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Patents Q&A

What Are Claims in a Patent?

Patents and patent applications typically have one or more “claims”. But what are claims? What is the significance of claims in patent law? This article offers a brief explanation of what they are and why they matter. It also explains some common misunderstandings and misconceptions about patent claims that can lead to great confusion.

Purpose of Claims

Patents provide exclusive rights in the form of a limited monopoly to an invention. Claims define the scope of exclusive legal rights in a granted patent or, in the case of a patent application, the scope of exclusive rights being sought. In other words, when thinking of patents as being premised on a quid pro quo, claims define the boundaries of the exclusive rights granted by a government to the patentee in exchange for disclosing an invention.

A common way to explain patent rights is to analogize them to real property (that is, land ownership). The claims are what establish the boundaries or metes-and-bounds of legal rights to a given patented invention. So claims are a bit like lot lines that establish the perimeter of a plot of land. Anything falling within the scope of a claim is protected. Just like the area within lot line boundaries belongs to the landowner.

Consider this simple guideline for granted patents: anything claimed is patented, and anything not claimed is not patented. In that sense, claims put others on notice of the scope of exclusive rights held by a patentee. And, when a new patent application is filed, the claims are the main focus of examination to determine if the invention (as claimed) is patentable. A patent is only being sought for what the claims of a given application recite.

Under U.S. patent law, claims are considered a part of the “specification” of a patent application. The basic requirements for claims are set forth in Section 112 of those patent statutes:

“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”

35 U.S.C. § 112(b)

When the U.S. patent laws set out what constitutes infringement of a “patented invention” (35 U.S.C. § 271). This is a reference to the claims. That is because the claims are what define the scope of the patented invention.

However, patent laws may differ between countries. For instance, the USA follows what is called peripheral claiming. Peripheral claims set forth the outermost boundaries of the exclusive rights with reasonable clarity, and anything outside the claims is generally not protected (with a rare exception under the doctrine of equivalents). But some other countries follow central claiming instead. Under central claiming regimes, the claims set out a basic inventive concept and the exclusive patent rights encompass an area that might extend beyond the literal scope of the claim language based upon the inventor(s)’s contribution over the prior art (as later determined by a court). Peripheral claiming makes the scope of rights more certain prior to an infringement lawsuit.

Content

What claims say and how they say it varies. They are unique to each application or patent. They are also written by patent applications, who have considerable discretion over what they recite and how they are formulated. Claims are meant to define inventions, so they necessarily vary to reflect the particular subject matter of a given invention. But any given claim might define an invention broadly or narrowly in scope, relatively speaking.

In order for a patent application to be found patentable, its claims have to meet the requirements for patentability. Among other things, this means that the claims must distinguish the invention over the prior art. Accordingly, claims of a given application may try to distinguish the prior art by reciting elements (also called limitations) that go beyond what was already known.

Claims can be—and often are—amended, and may between an original application, a pre-grant published application, and/or a later-granted patent. Claims might also be canceled/deleted or new claims added during examination (which is also called “prosecution”). There are even procedures to amend or correct claims after a patent has issued. This means that the substantive content of the claims can change over time. Sometimes this means that a given claim is narrowed by amendment to establish patentability. This can give rise to prosecution history estoppel.

The interpretation or construction of terms in a patent claim is very important. For instance, certain terms of art may have special legal or technical meaning. The way claims are interpreted can vary greatly between different jurisdictions.

Format

The format in which claims are written follow some general guidelines, even if their substantive content varies. For instance, they always appear at the very end of U.S. patents. They are each written as a single sentence. Parts of a claim may start on separate lines with special indenting to highlight distinct clauses. Although any given clause might contain multiple discrete limitations or elements. It is common for claims to use words like “wherein” and “comprising” that are not often used in everyday speech.

Means-plus-function (or step-plus-function) limitations are also a special type of claiming format permitted in the USA (35 U.S.C. § 112(f)). These limitations are interpreted to cover corresponding structures, materials, or acts disclosed elsewhere in the patent or application (and their known equivalents). Understanding when means-plus-function claiming is invoked or applies, and how to properly interpret the scope of that limitation, is sometimes difficult. But one rule is clear. There can be no “single means” claims, because a claim that contains only a single limitation in means-plus-function format would be an impermissible central claim rather than a peripheral claim.

A patent may have only one, a few, or very many claims. Typically, each claim is separately numbered. Some claims may refer back to prior claims by number. However, U.S. design patents have only a single unnumbered claim. U.S. plant patents also have only a single claim but it is numbered. Regardless of how many are present, each claim is generally considered separately. In this respect, claim numbering helps indicate how many different definitions of a given invention must be considered when evaluating either patentability/validity or infringement.

Types of Claims

Independent Claims vs. Dependent Claims

Claims can be either independent or dependent (35 U.S.C. § 112(c)). An independent claim stands on its own. In contrast, a dependent claim refers back to a prior claim (by number) and incorporates the limitations of all base claims (35 U.S.C. § 112(d)). The status of a given claim as either independent or dependent can have important legal significance for patentability/validity and other analyses.

The following is an example of a set of four claims in which claims 1 and 4 are independent claims and claims 2 and 3 are dependent claims:

1. An apparatus comprising an element A, an element B, and an element C.
2. The apparatus of claim 1, wherein the element A and the element B are each made of metal.
3. The apparatus of claim 2, wherein the element A is welded to the element B.
4. A method comprising step X, step Y, and step Z.

In the example above, claim 2 depends from claim 1. Because of that dependency, claim 2 incorporates all of the elements or limitations of independent base claim 1 and further adds an additional limitation. Claim 3 depends from claim 2, which in turn depends from claim 1. This means claim 3 incorporates all of the limitations of both base claims 1 and 2 and further adds an additional limitation. Claim 4 is another independent claim, which stands on its own. The limitations of claims 1-3 are not incorporated into claim 4.

Claim 1 of any patent or patent application is always an independent claim, because there is no prior claim to refer back to. Any claims that follow claim 1 might also be independent, or might be dependent. This depends on how they are written. Patentees have considerable latitude over how many claims and what types of claims are present. Although dependent claims are not permitted in U.S. design or plant patents.

When analyzing patents and patent applications, independent claims usually always require consideration, while dependent claims might not in some situations. For example, when assessing potential infringement, a dependent claim can only be infringed if its independent base claim is also infringed. But an independent claim might be infringed even if no dependent claim is infringed. So, in many contexts, dependent claims can be thought of as reciting optional features. Yet dependent claims might still be important. Validity and patentability are assessed on a claim-by-claim basis, so while an independent claim might be unpatentable (or invalid), dependent claims depending from it might still be patentable (or valid).

Multiple Dependent Claims

Multiple dependent claims are also possible (35 U.S.C. § 112(e)). A multiple dependent claim refers back to multiple prior claims in the alternative. Examples of multiple dependent claim references are “the method of any preceding claim” or “the apparatus of claim 1 or 2” or “the system of any of claims 2, 4, and 8.” The easiest way to think about multiple dependent claims is that they always present a single claim that is equivalent to having a number of separate dependent claims that each depend from different base claims.

Omnibus Claims

An omnibus claim makes a general incorporation into a claim of some other disclosure, without specifically defining the invention or even a central inventive concept. An example is “The apparatus substantially as shown and described.” Omnibus claims are permitted in some jurisdictions, but not in U.S. utility patents. Except U.S. design patents always have only a single omnibus claim reciting the design “as shown and described” (37 C.F.R. § 1.153(a)). And U.S. plant patents always have a single claim in omnibus format that states “as described and illustrated” (37 C.F.R. § 1.164)—although plant patents cover only asexual reproduction of the patented plant, through grafting, cuttings, etc., which distinguishes their claims from true omnibus claims in terms of their effect.

Other Types

There are a number of other names given to certain types of claims, often more informally. For instance, Jepson claims specifically identify the point of novelty (in a manner called two-part form in many jurisdictions), combination claims recite a particular combination of components, a Beauregard claim recites a computer-readable medium on which computer program instructions are encoded, product-by-process claims recite an apparatus in terms of how it is made, etc.

