There are different situations where a trademark search is beneficial. And there are different types of searches with different levels of scope. But how can you know if a given trademark search is reliable? How thorough or extensive does search have to be? Are simple queries in online portals enough to rely on? This article will address those questions about what makes for a good trademark search.
Overview of Best Practices
Trademark searching is perhaps more art than science. There is no single approach suitable for all situations. But there are a number of factors that tend to make trademark searches better and more reliable in general. These include the following:
Accounts for applicable trademark laws in the relevant jurisdiction(s)
Encompasses variants and similar marks, and not limited to exact or identical matches
Looks beyond identical and overlapping goods and services to different but related goods/services
Uses reliable tools or databases with relevant content coverage
Results are coupled with a competent legal analysis
Under U.S. trademark law, a likelihood of confusion standard is used. It applies when determining if a proposed mark is federally registrable. This is the standards trademark examiners apply to new trademark applications. Registration will be refused if there is a likelihood of confusion with a prior mark. It also generally applies when assessing potential infringement. Trademark infringement arises when there is a likelihood of consumer confusion, even if actual confusion has not occurred among customers.
This legal standard looks an multiple factors from the point of view of relevant consumers. There is no precise formula for how these factors are applied. But two factors tend to be most important. One is how similar (or dissimilar) two marks are, when considering the overall commercial impressions the proposed create. Another is how similar (or dissimilar) the goods and services are.
Importantly, the trademarks do not have to be identical to be similar enough to create a likelihood of consumer confusion. The goods and services can potentially differ as well. For instance, they might partially overlap or the goods and services might differ but still be considered related. There is no universal, bright-line rule for how close is too close, or what sorts of differences will sufficiently avoid potential confusion.
Legal standards in other countries may different. But most countries take a generally similar approach.
Simply Queries Are Often Not Enough
A reliable trademark search needs to be broad enough to capture different but similar marks. This includes things like alternate spellings, phonetic equivalents, transposition of words, different punctuation—like the difference between one word or two, with or without a hyphen—and even other words with similar meanings. Foreign-language translations or transliterations might also be considered, which can be particular useful when looking at foreign countries where other languages are common. Basically, the search needs to account for the fact that prior trademarks may be relevant to the likelihood of consumer confusion even though they differ in some way.
A few limited keyword searches in an Internet search engine or trademark database may not be sufficient. That is especially true if searching only for marks that are identical. For instance, if a search for a proposed brand name that includes the word “theater” omits prior marks using the alternate spelling “theatre” or intentional misspelling “theatr” it could miss something important. The same goes for portmanteau or compound word terms that incorporate words like “theater”.
Trademark searching also involves the difficult problem of trying to prove a negative. You can never be absolutely certain that nothing relevant is out there. If nothing appears it might mean nothing else exists, or it might simply mean you missed a relevant prior mark. A perfect search is impossible. Even a high quality search might miss a prior mark that someone else considers relevant. After all, there are some judgement calls involved with these fuzzy legal standards. But the goal is to use sufficiently robust and thorough searching methods. Getting “zero hits” or “no results” from a few cursory searches, based only on looking for exact matches in a limited coverage database, is often not adequate or reliable.
Using Online Portals
There are some free, open-access online portals that allow trademark searching. Some of these are provided by official trademark offices. Others are privately run by various companies. There are also proprietary databases that require paid subscriptions or other fees.
Many free “trademark availability” search engines are unreliable and misleading. For instance, queries in a free trademark availability search engine for the following proposed marks all said they were supposedly “available”:
THE CHEVROLET
COCA-COLA USA
SAMSUNG COMPANY
NIKE SHOES
Of course, none of these proposed marks are actually available for use, at least not if they create a likelihood of confusion with the famous brands they incorporate (or cause dilution). Simply adding an additional generic or highly descriptive term without changing the overall commercial impression is not enough to avoid confusion. Those minor differences from an existing mark generally do not mean that a proposed mark is available for use or registration. Any of these example marks would be refused registration. Their use would probably also result in legal problems.
Adequate Coverage
A trademark search also needs to encompass sources likely to contain the kind of trademark information that matters to your legal questions. There are many different trademark databases available. But there is no single comprehensive database of all worldwide trademark information searchable across all possible fields. It would be nice if there were. But every real-word tool or database has limits on its coverage. This even applies to general-purpose Internet search engines. For instance, there can be purely offline trademark uses that cannot be found online.
Reliable searching involves selecting the right resources to consult. This might mean paying for access to certain proprietary tools. Or it might mean searching in multiple databases or tools each having different coverage. Often the specific coverage of a given database can be confusing or not readily apparent.
Considerations for Graphical Logos and Non-Traditional Marks
Searching trademarks with prominent visual design components or stylization, especially logos without any wording, presents some unique challenges. The same applies to non-traditional marks like trade dress, colors, sounds, etc. There are tools that allow what amounts to a reverse image search of a logo. Those tool can be helpful. But they are not always completely reliable on their own. There are also design search codes or other classification systems for categorizing elements of trademarks other than wording. These codes or classifications offer a particularly helpful way to search for similar logos, visual design elements, and elements of non-traditional trademarks.
A Search Alone is Not a Legal Opinion
Simply searching for trademarks—and no more—tells you very little. It will at most give you a list of existing marks. But which of those matter? Which ones are distinguishable? Which ones are close enough to present problems? Was your search robust enough to have confidence that there actually are no problematic existing trademarks? To answer those questions you need a legal opinion. That means analyzing trademark search results from a legal perspective. It is recommended to have a knowledgeable attorney analyze search results and provide legal advice about registrability and/or any infringement risk.
Budgeting
There is definitely cost associated with a quality, reliable trademark search and accompanying legal analysis. Costs especially tend to increase when the scope of a search encompasses more geographic regions or jurisdictions. Selecting the cheapest option, or taking a free do-it-yourself approach, often does not result in the reliable results. Cheap searches and $99 fixed-fee “legal” services are not going to give you a reliable legal opinion or provide meaningful strategic guidance.
Small businesses frequently feel they cannot afford these costs. Skipping a search means you are taking you chances. It is like rolling the dice and hoping there are no obstacles or infringement risks lying in wait. Businesses often regret not clearing their branding before adopting it, or regret selecting a weak mark. Doing so might mean later facing large re-branding costs, limits on expansion of your brand, and/or a decreased business valuation. In a worst case scenario it might even destroy everything built-up in a business. So a good search (+ legal opinion) upfront can be a good value in the long run.
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.
What should a trademark search involve? How should a trademark search be conducted? These are questions about the scope and format of a trademark search. There are many different ways of performing trademark searches that vary in scope and thoroughness. Not all searches are equal. The right approach will depend on a number of factors including the purpose of the search and the type of legal questions the search is meant to address. The following is an overview of basic considerations about how to structure a trademark search to meet your needs.
Different Types of Searches
Sometimes trademark searches are grouped into different levels, with different pricing. A basic search is sometimes called a “knockout” search. These are usually the cheapest option. Names like “comprehensive” are applied to other types of searches that are more thorough (and more expensive). There are also special searches for various specific purposes, such as to look for evidence of relatedness of goods and services. But what differs between these different searches in terms of what you get? And which one is the right choice for your circumstances?
