Categories
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 and 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).

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 shorted 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 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 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 an 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.

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 used.

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
Patents Q&A

What Are the Costs to Obtain a Patent?

The total costs to obtain a patent and to maintain it vary. This is true because patenting costs in different jurisdictions vary but is also due to each patent by its very nature being directed to a unique invention. There is always a speculative aspect to patenting that means there are no guarantees of success or efficiency. Uncertainty about the total expenses can make planning and budgeting more difficult. However, upfront budget planning can be aided by grouping typical costs into three categories:

  1. Preparation and Filing
  2. Prosecution (Examination)
  3. Issuance and Maintenance

These categories of costs generally arise one after another and not all at once. Each of them is discussed in more detail below. The present discussion is not meant to provide specific price ranges. Rather, the goal is to understand what sorts of fees are generally foreseeable and when they arise. Hopefully this helps applicants to request desired cost estimates from a patent practitioner, and to understand what such estimates do—and do not—cover. Though sometimes a good analogy is that the total cost to obtain a utility patent can be comparable to buying a car, running anywhere from approximately $15,000 to $50,000 or more.

Preparation and Filing

The first and often largest category of expenses is the preparation and filing of a new patent application. These costs can be broken in two: official filing fees and professional fees for a patent attorney. Additionally, because patent rights are territorial, filing related patent applications in multiple countries or jurisdictions will generate costs associated with each of them, though not necessarily all at the exact same time. Translation costs may be significant for foreign filings.

Official Filing Fees

There are official government fees required when filing a patent application. These official fees are paid to a given patent office. There are basic filing fees, plus the possibility of extra claim fees, multiple dependent claim fees, application size fees, late filing surcharges, and other miscellaneous additional official fees and surcharges. Strictly speaking, the basic filing fees can include search and examination fees, which in some countries may be deferred for a period of time.

Only a certain number of claims can be included without paying additional official fees in most countries. This means the total official fees will depend on the content and length of a given application, including the number of claims. This also means that the need for extra claim fees may not be known until the application and claims are drafted. For U.S. patent applications there are extra claim fees for having more than twenty (20) total claims and/or more than three (3) independent claims.

In the U.S., official filing fees also depend on the entity size of the patent applicant. Discounted rates for many official fees are available to applicants who qualify as a small entity or micro entity. Therefore, to determine the official fees for a new U.S. patent application, it is necessary to first determine the entity size. Keep in mind that the highest, undiscounted (large entity) fees will apply if a discounted entity size status (small or micro) cannot be established.

The type of patent application filed can also affect the applicable fees. For instance, provisional, utility (non-provisional), design, and PCT international applications are possible and the official fees vary for each.

Professional Fees (Attorney Fees)

A patent application is customized and specially-prepared for each invention. The costs to have a patent attorney prepare a new application are often one of the single largest in the entire process of obtaining a patent. These costs vary widely. Some important factors are the particular patent attorney’s billing rate as well as the complexity of the invention and the scope of desired patent coverage.

The patenting process is complex. Attorney’s fees for patent application preparation and drafting reflect the need to anticipate how a patent will later be examined and possibly later enforced against an infringer. Sometimes extra effort to prepare a better initial application can result in lower costs later on during examination and/or enforcement. Many times a well-drafted patent application can also help enhance the scope of coverage and the chances of obtaining a granted patent.

Conducting a patentability search and analysis prior to drafting a new application can also be helpful. This is usually not legally required. But a patentability search has many benefits, including the potential to avoid further costs if the invention is determined to be unpatentable or helping to allow preparation of a better patent application through knowledge of the closest prior art (potentially reducing prosecution costs). It does, however, add to the total costs of preparing and filing a new patent application.

Prosecution (Examination)

In most countries, including the USA, patent applications must undergo an official pre-grant examination that determines if the claimed invention is patentable. It may be many months or years after initial filing before examination actually begins. The vast majority of patent applications receive a rejection indicating that the application cannot be granted as a patent for one or more reasons. Such rejections and objections are made in office actions. The applicant can then respond to try to establish that the claimed invention is patentable. This back-and-forth is referred to as patent “prosecution”.

The number of office actions and the amount of effort to respond to them varies from one application to the next. It is common to have at least one or two—the average in the U.S. is between two and three. A given office action often does not require payment of any further official fees. But there can be official fees required at times during examination, such as for extensions of time to respond, to add extra claims, to extend or reopen examination (e.g., a request for continued examination), to file an appeal or petition, etc. The professional fees will vary depending upon the patent attorney’s rates and the total amount of effort involved.

For budgeting purposes, the total costs of prosecution are perhaps the most variable and least easy to predict. Though some non-zero prosecution expenses should be anticipated. It may be easiest to estimate these costs per office action and response, and to plan for at least two or three such office actions and responses. Further examination costs can always be avoided by abandoning an application, although this results in loss of rights.

Prosecution costs tend to vary depending on what invention is being claimed. The closer the invention is to the prior art the more effort may be required to articulate what is patentable. Moreover, seeking a broader scope of protection frequently translates into higher prosecution costs. Of course, broader patent claims are usually more valuable than narrower ones, which may make those higher costs worthwhile. Patent applicants have a good deal of control over their patenting strategy and its effect on prosecution costs. But some aspects are not fully under an applicant’s control.

In some countries, but not in the U.S, official annuity fees may be due on a yearly basis in order to keep an application active during examination. These annuity fees vary by jurisdiction.

Filing additional continuing (or divisional) patent applications is also possible while a given application is pending. Such optional additional filings carry their own costs. These may be worthwhile if a given application encompasses multiple inventions, and can arise following a restriction requirement.

Issuance and Maintenance

There are generally official issuance or grant fees required in order to obtain a patent after an application is determined to be patentable. In the USA, this is called an issue fee. In other countries these fees may have a different name or be structured differently, such as validations of a European patent in one or more participating countries. The official fees must be paid and there is typically some professional fee to have a patent attorney handle the payment and related matters like forwarding the granted patent.

After a patent is granted, additional fees are later required in order to keep the patent in force. In the U.S., official maintenance fees must periodically be paid by the 4th, 8th, and 12th year of a given patent’s term. The amounts of these official fees increase over the term of the patent. There are also late payment surcharges. The patent will lapse if a maintenance fee is not paid. However, maintenance fees are not required for U.S. design patents.

In most other countries, post-grant annuity fees are required on a yearly basis to keep a patent in force. Annuity fees are like maintenance fees just on a different schedule.

