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Copyrights Q&A Trademarks

How Should Advertising Legal Review Occur?

It is beneficial to have advertising undergo legal review prior to release. Such review should generally cover a number of different concerns, including false advertising, trademark infringement, right of publicity/privacy, copyright infringement, special considerations for regulated industries (i.e., industry-specific laws and regulations requiring certain disclosures, etc.), medium-specific requirements (for commercial email, phone marketing, TV/radio broadcasting, etc.), and more. The following addresses legal treatment in the USA. Laws may differ in other countries. Legal review of particular advertisements should be directed to a knowledgeable attorney in the relevant jurisdiction(s).

Establish Advertising Review Procedures

In general, have a procedure for advertising review before that advertising is released. Be clear about how such protocols apply to business-related social media or other online accounts, which are usually just another form of advertising. Also be clear how these procedures apply to vendors, consultants, and spokespersons operating on your behalf. You very well may be responsible and liable for their actions, and you should not assume they will automatically comply with the law or your own requirements. Periodically check to see that these protocols are actually being followed.

Make sure that appropriate documentation is created and maintained. For instance, require sufficient record-keeping to preserve any licenses, authorizations, releases, objective evidence supporting ad claims, and the like. Retain those records for a sufficient time and in a place where they can be located (by others) if and when needed. Online advertisements may be active for many years, and various portions of ads might be reused for later ones, so such records should ideally be kept as least as long as as the advertising material is in use.

The scope and thoroughness of advertising reviews should take into account the prominence and scope of the advertising. Major mass media ad campaigns deserve extra attention. Also, anything that “feels” questionable, or seems to push boundaries of legal or ethical acceptability, should also receive appropriate review. Lastly, focus should be drawn to things that are most material to prospective consumers.

Many laws regulating advertising exist because businesses often have incentives to be less than truthful or accurate. The point of marketing is to create demand, which can easily turn into a matter of lying or dubiously creating meaning out of nothing. Moreover, marketing and sales people, as individual employees or vendors, may feel pressured to put out legally prohibited or at least questionable content to satisfy management or others. People may also argue for a race to the bottom, pointing to questionable if not clearly illegal conduct by others as justification for doing the same—or worse. On top of that, some illegal advertisements go unpunished simply due to lack of resources by enforcement agencies and there may be arguments to try to get away with something on that basis. Advertising reviews should allow an opportunity to put a halt to efforts that run afoul of the law or that simply put a business in an undesired light (even if legal).

Trademarks

Trademarks should be legally cleared as part of initial selection. That is, make sure you select a mark that will not create a likelihood of confusion with one already in use by another entity. Trademark infringement can arise even if the marks are not identical and even if the goods and services are not the same. This is the best way to avoid infringement allegations. Of course, this is less about use of a mark in a specific advertisement than about overall branding strategies.

Another issue to consider in any given ad is proper usage of your own trademark(s). This is about maintaining rights in your own mark(s). Use your mark(s) consistently, as a source-identifying trademark (as an adjective rather than a noun or verb), and use appropriate symbols (®, ™, SM) or comparable trademark identifications (like “Reg. U.S. Pat. & Tm. Off.”). Even if marketing folks think it is appealing to misuse trademarks in an ad, doing so can damage trademark rights or even result in loss of trademark rights—sometimes called genericide.

The next issue to consider is any usage of someone else’s trademark(s). While comparative advertising is permissible, and nominative or descriptive fair use may apply, intentionally using someone else’s trademark or something confusingly similar to someone else’s mark should receive extra scrutiny. Use of comparative advertising has marketing benefits but also tends to heighten the risk of a legal dispute under trademark and/or advertising law.

To help reduce risks associated with comparative advertising, you should at a minimum make sure statements are not false or misleading (including both express statements and any implied meanings even if not the only possible interpretation), material information is not omitted, comparisons are fair (and not “apples to oranges”), and material support for claims is documented before making them. Consider also the context, and avoid anything that makes a competitor’s trademark more prominent than your own or that otherwise may confuse consumers about the source of the goods or services.

Also think about what you would think if the situation was reversed. That is, what if your competitor was using your trademark in the way you plan to use your competitor’s mark? Would you have concerns?

“Dilution” is another area of law that gives special additional rights to famous brands. Tarnishing or blurring the rights of a famous brand can give rise to liability. Advertising that looks like it rides on or nips at the coattails of a famous brand could give rise to dilution issues, potentially, even if it would not raise trademark concerns for an ordinary, non-famous brand.

False Advertising and Truth in Advertising

The Federal Trade Commission (FTC) has national authority to prevent unfair methods of competition and unfair or deceptive acts or practices in or affecting interstate and foreign commerce. Federal trademark law also allows private businesses to sue on certain false advertising claims. Additionally, states have various advertising, unfair competition, and deceptive trade practices laws. Most of these laws are somewhat open-ended. But, in general, they can apply to advertising and generally require that ads not be unfair or deceptive/misleading.

The standards for truthful advertising can be a little fuzzy. These matters are prone to judgment calls. But some of the most basic considerations and requirements are as follows (see also FAQs from the FTC).

Advertising claims must be substantiated by evidence in advance. It is not sufficient to make a statement based on a hunch that you can (try to) justify it later if needed. This is because advertisers imply that there is a reasonable basis for such a claim. Even statements in ads that later turn out to be true are legally prohibited if there is not a “reasonable basis” for the claims, meaning there is objective evidence that supports the claim. Tests or studies used to support advertising claims must be conducted using methods that experts in the field accept as accurate. They also must be commensurate with the advertising claims actually being made.

Mere “puffery” that reflects a purely subjective claim that consumers would not take seriously/literally is generally permissible without substantiation. For instance, a claim to offering “the best cup of coffee in the world” or that “our widgets are excellent” is often acceptable because consumers will recognize it as a purely subjective statement of opinion. But a claim with an objective (factual) component like “rated the best by most doctors” or “more consumers prefer our widgets to any other” or “our widgets last longer than the most popular brands” would not be seen as mere puffery by consumers. These latter types of objective advertising claims must be both true and substantiated. Context can also matter in these distinctions.

The FTC especially scrutinizes health & fitness and safety claims, for instance, and advertising directed at children (especially those under age 13) is also regulated more. Claims and implications that products are made in the USA, and “green” or environmental-friendliness claims also tend to be areas of frequent concern. Competitors may also take issue with false or misleading comparative advertising claims, which are discussed above with respect to trademarks. Certain types of claims may also implicate other agencies or laws, such as the Food & Drug Administration (FDA), which has other requirements for certain drugs and cosmetics and associated advertising.

Warranties and guarantees are subject to special legal requirements. Some of these pertain to how they are advertised. Others pertain to disclosure requirements for stating the terms and conditions as well as making those available pre-sale.

Endorsements and testimonials, including those by “influencers”, can raise many questions about whether their use is truthful and not misleading. The FTC provides an endorsement guide that is worth consulting. Some common concerns involve failing to disclose that someone is a paid endorser/influencer or misleading consumers about an endorser’s use or familiarity with the product or service in question (or lack thereof).

Copyrights

Copyright clearance is an important part of advertising review. Materials used in ads like photos, graphics, text, etc. that are not completely original creations require permission to be used. Unauthorized use may constitute copyright infringement. Copyright clearance should involve obtaining and documenting—in writing—authorization for use of any copyrighted materials that are used, including legally reasonable verification that the materials are uncopyrighted or have fallen into the public domain.