Knockout Searches
A knockout or preliminary search is usually the most basic and most limited in scope. It is typically limited to searching only registrations and pending applications in a particular jurisdiction. This means it will not capture unregistered uses of similar trademarks that may exist.
Also, a knockout search may be limited in terms of capturing variations. Trademarks do not need to be identical to create problems under the likelihood of confusion standard. The exact scope of knockout searches can vary. But often they will provide little or no identification of alternate spellings, phonetic equivalents, translations, distinct terms with a similar meaning, or the like. Yet prior trademarks that are not identical can still create a likelihood of confusion in some situations.
If a knockout search is all your budget permits, it may be better than nothing. But often a knockout search is often too limited to provide a lot of value. For example, for a trademark clearance or freedom-to-operate in the United States where unregistered “common law” trademark rights can exist, a knockout search is generally inadequate. And even for merely preliminary purposes some “bargain” searches may fall short. Quite frankly, cheap searches are not always reliable.
More Comprehensive Searches
A more comprehensive or full trademark search is usually just what the name implies. It is a broad search meant to capture as much as is feasible within a reasonable budget. More comprehensive searches will typically assess any unregistered prior uses. These searches also usually devote much more effort toward searching for alternate spellings, phonetic equivalents, and different words with similar meaning. But beyond those typical parameters, the exact scope of these searches can still vary. There is a continuum of effort involved.
For example, sometimes, but not always, they will address registrations in U.S. states, territories, and districts too. For marks used only locally, and not in interstate commerce, such a state or similar registration might be the only type available. Searching all such state-level registrations can add significant extra expense to a search and therefore is frequently omitted.
Also, whether foreign words are searched will also vary considerably. There are many languages and whether wording of a proposed mark would be considered relevant to one with a similar meaning in another langue is very context-dependent. It can matter if the other language is commonly spoken in a relevant area. For these reasons, translations will usually be considered like separate searches and excluded from even fairly comprehensive searches.
Special Searches
There can also be other types of trademark searches meant to address very particular questions. For instance, there can be situations during the examination of a trademark application or in connection with a lawsuit in which certain trademark searches are useful. These can include searches for evidence of relatedness of goods and services, by looking for usage of a single brand with different but “related” goods/services. Also, trademark-related searches might be performed to identify evidence of genericness or of descriptive meaning of the the words of a given mark.
Geographic Scope
Every trademark search should consider the particular jurisdictions of interest. That is because trademark rights are territorial. They exist only in in particular countries, states, or blocs (like the European Union). For example, there might be pre-existing trademark rights in one country but not another. A search for trademarks in one country will tell you little or nothing about trademark rights in other countries.
If new branding will be used in multiple countries or geographic regions, a trademark search (or series of searches) should encompass each and every one of them. Even if a trademark will not be used in other regions immediately, if expansion to them is likely or merely possible in the future it may help to search those countries too. This can allow evaluation of possibilities for later geographic expansion. This avoids being boxed-in and finding later expansion stymied.
For very substantial brands, with large advertising campaigns planned, it may also be worthwhile to search other jurisdictions to identify potential priority claims. This is because an international treaty may permit an application to be filed in a country of interest that claims priority to an application filed in another country up to six months earlier. In other words, this means searching in countries beyond those you plan to use your mark in. Although this sort of step is often skipped due to the effort and cost and the relative infrequency of such priority claims causing problems.
Which Types of Search Is Right for You?
The type or scope of searching that fits your needs will depend on the nature of the proposed use of a trademark and the particular legal questions you want to address. And your budget. But bear in mind that a search alone tells you little or nothing unless the search results are analyzed by knowledgeable trademark counsel. It is all too easy to misunderstand the significant of bare trademark search results if unfamiliar with trademark law. You need a legal opinion too. Running a few queries yourself in a trademark database and (supposedly) getting “no results” may only provide false confidence.
Another way to think about all this is to ask, “How difficult would it be to later re-brand later?” If the answer is “difficult”, then a broader and more thorough search and analysis is worthwhile. When you are not well positioned to pay legal fees to defend yourself against infringement allegations, or just the thought of having to do this later seems unpleasant, then a search is one way to try to reduce those risks upfront. These things point to doing more than a cursory knockout search. Yet a slogan or tagline might be easily dropped or changed in some situations, unlike a primary brand.
More limited searches are better suited to low-stakes situations. For instance, when you are only concerned with registrability in the short term, such as for a planned intent-to-use (ITU) trademark application, then a knockout search may be minimally adequate. During examination of new U.S. federal trademark applications, the U.S. Patent & Trademark Office (USPTO) only looks at prior federal registrations and pending applications. They do not search for unregistered “known marks”. So a knockout search is similar in scope to searching done by a trademark examiner. But a knockout search will usually not provide a very good picture of all possible oppositions or cancellations sought by others against your desired trademark registration.
Have a Backup or Alternate Mark In Mind
It is quite common for a trademark search to reveal a potential problem with a proposed mark. For that reason, it is often helpful to conduct searching against a list of multiple candidate trademarks. These could be ranked in preferential order. Having a list of multiple marks searched and then legally reviewed in parallel or in preferential sequence increases the chances that at least one of them will be available and registrable. This can be especially beneficial when clearing a mark planned for use in many different countries or regions.
Of course, working from a list of multiple candidate trademarks makes the most sense before you have committed to certain branding. That can be challenging for many businesses. There is a tendency to grow attached to desired branding. But the pain of giving up on a favorite only gets worse if you have to re-brand later because of a problem.
Caution: No Search is Perfect
No matter how thorough, no search can eliminate all risk when selecting and adopting a trademark. Searching is always imperfect and can only serve to minimize risks. Trademark rights in the United States arise primarily from use and not mere registration. So it is possible that someone is using the proposed mark (or a similar one) in connection with the same or similar goods and/or services, but that use may not be detected in the search. That could be because the prior user did not seek registration or a prior mark was not listed in any of the resources or databases that the searcher used.
Also, when it comes to the analysis of search results, there can be differences of opinion. A prior user or registrant noted in this search may object to use or registrations of a proposed mark. Such objections may be questionable or even baseless at times. That is sometimes called trademark bullying. Or there may be facts that influence the ultimate outcome of a dispute that the searcher or attorney was not aware of.
The main takeaway is that just because a search does not identify any problems does not mean that an infringement allegation or refusal of registration is impossible. The right search and a competent legal analysis can still be quite useful and valuable.
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.
When adopting branding, such as a brand name or logo, people sometimes wonder, “Do I need to conduct a trademark search?” Or, “Is this trademark available?” These questions can arise when considering filing a new trademark application. Or they can come up when adopting branding for new products or services being offered for sale. In either context, this question should be considered at some level. What follows is more detailed information about whether and when a trademark search is worthwhile. Another article covers how to structure a trademark search.
What a Trademark Search Can Tell You
Some brand names and logos are already taken by others. In fact, it is quite common that when you have a “great” branding idea someone else has already had the same idea or a similar one. A trademark search can help address either or both of the following questions:
Will proposed branding create a significant risk of infringing someone else’s existing trademark?
