Patent marking involves indicating the patent number on a patented article, or in some limited instances on its packaging or a label. Marking can allow a patentee to recover pre-notice back damages. However, courts have said that marking is not required when a patent has only method claims. But this becomes a somewhat complicated question when a patent includes both method (or process) claims and apparatus (or system) claims. The Federal Circuit has created an unusual exception to the marking requirement based on which claims the patentee does and does not assert or which claims are or are not infringed. This article explores whether this Federal Circuit’s treatment makes sense or if it should be replaced by a different approach.
Federal Circuit Precedent
Patent marking requirements are established by statute. 35 U.S.C. § 287(a). They were first introduced in 1842 along with prohibitions on false marking, and the penalty was changed from a fine to a limitation on back damages in 1861. Such a limit on back damages for failure to mark has remained in place ever since. However, the Federal Circuit has ruled that if the patent is directed only to method (or process) claims, marking is not required. Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed. Cir. 1983); accord ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1334-35 (Fed. Cir. 2012). But what if a patent has both method and apparatus claims?
In the Hanson case, the Federal Circuit considered marking obligations and the availability of back damages in a suit involving an asserted patent (U.S. Pat. No. 2,968,164) with both method and apparatus claims. Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075 (Fed. Cir. 1983). The decision said that while the “Hanson patent also includes apparatus claims. The only claims that were found infringed in this case, however, were claims 1, 2, and 6 of the Hanson patent, which are drawn to ‘[t]he method of forming, distributing and depositing snow upon a surface . . . .'” Id. at 1083. In a holding described as a “narrow one,” the lower court’s award of back damages was found to be not clearly erroneous and affirmed. Id. The court’s opinion was short and there was little explanation for the holding.
Later in Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., the Federal Circuit said that “[i]n Hanson, 718 F.2d at 1082-83, we held that 35 U.S.C. § 287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims. Hanson is factually identical to this case, and we are therefore bound by the rule of Hanson.” 559 F.3d 1308, 1310,1316 (Fed. Cir. 2009). “In this case and Hanson, the patentee only asserted method claims despite the fact that the patent contained both method and apparatus claims.” Id. at 1317.
The astute reader will notice that the Crown Packaging decision talks about “asserted” claims, whereas the Hanson decision had actually referred instead to “[t]he only claims that were found infringed . . . .” These are not always the same — one or more asserted claims might not be found to be infringed. And neither the Federal Circuit’s Hanson decision nor the prior Sixth Circuit decision on infringement (611 F.2d 156 (1979)) explicitly mentioned which claims were or were not asserted. In this respect, Crown Packaging misstates the holding of Hanson.
Asserted Claims and Infringement Contentions
Not discussed in any of these Federal Circuit decisions are the procedures through which particular claims are asserted in U.S. patent litigation. This actually varies somewhat between different trial courts. Yet the various procedural approaches all end up being fairly similar in the end.
Generally, a patentee will specify which particular claims are asserted against the accused infringer only sometime after a lawsuit is commenced. These are commonly referred to as infringement contentions. It is possible for a patentee to identify which particular claims are being asserted in the pleadings, that is, in a complaint or counterclaim. But that is not required and is not commonly done. Most typically, the pleadings will merely allege that one or more claims are infringed, and possibly detail how one example claim is alleged to be infringed, but without specifying exactly which claims are or are not infringed.
Some district courts have local patent rules that specify when infringement contentions must be made to specify which claims are being asserted — and by implication which claims are not being asserted. In other districts, individual judges may specify a deadline for infringement contentions in a case-specific scheduling order. If neither of those things happens, then the accused infringer will generally serve an interrogatory asking for infringement contentions.
Some judges or local rules will limit the number of claims that the patentee can assert. Sometimes this is referred to as selecting representative claims. This practice is not without controversy. But the Federal Circuit hasupheld such limitations under certain circumstances. Limits on the number of asserted claims might apply to infringement contentions from the start, or might be imposed later on as a requirement to reduce the number of asserted claims as trial approaches. There is considerable variation and discretion in how trial courts impose these limits, if at all.
The main thing to take away from this discussion of infringement contentions is that the patentee only specifies them after a lawsuit has commenced, and can select less than all claims.
Retroactive Changes to Marking Requirements?
Can a patentee retroactively eliminate the statutory marking requirement by electing to assert only method claims after a lawsuit has commenced? The Crown Packaging decision is phrased in such a way as to permit exactly this to happen. But another Federal Circuit decision expressly rejected the possibility of retroactively undoing marking requirements.
In Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., the Federal Circuit held that the patentee filing a statutory disclaimer of a selected claim eight days after commencement of litigation “cannot serve to retroactively dissolve the § 287(a) marking requirement for a patentee to collect pre-notice damages.” 853 F.3d 1370, 1382-84 (Fed. Cir. 2017). That conclusion was explained and justified in terms of the purpose of the statutory marking requirement. “The marking statute protects the public’s ability to exploit an unmarked product’s features without liability for damages until a patentee provides either constructive notice through marking or actual notice.” Id. at 1383. That purpose is undermined if the patentee can selectively eliminate the requirement retroactively.
The Rembrandt decision throws into relief how Crown Packaging and Hanson permit the marking requirement to be retroactively eliminated. This is more pronounced in the Crown Packaging decision, which emphasized which claims were “asserted”. The patentee makes decisions about infringement contentions for specific asserted claims after a lawsuit begins and, of course, after the marking requirement arises if patented articles were previously distributed. Although Rembrandt dealt with a statutory disclaimer, its reasoning still stands at odds with the holdings of Hanson and Crown Packaging.
The Hanson case offered essentially no rationale for its holding. That is, while Rembrandt explained how a retroactive elimination of the marking requirement was contrary to the well-established purpose of the marking requirement, Hanson did not meaningfully explain the purpose served by its contrary conclusion. Hanson‘s “narrow” holding is little more than a bare conclusion resting on a new judicially-created exception to statutory requirements. And Crown Packaging expanded upon that holding, relying mainly on a characterization of Hanson as binding precedent rather than attempting to supply a rationale absent from Hanson.
A Better Approach
In this author’s view, Rembrandt appropriately explains and relies upon the purpose of the statutory marking requirement. The largely unexplained contrary conclusions of Hanson and Crown Packaging undermine the purpose of the marking requirement to the detriment of the public and enable gamesmanship by patentees. The en banc Federal Circuit or Supreme Court should overturn Hanson and Crown Packaging. But what should be put in their place?
The marking requirement has long been understood as protecting the public. If the patentee fails to mark patented articles, the public can rely on a lack of marking to avoid liability. Indeed, the policy underlying the U.S. Constitution and federal statutes allows “free access to copy whatever the federal patent and copyright laws leave in the public domain.” Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 237 (1964). The patent statues impose a penalty on a patentee who fails to mark patented articles, by limiting back damages. These basic, long-established principles should determine how marking requirements are interpreted for patents with both method and apparatus claims.
A better approach would be to determine if the patentee, or anyone acting for or under the patentee, has distributed articles that meet at least one apparatus claim of the asserted patent. If so, the marking requirement should apply to that patent as a whole. Under this proposed approach, the patent marking requirement arises even if only method claims (but not apparatus claims) were found to be infringed and even if the patentee elected to assert only method claims (but not apparatus claims). In essence, this approach looks only at whether there was a failure to mark patented articles and ignores method claims. Any failure to mark bars pre-notice damages.
Such an approach is consistent with the marking requirement being a burden on the patentee to inform the general public. Numerous past cases have emphasized how the marking requirement is the patentee’s burden and that circumstances regarding the infringer are irrelevant. Devices for Medicine, Inc. v. Boehl, 822 F.2d 1062, 1066 (Fed. Cir. 1987); Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994); Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). The public is still harmed by a lack of marking where the patentee later chooses to selectively assert only method claims or establishes only that method claims were infringed by one particular infringer. Under the proposed approach, the patentee is subject to the statutory penalty for the harm caused to the public. The statutory policy would therefore be better promoted.
Moreover, this proposed alternate standard aligns with the language of the statute. Section 287(a) says “in the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter . . . .” The statute refers to “any action for infringement”, without qualification. And it excuses a failure to mark only when the patentee provides actual notice to the infringer. The statute as a whole is exacting in its requirements and it explicitly provides only one exception. The proposed alternative approach thus aligns with the wording of the statue and avoids adding a further judicially-created exception.
This proposed approach also avoids the retroactivity problem and promotes predictability. Patent marking requirements are determined by actions of the patentee (and those operating for or under the patentee). The conduct of others, including which claims were or were not infringed (per Hanson) or the patentee’s actions after the start of litigation (per Crown Packaging) would no longer alter the consequences for the patentee’s failure to mark. The patentee’s prior conduct would determine whether or not back damages are available in any and all later actions.
January 2025
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.
As 2025 begins, some recent and upcoming changes in patent and trademark practice before the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention, along with developments from U.S. courts pertaining to those areas of intellectual property (IP) law. (Click the preceding links to jump to desired content).
Patents
Massive official patent fee increases for 2025
The USPTO will impose significant official patent fee increases starting January 19, 2025. Materials related to the patent fee increases can be found here, including an Executive Summary of the most notable official patent fee increases and wholly new official fees plus a spreadsheet showing all old and new fees and the difference between them. The Executive Summary and spreadsheet should be consulted because of the sweeping extent of the official fee schedule changes and because many initial proposals were modified or eliminated in the final rule.
[EDIT: The USPTO spreadsheet detailing the new official fee schedule confusingly listed extension of time fees as both having no increases and as having 7-8% increases for non-provisional applications. The text of the final rule suggested that these fees would increase, without specifying what those increases would be. It is believed that patent extension of time fees are increasing for non-provisional applications.]
The general nature of this round of fee setting activity is that the USPTO is charging much more and, in some areas, also doing less. As just a few selected examples, the USPTO is imposing new tiered fees for continuing applications (with large fees required if a new continuing application is filed more than six or nine years after the earliest priority date), new fees if the number of cumulative citations submitted with information disclosure statements (IDSs) exceed tiered thresholds of 50/100/200 references, higher excess claim fees, a huge increase in the fee for patent term extension (PTE) requests (which are not to be confused with patent term adjustment (PTA) determinations), and large increases in design patent application fees. Legislation a few years ago increased official fee discounts to small and micro entities, and the new official fees are in large part an effort by the USPTO to avoid any overall reductions in total fees collected.
AFCP 2.0 discontinued
The widely-used After-Final Consideration Pilot (AFCP) 2.0 program was discontinued as of December 15, 2024. The USPTO had previously proposed imposing a significant official fee for what previously carried no official fee. Feedback on the proposed fee requirement indicated that applicants did not believe the program provides enough benefit to justify the proposed cost. In response, the USPTO decided to eliminate the AFCP program entirely.