There are many nuances about who owns copyright and what is permissible to do with someone else’s copyrighted work. When vendors or consultants are involved, and they often are when it comes to ad copy, you do not automatically own the copyright just because you paid for it. There can be implied licenses. But new, unexpected, or gradually expanded use might exceed an implied license. Also, there are many myths about what is legally permitted. For instance, there is no bright-line legal rule that says changing 10% of a copyrighted work or four things in a work—or some other percentage or number—avoids infringement liability.

When you get a license, make sure the scope covers your intended use. It is fairly easy to slip up and get the wrong license, or misunderstand the scope of the license you paid for. Also, consider getting an indemnity from the party licensing materials to you.

Fair use may apply, sometimes. But that is a context-specific, multi-factor analysis without any bright lines. And in the advertising context, the commercial nature of the use is a factor explicitly counted against a finding of fair use by statute. It is true that parody and criticism can occur even in a commercial advertisement as a fair use. Yet such things may only support fair use if they parody or criticize the particular work in question as opposed to merely using it without authorization to parody or criticize something else. There is a tendency for claims of “fair use” to be overused and unjustified in the context of commercial advertisements. Many times, you simply need authorization, such as a paid license.

And, no, just because something was available on the Internet does not mean that is can be freely used in an advertisement.

Rights of Publicity and Privacy

The rights of publicity/privacy are potentially implicated any time advertising materials contain a person’s name or likeness without their consent or authorization. These issues most often arise in the context of the unauthorized commercial use of photos or videos that depict famous people or celebrities or that thrust a private person into the public spotlight.

Review of advertising should include verification that their is an appropriate release from any persons whose name or likeness is used. A release of this sort is sometimes called a “model release”. Although in other industries this might go by other names or be included within another agreement, such as a “materials release” in film or TV productions.

Bear in mind, however, that having a copyright license to a photo, video, or the like is not enough, alone, to clear any right of publicity/privacy issues. These releases and copyright licenses often need to come from different people. For instance, a copyright license or assignment for a photograph would often come from the photographer while the publicity/privacy release would come from the person(s) appearing in that photograph (or a parent/guardian).

Some states have laws limited rights of publicity for deceased people. There can also be exceptions for references to public figures, although those exceptions probably will not apply to commercial advertisements that give the impression of an endorsement or approval.

If obtaining stock images, consult the terms of a license to see if a model release is included. If not, use of the stock photo may still give rise to issues. For example, sometimes a minor celebrity’s likeness might appear in a stock photo unintentionally. Or, as another example, if your intended use would tend to portray the person depicted in a false light, such as implying that the person has a disease, committed wrongdoing, or would embarrass them,

Disclaimers

A disclaimer may be helpful but is not a “get-out-of-jail-free” card. Use of a disclaimer will not undo otherwise false, misleading, or confusing ad content. That is to say that a disclaimer is only helpful to the extent it is actually effective on the viewing audience. That is something you can generally only speculate about in advance. Accordingly, while a disclaimer may be worthwhile, it may be helpful to ignore any such disclaimer as part of an initial legal review and consider the other content of the advertisement as if the declaimer was not present at all.

Email Advertisements and Anti-SPAM Law

The CAN-SPAM Act governs commercial advertising emails. Those are emails whose primary purpose is commercial. Emails whose primary purpose is to provide transactional or relationship content (which facilitates an already agreed-upon transaction or updates a customer about an ongoing transaction) or other content (which is neither commercial nor transactional or relationship, such as political campaign information) is not covered by the federal CAN-SPAM laws. States also have various email marketing laws but those are mostly preempted by federal law and therefore inapplicable to commercial emails (except for fraud and deception issues).

General requirements for compliant email advertising, as explained in an FTC guide, include:

  1. Accurately identify the person or business who initiated the message and do not use false header information
  2. Don’t use deceptive subject lines
  3. Clearly and conspicuously disclose that your message is an advertisement (not required if the recipient has previously expressly opted-in to such emails)
  4. Include your valid physical postal address
  5. Include a clear and conspicuous explanation of how the recipient can unsubscribe (opt out) from future messages, such as a reasonably prominent, working “unsubscribe” link
  6. Honor unsubscribe (opt out) requests promptly
  7. Make sure vendors and employees are following the law

Some additional guidance is available in the FTC’s “Candid answers to CAN-SPAM questions.”

One area that can give rise to issue is the use of purchased email lists. Despite the fact that vendors sell them does not mean that it is legal for you to use them in any and every possible way for mass email marketing purposes. It still matters how you send email messages and the specific content of those messages. For instance, use of a purchased list should not override a prior opt-out request. But, on the other hand, use of purchased email lists is not expressly prohibited under CAN-SPAM and prior consent (that is, an opt-in) is not required, so long as the sender (initiator) of the message clearly and conspicuously identifies a commercial email as an advertisement.

In practical terms, mass email service providers may have their own policies that are more restrictive that any applicable laws. Such providers are sensitive to spam reports and may take action to block you or terminate your account if too many complaints are received. That could happen even if complaints fail to allege anything illegal or are baseless (such as a spam report by someone who expressly opted in). For instance, some services prohibit the use of their services or platform to send emails to purchased email lists—even if laws do not specifically prohibit doing so.

Phone and Broadcast Advertisements

The Federal Communications Commission (FCC) has authority over phone and TV/radio broadcasts. There are additional rules and regulations that apply to advertisements and commercial messages in those formats. For instance, randomly dialed robocalls are generally prohibited. In addition, the FTC maintains a “do not call” registry for telemarketing that must be honored.

Consumer Privacy and Handicap Accessibility

There is also a growing body of laws regulating collection and retention of consumer data, particularly at the state level (e.g., California’s CCPA) and in foreign countries—like GDPR in Europe and PIPEDA in Canada. But some federal laws may apply too. These laws can be implicated by online advertising, for instance. Collection and use of personally identifying consumer information should be scrutinized. In some cases, even laws involving biometric information privacy could be implicated. The sale, purchase, and/or exchange of consumer personal information to or from brokers, business partners, or other third parties and the collection of online ad or web page tracking data are of particular significance here.

Additionally, consider whether online advertisements implicate laws requiring accessibility for persons with disabilities. These can arise from state or federal law, potentially. General online accessibility standards and best practices are useful here, and might be worthwhile to implement even if not strictly required by law for certain commercial advertisements. Bear in mind, however, that “accessibility” is something of a moving target and is not defined by bright lines.

When working with vendors and contractors, be aware that they may try to push compliance burdens onto you via contractual terms. This might even extend to situations where vendors are selling services or tools that cannot conceivably be used in a legally compliant manner, or at least not in ways with any practical value to the advertiser.

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

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Copyrights Q&A

How Do DMCA Copyright Takedown Notices Work?

The Digital Millenium Copyright Act (DMCA) created a notice and takedown provision in §512 of the U.S. copyright laws for alleged online infringement. Essentially, online service providers have a safe harbor against monetary liability for infringing materials that their users/customers post online if they comply with takedown notices alleging copyright infringement. These online service providers need to meet certain additional requirements to qualify. But the basic tradeoff is that the online service providers do not have to monitor and screen materials before they are posted if they commit to acting expeditiously on takedown notices.

Requirements for a DMCA Takedown Notice

To be legally effective, DMCA takedown notices must include certain things specified by law, quoted below. There must be a copyright work being infringed. But a copyright registration is not a prerequisite. DMCA takedown notices can be sent even for unregistered copyrighted works. However, fair use must be considered before sending a DMCA notice.

a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

17 U.S.C. §512(c)(3)(A)

The U.S. Copyright Office provides a takedown notice form that can be filled out and sent to an online service provider. But there is no requirement to use that particular form. Any written notice containing the necessary information can be used.