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
Patents Q&A

What Is an Election Requirement?

Election of species requirements are part of U.S. patent restriction practice. Examiners often caption these matters an “election/restriction” or the like. Election requirements deal with how genus and species inventions are disclosed and claimed. This differs from regular restriction practice, which requires an applicant to elect one group of claims from among different groups of claims to independent or distinct inventions identified by an examiner. Instead, an election requirement deals with an application in which there is a generic (genus) invention claimed as well as more than one species of invention within that genus claimed. In this sense, an election requirement is a special type of restriction. It is possible to have both types of restrictions, by groups of claims and by species, issued at the same time.

The Basics of an Election Requirement

More than one species of an invention, “not to exceed a reasonable number,” may be specifically claimed in different claims in a single U.S. patent application, provided that the application includes (i) an allowable claim generic to all the claimed species and (ii) all the claims to species in excess of one are written in dependent form or otherwise include all the limitations of the generic claim. But where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive.

A species restriction acts as a kind of cap on the amount of searching that a U.S. patent examiner has to do for a given application, limiting it to a reasonable number of species. It is possible for applicants to include dozens or even hundreds disclosed species embodiments in a single application. Genus/species election practice helps prevent examiners from being overwhelmed by the presence of voluminous numbers of species. Election requirements may arise where the examiner suspects that the generic claim will not be patentable/allowable but the number of disclosed species makes searching them all impractical.

A key aspect of election requirements is that they are based on an examiner identifying different disclosures—often by figure, but sometimes with reference to the detailed description of the specification. In reply, the applicant then has to elect one species and identify the claims that read on that elected species and those that are generic. Perhaps the most important point about elections of species is that the claims will be restricted to the elected species if no claim to the genus is found to be allowable. This ties the election of disclosed species to a restriction between claims in the application.

Election requirements can arise in just about any patent application. However, election requirements are somewhat more common for chemical, biotech, and similar types of inventions.

What is a “Species”?

Species always refer to the different embodiments of a generic (or genus) invention. In contrast, claims are definitions or descriptions of inventions. Claims themselves are never species as such. The scope of a given claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a given claim may encompass two or more of the disclosed embodiments (and thus be designated a generic or genus claim). Species may be either independent or related as disclosed in a given application.

As an example, consider a mechanical invention with a first part connected to a second part. In one species embodiment, they are connected by a mechanical fastener (e.g., bolt, screw, rivet, etc.). In another species embodiment, they are connected via an applied electromagnetic field. In yet another species embodiment, they are connected via a chemical reaction that occurs between the parts when treated in a chemical bath. These embodiments might be claimed in a mutually exclusive way, and searching one may not capture prior art relevant to the others. Although the there may be a generic invention to the first and second parts being connected, regardless of how they are connected.

What is “Generic” or a “Genus”?

Initially, it is important to distinguish between generic or genus inventions as disclosed, on one hand, and generic claims, on the other. Election of species practice begins with identification of disclosed species. However, generic disclosures do not matter much for election requirements and replies. Rather, election practice only really cares about generic claims, in relation to specific species claims.

What constitutes a generic claim depends upon the specific species claims that are present in a given application. The USPTO says that, in general, a generic claim should require no material element in addition to those required by the specific species claims, and each of the specific species claims must require all the limitations of the generic claim. If you have claims that are mutually exclusive, and there are material elements recited in one claim but not another, there may not be a generic claim and instead there may simply be independent or distinct claimed inventions—in other words something subject to conventional restriction practice.

PCT National Phase Entry Applications

Regular election/restriction practice does not apply to PCT national phase entry applications. Instead, a unity of invention standard governs, which requires having a common or corresponding special technical feature that defines a contribution over the prior art. However, U.S. examiners can still issue requirements to elect a particular species in national phase applications and withdraw non-generic claims to unelected species and the procedures are similar. Applicants must still make elections and rejoinder of withdrawn claims is still possible. This means that the ultimate effects are similar though the terminology differs somewhat. If anything, there is slightly greater leeway for applicants to amend the claims to keep them together under the unity of invention standard.

If a U.S. examiner applies conventional election/restriction practice requirements to PCT national phase entry applications, that is a procedural error that should be called to the examiner’s attention. That sort of mistake does happen from time to time.

Keep in mind that prior indications by the international search authority or international preliminary examining authority in the international phase of a PCT application are not binding in the national phase. That means that even if a prior PCT written opinion indicated that claims posses unity of invention, the U.S. examiner could disagree and still issue a unity of invention election of species restriction in the national phase.

Requirements for an Election of Species Response

Patent applicants are required to elect a species for examination in reply to an election requirement and to identify the claim(s) that read on the elected species, as well as any generic claim(s). A reply (or response) is considered incomplete if no election of a particular species is made.

To the extent that a restriction between groups of claims to independent or distinct claimed inventions was also made, that election by claim group needs to be made in addition to the species election. Those different elections effectively stack on top of each other. The only claims that will be examined are those that are part of both the elected species requirement and the elected group of claims. In other words, the claims that will be examined will only be those that are the net result of the two elections (by claim group and by species).

An election of species can be either “with traverse” or “without traverse”. “Traverse” means that the applicant is arguing that the restriction requirement is incorrect or improper and should be reconsidered and withdrawn in whole or part. Traversing a species election/restriction requirement requires actually making an argument about why the species restriction is wrong. An election that is made subject to a traversal is called a provisional election. Traversing the election requirement is necessary to later file a petition to challenge it. However, it is highly uncommon to traverse an election of species requirement.

The applicant can also make an assertion about which claim(s) are generic that may differ from the examiner’s indication of the generic claim(s). This is often an critical aspect of responding to the election requirement.

