Category: Articles

Articles and presentations for attorneys and other experts about intellectual property (IP) topics.

New and Upcoming Changes in U.S. Patent, Trademark, & Copyright Law for 2024

Post author By Austen Zuege

Important Developments

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 prior precedential cases 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 Hygiene decision 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 ethics scandals 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.

Contact Austen

Tags Copyrights, Design Patents, Freedom-to-Operate (FTO) & Clearance, Litigation, Patent Prosecution, Patents, Trademark Prosecution, Trademarks

Articles Patents

Patent Marking Program

Post author By Austen Zuege

Materials from a presentation by Austen Zuege about patent marking in the United States are available here:

“Patent Marking: Legal Standards and Practical Issues”

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.

More information about patent marking is available in this detailed guide and this brief overview.

Contact Austen

Tags Litigation, Patent Infringement, Patent Marking, Patents

Articles

Federal Circuit Columbia Decision Both Clarifies and Muddies the Proper Use of Comparison Prior Art

Post author By Austen Zuege

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 Columbia II 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). Columbia II’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) (9^th 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. See South 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 sect 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 the availability of comparison prior art.

October 2023

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Tags Design Patents, Litigation, Patent Infringement, Patents

Articles

Virtual Patent Marking Program

Post author By Austen Zuege

Materials from a presentation by Austen Zuege, Grant Peters, and Bryan Wheelock about virtual patent marking are available here:

“Virtual Patent Marking: Practical Considerations, Recent Court Guidance, and Ideas for Designing Your Own Virtual Patent Marking Program”

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.

Tags Patent Infringement, Patent Marking, Patents

Articles

Patent Assignments and Priority in an International Context

Post author By Austen Zuege

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:

“Patent Assignments and Priority in an International Context”

Tags Assignments, Assignor Estoppel, Litigation, Patent Prosecution, Patents

Articles

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

Post author By Austen Zuege

Important Developments

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

Patents

Reduced official fees for small and micro entities

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

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

Non-DOCX filing format requirements postponed (again)

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

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

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

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

Hard copies of patents still being issued (for now)

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

Patent public search tool

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

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

As the name implies, the advanced search includes advanced search functionality. Although the advanced interface is highly esoteric and non-intuitive, and the interface may not display properly on all computers (in particular, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens like laptops). The advanced interface is currently the only way the USPTO provides “full text” of published patent documents. PDF image versions are also available by clicking the “T / [camera icon]” button at the top left of the “Document Viewer” panel that normally appears at the right-hand side of the screen along with the text. Toggling that button allows switching between text or PDF image displays of a given patent document.

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

An alternative way to reach a particular U.S. patent or published application is to utilize the Patent Center interface and enter a patent or published patent application number. From the resultant record, there are links available to the Patent Public Search text versions of the published application and granted patent (if any) under the Patent Center “Application Data” tab. The button with the “T/[camera icon]” label can be clicked to toggle between a text view and a PDF image of the patent document in Patent Public Search. While navigating to patent documents through Patent Center requires many clicks, you might say too many, using it may still be easier than the other alternatives available through the USPTO.

More information about using Patent Public Search is available here.

More U.S. patent filing information

Trademarks

Shortened response periods in effect

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

Unlimited window for expungement requests still open

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

More U.S. trademark filing information

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

January 2023

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Tags Patent Prosecution, Trademark Prosecution

Articles

Assignor Estoppel for Patent Assignments

Post author By Austen Zuege

The following article is available at SSRN:

“Assignor Estoppel for Patent Assignments: A Shifting Landscape”

Abstract: This article provides critical analysis of the doctrine of assignor estoppel for patent assignments following the Supreme Court’s Minerva v. Hologic decision, which limited the situations in which the doctrine is available to those that involve a “contradiction” by the assignor that violate norms of “fair dealing”. An overview of the likely abrogation of prior Federal Circuit cases is provided. Although, as explained, there are significant policy disputes that underlie the doctrine that have not been definitively resolved, which will undoubtedly be the subject of dispute in future cases. Also addressed, and questioned, are corollaries and related Federal Circuit precedents involving privity, the effect of purported assignments of future inventions and the role of claim construction to preserve validity defenses. For the latter, an “assignor estoppel donut” is conceptualized to highlight the multiple boundaries involved, of which Minerva’s holding addressed only one. Lastly, an analysis of pragmatic assignment scenarios and potential areas of dispute around them is set forth, in order to inform both assignment drafting and negotiation, on the one hand, and legal disputes over existing assignments, on the other.