Will a given proposed trademark be registrable?
The first question is about trademark clearance or freedom-to-operate. It is about assess risk and trying to avoid infringement problems and disputes. The second question is about whether a given jurisdiction is likely to grant you a trademark registration. It is more about how protectable a proposed mark appears to be. Put another way, the second question can inform you about the scope of exclusivity potentially available under the proposed mark. But both questions are about trademark availability.
A single trademark search in a given jurisdiction can generally be used to analyze both of these questions. So one search should permit both legal questions to be addressed. But the scope and thoroughness of a search can vary.
What a Trademark Search Won’t Tell You
In the strict sense, simply searching for trademarks tells you very little. It will only produce a list of existing marks. But which of those matter? Which ones are distinguishable? Which ones are close enough to present problems? Also, simply obtaining a list of prior trademarks will not tell you whether a proposed new mark is distinctive enough to serve as a trademark. And a search alone will not address other strategic considerations involved in trying to register a particular trademark.
After obtaining search results, it is necessary to further analyze whatever comes up in a search from a legal perspective. Anyone who does not understand trademark law will struggle to properly interpret what is or is not a problem when it comes to infringement risk and obstacles to registration. Self-serving bias is a common issue too. When you have a great branding idea, you might be biased against the notion that someone else already has a trademark that presents an obstacle to your business plans. This can turn into a matter of unreasonably splitting hairs over illusory differences. Or it can lead to incorrectly disregarding inconvenient or disappointing search results.
It helps to have a knowledgeable and independent expert analyze search results and provide guidance about registrability and/or any infringement risk. This kind of legal analysis goes beyond searching alone.
Which Region or Regions?
Trademark searches should be considered for each relevant region. That is because trademark rights are territorial. They exist only in particular jurisdictions, that is, in particular countries, states, or blocs (like the European Union). For example, there might be pre-existing trademark rights in one country but not another. If new branding will be used in multiple countries, a trademark search (or series of searches) should encompass all of them.
Is a Search Legally Required?
In the United States, it is not required to perform a trademark search before applying to register a mark. So, it is possible to proceed without a search and take your chances. But it is a gamble.
But, on the other hand, investing considerable effort and resources into developing and advertising a brand only to find out later that it cannot be protected may lead to crushing disappointment. And it may result in wasted time and money. Having to rebrand later on after a problem arises is usually far more expensive than the cost of an initial search and analysis. On top of that, legal liability and even merely a cloud of uncertainty can have a terrible impact on a business, from disruption of daily operations to decreased valuation.
An early trademark search encourages adoption of a non-infringing and registrable mark from the start. The cost and burden to switch marks or re-brand generally increases over time. So even if a search is not mandated by law, obtain one along with a legal opinion still offer pragmatic benefits. Those steps can potentially avoid a lot of later headaches.
Didn’t I Already Take Care of This?
You still want a trademark search despite having registered a company or assumed name with a local government. The same goes for having already registered a domain name containing your trademark. The fact is that practically no screening is performed by the government or a domain registrar. They only care about such names having the slightest differences. Corporate filings and domain name registrations are accepted when there are only minor differences in terms of punctuation or a single different letter. That is not enough to avoid trademark problems. Trademark confusion and infringement (and/or cybersquatting) is still possible in those situations.
Small businesses often mistakenly believe that corporate and domain name filings insulate them from legal problems like trademark infringement. But they don’t.
When is a Search Needed?
In terms of timing, a trademark search should be performed before any new brand is adopted and used. In other words, the ideal time for a search is before you commit to a particular trademark and before you start actually using it. But searches can still be worthwhile later on. For instance, as usage changes to encompass different goods or services, or expands geographically, new issues might arise that call for a new or further trademark search. Special types of searches may also be useful during examination of a trademark application or in connection with a contentious proceeding.
Further, a trademark search is just snapshot at a given moment. Use of similar marks by others is constantly changing. Prior registrations are abandoned or cancelled, commercial usage changes, consumer perceptions evolve, and new brands are adopted by others. This means that trademark search results can go stale and lose relevance as time passes. Ideally, a trademark search should be performed close to when business and marketing decisions are made about the mark being searched. Old search results may not be reliable for a legal review much later in time.
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.
What sort of legal rights does a patent provide to a patent holder? This article explains what exclusive rights arise from patents. It also addresses a common misconception about the scope of patent rights.
The Right to Exclude
In the simplest terms, patent rights are about the right to exclude others. A patent provides a limited monopoly over an invention in a particular jurisdiction. The scope of rights in any given patent will depend on the scope of the claims in that patent, which define the specific invention that is patented, as well as scope of monopoly rights granted under the patent laws of the relevant jurisdiction. Patent rights are territorial. They provide enforceable rights only in a particular country (or regional group of countries). Patent rights also only last for a limited period of time, called term. At the end of their term they expire and the patented invention can then be freely practiced by others.
Under U.S. patent law, a patent gives the holder exclusive rights to make, use, offer to sell, sell, or import the patented invention. Put another way, anyone who does any of these things with the patented invention—or some other related but more indirect things—can be liable as an infringer.
The exclusive rights provided by patents can be significant. In the absence of a patent (or other intellectual property right, like copyright), a product or service that is being sold or offered commercially can generally be copied by others. But patents are only awarded for inventions that meet the requirements for patentability.
Not a Right to Practice an Invention
A common misconception about patent rights is assuming that having a patent provides an affirmative right to practice the patented invention. This is actually not true. A patent provides only a right to exclude others from practicing the claimed invention. But it is possible that someone else has a prior patent that also covers some aspect of the invention. In that case, the earlier patent can be called a blocking patent. A later invention might still be patentable as an improvement. But that later patent can be called a subordinate patent. That is because practicing it requires rights to the blocking patent during the blocking patent’s term.
Take the following simple example. A first person invents and patents a bucket. Later, another person invents and patents an improved bucket with a handle. The addition of the handle made the second invention patentable. And the later patent about the handle prevents the first inventor from adding a handle to buckets. But the earlier patent on the bucket itself prevents the second inventor from selling buckets with handles during the term of the earlier inventor’s blocking patent without a license.
Of course, it is also possible that there are laws completely unrelated to patents that prohibit selling or using a patented invention. For instance, local health & safety laws, building codes, or the like might prohibit certain things that would be necessary to sell or use an invention. Having a patent does not exempt the patentee from complying with those other laws.
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.
Patents and patent applications typically have one or more “claims”. But what are claims? What is the significance of claims in patent law? This article offers a brief explanation of what they are and why they matter. It also explains some common misunderstandings and misconceptions about patent claims that can lead to great confusion.
Purpose of Claims
Patents provide exclusive rights in the form of a limited monopoly to an invention. Claims define the scope of exclusive legal rights in a granted patent or, in the case of a patent application, the scope of exclusive rights being sought. In other words, when thinking of patents as being premised on a quid pro quo, claims define the boundaries of the exclusive rights granted by a government to the patentee in exchange for disclosing an invention.
A common way to explain patent rights is to analogize them to real property (that is, land ownership). The claims are what establish the boundaries or metes-and-bounds of legal rights to a given patented invention. So claims are a bit like lot lines that establish the perimeter of a plot of land. Anything falling within the scope of a claim is protected. Just like the area within lot line boundaries belongs to the landowner.