Counter Notices by Someone Wrongfully Accused

A user who believes he or she was wrongfully accused in a DMCA takedown notice that resulted in online materials being taken down can potentially send a counter notice to the online service provider (17 U.S.C. §512(f)). A counter notice is a counter allegation that the material was removed as a result of mistake or misidentification of the material, and a request for reinstatement of that material. After a counter notice is sent, the original accuser (that is, the alleged copyright owner) has 10-14 business days to sue or the online service provider must restore the material.

To be legally effective, DMCA counter notices must include certain things specified by law, quoted below.

a counter notification must be a written communication provided to the service provider’s designated agent that includes substantially the following:

(A) A physical or electronic signature of the subscriber.

(B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.

(C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.

(D) The subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.

17 U.S.C. §512(g)(3)

The U.S. Copyright Office provides a counter notice form that can be filled out and sent to an online service provider to request reinstatement of taken down materials. But there is no requirement to use that particular form. Any written counter notice containing the necessary information can be used.

Liability for Notices and Counter Notices

Anyone who “knowingly materially misrepresents” (1) that material or activity is infringing, or (2) that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages, including costs and attorneys’ fees (17 U.S.C. §512(f)). This allows the alleged infringer to sue for a bad faith takedown notice, or the copyright owner to sue for a bad faith counter notice.

Advantages and Disadvantages of Takedown Notices

An advantage of this system for copyright owners is that if an infringing work is discovered online, a DMCA notice is potentially a low-cost avenue to have it removed. On the other hand, the need to monitor for online infringement and send notices—potentially many of them—can be burdensome. For users, the ease of sending takedown notices can mean they are abused. There can be legitimate questions about independent creation, fair use, the idea/expression dichotomy, uncopyrightable facts or scènes à faire, etc. Sometimes DMCA notices can even be sent in bad faith.

Not all countries have a DMCA-like provision in their copyright laws. So a notice might result in material being taken down in the USA. But infringement may still arise on platforms operated outside the USA. In those situations, other action like a formal lawsuit may be necessary.

A related approach for takedowns of infringing material online involves sending notices to domain registrars and web hosting companies. For web sites hosted in certain other countries this might be the only available option short of litigation.

Photo of Austen Zuege

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

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Patents Q&A

How Can I Find Patents with the USPTO’s Patent Public Search?

The U.S. Patent & Trademark Office (USPTO) makes granted U.S. patents and published U.S. patent applications publicly available. Patent Public Search is its open-access patent searching platform, available online to anyone free of charge.  It exists with two different interfaces:  Patent Public Search Basic (PPUBS Basic) and advanced search. Both allow U.S. patents and published applications to be searched simultaneously. Coverage is limited to only U.S. patent documents.

screenshot of Patent Public Search landing web page
Screenshot of the USPTO’s Patent Public Search landing web page, with links to the “Basic Search” and “Advanced Search” interfaces

There are official training guides and frequently asked questions (FAQs) available for Patent Public Search. These provide detailed guidance about how to use the tool, particularly the advanced features. What follows are basic explanations of how to fetch individual patents from the USPTO and find either PDF images or selectable/copyable text from U.S. patents and published applications.

Screenshot of the USPTO’s Patent Public Search FAQs

Some information about how to structure and perform patent searches is available in the article “Patent Searching: (Almost) Everything You Need to Know” and in the book Patent Freedom to Operate Searches, Opinions, Techniques, and Studies.

Using the Basic Search Interface

The Basic (PPUBS Basic) search interface allows granted U.S. patents and published patent applications to be fetched by number (“Quick Lookup”), and allows some keyword-based searches (“Basic Search”). But it returns only PDF copies. 

Screenshot of the USPTO's PPUBS Basic search interface
Screenshot of the USPTO’s PPUBS Basic search interface

This interface is simple and mostly self-explanatory. Although, if desired, consulting the USPTO’s basic search interface overview may be helpful. One important thing to note is that the search input fields allow only a single word or number in each and a maximum of two keywords can be used. So, for searches using two distinct keywords, it is necessary to use different input fields for each of them and to select a Boolean operator (AND, OR, or NOT).

Screenshot of an example search result for a “Quick Lookup” of U.S. Pat. No. 10,000,000 via the USPTO’s PPUBS Basic search interface

The Basic interface is most useful for fetching PDF copies of granted patents and published patent applications when the patent or publication number is known. The trade-off is that its functionality is rather limited for subject-matter searches and “full text” is not available for returned results.

Using the Advanced Search Interface

As the name implies, the advanced search includes much more advanced search functionality than the “Basic” interface.  However, the advanced interface is highly esoteric and non-intuitive. It may not even display properly on all computers. For instance, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens, like laptops. 

Screenshot of the USPTO’s Patent Public Search Advanced Search interface, showing the results of a search for U.S. Pat. No. 10,000,000 using the “.pn.” field code

The Advanced Search interface allows queries of up to three distinct databases simultaneously:

  • US-PGPUB — containing U.S. pre-grant patent application publications from March 2001 onward;
  • USPAT — containing full-text granted U.S. patents from 1970 onward plus allowing classification and patent number searching from 1790 onward; and
  • USOCR — containing text-searchable optical character recognition [OCR] scanned pre-1970 U.S. patents

Fetching a particular patent or published application by number is surprisingly difficult with the “advanced” interface.  Use of the “.pn.” (for patent number) code is highly unforgiving and the period at the end is required. The USPTO has said it is possible to manually type in the URL https://ppubs.uspto.gov/pubwebapp/external.html?q=(00000000).pn. and replace “00000000” with the desired patent number in order to reach it directly though an “external search”. Use leading zeros to fill a 7-digit entry if the patent number is 6 or less digits (for example, “0654321”). And do not forget the period at the end!  Unfortunately, Patent Public Search modifies this URL as displayed in a browser once it is visited so there is no simple way to bookmark it. Also, expect some frustration because these “external search” URLs do not seem to consistently work (especially if Patent Public Search was previously opened in your browser).

Annotated screenshot of Patent Public Search Advanced Search Interface "Document Viewer" “T / [camera icon]” button to toggle between text and PDF image views
Annotated screenshot of Patent Public Search Advanced Search Interface “Document Viewer” “T / [camera icon]” button to toggle between text and PDF image views

The advanced interface is currently the only way the USPTO provides “full text” of published patent documents.  PDF 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 (annotated in the figure above).  Toggling that button allows switching between text or PDF image displays of a given patent document. 

Other commands are available by clicking on rather confusing and esoteric icons in the “Document Viewer” panel, such as various quotation mark buttons that allow forward and backward searching of citations.  Note that references cited listed on the front page of granted patents are omitted from the “full text” display in Patent Public Search, meaning that “full text” is not truly available for all text of a given patent document. Foreign and non-patent literature citations will appear only in the PDF image of the granted patent and thus are not selectable to copy-and-paste them. 