Difference Between Claims and Other Disclosures

One of the most important things to understand is that the claims of a given patent—and not other parts of a patent like the detailed description or drawings— define exclusive rights to a patented invention. As already mentioned, what is claimed is patented and what is not claimed is not patented. This means it is possible to have unclaimed disclosures in a given patent. For instance, a patent might include a drawing illustrating a prior art device but not claim it. In other cases, a patent might claim only one or a few particular embodiments or “species” of an invention and not a generic invention (or entire “genus”).

When trying to understand if their is risk of infringing someone else’s patent, a mistake frequently made by people unfamiliar with patent law is to look at the drawings or some other text in the specification (like the detailed description section) and assume that any and all such disclosures are “patented”. That is incorrect. Only the claims define the patented invention. There are many reasons why there might be unclaimed subject mater disclosed in a patent—including a patent office determining that some aspects were or are not patentable. But often those reasons are unimportant. It is the claims, as properly construed, that define the scope of the patentee’s exclusive rights.

In contrast, if a given prior art patent or published patent application is cited as prior art, it usually makes no difference whether the relevant prior art teachings were claimed or not. Most of the time the claims are irrelevant to the value of a given reference as prior art—with some exceptions for situations like double patenting.

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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 Do AFCP 2.0 Requests Work?

The U.S. Patent & Trademark Office (USPTO) has a patent-related pilot program called the After Final Consideration Pilot 2.0 or “AFCP 2.0”. How does this AFCP program work, and how can these requests be made? This article addresses those basic questions.

Basic Contours of the Pilot Program

AFCP 2.0 is meant to foster compact prosecution. It aims to reduce the number of requests for continued examination (RCEs) and to foster examiner-applicant collaboration. To do that, the program authorizes additional time for examiners to search and/or consider qualifying responses after a final rejection. The program also involves an examiner-initiated interview if the response does not result in allowance. Some information about the program is available from the USPTO online, including some limited answers to frequently asked questions (FAQs).

The crux of the AFCP 2.0 program is that it expands the amount of time examiners have to act on a given after-final amendment to a pending patent application. Understanding how time constraints work during examination and how AFCP alters them is therefore important in order to grasp how the program may or may not benefit an applicant. However, the USPTO does not widely publicize how much time examiners have to begin with to consider an after-final response, or how much additional time is provided. These time constraint matters are taken up below.

Currently, participation in the program is free, but the USPTO has proposed an official fee requirement intended to go into effect in 2025.

As a pilot program, AFCP is implemented yearly. But it has been renewed every year since its inception.

Examination Time Constraints

The first point to understand is the “count” system that governs USPTO examiners’ work. Essentially, it is tied to a collective bargaining agreement with the unionized examination corps. This count system is complex. But the most important feature is that it basically allocates a fixed amount of time for examiners to spend on a patent application, based upon pre-determined levels of technological complexity and the particular assigned examiner’s seniority status. This averages only about nineteen or twenty hours per application, but can be much less or much more than that for a given application. For instance, some examples of these time variations by technology area are given here and here. And an explanation of examiner seniority-based variations is found here.

Under normal circumstances (not under the AFCP program), an examiner may spend only about 30 minutes considering an after-final response.

The USPTO’s Federal Register notice and web page about AFCP mentions only “a set amount of time”, without specifying the length of additional time allocated. But relevant information is available elsewhere. In actuality, the additional examination time allocated for each granted AFCP 2.0 request is 2-3 hours. For utility and plant applications, there is an additional two hours of substantive search/consideration time plus one extra hour of time for an interview (which can be reallocated for substantive examination potentially, in the absence of an interview). For design applications, there is only one additional hour of substantive examination time, plus the same one hour of additional interview time (which can also be reallocated in the absence of an interview).

Eligibility Requirements

There are a number of requirements to for an after-final amendment to qualify for this pilot program. The most important ones are:

  • There is an outstanding final rejection of at least one claim
  • An amendment is made to at least one independent claim that does not broaden the scope of that independent claim in any aspect
  • A certification and request (on USPTO form PTO/SB/434) is filed with the responsive amendment

The complete requirements can be found on the USPTO’s AFCP request form or via the USPTO’s program explanation web page.

Importantly, the required amendment to an independent claim does not have to be a narrowing amendment. It could merely be a clarification or correction of an error. Also, the program does not preclude a broadening amendment to another claim.

How to Make an AFCP Request

The key to making an AFCP request is to submit the required USPTO form along with an after-final amendment that meets the eligibility requirements discussed above. These requests must be filed electronically and not in hard copy by mail. The request form looks like this:

Image of main page of the USPTO's "Certification and Request for Consideration Under the After Final Consideration Pilot Program 2.0", form PTO/SB/434 (version 3-22)
USPTO AFCP 2.0 Certification and Request form PTO/SB/434 (version 3-22 shown)

Currently, there is no fee for this request. However, the USPTO has proposed an official fee requirement intended to go into effect in 2025.

The certification on the form indicates that the applicant is willing and able to conduct an interview. Nonetheless, substantive program materials contemplate that an applicant might later be unavailable or refuse an interview—contrary to what is stated at the end of section 8 of the USPTO’s certification and request form.

Is an AFCP Request Worthwhile?

Is it worthwhile, or a good idea, to make an AFCP request? Every case is different and there is no one correct approach. From an applicant’s perspective, an AFCP request is relatively easy to file. And the time needed for an interview may be short and not by itself a deterrent to making a request. So an AFCP request is often worth making if an independent claim is being amended. Whether it is desirable to amend a claim merely to qualify for AFCP 2.0 is another question entirely, and not something automatically recommended as a general matter (but possibly worthwhile in some circumstances).

This program tends to be most effective with relatively straightforward amendments. Or with amendments resulting from an examiner interview. Amendments implementing something essentially already suggested by the prosecution history tend to get a lot of benefit from it.

But the additional time allocated by an AFCP 2.0 request is not that large. That is particularly true if significant searching and consideration by the examiner is necessitated by a given response. Substantial, complex, or extensive amendments and/or arguments often require more examiner time to evaluate. These might not be resolved through the program. Applicants cannot expect miracles. All this is to say that after-final practice runs up against the count system and the time examiners are willing and able to allot to handling applicant responses. AFCP 2.0 may give examiners a little more time, but whether that additional time is enough time will vary widely on a case-by-case basis.

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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 Is the Deadline to File a Continuing Patent Application?

A continuing patent application such as a divisional, continuation, or continuation-in-part (CIP) is possible in the USA. But what is the deadline to file one of these applications?

What Is a Continuing Patent Application?

A continuing patent application is one that claims priority to (or the domestic benefit of) a prior U.S. patent application or PCT international application that designated the USA. (See 35 U.S.C. §§ 120 and 121 and 37 C.F.R. § 1.53(b)). That means these are follow-on patent applications. They always relate back to one or more prior “parent” application(s). These can also be referred to as “child” applications in a patent “family”.

In other countries, the terminology for continuing applications may differ. For instance, many countries permit only subsequent “divisional” applications, and do not have different names for different types of continuing applications.

Deadline to file a Divisional, Continuation, or CIP Patent Application

Section 120 of the U.S. patent laws establishes that a continuing application (including divisionals, continuations, and CIPs) must be filed “before the patenting or abandonment of or termination of proceedings” of a parent application. In addition, USPTO regulations under 37 CFR § 1.78(d) state that a continuing application can be filed while the parent application is “copending”.

The Federal Circuit has ruled that so-called “same-day” continuing application filings are permitted, meaning a continuing application can be filed on the same day that a parent application issues as a patent. This confirmed longstanding U.S. Patent & Trademark Office (USPTO) practice, despite the statutory language literally saying “before” rather than “copending” or referring to the same day of patenting. Currently, this means that continuing applications can be filed up to and including the date that a parent application issues as a granted patent.