Consider this simple guideline for granted patents: anything claimed is patented, and anything not claimed is not patented. In that sense, claims put others on notice of the scope of exclusive rights held by a patentee. And, when a new patent application is filed, the claims are the main focus of examination to determine if the invention (as claimed) is patentable. A patent is only being sought for what the claims of a given application recite.
Legal Definition
Under U.S. patent law, claims are considered a part of the “specification” of a patent application. The basic requirements for claims are set forth in Section 112 of those patent statutes:
“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
When the U.S. patent laws set out what constitutes infringement of a “patented invention” (35 U.S.C. § 271). This is a reference to the claims. That is because the claims are what define the scope of the patented invention.
However, patent laws may differ between countries. For instance, the USA follows what is called peripheral claiming. Peripheral claims set forth the outermost boundaries of the exclusive rights with reasonable clarity, and anything outside the claims is generally not protected (with a rare exception under the doctrine of equivalents). But some other countries follow central claiming instead. Under central claiming regimes, the claims set out a basic inventive concept and the exclusive patent rights encompass an area that might extend beyond the literal scope of the claim language based upon the inventor(s)’s contribution over the prior art (as later determined by a court). Peripheral claiming makes the scope of rights more certain prior to an infringement lawsuit.
Content
What claims say and how they say it varies. They are unique to each application or patent. They are also written by patent applications, who have considerable discretion over what they recite and how they are formulated. Claims are meant to define inventions, so they necessarily vary to reflect the particular subject matter of a given invention. But any given claim might define an invention broadly or narrowly in scope, relatively speaking.
In order for a patent application to be found patentable, its claims have to meet the requirements for patentability. Among other things, this means that the claims must distinguish the invention over the prior art. Accordingly, claims of a given application may try to distinguish the prior art by reciting elements (also called limitations) that go beyond what was already known.
Claims can be—and often are—amended, and may between an original application, a pre-grant published application, and/or a later-granted patent. Claims might also be canceled/deleted or new claims added during examination (which is also called “prosecution”). There are even procedures to amend or correct claims after a patent has issued. This means that the substantive content of the claims can change over time. Sometimes this means that a given claim is narrowed by amendment to establish patentability. This can give rise to prosecution history estoppel.
The interpretation or construction of terms in a patent claim is very important. For instance, certain terms of art may have special legal or technical meaning. The way claims are interpreted can vary greatly between different jurisdictions.
Format
The format in which claims are written follow some general guidelines, even if their substantive content varies. For instance, they always appear at the very end of U.S. patents. They are each written as a single sentence. Parts of a claim may start on separate lines with special indenting to highlight distinct clauses. Although any given clause might contain multiple discrete limitations or elements. It is common for claims to use words like “wherein” and “comprising” that are not often used in everyday speech.
Means-plus-function (or step-plus-function) limitations are also a special type of claiming format permitted in the USA (35 U.S.C. § 112(f)). These limitations are interpreted to cover corresponding structures, materials, or acts disclosed elsewhere in the patent or application (and their known equivalents). Understanding when means-plus-function claiming is invoked or applies, and how to properly interpret the scope of that limitation, is sometimes difficult. But one rule is clear. There can be no “single means” claims, because a claim that contains only a single limitation in means-plus-function format would be an impermissible central claim rather than a peripheral claim.
A patent may have only one, a few, or very many claims. Typically, each claim is separately numbered. Some claims may refer back to prior claims by number. However, U.S. design patents have only a single unnumbered claim. U.S. plant patents also have only a single claim but it is numbered. Regardless of how many are present, each claim is generally considered separately. In this respect, claim numbering helps indicate how many different definitions of a given invention must be considered when evaluating either patentability/validity or infringement.
Types of Claims
Independent Claims vs. Dependent Claims
Claims can be either independent or dependent (35 U.S.C. § 112(c)). An independent claim stands on its own. In contrast, a dependent claim refers back to a prior claim (by number) and incorporates the limitations of all base claims (35 U.S.C. § 112(d)). The status of a given claim as either independent or dependent can have important legal significance for patentability/validity and other analyses.
The following is an example of a set of four claims in which claims 1 and 4 are independent claims and claims 2 and 3 are dependent claims:
1. An apparatus comprising an element A, an element B, and an element C.
2. The apparatus of claim 1, wherein the element A and the element B are each made of metal.
3. The apparatus of claim 2, wherein the element A is welded to the element B.
4. A method comprising step X, step Y, and step Z.
In the example above, claim 2 depends from claim 1. Because of that dependency, claim 2 incorporates all of the elements or limitations of independent base claim 1 and further adds an additional limitation. Claim 3 depends from claim 2, which in turn depends from claim 1. This means claim 3 incorporates all of the limitations of both base claims 1 and 2 and further adds an additional limitation. Claim 4 is another independent claim, which stands on its own. The limitations of claims 1-3 are not incorporated into claim 4.
Claim 1 of any patent or patent application is always an independent claim, because there is no prior claim to refer back to. Any claims that follow claim 1 might also be independent, or might be dependent. This depends on how they are written. Patentees have considerable latitude over how many claims and what types of claims are present. Although dependent claims are not permitted in U.S. design or plant patents.
When analyzing patents and patent applications, independent claims usually always require consideration, while dependent claims might not in some situations. For example, when assessing potential infringement, a dependent claim can only be infringed if its independent base claim is also infringed. But an independent claim might be infringed even if no dependent claim is infringed. So, in many contexts, dependent claims can be thought of as reciting optional features. Yet dependent claims might still be important. Validity and patentability are assessed on a claim-by-claim basis, so while an independent claim might be unpatentable (or invalid), dependent claims depending from it might still be patentable (or valid).
Multiple Dependent Claims
Multiple dependent claims are also possible (35 U.S.C. § 112(e)). A multiple dependent claim refers back to multiple prior claims in the alternative. Examples of multiple dependent claim references are “the method of any preceding claim” or “the apparatus of claim 1 or 2” or “the system of any of claims 2, 4, and 8.” The easiest way to think about multiple dependent claims is that they always present a single claim that is equivalent to having a number of separate dependent claims that each depend from different base claims.
Omnibus Claims
An omnibus claim makes a general incorporation into a claim of some other disclosure, without specifically defining the invention or even a central inventive concept. An example is “The apparatus substantially as shown and described.” Omnibus claims are permitted in some jurisdictions, but not in U.S. utility patents. Except U.S. design patents always have only a single omnibus claim reciting the design “as shown and described” (37 C.F.R. § 1.153(a)). And U.S. plant patents always have a single claim in omnibus format that states “as described and illustrated” (37 C.F.R. § 1.164)—although plant patents cover only asexual reproduction of the patented plant, through grafting, cuttings, etc., which distinguishes their claims from true omnibus claims in terms of their effect.
Other Types
There are a number of other names given to certain types of claims, often more informally. For instance, Jepson claims specifically identify the point of novelty (in a manner called two-part form in many jurisdictions), combination claims recite a particular combination of components, a Beauregard claim recites a computer-readable medium on which computer program instructions are encoded, product-by-process claims recite an apparatus in terms of how it is made, etc.