Strategic Considerations for Election Requirement Responses

There are a few strategic considerations the go into deciding how to reply to an election of species requirement. Consider the following, for example:

  1. What is the most commercially important embodiment of the invention, or which embodiment has the most commercial potential? Many times this is the most important consideration.
  2. What generic claims are present? An examiner will generally indicate which claim(s) he or she thinks are currently generic. Applicants might not agree, and might indicate that additional or different claims are generic to all claimed species. Indications of generic claims, as well as indications of which specific species claims read on the elected species, can have significant impacts on later enforcement of any resultant patent. Such indications, or a failure to argue that certain claims are generic, may play a significant role in claim construction and the ability of competitors to avoid or design-around granted claims. These indications may also impact the scope and availability of the doctrine of equivalents.
  3. Which embodiment is covered by the most claims? All else being equal, sometimes an applicant might make an election simply to retain the largest number of claims.
  4. How does the election of species requirement relate to an accompanying restriction by groups of claims? Examiners will often issue both a restriction by identified groups of claims, and also require election of a disclosed species. Because only the claims that are encompassed by both elections will be examined, this sometimes favors making certain elections that will retain a reasonable number of claims.
  5. Might claims be amended? One or more claims might be amended in order to make them generic, to depend from a generic claim, and/or to make provide a linking claim. Claim amendments might be used to try to facilitate later rejoinder of claims directed to an unelected species.
  6. Are you willing to file one or more divisional application(s) to pursue unelected claims? A election/restriction requirement is an indication that filing unelected claims in a new divisional application will prohibit a double patenting rejection in the later-filed divisional. However, whether or not the applicant is willing to incur further expense associated with a divisional filing (or perhaps multiple divisionals) may influence which species is elected in response to the restriction. It is possible to defer a divisional filing decision so long as the current application remains pending. This may allow an opportunity for claim rejoinder to be considered.
  7. Which species have the best chance of patentability? This may not be known. But, depending on the scope of the prior art or potential patent-eligibility issues, certain disclosed embodiments and corresponding specific species claims might face either easier or more difficult examinations. Sometimes an applicant has a sense of which claimed embodiment(s) are the most unique.
  8. Is it important to obtain a patent very quickly, or not? Certain elections of species may make examination take longer, such as if the election results in reassignment of the application to a different examiner in a different group art unit. Although the effect on the speed of examination may be speculative at the time of the species election.

When strategizing how to respond to an election of species requirement, the main issues are usually which species to elect and which claims to designate as being elected species-specific claims or generic.

It is often not advisable to challenge an election of species requirement by traversing it. Doing so usually involves admitting that the species are not patentably distinct, that is, that they are obvious variations of each other. That may limit the sorts of arguments that can be made later on to distinguish prior art, etc. Of course, there are situations in which examiners identify species incorrectly (e.g., incorrectly identifying different views of a single embodiment as different species), in which case traversal may be appropriate and worthwhile. Traversal is necessary to preserve the right to later petition against the restriction, however.

An experienced patent attorney can help an applicant assess possible election requirement response strategies for any given case.

Petitions Against Election Requirements

It is possible to file a petition against a election/restriction requirement that has been made final. Such petitions are decided by technology center directors, as opposed to the Office of Petitions or some other centralized USPTO authority. However, such petitions may not be worth the effort and cost in attorney fees–unless, for instance, the applicant faces a need for multiple divisional applications with a large total cost. Importantly, such a petition against an election requirement may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than an appeal.

In order to preserve the ability to file a petition against an election requirement, it is necessary to traverse the election requirement in the initial response. Failing to traverse a restriction waives the opportunity to later file a petition against the election/restriction requirement.

Rejoinder

Unelected, withdrawn claims can potentially be rejoined upon the allowance of an elected claim. Claims that depend from or otherwise require all the limitations of an allowable claim are eligible for rejoinder. Rejoinder is also possible when there is a “linking claim”. Rejoinder practice means that unelected claims might still have a chance to be included in a granted patent despite a prior restriction.

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
Patents Q&A

How Should I Respond to a Restriction Requirement?

Introduction

Patent examiners may issue a restriction requirement against a pending patent application. Restriction is permitted under U.S. patent law if two or more independent and distinct inventions are claimed in one patent application. Knowing how to respond to a restriction requirement, and what types of responses are possible, first requires understanding what they are. There are some strategic and practical considerations that make some types of responses more worthwhile than others. What makes the most sense will depend on the particular claims involved, the basis of the restriction, and the application’s patenting strategy. Experienced U.S. patent attorneys tend to have a sense or intuition about what sorts of restriction requirements are proper and which sorts of responses are worthwhile in any given case.

Restriction practice centers around how much work the USPTO has to do to examine a given application. Applicants are sometimes frustrated by restriction requirements that have the appearance of an examiner trying to avoid work or to game the “count” system that is used internally by the USPTO to track examiner productivity, by forcing the applicant to file a divisional application. At times, the rationales given for restrictions can seem unconvincing or circular. On the other hand, applicants seeking to avoid the official fees normally associated with filing separate patent applications for independent and distinct inventions that necessitate separate examination are rightfully subject to restriction requirements.

The Basics of a Restriction Requirement

A conventional restriction requirement means the examiner believes there are multiple independent or distinct inventions being claimed. A restriction requirement will identify different inventions by groups of claims. The examiner is insisting that the applicant pick one claimed invention, by group, to be substantively examined for patentability. That is called making an election.

Every requirement to restrict has two aspects: (A) the reasons why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction was not required.

Claims are “independent” if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. This type of restriction is straightforward. It does not come up that often.

Restrictions between related but “distinct” inventions are more common. These restrictions are closely tied to prohibitions against double patenting. The precise requirements for a proper distinctness restriction will depend on the types of claims involved. A lower standard applies to restrict out inventions in different statutory categories—generally referring to the difference between apparatus and method/process claims. However, for applications with so-called combination and subcombination claims (e.g., claims to an overall device and to a subassembly usable in it), or with claims to related products or related processes (i.e., claims in the same statutory category), a higher standard is applied. Further, even when claims are distinct, the examiner must also show that examining those claims together would pose a serious burden. This refers to the burden to search for prior art and evaluate the claimed invention against the search results.

Where the claims of an application define the same essential characteristics of a single disclosed embodiment of an invention, restriction therebetween should never be required. This is because the claims are not directed to distinct inventions. Rather, they are simply different definitions of the same disclosed subject matter, merely varying in breadth or scope of definition. Although most patent applications do disclose multiple embodiments, which can raise questions about whether particular claims are directed to the same or different embodiments.

Examiners have considerable discretion about issuing restriction requirements. Even when a restriction requirement could be made, an examiner is not affirmatively required to do so. There is considerable variation in how restriction practice is utilized by different examiners, and also between different technology centers and group art units at the USPTO.

Following a restriction requirement, the applicant is required to elect one group of claim(s) for examination. Unelected (or nonelected) claims will be withdrawn and will not be substantively examined. Importantly, an applicant will generally be prohibited from later adding claims to an invention independent or distinct from the elected claims. There is generally no opportunity to change your election later on. Although “rejoinder” may permit previously unelected claims to be allowed if they depend from or otherwise require all the limitations of an allowable claim. Rejoinder is discussed further below.