Another important aspect of the USPTO’s “copending” requirement is that the parent case cannot be abandoned. If the parent case will not issue, but an office action or the like is outstanding, then it is necessary to file the continuing application either (a) during the shortened statutory response period in the parent case or (b) after the shortened statutory period but before the maximum six-month statutory period along with the payment of monthly extension of time fees in the parent application. In other words, extension of time fees may be required in the parent case in order for the continuing application to be considered “copending”. This is referenced obliquely in MPEP § 710.02(e) and more clearly in old USPTO notices.

For continuing applications related to a prior PCT international application, such as a PCT “bypass” application in the U.S., the USPTO’s “copending” requirement means that the continuing application must be filed by the national phase entry deadline. In the U.S. this is 30 months from the earliest priority date.

The deadlines for continuing applications in other jurisdictions (often referred to only as divisionals) varies considerably. Deadlines for divisional or other continuing applications in foreign patent offices may arise much sooner than the deadlines under U.S. patent law and practice. For instance, Brazil requires divisional filing before a final office action or allowance is issued, which is a date that cannot be precisely determined in advance.

Best Practices

It is a best practice to file any continuing application as early as possible, and in the USA no later than with the payment of the issue fee or by the shortened statutory period deadline for a response in the parent case. While it may be possible to file a continuing application after such a date, problems and additional fees could arise.

For example, the Federal Circuit decision allowing continuing application filings on the same day as issuance of the parent is contrary to the literal language of the status, and might be overturned someday. There may also be filing system outages, illnesses or other complications that make a last-minute same-day filing difficult as a practical matter.

Also, the USPTO’s switch to “eGrant” electronic-only patents means that the delay between issue fee payment and subsequent issuance will become shorter than when hard copies were printed and mailed in the past. Indeed, on this point the USPTO has formally commented that reducing patent pendency is required by statute, while giving applicants time to file continuing applications is not, so “[a]pplicants should file their continuing applications as early as possible, preferably prior to payment of the issue fee to avoid any loss of rights.”

If an office action is outstanding in a parent case that will be abandoned, filing continuing applications early also avoids the need to pay an extension of time fee in the parent. The need to pay that extension of time fee in the parent might also be easily overlooked and missed, jeopardizing any resultant patent.

Lastly, delays in filing a continuing application may also delay examination and chip away at the available term for any resultant utility or plant patent issuing from a continuing application. (However, this point is not a concern for design patents, which have a fixed term from issuance).

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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 Is a Published Patent Application?

People unfamiliar with patents and patent law are often confused about published patent applications. This article provides a brief overview of what a published patent application is and, importantly, how it differs from a granted patent.

Contents of a Published Application

Pre-grant publication means that patent applications that have not yet been fully examined are published while still pending. This gives the general public a view of the contents of the pending application. And even if no patent is ever granted, the contents of the published application are normally still made public (with some exceptions). Published patent applications can be relied upon as prior art against later applications. In the USA, only non-provisional utility and plant patent applications are subject to pre-grant publication. Pre-grant publication normally occurs after eighteen months have elapsed from the earliest priority date.

A published patent application—or patent application publication—will take a form determined the relevant jurisdiction. In the USA, for example, each application is specially formatted for pre-grant publication in a two-column format using paragraph numbers. This means the appearance of the published application will differ from what the applicant(s) originally filed.

Excerpt of the front page of United States Patent Application Publication Number US 2023/0000001 A1 to Weinan Wu for an "Assembled Garden Tool"
Example excerpt from front page of U.S. patent application publication no. 2023/0000001
Excerpt of the first page of text of US 2023/0000001 A1 for an "Assembled Garden Tool" showing two-column format with paragraph numbers
Example excerpt from first page of text of U.S. patent application publication no. 2023/0000001

The published application might also include amendments, such as amendments to the claims or drawings. In some uncommon instances, amendments might be published that are later disallowed and omitted from a subsequent granted patent. But amendments submitted too late for inclusion might not be included with the publication. And appendices included in patent applications are generally not published. The USPTO can refuse to publish certain information prohibited by law or that is offensive or disparaging. Additionally, as a consequence of official preparations and formatting efforts for publication, there can sometimes be discrepancies and printing errors, in which the published version unintentionally differs from the applicant’s original application.

In some other jurisdictions, such a PCT application publications, published applications merely take copies of the application as filed by the applicant and add a cover sheet. In other words, the application is not reformatted and reflects what the applicant submitted.

Publication Numbers

Each patent application publication is assigned an official publication number. In the USA, and with PCT matters, the publication number differs from the application serial number assigned upon filing by the relevant patent office. Although in some jurisdictions the publication number may be the same or nearly the same as an application serial number.

The anatomy of a publication number in the USA is shown as follows:

graphic labeling the country code, pub. year, unique number and kind code for the publication number of U.S. patent application publication no. US 2023/0000001 A1
Anatomy of a U.S. patent application publication number

There is a four-digit year followed by a slash followed by a seven-digit number unique to each published application, and the concluded with a kind code. The unique-seven digit numbers are sequentially assigned to each newly published application. The kind code indicates the type of publication, with “A” generally indicating a published application and “B” generally indicating a granted patent. A two-letter country-code prefix to patent publication numbers can also be present, or appended, to indicate the jurisdiction of the patent publication.

Be aware that some patent searching databases use confusing variations on official patent publication numbers and kind codes. For instance, the Espacenet portal from the European patent Office (EPO) truncates U.S. published application numbers and shortens the unique seven-digit number to a six-digit number (but dropping a leading zero). Also, some databases will retroactively apply an “A” kind code to old granted U.S. patents, from before the USPTO began printing kind codes on patents or making pre-grant publications at all.

Each jurisdiction has a slightly different format for publication numbers. For instance, PCT publication numbers have a “WO” country-code prefix and use a six-digit unique identification number.

Example publication number for PCT international publication number WO 2023/000001 A1, published in German
Example publication number for PCT international publication number WO 2023/000001 A1

Publication Makes File Wrapper Available Too

Before publication, the substantive contents of pending patent applications are kept confidential by the U.S. Patent & Trademark Office (USPTO). But upon publication, which normally happens after eighteen months from the earliest priority date, the file wrapper of a published patent application is also made public by the USPTO. This allows the public to monitor the status and ongoing prosecution history of the corresponding application. While the “published application” is a discrete, stand-alone document, its publication also makes other information publicly available too. But, strictly speaking, a published application refers only to the stand-alone published version of the application and not to other materials in a file wrapper made available to the public through other channels.

Differences From a Granted Patent

A published patent application is much different from a granted patent (also called an issued patent). This is often misunderstood. Although the differences between published applications and granted patents are very significant.

In all but a few countries, patent applications must undergo a substantive pre-grant examination that establishes patentability before a patent is granted. A pre-grant patent publication merely indicates that the applicant(s) are seeking—or previously sought—a patent. But there are no enforceable patent rights unless and until a patent is granted. The existence of a published application for an application that is still pending simply means that a patent might be granted. Plus, the scope of the claims in any later-granted patent may differ from those in the published application. By way of analogy, just because someone files a lawsuit does not mean that he or she will win the case or that all the allegations are all true.

A common mistake is to refer to a published patent application as a patent. But they are not patents! It is reasonable to call them patent documents, or patent-related documents. But a published application is not directly enforceable by itself. Only a granted patent can be enforced. This is the most important distinction. A published patent application does not present immediate and direct infringement risks like a granted patent. Although the technical teachings and disclosures in a published patent application may still be prior art against later patent application claims. Yet a published application and a later related patent are often merely cumulative, meaning (apart from different publication dates) they are redundant in terms of their substantive teachings.

Another potentially confusing aspect of published patent applications is that you cannot understand the current status of the underlying patent application from the published patent application alone. A given published application may have matured into a granted patent since publication, or might have been abandoned (and/or another related “child” application might have been filed too). It is necessary to look up the current status in official records, such as though the USPTO’s Patent Center portal. Most paywalled, proprietary patent searching databases provide at least some status information, and a few (but definitely not all) free, open-access patent searching databases provide some status information. But finding and interpreting current status information is not always straightforward.

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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

When Are Patent Applications Published?