Annotated screenshot of Patent Public Search Advanced Search Interface "Document Viewer" quotation mark buttons to forward and/or backward search U.S. patent documents from the "References Cited" section of a granted U.S. patent
Annotated screenshot of Patent Public Search Advanced Search Interface “Document Viewer” quotation mark buttons to forward and/or backward search U.S. patent documents from the “References Cited” section of a granted U.S. patent

If you plan to conduct extensive searching by subject matter, using keywords and/or classification codes, you may want to consult the USPTO’s official Patent Public Search training guides and FAQs as well as the “Help” menu tab inside the interface’s “Search Results” panel. The “Search Overview” Quick Reference Guide and the FAQs may be the most useful places to start, followed by “Searchable Indexes” (that is, field code) list and the “Help” menu tab inside the interface. Some content found in the “Help” menu tab of the “Search Results” panel inside the interface (such as explanations of proximity operator syntax) does not appear anywhere else at present—quite unhelpfully!

Also be aware that Patent Public Search uses search string syntax that is unlike commercial patent searching tools. Familiarity with other search tools (other than the USPTO’s old PubEAST and PubWEST tools) will not translate into any understanding of how to use Patent Public Search.

Alternatives: Patent Center, International Tools, and Proprietary Tools

An alternative way to reach a particular U.S. patent or published application in USPTO databases is to utilize the Patent Center interface. Patent Center’s main interface provides a simple query field where you can enter a U.S. patent or published U.S. patent application number.  Once the results of a given query appear on screen, there are links available to the Patent Public Search text versions of the given published application and granted patent (if any) under Patent Center’s “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, using it may be easier than using Patent Public Search.

Another alternative for fetching PDFs of U.S. patents and published patent applications is to use a privately-operated site or a foreign patent office site with international coverage. There are many proprietary patent searching tools that require a subscription. But there are also open-access or semi-open-access tools available online as well that contain at least U.S. patent documents, including:

Compared to many other online patent searching tools, Patent Public Search has substantial usability flaws. Although it has more coverage and capabilities than it predecessors PatFT and AppFT, it is much less user-friendly and eliminated some features of the old systems. Tabbed browsing to open multiple documents at once is prohibited by the “advanced” interface, for instance. Even compared to other open-access platforms, like Espacenet, Patent Public Search is harder to use. It is even inferior in many ways to the “Delphion” tool from the early 2000s (which was converted into one of the leading proprietary platforms and is no longer open-access). Proprietary searching platforms are still generally the best option. Although subscription fees will be prohibitive if you only perform patent searches occasionally.

Photo of Austen Zuege

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

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Domain Names Q&A

Who Owns Rights to a Domain Name?

Domain names are used as addresses on the Internet via “name servers” under the domain name system (DNS). A domain name is “example” in the URL “www.example.com.” For generic top-level domains (gTLDs) such as .com, .net, .org, and the like, domain registrations occur through various individual registrars on essentially a first-com, first-served basis—country-code top-level domains (ccTLDs) are treated slightly differently. Registration is not true “ownership” in the domain name but more like a lease. It is merely a contractual right to control use of the domain, in particular which server it resolves to—somewhat like assigning a phone number to a particular phone. It is more accurate to talk of holding domain rights than owning domains outright.

The way domains are registered can raise question over who actually holds the registration rights. So, how is the identity of the rights holder established for gTLDs?

Registrant Name and Registrant Organization Indications

When a gTLD domain is registered through a registrar, the indication of the registrant’s name and organization, if applicable, determines who holds the registration rights. Registration is really a contractual agreement between the registrant and the registrar. Questions of who holds the registration rights are thus a matter of contract law, in the context of registrar policies including those that registrars are required to follow by ICANN—the entity that oversees the international domain name system as a whole. Therefore, this question turns into one about how registrars (and ICANN) take in information that identifies the registrant when establish a domain registration contract.

Registration requires a name to be identified in a “Registrant Name” field. Inclusion of an individual’s name in that field, or a generic pseudo name like Domain Administrator or DNS Admin, will not give a corporate entity formal rights. A corporate entity holds domain registration rights only if that corporation’s legal name is currently indicated in the “Registrant Name” and/or “Registrant Organization” field(s) of the registrar’s records. But an employee or contractor/vendor registering a domain for an employer or client might list a personal name in the “Registrant Name” field and omit information in the “Registrant Organization” field necessary to make a corporate entity employer/client the formal registrant, for instance. Even inadvertent errors and omissions can change who is considered the rights holder. Such errors and omissions frequently occur because people registering domains often do not understand the legal significance of particular name/organization/contact data fields. Other times such omissions occur on purpose so that another entity can claim rights in the registration.

As an ICANN representative has stated:

“if the Registrant Organization field lists the name of an existing legal entity, that legal entity will be considered the registrant of the domain name. However, when the Registrant Organization field is empty, or when the name listed in it does not correspond to an actual legal entity (like ‘Domain Admin’, for example), the actual registrant will be whomever is listed in the Registrant Name field.

This situation happens sometimes when employees register names for their employers and don’t include the appropriate information in the corresponding fields. They may leave Registrant Organization blank, or include the name of their department and their own name in the field reserved for Registrant Name, turning themselves into the actual registrants of their company’s domains. In these cases, organizations face the risk of having the registrations disputed by their employees, who can claim the rights to the domains and attempt to transfer them away, on the basis that the particular organization is not a party to the agreement between the registrar and the registrant.”

Carlos Alvarez, “Good Practices for the Registration and Administration of Domain Name Portfolios (Part II)” ICANN Blog (June 23, 2017)

When domain registration is left to a lower lever employee, that employee may intentionally or unintentionally make him- or herself (individually) the registrant. This can happen out of sheer ignorance about the significance of filling out the “Registrant Name” and “Registrant Organization” fields. Similarly, when a vendor or outside contractor handles registrations, such as a web site designer or IT service provider, the vendor may list itself (or its employee) as the registrant, and thus the holder of the domain rights. This might be benign and might be easily remedied by raising the issue with the employee or vendor. Or it might be what was agreed to in a prior vendor service contract. Though in some situations this can lead to an employee, ex-employee, or vendor holding a domain registration hostage. Although a vendor’s refusal to transfer domain rights in light of a related payment for services dispute is sometimes permitted.

Registrars will generally permit use of generic pseudo names in domain registration fields. For example, “IT Manager”, “DNS Admin”, and “Domain Administrator” are examples of pseudo names that can be utilized instead of individual legal names for various fields, including technical, administrative, and billing contact fields (such contact names do not establish who holds rights to the registration, but can establish who has authority to control aspects of it). Use of a psudeo name is generally permissible as long as a legal corporate name, such as “Acme, Inc.”, is also used in appropriate fields, such as for the “Registrant Name” and/or “Registrant Organization”.

Also, registration information can be changed after initial registration. So it is also possible for someone to later change rights holder information resulting in loss of rights to the domain registration, or at least loss of control of it and the associated potential for disruption. This can include removal of “Registrant Organization” information or changing such information to that of another entity. Such changes may stem from nefarious motives or simply incompetence.

Control Matters

When push comes to shove, domain registration is mainly about control of access to the registration’s information and technical settings. Such control hinges on control of the login credentials with the registrar responsible for the registration. Anyone with those login credentials can potentially change registrant name or contact information, change the login credentials, transfer the registration to another person or entity, or redirect the domain to resolve to a different server IP address hosting a different web site. This can constitute domain “hijacking”. Conversely, anyone (including an employer) lacking those login credentials cannot make changes to reflect the “true” or “correct” holder when there is a mistake or omission.

Consider implementing best practice procedures to protect domain registrations, such as following the guidance of the ICANN Security and Stability Advisory Committee set forth in “A Registrant’s Guide to Protecting Domain Name Registration Accounts” (SAC 044) and “Measures to Protect Domain Registration Services Against Exploitation or Misuse” (SAC 040). For instance, as suggested in SAC 044, consider identifying separate administrative, technical, and billing contacts to avoid having all communications routed through a single point of contact that may be more susceptible to hijacking. Also, corporate registrants should consider policies against using individual (legal) names in registration records and instead use only the formal corporate holder name plus pseudo names like “Domain Admin”, to the extent permitted by the registrar.