Unelected claims can remain in an application, denoted as “withdrawn”. Examiners essentially ignore withdrawn claims. It is possible to amend withdrawn claims if desired. However, withdrawn claims must either be rejoined or canceled when an application is in condition for allowance. If the elected claims are patentable, it is common for patent examiners to call counsel of record to request approval of an examiner’s amendment to cancel withdrawn claims, in order to permit a notice of allowance to be sent. If restriction was not traversed, examiners can also unilaterally cancel withdrawn claims at allowance by way of an examiner’s amendment.

Election of species requirements are related to but distinct from basic restriction requirements among groups of claims. Considerations for election requirements are discussed elsewhere. If present, they require a distinct response by the applicant in addition to a responsive election of a group of claims.

PCT National Phase Entry Applications

Regular restriction practice does not apply to PCT national phase entry applications. Instead, a unity of invention standard governs, which requires having a common or corresponding special technical feature that defines a contribution over the prior art. However, U.S. examiners can still issue requirements to elect a particular invention in national phase applications and withdraw unelected claims and the procedures are similar. Applicants must still make elections and rejoinder of withdrawn claims is still possible. This means that the ultimate effects are similar though the terminology differs somewhat. If anything, there is slightly greater leeway for applicants to amend the claims to keep them together under the unity of invention standard.

If a U.S. examiner applies conventional restriction practice requirements to PCT national phase entry applications, that is a procedural error that should be called to the examiner’s attention. That sort of mistake does happen from time to time.

However, it is important to note that prior indications by the international search authority or international preliminary examining authority in the international phase of a PCT application are not binding in the national phase. That means that even if a prior PCT written opinion indicated that claims posses unity of invention, the U.S. examiner could disagree and still issue a unity of invention restriction in the national phase.

Requirements for Replying to a Restriction Requirement

Patent applicants are required to elect a claim group for examination in reply to a restriction requirement. A reply (or response) is considered incomplete if no election is made.

An election can be either “with traverse” or “without traverse”. “Traverse” means that the applicant is arguing that the restriction requirement is incorrect or improper and should be reconsidered and withdrawn in whole or part. An election of claims made with traverse is called a provisional election. Traversing a restriction requires actually making an argument about why the restriction requirement is wrong. Simply saying “with traverse” without making a substantive argument will be treated as an election without traverse.

Once restriction is required, a nonelected claim is only “withdrawn” once the examiner withdraws it from consideration. When initially responding to a restriction requirement, the examiner has not yet withdrawn any claims (and has not considered any traversal arguments). So when reproducing the claims in a restriction reply, such as to make claim amendments, the “withdrawn” identifier should not yet be used. But in any subsequent amendments, following the examiner’s indication that claims are withdrawn in an office action, the withdrawn claims withdrawn must be indicated as “withdrawn”.

Strategic Considerations for Restriction Responses

There are a few strategic considerations the go into deciding how to reply to a restriction requirement. Consider the following, for example:

  1. What is the most commercially important aspect of the invention, and which group of claim(s) best covers that aspect? Many times this is the most important consideration.
  2. How many claims are in each group (i.e., which group contains more claims)? Sometimes electing a group with more or the most claims might provide better value, in the sense of having a larger number of existing claims examined. Although the an elected group of claims could potentially be expanded by adding and/or amending claims.
  3. Is the restriction between apparatus and method/process claims? Elections in this situation raise special considerations that sometimes make election of apparatus claims more desirable. If the apparatus claims are elected, rejoinder of the unelected claims to a method of making and/or using the product might be later rejoined and granted. However, if the method/process claims are elected, then rejoinder of the apparatus claims is not permitted.
  4. Might claims be amended? One or more independent claims might be amended to recite a common essential inventive feature as part of a traversal argument to try to make the restriction moot. Alternatively, or additionally, new claims might be added, such as by canceling unelected claims and adding new dependent claims to the elected group (canceling unelected claims may avoid official extra claim fees in this scenario). Unelected, withdrawn claims can also potentially be amended later, to try to facilitate rejoinder. However, claim amendments might have prosecution history estoppel implications and claim amendments cannot .
  5. Are you willing to file one or more divisional application(s) to pursue unelected claims? A restriction requirement is an indication that filing unelected claims in a new divisional application will prohibit a double patenting rejection in the later-filed divisional. However, whether or not the applicant is willing to incur further expense associated with a divisional filing (or perhaps multiple divisionals) may influence which claims are elected in response to the restriction. It is possible to defer a divisional filing decision so long as the current application remains pending. This may allow an opportunity for claim rejoinder to be considered.
  6. Which group(s) of claims have the best chance of patentability? This may not be known. But, depending on the scope of the prior art or potential patent-eligibility issues, certain groups of claims might face easier or more difficult examinations. If the restriction requirement cites prior art as justification for restriction, that cited art may inform how to make a claim election. If the restriction alludes to prior art without specifically citing any references, it may be possible to call the examiner to obtain further information about the particular prior art that the examiner has in mind.
  7. Did you intend different claims to cover different inventions, or simply want different claims to have distinct scope? In some situations, the claims may have been originally drafted to purposefully have significantly different scope. In that case, traversing the restriction might be contrary to an existing patenting strategy.
  8. Is it important to obtain a patent very quickly, or not? Certain elections or traversals of restriction may make examination take longer, such as if they result in an application being reassigned to a different examiner in a different group art unit. Although the effect on the speed of examination may be speculative at the time of the claim election.

Sometimes it is not worth the effort to challenge a questionable restriction by traversing it. Doing so requires effort. It may be more expedient and cost-effective to pursue other options, such as by amending claims and/or by cancelling claims and filing them in a new divisional application. Examiners often maintain rejections regardless of any traversal arguments, and will simply adjust the stated rationale slightly. Patent attorneys sometimes consider traversing a restriction to be a waste of time. Though if an examiner has made a substantial mistake by overlooking or misstating claim language, for instance, traversal may be worthwhile. Also, traversal is necessary to preserve the right to later petition against the restriction.

Design patent applications with multiple claimed embodiments also present unique questions with regard to the effect of an election on the doctrine of equivalents, because the concepts of literal infringement and equivalents infringement are intertwined for design patents.

An experienced patent attorney can help an applicant assess possible restriction response strategies for any given case.