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Tags Assignments, Assignor Estoppel, Freedom-to-Operate (FTO) & Clearance, Litigation, Patents

Articles

Willful Patent Infringement: Lingering Questions

Post author By Austen Zuege

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

Introduction

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

A Brief History of Willfulness

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

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

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

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

New Theories of Willful Infringement

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

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

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

Statutory Limits on Evidence of Willfulness Under § 298

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

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

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

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

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

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

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

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

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

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

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

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

Key Takeaways

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

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

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

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

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

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

[vi]. Halo, 136 S. Ct. at 1933–34.

[vii]. Id. at 1933.

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

[ix]. Id.

[x]. Id. at 1932–35.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

[xxvii]. 35 U.S.C. § 298.

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

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

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

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

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

[xxxiii]. See supra note xxiv.

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

[xxxv]. 35 U.S.C. § 298.

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

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

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

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

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

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

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

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

Articles

Conceptualizing Negative Limitations in Design Patents

Post author By Austen Zuege

Is it possible for a U.S. design patent claim to include a negative limitation? It does not appear that courts have explicitly addressed this question. That is partly due to emphasis on design patent claims and infringement analyses revolving around the design as a whole, which can lead to rather conclusory decisions. But the question posed here is whether a claimed ornamental design as a whole can contain within it one or more “negative limitations” that effectively indicate the absence of some ornamental aspect, as opposed to indicating the positive (or affirmative) presence of an ornamental aspect. Certain past cases have touched on similar issues without specific reference to “negative limitations” in the sense that term is used with regard to utility patent claims.

Consider a design patent claim that shows as part of the overall ornamental design a flat surface, that is, a solid planar surface that is plain and uninterrupted. Does such a depiction include a negative limitation of sorts that excludes the presence of ornamentation on the surface? That is, does it give rise to a potentially significant overall difference when comparing a perforated surface or a surface that has substantial non-planar texturizing surface ornamentation? The same questions might arise, for instance, when a claimed design depicts only a single element (such as a single rounded corner, single support bar, single hole, etc.) but the accused product includes more than one of those elements.

In general, design patent infringement analysis involves two steps: (1) claim construction and (2) comparison of the properly construed claim to the accused product. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). Theoretically, at least, questions about “negative limitations” in design patents could potentially arise in either of those two steps.

While, certainly, a jury can always reach an ultimate infringing/non-infringing conclusion, in the binary sense, based on the particular and specific facts at hand in any given case. But the topics at hand here are how courts should treat the legal issues surrounding how a finder of fact might be presented with design patent infringement questions where negative limitation issues are present, and also how courts making dismissal (Rule 12(b)(6)), summary judgment, judgment on the pleadings, judgment as a matter of law (JMOL), or appeal decisions can explain their reasoning under the ordinary observer test when negative limitations may be present.

Negative Limitations in Design Claim Construction

Design patent infringement analysis begins with claim construction. Although claim construction is also the first step in utility patent infringement analysis, design patent claim construction differs from that for utility patents in some important ways.

A patentable design “gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form.” Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 525 (1871); see also Samsung Elecs. Co., Ltd. v. Apple Inc., 580 U.S. ___, 137 S. Ct. 429, 432-33 (2016). This means design patent claim construction must be adapted to the pictorial setting. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1302 (Fed. Cir. 2010). In that sense, the Federal Circuit has said that “[d]epictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings.” Id.; see also Dobson v. Dornan, 118 U.S. 10, 14 (1886) (a claimed design “is better represented by the photographic illustration than it could be by any description, and a description would probably not be intelligible without the illustration.”).