Difference Between Claims and Other Disclosures
One of the most important things to understand is that the claims of a given patent—and not other parts of a patent like the detailed description or drawings— define exclusive rights to a patented invention. As already mentioned, what is claimed is patented and what is not claimed is not patented. This means it is possible to have unclaimed disclosures in a given patent. For instance, a patent might include a drawing illustrating a prior art device but not claim it. In other cases, a patent might claim only one or a few particular embodiments or “species” of an invention and not a generic invention (or entire “genus”).
When trying to understand if their is risk of infringing someone else’s patent, a mistake frequently made by people unfamiliar with patent law is to look at the drawings or some other text in the specification (like the detailed description section) and assume that any and all such disclosures are “patented”. That is incorrect. Only the claims define the patented invention. There are many reasons why there might be unclaimed subject mater disclosed in a patent—including a patent office determining that some aspects were or are not patentable. But often those reasons are unimportant. It is the claims, as properly construed, that define the scope of the patentee’s exclusive rights.
In contrast, if a given prior art patent or published patent application is cited as prior art, it usually makes no difference whether the relevant prior art teachings were claimed or not. Most of the time the claims are irrelevant to the value of a given reference as prior art—with some exceptions for situations like double patenting.
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.
People unfamiliar with patents and patent law are often confused about published patent applications. This article provides a brief overview of what a published patent application is and, importantly, how it differs from a granted patent.
Contents of a Published Application
Pre-grant publication means that patent applications that have not yet been fully examined are published while still pending. This gives the general public a view of the contents of the pending application. And even if no patent is ever granted, the contents of the published application are normally still made public (with some exceptions). Published patent applications can be relied upon as prior art against later applications. In the USA, only non-provisional utility and plant patent applications are subject to pre-grant publication. Pre-grant publication normally occurs after eighteen months have elapsed from the earliest priority date.
A published patent application—or patent application publication—will take a form determined the relevant jurisdiction. In the USA, for example, each application is specially formatted for pre-grant publication in a two-column format using paragraph numbers. This means the appearance of the published application will differ from what the applicant(s) originally filed.
Example excerpt from front page of U.S. patent application publication no. 2023/0000001
Example excerpt from first page of text of U.S. patent application publication no. 2023/0000001
The published application might also include amendments, such as amendments to the claims or drawings. In some uncommon instances, amendments might be published that are later disallowed and omitted from a subsequent granted patent. But amendments submitted too late for inclusion might not be included with the publication. And appendices included in patent applications are generally not published. The USPTO can refuse to publish certain information prohibited by law or that is offensive or disparaging. Additionally, as a consequence of official preparations and formatting efforts for publication, there can sometimes be discrepancies and printing errors, in which the published version unintentionally differs from the applicant’s original application.
In some other jurisdictions, such a PCT application publications, published applications merely take copies of the application as filed by the applicant and add a cover sheet. In other words, the application is not reformatted and reflects what the applicant submitted.
Publication Numbers
Each patent application publication is assigned an official publication number. In the USA, and with PCT matters, the publication number differs from the application serial number assigned upon filing by the relevant patent office. Although in some jurisdictions the publication number may be the same or nearly the same as an application serial number.
The anatomy of a publication number in the USA is shown as follows:
Anatomy of a U.S. patent application publication number
There is a four-digit year followed by a slash followed by a seven-digit number unique to each published application, and the concluded with a kind code. The unique-seven digit numbers are sequentially assigned to each newly published application. The kind code indicates the type of publication, with “A” generally indicating a published application and “B” generally indicating a granted patent. A two-letter country-code prefix to patent publication numbers can also be present, or appended, to indicate the jurisdiction of the patent publication.
Be aware that some patent searching databases use confusing variations on official patent publication numbers and kind codes. For instance, the Espacenet portal from the European patent Office (EPO) truncates U.S. published application numbers and shortens the unique seven-digit number to a six-digit number (but dropping a leading zero). Also, some databases will retroactively apply an “A” kind code to old granted U.S. patents, from before the USPTO began printing kind codes on patents or making pre-grant publications at all.
Each jurisdiction has a slightly different format for publication numbers. For instance, PCT publication numbers have a “WO” country-code prefix and use a six-digit unique identification number.
Example publication number for PCT international publication number WO 2023/000001 A1
Publication Makes File Wrapper Available Too
Before publication, the substantive contents of pending patent applications are kept confidential by the U.S. Patent & Trademark Office (USPTO). But upon publication, which normally happens after eighteen months from the earliest priority date, the file wrapper of a published patent application is also made public by the USPTO. This allows the public to monitor the status and ongoing prosecution history of the corresponding application. While the “published application” is a discrete, stand-alone document, its publication also makes other information publicly available too. But, strictly speaking, a published application refers only to the stand-alone published version of the application and not to other materials in a file wrapper made available to the public through other channels.
Differences From a Granted Patent
A published patent application is much different from a granted patent (also called an issued patent). This is often misunderstood. Although the differences between published applications and granted patents are very significant.
In all but a few countries, patent applications must undergo a substantive pre-grant examination that establishes patentability before a patent is granted. A pre-grant patent publication merely indicates that the applicant(s) are seeking—or previously sought—a patent. But there are no enforceable patent rights unless and until a patent is granted. The existence of a published application for an application that is still pending simply means that a patent might be granted. Plus, the scope of the claims in any later-granted patent may differ from those in the published application. By way of analogy, just because someone files a lawsuit does not mean that he or she will win the case or that all the allegations are all true.
A common mistake is to refer to a published patent application as a patent. But they are not patents! It is reasonable to call them patent documents, or patent-related documents. But a published application is not directly enforceable by itself. Only a granted patent can be enforced. This is the most important distinction. A published patent application does not present immediate and direct infringement risks like a granted patent. Although the technical teachings and disclosures in a published patent application may still be prior art against later patent application claims. Yet a published application and a later related patent are often merely cumulative, meaning (apart from different publication dates) they are redundant in terms of their substantive teachings.
Another potentially confusing aspect of published patent applications is that you cannot understand the current status of the underlying patent application from the published patent application alone. A given published application may have matured into a granted patent since publication, or might have been abandoned (and/or another related “child” application might have been filed too). It is necessary to look up the current status in official records, such as though the USPTO’s Patent Center portal. Most paywalled, proprietary patent searching databases provide at least some status information, and a few (but definitely not all) free, open-access patent searching databases provide some status information. But finding and interpreting current status information is not always straightforward.
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.
As 2024 begins, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters and at the U.S. Copyright Office for copyright matters merit attention, along with developments from U.S. courts pertaining to those areas of intellectual property (IP) law. (Click the preceding links to jump to desired content).
Patents
Non-DOCX filing format requirements postponed (yet again)
The deeply unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed yet again, until January 17, 2024. Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications. Furthermore, the USPTO has indefinitely extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many strong objections from U.S. patent practitioners and practitioner organizations.
It remains to be seen whether there will be further postponements or a larger change in USPTO policy about mandatory DOCX filings, which in general provides only a small clerical benefit to the USPTO while placing large burdens and costs on applicants.
Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. But applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.
Electronic patent “eGrants” now in place
On April 18, 2023, the USPTO began issuing an electronic PDF copies of patent “eGrants” as the official versions of granted patents. Continuing a long tradition, patent eGrants are issued on Tuesdays. As of December 2023, “ceremonial” paper copies were still being automatically sent as part of a transition period. The end date of that transition period, when paper copies will no longer be sent, has not been specified. Whenever the transition period does end, paper copies of patents can still be ordered from the USPTO for a small official fee (currently $25). However, ordered copies will either be a certified copy of the entire patent (which lacks the decorative color cover like eGrants and instead includes a certification cover page) or a “presentation” patent (which is a partial certified copy of only the front page of the patent, with a unique certification statement and special seal). Both of those differ from current “ceremonial” copies.
Of note, any color drawings in patents do appear in color in the new electronic patent eGrants. This potentially reduces the need to specially order color copies.
Further, the USPTO will also begin issuing certificates of correction electronically starting January 30, 2024. Paper hard copies of certificates of correction will not be mailed after that date, although they can still be specifically requested for a fee like other patent documents.
Massive official fee increases proposed, but implementation unclear
In April of 2023, the USPTO announced plans for significant official fee increases. Materials related to those efforts can be found here, including an Executive Summary of the key official patent fee increases proposed. If implemented, many fees would be increased by 25% and some by over 700%! And some wholly new fees are proposed. The Executive Summary should be consulted for more details because of the sweeping extent of the proposed fee schedule changes.
For example, the USPTO has proposed tiered fees for continuing applications (with large fees required if a continuing application is filed more than three or seven years after earliest parent’s filing date), new fees if the number of citations submitted with information disclosure statements (IDSs) exceed tiered thresholds, higher excess claim fees, more steeply increasing subsequent request for continued examination (RCE) fees, new fees for After-Final Consideration Pilot (AFCP) 2.0 requests, reinstating and increasing fees for assignment recordations submitted electronically, and enormous increases in design application fees. The design application fee increases are being driven by the prevalence of mostly foreign applicants filing expedited examination requests as micro entities, which has created a large backlog of non-expedited design applications.
While the USPTO currently has fee-setting authority “only to recover the aggregate estimated costs to the Office,” many of the proposals would appear to exceed that authority to try to shift or discourage certain actions by applicants.
At present, the USPTO has not made further announcements in response to comments about its patent fee proposals. Some changes to the initial proposals are certainly possible. But extremely large official patent fee increases are likely by January 2025. More official information should be available sometime in the first quarter of 2024.
Design patent 1 million issued and design patent bar created
In 2023 the USPTO issued design patent 1,000,000. Also, the USPTO authorized a design patent-specific bar for practitioners without scientific or engineering backgrounds to prosecute design cases. This new design patent bar does not restrict the ability of other patent practitioners to handle design applications. Regular patent practitioners with scientific or engineering backgrounds are still able to handle any and all types of patent applications, for utility, design, or plant matters. But practitioners admitted to the new design patent bar will not be able to handle utility or plant patent applications. Other developments in the courts related to design patent practice are discussed below.
Suggested figure for publication policy changed
Applicants were previously able to suggest a figure to appear on the front page of a pre-grant publication of a patent application, but the USPTO independently decided which figure to publish on the front page and sometimes chose a different one. That policy has changed. The USPTO now exclusively uses the drawing figure suggested by the applicant for the front page of the pre-grant publication when that suggestion is included on a compliant application data sheet (ADS) that is timely filed before the USPTO begins its process of publishing the application. Despite this change, it is still common (and often recommended) for applicants to allow the USPTO to select a figure for publication on the front page and not suggest one.
Changes to USPTO online systems
On November 15, 2023, the USPTO permanently retired its PAIR and EFS-Web systems. This leaves only the USPTO’s Patent Center for making electronic filings and retrieving file histories. Although the USPTO has said that Patent Center provides all the functionality of the retired systems, that is not accurate. For instance, without any formal announcement, the USPTO deactivated its First Office Action Estimator tool. In truth, that estimator tool had ceased to be accurate for some time. But applicants are now left with no mechanism to estimate the time until substantive examination begins. Patent Center has reduced functionality in numerous areas and practitioners have found it to be prone to bugs and usability problems, including a lack of capacity.
The USPTO has also announced a plan to “reform” the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into one cohesive and modernized system called the Intellectual Property Assignment System (IPAS). IPAS is slated to be available starting January 15, 2024 [UPDATE: the transition date was pushed back to February 5, 2024]. No further details are available at this time, so it is unclear how the new assignment system will differ or what the apparently integrated patent and trademark recordation interface will look like.
More U.S. patent filing information
Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim. Additional basic information about patenting can be found in the Patent Basics guide.
Trademarks
Fee increases proposed
In May of 2023, the USPTO announced plans for official trademark fee increases. Materials related to those efforts can be found here, including an Executive Summary of the key official trademark fee increases proposed. If implemented, the naming convention and types of fees would change. For example, a typical trademark application would see at least a $100 fee increase. And, if custom identifications of goods/services are used rather than merely selecting ones from pre-approved descriptions from the Trademark ID Manual, then new “premium” surcharges of $200 per class would apply. This means that many (if not most) new trademark applications will see official filing fees increase by at least $300, and possibly more if there are multiple classes of goods/services. Somewhat similar fee structure changes and official fee increases would apply to Madrid Protocol extensions to the USA too. Various other fees will increase 10-66% or more, including a 400% increase in the fee for a letter of protest, for example.
At present, the USPTO has not made further announcements in response to comments about its trademark fee proposals. Some changes to the proposals might be made, but significant official increases are a certainty. More information should be available from the USPTO in the first quarter of 2024, and the new fees are expected to go into effect by November 2024.
New trademark search and assignment recordation tools
The USPTO retired its Trademark Electronic Search System (TESS) on November 20, 2023. A new Trademark Search tool has been made available in its place. The new tool has a more modern-looking interface. It still includes search functionality similar to that of TESS, but no longer times out during searches. Also, it offers the ability to export search results and other information as a spreadsheet. However, the USPTO has warned that the new Trademark Search system will sometimes display outdated status information, drawn from a Trademark Reporting And Monitoring (TRAM) system that the USPTO plans to retire sometime in 2024. The most accurate trademark status information can be found instead in the USPTO’s Trademark Status and Document Retrieval (TSDR) system, which is linked in individual search results. Training materials on how to use the new Trademark Search tool are available.
As noted above regarding patent developments, a new trademark (and patent) assignment recordation system called the Intellectual Property Assignment System (IPAS) is slated to become available starting January 15, 2024 [UPDATE: the transition date was pushed back to February 5, 2024].
More U.S. trademark filing information
Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications. Additional basic information about trademarks can be found in the Trademark Basics guide.