Applicants should understand that examiners spend very little time reviewing after-final responses and amendments, perhaps as little as 30 minutes, with a request for continued examination (RCE) and payment of the associated fee being needed in order for submissions to receive further consideration by the examiner. Applicants seeking to avoid RCE fees should also carefully consider how they respond to a first non-final office action on the merits, knowing that subsequent amendments and arguments after a final office action may receive only cursory consideration and may not be entered. Making claim amendments earlier can reduce the potential need for an RCE, if cost containment is more important than aggressive maximization of claim scope.
Assignment recordation developments
Legacy USPTO platforms for patent and trademark assignment recordation were replaced with a new unified platform called Assignment Center on February 5, 2024. There was no beta testing of this new platform prior to its launch.
While the new Assignment Center platform offers a graphical user interface with a modernized appearance, it eliminated certain features and provides reduced user functionality compared to the old systems. Submissions now require that the user login first. Most significantly, the ability to save draft submissions shared between different users was eliminated, making it more difficult for attorneys and support staff to meaningfully work together on assignment recordations. USPTO representatives have informally commented that there are plans to (re)introduce such collaboration functionality, but there have been no formal announcements about when (if ever) that functionality will be reintroduced. Also, the new platform no longer permits a patent assignment recordation submission to simultaneously serve as an inventor oath/declaration submission too (a separate oath/declaration submission in Patent Center is required).
Although the USPTO had recently proposed re-instituting a fee for electronic assignment recordations, that proposal was not implemented. Electronic assignment recordations will continue to carry no official fee, for the time being. Hard copy assignment recordations, submitted by mail, will continue to require an official fee.
Also, it was revealed in August of 2024 that the configuration of the USPTO’s Patent Center system led to the (potential) release of limited amounts of confidential information about unpublished patent applications between 2017 and 2024. This information was linked to recorded assignment data submitted through other assignment platforms, via an “Assignments” menu option in Patent Center listings for individual matters (which is now disabled unless applicants request that it be enabled). The information that was publicly accessible included the title of the application, application serial number, application owner name, application filing date, and name(s) of the inventor(s). Unauthorized viewing of confidential application information is not believed to be widespread, and substantive contents of unpublished applications was not made available. The limited nature of the information made public does not appear to pose significant concerns for most applicants. But this represents yet another problem added to a long list of debacles with USPTO online systems.
More types of e-signatures now accepted
Beginning March 22, 2024, the USPTO began accepting more types of electronic signatures on documents subject to USPTO signature rules. It is now possible to use a suitable document-signing software tool (DocuSign®, etc.) if two requirements are met: (i) the software tool must be specifically designed to generate an electronic signature and preserve signature data for later inspection in the form of a digital certificate, token, or audit trail; and (ii) the software tool must result in the signature page or electronic submission form bearing an indication that the page or form was generated or electronically signed using document-signing software. If those requirements are met, it is not necessary for this type of electronic signature to include slashes (as were previously required). Common commercial e-signature tools using will be able to satisfy these requirements, and typically will do so automatically under normal usage and settings. All of the previous types of electronic signatures accepted by the USPTO can continue to be used.
However, it is important to note that USPTO e-signature rules apply only to powers of attorney (POAs), inventor oaths/declarations, and other correspondence. USPTO signature rules do not control for assignments, for which applicable (local state/foreign) contract law will generally apply instead.
More information about electronic signatures in relation to U.S. patent matters can be found here.
AI-assisted inventorship
Guidance about inventorship when AI tools are utilized was issued by the USPTO in early 2024. In brief, the USPTO has so far taken the position that only humans can be inventors for patenting purposes. The issued guidance focuses on how to evaluate the use of AI to assist a human inventor, and the sufficiency of human contributions. A human must make a “significant contribution” to be an inventor, according to the USPTO. It is important to proactively consider the potential that AI was used in conceiving new inventions, so that inventorship can be determined and named properly. This remains an evolving area and the USPTO may possibly alter or elaborate its positions about AI-related issues at some time in the future.
Guidance regarding means-plus-function claiming
In March of 2024, a memorandum was issued to USPTO examiners providing guidance about interpreting means-plus-function limitations in patent application claims. That memo was intended to encourage examiners to identify means-plus-function limitations, to make relevant interpretations explicit in the prosecution history, and to ensure that such limitations have adequate support. U.S. patent law generally requires peripheral claiming, and prohibits central claims except under the limited exception of means-plus-function (or step-plus-function) limitations in a claim for a combination.
Means-plus-function recitations are often considered narrow, in contrast to treatment of “means” language in various other countries. Applicants and their counsel often seek to essentially obtain central claims without being limited to narrow means-plus-function interpretations, by using nonce words and functional terminology—like “[function] unit,” “[function] module,” “[function] system,” “[function] mechanism,” “[function] element,” “[function] member,” and the like. The main issue is whether a person of ordinary skill in the art would understand the term to refer to structure or instead merely be a generic placeholder for all possible ways of achieving the stated function (or functional result), with the latter approach raising concerns about impermissible central or preemptive claiming. The Federal Circuit has held that claim recitations that do not use the phrase “means for” may be interpreted as means-plus-function limitations in some circumstances. This approach tends to save applicants and patentees from themselves, because the alternative, as suggested by Supreme Court precedent and explained in detail in USPTO administrative decisions, is that purely functional claim limitations at the point of novelty that fail to use the phrase “means for” are invalid. Although a means-plus-function interpretation may still lead to indefiniteness concerns, if the accompanying description and figures fail to adequatelydisclose corresponding structure—such as by merely repeating the same functional language or conclusory statement of results without further explanation of the particular structure(s) used to achieve the stated function or result.
U.S. examiners have begun making means-plus-function interpretations more explicit more often in recent years, but they still fail to do so in all instances. More information about functional language in claims, disclosure requirements for means-plus-function claiming, and best practices are available here, here, and here.
New revision of MPEP released
The Manual of Patent Examining Procedure (MPEP) was updated in November 2024 to the 9th Edition, Rev. 01.2024. This revision is meant to be up-to-date with respect to USPTO policies and procedures as of January 31, 2024. A summary of changes can be found here, although this summary is very general and somewhat vague about specific changes.
Patent term adjustment calculation errors
In yet another instance of the USPTO incorrectly calculating patent term adjustment (PTA), it was announced that patents issued from March 19, 2024 through July 30, 2024 were subject to a software “coding error” that resulted in incorrect PTA numbers appearing on approximately 1% of granted patents from that time period. However, it is left to individual patentees to investigate PTA calculations and make a timely request for recalculation. People often express surprise that the term of a U.S. patent cannot be stated simply. Instead, determining patent term requires that members of the public (and the patentee) investigate numerous factors, including possible PTA, patent term extension (PTE), and terminal disclaimer term reductions, and then perform a calculation. Patentees must undertake their own analysis of USPTO PTA calculations, and if errors are discovered must request correction within certain time periods (two months extendable up to seven months from grant). Official fees are being waived for timely requests to correct USPTO errors due to this particular software error. But other petitions for PTA correction carry an official fee that is not refunded even if the PTA was incorrect due to some other USPTO calculation error.
Terminal disclaimer rulemaking abandoned
The USPTO has withdrawn proposed changes to terminal disclaimer requirements. The proposal would have more sharply limited patentee rights when a terminal disclaimer is filed to overcome a double patenting rejection. The proposal was met with significant opposition, including criticism that the USPTO lacked authority to impose the proposed rules. While the USPTO meant well by trying to address overreach and greediness by patentees who burden the public with large patent family “thickets” that are (by design) expensive to avoid or challenge, the proposal did seem to exceed USPTO authority and contradict statutory provisions. For now, the USPTO has left existing terminal disclaimer requirements and procedures as-is.
DOCX filing developments
The deeply unpopular official surcharge for U.S. non-provisional utility patent applications submitted in a non-DOCX file format has been in effect since January 2024. Since that requirement went into effect, the USPTO has belatedly clarified some policies and had modified how its electronic filing system Patent Center handles DOCX files, sometimes with formal announcements and sometimes without any clear notice. Practitioners and applicants have had to struggle to understand unclear and shifting treatment by the USPTO, making it difficult to provide clear guidance for how to avoid the official surcharge. There have been numerous instances of surprise official charges by the USPTO.
One belated clarification was that applications filed in a language other than English (with a simultaneous or later-filed English translation) must be in DOCX format to avoid the surcharge. Patent Center’s handling of DOCX files in other languages, using fonts and characters that may not be supported, presents challenges and risks to applicants. This requirement, which was first announced by the USPTO only in a Frequently Asked Questions (FAQ) responseafter the non-DOCX surcharge went into effect but not in any official rulemaking notice, provides no substantive benefits to the USPTO or to applicants, except that it provides another opportunity for the USPTO to impose official surcharges.
Also, the USPTO began imposing the non-DOCX surcharge (without warning or notice, and contrary to certain prior indications) when preliminary amendments are filed together with a new application in a non-DOCX format. This surprised many practitioners, because the USPTO had previously been recommending against submitting amendments in DOCX format. And it was not until November 13, 2024 that Patent Center was modified to permit a DOCX format preliminary amendment to be filed together with a DOCX application in a single submission (before then practitioners had to make separate submissions on the same day, which was cumbersome). The USPTO has still not clarified how substitute specifications should be submitted with preliminary amendments to avoid non-DOCX surcharges, meaning such submissions remain highly cumbersome and their treatment unclear unless the surcharge is paid.
Additionally, without any clear announcement, the functionality of Patent Center was changed sometime in 2024 so that tracked changes redlines in DOCX format amendments are now converted to strikethrough and underlining formatting during submission, instead of being “entered” and the mark-ups no longer being explicitly visible as Patent Center initially handled such formatting. This underscores how the operation of the USPTO’s Patent Center platform for the processing and rendering of DOCX-format files may suddenly be different than expected on any given day, without advance warning.
USPTO procedures for handling of DOCX format files continues to change over time. Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. But applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.
Revision to USPTO authority to impose fines
In 2022, a law was passed giving the USPTO authority to impose fines of up to three times the amount of official fees an entity failed to pay for “falsely” asserting small entity status or “falsely” certifying micro entity status. (codified in 35 U.S.C. §§ 41(j) and 123(f)). There is no time limit in the statute for imposition of such fines, nor any upper limit on the amount of those fines. Since then, the USPTO has not created any rules to implement its fining authority. For instance, the USPTO has not established any schedule of rates for such fines, nor any formal procedures for how determinations of false assertions/certifications are to be made. A worrying aspect of the original law was that it provided no exceptions for honest mistakes. So it appeared that even a clerical error or honest misunderstanding could lead to potentially large (even unlimited) fines. A December 2024revision to those laws now adds exceptions to allow an entity to show that an assertion or certification was made in good faith to avoid a USPTO fine. This exception therefore limits USPTO fining authority to situations where a fine is justified as a penalty for bad faith action. However, the law as revised still places no upper limit on the amount of these fines.