The Federal Circuit has cautioned that detailed verbal claim constructions increase “the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (en banc). For such reasons, the level of detail to be used in describing the claimed design is a matter within a court’s discretion, and a court is not obligated to issue a detailed verbal description of the design if it would not be helpful. Id. at 679-80. Yet a court may use claim construction to help guide the fact finder through issues that bear on claim scope. Id. at 680.

Although not always at issue in every case, design patent claim construction can address prosecution history estoppel and prosecution history disclaimer. See Egyptian Goddess, 543 F.3d at 680. In general, the doctrine of prosecution history estoppel prevents a patentee from “recaptur[ing] in an infringement action the very subject matter surrendered as a condition of receiving the patent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 734 (2002). It requires that “the claims of a patent be interpreted in light of the proceedings in the [US]PTO during the application process.” Id. at 733. The Federal Circuit has specifically held that prosecution history estoppel applies to design patents too. Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014).

However, for design patents, unlike with utility patents, “the concepts of literal infringement and equivalents infringement are intertwined.” Id. at 700-01. Because it is the drawings of the design patent that provide the description of the invention, courts “look at the requisite drawings in design patents to determine whether a surrender has occurred.” Id. at 702. Estoppel arises when a narrowing amendment is made to satisfy any requirement to secure the grant of the patent, including amendments to avoid prior art or resulting from a restriction requirement. Id. at 703-04; see also Advantek Marketing Inc. v. Shanghai Walk-Long Tools Co., 898 F.3d 1210, 1216-17 (Fed. Cir. 2018).

In the Pacific Coast Marine Windshields case, a design application (for U.S. Des. Pat. No. D555,070) originally included drawings depicting—and claiming—multiple embodiments of a boat windshield. As reproduced below, the various originally-claimed embodiments showed the claimed windshield design with different vent hole configurations and also showed claimed designs that included and excluded a hatch on the front of the windshield. The examiner issued a five-way restriction requirement, identifying five distinct groups of designs as windshields with:

four circular holes and a hatch (FIG. 1);
four circular or square holes and no hatch (FIGS. 7 and 12);
no holes and a hatch (FIG. 8);
no holes and no hatch (FIG. 9); and
two oval or rectangular holes and a hatch (FIGS. 10 and 11).

Grid of selected original figures from the application for Des. Pat. No. D555,070

In that sense, the examiner indicated that many of the different embodiments (but not all of them) represented different design inventions. In response, the patentee removed alternate embodiments, thus deleting those alternate embodiments from the scope of the claim. That prosecution history had significant implications to the scope of the claim in the granted design patent before the court (D555,070). Incidentally, the patentee chose to file only one subsequent divisional application to the “no holes and a hatch” embodiment (that became U.S. Des. Pat. No. D569,782), apparently without pursuing any other of the original alternate embodiments—though a continuation application (that became U.S. Des. Pat. No. D593,024) based off the divisional was also later filed for a partial design to only the vertical corner posts with no vent holes (with the windscreen portions unclaimed, thus potentially avoiding hatch vs. no hatch questions).

Malibu Boats, LLC’s accused product (left) and FIG. 1 of U.S. Pat. No. D555,070 (right)

Noting that treatises and prior district court decisions had said similar things in the past, the Federal Circuit ruled that surrender of claims to the alternate designs was for reasons of patentability that caused prosecution history estoppel to attach. Pac. Coast Marine Windshields, 739 F.3d at 702-04. However, because the accused windshield product’s design had three vent holes (see above) but the patented design had four vent holes (see FIG. 1 above) and the surrendered embodiments/designs had only two vent holes (see original FIGS. 10 and 11 above), summary judgment of non-infringement was reversed and the case was remanded to the district court for further proceedings. Id. at 704-05. In other words, without reaching a definitive infringement/non-infringement decision, the patentee was barred from arguing that the design patent’s claim covered a two-hole design (or any other surrendered embodiments) but was still able to argue that a three-hole design might be covered because there was no surrendered three-hole embodiment in the original drawings. (The Federal Circuit decision did not address potential differences in the horizontal/angled frame or trim aspects of the accused design as part of the overall appearance analysis). After remand, and denial of subsequent summary judgment cross motions (which included inventorship disputes, and non-patent issues), the parties eventually settled.