Copyrights
AI-generated works usually not copyrightable
The U.S. Copyright Office requires that works be authored by a human to be copyrightable. In the generative AI context, authorship requirements begin by asking whether the work is basically one of human authorship, with the computer/AI merely being an assisting instrument, or whether the traditional elements of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by a human but by a machine. The Copyright Office takes the view that when an AI tool solely receives a prompt from a human and produces complex written, visual, or musical works in response, such prompts function like instructions to a commissioned artist and the person making the prompts is not considered an author. Accordingly, in that situation the resultant AI-generated work is not protectable by copyright. On the other hand, if AI-generated elements are further selected and arranged by a human, those aspects may be protectable, with the non-copyrightable AI-generated elements disclaimed.
In copyright registration applications, applicants have a duty to disclose the inclusion of AI-generated content and to provide a brief explanation of the human author’s contributions to the work. Given the interest in this area, the Copyright Office has an ongoing initiative and inquiry. Applicable policies and legal standards may continue to evolve.
Significant Developments in U.S. Courts
Patent enablement requirements reinforced
The U.S. Supreme Court unanimously ruled in Amgen v. Sanofi that “[i]f a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable.” This important decision reaffirmed a principle set out in cases going back more than a century, which preclude the grant of a patent monopoly extending beyond the invention actually disclosed. In this way, a central underlying premise of modern patent law was confirmed, that of a quid pro quo or “bargain” between the inventor(s) disclosing the invention and the public granting a limited monopoly in exchange. The Court discussed famous historic cases, including those involving Samuel Morse and Thomas Edison, as setting out the same enablement requirements.
In the Amgen case, in particular, the central issue revolved around the use of functional claim language that encompassed an entire genus of embodiments of antibodies coupled with the disclosure of inadequate teachings and embodiments pertaining to only a subset of species within that genus. The patentee Amgen had disclosed only a few (26) working examples plus a roadmap for a trial-and-error process that would have involved undue, “painstaking” experimentation to arrive at the entire claimed genus (encompassing at least millions of candidates). This was found inadequate and so the invalidation of the relevant claims for lack of enablement (under 35 U.S.C. § 112(a)) was affirmed.
A specification may call for a reasonable amount of experimentation to make and use a patented invention. Often that can be done by disclosing a general quality or general rule that may reliably enable a person skilled in the art to make and use all of what is claimed (and not merely a subset). But what is reasonable in any case will depend on the nature of the invention and the underlying art. Although not explicitly discussed in the Amgen case, courts have long recognized a distinction between so-called “predictable” arts like those involving mechanical and/or electrical inventions and “unpredictable” arts like those involving chemical and biotech inventions, as well as the amount of knowledge in the state of the art available to a person of ordinary skill. The more predictable the art, and the more knowledge a person of ordinary skill in the art would have, the less disclosure is required for enablement. Although even in the “predictable” arts enablement issues can arise, especially where “preemptive” functional or result-only claim language is used.
[Edit: in January 2024, the USPTO released guidance regarding the enablement requirement for utility patent applications in view of Amgen v. Sanofi. Existing USPTO practice of following the so-called Wands factors were essentially reaffirmed.]
Treatment of design patents continues to change
U.S. design patent practice has seen a number of significant shifts and important court decisions in recent years. Notably, there is currently a case called LKQ Corp v. GM Global Tech. Operations LLC pending rehearing that will clarify obviousness standards for designs, and how that standard is the same or different from obviousness for utility patents. At stake is whether design patents will be treated uniquely, with essentially a lower threshold for patentability (currently, obviousness is more difficult to establish for designs), or subject to basically the same non-obviousness standard as for utility patents.
Another controversial decision in the Columbia II case limited the use of “comparison” prior art in infringement analysis to highlight similarities or differences between the patented design and the accused product that might not otherwise be apparent to an ordinary observer. That case built upon recent emphasis on the title of design patents being limiting, and expanded on a prior case (In re Surgisil) that said only prior art pertaining to the same type of article claimed can be used for patentability analysis, even though priorprecedentialcases had said that considerations about use of an article are immaterial. The main takeaway is that the law around design patents continues to shift, and at least some judges have attempted to expand or strengthen design patentees’ power in ways that seem to depart from binding precedent.
District of Delaware holds patent case plaintiffs accountable
Chief District Judge Colm Connolly of the District of Delaware has implemented a standing order requiring disclosure of third-party litigation funding. This policy differs from some other districts (and other judges) that refuse to require such disclosures, even in response to discovery requests. These disclosure requirements help to identify real parties in interest to allow for recusal of the judge if a conflict of interest arises due to the judge having an ownership interest in the litigation funder.
In a set of patent cases brought by non-practicing entities believed to be connected to a common litigation funder, Chief Judge Connolly has issued sanctions and referred attorneys and a party to criminal prosecutors and state bars responsible for attorney licensing. These stem from allegations that the litigation funder is directing the litigation and attorneys are taking instructions from entities other than the named party in the lawsuit, which may constituent the unauthorized practice of law and/or a breach of attorney ethical obligations.
In at least one other case, these policies have also led to dismissal where litigation funder confidentiality agreements have precluded compliance with the Chief Judge’s funding disclosure requirements.
The significance of these probes and disclosure requirements is that these patent lawsuits are generally brought by corporate entities formed only for the purpose of bringing a patent lawsuit, and which have essentially no assets. The lack of assets by a shell company is used by litigation funders to try to shield themselves from liability for possible sanctions and attorney fee awards for bringing meritless or objectively baseless lawsuits. Occasionally, similar cases have involved accusations of sham assignments, which can impact the standing of the plaintiff to bring suit if ownership rights are illusory. These policies also bolster and supplement corporate disclosure requirements under Federal Rule of Civil Procedure 7.1, which on its face does not address things like contractual obligations that can curb settlement power or incentives, or when an entity has the power to control another through “negative control” or economic dependence standards applied by the U.S. Small business Administration to determine “affiliate” status and in turn to determine USPTO entity size status.
More generally, Chief Judge Connoly’s policies present some long-overdue limits on the use of courts to extract nuisance settlements, a problem that has been well-documented with respect to so-called “patent trolls”.
Prosecution laches
Certain cases have continued to apply so-called “prosecution laches” to render patents unenforceable. Prosecution laches is premised on prejudice to an accused infringer by the patentee’s unreasonable and inexcusable delay in prosecution of the asserted patent. Cases that apply this doctrine typically involve continuing applications. Recently, this doctrine has been applied in prominent cases by independent inventor patentees. These cases merit attention for a number of reasons. The criticized “egregious misuse” of the patent system is not something confined to a few isolated instances, but is rather commonplace. For instance, similar conduct in creating patent thickets with multiple continuation applications is routine in medical device patenting. And it is not uncommon for patentees to write claims in continuing applications to cover competitor products. Most significantly, the application of a laches defense is in tension with the Supreme Court’s 2017 SCA Hygienedecision saying that laches cannot be invoked as a defense against a claim for damages brought within the six-year limitations period of 35 U.S.C. § 286. The crucial issue is whether (or when) a judge-made policy can preclude use of statutory provisions allowing continuing applications. Also notable is reliance on unenforceability rather than, for instance, invalidity based on lack of enablement—many continuing applications of the sort that raise these questions would seem to be vulnerable to allegations of lack of enablement in the original disclosure, which is a statutory requirement.