Most patent applications are normally published while still pending and prior to the grant/issuance of a patent. Such publication allows the public to see the contents of the application and expands the publication of technical information to include applications that do not turn into granted patents. But when does this pre-grant publication normally occur? And are there any exceptions or variations in the normal publication schedule? This article addresses issues around when patent applications are published occur prior to grant.

When Publication Normally Occurs

In the USA, any new utility or plant patent application is normally published after eighteen (18) months have elapsed from the earliest filing date. The 18-month publication period is based on the earliest effective filing date or priority date. So if there was a prior provisional or foreign priority application, or the application is a continuing application, the 18-month timeline runs from the earliest priority or “parent” application’s filing date rather than the filing date of the current application. Publication normally occurs as soon as possible after the 18-month deadline arrives. In practice, there may be administrative delays in publication. As a result, it might not always happen at exactly eighteen months.

However, U.S. design patent applications and provisional patent applications are never published before grant (35 U.S.C. § 122(b)(2)(A)). Also, reissue patent applications are not published because they always relate to a prior patent that was already granted and therefore already publicly available.

PCT international patent applications are also published after eighteen months (PCT Art. 21). Most other jurisdictions publish patent applications after eighteen months too. Sometimes this public availability in other countries is referred to as providing “laid open” patent applications.

Exceptions to the Normal Publication Schedule

There are some exceptions to the default 18-month pre-grant publication of utility and plant patent applications.

Sometimes pre-grant publication is delayed or does not occur at all. In the USA, applicants can expressly request non-publication, which is only possible if no foreign patent protection is sought. If a non-publication request is filed, the patent and related file wrapper contents only become accessible when a patent is granted, if at all. There can also be secrecy orders that delay publication (and grant of a patent) when the application’s subject matter implicates national security interests. And applications that are no longer pending at eighteen months are not published. That situation arises if a patent is granted in less than eighteen months or if an applicant files a timely express abandonment request.

It is also worth noting that pre-grant publication only began in the U.S. starting with applications filed on or after November 29, 2000. So pre-grant publications simply did not exist in the USA prior to that time frame. Although pre-grant publications have existed in many other countries for a much longer time.

Occasionally pre-grant publications will occur earlier than the usual 18-month schedule. For instance, applicants in the U.S. can expressly request early publication and/or republication, although such requests are rare.

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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 Is Prior Art?

The phrase “prior art” is used extensively in relation to patents and patenting. But what is prior art? What does this term refer to? The following article will explain how this term is used in patent law.

Basic Overview

Prior art refers to what was already known that is relevant to patentability. More particularly, it is qualifying existing knowledge that is relevant to questions of novelty and nonobviousness (or inventive step), which are two requirements for patentability, for an invention recited in a given claim of a patent or patent application.

Of course, there are some further nuances here about what exactly is considered relevant to patentability and what is not, and what legally qualifies as prior art under applicable law. Many of those nuances are explained further below.

Prior Art is Old Knowledge

First of all, prior art has to be old enough. It always has to be something that was already known or came before before a particular date associated with a given patent or patent application. So the “prior” part of the term “prior art” means something was known sufficiently earlier or before what given inventor(s) are claiming is their patentable invention. This is about dividing technical knowledge into older stuff that might call the patentability of an invention into question and later stuff that might infringe claim(s) of a patent to that invention.

For any given patent or patent application, there is a critical date that establishes what is old enough to be prior art. Something before the critical date is prior art and anything after is not. The point in time that constitutes a critical date will be established by the patent laws of a particular jurisdiction. It can vary based on whether a jurisdiction follows a first-to-file patent system or a first-to-invent patent system, for example. It can also vary on a claim-by-claim basis—there may be different priority dates for different claims, which means some things may be prior art against certain claims but not others.

Prior Art is Knowledge of Useful Arts

The “art” part of the term “prior art” refers to knowledge about the useful arts. The “useful arts” is basically an old-fashioned term that refers to technical knowledge pertaining to what today is more commonly called science and engineering. Just as there are different fields of science and engineering, there are different types of arts. So this term is not limited to any particular area or kind of technical knowledge. But it does not refer to paintings, sculptures, or similar artworks that might appear in a museum.

The term “prior art” can refer to the collective body of relevant prior technical knowledge. That means it is proper to say that something falls within the prior art, as in being a part of that body of pre-existing knowledge. It is common to refer to a “prior art reference”, “prior art product”, or the like in reference to a particular instance of something that qualifies (or allegedly qualifies) as prior art.

Prior Art is Essentially Public Knowledge

In general, prior art refers to information that was sufficiently accessible to the public. This might have been in the form of commercially-available products or services, or in the form of articles, books, videos, etc. Importantly, something that was “secret” and not available to the public usually will not qualify as prior art. For instance, an unpublished draft of a book or article will not qualify as prior art. But there are some exceptions that may allow certain secret or confidential activities to qualify as prior art, mainly relating to confidential on-sale activities.

A crucial exception (at least in the USA) is that any sale or offer for sale can potentially qualify as prior art. The U.S. on-sale bar still applies to prior confidential, private, or otherwise secret commercial sales or offers for sale. In other words, a confidentially or non-disclosure (NDA) agreement will not remove something that was on sale from the realm of prior art. Such confidential sales still involve a third-party (who is part of the public) gaining access to an invention. Also, inventor(s)’ own prior activities can potentially be used as prior art against the inventor(s)’ later patent application or patent, unless the inventor(s)’ application was filed in the statutory grace period.

Laws Vary By Jurisdiction

Prior art is also something defined by the patent laws of a given jurisdiction. This means that definitions of what is and is not considered prior art can and do vary between different countries. There is no universal harmonization of patent laws in this respect. So it is possible something might qualify as prior art in one country but not in another.

In the USA, what constitutes prior art is set out in § 102 of the patent laws (35 U.S.C. § 102). This portion of the current patents laws is written in a very confusing manner. But it establishes that prior art can include a patent, a published patent application, a printed publication (which can also include patents and published patent applications), products or processes that were in public use or on sale, as well as things that were otherwise available to the public before the effective filing date of the claimed invention. U.S. patent law also contain some exceptions that can disqualify certain references from being used as prior art.

In other countries, however, the patent laws may differ significantly. For instance, some countries have no on-sale bar, only a public use bar to patenting. This means that secret or confidential sales may not qualify as prior art, even if those prior secret sales involved the identical invention. And few other countries have a filing grace period like the U.S. Some jurisdictions may also have limits on the use of prior art, such as making an applicant’s prior patent applications available as prior art only for novelty determinations but not inventive step/obviousness determinations. It is important to consider laws of each relevant jurisdiction separately, because differences in laws can mean that what qualifies as prior art differs between jurisdictions.

Laws Change Over Time

What qualifies as prior art can also change over time in a given jurisdiction as laws are modified or interpreted by courts.

U.S. patent laws have changed over time, including modifications to the definitions of what does and does not qualify as prior art. Significantly, the America Invents Act (AIA) had provisions that went into effect March 16, 2013 that eliminated certain first-to-invent provisions and altered other aspects of what qualifies as prior art. For example, the AIA eliminated certain geographic restrictions on what qualifies as prior art—no longer requiring that certain things happen in this country (i.e., in the USA) to be prior art. Patents and patent applications with pre-AIA effective filing dates are therefore subject to different definitions of what qualifies as prior art than post-AIA ones. Laws in other countries have also changed over time.

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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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Articles Patents

Patent Marking Program

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

“Patent Marking: Legal Standards and Practical Issues”

These downloadable materials from a past live presentation address basic marking requirements and best practices for patent marking, as well as requirements for virtual marking, alternative marking on a label or package, ways the sufficiency of marking can be challenged, and false marking. These materials cover the ins and outs of patent marking in a format packed with real-world examples.

Marking is simple enough in concept but there are a surprising number of nuances and practical challenges for implementation. Also, the America Invents Act (AIA) reshaped numerous aspects of marking that continue to reverberate. For instance, virtual marking was introduced with the AIA and there is now a growing body of court decisions clarifying what kinds of virtual marking practices are sufficient and what kinds are not. These practical aspects of marking are addressed in these program materials.

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

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 Calculate Patent Term?