Generally similar negative limitation issues have arisen in utility patent cases. For example, the Spine Solutions case involved questions of claim construction and prosecution history estoppel for a utility patent. Claim 1 of the patent in question recited “a single anchor on each of the upper surface of the upper part and the lower surface of the lower part . . . .” The relevant claim construction implicitly regarded the “single anchor” recitation as including a negative limitation, that is, requiring one anchor having the recited characteristics but excluding the presence of more than one anchor. There was no infringement by the accused device, which had two anchors rather than a “single” anchor as claimed. The Federal Circuit reasoned as follows:

“We agree with [the accused infringer] Medtronic that the court erred in determining that [the accused] O-Maverick [device] literally infringes claims 1 and 2. The [district] court construed ‘single anchor’ to mean, in relevant part, that ‘[t]he upper and lower surfaces of the implant each have one anchor having the characteristics recited in the last paragraph of [claim 1].’ Claim Construction Order, 2008 WL 4831770, at *14, 2008 U.S. Dist. LEXIS 116648, at *43 (emphasis added). A simple observation of [the accused] O-Maverick [device] confirms that the implant has two anchors on each of the upper and lower pieces, not one. The anchors are separated by a one-millimeter gap that extends all the way to the base of the implant; at no point are the two anchors joined or connected in any way. O-Maverick clearly has two anchors on each piece, not a ‘single anchor’ as recited by claims 1 and 2. Therefore, we hold as a matter of law that [the accused] O-Maverick [device] does not literally infringe claims 1 and 2.
“During prosecution, applicants expressly distinguished the claimed invention over the ‘477 patent by asserting that ‘a reference disclosing two anchors does not disclose a device affirmatively claiming a single anchor… reciting a negative limitation in the form of a single element is not disclosed by prior art which teaches more than one element.’ J.A. 17524. This is a clear disclaimer of claim scope, and prosecution history estoppel therefore bars [the patentee] SSI from arguing that a two-anchor device is equivalent to the claimed implant. Because we hold that [the accused] O-Maverick [device] is a two-anchor device, SSI cannot argue that O-Maverick infringes claims 1 and 2 under the doctrine of equivalents.”
Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1316-17 (Fed. Cir. 2010).

What all these cases emphasize is that negative limitations can be at issue for design patent claim constructions, just as in utility patent cases. Prosecution disclaimer or prosecution estoppel issues resulting from arguments or amendments to a design application are especially relevant here. The Pacific Coast Marine Windshields case illustrates how those issues should be assessed as part of a design claim construction, if and when they arise. Other cases also indicated how this can be significant with respect to words in the design patent claim — such as words in the title that restrict the scope of the claim to a particular article of manufacture. Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019); In re SurgiSil, L.L.P., No. 2020-1940 (Fed. Cir. Oct. 4, 2021). It is possible a design patent might include words like “individual” in the title that could include a negative limitation.

What is less certain for design patent claim construction is what role, if any, negative limitations have when the feature in question is something that appears in a drawing but there was no prosecution history disclaimer or estoppel. Because detailed design claim constructions that translate visual depictions into words are disfavored, it would not be appropriate in most situations to single out a particular visual element and explicitly construe it as containing a negative limitation (in the absence of a disclaimer or estoppel). That would depart from the context of the ordinary observer analysis and the requisite visual analysis of the overall appearance of the ornamental design.