Riyadh design law treaty signed
The diplomatic conference in Riyadh, Saudia Arabia in November 2024 concluded with the adoption of a design law treaty. The impact of this treaty on the United States remains to be seen. It will be some time before the treaty as negotiated is actually implemented anywhere. It is unclear if any significant changes to U.S. design practice will result form this treaty. Although the treaty may bring some other jurisdictions into further harmonization. But the treaty appears to stop well short of complete international harmonization of the treatment of designs. For instance, the U.S. will continue addressing designs as a type of patent right but other countries will continue treating design registrations as something other than a patent right.
Vidal steps down as director of USPTO
Kathi Vidal stepped down as Under Secretary of Commerce for Intellectual Property and Director of the USPTO as of December 13, 2024. Derrick Brent, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO has become acting Director until a new Trump administration appointee is confirmed.
New collective bargaining agreement
The USPTO and the Patent Office Professional Association (POPA) signed a new collective bargaining agreement (CBA) on December 11, 2024, an agreement that was last formally updated in 1986. The USPTO announced that the agreement had been signed, without making it available on the USPTO web site. POPA, however, has made the agreement available on its web site. There are many interesting documents available from POPA that provide insight into the patent examination process. For instance, POPA provides information about the “count” system that governs examiner work quotas.
More U.S. patent filing information
Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim. Additional basic information about patenting can be found in the Patent Basics guide.
Trademarks
New trademark fee structure and fee increases for 2025
The USPTO will impose official trademark fee increases and a new structure for trademark fees starting January 18, 2025. Materials related to the new trademark fees can be found here, including an Executive Summary of the most notable official trademark fee increases and new structure for trademark fees plus a spreadsheet showing all old and new fees and the difference between them.
As part of the new trademark fee rule, the naming convention and types of fees are changing. For example, a typical trademark application would see at least a $100 fee increase. And, if custom identifications of goods/services are used rather than merely selecting ones from pre-approved descriptions from the Trademark ID Manual, then new “premium” surcharges of $200 per class would apply. This means that typical new trademark applications will see official filing fees increase by $300, and possibly more. Due to an inability to change the fee structure to impose new surcharges in Madrid Protocol extensions to the USA, the existing Madrid Protocol (§ 66) fee structure will remain but with those fees increasing by 20%.
Various other fees are being created or increased. For instance, a new $100 fee (per class) for “insufficient information” has been created, covering any deficiencies (or mistakes) in satisfying the first nineteen requirements of 37 C.F.R. § 2.22(a) (that is, all listed requirements except for a foreign applicant’s failure to designate a U.S. attorney). Those fees will include things like failure to include a translation or transliteration, failing to provide complete information about the applicant, failing to provide a description of a mark with graphical design elements or stylization, failure to include a statement about use of color, or a failure to claim ownership of prior registrations. Also, there is a new surcharge of $200 (per class) for each additional group of 1,000 characters beyond the first 1,000 characters. Some fees specific to intent-to-use (ITU) applications will increase by 25% or 50%, and post-registration maintenance/renewal fees will increase from 5-44%. Petition fees will generally increase by 60% or more, and there will be a 400% increase in the official fee for a letter of protest. However, extension of time fees in trademark matters have remained unchanged, without any increases.
Targeted trademark audits
USPTO audits of trademark registrations had been conducted on a random basis since 2017 during the post-registration maintenance process. However, given the rise of so-called “specimen farm” websites used to generate fake or fraudulent specimens of use in addition to the prevalence of digitally altered /or fraudulent specimens, the USPTO expanded its audit program to further include targeted or ”directed” audits starting October 28, 2024. The expanded audits are meant to address “systemic efforts to subvert the requirements for use in commerce of a mark to support registration.”
Once initiated, these directed audits will happen in the same manner as with random audits. The USPTO has said only that directed audits can take place when submitted documents “exhibit certain attributes that call into question whether a mark is in use in commerce in the ordinary course of trade.” But apart from vague references to altered specimens and specimen farms, the USPTO has not disclosed what “certain attributes” will trigger a directed audit, making this process essentially discretionary. On the one hand, the USPTO desires to keep its discretionary directed audit procedures secret, so that entities responsible for fraudulent submissions cannot seek to avoid detection and exposure. But, on the other hand, unlimited discretion raises due process and fairness concerns, including the possibility of scapegoating.
New trademark filing systems
In addition to having recently replaced the legacy trademark search platform and the trademark assignment filing platform, the USPTO will retire its Trademark Electronic Application System (TEAS) platform used for new application and prosecution filings on January 18, 2025. A new Trademark Center platform, currently in Beta release, will take the place of TEAS.
Additionally, the Trademark Trial and Appeal Board (TTAB) will retire its legacy Electronic System for Trademark Trials and Appeals (ESTTA) filing system sometime in the spring of 2025. A new TTAB Center platform, currently in beta release, will replace ESTTA.
New revision of TMEP released
The Trademark Manual of Examining Procedure (TMEP) was updated in November 2024. This update incorporates relevant precedential decisions issued since the prior May revision and before August 31, 2024. It also revises language to make the TMEP gender neutral and replaces references to the Trademark Electronic Application System (TEAS) and the Electronic System for Trademark Trials and Appeals (ESTTA) with generic wording, because they will be retired shortly and replaced with Trademark Center and TTAB Center, respectively. A complete change log can be found here.
More U.S. trademark filing information
Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications. Additional basic information about trademarks can be found in the Trademark Basics guide.
Significant Developments in U.S. Courts
Obviousness for design patents
U.S. design patent practice has seen a number of significant shifts and important court decisions in recent years. In the case LKQ Corp v. GM Global Tech. Operations LLC, the obviousness standard applied to design patents was clarified as being the same as that applied to utility patents. A different standard (called the Rosen-Durling framework) that had previously made it incredibly difficult to ever find a design obvious was finally overruled. But it has been emphasized that analogous arts requirements still apply to references cited for obviousness. However, what the analogous art requirements will or might mean specifically in the design context remains to be seen.
Following the LKQ decision, the USPTO issued some limited guidance to examiners. But that guidance leaves many open questions and it stopped well short of making the sorts of significant changes to design application examination for obviousness that LKQ suggests. It may take a many years before enough design patent obviousness questions reach courts before the true impact of the LKQ case will be clear.
Third-party litigation funding
The funding of court litigation by a third party has received much attention, particularly in relation to the relationship between such funding arrangements and so-called “patent troll” litigation. While litigation funding can help promote access to justice, on the other hand it can skew litigation towards frivolous claims that revolve more around actual or threatened litigation costs than the true merits of the case, and funders may end up capturing so much of the benefit that the inventor or patentee is exploited in ways the eviscerate any purported access to justice benefits. Third-party function of civil lawsuits involving IP assertion have a particularly high risk of using the high cost of a legal defense as a cudgel to seek a nuisance-value settlement.
In terms of new developments and investigations into this issue, there was a recent Government Accountability Office (GAO) report, and the Department of Justice (DOJ), U.S. Judicial Conference’s Advisory Committee on Civil Rules, and congress / the legislature are all investigating or contemplating action on the issue. However, some recent interest in this topic is sadly colored by politicized xenophobic and imperialist machinations rather than being purely about justice and fairness. Current activities have primarily focused around third-party funding disclosure requirements in civil litigation, like Chief Judge Connolly’s standing order for disclosure of funding arrangements for cases before him in the District of Delaware.
Crisis of legitimacy in judiciary continues
The legitimacy of U.S. courts remainslow in the eyes of the general public, to the point that public confidence in the courts has been described as “withering”. The U.S. Supreme Court has engaged in blatantly partisan realpolitik activism of late. This comes on top of recent investigative reports by journalists and a U.S. Senate Committee on the Judiciary report on ethics challenges at the Supreme Court, which document ongoing and rampant ethics problems and what looks like bribery and influence peddling. And, specifically in the IP field, Judge Pauline Newman remains suspended from the Federal Circuit, the court with exclusive appellate jurisdiction over patent lawsuits, due to her ongoing refusal to cooperate with an investigation into her fitness due to health issues and her treatment of court staff. Judge Newman’s conduct has reflected poorly on her, although it also has a partisan character in relation to the presidential judicial appointment system that will determine who will replace her if she finally steps down from the bench.
Additionally, the Judicial Conference of the United States issued non-binding guidance in March 2024 promoting the random assignment of cases to deter “judge-shopping”. The Administrative Office of the U.S. Courts was considering a binding rule for random case assignment, but that possibility was later apparently abandoned. The issue of judge-shopping typically involves judicial districts with single-judge divisions, which create the possibility that cases dealing with issues of importance to the entire nation can be filed there knowing that they will be assigned to a judge with a favorable ideology and political persuasion. This is much like forum-shopping but is judge-specific and therefore even more potent. This tends to allow parties to leverage the attitudes of a few individual federal judges, which may be extremist minority views that are deeply unpopular, to try to reshape the laws and their interpretation across large regions or even the entire country. This is most often the case when politically reactionary positions hostile to civil rights or public benefits are laundered through courts in the U.S. south. But in the IP field this also has happened in Texas where certain judges have taken positions favorable to “patent trolls.” There is a profoundly undemocratic character to how this process unfolds. The very fact that random case assignment is being opposed is an embarrassment and a sign of the dysfunctional nature of the U.S. government these days, which shows signs of becoming worse rather than better in the near future.
PTAB procedural rules
Lastly, multiplenew rules were implemented for Patent Trial & Appeal Board (PTAB) administrative court proceedings at the USPTO. The use of rulemaking, rather than less formal guidance and procedural mechanisms, was generally intended to provide more stability to PTAB proceedings despite changes in USPTO leadership. However, the practice of discretionary denials of PTAB trials and director review are still nothing more than tinkering at the edges of a system that remains plagued by political whims, an issue that has been with the USPTO since it was founded.
December 2024
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
The Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Tech. Operations LLC that substantially altered the obviousness analysis for design patents. The so-called Rosen–Durlingframework was overruled (largely sidestepping the question of its abrogation by KSR). The patentability of ornamental designs of useful articles will now be under the same Graham v. John Deere obviousness standard that applies to utility patents. The LKQ decision emphasized that analogous arts requirements still apply to references cited for obviousness. But what will (or might) the analogous art requirements mean specifically in the design context? The following discussion explores some possibilities in a rough initial take on what might follow in the wake of LKQ.
Analogous and Non-Analogous Art: Two Tests or Prongs
In order to be used as a prior reference to try to establish obviousness, a given reference must be “analogous art”. There are two tests or prongs used to assess whether or not a given reference is analogous art (at least for utility patents). A reference is analogous art if: (a) it is from the same field of endeavor as the claimed invention (even if it addresses a different problem), or (b) if it is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). To be analogous, a given reference must satisfy only one of these two tests/prongs. Although the evidence and analysis may overlap, so some prior art might satisfy both tests.
