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Patents Q&A

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

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

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

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

Screenshot of the USPTO’s Patent Public Search FAQs

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

Using the Basic Search Interface

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

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

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

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

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

Using the Advanced Search Interface

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

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

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

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

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

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

The advanced interface is currently the only way the USPTO provides “full text” of published patent documents.  PDF versions are also available by clicking the “T / [camera icon]” button at the top left of the “Document Viewer” panel that normally appears at the right-hand side of the screen along with the text (annotated in the figure above).  Toggling that button allows switching between text or PDF image displays of a given patent document. 

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

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

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

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

Alternatives: Patent Center, International Tools, and Proprietary Tools

An alternative way to reach a particular U.S. patent or published application in USPTO databases is to utilize the Patent Center interface. Patent Center’s main interface provides a simple query field where you can enter a U.S. patent or published U.S. patent application number.  Once the results of a given query appear on screen, there are links available to the Patent Public Search text versions of the given published application and granted patent (if any) under Patent Center’s “Application Data” tab.  The button with the “T/[camera icon]” label can be clicked to toggle between a text view and a PDF image of the patent document in Patent Public Search. While navigating to patent documents through Patent Center requires many clicks, using it may be easier than using Patent Public Search.

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

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

Photo of Austen Zuege

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

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Patents Q&A

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

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

What Types of Applications Must be in DOCX Format?

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

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

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

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

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

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

Potential Problems

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

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

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

Many of these things are fairly common in patent applications.

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

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

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

Best Practices for DOCX Filing

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

Top DOCX application compliance tips:

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

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

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

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

Non-DOCX Filing Alternatives

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

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

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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Agreements Copyrights Patents Q&A Trademarks

How Can I Correct An Assignment?

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

Marking-Up and Approving Corrections

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

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

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

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

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

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

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

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

Newly-Created Corrective Assignment

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

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

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

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

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

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

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

Practical Tip

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

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 Issues Around Software Patenting?

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

Software Patent Eligibility

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

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

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

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

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

Inventors and Software

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

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

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

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

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

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Patents Q&A

What Patent Application Extensions of Time Are Available?

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

The Basics of Response Periods and Availability of Extensions of Time

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

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

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

Weekends and Holidays

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

Requesting an Extension of Time

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

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

Special Considerations After a Final Office Action — Advisory Action Practice

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

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

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

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

Other Options Related to Deadlines and Extensions of Time

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

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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 the Costs to Obtain a Patent?

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

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

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

Preparation and Filing

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

Official Filing Fees

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

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

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

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

Professional Fees (Attorney Fees)

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

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

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

Prosecution (Examination)

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

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

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

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

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

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

Issuance and Maintenance

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

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

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

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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 an Election Requirement?

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

The Basics of an Election Requirement

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

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

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

Election requirements can arise in just about any patent application. However, election requirements are somewhat more common for chemical, biotech, and similar types of inventions. Election of species requires are a creation of USPTO regulations and are not explicitly provided for in statutory law, other than in relation to regular (statutory) restriction practice.

What is a “Species”?

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

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

What is “Generic” or a “Genus”?

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

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

PCT National Phase Entry Applications

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

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

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

Requirements for an Election of Species Response

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

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

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

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

Strategic Considerations for Election Requirement Responses

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

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

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

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

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

Petitions Against Election Requirements

It is possible to file a petition against a election/restriction requirement that has been made final. Such petitions are decided by technology center directors, as opposed to the Office of Petitions or some other centralized USPTO authority. However, such petitions may not be worth the effort and cost in attorney fees–unless, for instance, the applicant faces a need for multiple divisional applications with a large total cost. Importantly, such a petition against an election requirement may be deferred until after final action on or allowance of claims to the invention elected, but must be filed no later than an appeal.

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

Rejoinder

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

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

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Patents Q&A

How Should I Respond to a Restriction Requirement?