Yet there may be instances where a negative limitation appears in relation to functional features, for example. The Federal Circuit has held that a claim construction may help the fact finder “distinguish[] between those features of the claimed design that are ornamental and those that are purely functional.” Egyptian Goddess, 543 F.3d at 680 (citing OddzOn Prods., 122 F.3d at 1405). A design may contain both functional and ornamental elements, even though the scope of a design patent claim “must be limited to the ornamental aspects of the design.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333 (Fed. Cir. 2015). “Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.” OddzOn Prods., 122 F.3d at 1405; accord Ethicon Endo-Surgery, Inc., 796 F.3d at 1333. This ensures that the claim is limited to the ornamental aspects of the design, and does not extend to “the broader general design concept.” OddzOn Prods., Inc., 122 F.3d at 1405; see also Read Corp. v. Portec, Inc., 970 F.2d 816, 825 (Fed. Cir. 1992) (“[w]here . . . a design is composed of functional as well as ornamental features, to prove infringement a patent owner must establish that an ordinary person would be deceived by reason of the common features in the claimed and accused designs which are ornamental.”). But a construction of design features that are only partly functional, with some at least minimal ornamentation, must not entirely eliminate whole aspects from the scope of the claim, even as the functional elements limit and narrow the claim scope. See Sport Dimension, Inc. v. Coleman Co., Inc., 820 F.3d 1316, 1322-23 (Fed. Cir. 2016); Apple Inc. v. Samsung Elecs. Co., Ltd., 786 F.3d 983, 998-99 (Fed. Cir. 2015).

Negative Limitations in Comparisons Between Claimed Design and Accused Product

Following claim construction, if any, the design patent’s claim as construed is compared to the allegedly infringing products. Elmer, 67 F.3d at 1577. When considering infringement of a design patent, the “ordinary observer” test is the sole test for determining if infringement has occurred. Egyptian Goddess, 543 F.3d at 678 (rejecting the use of a separate “point of novelty” test); Crocs, 598 F.3d at 1303. Under the ordinary observer test, infringement occurs:

“if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”
Gorham, 81 U.S. at 528; Egyptian Goddess, 543 F.3d at 670-71.

This test has been codified in the patent laws, which provide as follows:

“Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.”
35 U.S.C. § 289

Thus, as the ordinary observer test is sometimes described, infringement is not found unless the accused article embodies the patented design or any colorable imitation of it. Egyptian Goddess, 543 F.3d at 678 (citations omitted). Though recall that for design patents “the concepts of literal infringement and equivalents infringement are intertwined.” Pac. Coast Marine Windshields, 739 F.3d at 700-01.

Against that backdrop, the question of potential negative limitations can arise in the context of whether logos (or the like) present on the accused product can or should be considered when comparing it to the design patent claim to determine if there is infringement.

It is necessary to compare the claimed design (as construed) as a whole to accused product. Ethicon Endo‐Surgery, 796 F.3d at 1335; Crocs, 598 F.3d at 1302-06. This is to say that in the “ordinary observer” analysis, the patented design is viewed in its entirety, as it is claimed. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993). “[A]ll of the ornamental features illustrated in the figures must be considered in evaluating design patent infringement.” Contessa Food Prods., 282 F.3d at 1378. “A patented design is defined by the drawings in the patent, not just by one feature of the claimed design.” KeyStone Retaining Wall Sys., 997 F.2d at 1450. This means the comparison of the claimed design (as construed) to the accused product must generally include all of the patent figures in comparison, and it cannot merely compare separate elements in isolation or involve serial element-by-element comparison.

Yet an infringement analysis that recites significant differences between the ornamental features of the claimed and accused designs is still acceptable if, in determining infringement, that analysis still mainly focuses on whether an ordinary observer would be deceived into thinking that the accused product’s design was the same as the patented design. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295-96 (Fed. Cir. 2010). It is in that sense that negative limitations can be used to help articulate significant differences from the standpoint of an ordinary observer.

Along those lines, the Federal Circuit has held that the finder of fact can consider “an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one.” Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1131 (Fed. Cir. 2019). In a subsequent August 2021 trial under that guidance, a jury found no infringement. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 3:17-cv-01781 (S.D. Cal. Aug. 6, 2021) (jury verdict of non-infringement). The parties subsequently cross appealed.