Conclusion

Strictly speaking, international organizations controlling the entire Internet domain name system “own” all domain names. Individual domain registrants merely hold contractual rights to use them, subject to contractual terms and obligations agreed to during registration (but sometimes forgotten or ignored). The identity of the registrant is specified with a registrar. It is the registrant information that is provided—or omitted—during the registration process that initially determines who formally holds the rights. Accurately providing that registrant information as intended and maintaining control over access credentials to modify such information and other technical settings are the keys to establishing rights and maintaining smooth functioning of the domain.

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

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Patents Q&A

How Should U.S. Patent Applications Be Formatted for Filing in DOCX Format?

The U.S. Patent & Trademark Office (USPTO) requires that non-provisional patent applications filed on or after April 3, 2023 be submitted electronically in Office Open XML “DOCX” file format in order to avoid a non-DOCX official surcharge. This means applications can still be filed electronically in PDF format, or by paper, but doing so will require payment of an additional official fee that varies according to the applicant’s entity size (initially $400/$160/$80 for large/small/micro entities).

What Types of Applications Must be in DOCX Format?

The DOCX filing requirement and non-DOCX surcharge currently applies only to the following U.S. patent applications:

  • Utility patent applications (non-provisional) under 35 U.S.C. § 111(a)
    • Includes direct U.S. filings with a Paris Convention foreign priority claim
    • Includes PCT “bypass” applications

However, the non-DOCX surcharge currently does not apply to the following types of U.S. patent applications:

  • Provisional patent applications
  • Design patent applications
  • Plant patent applications
  • PCT national phase entries

Additionally, only certain portions of an application are covered by these requirements. In order to avoid the non-DOCX surcharge, the specification/description, claims, and abstract must all be in a compliant DOCX format. However, the drawings of an application do not need to be submitted in DOCX format. PDF format can be used for electronic submissions of figures without paying a non-DOCX surcharge.

The applicability of the non-DOCX surcharge to U.S. applications filed in a language other than English under 37 C.F.R. § 1.52(d)(1) is still rather unclear. The USPTO has not yet specified if a DOCX copy of (i) only the English translation, (ii) only the non-English original, or (iii) both the original and translation is required to avoid the surcharge. Though the USPTO’s justification for implementing the non-DOCX surcharge would seem to pertain only to the English translation.

Potential Problems

When application documents are electronically filed with the USPTO’s Patent Center system in DOCX format, they are converted into another format (PDF) by the USPTO with a proprietary conversion engine prior to filing. That conversion process can produce errors. Yet it is the converted file and not the DOCX file that the USPTO actually relies upon for subsequent actions. The original applicant-created DOCX file is also altered before being saved by the USPTO as part of a filing “validation” process, meaning the USPTO does not preserve the original source file in unaltered form. For instance, tracked changes strikethrough and underlining/underscore formatting is automatically removed as part of file “validation”. Underlying those concerns is the fact that DOCX format is not platform-stable, and rendering of a given document varies depending on the configuration of the computer that opens it. These aspects of DOCX filing are the major sources of concern.

Experience to date has shown that USPTO-side DOCX conversion error issues are particularly significant for application documents involving:

  • Embedded mathematical equations created with a word processing program’s built-in equation editing functionality
  • Embedded chemical formulas created with a word processing program’s built-in formula editing functionality
  • Pseudo computer code with special indenting having technical meaning or special significance
  • Data tables, particularly if the table introduces landscape page orientation that varies from other pages with portrait orientation or if there is complex table formatting with special formatting like substantively meaningful indenting within table cells
  • Text in unusual characters/symbols or fonts, including Greek letters and/or uncommon accent marks with technical significance
  • Claim autonumbering using automatic numbered list formatting
  • Document creation using a word processing program other than a version of Microsoft Word® using a Latin-alphabet interface
  • Document creation or editing with word processing program plug-ins or macros for machine translations, automatic application content population, and the like, especially when such plug-ins lock application formatting or content against further editing

Many of these things are fairly common in patent applications.

The USPTO treats the DOCX version as the definitive record copy, potentially allowing later correction of USPTO-side conversion errors by filing a petition and paying an accompanying official fee (which is even greater than the non-DOCX surcharge). However, the USPTO has clarified that only the “validated” DOCX file as modified by the USPTO’s systems during the filing process are treated as authoritative and not the applicant’s pre-“validation” source version. The USPTO has also said that petitions requesting a correction more than one year after a DOCX submission will not ordinarily be granted (except that, if applicable, incorporation by reference of a priority application or filing a pre-English-translation version may provide a different, independent basis to request correction more than a year later). This time limit stems from the USPTO saying it may discard DOCX format submissions after one year, retaining only a USPTO-converted non-DOCX file. Although, even within that one-year time limit, USPTO alterations to the uploaded DOCX file to create a “validated” version might undermine reliance on the “original” for a correction due to alternations introduced by the “validation” process. Post-filing correction opportunities may therefore be limited.

The USPTO has permitted a highly limited opportunity to file a back-up applicant-generated PDF version (“Auxiliary PDF”) of an application filed in DOCX format that can further allow for later correction of USPTO-side conversion errors. However, this Auxiliary PDF submission is only permitted through June 30, 2023, during which time there are no extra official fees associated with an Auxiliary PDF or to petition to correct a USPTO-side conversion error based on such a PDF. After that date, the non-DOCX surcharge will apply as well as potential application size fees for any Auxiliary PDF submissions, in addition to any petition fees to correct USPTO-side errors.

The possibility of conversion errors arising at all and the burdens of timely requesting corrections have the potential to negatively impact applicants. Moreover, the increased applicant burden to format DOCX files and proofread converted files is potentially significant unto itself. In effect, DOCX filing saves some effort and expense for the USPTO by pushing or shifting certain burdens and risks onto applicants. The supposed benefits to applicants are trivial or meaningless.

Best Practices for DOCX Filing

The following are some suggested practices for DOCX filing. These are meant to supplement or clarify USPTO-provided guidance and frequently-asked-question (FAQ) responses that often serve more as disingenuous “gaslighting” to deny problems filers have encountered and conceal unstated, de facto requirements than to provide reliable, practical, actionable guidance. While a document might be modified shortly before filing to meet minimum requirements or best practices, there can be risks and potential problems associated with doing so, including the introduction of inadvertent errors and potential file corruption. It also may be significantly more time-consuming to later modify an application document for filing than to prepare it in a compliant way from the start.