The analogous arts framework has been around for a long time with respect to obviousness analyses for utility patents. Courts have generally taken a broad and expansive view of what constitutes analogous arts, especially in light of KSR. But it remains in place as a check against hindsight bias by establishing requirements for the factual foundation needed in order to rely on a given prior art reference for an obviousness argument. In that sense, it is about assessing whether a person of ordinary skill would have been motivated to look at or otherwise consider a reference at all in relation to the claimed invention at the time of invention (or effective filing date).
Analogous Art Analysis for Designs: Some Initial Thoughts
Although the LKQ decision paints its holding as something of a modification of the Rosen-Durling framework, that seems to be mainly a diplomatic attempt to counter the “chicken little” arguments that a disastrously chaotic free-for-all would ensue if design patents were held to the same standards as utility patents under KSR. Application of the non-analogous arts standard to designs going forward will likely not be merely a continuation of business-as-usual. LKQ represents a major shift in the patentability analysis for design patents. As a result, design patent prosecution will likely move further away from a quasi-registration process (a prospect that Robert Post once described as “intoxicating” applicants and their agents), with design examination extended beyond rejections for mere procedure and formality defects towards more substantive concerns. Obviousness rejections based on combinations of prior art references—long a ubiquitous feature of utility patent examination—should become more common. And similar effects should be seen in litigation and Patent Trial and Appeal Board (PTAB) challenges.
Yet the LKQ decision is hardly definitive about what will come next. For utility patents, the non-analogous arts test is rarely invoked and courts have generally taken a broad view of analogous art. But there are few if any prior cases applying analogous arts requirements to designs. That means there are many open questions and practical considerations about how it should be approached for designs. Let us turn to the two prongs/tests with those things in mind.
Analyzing the Same Field of Endeavor for Designs
The LKQ decision reaffirmed a statement from an old case that “[t]he scope of the prior art is not the universe of abstract design and artistic creativity, but designs of the same article of manufacture or of articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” Even though design patents are short, all design patents have to specify an article of manufacture. Indeed, U.S. Patent & Trademark Office regulations specify that “[t]he title of the design must designate the particular article.” (37 C.F.R. § 1.153(a)). So an applicant cannot obtain a design patent without specifying a particular article in the title, even if no further textual description is required.
What is notable here is that LKQ quotes a prior case that encompasses not only the same article of manufacture, but also “articles sufficiently similar that a person of ordinary skill would look to such articles for their designs.” This matters in view of a string of rather questionable Federal Circuit cases that took narrow views that only prior art for the same article of manufacture qualifies as prior art for validity analysis or for three-way infringement comparisons. I call these cases questionable in part because they contradict earlier precedent, but also because their conclusions are poorly explained or highly tendentious. So, a key takeaway is that in an en banc decision the Federal circuit has ruled that the analogous arts same field of endeavor prong/test must extend beyond the same article. This has the effect of neutralizing the impact of In re SurgiSil on the obviousness question (without yet resolving the conflict between SurgiSil and older precedent for anticipation).
As one example, LKQ may permit some generalizing of the article for the field of endeavor prong/test. This can be thought of as saying that the field of endeavor may be a genus of which the claimed invention is a species. For instance, if a particular design patent is for a plow of the sort used with a tractor in a farm or garden, the field of endeavor might be considered to be farm or tractor implements rather than only plows. That might mean that other implements like harrows used with tractors are analogous art. This could mean that a design that merely carries over the ornamental appearance of one farm implement to a different one is merely obvious, even though the implements serve different functions. Or, a prior art reference for a cat toy might be in the same or similar field of endeavor as a claimed dog toy. Different articles might also be similar, or part of the same genus, if they are known substitutes/alternatives.
But there might other ways to look at “similarity” for the field of endeavor prong/test for designs. Take an example of different articles sold together as a set or kit. There might be, for instance, a cutting board plus a large wooden fork and spoon that are sold together as a set, with common ornamentation on each item. This might be common surface ornamentation and/or a similar shape/configuration of handles of each item. Even though cutting boards and forks/spoons are different articles with different characteristics and uses, their sale together as a set may support a conclusion that they fall within similar fields of endeavor. Or there may be different articles advertised together as part of a product line with similar ornamentation, even if the articles are only sold separately. Such approaches to field of endeavor similarity are not entirely unlike the evaluation of the relatedness of different goods/services in trademark cases by looking at proffered evidence that they commonly emanate from a single source under a single brand.
Analyzing What is Reasonably Pertinent to the Problem Faced for Designs
LKQ recognized that a design patent itself does not clearly or reliably indicate the particular problem with which the inventor is involved. The decision further stated that it does not foreclose that art from outside the same field of endeavor could also be analogous. Apart from stating that this is a fact question to be addressed on a case-by-case basis, the court explicitly left this an open question. It will therefore be up to future cases to further develop the application of this standard. It will be interesting to see how this open question will eventually be resolved. What follows are some initial thoughts and suggestions, which draw from insight from social sciences.
Before going further, though, let me say that it is fair to wonder what problem-solving means for non-functional ornamental designs. This opens a rather large can of worms that is the question of whether industrial designs regarding ornamental appearance really involve “invention” at all. This is a big question because, in turn, it implicates the question of whether design patents, first made possible in the 1842 Patent Act following a proposal to have copyright protection for designs modeled on then-recent British law, are constitutional or not. Justice Douglas observed long ago that “attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent.” Does that apply to the very existence of design patents? Although these concerns should be borne in mind, broader questions of constitutionality are for another day. Let us turn to the much narrower question of what designing really involves in terms of solutions it purports to offer.
Setting aside design patent protection pursued for improper purposes (such as to try to preclude functional interoperability), most industrial designs are about marketability. This is a topic Thorstein Veblen wrote about in terms of how the relationship between workmanship and salesmanship was often wrongly blurred by treating the cultivation of saleable appearances as a necessary engineering production cost.
Under that rubric, it may be helpful to look at the ways that designers approach their work. Reference to storytelling and narrative are common. It is easy to find assertions that “[t]he story is the primary motivating event that leads to design and innovation.” Or that design is cultural and tells a story about things like place/geography. It is also said that product design can “tap into users’ emotions” by building on a motivating narrative. Indeed, industrial design training courses in “form fundamentals” even emphasize “How Great Storytelling Leads to Great Industrial Design.”
The way that marketing proposals are presented to clients is also informative. It is typical for advertising pitches to include statements about things like “color psychology” to justify choices of colors in terms that are emotive and feelings-based. For instance, “this is yellow as a symbol of kindness, warmth, and empathy.” Whether this is deployed in a way that is scientific or more akin to pseudo-sciences like phrenology or alchemy is worth consideration here. But the fact remains that visual presentations are presented in this manner in real-world scenarios. Whatever criticisms might be made against the bases for these theories, or their use in a given situation, they might well be what a designer of ordinary skill would consider when devising a new industrial design. The crux is the purported link between social meaning and visual appearance that is known or otherwise already available in the art. And reference to marketing, advertising, and branding rather than product design specifically is still fair, because Federal Circuit panels have held—for better or worse—that design patent and trademark standards are analogous and that blurring distinctions between them is harmless. And talk about storytelling and narratives is often framed as simultaneously being about both product design and branding so that users/customers “understand the value of the product and to build a deeper connection with the brand.”
There have been many efforts to analyze social significance of visual representations. A fascinating example is the television documentary mini-series and corresponding book “Ways of Seeing” by John Berger et al. This looked at artworks and assessed, through critical studies, how certain depictions and themes reinforced things like sexism and patriarchy. The analyses presented are open to criticism, particularly in terms of their underlying essentialism (in somewhat the same way patent as claim construction ruling that seem to simply decree that a given term means one particular thing without explanation). Afterall, Beethoven’s “Ode to Joy” in his 9th Symphony has been used to represent just about every possible worldview (even fascists used it!), which tends to refute essentialist notions that there is any particular meaning inherent to it. But, still, the “Ways of Seeing” series and book presents a very useful reference (easily accessible to any viewer or reader) that informs how reasonably pertinent problems might be assessed for design patent analogous art. That is, it may be possible to ask what sort of (non-technical/non-functional) social objective is sought to be promoted, and then look at ways that other designers have sought to express those non-visual concepts visually before with the same or different types of articles.
The essentialism of Berger et al.’s approach might be softened or avoided by looking more to something like Pierre Bourdieu’s sociology, which investigates meaning in terms of social fields. Bourdieu’s famous book La Distinction[Distinction: a Social Critique of the Judgement of Taste] is useful in exploring how artistic tastes reflect attempts to draw social distinctions. People’s tastes associate them with one group and distance them from others. To (over)simplify this, taste is less about inherent qualities of artistic works or isolated individual preferences than reflecting social distinctions arising from social factors that have meaning as part of a larger field in which individual instances cluster as nodes. For example, if someone says they “like all types of music except country” they are are probably trying to convey that they are not like the sorts of people who listen to country music. And “disco sucks” epithets were, historically, often effectively dog-whistle homophobic slurs. While Bourdieu’s more formal methods involving surveys will be impractical to routinely apply in patent litigation, a book like David Lee’s Battle of the Five Spot, about why jazz musician Ornette Coleman’s 1959 performances at a New York City club were musicologically significant, shows that the general framework can be applied without extensive surveys.
And this comes up in more seemingly utilitarian contexts as well. A 2021 segment on the long-running British television series Gardeners’ World by Advolly Richmond explored the origins of lawns. These came into being in the later middle ages in Europe on aristocratic estates. They required having many servants to mow them, and technology that made such work feasible. The subsequent expansion of lawns can be seen—though the lens of Thorstein Veblen’s seminal book The Theory of the Leisure Class: An Economic Study of Institutions—as people of lesser means attempting to emulate feudal aristocracy with the aid of improvements to lawn mower technology. That is, lawns were a symbol of aristocratic wealth and privilege and the appearance of a “well kept” lawn evolved into widespread use as a visual symbol meant to convey the owner’s wealth (i.e., ability to hire a servant or available free time to mow him- or herself with a purchased lawnmower device) and/or connection to aristocratic values.
Fads are also relevant here. Take computer presentation slide deck templates. Companies often have these and there are trends/fads that develop such that different templates used by different companies share common features at given times. For instance, one fad was to use blocky sans serif fonts and high-contrast color schemes incorporating bright, vivid colors. Suffice it to say, fads are social determinants that can provide motivations to those devising ornamental designs. And designing slide deck templates is not altogether that different from, say, designing the ornamental appearance of graphical user interfaces and computer-generated icons, which are the subject of design patents. How many companies have explicitly tried to have a minimalist computer search interface that looks “like Google’s”?
What does all this social science framework really tell us about problems faced for those developing industrial designs? Well, if some bit of evidence (more on that later) establishes an intent to modify an existing product design to be more aggressive and powerful looking, then looking to prior art with bigger, thicker, taller, etc. characteristics that create a more aggressive and powerful visual appearance would seem to be analogous in terms of the problem faced, even if pertaining to a different type of article or different field of endeavor.