Petitions Against Restriction Requirements

It is possible to file a petition against a restriction that has been made final. Such petitions are decided by technology center directors, as opposed to the Office of Petitions or some other centralized USPTO authority. However, such petitions may not be worth the effort and cost in attorney fees–unless, for instance, the applicant faces a need for multiple divisionals with a large total cost. Importantly, such a petition against a restriction may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than an appeal.

In order to preserve the ability to file a petition against a restriction, it is necessary to traverse the restriction in the initial response. Failing to traverse a restriction waives the opportunity to later file a petition against the restriction.

Rejoinder

Unelected, withdrawn claims can potentially be rejoined upon the allowance of an elected claim. Claims that depend from or otherwise require all the limitations of an allowable claim are eligible for rejoinder. Rejoinder is also possible when there is a “linking claim”. Rejoinder practice means that unelected claims might still have a chance to be included in a granted patent despite a prior restriction.

What is unintuitive about rejoinder practice, however, is that when a restriction is between product/apparatus claims and claims to a method of making and/or using the product, rejoinder is only possible if the product or apparatus claims are elected. Election of the method claims will not allow later rejoinder of unelected product/apparatus claims. This means withdrawn method claims might be keep in the application for possible later rejoinder but, when method claims are elected, withdrawn apparatus claims might instead be cancelled at an appropriate time.

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
Patents Q&A

What Is a Restriction Requirement?

The Basics of a Restriction Requirement

Patent examiners may issue a restriction requirement against a pending patent application. If two or more independent and distinct inventions are claimed in one patent application, the USPTO may require the application to be restricted to one of the inventions. A conventional restriction requirement means the examiner believes there are multiple independent or distinct inventions being claimed. The examiner will identify the different inventions by groups of claims. The applicant must then pick one claimed invention to be substantively examined for patentability. That is called making an election.

Every requirement to restrict has two aspects: (A) the reasons why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction was not required. The second aspect refers to the burden to search for prior art and evaluate the claimed invention against the search results.

A restriction requirement is not considered to be an office action on the merits. That is, it is not considered to be a substantive determination as to patentability. Restriction requirements normally arise before a first office action on the merits. However, it is also possible for restriction to arise after a first action on the merits, such as where an applicant later adds or amends claims to recite an independent or distinct invention from what was originally presented.

Examiners will frequently call the applicant’s counsel of record by phone to present a restriction requirement. This use of oral elections is meant to speed up examination and avoid the need to send written documents back-and-forth.

Election of species requirements are related to but distinct from restriction requirements among claims. Election requirements for disclosed species are discussed in detail elsewhere.

Determining Whether Claims Are Independent or Distinct

For purposes of restriction practice, claims are “independent” if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. This type of restriction is straightforward. It does not come up that often. An example of independent inventions is an application that discloses and claims an invention for a dental prosthetic device and another, unrelated invention for a chemical compound for polishing shoes.

Restrictions between related but “distinct” inventions are more common. These restrictions are closely tied to prohibitions against double patenting. The precise requirements for a proper distinctness restriction will depend on the types of claims involved. A lower standard applies to restrict out inventions in different statutory categories—generally referring to the difference between apparatus and method/process claims. However, for applications with so-called combination and subcombination claims (e.g., claims to an overall device and to a subassembly usable in it), or with claims to related products or related processes (i.e., claims in the same statutory category), a higher standard is applied. Further, even when claims are distinct, the examiner must also show that examining those claims together would pose a serious burden.

For example, a device disclosed in a patent application might have a unique mechanical actuator, a special chemical composition for a coating on the actuator, and a unique electronic controller. If each of those aspects is set forth in separate and distinct independent claims, it is understandable that a single examiner may not have expertise in mechanical, chemical, and electrical technologies to examiner each of them together. That is true even when each of the distinct invention is related in the sense of being usable together in the same device. But claiming distinct inventions in a way that means they could be used separately, without the use of the other inventions, presents the possibility of a restriction.

After a Restriction Requirement Is Issued

Following a restriction requirement, the applicant is required to elect one group of claim(s) for examination. Unelected (or nonelected) claims will be withdrawn and will not be substantively examined. Importantly, an applicant will generally be prohibited from later adding claims to an invention independent or distinct from the elected claims. There is generally no opportunity to change your election later on. Although “rejoinder” may permit previously unelected claims to be allowed if they depend from or otherwise require all the limitations of an allowable claim.

Restriction requirements can be important for later determinations. Going forward, the examiner is bound by the restriction. For instance, an examiner cannot later claim that certain claim limitations have no patentable significance when a prior restriction requirement insisted otherwise. A restriction requirement also means that double patenting is inapplicable. This means an applicant can file a new divisional application to unelected claims without receiving a double patenting rejection, avoiding the need for a terminal disclaimer. This might result in patent term adjustment that extends the expiration of the divisional patent beyond that of the earlier (parent) application.

Considerations for how to respond to a restriction of claims in a patent application are discussed here.

Why Are Restriction Requirements Made?

Because applicants can prepare patent applications any way they choose, it is possible a given application could include multiple inventions. The existence of U.S. restriction practice is the other side of the coin to the availability of divisional applications. A divisional application allows an applicant to file a further patent application to a Restriction practice is meant to prevent applicants from imposing unreasonable examination demands on patent examiners. Although if an examiner chooses not to restrict claims in a given application that has no effect on validity of a resultant patent.

Examiners have considerable discretion about issuing restriction requirements. There is considerable variation in how restriction practice is utilized by different examiners, and also between different art units or technology centers at the USPTO.

Applicants are sometimes frustrated by restriction requirements that have the appearance of an examiner trying to avoid work or to game the “count” system that is used internally by the USPTO to track examiner productivity, by forcing the applicant to file a divisional application. At times, the rationales given for restrictions can seem unconvincing or circular. On the other hand, applicants seeking to avoid the fees normally associated with filing separate patent applications for independent and distinct inventions are rightfully subject to restriction requirements.

PCT National Phase Entry Applications

Regular restriction practice does not apply to PCT national phase entry applications. Instead, a unity of invention standard governs, which requires having a common or corresponding special technical feature that defines a contribution over the prior art. However, U.S. examiners can still issue requirements to elect a particular invention in national phase applications and withdraw unelected claims and the procedures are similar. Applicants must still make elections and rejoinder of withdrawn claims is still possible. This means that the ultimate effects are similar though the terminology differs somewhat. If anything, there is slightly greater leeway for applicants to amend the claims to keep them together under the unity of invention standard.