In Columbia, the patent owner sometimes made a comparison of only a selected portion of the claimed design to the accused product in briefing. This had the effect of broadening the asserted claim. For instance, in the first comparative example below for district court summary judgment briefing, note how the claimed design uses broken lines in FIG. 1 to show that a boundary exists but is unclaimed (see MPEP § 1503.02(III) (9th Ed., Rev. 10.2019, June 2020)). But the claimed design of FIG. 1 includes a generally sinusoidal wave pattern with four full crests and five full troughs that appear uninterrupted between the broken line boundaries; whereas in a comparison table used in briefing only part of the claim with merely three full (and uninterrupted) crests and troughs was reproduced as allegedly being the “Patented Design”. And in the second example below, from appellate briefing, note how FIG. 2 is used by the patentee for comparison despite the asserted design patent stating that “FIG. 2 is an enlarged elevational view thereof, taken from any area in the design” (that is, FIG. 2 merely shows an enlargement of a portion [with]in the claimed design but does not show the entire claimed design). If we analogize this to the utility patent context, it is like comparing a selected claim limitation to the accused product in isolation without addressing one or more additional limitations present in the claim. The significance of the accused product’s interruption (with repeating logos) in comparison to the claimed uninterrupted design was a key issue in the case including its appeals. So the question of what constitutes the full scope of the claimed design is foundational to what is or is not interrupted in the accused product.

FIG. 1 of U.S. Design Patent NumberD657,093 — FIG. 1 of U.S. Des. Pat. No. D657,093 (left) and Portion of Plaintiff Columbia’s March 7, 2016 Motion for Partial Summary Judgment (right)

FIG. 1 of U.S. Des. Pat. No. D657,093 (left) and Portion of Plaintiff Columbia’s March 7, 2016 Motion for Partial Summary Judgment (right)

Portion of U.S. Des. Pat. No. D657,093 (left) and Portion of Plaintiff Columbia’s September 18, 2018 Appellate Response and Reply Brief Showing FIG. 2 of U.S. Des. Pat. No. D657,093 Overlaid on Photo of Accused Product (right)

The district court declined to construe the design patent claim with a detailed verbal description in its Markman order, or to provide any other construction or guidance about design patent conventions, but instead later provided jury instructions that stated:

“A design patent’s claim defines what is covered by the patent. The claim is typically represented by illustrations. It is permissible to illustrate more than one embodiment of a design in a single design patent application. Each design patent contains multiple drawings to illustrate the claimed design.
The scope of the claim encompasses the design’s visual appearance as a whole. It does not cover a general design concept and is not limited to isolated features of the drawings. An inventor’s subjective intent is not relevant to the scope of the claimed design”
Quote from Jury Instruction No. 9 (as filed Aug. 6, 2021)

That jury instruction (No. 9) was largely generic. It could have been issued in any design patent case without changing a word. Neither the jury instruction nor the Markman order specifically addressed the proper interpretation of the language describing FIG. 2 quoted above, which is part of the claim. Most significantly, the jury was not instructed to disregard the presence of logos on the accused product (as Columbia had sought). But, additionally, the jury was not instructed about whether the asserted design patent actually included multiple embodiments or whether certain drawings showed the same design or merely incomplete portions of it. That meant that, in the Columbia case, there was no express “negative limitation” claim construction. Instead, everything came down to the comparison of the overall appearances.

“To determine infringement of a design patent, you must compare the overall appearances of the accused design to the Design Patent. The accused design is Seirus’s HeatWave fabric. If you find by a preponderance of the evidence that the overall appearance of the accused design is substantially the same as the overall appearance of the Design Patent, you must find that the accused design infringed the Design Patent.
Two designs are substantially the same if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, the resemblance between the two designs is such as to deceive an ordinary observer, inducing him to purchase one supposing it to be the other. You do not need, however, to find that any purchasers were actually deceived or confused by the appearance of the accused products. You should consider any perceived similarities or differences between the patented and accused designs. Minor differences should not prevent a finding of infringement.”
Quote from Jury Instruction No. 10 (as filed Aug. 6, 2021)

The jury instruction (No. 10) regarding the comparison step did mention the accused product by name. But otherwise that instruction is also fairly generic. Jury instructions nos. 11-13 also pertained to design-patent-specific issues, including comments about the proper use of prior art in instruction no. 11.