In a more direct way, there can be situations in which designers reproduce known ornamentation of their own or co-workers. For instance, there might be an explicit intention or goal to “create a sense of continuity and coherence across a brand’s products and services.” Some ornamental feature or general style of ornamentation might simply be copied or ported over to another design project. In the design patent context, this sort of motivation is undoubtedly relevant to questions about the obviousness of re-using and adapting known ornamental aspects of one product to another, even when dealing with different types of products/articles.
The parties in LKQ disputed whether designs solve problems at all. Perhaps another way of looking at that (in a Veblenian way) is to say that most or all designs address the problem of saleability, which is not specific enough to any particular claimed design to be of use for the obviousness analysis. And the word “problem” might imply functional solutions rather than ornamental ones—although dictionaries merely define that word as a question to be considered. But, in this author’s view, the social science guidance discussed above still bears on having a second prong or test for analogous arts for design patents. Perhaps it is simply a matter of renaming the second prong/test, maybe as being about the realization of a type of (visual/social) impression sought rather than the “problem” faced. Here again, we run up against the issue (for another day) of whether ornamental designs are really “inventions” at all.
Evidentiary Considerations
Design patents are scant on text. Their prosecution histories might contain some relevant information about the field of endeavor and/or problem faced, but only on occasion or inferentially (for instance, in terms of what prior art was cited or not cited, or through amendments to the title). And, unique to design patent practice, an unpublished appendix of the original application might contain information relevant to what is analogous art, but not always. Family-related or commonly-assigned or -invented utility patent applications, if they exist, will also be a rich source of information, as they have been for functional vs. ornamental analysis in the past.
In the longer term, design patent applicants might choose to voluntarily insert some sort of problem statement in an application (possibly in the appendix), or the Patent Office might institute a new rule requiring such a statement. While patentees might balk at doing this, it may give the patentee some measure of input or control over the way analogous art analysis proceeds.
Notably, the LKQ decision cites approvingly Airbus S.A.S. v. Firepass Corp., a case that looked at the analogous art “reasonably pertinent” prong/test and said that extrinsic evidence can be considered to link the claimed invention and cited prior art (that fell in a different field of endeavor) by a common technical problem. Airbus relied on KSR to hold that overly strict problem statements cannot be used to limit obviousness to express suggestions to combine references or to otherwise ignore or contradict the background knowledge possessed by a person having ordinary skill in the art. Extrinsic evidence can thus be used to help define the problem faced. And extrinsic evidence will undoubtedly play an even larger role in addressing questions about analogous art status for design patents than with utility patents, particularly when defining the “problem faced” or a similar inquiry.
In litigation, discovery around a designer’s intentions and objectives may be useful. This might convey the problem faced. Advertising by the patentee might also be a fertile source of that kind of information. Do ads highlight a “sleek” look or “curved” lines of the patented product, for instance, like televised car commercials often do? Information about the work experience of a designer named on a design patent might also be relevant to the field of endeavor and scope of “similar” articles.
One difficulty, however, is trying to evaluate any link between a cited prior art design patent or printed publication reference and a common problem faced. If the reference is silent on its face about this, what sort of evidence will either link it to the challenged patented design or differentiate it? A conventional approach is expert testimony. Just in the way copyright litigation can involve expert testimony from musicologists, or the way utility patent litigation involves scientific or engineering expert testimony, there are opportunities to present testimony about links or differences. And, following Airbus, additional extrinsic evidence such as textbooks, printed publications, other patents, etc. might be relevant to link (or differentiate) a given prior art reference. Evidence about fads, trends, or brand/product product line coherence might fall in this category. Another possible approach, less conventional historically, is a survey of ordinary consumers. If we return to the example of making something look more aggressive and powerful, would a significant percentage of ordinary observers use those same words to describe a given prior art reference? Or would a survey somewhat similar to a trademark likelihood of confusion survey also potentially provide relevant evidence? Perhaps such a survey might focus on something other than, or rather more specific than, the overall impression, like aspects of the prior art that are a material part of the overall visual impression to the ordinary observer (and which are shared in common with the claimed design being challenged). Testimony from the designer or author of the cited prior art might be possible, if also potentially subject to attack.
May 2024
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.
As 2024 begins, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters and at the U.S. Copyright Office for copyright matters merit attention, along with developments from U.S. courts pertaining to those areas of intellectual property (IP) law. (Click the preceding links to jump to desired content).
Patents
Non-DOCX filing format requirements postponed (yet again)
The deeply unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed yet again, until January 17, 2024. Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications. Furthermore, the USPTO has indefinitely extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many strong objections from U.S. patent practitioners and practitioner organizations.
It remains to be seen whether there will be further postponements or a larger change in USPTO policy about mandatory DOCX filings, which in general provides only a small clerical benefit to the USPTO while placing large burdens and costs on applicants.
Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. But applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.
Electronic patent “eGrants” now in place
On April 18, 2023, the USPTO began issuing an electronic PDF copies of patent “eGrants” as the official versions of granted patents. Continuing a long tradition, patent eGrants are issued on Tuesdays. As of December 2023, “ceremonial” paper copies were still being automatically sent as part of a transition period. The end date of that transition period, when paper copies will no longer be sent, has not been specified. Whenever the transition period does end, paper copies of patents can still be ordered from the USPTO for a small official fee (currently $25). However, ordered copies will either be a certified copy of the entire patent (which lacks the decorative color cover like eGrants and instead includes a certification cover page) or a “presentation” patent (which is a partial certified copy of only the front page of the patent, with a unique certification statement and special seal). Both of those differ from current “ceremonial” copies.
Of note, any color drawings in patents do appear in color in the new electronic patent eGrants. This potentially reduces the need to specially order color copies.
Further, the USPTO will also begin issuing certificates of correction electronically starting January 30, 2024. Paper hard copies of certificates of correction will not be mailed after that date, although they can still be specifically requested for a fee like other patent documents.
Massive official fee increases proposed, but implementation unclear
In April of 2023, the USPTO announced plans for significant official fee increases. Materials related to those efforts can be found here, including an Executive Summary of the key official patent fee increases proposed. If implemented, many fees would be increased by 25% and some by over 700%! And some wholly new fees are proposed. The Executive Summary should be consulted for more details because of the sweeping extent of the proposed fee schedule changes.
For example, the USPTO has proposed tiered fees for continuing applications (with large fees required if a continuing application is filed more than three or seven years after earliest parent’s filing date), new fees if the number of citations submitted with information disclosure statements (IDSs) exceed tiered thresholds, higher excess claim fees, more steeply increasing subsequent request for continued examination (RCE) fees, new fees for After-Final Consideration Pilot (AFCP) 2.0 requests, reinstating and increasing fees for assignment recordations submitted electronically, and enormous increases in design application fees. The design application fee increases are being driven by the prevalence of mostly foreign applicants filing expedited examination requests as micro entities, which has created a large backlog of non-expedited design applications.
While the USPTO currently has fee-setting authority “only to recover the aggregate estimated costs to the Office,” many of the proposals would appear to exceed that authority to try to shift or discourage certain actions by applicants.
At present, the USPTO has not made further announcements in response to comments about its patent fee proposals. Some changes to the initial proposals are certainly possible. But extremely large official patent fee increases are likely by January 2025. More official information should be available sometime in the first quarter of 2024.
Design patent 1 million issued and design patent bar created
In 2023 the USPTO issued design patent 1,000,000. Also, the USPTO authorized a design patent-specific bar for practitioners without scientific or engineering backgrounds to prosecute design cases. This new design patent bar does not restrict the ability of other patent practitioners to handle design applications. Regular patent practitioners with scientific or engineering backgrounds are still able to handle any and all types of patent applications, for utility, design, or plant matters. But practitioners admitted to the new design patent bar will not be able to handle utility or plant patent applications. Other developments in the courts related to design patent practice are discussed below.
Suggested figure for publication policy changed
Applicants were previously able to suggest a figure to appear on the front page of a pre-grant publication of a patent application, but the USPTO independently decided which figure to publish on the front page and sometimes chose a different one. That policy has changed. The USPTO now exclusively uses the drawing figure suggested by the applicant for the front page of the pre-grant publication when that suggestion is included on a compliant application data sheet (ADS) that is timely filed before the USPTO begins its process of publishing the application. Despite this change, it is still common (and often recommended) for applicants to allow the USPTO to select a figure for publication on the front page and not suggest one.
Changes to USPTO online systems
On November 15, 2023, the USPTO permanently retired its PAIR and EFS-Web systems. This leaves only the USPTO’s Patent Center for making electronic filings and retrieving file histories. Although the USPTO has said that Patent Center provides all the functionality of the retired systems, that is not accurate. For instance, without any formal announcement, the USPTO deactivated its First Office Action Estimator tool. In truth, that estimator tool had ceased to be accurate for some time. But applicants are now left with no mechanism to estimate the time until substantive examination begins. Patent Center has reduced functionality in numerous areas and practitioners have found it to be prone to bugs and usability problems, including a lack of capacity.
The USPTO has also announced a plan to “reform” the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into one cohesive and modernized system called the Intellectual Property Assignment System (IPAS). IPAS is slated to be available starting January 15, 2024 [UPDATE: the transition date was pushed back to February 5, 2024]. No further details are available at this time, so it is unclear how the new assignment system will differ or what the apparently integrated patent and trademark recordation interface will look like.
More U.S. patent filing information
Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim. Additional basic information about patenting can be found in the Patent Basics guide.
Trademarks
Fee increases proposed
In May of 2023, the USPTO announced plans for official trademark fee increases. Materials related to those efforts can be found here, including an Executive Summary of the key official trademark fee increases proposed. If implemented, the naming convention and types of fees would change. For example, a typical trademark application would see at least a $100 fee increase. And, if custom identifications of goods/services are used rather than merely selecting ones from pre-approved descriptions from the Trademark ID Manual, then new “premium” surcharges of $200 per class would apply. This means that many (if not most) new trademark applications will see official filing fees increase by at least $300, and possibly more if there are multiple classes of goods/services. Somewhat similar fee structure changes and official fee increases would apply to Madrid Protocol extensions to the USA too. Various other fees will increase 10-66% or more, including a 400% increase in the fee for a letter of protest, for example.
At present, the USPTO has not made further announcements in response to comments about its trademark fee proposals. Some changes to the proposals might be made, but significant official increases are a certainty. More information should be available from the USPTO in the first quarter of 2024, and the new fees are expected to go into effect by November 2024.