It is important to note that the USPTO can make an independent determination of unity of invention. Prior indications by the international search authority or international preliminary examining authority in the international phase of a PCT application are not binding in the national phase. That means that even if a prior PCT written opinion indicated that claims posses unity of invention, the U.S. examiner could disagree and still issue a unity of invention restriction in the national phase.

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
Copyrights Patents Q&A Trade Secrets Trademarks

What Should I Do If Another Business is Infringing My IP?

An appropriate response to infringement (or misappropriation) will depend on which type(s) of intellectual property (IP) rights are involved.  While some forms of infringement can be enforced by the government, prosecutors rarely take up disputes between competitor businesses. This leaves it up to the IP owner to pursue a civil remedy. Therefore, the first step is generally to conduct your own investigation to ascertain your IP ownership rights, ascertain the identity of the infringing party or parties, preserve evidence of the infringement, and perform a legal analysis to confirm that the conduct in question is prohibited by law. Following an investigation, a cease & desist (demand) letter could be sent, a lawsuit initiated, or possibly other action taken.

Tip: Consider implementing a proactive monitoring program to search for and identify potential infringement of your IP. No one else will identify infringement for you.

As part of your initial investigation of infringement, the legal analysis should consider:

  1. do you have a chain of title to the IP (that is, can you prove ownership)?
  2. does the conduct fall within the scope of your enforceable exclusive rights or is the conduct permitted by law (such as a “fair use” under copyright law)?
  3. did the other party have permission?
  4. what jurisdiction(s) is the infringer located in?
  5. what remedies are available for the type of infringement involved? 

Following an initial investigation, which should be performed with the assistance of a knowledgeable attorney, it is common to send a cease & desist or other demand letter.  This puts the infringer on notice of the claim of infringement, which can remove innocent infringer defenses going forward, trigger the accrual of damages, etc.  A letter might be sent to a publisher, distributor, web host, etc. as well, which can have significance under safe harbor provisions for some types of IP.  If a letter is ineffective, or simply not desired, litigation or certain non-litigation action should be considered. 

As to litigation, patent and copyright actions are handled exclusively by U.S. federal courts and generally require having a patent or copyright registration (at least for copyrightable United States works) before filing suit.  Trademark, trade secret, cybersquatting, and false advertising actions can sometimes be brought in either federal or state court.  A trademark registration is not required to bring suit in the U.S.  A statute of limitations or equitable limits may apply, such as a 3-year limit for copyright infringement claims and a 6-year limit on back damages for patent infringement. 

Remedies may be available outside of courts as well, though often without monetary recovery.  For example, administrative agencies such as Customs & Border Protection and the International Trade Commission can block or exclude importation of infringing goods, and a copyright small claims action may be available.  Online platforms and marketplaces may also have their own IP dispute resolution procedures and mandatory arbitration (e.g., UDRP, URS) may apply to domain name disputes. 

With some exceptions, many IP rights are generally enforceable on a jurisdictional or territorial basis.  If infringement implicates activities in another country, the available remedies and requirements to pursue a claim can vary widely and you may need to consult competent foreign legal counsel. 

Many IP disputes reach settlements, though it cannot be assumed that parties will be able to reach a pretrial settlement.  When considering bringing an infringement or misappropriation suit, bear in mind that awards of attorney’s fees are not always available or likely.  The cost to pursue an IP lawsuit might exceed the monetary recovery, though the benefits of stopping infringement or misappropriation may still be worth the unrecoverable expenses of a suit in some situations. 

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
Copyrights Patents Q&A Trade Secrets Trademarks

What Should I Do to Avoid Infringing Anyone Else’s IP When Releasing a New Product?

Here is a common scenario. Your business is planning to release a new product but wants to avoid infringing anyone else’s IP. What should you do? To avoid infringing anyone else’s IP, you should consider proactive clearance or freedom-to-operate (FTO) efforts, ideally before the new product is commercially launched.  Such efforts are not legally mandated but should be tailored to your businesses’ risk tolerance in light of the typical costs of patent, trademark, copyright, and trade secret litigation.  The scope of these efforts will depend upon the type of IP involved.  Specific efforts may also depend on where you are planning to release the product, geographically. The following discussion focuses on the USA.

General Tips

Consider implementing overarching policies and protocols to reduce IP infringement (or misappropriation) risks. Educate and supervise staff accordingly. Do not simply assume that employees will already understand or care about IP infringement and misappropriation risks.

Make reasonable efforts to avoid infringement, including proactive clearance/FTO efforts where appropriate. But accept, as a cost of doing business, that despite those efforts there will always remain some risk that a “troll” will make an IP infringement claim of dubious merit.  Failing to make reasonable efforts will just make it easier for others to target you with infringement claims that are expensive to defend.

When making goods or materials at the request of a customer (e.g., as supplier for a retailer), be cautious of harsh and potentially predatory indemnity or warranty terms in purchase agreements. These can come into play if the customer is requesting infringement—either intentionally or merely negligently—while passing all infringement liability onto your business.  You might be agreeing to assume IP infringement risks that far exceed the commercial value of the contract. This is also concern where infringement liability may depend on customer actions outside your control.

Patents

For patents, the most common type of patent infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s patent(s). However, though knowledge and intent (willfulness) can impact damages. Also, indirect infringement—a category of certain types of infringement—may require knowledge of the patent and that your activities infringe.

Consider a pre-launch patent FTO study that initially involves a search for any potentially conflicting patents, followed by a legal analysis. Proactively performing a patent FTO study allows you to find potentially problematic patents before they find you. That makes possible certain risk reduction efforts, such as an opinion of counsel, a design around, seeking a license, etc.

Trademarks

For trademarks, infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s trademark. Liability can arise if there is a likelihood of confusion, even in the absence of any actual confusion by consumers. Trademark infringement does not have to be willful to result in a damages award. Also, there is a presumption that a trademark owner can obtain an injunction against use of an infringing mark.

When adopting new branding, it is not unusual for a first-choice mark (and second-choice…) to be already taken by another business. Many marks are already taken by others, which limits the universe of marks freely available for your business’ use at the time of adoption. It may be preferable to select a different mark from the start than to later re-brand, because re-branding tends to become more burdensome, costly, and disheartening as time passes.

Consider a pre-launch trademark clearance that initially involves a search for any potentially conflicting trademarks, followed by a legal analysis. Such a search should encompass all the relevant jurisdictions (e.g., all countries where your brand or mark will be used). Registration is not required to have enforceable trademark rights in the U.S. So a clearance search should ideally assess possible unregistered marks too.