The district court could have provided further claim construction guidance. But it chose not to. As already noted, the jury held that the patented design was not infringed. On the next appeal, there will surely be a dispute over the ultimate verdict of non-infringement of the design patent, but also perhaps about the mostly generic jury instructions related to design patent claim construction and infringement analysis and how those impact any “negative limitations” in the design patent claim. Though, interestingly, at the district court neither party really argued this point regarding the proposed final jury instructions for the August 2021 trial (most of the arguments over those instructions instead centered around what could be ignored, proper consideration of marketing materials evidence, how functionality should be referenced if at all, and the relevance and proper role of alleged prior art).

Conclusion

The appropriate way to address “negative limitations” in design patent claims is: first, to address in claim construction any prosecution history disclaimer or prosecution history estoppel issues that might give rise to recapture issues around such “negative limitations”, as well as any relevant interpretations of the text of the claim (including the title and description) that might do the same; and, second, to articulate the way design features affirmatively present in the accused design represent significant differences from such “negative limitations” in the claimed design in an analysis that still mainly focuses on whether an ordinary observer would be deceived into thinking that the accused product’s design was the same as the patented design overall.

The first aspect might not be relevant in all cases. Those questions will be highly dependent on the content of the asserted design patent claim and the prosecution history. But the second aspect could potentially apply whenever the asserted design patent appears to recite, in part, a “negative limitation”. This second part might impact jury instructions, as well as the way a case is argued to the finder of fact. It could also impact a pre-suit opinion of counsel analysis. Both factors might come up as part of dismissal, summary judgment, judgment on the pleadings, and/or JMOL motions, as well as in appeals.

January 2022

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Tags Design Patents, Litigation

Articles

New and Upcoming Developments in U.S. Patent & Trademark Law for 2022

Post author By Austen Zuege

Important Developments to Note

At the beginning of 2022, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.

Patents

“DOCX” filing format deadline extended

The deadline for the implementation of a surcharge for non-DOCX patent application filings has been extended until January 1, 2023. In recent years, most U.S. patent applications have been filed electronically in PDF format. DOCX-format filings are currently possible but non-DOCX PDF-format filings are still permitted without any surcharge. The non-DOCX surcharge will eventually be $400/$200/$100 for large/small/micro entities. Note that the non-DOCX surcharge will not apply to PCT national phase entries into the USA. The applicability of the non-DOCX surcharge to U.S. applications filed in a language other than English is still rather unclear (it is not clear if a DOCX copy of only the English translation, only the non-English original, or both the original and translation is required to avoid the surcharge).

In general, the greatest concerns about DOCX format have to do with rendering of complex application content, such as embedded mathematical equations created with a word processing program’s equation editing functionality, which may not render as the applicant intended at the USPTO side. The official reason given for the implementation delay is to “provide the public an opportunity to more fully comprehend the nature of, and prepare to comply with, the DOCX format[.]” But while the DOCX format is an administrative convenience for the USPTO, its mandated use is a more of a burden than a benefit for applicants. The need for applicants and their counsel to review and correct potential USPTO-side DOCX rendering errors (which may occur more frequently than with certain PDF-format filings) may make PDF-format filing and payment of the non-DOCX surcharge preferable in some situations. Though for applications containing only simple text, without complex or unusual formatting or embedded equations (other than equations inserted as images), DOCX-format filing should not pose any major problems.

Digital-only patents

Starting sometime in 2022, the USPTO will cease issuing paper patents and will issue digital patents instead. However, paper “presentation copies” (also called ribbon copies) of patents (on heavy paper with an embossed gold seal and the USPTO Director’s signature) will still be available upon request for a $25 (US) official fee per copy. The USPTO says that digital patent issuance will speed up the process of issuance after payment of the issue fee, with a target of one week to issuance. This will shorten the time available to file a divisional or continuation patent application, which must be filed no later than the day of issuance of the parent patent. Though it has always been—and will remain—a recommended best practice to file any desired divisional/continuation application no later than the date of issue fee payment.