Top DOCX application compliance tips:

  • Use paragraph numbering (required), preferably paragraph autonumbering using at least four digits inside square brackets (“[0001]”)
    • Omit line numbering
    • Manual paragraph numbering is compliant but makes changes and amendments very burdensome
    • Often the lack of paragraph numbering in an existing application document is the single most burdensome formatting change required for DOCX filing compliance
  • Use a supported font, such as times new roman or arial (note that supported fonts are subject to change without notice)
    • There have been reports that some fonts the USPTO has explicitly identified as being supported are not actually fully supported
    • While a document-wide font change action can be performed, it may not alter font in embedded equations or formulas, inserted images with text or alphanumeric characters, headers and footers, and the like
  • Manually number claims with plain text numbers and avoid automatic “list” formatting using word processing program functionality
    • USPTO systems will sometimes modify claims in numbered list format to number each clause within a claim separately, disrupting intended claim numbering
    • Use of auto-updating cross-reference fields to indicate claim dependencies sometimes leads to errors in conversion, such as converting all claim dependency references to a prior claim from various numbers to zero (0)
  • Consider using an inserted image of a complex formula or equation rather than using one generated by a word processing program’s equation editor
    • Inserted images must have sufficient resolution to be readable
  • Provide figures in a separate document, rather than as pages of the same document containing the application text (specification)
    • Deletion of pages containing drawings can sometimes produce unintended changes to the formatting of remaining pages in a DOCX file, such as deletion of page numbering, changes to margins, and the like
  • Use an English version of the proprietary Microsoft Word® word processing program
    • There are variants of the DOCX format and other nominally DOCX compatible word processing programs will not necessarily create files that will be processed the same way by the USPTO’s proprietary conversion engine
    • Use of versions of the Microsoft Word® program intended for use with non-Latin chaccter alphabets may render differently on an English-language version of that program, such as removing inter-word spacing
  • Avoid use of highly customized application templates with macros or uncommon/complex embedded formatting settings
  • Simplify! In general, documents with simpler formatting are more likely to be compliant and less likely to result in conversion errors than more complexly formatted ones. Use complex, customized formatting only when strictly necessary or unavoidable

The USPTO provides DOCX-compliant utility patent application templates that could optionally be used. There is a basic template and another with essentially all possible application section headings identified. The basic template will like be more appropriate in most situations, with less extraneous section headings that are likely inapplicable. However, the use of automatic list claim numbering in these templates can still cause conversion errors and is not seen as actually compliant; thus, manual text-only claim numbering should be used in place of the list-style autonumbering in those templates.

While the USPTO asserts that DOCX file metadata is automatically removed from documents when filed, it is recommended to independently assess and remove any sensitive metadata before filing. Such metadata could relate to document revisions and the like. While such information is not necessarily harmful to an applicant’s interests, its presence in filed documents might possibly increase litigation discovery burdens if a resultant patent is ever enforced. In Microsoft Word, accessing the “File” > “Info” menu and utilizing the “Inspect Document” feature can help identify and then remove metadata. But be careful not to remove necessary document fields like page numbers appearing in footer margins.

One difficulty with identifying errors is that meaningful proofreading requires first uploading the DOCX file to the USPTO’s Patent Center and then reviewing a USPTO-converted file. While Patent Center provides some feedback about certain possible DOCX compatibility issues during the file upload and submission process, such automated feedback will never identify substantive content errors such as unintended changes to numerical values or technically meaningful formatting.

Non-DOCX Filing Alternatives

In some instances, electronically filing an application in PDF format and paying the non-DOCX surcharge may be more efficient than spending considerable time proofreading converted documents to check for errors. “Last minute”, urgent, or rush filings of applications with potentially problematic equations, formulas, data tables, text formatting, or the like may not allow sufficient time for proofreading, and may suggest PDF format filing and payment of the non-DOCX surcharge.

Additionally, if the USPTO’s Patent Center system is unavailable and paper (hard copy) filing via express mail is required to meet a filing deadline or bar date, payment of official non-DOCX and paper-filing surcharges might be necessary.

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

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Agreements Copyrights Patents Q&A Trademarks

How Can I Correct An Assignment?

Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document.

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b)) and the U.S. Copyright Office (in Compendium 2308.1) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

  1. Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
  2. Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
  3. Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

Scanned excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials
Excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The initials and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive (nunc pro tunc) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed. The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “A request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This means a nunc pro tunc patent assignment recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the date prior to the effective date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

However, courts generally do not not give nunc pro tunc effect to assignments for standing to sue for infringement. They have said the date the new nunc pro tunc document was signed is the effective date that controls for matters of standing. This unique treatment for standing purposes means any significant errors in an assignment need to be cured and signed before starting a lawsuit premised on ownership by assignment. That also means any subsequent assignments in a chain of title that were executed before the corrective nunc pro tunc assignment may require further corrective action as well. Clearing up chain-of-title issues before bringing suit allows the correct and necessary plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit.

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

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

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Q&A Trademarks

How Does a Trademark Office Action Extension of Time Work?

For U.S. federal trademark applications, the standard deadline to make a response to an office action is three (3) months from the date the office action was sent. Failing to respond by the deadline will result in abandonment of the trademark application. However, it is possible to obtain an extension of time to respond.

How to Obtain a Trademark Extension of Time

An extension of time to take action following a trademark office action—whether non-final or final—requires filing an explicit request for an extension by the original 3-month deadline and paying an official fee (currently $125 if filed electronically). The official fee is a fixed amount and it does not matter how many classes of goods or services are in the application. The extension is basically automatically granted upon filing the request and paying the fee. It provides a single 3-month extension of the original deadline to make a substantive response or appeal. In other words, after obtaining an extension the applicant is able to substantively respond to the office action, or to appeal from a final office action, up to six (6) months from the date the office action was sent.

Only one extension of each office action deadline is possible, however. Six (6) months is the maximum period to take action when such a response is necessary. Although it is still possible to separately obtain extensions for each of the different deadlines associated with different office actions.

Also, the extensions discussed here only apply to office action response deadlines. For instance, extensions of time to file a statement of use (SOU) following allowance of an intent-to-use (ITU) application are treated differently—those are for six (6) month periods and up to five (5) such extensions are available.

Additionally, the shortened 3-month response deadline, and the possibility of requesting a 3-month extension of time, will only arise for post-registration office actions beginning October 7, 2023. Until then, post-registration office actions will have 6-month response deadlines.

Extensions Inapplicable to Madrid Protocol Extensions

For Madrid Protocol extension applications based on foreign priority rights the response deadline for an office action is instead always six (6) months. There are no extensions available to that 6-month response deadline in Madrid Protocol extension trademark applications.

Missed Deadlines

If a response deadline is missed, it may be possible to file a petition to revive an application with the payment of an official fee. Alternatively, an applicant can often re-apply and start the application process over again after abandonment.

Photo of Austen Zuege

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

Categories
Q&A

What Are the Origins of Modern Patent Law?

Most people are well aware that patents are available. And patents are commonly known to relate to inventions. But what are the historical origins of patents and patent law? And, specifically, when did modern forms of patent laws emerge? The following is a short historical overview of how, and where, modern patent law developed, and how it was adopted in the USA.

Early Patents and the Emergence of Modern Patent Law

Patents have existed in some form for thousands of years, dating to at least 500 BCE in the ancient Greek city of Sybaris (located in what is currently Italy).  But such ancient and other extremely old patents tended to differ in significant respects from the institutionalized patent laws of today. Then in medieval times patents began to emerge in a more modern form. Although such medieval patents appeared only on an isolated, erratic, and ad hoc basis, as with one in the city-state of Florence granted a single time around 1421 in response to an architect’s refusal to disclose an invention for an iron-clad ship without obtaining limited exclusive rights in it.

The very first modern patent law was in the Republic of Venice city-state in 1474, which provided ten year protection for “any new ingenious contrivance, not made heretofore in our dominion, as soon as it is reduced to perfection, so that it can be used and exercised . . . .”  At that time, Venice had a mercantilist economy built on maritime trade, but also developed conditions for commercial capitalism. Although the city-state of Venice subsequently declined in world influence, without passing its legal customs on to many other states, its patent law was historically the first to institutionalize important characteristics of modern patents.

