidity searches to be performed. That can include follow-on invalidity searches performed in an iterative manner, in order to exhaustively locate prior art and to try to obtain sufficient prior art for desired (and reasonable) invalidity arguments as those arguments evolve and develop. It may also include searches performed by different searchers in different databases (including in non-patent literature databases), in different native languages, though investigation of prior public use and on-sale activities, and the like.
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.
If you have decided to perform a freedom-to-operate (FTO) or “clearance” study to try to reduce the risk of patent infringement, it will be necessary to determine when a patent search should be performed. This is a question about best practices for the timing of patent FTO/clearance searches.
The following timeline provides an overview of major timing considerations and the best time to conduct a patent FTO study.
In general, the ideal time to conduct at FTO search is before a product (or technical process/service) is commercially launched but after its technical design parameters are sufficiently established to know what the search should encompass. That is a window of time in between an initial business case and the beginning of research & development (R&D) efforts, on the one hand, and the formal product launch on the other. Additionally, the FTO search and accompanying legal analysis should be completed well enough in advance of the product’s commercial launch date to allow time for possible risk mitigation efforts before infringement liability might start to arise. If the FTO search uncovers a potentially problematic patent, you gain the most benefit from that information if you have allowed time to take responsive action before a product launch point-of-no-return.
In this context, a product launch can be anything that is potentially actionable as patent infringement, including making, using, selling, offering for sale, or importing an infringing product in or into the USA. Though product launch infringement risks tend to be greatest when there is a major commercial release that makes the product (or process) widely publicly available, as opposed to mere preparatory efforts (such as prototyping) that might happen only on a private and confidential basis.
Having technical design parameters that are sufficiently established to know what the search is important. This allows the FTO searcher to understand what, specifically, should be searched—and what is excluded from the scope of the search. This process of determining what to search is referred to as “feature identification” (or sometimes “product decomposition”). This involves itemizing individual patent-sized technical features present in the product that are to be searched. But feature identification is only possible if there is sufficient technical information available. If R&D efforts are still in preliminary stages, or if there is really only a (non-technical) business case available, it may not be feasible to conduct an FTO search yet, or at least not for all planned product features. In those situations, a more generalized “landscape” search is perhaps more appropriate. Otherwise, the FTO search(es) for insufficiently-developed feature(s) may need to await further technical R&D.
Updates?
After an FTO search is completed, there are various reasons why a later “update” search may be helpful. First of all, there is generally a delay of roughly eighteen (18) months between the filing and publication of most patent applications—and sometimes longer. This means that there may be relevant pending (but unpublished) patent applications that cannot be found during an initial FTO search. But, additionally, there may be changes to the technical design of planned or released product over time that merit further FTO searching and/or analysis. So, at what time(s) should such FTO search updates be performed? There are actually multiple possible approaches.
Discrete FTO Updates
A first approach is to perform one or more discrete FTO updates that resemble the initial FTO search and analysis. The timing of such discrete updates can be based on product- or technology-based milestones and/or calendar- or timeline-based milestones.
A typical product/technology milestone would be the release of a new or different version of a given product that has new, improved, or simply different features and functionality. An example would be releasing version 1.1 or 2.0 of a product that was previously cleared for its version 1.0 design only. Another typical product/technology milestone would be the occurrence of a particular pre-release design review phase. Technologies that have relatively long development cycles sometimes go through formalized design review processes with multiple distinct phases. In each phase changes to the product design might be introduced. For instance, a given initial product design might work well in prototype form but later be discovered to be too difficult to manufacture efficiently and thus might be replaced with a more easily manufactured design that was not previously searched.
An example of a calendar-based milestone would be to simply conduct a search update on a set periodic cycle, such as every year, or a single time after 18 months have passed since the original FTO search. There is no right or wrong update time period here, or even an particular appropriate number of updates. This is really a trade-off between the burden and expense of each update and the infringement risks likely raised, including the density of ongoing patenting on relevant technologies. Though recall that unpublished pending patent applications might first become available 18 months (or more) after the original FTO search.
Ongoing Monitoring
It is also possible to conduct ongoing monitoringof all patents and published applicationsfor:
particular competitor(s)
particular technology area(s)
Ongoing monitoring can be facilitated through the use of alerts/saved criteria set up with proprietary search platforms or, alternatively, periodic (manual) searches. Such ongoing monitoring can take place in addition to or in place of other milestones or criteria for an FTO search. The main decision points with respect to ongoing monitoring are when to start and when to stop monitoring, and the scope regarding which competitor(s) and/or technology area(s) are included. Those factors are often highly influenced by the time and resource commitments required, as well as the relevance of those efforts to planned or ongoing commercial activities. It is worthwhile to periodically revisit the parameters for ongoing patent monitoring efforts, to ensure that those efforts are still relevant and appropriately focused.
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.