New trademark search and assignment recordation tools
The USPTO retired its Trademark Electronic Search System (TESS) on November 20, 2023. A new Trademark Search tool has been made available in its place. The new tool has a more modern-looking interface. It still includes search functionality similar to that of TESS, but no longer times out during searches. Also, it offers the ability to export search results and other information as a spreadsheet. However, the USPTO has warned that the new Trademark Search system will sometimes display outdated status information, drawn from a Trademark Reporting And Monitoring (TRAM) system that the USPTO plans to retire sometime in 2024. The most accurate trademark status information can be found instead in the USPTO’s Trademark Status and Document Retrieval (TSDR) system, which is linked in individual search results. Training materials on how to use the new Trademark Search tool are available.
As noted above regarding patent developments, a new trademark (and patent) assignment recordation system called the Intellectual Property Assignment System (IPAS) is slated to become available starting January 15, 2024 [UPDATE: the transition date was pushed back to February 5, 2024].
More U.S. trademark filing information
Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications. Additional basic information about trademarks can be found in the Trademark Basics guide.
Copyrights
AI-generated works usually not copyrightable
The U.S. Copyright Office requires that works be authored by a human to be copyrightable. In the generative AI context, authorship requirements begin by asking whether the work is basically one of human authorship, with the computer/AI merely being an assisting instrument, or whether the traditional elements of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by a human but by a machine. The Copyright Office takes the view that when an AI tool solely receives a prompt from a human and produces complex written, visual, or musical works in response, such prompts function like instructions to a commissioned artist and the person making the prompts is not considered an author. Accordingly, in that situation the resultant AI-generated work is not protectable by copyright. On the other hand, if AI-generated elements are further selected and arranged by a human, those aspects may be protectable, with the non-copyrightable AI-generated elements disclaimed.
In copyright registration applications, applicants have a duty to disclose the inclusion of AI-generated content and to provide a brief explanation of the human author’s contributions to the work. Given the interest in this area, the Copyright Office has an ongoing initiative and inquiry. Applicable policies and legal standards may continue to evolve.
Significant Developments in U.S. Courts
Patent enablement requirements reinforced
The U.S. Supreme Court unanimously ruled in Amgen v. Sanofi that “[i]f a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable.” This important decision reaffirmed a principle set out in cases going back more than a century, which preclude the grant of a patent monopoly extending beyond the invention actually disclosed. In this way, a central underlying premise of modern patent law was confirmed, that of a quid pro quo or “bargain” between the inventor(s) disclosing the invention and the public granting a limited monopoly in exchange. The Court discussed famous historic cases, including those involving Samuel Morse and Thomas Edison, as setting out the same enablement requirements.
In the Amgen case, in particular, the central issue revolved around the use of functional claim language that encompassed an entire genus of embodiments of antibodies coupled with the disclosure of inadequate teachings and embodiments pertaining to only a subset of species within that genus. The patentee Amgen had disclosed only a few (26) working examples plus a roadmap for a trial-and-error process that would have involved undue, “painstaking” experimentation to arrive at the entire claimed genus (encompassing at least millions of candidates). This was found inadequate and so the invalidation of the relevant claims for lack of enablement (under 35 U.S.C. § 112(a)) was affirmed.
A specification may call for a reasonable amount of experimentation to make and use a patented invention. Often that can be done by disclosing a general quality or general rule that may reliably enable a person skilled in the art to make and use all of what is claimed (and not merely a subset). But what is reasonable in any case will depend on the nature of the invention and the underlying art. Although not explicitly discussed in the Amgen case, courts have long recognized a distinction between so-called “predictable” arts like those involving mechanical and/or electrical inventions and “unpredictable” arts like those involving chemical and biotech inventions, as well as the amount of knowledge in the state of the art available to a person of ordinary skill. The more predictable the art, and the more knowledge a person of ordinary skill in the art would have, the less disclosure is required for enablement. Although even in the “predictable” arts enablement issues can arise, especially where “preemptive” functional or result-only claim language is used.
[Edit: in January 2024, the USPTO released guidance regarding the enablement requirement for utility patent applications in view of Amgen v. Sanofi. Existing USPTO practice of following the so-called Wands factors were essentially reaffirmed.]
Treatment of design patents continues to change
U.S. design patent practice has seen a number of significant shifts and important court decisions in recent years. Notably, there is currently a case called LKQ Corp v. GM Global Tech. Operations LLC pending rehearing that will clarify obviousness standards for designs, and how that standard is the same or different from obviousness for utility patents. At stake is whether design patents will be treated uniquely, with essentially a lower threshold for patentability (currently, obviousness is more difficult to establish for designs), or subject to basically the same non-obviousness standard as for utility patents.
Another controversial decision in the Columbia II case limited the use of “comparison” prior art in infringement analysis to highlight similarities or differences between the patented design and the accused product that might not otherwise be apparent to an ordinary observer. That case built upon recent emphasis on the title of design patents being limiting, and expanded on a prior case (In re Surgisil) that said only prior art pertaining to the same type of article claimed can be used for patentability analysis, even though priorprecedentialcases had said that considerations about use of an article are immaterial. The main takeaway is that the law around design patents continues to shift, and at least some judges have attempted to expand or strengthen design patentees’ power in ways that seem to depart from binding precedent.
District of Delaware holds patent case plaintiffs accountable
Chief District Judge Colm Connolly of the District of Delaware has implemented a standing order requiring disclosure of third-party litigation funding. This policy differs from some other districts (and other judges) that refuse to require such disclosures, even in response to discovery requests. These disclosure requirements help to identify real parties in interest to allow for recusal of the judge if a conflict of interest arises due to the judge having an ownership interest in the litigation funder.
In a set of patent cases brought by non-practicing entities believed to be connected to a common litigation funder, Chief Judge Connolly has issued sanctions and referred attorneys and a party to criminal prosecutors and state bars responsible for attorney licensing. These stem from allegations that the litigation funder is directing the litigation and attorneys are taking instructions from entities other than the named party in the lawsuit, which may constituent the unauthorized practice of law and/or a breach of attorney ethical obligations.
In at least one other case, these policies have also led to dismissal where litigation funder confidentiality agreements have precluded compliance with the Chief Judge’s funding disclosure requirements.
The significance of these probes and disclosure requirements is that these patent lawsuits are generally brought by corporate entities formed only for the purpose of bringing a patent lawsuit, and which have essentially no assets. The lack of assets by a shell company is used by litigation funders to try to shield themselves from liability for possible sanctions and attorney fee awards for bringing meritless or objectively baseless lawsuits. Occasionally, similar cases have involved accusations of sham assignments, which can impact the standing of the plaintiff to bring suit if ownership rights are illusory. These policies also bolster and supplement corporate disclosure requirements under Federal Rule of Civil Procedure 7.1, which on its face does not address things like contractual obligations that can curb settlement power or incentives, or when an entity has the power to control another through “negative control” or economic dependence standards applied by the U.S. Small business Administration to determine “affiliate” status and in turn to determine USPTO entity size status.
More generally, Chief Judge Connoly’s policies present some long-overdue limits on the use of courts to extract nuisance settlements, a problem that has been well-documented with respect to so-called “patent trolls”.
Prosecution laches
Certain cases have continued to apply so-called “prosecution laches” to render patents unenforceable. Prosecution laches is premised on prejudice to an accused infringer by the patentee’s unreasonable and inexcusable delay in prosecution of the asserted patent. Cases that apply this doctrine typically involve continuing applications. Recently, this doctrine has been applied in prominent cases by independent inventor patentees. These cases merit attention for a number of reasons. The criticized “egregious misuse” of the patent system is not something confined to a few isolated instances, but is rather commonplace. For instance, similar conduct in creating patent thickets with multiple continuation applications is routine in medical device patenting. And it is not uncommon for patentees to write claims in continuing applications to cover competitor products. Most significantly, the application of a laches defense is in tension with the Supreme Court’s 2017 SCA Hygienedecision saying that laches cannot be invoked as a defense against a claim for damages brought within the six-year limitations period of 35 U.S.C. § 286. The crucial issue is whether (or when) a judge-made policy can preclude use of statutory provisions allowing continuing applications. Also notable is reliance on unenforceability rather than, for instance, invalidity based on lack of enablement—many continuing applications of the sort that raise these questions would seem to be vulnerable to allegations of lack of enablement in the original disclosure, which is a statutory requirement.
Double patenting and patent term adjustment
In the In re Cellect case, the Federal Circuit held that patent term adjustment that differeed among patents in a family led to invalidity for obviousness-type double patenting, because the patents did not expire on the same date. This case is notable because it held that the judicially-created doctrine of double patenting led to unpatentability as a result of USPTO delay, despite the fact that this stemmed from a statutory provision (35 U.S.C. § 154) granting patent term adjustment. In other words, it presents a significant judicial/legislative separation of powers issue. On the other hand, double patenting concerns only arise when a patentee chooses to file multiple patent applications with overlapping scope.
Normally, double patenting can be overcome by filing a terminal disclaimer. But the In re Cellect case presented an unusual situation. It involved a reexamination of an already-expired patent, and terminal disclaimers are not permitted for expired patents. However, the decision in that case still established that a patent can be invalidated or found unpatentable as a result of USPTO delay, thus requiring terminal disclaimers in more situations than was generally believed necessary previously.
Copyright mandatory deposits found unconstitutional
The Court of Appeals for the D.C. Circuit has ruled in the Valancourt Books v. Garland case that the mandatory deposit requirement of the copyright laws (17 U.S.C. § 407) is unconstitutional under the Takings Clause of the Fifth Amendment of the Constitution. Mandatory deposits provided copies of works for archiving by the Library of Congress. Although some form of mandatory deposit requirement has been in place since the first copyright law was passed in 1790. But the D.C. Circuit ruled that subsequent amendments to the copyright laws had left mandatory deposits “untethered” from the benefits of copyright registration, rendering them a government taking without compensation prohibited by the Constitution. Penalties for failing to make a mandatory deposit will no longer apply.
Fair use eviscerated by Supreme Court
In a pair of rather shocking decisions (Jack Daniel’s and Andy Warhol Foundation), the U.S. Supreme Court has greatly limited “fair use” defenses with respect to both trademarks and copyrights. These decisions greatly reduce freedom to operate based on parody or artistic transformation defenses that were largely taken for granted for a long time under U.S. law, and reflect unconvincing treatment, if not outright disregard, for both fact and law. A return to prior treatment of fair use will apparently require legislative action, which is not likely in the near future.
Role of fraud in trademark matters
In the Great Concepts v. Chutter decision, the Federal Circuit held that fraud in a declaration of incontestability (under § 15 of the Lanham Act, 15 U.S.C. § 1065) cannot be used as a ground to cancel a trademark registration. This creates a split with the Ninth Circuit’s prior 1990 decision in Robi v. Five Platters, which held that a statement of incontestability that fraudulently asserted that there were no adverse decisions involving the registered mark justified cancellation. This means that this particular ground for challenging a registration will only be available in courts and not in Trademark Trial and Appeal Board (TTAB) administrative cancellation proceedings.