The British Statue of Monopolies enacted in 1624 is often considered the source for modern patent laws as adopted in the USA and through much of the world.  It limited the ability of the British monarchy to grant “odious” long-term monopolies over entire industries, partly limiting letters patents to manners of “new manufactures” (inventions) for only a limited period of time.  See Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229-30 and n.6 (1964).  As a former British colony, the it was British (rather than Venetian) legal norms that were adopted in the USA. Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 18,20 (1829).

These Venetian and English statutes established the concept of patents being based upon a quid pro quo. In exchange for disclosure of an invention its inventor could obtain a monopoly in that invention (only) for a limited time, thus preserving a general system of competition.  This concept of patents as limited monopolies granted by governments (on behalf of the public) as an incentive to individual inventors in a competitive economy has been tied to the transition from feudalism to capitalism in European history.  That is, the incentives to have patent laws tended to arise alongside the historical emergence of capitalism.

History of the U.S. Patent System

U.S. patent law was derived from English law.  See Pennock, 27 U.S. at 18, 20.  There is a patent and copyright clause in Article 1, § 8, clause 8 of the U.S. Constitution, granting congress the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” This constitutional provision is both a grant of congressional authority and a limit on congressional authority.  Trademark and trade secret law both lack such an explicit constitutional authorization.

Federal statutes providing for the granting of patents have been around since the very earliest days after U.S. independent from England—the first U.S. patent act was passed in 1790.  The U.S. patent system has always sought to make patent fees reasonable, to allow ordinary people to apply for and obtain for patents on their inventions. 

However, the U.S. Patent Office was not founded until 1810 (its first employee having been hired in 1802 as “superintendent of patents”) and modern pre-grant examination only began in 1836.  This actually was a unique American contribution to patent law: the idea of institutionalized pre-grant examination of patent applications under established legal standards.  Previously, U.S. patents were subject to either an erratic ad hoc examination (from 1790-93, by a board initially comprised of Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph) or were registered and patentability assessed only later in court when the patent was asserted (from 1793-1836). 

Then, in the mid-Nineteenth Century, the U.S. Supreme Court established the concept of non-obviousness as a condition for patentability, which subsequently became a component of patent laws around the world.  See Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851).  The U.S. Supreme Court also formally established other doctrines such as exceptions to patent eligibility.  E.g., Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852).  Many of these concepts now exist in some form in the patent laws of many other countries.

The current patent laws are codified in Title 35 of the U.S. Code.  These federal patent laws preempt state law, so there are no state patents or state patent laws. Though some peripheral issues around assignments, deceptive enforcement practices, etc. are still subject to state laws.

International Patent Harmonization

In contemporary times, most countries have some form of patent available. Even the former Soviet Union had forms of patents and inventor’s certificates as incentives. Patents generally remain territorial rights, limited to a particular country or region. This means patent laws do vary by country. But there are numerous treaties that have sought to harmonize some aspects of patent law between countries. 

The most important patent-related treaties currently in effect are the Patent Cooperation Treaty (PCT), The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provisions applicable to members of the World Trade Organization (WTO), and the Paris Convention for the Protection of Industrial Property.  For design patents (only), the Hague Agreement Concerning the International Registration of Industrial Designs is also significant.  These treaties establish the basis for claims of “priority” when filing counterpart patent applications in foreign countries (under the Paris Convention), for instance.  Other, less significant treaties exist that deal with formalities, procedures, classification systems related to patent publications, etc.

The Future of Modern Patent Law

The history of patent laws is still being written. Laws and treaties are amended and changed over time. There is not unanimous agreement on the best way to administer patents (or to have them at all). The proper scope and administration of the patent system have long been debated.  These are often policy debates over who should benefit from the patent system, how much, and in what ways. Yet such disputes may not be apparent because they are often framed technocratic language about specific procedures and legal standards that conceal or deny their normative policy effects. Whenever laws involve a “balance” of interests some people seek to tilt it more in their favor.

For example, long ago that led to the U.S. Patent Office devoting considerable resources to preparing an agricultural report beneficial to rural areas to offset the perceived subsidy to urban areas provided by the patent system — eventually the U.S. Department of Agriculture (USDA) was created as a spin off. Patent eligibility debates sometimes seem like efforts to obtain less limited monopolies or at least to expand them beyond technological inventions. Today, expansive use of patents has even been described as a neofeudal reversion (to a kind of pre-capitalist parcellated sovereignty).

Yet, despite various challenges and criticisms, the “modern” quid pro quo model that began in Venice still formally prevails as the justification for patent systems in much of the world, at least for now.

Need assistance with a patent, trademark, or other IP issue?

Contact Austen Zuege, an IP attorney who can help.

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Patents Q&A

What Are Common Issues Around Software Patenting?

Patenting inventions based around software, artificial intelligence (AI), machine learning, and the like presents a number of challenges. Of course, these types of inventions must be novel and non-obvious over what was already known (the “prior art”) to be patentable. That is no different for software patenting than for any other kind of invention. But software-based inventions frequently present concerns about patent eligibility as well as who is viewed as an inventor.

Software Patent Eligibility

Patent subject matter eligibility has been a highly contested area of patent law in recent decades. Because computers, software, and electronics in general have become widespread and the subject of considerable investment, patents on those sorts of technologies are potentially valuable. There are currently a large volume of computer software-related patent applications pursued every year.

Software-based invention patent eligibility is highly dependent on how the claims are written.  Attempts to obtain a broad “preemptive” (or we might say greedy or “odious”) patent monopoly that exceeds the quid pro quo of the inventor’s contribution to the useful arts raise the most concerns.  Today’s software patent eligibility debates tend to be veiled policy arguments about that quid pro quo balance. That is, how broad a monopoly (if any) should be awarded through a patent and how much (or little) must the purported inventor disclose to get it? These questions go to the heart of modern patent law and its origins when feudalism gave way to capitalism.

The U.S. Supreme Court has said “abstract ideas” are not patent eligible. This narrows the types of software-based inventions that can be patented.  There must be a substantial inventive concept beyond an underlying abstract idea. A trivial or superficial reference to something more concrete is not enough. It really has to be a technical contribution to the “useful arts”. Attempts to monopolize part of the economy simply by claiming to be the first to use computers, generically, is not enough. And a patent applicant simply agreeing to accept a monopoly over just one field of use for an abstract idea falls short of limiting patent claims a specific, patent-eligible inventive (technological) contribution.

In practice, this means a software-based invention consisting of only well-known concepts, mathematical calculations, data processing/manipulation/selection/presentation, what could otherwise be performed as purely mental steps, or the like plus merely generic computer hardware is generally not patent eligible.  Software that provides no more than an allegedly improved user experience is also generally not patent eligible. What makes software saleable is not always a technological improvement. Such an improvement should solve a technical problem rather than a non-technical one, and it should consist of more than just a business model or business plan that happens to involve computers. Claims for software-based inventions should accordingly capture the essential part(s) that make a technical achievement possible. A claim reciting only abstract result + generic computer components may be broad but it stops short of capturing an inventive concept necessary for patent eligibility — reference to generic computerization is considered insignificant post-solution activity.

Software-based inventions at the level of particular coding and/or specific hardware interactions tend to be narrower. This leaves open the possibility that someone else could avoid patent claims narrowly draw to such things. Such claims therefore potentially provide a less valuable monopoly. Often times disputes about patent eligibility, and complaints about the state of the law, are really about a refusal to accept narrower rights commensurate with an actual technological contribution (if any). It is a historical quirk that software became widely used around the time that social transformations led some people to consider greed to be “good”. That may explain why patent eligibility issues so often arise around software (and biotechnology)—even though greed and selfishness have always played a role in patenting so this is matter of degree. The volume of that kind of patenting rose in step with changes in certain social and moral values held by larger and larger segments of business people while the patent laws stayed the same.