Bilateral exchange of certified priority documents with EPO ending

The USPTO’s bilateral electronic priority document exchange (PDX) program with the European Patent Office (EPO) is ending. For any U.S. applications filed on or after January 01, 2022 with a priority claim to an earlier EP application, a WIPO Digital Access Service (DAS) code will need to be provided in order to electronically retrieve a certified copy through PDX. This will require registering the EP application with the WIPO DAS exchange. This change will not affect PCT national phase entries into the USA where the EP priority document is made available under PCT Rule 17.

More U.S. patent filing information

Please also see the “Guide to Foreign Priority Patent Filings in the USA” (available for download as a set of condensed presentation slides titled “Patent Filings in the USA: Important Considerations”) for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim.

Trademarks

“Flexible” (shortened) response periods

Starting December 1, 2022, the time to respond to trademark office actions (under 37 C.F.R. § 2.62(a)) will be shortened to three (3) months. A single three-month extension of time to respond can be requested, which will carry an official fee of $125 (US). The extension must be affirmatively requested within the original three-month period. However, the shortened response periods will not apply to Madrid extensions to the USA. For refusals in Madrid extension cases (§66), the applicant will still have a full six-month response period available without paying any extension fees.

Digital-only registration certificates

Starting in spring 2022 the USPTO will cease issuing paper trademark registration certificates and will issue digital certificates instead. [UPDATE: the USPTO began issuing only electronic registration certificates on May 24, 2022.] However, paper “presentation copy” trademark registration certificates (on heavy paper with an embossed gold foil seal, the name(s) of the owner(s), the mark, bibliographic data, and the classes of goods and/or services) will still be available upon request for a $25 (US) official fee per copy. Registrants who filed an initial trademark application before the implementation date (a date that is not yet fixed) will be able to order presentation copies with no official fee. Additionally, certified copies of U.S. trademark registration certificates with current title and status information are also available with payment of an official fee, currently $30 (US).

Filer Identify Verification

[UPDATE: the USPTO has postponed the deadline for filer identity verification to August 6, 2022.] By April 9, 2022, persons filing trademark applications, responses, and the like must complete identity verification in order to electronically file with the USPTO. These identity verification procedures will be available starting January 8, 2022.

New expungement and reexamination proceedings

Two new proceedings are available for an existing trademark registration to be challenged. Both of these new proceedings are conducted on an ex parte basis. That is, a challenger files a petition to request expungement or reexamination and, if granted, the rest of the proceeding is conducted only between the USPTO and the registrant in a manner similar to original examination. Unlike traditional cancellation (or opposition) proceedings, after institution of an expungement or reexamination proceeding, the challenger cannot substantively participate. Summaries of the two new proceedings follow, but more details about applicable procedures can be found in the USPTO Examination Guide 1-21. In addition to the two new types of proceedings, expungement is also available as a new ground for a traditional cancellation proceeding after three years of registration (15 U.S.C. § 1064(6)).

Expungement proceedings: Any party may request cancellation of some or all of the goods or services in a registration because the registrant never used the mark in commerce with those goods or services. The official filing fee for an expungement proceeding is currently $400 (US) per class. An expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, there is currently an extended expungement filing period. Until December 27, 2023, 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 registrations but will be especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required to initially obtain a U.S. registration.

Reexamination proceeding: Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before either (1) the application filing date (when the underlying application was initially filed based on use of the trademark in commerce under §1(a)) or (2) the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired (when the underlying application was filed with an intent-to-use basis under §1(b)). Reexamination proceedings are available for registrations under 15 U.S.C. §1051 (§1) but are not available for marks registered under the Paris Convention (§44) or the Madrid protocol (§66). The official filing fee for a reexamination proceeding is currently $400 (US) per class. Reexamination must be requested within the first five (5) years after registration.

More U.S. trademark filing information

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

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Tags Patent Prosecution, Trademark Prosecution