Introduction

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

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

The Basics of a Restriction Requirement

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

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

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

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

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

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

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

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

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

PCT National Phase Entry Applications

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

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

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

Requirements for Replying to a Restriction Requirement

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

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

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

Strategic Considerations for Restriction Responses

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

  1. What is the most commercially important aspect of the invention, and which group of claim(s) best covers that aspect? Many times this is the most important consideration.
  2. How many claims are in each group (i.e., which group contains more claims)? Sometimes electing a group with more or the most claims might provide better value, in the sense of having a larger number of existing claims examined. Although the an elected group of claims could potentially be expanded by adding new claims and/or amending existing claims.
  3. Is the restriction between apparatus and method/process claims? Elections in this situation raise special considerations that sometimes make election of apparatus claims more desirable. If the apparatus claims are elected, rejoinder of the unelected claims to a method of making and/or using the product might be later rejoined and granted. However, if the method/process claims are elected, then rejoinder of the apparatus claims is not permitted.
  4. Might claims be amended? One or more independent claims might be amended to recite a common essential inventive feature as part of a traversal argument to try to make the restriction moot. Alternatively, or additionally, new claims might be added, such as by canceling unelected claims and adding new dependent claims to the elected group (canceling unelected claims may avoid official extra claim fees in this scenario). Unelected, withdrawn claims can also potentially be amended later, to try to facilitate rejoinder. However, claim amendments might have prosecution history estoppel implications and claim amendments cannot have the effect of contradicting a prior election.
  5. Are you willing to file one or more divisional application(s) to pursue unelected claims? A restriction requirement is an indication that filing unelected claims in a new divisional application will prohibit a double patenting rejection in the later-filed divisional. However, whether or not the applicant is willing to incur further expense associated with a divisional filing (or perhaps multiple divisionals) may influence which claims are elected in response to the restriction. It is possible to defer a divisional filing decision so long as the current application remains pending. This may allow an opportunity for claim rejoinder to be considered. Ensure that there is a clear demarcation between restricted claims to preserve divisional filing safe harbor protections against double patenting, particularly if an election of species is involved. Keep in mind both short-term (e.g., costs to traverse and/or petition a restriction) and long-term costs (e.g., divisional filing and maintenance fees) associated with each option.
  6. Which group(s) of claims have the best chance of patentability? This may not be known. But, depending on the scope of the prior art or potential patent-eligibility issues, certain groups of claims might face easier or more difficult examinations. If the restriction requirement cites prior art as justification for restriction, that cited art may inform how to make a claim election. If the restriction alludes to prior art without specifically citing any references, it may be possible to call the examiner to obtain further information about the particular prior art that the examiner has in mind.
  7. Did you intend different claims to cover different inventions, or simply want different claims to have distinct scope? In some situations, the claims may have been originally drafted to purposefully have significantly different scope. In that case, traversing the restriction might be contrary to an existing patenting strategy.
  8. Is it important to obtain a patent very quickly, or not? Certain elections or traversals of restriction may make examination take longer, such as if they result in an application being reassigned to a different examiner in a different group art unit. However, the effect on the speed of examination may be speculative at the time of the claim election.
  9. Has the examiner made a procedural error or omission in the restriction? For instance, the MPEP says, “Examiners must provide reasons and/or examples to support conclusions . . . .” As another example, an examiner might list nonexistent or inapplicable search classifications. Moreover, examiners may state grounds for restriction that are contrary to statutory, regulatory, or MPEP provisions. Examiners might apply domestic restriction practice to a PCT national phase entry application where a unity of invention instead applies, for example.

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

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

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

Petitions Against Restriction Requirements

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

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

Rejoinder

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

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

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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 Restriction Requirement?

The Basics of a Restriction Requirement

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

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

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

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

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

Determining Whether Claims Are Independent or Distinct

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

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

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

After a Restriction Requirement Is Issued

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

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

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

Why Are Restriction Requirements Made?

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

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

Applicants are sometimes frustrated by restriction requirements. They can have the appearance of an examiner trying to avoid work or to game the “count” system, which the USPTO uses internally to track examiner productivity, by forcing the applicant to file a divisional application. At times, rationales given for restrictions can seem unconvincing or circular. Also, while the USPTO’s guidance (see, e.g., MPEP 801.02) states that restriction is permitted when there are either independent or distinct inventions claimed, some argue that the patent statutes (and corresponding regulations) should be interpreted to permit restriction only among claimed inventions that are both independent and distinct. On the other hand, applicants seeking to avoid official fees normally associated with filing separate patent applications for independent and distinct inventions are rightfully subject to restriction requirements.

PCT National Phase Entry Applications

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

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

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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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Copyrights Patents Q&A Trade Secrets Trademarks

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

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

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

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

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

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

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

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

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

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

Photo of Austen Zuege

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