Significantly, the Federal Circuit did not reach a major point from the appealed TTAB Great Concepts decision holding that recklessness was sufficient to establish fraud. The Federal Circuit has generally taken an idiosyncratic view of fraud, and numerous past decisions (not limited to trademark law) have made it difficult to prove fraud—despite (or rather because of) the prevalence of accusations and circumstantial evidence of fraud. This issue is also loosely tied to the contentious Iqbal/Twombly “plausibility” pleading standards, which altered longstanding notice pleading requirements, and which research has shown allows judges to limit access to the courts (and associated evidentiary discovery) for certain types of claims for ideological reasons.
Crisis of legitimacy in judiciary continues
U.S. Supreme Court justices have been mired in ethicsscandals and public confidence in the Court remains at or near record lows. These scandals have revolved around essentially influence/bribery concerns and deficient disclosure of income and “gifts” that call into question judicial impartiality. There was a recent introduction of a code of conduct formulated by the Supreme Court justices themselves with no clear enforcement mechanism—with the justices apparently taking the position that they have already been compliant with the new code of conduct, as an attempt to deflect the serious charges leveled against them rather than meaningfully address them. The judiciary’s self-policing has been criticized in general.
Specifically in the IP field, on September 20, 2023 Judge Pauline Newman was suspended for one year from the Federal Circuit, the court with exclusive appellate jurisdiction over patent lawsuits. At 96 years old, she is the oldest current serving U.S. federal judge, appointed by President Regan in 1984. Her suspension resulted from her refusal to cooperate with an investigation into her fitness due to health issues and her treatment of court staff. As of December 2023, she has still refused to either retire or cooperate with the official investigation, a course of conduct that has reflected poorly on her and, more broadly, has tarnished the reputation of the judiciary as a whole. Judge Newman continues to challenge her suspension and the investigation as a whole—on “libertarian” grounds that deny government authority and therefore sit uncomfortably with her role as a federal judge.
Additionally, an employment-related complaint by an administrative patent judge (APJ) at the USPTO for abuse of authority was initially sustained in May of 2023. The APJ had reported interference with Patent Trial & Appeal Board (PTAB) judge assignments through “panel stacking” in order to alter case outcomes (in a separate Freedom of Information Act [FOIA] case, the USPTO refused to disclose how often this occurred). Supervisors then retaliated against him. This matter points to more general transparency and credibility problems and a lack of independence of administrative judges (within the executive branch). It follows a 2022 Government Accountability Office report finding that a majority (67%) of APJs felt pressured by management to alter specific decisions in AIA proceedings and a smaller but still significant number (34%) felt similar pressure in ex parte appeals. It further follows the Supreme Court’s 2021 Arthrex decision, which held that APJ appointments violated the Appointments Clause of the Constitution but that such deficiencies were resolved by allowing PTAB decisions to be reviewed by the Director of the USPTO—essentially undermining APJ independence and objectivity in favor of protecting the political aspects of appointment authority. These issues also recall concerns about secret USPTO actions during application examination placing public relations / perception management concerns ahead of objective patentability requirements established by the legislature.
To foreign observers, the crisis of legitimacy in the U.S. judiciary might seem to merely extend a legitimacy problem with U.S. government action both domestic and worldwide, including investigations/proceedings against presidents past and present and conduct before bodies like the United Nations.
December 2023
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.
These downloadable materials from a past live presentation address basic marking requirements and best practices for patent marking, as well as requirements for virtual marking, alternative marking on a label or package, ways the sufficiency of marking can be challenged, and false marking. These materials cover the ins and outs of patent marking in a format packed with real-world examples.
Marking is simple enough in concept but there are a surprising number of nuances and practical challenges for implementation. Also, the America Invents Act (AIA) reshaped numerous aspects of marking that continue to reverberate. For instance, virtual marking was introduced with the AIA and there is now a growing body of court decisions clarifying what kinds of virtual marking practices are sufficient and what kinds are not. These practical aspects of marking are addressed in these program materials.
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.
When can prior art be used to assess alleged infringement of a design patent? This has been an evolving area of U.S. patent law. The question matters because looking at only the asserted patent and the accused product might not allow an ordinary observer to understand the ways in which the patented design is similar (or dissimilar) from known designs. A recent court decision sheds some light on the issue while at the same time muddies the waters in light of past cases that reached seemingly different results.
When assessing design patent infringement, “when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art. . . .” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc). This is essentially a three-way visual comparison, in which differences “that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer . . . .” Id. This is not about validity/invalidity but rather about how prior art informs the comparison of the patented design and the accused product to determine if there is infringement or not.
A recent Federal Circuit decision addressed what sort of prior art can qualify as comparison art. In the second appeal in an ongoing dispute, a Federal Circuit panel held that “to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim.” Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., Nos. 2021-2299 and 2021-2338, Slip Op. at *21-23 (Fed Cir. Sept. 15, 2023) (“Columbia II“).
In reaching that conclusion, the ColumbiaII panel cited one Supreme Court case from the 1800s, plus Egyptian Goddess and further said that “[s]imilar examples abound”. But do they really? The Columbia decision cites only a single post-Egyptian Goddess precedential case that was not abrogated (ABC Corp. I v. P’ship & Unincorporated Ass’ns Identified on Schedule “A”, 52 F.4th 934 (Fed. Cir. 2022)), plus one non-precedential case (Wallace v. Ideavillage Prods. Corp., 640 F. App’x 970, 971, 975–76 (Fed. Cir. 2016) (nonprecedential)).
Two other case citations in Columbia II rely on portions of opinions (Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1318, 1324–25 (Fed. Cir. 2007) and Unidynamics Corp. v. Automatic Prods. Int’l, Ltd., 157 F.3d 1311, 1313, 1324 (Fed. Cir. 1998)) that dealt with the “point of novelty” analysis that was specifically overruled by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678-79 (Fed. Cir. 2008) (en banc). ColumbiaII’s citations do not include any identifications any portions of the cited cases that were abrograted, or otherwise explain why or how specific aspects of those point of novelty analyses were still valid and relevant—as was the case in Egyptian Goddess, there might still be similarities although the theoretical framework and thus the purpose of looking at the prior art is different.
Then in a lengthy footnote 8 the Columbia II panel attempts to explain away a prior precedential case that reached a seemingly contrary outcome, Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020). If an attorney submitted a brief written in such a manner, she would at a minimum probably be harshly scolded by the presiding judge(s), and at worst be sanctioned. But apparently this Federal Circuit panel (Judges Prost, Reyna, and Hughes) has no qualms about doing this themselves. It is possible to argue that the Columbia II decision, although designated as precedential by the panel, is actually non-precedential due to being in conflict with Lanard Toys. See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988) (when Fed. Cir. panel decisions are in conflict, the later one is non-precedential).
In any event, one issue that footnote 8 of Columbia II does not fully address is the question of comparison art when the claimed article is specifically a simulation, and to the extent that it does that footnote may not be controlling. MPEP § 1504.01(d) (9th Ed., Rev. 07.2022, Feb. 2023) deals designs attempting to claim articles that are simulations of something else. The Columbia case does not specifically address In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965), which dealt with the use of something other than the same article as prior art to affirm a rejection of a claimed design. There, the claimed design was a “promotional advertising souvenir”, whereas one of the prior art references was a mere “representation of a conventionalized teardrop.” Id. at 982-83. In particular, the claimed design showed a teardrop shape article that was hollow with transparent walls, within which appears a planar member shown in dotted lines, on which advertising matter is to be placed, and additional prior art was cited for the proposition that display devices inside of hollow transparent containers were known—the fact that the interior components were in broken lines meant that their specific content carried no patentable weight. Id. at 983-84. Partly the issue raised here is whether Wise was—or could be—abrogated by In re Surgisil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021), which did not specifically address Wise or a “simulation”-based rejection, or other seemingly contrary precedent like In re Glavas, 230 F.2d 447, 450 (CCPA 1956) (“the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is. Accordingly, so far as anticipation by a single prior art disclosure is concerned, there can be no question as to nonanalogous art in design cases”). Surgisil overturned a patent office rejection premised on the title of the application not limiting the scope of the claim of a pending design application, where the applied-for design was titled a “lip implant” but the cited prior art having essentially an identical shape was for an artist’s “stump” blending/smudging tool. That result in Surgisil stands in contrast to both Glavas, which said use and non-analagous art issues are irrelevant to patentability of designs, and Wise, which cited a mere representation of a teardrop that was not, specifically, a “promotional advertising souvenir” as claimed.
Another way to look at this is to say that footnote 8 of Columbia II is mere dicta and not binding, because Columbia II did not deal with allegations that an asserted patented design was a “simulation”. From that perspective, the footnote 8 discussion about waiver of arguments can be disregarded (the very fact that this discussion was placed in a footnote rather than in the main text provides some support for viewing it as mere dicta). This is significant because the Columbia II panel could not overrule Lanard Toys, and neither the Columbia II panel nor the Surgisil panel could overrule Wise or Glavas. SeeSouth Corp. v. U.S., 690 F.2d 1368, 1369 (Fed. Cir. 1982) (“the holdings of . . . the United States Court of Customs and Patent Appeals, announced . . . before the close of business September 30, 1982, shall be binding as precedent in this court.”); Newell, 864 F.2d at 765.
The Columbia II panel argues that “using the same scope for anticipatory prior art and comparison prior art makes good practical sense.” This is asserted without addressing the (“wise”) reasoning of the Wise decision, which set out contrary practicalities when an asserted design is alleged to be a simulation. That is, Wise pointed out that a design may not be patentable if it merely simulates a known shape from another context, and a patentee cannot obtain exclusive rights by merely reproducing essentially generic representations—a concern that in many ways mirrors cases about utility patent eligibility where results are recited coupled with only generic or conventional computerization hardware. Cf., e.g., Elec. Power Group, LLC v. Alstom SA, 830 F.3d 1350 (Fed. Cir. 2016) (claims were patent-ineligible abstract ideas because they did not require “use of anything but entirely conventional, generic technology.”).
Other areas that remain somewhat unresolved pertain to partial claims, multi-part articles, and language reflecting intended use. For instance, if a design patent is for a “motorcycle with windscreen,” is prior art to a motorcycle alone (without a windscreen) available as comparison art, or prior art to a windscreen in isolation? Or a combination of both motorcycle and windshield comparison references? Does the answer depend at all on whether or not broken lines are used in the patent to make a partial claim? There a risk that design patents could gain inappropriate coverage over combinations of known (useful) elements in their functional capacity if and when the only available prior art shows merely some but not all of the components together in a single reference. And what about mere intended use language in the title of the patent? If the claim is to a “cat toy” and the prior art was expressly marketed as a “dog toy”, can the dog toy be used as comparison art, when both cats and dogs could actually play with either toy? Both instances involve a toy (and an animal toy no less), and differ only in the intended use by a different animal. There is older precedent stating that “the use to which an article is to be put has no bearing on its patentability as a design and that if the prior art discloses any article of substantially the same appearance as that of an applicant, it is immaterial what the use of such article is.” Glavas, 230 F.2d at 450.