Copyrights

For copyrights, there must be unauthorized copying of protected expression. Though there can be risks from copying that happens though inattention or negligent conduct. Fair use limits the copyright owner’s exclusive rights, but fair use will not always apply (and usually won’t when simply making commercial use of a work rather than making critical commentary about the work). There are many misconceptions about copyright law. For instance, just because something is available on the Internet does not make it “fair game” for your business’ use—even if denoted as being “free” or “royalty free”.

Have an awareness of copyright infringement risks. Also be aware of the ways that employees might commit infringement. For instance, employees posting materials to online platforms under via company accounts can present copyright infringement risks. Consider ways to educate employees about copyright and supervise employee activities.

Perform copyright clearance for any materials that you did not wholly create yourself that you plan to use, and obtain written permission or a license or assignment of ownership. Retain records of written authorizations. And make sure that you adhere to the terms of any license. Also consider seeking an indemnity for any licensed materials, because you could be licensing materials that are themselves infringing.

Trade Secrets

For trade secrets, there must be misappropriation of secret materials. Though there can be risks from misappropriation that happens though inattention or negligent conduct. However, trade secret misappropriation will generally only arise if your business had received secret information from someone else. This could occur by hiring an employee who knows confidential information from a prior employer.

For trade secrets, review any non-disclosure agreements (NDAs) in place and consider clean room or other protocols if any confidential materials were or will be received by staff. 

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
Agreements Copyrights Patents Q&A Trade Secrets Trademarks

How Can My Business Acquire and Own IP Rights?

Some intellectual property (IP) rights arise automatically under certain circumstances while others require affirmative action. 

PRACTICAL TIP: Think about IP early to avoid waiving potential rights and consider the benefits of optional protections.

Copyrights

Copyright attaches automatically to the author when a new creative work (e.g., text, photo, etc.) is fixed in a tangible medium of expression.  Registration is not required for copyright to exist.  Copyright ownership is also independent of possession and ownership of a copy of a work—even the “original” or sole copy. 

Trademarks

Trademark rights can arise through use of a mark in commerce to identify the source of goods or services, provided that the mark is distinctive.  Registration is not required to have enforceable trademark rights in the U.S.  However, registration of a mark, particularly a federal registration on the Principal Register, helps to secure rights through the entire country and over time can limit the possibility for others to challenge the trademark rights in the registration.

Trade Secrets

Trade secret rights can attach to information that derives economic value from not being generally known and not being readily ascertainable so long as you take reasonable measures to keep it secret, meaning the existence of trade secret rights depends on the affirmative steps you take to maintain secrecy. 

Patents

Patent rights require applying for and then obtaining a patent following an examination to determine if the invention satisfies criteria for patentability.  In the U.S., a patent must be applied for within one year of any disclosure, public use, or commercialization of the invention by the inventor. In most other countries, a patent must be applied for before any public disclosure.

International Considerations

Patent and trademark rights are territorial and rights in the U.S. will generally not provide exclusive rights abroad.  Copyright and trade secret rights may have international enforceability in both the U.S. and some foreign jurisdictions. 

Assignments and Licenses

IP rights can also be obtained from others via assignment (i.e., a transfer of ownership) or licensing (i.e., authorization to use the IP without a transfer of ownership).  For many types of IP, assignments must be in writing and/or satisfy other criteria to be valid.  Trademark rights are tied to underlying customer goodwill and cannot be assigned apart from that goodwill.

Employee- and Vendor-Created IP and Joint Development

When employees create things that may be subject to IP rights, the general rule—with some exceptions (notably for copyrightable works made for hire created by an employee within the scope of his or her job duties)—is that the employee rather than the employer is the owner.  Businesses wanting to obtain ownership of employee-created IP should consider a written agreement (e.g., employment agreement) that establishes either an obligation to assign IP (to be followed later by execution of an assignment) or a prospective assignment of any expected future IP.

When hiring a vendor to create or develop something, or jointly developing something with a business partner, consider who will own the IP at the outset. Merely paying for development will not automatically result in the transfer of ownership of vendor-created IP. Joint development can raise complex questions about who will own what, and ownership of particular IP may depend on which person(s) or entity contributed to that particular subject matter in the absence of a written agreement.

A common mistake is to ignore ownership of IP rights until there is infringement or a big business deal. Attempting to “fix” or alter IP ownership after the fact is usually much more complicated than sorting that out from the start of a vendor/partner/employee relationship (or even at the start of a particular project).

Online Resources:

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 Trademarks

How Do I Protect My Business’ Name and Logo?

Trademark law can protect a brand name (in words), graphical logo, or the like—a “mark”—used to identify the source of goods or services.  But not all marks are protectable.  It is not unusual for a first-choice mark (and second-choice…) to be already taken or simply not be protectable. The following is an explanation of the basics of how a business’ name and logo can be protected under trademark law.

The first step is to select a mark that is distinctive enough to be protectable.  Generic terms (or functional aspects) are never entitled to protection under trademark law.  Merely descriptive terms are not protectable but descriptive marks can potentially develop “secondary meaning” and acquire distinctiveness in consumers’ minds over time, through extensive use and promotion, so as to become protectable.  Suggestive, arbitrary, or fanciful marks are inherently distinctive and thus always protectable. Arbitrary and fanciful marks have the greatest legal strength, in conceptual terms. 

A common problem is that businesses select marks that are not conceptually strong enough to merit exclusive rights as trademarks. Businesses are frequently drawn to descriptive or generic terms because they require less initial investment to obtain consumer recognition. But the tradeoff is that generic and descriptive marks are considered conceptually “weak” and offer less or no legal exclusivity.  In this respect, business and marketing considerations can be in tension with legal considerations under trademark law. If exclusive trademark rights are important to your business, make sure you select a mark that is good enough in legal terms to be protectable under trademark law.

Secondly, trademark rights generally go to the senior user.  If your business’ mark creates a likelihood of confusion with an existing mark, the prior user will have superior rights.  There can be a likelihood of confusion even if there are differences between the respective marks or goods/services, and evidence of actual confusion in the market is not required.  Though a protectable but weak mark, such one that resembles numerous other coexisting marks, will have more limited scope of exclusivity than a stronger mark.  Additionally, geographically separate but otherwise similar uses can sometimes coexist, and a prior user might consent to coexistence in some circumstances—often subject to certain conditions to avoid confusion.  Many marks are already taken by others, which limits the universe of marks freely available for your business’ use at the time of adoption.   