Inventors and Software

Something that repeatedly comes up when dealing with software patents is a disconnect around who is the “inventor”. Sometimes managers, executives, or other higher-level employees setting out objectives and requirements view themselves as inventors of something patentable. Yet they rely on others to actually write software code that meets those objectives and requirements. Implicitly that view sees what the coders do as not being inventive. But is that accurate?

First, a bit of a detour. I have dealt with software-related technologies when performing patent freedom-to-operate or clearance studies to evaluate the risk of infringing an existing patent. A rather curious thing happened numerous times. Managers and supervisors would again and again evade or delay responding to inquiries seeking technical information sufficient to compare the configuration and operation of the proposed design against an existing patent. Eventually it became clear why. They did not know how the software was structured. That was assigned to lower-level employees. At times, this was even outsourced to temporary contractors who were no longer around. The managers and supervisors I spoke to did not want to review the source code to find the information I was seeking. Also, they were reluctant to admit that they did already not know what was in the code. This was perhaps embarrassment from not knowing what employees reporting to them had previously done. But also it seemed like a reluctance to admit that what lower-level employees and contractors had worked out in source code was more important for patent law purposes than what fell in the supervisors’ direct area of knowledge.

This anecdote about patent clearance analyses highlights a pragmatic issue around software patenting. Some people take a very hierarchical view that considers software coding and similar tasks to be routine and unimportant. Those efforts are taken for granted. What is valued is setting objectives and requirements. Such tasks are often something reserved for people in top positions within an organization. It is usually chain-of-command authority that permits certain people to make those decisions rather than their technical insights. But this type of thinking can be at odds with the patent laws. General objectives and requirements for software development that merely articulate desired results are often limited to the realm of abstract ideas. The technical achievements and inventive contributions that establish how the desired results are achieved might really be at the level of coding and/or detailed software/hardware interactions that improve computer functioning. But those things might have been devised by different people than those setting general requirements.

When the wrong people are in the room talking about an “invention” and directing patenting efforts there is a greater risk of resultant patent claims being directed to ineligible subject matter. The people who made technological contributions that solve technical problems need to be involved. If the only people with input are those who are “in charge”—with the authority to set high-level goals, requirements, and investments for a project—it is more likely that only patent-ineligible “abstract ideas” will be captured. Those people might not really know about the real patent-eligible inventive contributions. Navigating these hurdles may require candid, up-front discussions about what matters under the patent laws and potentially challenging assumptions about corporate hierarchies and individual contributions.

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

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Patents Q&A

What Patent Application Extensions of Time Are Available?

For U.S. patent applications, official communications from the U.S. Patent & Trademark Office (USPTO) may require a response by a particular deadline. Failing to respond will result in the application being abandoned. If more time is needed to respond, extensions of time may be available, with the payment of official extension of time fee(s). What follows is a brief explanation of how the USPTO handles extensions of time for responses involving patent applications.

The Basics of Response Periods and Availability of Extensions of Time

Statutes plus USPTO regulations and guidelines determine periods for reply and how those time limits are calculated for patent applications. These deadlines are based on the date an official communication is sent to the applicant. Office actions generally have a three (3) month response deadline (called a “shortened statutory period for reply”), extendable by up to three additional months upon payment of official monthly extension of time fees.  The maximum time period to reply, with extension, is six (6) months.

However, some other types of actions, such as responses to restriction/election requirements, responses to deficiencies notices, and appeal briefs have shorter deadline periods but may allow for longer extensions. Certain appeal deadlines and non-standard extension requests under 37 C.F.R. § 1.136(b) are subject to other limits or requirements than for ordinary extensions to respond to office actions, including a need to request leave for an extension within the original deadline period.

Issue fee payment deadlines after allowance are not extendable (37 C.F.R. § 1.311). This means an applicant has only three (3) months after a notice of allowance is sent to pay the issue fee.

Weekends and Holidays

If a USPTO deadline falls on Saturday, Sunday, or a U.S. Federal holiday, the applicant can take action by the next succeeding secular or business day. In other words, a deadline on a weekend or a holiday is automatically extended to the next regular business day without needing a request for an extension of time.

Requesting an Extension of Time

Extensions of time for responding to patent application office actions are essentially freely available. They can be obtained simply by making a request (petition) and paying necessary official fees at the time a substantive response is filed.  That is, in most cases, there is no need to request the extension of time within the original shortened period for reply (or otherwise in advance of a substantive response).  Instead, the applicant files a response after the shortened period of reply, but within the maximum 6-month period, and at that point concurrently files an explicit request for extension along with payment of the extension fees.

Ordinary extensions of time are calculated monthly, based upon the month in which a substantive response is made. The extension of time fees increase with each subsequent month of extension. This means the fee for a 2-month extension is more than twice the fee for a 1-month extension, and so forth. The fees do not stack. So a response in the second month of extension requires only the 2-month extension fee, rather than both the 1-month and 2-month extension fees. The official extension fees also depend on the applicant’s entity size.

Special Considerations After a Final Office Action — Advisory Action Practice

For final office actions in patent cases, the USPTO has a special procedure involving advisory action practice that can help avoid extension of time fees. This amounts to an optional further shortened period with certain benefits. Filing a response to a final office action within two (2) months potentially allows further action to be taken (within the maximum 6-month response period) without an official extension of time.  In practical terms, meeting the 2-month deadline is most useful when making after-final claim amendments but is perhaps less significant for other types of after-final actions. This requires some further explanation and context to fully understand.

Amendments after final are not entered as a matter of right. If an examiner believes that such an amendment raises “new issues” that require further searching, that is, an updated search for prior art, and there was no good and sufficient reason for not presenting the amendment earlier, then an advisory action is issued indicating that the amendment after final will not be entered. The applicant can then consider a request for continued examination (RCE), appeal, or other action to continue to seek a patent. However, such other possible actions are still subject to the original reply periods set by the final office action.

Because an advisory action does not establish a new response deadline, both the shorted and 6-month maximum response deadlines set by the final office action still apply. This means any further action after the end of the 3-month shortened statutory period requires an extension of time and associated fees. An important exception is that if the applicant responded by the 2-month deadline and the advisory action is sent by the USPTO after the shortened statutory period, the applicant can take action on that same day without an extension of time. This is essentially a limited exception to having to pay for an extension of time when an advisory action is issued.

The 2-month after final deadline is optional. An applicant can still take action within the shortened 3-month period without any extension of time, and after that with an extension of time. But submitting a claim amendment after final beyond the 2-month deadline increases the chances that extension of time fees may be required in order to take still further action—unless the amendment merely cancels claims, adopts allowable subject matter or an examiner suggestion, or corrects a minor error that does not require significant further examination.

Other Options Related to Deadlines and Extensions of Time

If a reply is not possible yet even with extensions of time, there may be other options to avoid losing rights. For instance, it is sometimes possible to file a new continuation application and allow the current one to go abandoned, although payment of extension of time fees in the parent case is still required if the continuation application is filed after the shortened statutory period. Moreover, if there was an error in the USPTO reporting an office action or the applicant did not receive it, or if the office action contains an error that affects the applicant’s ability to reply, filing a petition might be possible. An experienced U.S. patent attorney can advise about when and how such other options might be utilized.

Photo of Austen Zuege

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