Patents have a maximum term and cannot be renewed. This is part of the quid pro quo underlying modern patent law. The patentee gets exclusive rights for a limited time but then the technology disclosed in expired patents can be freely used by the public (in at least the jurisdiction that issued the patent). Knowing how to calculate patent term is therefore important in order to determine when a given patent has expired. But, for better or worse, the term of any given patent can vary. There is no single fixed term for all U.S. patents. And the applicable term is not always apparent on the face of a given patent. So how is patent term calculated for U.S. patents?

USPTO Patent Term Calculator

One of the simplest and most practical ways to determine the term of a given U.S. patent is to utilize a patent term calculator provided by the U.S. Patent & Trademark Office (USPTO). Using this downloadable spreadsheet requires inputting certain information about a given patent. Only some of the necessary information appears printed on a granted patent. Other information must be researched in USPTO records, mainly through Patent Center.

The advantage of the USPTO’s patent term calculator is that it can be used by anyone, even people who do not understand the applicable patent laws. However, it still requires ascertaining the correct information to enter in the spreadsheet. That requires knowing where to find such information. The patent term calculator also requires a level of confidence that the correct information is being entered. That is, it still requires knowing some of the terminology so that correct, relevant information is entered.

Read on for more information about the sorts of information relevant to proper patent term calculations.

Relevant Factors

What follows is a more detailed explanation of factors that determine the enforceable term of a given patent. These factors include factors that influence how to calculate a given patent’s term, as well as things that might cut short the enforceable term of a given patent. In any given instance, consulting with a knowledgeable patent attorney is recommend to determine the correct term of any given U.S. patent.

Type of Patent

Paten term first of all depends on the type of patent involved.

U.S. utility and plant patents have a basic term of 20 years from the relevant filing date (35 U.S.C. § 154)—there being some nuance about which filing date is used here.

timeline graphic of basic 20-year patent term
Timeline Showing Basic Patent Term for U.S. Utility and Plant Patents (Including PCT National Phase Entries)

A priority claim to a foreign patent application (stemming from the Paris Convention or a PCT application that did not designate the USA) or to a prior U.S. provisional patent application does not count against the term (35 U.S.C. § 154(a)(3)). This means a foreign priority or prior provisional filing can effectively extend patent term.

timeline graphic for basic patent term involving provisional or foreign priority
Timeline Showing Basic Patent Term for U.S. Utility and Plant Patents Based on a Prior U.S. Provisional or Foreign Priority Application

For regular PCT national phase entries to the USA, the PCT international filing date is used for term calculation (not the date of later U.S. national phase entry). That is, a PCT international application designating the United States is treated as a U.S. application (see 35 U.S.C. §§ 372 and 375), with the national phase being just a different phase of the same application. So an ordinary national phase entry into the United States does not, by itself, involve a “priority” claim–although there may additionally be a priority claim involved.

The so-called domestic benefit of a prior U.S. non-provisional application (that is, for a continuation, continuation-in-part, or divisional application under 35 U.S.C. §§ 120, 121, 365(c), or 386(c), including PCT “bypass” applications) does count against patent term, so the term calculation should be based on the earliest such prior filing date. In other words, continuing applications that have priority/domestic benefit of a prior U.S. non-provisional application will have a reduced patent term. The related U.S. application data field (INID code 63) on the face of a patent, if present, can indicate an earlier filing date that may impact term.

timeline graphic of basic patent term involving domestic benefit claim in continuing application
Timeline Showing Basic Patent Term for Continuing U.S. Utility and Plant Patents Based on a Prior Domestic U.S. Application (Including PCT “Bypass” Applications)
Excerpt of U.S. Pat. No. 11,102,682 showing: "Related U.S. Application Data (63) Continuation of application No. 15/090,600, filed on Apr. 4, 2016, now Pat. No. 10,667,181"
Example of INID code 63 “Related U.S. Application Data” field on front page of U.S. Pat. No. 11,102,682, showing earliest filing date for patent term calculation of a continuing application

In contrast, U.S. design patents currently have a fixed basic term of 15-years from the date of grant (35 U.S.C. § 173). The filing date issues referenced above do not impact design patent term. This means that continuing design patents can potentially have later expiration dates, unlike with utility and plant patents.

timeline graphic of design patent term
Timeline Showing Basic Patent Term for U.S. Design Patents

Reissue patents are possible “for the unexpired part of the term of the original patent.” (35 U.S.C. § 251). This means that a reissue patent’s term is no longer than the term of the original patent, as subject to any extension or adjustment. It is possible that a reissue patent’s term could be shorter than that of the original patent (see discussion of terminal disclaimers below). But reissue does not lengthen patent term.

Filing Date and Changes in the Law

The laws around patent term have changed over time. Some patents applied for or granted prior to those changes in the law may be subject to a different term.

U.S. utility and plant patents applications filed before June 8, 1995 can have a term of 17 years from the date or grant rather than from the earliest applicable filing date. Any patent that was in force on June 8, 1995 will have a term that is the greater of the 20-year term as discussed above or 17 years from grant (35 U.S.C. § 154(c)).

For U.S. design patents, those issued from design applications filed before May 13, 2015 have a 14-year term from the date of grant (rather than 15-years from grant).

Of course, there may be future changes in the law that affect patent term calculations. And courts may issue decisions that affect the interpretation of laws that impact patent term calculations.

Patent Term Adjustment

Certain delays in examination can lead to an adjustment of patent term for a given original patent (but not for a reissue). This is called patent term adjustment (PTA) under 35 U.S.C. § 154(b). Normally, this PTA is calculated as the number of days beyond the basic 20-year term that the patent can remain in force. The PTA period normally appears on the face of each granted patent—typically in a “Notice” field denoted with an asterisk (*). The USPTO’s Patent Center portal also has a menu tab showing detailed PTA calculations for a given patent. However, it is possible for a patentee to challenge the USPTO’s PTA calculation in some circumstances, meaning the PTA period might be corrected later. PTA does not apply to design patents.

Excerpt of U.S. Pat. No. 10,000,000 showing: "(*) Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.C. 154(b) by 430 days."
Example of PTA notice on front page of U.S. Pat. No. 10,000,000, showing 430 days of additional patent term

Patent Term Extension

Patentees can potentially obtain patent term extension (PTE) under 35 U.S.C. § 156 based upon premarket regulatory review of certain human drugs, food or color additives, medical devices, animal drugs, and veterinary biological products. This restores some term lost while awaiting premarket government approval from a regulatory agency. An application for PTE must be submitted within sixty (60) days of when permission for commercial marketing or use occurred. Patentees have to affirmatively apply for PTE, which is not automatically granted. Also, PTE is only possible for patents on certain types of subject matter; it does not apply to design or plant patents. § 156 PTE is not indicated on granted patents and must be researched in USPTO records, mainly through Patent Center.

Disclaimers

A given patent may be subject to a disclaimer (35 U.S.C. § 253). The two types of disclaimers are a terminal disclaimer or a statutory disclaimer.

In a terminal disclaimer, the patentee disclaims or dedicates to the public a portion of the term of a given patent. That is, the term of the patent is shortened from what it might otherwise be. Terminal disclaimers are frequently used to overcome double patenting, by disclaiming the period of patent term (if any) that would extend beyond that of one or more other patents. They are also used when design patent applications are revived after abandonment, disclaiming a period of patent term equal to the period of abandonment. Terminal disclaimers do not affect § 156 PTE, however.

Excerpt of U.S. Pat. No. 11,102,682 showing the notice: "This patent is subject to a terminal disclaimer"
Example of terminal disclaimer notice on front page of U.S. Pat. No. 11,102,682
Excerpt of terminal disclaimer filed against U.S. Pat. No. 11,102,682
Excerpt from example terminal disclaimer filed against U.S. Pat. No. 11,102,682, disclaiming term beyond that of U.S. Pat. No. 10,667,181

The USPTO has sometimes, but not always, printed an indication that a given patent is subject to a terminal disclaimer on the front page of the patent. Terminal disclaimers can also arise after a patent has been granted. In any event, the duration (and possibly also the existence) of a terminal disclaimer must be researched in the prosecution history of the relevant patent in USPTO records. This can generally be done using the online Patent Center portal and viewing the “Documents & Transactions”. Although the calculation of the disclaimed period may require additional research and analysis. For instance, it may be necessary to calculate the term of one or more other patents or the period of applicant delay for a design patent.