Trademark rights in the U.S. arise from commercial use of a mark.  “Common law” rights can accrue automatically through use of a mark but are generally limited to the geographic area in which the mark is actually used.  Registering a mark has benefits, and a federal registration on the Principal Register can secure rights over the entire country and can be used to prevent unauthorized importation of goods bearing the mark.  Trademark rights can be abandoned through nonuse without intention to resume and federal rights are presumptively abandoned after three years of nonuse. 

Trademarks are also territorial. Rights in one country generally provide no exclusivity in another.  But most countries have no use requirement; many follow a first-to-file system and may provide little or no common law rights based on use alone. 

After adoption of a mark, use it properly and consistently, and monitor for potential infringing uses. Additional steps can also be taken to enhance protection of a trademark.

Useful Tips:

  • Use care when selecting a mark to avoid having to later re-brand, which becomes more burdensome over time.  Identify and evaluate potentially conflicting marks as part of initial mark selection.  In doing so, consider all jurisdictions and scenarios under which your business plans to operate, including likely future expansion as to goods/services and geographic areas. A trademark legal clearance can help identify potentially conflicting marks and associated infringement risks.
  • Registration of an Internet domain name or a corporate name (trade name), or both, does not alone establish any exclusive rights in a brand or mark under trademark law. 
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 Trademarks

What is the Process to Register a Trademark?

The process to register a trademark (or service mark) involves submitting an application, which is then substantively examined and a registration is ultimately either issued or refused.  Post-registration action is required to maintain a registration, which can potentially last indefinitely provided that the registered mark is still in use.  Both federal and state trademark registrations are available in the USA, and registration is also available in foreign countries.  In many jurisdictions, including for U.S. federal applications, marks are published for potential opposition by others prior to registration.  Trademark registrations are also subject to cancellation (or expungement, etc.) under certain circumstances. 

Federal registrations are handled by the U.S. Patent & Trademark Office (USPTO), which oversees two registers: the Principal Register and the Supplemental Register.  Only registration on the Principal Register establishes a presumption of exclusive rights in a mark. 

Not all Registrations are Equal in the U.S.: Federal trademark registration on the Principal Register is almost always preferable to state registration because much more expansive national rights are obtained, which is significant in the age of the Internet.  Also keep in mind that a federal registration on the Supplemental Register does not by itself establish exclusive rights, although it can block a later conflicting registration. The value of state-level registrations varies. Some state trademark registrations provide no presumption of exclusive rights.

Basic Requirements of a Federal U.S. Trademark Application

A U.S. federal trademark application must identify the mark, the associated goods and/or services, and a filing basis. 

Identification of Mark

The identification of the mark establishes what, exactly, constitutes the mark, which can include words (e.g., in “standard characters”) and/or graphical elements (e.g., color, stylized font, a design), depending on the nature of the mark.  Importantly, a mark but be one specific thing. Different spellings or different visual depictions potentially represent different marks. A trademark application must be limited to one mark, with any other potential marks pursued in separate applications.

Identification of Goods and Services

The goods and services must be identified and grouped according to a classification system, with filing fees calculated based on the number of classes of goods/services included.  There is some skill involved in wording these identifications of goods and services appropriately. One important consideration is that for U.S. federal registrations it is not possible to simply “reserve” a mark, that is, merely to block others from using it. Use of the mark with all the identified goods and services must have already occurred or at least be intended in the future. Therefore, crafting a proper identification of goods and services requires first understanding how the applicant is currently using and/or legitimately intends to use the mark.

Filing Basis

As to filing bases, first, an application can be based on actual use in commerce, that is, the mark is already in use.  Evidence of use in the form of a “specimen” must be submitted with such an application and the date of first use in commerce must be specified. 

Alternatively, a federal application can be filed based on a bona fide intent-to-use (ITU).  In this case, the mark has not yet been used in commerce but the applicant has a good faith intention to do so.  The ITU application filing date establishes constructive use in commerce.  But a statement of use (with a specimen) is still eventually required in an ITU application in order to obtain a registration—with paid extensions of time the applicant has up to about three years to do so. 

Federal U.S. registrations based upon prior foreign registrations and applications as well as Madrid Protocol extensions based on a foreign application or registration are also possible. 

Lastly, it is possible for a given application to include multiple filing bases. This is most common when a mark has already been used with some but not all goods or services, but use with the further goods/services in the future is intended. It is also common when priority to a foreign trademark registration or application is involved.

The Examination Process

Trademark office examination involves a search for conflicting registrations and an analysis of whether the applied-for mark meets applicable legal criteria.  This is called trademark “prosecution”. Applicants can respond to any refusal sent in an “office action” by making amendments and arguments.  Appeals from refusals are also possible. Additionally, even if a trademark examiner believes a mark is registrable, third parties can oppose registration and can later challenge an issued registration.

Federal registrations can take anywhere from a matter of months to years to obtain, provided that the mark is registrable at all.  The timeline tends to be longer when there is a refusal (for instance, based on a prior conflicting registration or application) or an opposition to registration is lodged. State registrations take a matter of days to weeks, provided the mark is registrable.  Foreign registration timelines vary widely. 

Helpful Tips:

  • Although U.S. applicants can apply for registration themselves, subject to identity verification, legal advice from a knowledgeable attorney can help in obtaining the best and most appropriate coverage. Foreign trademark applicants are generally required to hire a licensed U.S. attorney.
  • Registrations of word marks in “standard characters” are usually the broadest because they do not include any limiting claim as to color, font, or other graphical elements in a mark that includes one or more words.  On the other hand, words that are unregistrable in standard characters alone can sometimes become registrable when distinctive graphical elements are added as part of a “composite” mark that includes both word(s) and graphical element(s). 
  • State-level registration might be worthwhile if usage does not qualify for federal registration, such as purely local usage that is not part of interstate commerce.
  • Trademark registrations are territorial. A registration in one country will generally not provide exclusive rights in any other country. Consider foreign registration(s) if a mark is or will be used in multiple countries.
  • Registrations are generally even more important in other countries, where trademark rights are often determined on a first-to-register basis—sometimes without regard to priority of actual use.
    • For example, unrelated companies concurrently using similar brands in two different countries but later expanding to a common third country can sometimes lead to disputes.
    • As another example, outsourced manufacturing can also sometimes lead to trademark disputes. Export-only manufacturing in a foreign country of goods having trademarks applied to them may still be considered trademark use under foreign law (e.g., “OEM” manufacturing in China), even without any local commercial sales in that foreign country.
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.