These sorts of questions put added emphasis on the still-ambiguous role of claim construction in design patent litigation, as well as the need to carefully select a title for a new design patent application. Parties to litigation now have added incentive to argue about claim construction in design patent cases, because the proper construction will determine not only the scope of the claim but also impact the availability of comparison prior art.
October 2023
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.
This presentation and downloadable materials addresses basic requirements and best practices for virtual patent marking, as well as requirements for traditional/physical marking, alternative marking on a label or package, and false marking. Suggestions for implementing virtual patent marking are provided along with examples and hypotheticals used to discuss some of the practical challenges of virtual marking and where there continues to be areas uncertainty. More information about patent marking is available in this detailed guide and this brief overview.
Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.
Materials from a presentation by Austen Zuege and Jonathan Bench about patent assignments and rights of priority, including presentation slides and an on-demand video recording, are available here:
Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.
At the beginning of 2023, following a year in which new filings declined, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.
Patents
Reduced official fees for small and micro entities
A change in the U.S. patent laws governing fee reductions for small and micro entities was passed as a small part of a wide-ranging legislative budgetary package at the very end of 2022. The relevant portion was titled the Unleashing American Innovators Act of 2022. It is characteristic of U.S. politics that certain non-budgetary matters like this are appended to budgetary legislation shortly before passage during a holiday season with little public discussion. These patent fee reductions therefore came as somewhat of a surprise. As of December 29, 2022, most official patent fees are now discounted by 60% for small entity applicants (previously this was only a 50% reduction) and by 80% for micro entity applicants (previously this was only a 75% reduction). These reductions apply to most official fees associated with initial filing fees for new applications, actions during examination (such as extension of time fees, request for continued examination [RCE] fees, etc.), as well as fees after grant such as maintenance fees. The requirements to qualify as a small or micro entity are unchanged.
The newly amended law further gives the USPTO power to impose fines for false assertions of small or micro entity status of no less than three (3) times the fee underpayment—with no pre-defined upper limit on that amount. Such fines are not yet in effect and will require the USPTO to first issue implementing regulations that will establish exactly how they will be assessed. However, depending on the scope of later regulations, this creates the possibility of significant penalties for innocent or negligent errors. Historically, a fraudulent assertion of small or micro entity status, done knowingly or willingly with intent to deceive the USPTO, would qualify as inequitable conduct that renders the associated patent unenforceable. But the appeals court responsible for all patent appeals set the threshold for the required intent to deceive extremely high. While the possibility for unenforceability due to intentional fraud will remain, the USPTO will have new authority to impose fines if the assertion of entitlement to small or micro entity fee reductions was merely “false”. There is no explicit statutory requirement for such a “false” assertion to be made with intent to deceive. Thus, the USPTO can potentially impose fines without establishing intent to deceive, potentially including even good faith mistakes. Failure to pay such fines will likely have an impact of the enforceability and/or abandonment/lapse of an associated patent or application. It is unclear how the USPTO will discover or otherwise come to know about false assertions of entity size in order to subject applicants and patentees to fines. It will therefore be important to monitor subsequent USPTO regulations regarding these fines and to see how existing safe harbor provisions for correction of good faith errors will be affected, if at all. In the meantime, this highlights the need to accurately determine entity size status and to notify the USPTO at the appropriate time if entitlement to reduced fees is lost.
Non-DOCX filing format requirements postponed (again)
The highly unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed until January 17, 2024 [Update: this deadline has been again postponed beyond a previously-announced April 3, 2023 and June 30, 2023 implementation deadlines]. Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications. Additionally, the USPTO has extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format indefinitely, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many objectionsfrom U.S. patent practitioners and practitioner organizations.
The non-DOCX surcharge is part of the USPTO’s plans to automate certain administrative tasks to reduce administrative overhead costs and staffing associated with legacy systems for processing application materials. While touted as providing benefits to applicants and practitioners, the reality is that there are no meaningful benefits to applicants or practitioners. But, alarmingly, the USPTO has pushed forward with its cost-cutting objectives despite substantial problems apparent with its new Patent Center platform used for DOCX format filings and its tendency to introduce errors. In effect, the USPTO has prioritized budgetary cost-cutting over maintaining the integrity of the contents of newly filed patent applications. This is what has troubled practitioners most of all.
In brief, the Patent Center system alters uploaded DOCX-format patent application files and has been shown to introduce errors in the substantive content of some uploaded applications. These errors occur only some of the time, but in a significant enough percentage of cases for it to matter. This creates new burdens on applicants and their U.S. patent counsel to review uploaded applications to try to identify errors introduced by the USPTO’s electronic filing platform. These burdens are particularly difficult to manage for U.S. applications based on a Paris Convention foreign priority claim, where U.S. counsel did not prepare the original application and is therefore less familiar with the intended contents. In addition, the USPTO has greatly limited opportunities to correct errors resulting from the way its (proprietary) systems process, convert, “validate”, and alter uploaded application documents. In many circumstances (when a priority claim cannot be relied upon), corrections must be made within one year of initial U.S. filing and will require a petition fee larger than the non-DOCX surcharge. The USPTO has indicated it will deny petitions filed more than a year after initial filing seeking to correct errors that its proprietary computer systems introduced. Moreover, the non-DOCX surcharge is essentially punitive. It far exceeds the estimated administrative savings of $3.15 per application that the USPTO has been able to quantify. Most problems with the roll-out of the non-DOCX surcharge are the result of the USPTO committing to adopt certain proprietary computer systems based on a cursory and inadequate initial investigation of alternatives, greatly misunderstanding the stability and capabilities of the DOCX file format (and its alleged status as a “standard”), and having unrealistic goals for software development associated with implementation of a new proprietary filing platform (and unrealistic projections of net cost savings), coupled with a Kafkaesque disregard for the burdens imposed on applicants and the general public by its actions.
Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. Bu applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.
Hard copies of patents still being issued (for now)
[UPDATE: The USPTO has announced that electronic patent grants, now being called “eGrants”, will begin April 18, 2023. There will also be a transition period of unspecified duration during which paper ceremonial copies (with a certification statement and a special ribbon and seal) will still be issued in addition to an eGrant electronic copy. A paper presentation copy, certified copy, or ceremonial copy can be ordered for a fee after the transition period.] The USPTO previously announced that sometime in 2022 it would cease issuing paper patents and would issue only digital patents instead. However, the USPTO has continued to issue hard copies of granted patents and has made no further announcements about the date after which only electronic patents will be issued. Presumably, the USPTO will eventually cease to issue hard copies of patents (except upon an express request) but it is unclear exactly when that will occur.
Patent public search tool
The USPTO’s legacy open-access patent and published patent application search tools (PatFT and AppFT) have been retired. The PubEAST and PubWEST systems previously only available in-person (and to examiners) have also been retired. In their place a new Patent Public Search tool is now freely available online. It is based on the old PubEAST/PubWEST tools. Its new USOCR database allows U.S. patents granted before 1970 to be keyword searched—the old PatFT system previously had a 1970 cut-off for keyword searching. The launch of this new tool was rather awkward, with little training or instructional information initially provided on how to use it. But, since its launch, training guides and frequently asked questions (FAQs) have become available. This tool currently exists with two different interfaces: Patent Public Search Basic (PPUBS Basic) and an advanced search. Both allow U.S. patents and published applications to be searched simultaneously.
The Basic search interface allows granted U.S. patents and published patent applications to be fetched by number, and allows some keyword-based searches, but returns only PDF copies.
As the name implies, the advanced search includes advanced search functionality. Although the advanced interface is highly esoteric and non-intuitive, and the interface may not display properly on all computers (in particular, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens like laptops). The advanced interface is currently the only way the USPTO provides “full text” of published patent documents. PDF image versions are also available by clicking the “T / [camera icon]” button at the top left of the “Document Viewer” panel that normally appears at the right-hand side of the screen along with the text. Toggling that button allows switching between text or PDF image displays of a given patent document.
Fetching a particular patent or published application by number is surprisingly difficult with the “advanced” interface. A given patent can be queried using the “.pn.” field code or by typing in an “external search” URL to a web browser. But expect some frustration because these “external search” URLs do not seem to consistently work at all.
An alternative way to reach a particular U.S. patent or published application is to utilize the Patent Center interface and enter a patent or published patent application number. From the resultant record, there are links available to the Patent Public Search text versions of the published application and granted patent (if any) under the Patent Center “Application Data” tab. The button with the “T/[camera icon]” label can be clicked to toggle between a text view and a PDF image of the patent document in Patent Public Search. While navigating to patent documents through Patent Center requires many clicks, you might say too many, using it may still be easier than the other alternatives available through the USPTO.
More information about using Patent Public Search is available here.
More U.S. patent filing information
Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim.
Trademarks
Shortened response periods in effect
The time period for responding to U.S. trademark office actions is now only three (3) months. This shortened response period is indicated in new office actions. Applicants can, however, request a single 3-month extension of time by paying an official fee (currently $125 if filed electronically). An extension must be expressly requested by the original 3-month deadline. This shortened response period does not apply to Madrid Protocol extensions, which will still enjoy a full 6-month office action response period. Moreover, shortened response periods will not apply to post-registration office actions until October 7, 2023.
Unlimited window for expungement requests still open
Any party may request cancellation by expungement of some or all of the goods or services in a U.S. trademark registration because the registrant never used the mark in commerce with those goods or services. Normally an expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, a temporarily unlimited expungement filing period is in effect until December 27, 2023 during which expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit. In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023. Expungement proceedings are available for all U.S. registrations but are especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required prior to registration. Additional general information about expungement proceedings is available here, and a listing of reexamination and expungement requests made to date is available here.
More U.S. trademark filing information
Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications.
January 2023
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Abstract: This article provides critical analysis of the doctrine of assignor estoppel for patent assignments following the Supreme Court’s Minerva v. Hologic decision, which limited the situations in which the doctrine is available to those that involve a “contradiction” by the assignor that violate norms of “fair dealing”. An overview of the likely abrogation of prior Federal Circuit cases is provided. Although, as explained, there are significant policy disputes that underlie the doctrine that have not been definitively resolved, which will undoubtedly be the subject of dispute in future cases. Also addressed, and questioned, are corollaries and related Federal Circuit precedents involving privity, the effect of purported assignments of future inventions and the role of claim construction to preserve validity defenses. For the latter, an “assignor estoppel donut” is conceptualized to highlight the multiple boundaries involved, of which Minerva’s holding addressed only one. Lastly, an analysis of pragmatic assignment scenarios and potential areas of dispute around them is set forth, in order to inform both assignment drafting and negotiation, on the one hand, and legal disputes over existing assignments, on the other.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