For statutory disclaimers, one or more claims of a patent are effectively surrendered. This means that some claims may no longer be in force, even though other claims might.

Lapse or Expiration for Non-Payment of Maintenance Fees

In order to keep a given U.S. utility patent in force, periodic maintenance fees are required (35 U.S.C. § 41(b)). These are due by four, eight, and twelve years from the grant of the patent. However, there are no maintenance fees required for U.S. design patents or plant patents (37 C.F.R. § 1.362(b)).

If a maintenance fee is not paid on time, then the patent will lapse or expire. This means that a given utility patent might no longer be in force even though it has not yet reached its maximum possible term.

What makes lapses/expirations complicated is that the patentee may be able to reinstate (that is, revive) the patent if a maintenance fee payment deadline was missed unintentionally. This may give rise to intervening rights (35 U.S.C. § 41(c)(2)). So, significantly, the expiration or lapse of the U.S. patent due to a missed maintenance fee may not mean the final and absolute end of rights in that patent if late payment is accepted.

Terminology describing this lapses/expiration for non-payment of maintenance fees has varied. The USPTO currently tends to use “expiration” but “lapse” is a better term because it differentiates situations where revival is possible from those in which a patent’s term has expired permanently because it has reached its maximum limit.

Invalidation and Cancellation

Patents can be invalidated by courts or cancelled by the USPTO, usually as the result of a challenge by another entity. This can affect all or merely some claims of a patent. Such an adverse ruling (after exhaustion of all rights of appeal) can end or limit rights in the patent short of its maximum possible term. It is necessary to research the existence and status of such an adverse ruling, if any.

Withdrawn Patents

Lastly, some patent numbers have been withdrawn by the USPTO. These were essentially never really patents in the first place, for various reasons, and thus have no term. Although, to complicate matters, the USPTO has also reinstated some previously withdrawn patents.

Laws Vary by Jurisdiction

The discussion above pertains only to U.S. patents. In other countries, laws may differ regarding the calculation of patent term, the availability of supplementary protection certificates, and so on.

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

What Are Common Patent Drafting Mistakes?

Preparing new patent applications can be complicated. Patent applications in the U.S. and most other countries undergo pre-grant examination. So a patent application must be sufficient to establish patentability to the satisfaction of a patent examiner. And if the goal is to create enforceable exclusive legal rights in an invention, and it usually is, then there are many legal considerations that impact coverage and validity. In sum, while there are challenges to obtaining any patent at all, not all granted patents are equal.

What follows is a discussion of some of the most common mistakes when drafting a utility patent application. These are the sorts of mistakes frequently made by inventors preparing and filing an application themselves (pro se) without the aid of a patent attorney. These issues can also arise when applications prepared in another jurisdiction enters the USA and there are differences in the law and practices in the two jurisdictions.

A discussion of common mistakes in design patent applications is available elsewhere.

Focusing on the Old Rather than the New

One common mistake, especially with applications self-prepared by inventors, is to focus on the prior art and what is old and already known rather than on the new invention. Put another way, the mistake is to devote excessive effort to describing what the invention is not rather than what it is. While it is permitted to discuss the background of the invention, and sometimes this is helpful to highlight what is new and different about the invention, this provides little benefit when it takes up too large a proportion of an application.

As an example, criticizing existing products for being “too slow” and stating that it is desired to have an improved product that works faster might be helpful for context. But unless the application further explains how better results and faster speeds are achieved, such a discussion of the background context has fairly limited value. Also, if the discussion of what was known is far more detailed than the discussion of what is supposedly new, this can have the undesired effect of suggesting that the inventors have yet to adequately develop the invention to a point of being patentable.

Omitting How It Works, or “Black Box” Gaps

A big mistake is failing to describe what the new invention is and how it works in sufficient detail. Often this means describing what is new too superficially so that it is no more than a plan for future invention or a mere statement of a problem to be solved or a desired result. Modern patent laws a premised on a quid pro quo: in exchange for disclosing how to make and use an invention, exclusive rights are granted for a limited time. But you cannot get exclusive patent rights by withholding the “secret” of how to make and use the invention.

Occasionally, this problem arises by placing important aspects of the invention in a “black box”. If key steps, ingredients, or structures are withheld from the disclosure contained in a patent application, then the patentability requirement of enablement (35 U.S.C. § 112(a)) is not met.

Stated more generally, it is necessary to provide a disclosure that enables someone of ordinary skill in the art to make and use the full scope of the invention as defined by the claims. The more one claims, the more one must enable. So a more limited disclosure might only support more limited claims. Sometimes this is a genus/species issue — a question of the sufficiency of disclosure of particular species to claim an entire genus. It is therefore necessary to have claims that are commensurate with the scope of the disclosure and not overbroad, or, from another perspective, to have a disclosure that is robust enough to support the desired claim scope.

One helpful thing (good) patent attorneys do is that they explain how inventions work in a understandable way. The technology may still be complicated. So the explanatory disclosure might not be entirely “easy” to read and understand. But inventors are sometimes able to devise working inventions without being able to translate that technology into words and drawings of the sort required for patent applications. It may be because they take some things for granted, or sometimes they might not even fully grasp what is different about their new invention from what was known before.

Lastly, there is still a requirement that the “best mode” of practicing an invention be disclosed. Applicants and inventors cannot disclose only what they know to be their second-best embodiment, while retaining the best for themselves.

Confusing Ambiguity with Breadth

While a broad claim is not necessarily ambiguous merely due to breadth, the reverse is problematic. Ambiguity does not lead to a broad scope of protection in a patent. This is a issue even experienced patent attorneys wrestle with and sometimes get wrong. By far, the most common source of trouble is the use of functional language or results-based claiming to try to obtain preemptive exclusive rights over significantly more than what was actually invented. This is one of the trickiest and most contested aspects of patent law and policy, so any brief discussion is hardly comprehensive.

Patent law looks to what is generally understood by given language. Using coined terminology and nonce words — often with vaguely functional connotations — without providing a sufficiently clear definition sometimes leads to impermissible ambiguity. Generic structural terminology as understood in a given technological field is often not the same thing as coined terminology not adopted into use generally in that field. For instance, the coined word “parkulator” does not convey any accepted structural meaning sufficient to use that term in patent claims (without a sufficient express definition). All too often, patent language is specifically drafted to avoid the use of generally-understood terms, which invites ambiguity problems. But you cannot benefit from avoiding accepted meanings if others cannot reasonably determine the scope of a claim due to intentional ambiguities.

There are many other examples as well, sometimes the result of errors and inconsistencies. For instance, if a claimed inventions rests on a parameter like an angle between two things, or a specific concentration of an ingredient or chemical element, or performing a process at a particular pressure, then it may be important to explain — consistently — how such parameters are measured or evaluated. The percentage of a material by weight or by volume might be quite different depending on the density of all the materials involved. Or the pressure might be measure in relative or absolute terms. And the location or direction in which an angle is measured might matter. Similar issues can arise through poor English translations too, which are treated as intentional choices. So translating a non-English word as a “spoon-digger” rather than a “backhoe” can be problematic.

Not Understanding Terms with Special Legal Meaning

There is a concept, sometimes referred to as the Dunning-Kruger Effect, that those who are incompetent in a given area tend to be ignorant of their own incompetence. In patent law, certain language has special legal significance. Rather than being given their ordinary, everyday meaning, certain words in certain contexts can be legal “terms of art” that have a special meaning. The paradox is that unless these special meanings in patent law are known, they might be inadvertently or unintentionally invoked.

Perhaps the most frequent errors of this sort arises with means-plus function claiming (35 U.S.C. § 112(f)). Under this format, an element of apparatus is claimed as “means for…[performing a stated function]” or “[functional descriptor] means for…[performing a stated function].” This type of claiming is currently permitted in the U.S. but is given a special interpretation: it literally covers only the disclosed corresponding structure, material, or acts, plus their known equivalents. Such an interpretation might be narrower than intended. It also might raise other problems if the corresponding structure is not clearly identified and disclosed.

Even patent attorneys can struggle with means-plus-function claiming. Courts have (somewhat controversially) said that if a claim limitation is drafted in the same format as a means-plus-function limitation and merely replaces the term “means” with a nonce word or generic placeholder like “module”, “mechanism”, “element”, or “device”, then a means-plus-function interpretation may still apply. Speaking in practical terms, claim limitations that rely too much on non-structural functional language might be interpreted as means-plus-function claiming.

Irrelevant Disclosure

Including a lot of unnecessary information just because it is available can be another problem. It wastes time and effort, and time is money when preparing patent applications. It can also obscure what is important and lead to longer (and more expensive) prosecution and examination after initial filing. Of course, knowing what sort of information is relevant and what is not is something that requires knowledge and experience. It can also be a matter of understanding the closest prior art, which is the next point.

Not Understanding the Closest Prior Art

Patentability largely depends on an invention being novel and nonobvious over what was already known. So, the catch is that to understand what is patentable it is unavoidably necessary to understand what is the closest prior art. Most of the time, that requires conducting a patentability search and analysis. However, applicants often wish to avoid the expense of a patentability search. This often leads to false economy, by requiring extensive post-filing efforts and expense to mitigate the problem of having not prepared a better initial application.

Knowing the closest prior allows a better patent application to be prepared — one that articulates what feature(s) of the invention differ from the closest prior art (and why that matters). For instance, a patentability search and analysis might suggest that additional technical information (another data table, figure, etc.) needs to be gathered for inclusion in a new application in order to sufficiently explain why the invention makes a patentable improvement. This may be the case where the prior art already achieves a similar result but in a different way, or where the prior art includes all the same parts but has them arranged or connected in a different way.

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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 Are Common Mistakes in Design Patent Applications?

There are certain requirements and interpretive frameworks that apply U.S. design patent applications that may not be intuitive. Many of these U.S. standards also differ significantly from the rules the apply to industrial design registrations in other countries. What follows is a guide to some common mistakes and misunderstandings around design patents and applications.

Additional information about acceptable practices for design patent applications can be found in the U.S. Patent & Trademark Office’s (USPTO’s) design patent application guide and in the Manual of Patent Examining Procedure (MPEP) Chapter 1500.

“Engineering” Style Drawings Treated Unfavorably

Designers may create computer-aided drafting (CAD) drawings to document their designs. These often follow engineering conventions, including the use of “tangent” lines to show the boundaries of a curved surface. However, U.S. design patent practice relies on the use of surface shading lines or stippling . This is any entirely different style and approach than familiar engineering standards. But there is no single explicit rule or statute about the permitted format of shading lines in design patent drawings.

Shading lines or stippling that contrast with the rest of a drawing are used to show curves, tapers, and other three-dimensional (3D) contours in design patent drawings. The arrangement and variable spacing of straight shading lines is commonly used to indicate the character of curvature or contouring. Shading lines that are not straight may also be permissible. Surface shading lines can be broken/discontinuous and/or light/thin to differentiate them from lines indicating surface ornamentation and/or the ornamental shape of an article itself. Although they must be used sparingly, with as few in number as practicable.

Other characteristics can also be represented by shading lines. For instance, equally spaced shading lines arranged parallel to each other are used to indicate flat surfaces. Shading lines or stippling can be used to distinguish open areas (like holes) from solid material as well. Also, oblique line shading is used to show transparent, translucent, and highly polished or reflective surfaces, such as a mirror. Elements visible behind transparent/translucent surfaces should be shown in light, full lines rather than in broken lines.

The following is an example used in the USPTO’s design patent application guide to illustrate straight, parallel shading lines with their spacing using to show curved edges of a sink. These shading or contour lines are discontinuous, each having a long unbroken segment plus a short, dot-like segment slightly spaced from an end of the long segment. In this example, other discontinuous shading lines are used to illustrate flat surfaces too.

Drawing of a sink showing use of spaced, straight shading lines in design patents
USPTO example of use of shading lines in design application drawings

The following example is also from the USPTO’s design patent application guide, and shows a wheel hub with a combination of shading lines and stippling. The shading lines indicate contouring/curvature and well as flat surfaces. Some of those shading lines are discontinuous while others are continuous but light lines. Contrast in materials or surface texture may be shown by using line shading in one area and stippling in another. In this example, the stippling can show matte surfaces in contrast with highly polished surfaces shown in line shading.

Drawing of a wheel hub showing use of a combination of shading lines and stippling in a design patent drawing
USPTO example of use of shading lines in design application drawings

The following is an example of non-linear (curved) shading lines used to illustrate 3D curvature of a vehicle mirror. These shading or contour lines are discontinuous to distinguish them. These types of shading lines are appropriate for illustrating more complex 3D shapes. In this example, broken (dashed) line(s) further illustrate the boundary of the claimed design, meaning that only a portion of the depicted article is part of this claimed design.

FIG. 1 of U.S. Pat. D427,554, showing use of shading lines to illustrate 3D contours of a vehicle mirror
FIG. 1 of U.S. Pat. No. D427,554

The following examples are drawn from a case about alleged infringement of two design patents covering a trash can and a recycling bin. Red arrows indicate lines whose meaning was disputed by the parties. The court construed the patents’ engineering-style drawings with curvature boundary tangent lines to mean visible ornamentation in the form of seams, paint, or something else that appears as actual lines on the trash can or recycling bin rather than merely conveying the boundaries of 3D contours where they transition to flat surfaces.

Annotated views with red arrows and blue circles labeling disputed lines in two trash can/recycling bin design patents
Annotated verisons of FIG. 1 of U.S. Pat. No. D644,807 for a “Slim Open Trash Can” (left) and FIG. 1 of U.S. Pat. No. D729,485 for a “Dual Recycler” (right) with red arrows and blue circles indicating disputed lines in Simplehuman LLC v. iTouchless Housewares and Prods., Inc., 506 F. Supp. 3d 830 (N.D. Cal. 2020)

The court reasoned that because the purported drafting technique in the examples above made it impossible to distinguish contour changes from ornamental lines, and because such ambiguous usage raises indefiniteness concerns that should be discouraged, a “plain meaning” interpretation was adopted, finding that the disputed lines are lines (that is, ornamental features in the form of seams, paint, or something else that appear as actual lines on the articles). The patentee’s arguments that the disputed lines were shading or contour lines merely meant to demonstrate the general shape of the trash can/recycling bin were rejected.

The case later settled, and was dismissed without a final ruling on infringement. But the patentee would undoubtedly have lost under the court’s construction that the disputed engineering-style lines meant visible ornamental lines — neither the patentee’s own products nor the accused products had any features that resembled visible lines in the relevant locations.

The Title is Limiting

U.S. design patents are directed to ornamental features of useful articles. Significantly, they cover only particular articles that embody the claimed design, and not simply a “view” or “look” in the abstract (as is the case for industrial designs in some other jurisdictions). The words of the claim — which always says “as shown and described” — will limit the scope of the exclusive patent legal rights. Courts have said that the title of a design patent is limiting, where it names a particular type of article. And that is the case even if the drawings of a design patent do not illustrate any particular article. So the title and other words in a design patent application should be chosen carefully.

In the example reproduced above, a figure from a design patent shows a “Y”-shaped, rattan wickerwork-style pattern formed by a web of material. None of the figures in the patent illustrated the design being applied to a particular article, only the pattern formed by a portion of material shown in isolation. But the title of the patent is “Pattern for a Chair”. A court ruled that the patent’s claim was limited to a pattern for a chair, as specified in the title, and a lawsuit against a seller of a basket (not a chair) with a similar pattern making up the basket/bin walls was dismissed for failure to state a plausible claim of design patent infringement.

Sole figure in App. Ser. No. No. 29/491,550 (now U.S. Pat. No. D979,060) for a “Lip Implant”
image of prior art "stump" tool
Image of prior art “stump” art tool considered in In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021)

Limits on claim scope by the title or other text might help distinguish prior art. In the example images above, a design patent claim for the “ornamental design for a lip implant” was limited to lip implants. A court said that a prior art tool made of tightly spiral-wound paper called a “stump”, used by artists for smoothing and blending large areas of pastel, charcoal, or pencil, was directed to a different article than the claimed lip implant. Therefore, the prior art “stump” did not affect the novelty of the claimed design even though their shapes were essentially the same. However, an older case held that if the prior art discloses any article of substantially the same appearance it is immaterial what its use was, so this lip implant decision is in tension with that precedent.

The title of a design application can also potentially limit the prior art available as “comparison” art in a later three-way comparison of the claimed design, an accused product, and the closest prior art for an infringement analysis. Such a comparison can highlight differences (or similarities) in the overall appearance that might not otherwise be apparent to an ordinary observer. To qualify as comparison prior art, a notable court decision said that the prior-art design must be applied to the article of manufacture identified in the claim of the asserted design patent.

Partial Claims Are Permitted

It is possible to depict an article while using a partial claim that addresses the design of only a portion of that article. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied, or applied to, that is not considered part of the claimed design. For instance, when the design is for surface ornamentation, the shape of article to which the design is applied can be shown in broken lines.

example design patent application drawings showing broken lines to indicate a partial claim to only surface ornamentation on a jewelry cabinet
Example of partial claim to only a surface pattern on a jewelry cabinet article, for USPTO design patent application guide

Moreover, unclaimed things may be shown in broken lines for the purpose of illustrating the environment in which the article embodying the design is used. For instance, a claimed design might be for the hood of a truck, only, with the rest of the truck shown in broken lines as unclaimed environment.

Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. A boundary line may be shown in broken lines if it is not intended to form part of the claimed design. Applicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary.Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. In this situation, broken (dashed) lines are used to define the boundary of a design patent application claim. This practice in the U.S. departs from that of some other countries where partial claims are not permitted.

Additionally, structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied, or applied to, that is not considered part of the claimed design.

USPTO Will Often Not Permit Changes in Claim Scope by Amendment

One controversial aspect of U.S. design practice is that changes in claim scope are usually not permitted. While partial claims are permitted in design applications, and while claim amendments in utility patent applications are routinely permitted (even to remove limitations), since 2013 the USPTO does not ordinarily permit lines to be changed from solid to broken (dashed) to broaden the claim, or the reverse to narrow the claim. Instead, applicants are often forced to file a separate application with a different claim scope. While examiners have some discretion to permit drawing changes, such as to fix discrepancies by changing lines to broken ones, and the text of disclaimers or statements in an appendix might have some impact, those things are not certain to be effective under current law and practice.

This practice of precluding changes in design application claim scope extends an already controversial position taken by a U.S. appeals court that reads a so-called “written description” possession requirement into the U.S. patent statutes (relating to enablement) against their plain language and grammar. Note that there is also a clear incentive for the USPTO to require new filings instead of amendments in order to generate more filing fees.

Multiple Embodiments are Sometimes Permitted

It is possible to include multiple embodiments in a single U.S. design application. However, restriction practice still applies and may require dividing different embodiments/designs into separate applications. Because design applications can have only a single claim, multiple embodiments must be patentably indistinct to remain in a single case.

On the one hand, because design patents have a 15-year term from grant, later-filed and later-granted divisional applications will expire later. This might be desirable for some patentees. On the other hand, a restriction determination also has an impact on the scope of exclusive rights. For instance, if the applicant elects one embodiment but declines to pursue an unelected embodiment in a divisional application, the unelected/abandoned embodiment will effectively be surrendered and dedicated to the public. These considerations emphasize the need to think through the implications and potentially commit to filing multiple applications when multiple distinct design embodiments are involved.

Drawings Must be Definite and Enabling

Drawings in a design patent application must be consistent with each other. Discrepancies between different views can create indefiniteness and/or lack of enablement issues. For instance, if certain features are shown in one view but omitted in another, this may make it unclear what design is really being claimed. The use of inconsistent drafting techniques in different drawings can also lead to similar concerns. For instance, discrepancies in the use of shading lines, stippling, and/or broken lines can detract from required clarity. Particularly for highly complex illustrations, it is important to carefully review the drawings to ensure that they are consistent.

A frequent issue is when there are holes, cavities, protrusions, or the like and their depth or height is potentially uncertain in plan or elevation views. Sometimes examiners may require cross-sectional views to show the depth of such features. But clarifying sectional views cannot always be added after initial filing without impermissibly adding new matter–instead a new continuation-in-part application might be necessary.

Mixing Photographs and Line Drawings is Not Permitted

Black and white line drawings are preferred and ordinarily required in U.S. design applications. However, photographs can sometimes be used, particularly where there is surface ornamentation that is not reproducible in line drawings. Such photographs can have added lines, such as broken lines to indicate a boundary of the claimed design. But it is not permitted to have both photographs and line drawings combined in a single design patent.

It is possible to include a mix of photographs and line drawings in a new U.S. design application, which might have significance for priority claims or divisional filings, but the drawings must be amended and limited to one or the other type before grant. If photographs are included as informal drawings in a new application, then a disclaimer included in the specification or on the photographs themselves should be used to disclaim any color, surface ornamentation, logos, written matter, etc. that forms no part of the claimed design.

Color Can Be Claimed

Use of color presents many opportunities for procedural problems and well as unintended impacts on the scope of claimed design patent rights. Color can be claimed in a design patent application. However, the use of color drawings (including color photographs) requires filing a petition and paying a petition fee to have color drawings accepted. Also, there is a requirement that the specification include the following statement:

“The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.”

Instead of using color drawings, an alternative is to use black & white line drawings lined for color in accordance with the drawing symbols in MPEP § 608.02 (and reproduced in the USPTO’s design patent application guide). Essentially there are particular line patterns usable to represent specific colors. If this is done, the application must state “The drawing is lined for color.” The specific colors lined in the drawing(s) may also be identified in the specification for clarity, as a kind of legend that explains the lining patterns from MPEP § 608.02.

USPTO drawing symbols for draftsmen
USPTO design patent application guide “Symbols for Draftsmen”

Also, if color photographs are initially submitted as informal drawings (to later be replaced with formal drawings) and the applicant does not consider the color to be part of the claimed design, a disclaimer should be added to the specification as follows: “The color shown on the claimed design forms no part thereof.” The USPTO will consider color an integral part of the disclosed and claimed design in the absence of a disclaimer filed with the original application.

Appendices Are Permitted

Although not specifically discussed in MPEP Chapter 1550, the USPTO’s design patent application guide, or reported court cases, the USPTO currently permits design applications to include an appendix. The appendix is never published in granted design patents. An appendix can include text statements, such as a purported reservation of the right to change solid lines to broken lines or vice-versa, additional views or embodiments, which could be in the form of line drawings, photographs, or both. The main purpose of an appendix is to potentially provide support for a greater range of amendments and/or continuing applications after initial filing.

Applicants will sometimes not include an appendix because they are unaware that it is possible to do so. After all, the USPTO does not expressly discuss them in any of its regulations or procedural guidelines. Courts have not definitively ruled on the permissible use of design application appendices, however. Yet design examiners generally allow applicants to include and rely on them and generally do not object to their use.

Functional Aspects Are Not Protected

Sometimes design patent applicants wrongly believe that a design patent will cover functional aspects or a general idea. They do not. The type of subject matter that can be claimed in design patents is different from utility patents.

Design patent protection is limited to protection of ornamental aspects of a useful article. Purely functional aspects or a broader general design concept are not protected. Also, anything dictated by function, no matter how aesthetically pleasing, cannot be protected by a design patent. Where this becomes less clear is where design features are only partly functional, and they contribute at least some minimal ornamentation to the overall design. In those situations, the functional aspects limit the scope of protection in the overall design without completely precluding protection of the minimally ornamental aspects.

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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.