Double patenting and patent term adjustment
In the In re Cellect case, the Federal Circuit held that patent term adjustment that differeed among patents in a family led to invalidity for obviousness-type double patenting, because the patents did not expire on the same date. This case is notable because it held that the judicially-created doctrine of double patenting led to unpatentability as a result of USPTO delay, despite the fact that this stemmed from a statutory provision (35 U.S.C. § 154) granting patent term adjustment. In other words, it presents a significant judicial/legislative separation of powers issue. On the other hand, double patenting concerns only arise when a patentee chooses to file multiple patent applications with overlapping scope.
Normally, double patenting can be overcome by filing a terminal disclaimer. But the In re Cellect case presented an unusual situation. It involved a reexamination of an already-expired patent, and terminal disclaimers are not permitted for expired patents. However, the decision in that case still established that a patent can be invalidated or found unpatentable as a result of USPTO delay, thus requiring terminal disclaimers in more situations than was generally believed necessary previously.
Copyright mandatory deposits found unconstitutional
The Court of Appeals for the D.C. Circuit has ruled in the Valancourt Books v. Garland case that the mandatory deposit requirement of the copyright laws (17 U.S.C. § 407) is unconstitutional under the Takings Clause of the Fifth Amendment of the Constitution. Mandatory deposits provided copies of works for archiving by the Library of Congress. Although some form of mandatory deposit requirement has been in place since the first copyright law was passed in 1790. But the D.C. Circuit ruled that subsequent amendments to the copyright laws had left mandatory deposits “untethered” from the benefits of copyright registration, rendering them a government taking without compensation prohibited by the Constitution. Penalties for failing to make a mandatory deposit will no longer apply.
Fair use eviscerated by Supreme Court
In a pair of rather shocking decisions (Jack Daniel’s and Andy Warhol Foundation), the U.S. Supreme Court has greatly limited “fair use” defenses with respect to both trademarks and copyrights. These decisions greatly reduce freedom to operate based on parody or artistic transformation defenses that were largely taken for granted for a long time under U.S. law, and reflect unconvincing treatment, if not outright disregard, for both fact and law. A return to prior treatment of fair use will apparently require legislative action, which is not likely in the near future.
Role of fraud in trademark matters
In the Great Concepts v. Chutter decision, the Federal Circuit held that fraud in a declaration of incontestability (under § 15 of the Lanham Act, 15 U.S.C. § 1065) cannot be used as a ground to cancel a trademark registration. This creates a split with the Ninth Circuit’s prior 1990 decision in Robi v. Five Platters, which held that a statement of incontestability that fraudulently asserted that there were no adverse decisions involving the registered mark justified cancellation. This means that this particular ground for challenging a registration will only be available in courts and not in Trademark Trial and Appeal Board (TTAB) administrative cancellation proceedings.
Significantly, the Federal Circuit did not reach a major point from the appealed TTAB Great Concepts decision holding that recklessness was sufficient to establish fraud. The Federal Circuit has generally taken an idiosyncratic view of fraud, and numerous past decisions (not limited to trademark law) have made it difficult to prove fraud—despite (or rather because of) the prevalence of accusations and circumstantial evidence of fraud. This issue is also loosely tied to the contentious Iqbal/Twombly “plausibility” pleading standards, which altered longstanding notice pleading requirements, and which research has shown allows judges to limit access to the courts (and associated evidentiary discovery) for certain types of claims for ideological reasons.
Crisis of legitimacy in judiciary continues
U.S. Supreme Court justices have been mired in ethicsscandals and public confidence in the Court remains at or near record lows. These scandals have revolved around essentially influence/bribery concerns and deficient disclosure of income and “gifts” that call into question judicial impartiality. There was a recent introduction of a code of conduct formulated by the Supreme Court justices themselves with no clear enforcement mechanism—with the justices apparently taking the position that they have already been compliant with the new code of conduct, as an attempt to deflect the serious charges leveled against them rather than meaningfully address them. The judiciary’s self-policing has been criticized in general.
Specifically in the IP field, on September 20, 2023 Judge Pauline Newman was suspended for one year from the Federal Circuit, the court with exclusive appellate jurisdiction over patent lawsuits. At 96 years old, she is the oldest current serving U.S. federal judge, appointed by President Regan in 1984. Her suspension resulted from her refusal to cooperate with an investigation into her fitness due to health issues and her treatment of court staff. As of December 2023, she has still refused to either retire or cooperate with the official investigation, a course of conduct that has reflected poorly on her and, more broadly, has tarnished the reputation of the judiciary as a whole. Judge Newman continues to challenge her suspension and the investigation as a whole—on “libertarian” grounds that deny government authority and therefore sit uncomfortably with her role as a federal judge.
Additionally, an employment-related complaint by an administrative patent judge (APJ) at the USPTO for abuse of authority was initially sustained in May of 2023. The APJ had reported interference with Patent Trial & Appeal Board (PTAB) judge assignments through “panel stacking” in order to alter case outcomes (in a separate Freedom of Information Act [FOIA] case, the USPTO refused to disclose how often this occurred). Supervisors then retaliated against him. This matter points to more general transparency and credibility problems and a lack of independence of administrative judges (within the executive branch). It follows a 2022 Government Accountability Office report finding that a majority (67%) of APJs felt pressured by management to alter specific decisions in AIA proceedings and a smaller but still significant number (34%) felt similar pressure in ex parte appeals. It further follows the Supreme Court’s 2021 Arthrex decision, which held that APJ appointments violated the Appointments Clause of the Constitution but that such deficiencies were resolved by allowing PTAB decisions to be reviewed by the Director of the USPTO—essentially undermining APJ independence and objectivity in favor of protecting the political aspects of appointment authority. These issues also recall concerns about secret USPTO actions during application examination placing public relations / perception management concerns ahead of objective patentability requirements established by the legislature.
To foreign observers, the crisis of legitimacy in the U.S. judiciary might seem to merely extend a legitimacy problem with U.S. government action both domestic and worldwide, including investigations/proceedings against presidents past and present and conduct before bodies like the United Nations.
December 2023
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.
Patents have a maximum term and cannot be renewed. This is part of the quid pro quo underlying modern patent law. The patentee gets exclusive rights for a limited time but then the technology disclosed in expired patents can be freely used by the public (in at least the jurisdiction that issued the patent). Knowing how to calculate patent term is therefore important in order to determine when a given patent has expired. But, for better or worse, the term of any given patent can vary. There is no single fixed term for all U.S. patents. And the applicable term is not always apparent on the face of a given patent. So how is patent term calculated for U.S. patents?
USPTO Patent Term Calculator
One of the simplest and most practical ways to determine the term of a given U.S. patent is to utilize a patent term calculator provided by the U.S. Patent & Trademark Office (USPTO). Using this downloadable spreadsheet requires inputting certain information about a given patent. Only some of the necessary information appears printed on a granted patent. Other information must be researched in USPTO records, mainly through Patent Center.
The advantage of the USPTO’s patent term calculator is that it can be used by anyone, even people who do not understand the applicable patent laws. However, it still requires ascertaining the correct information to enter in the spreadsheet. That requires knowing where to find such information. The patent term calculator also requires a level of confidence that the correct information is being entered. That is, it still requires knowing some of the terminology so that correct, relevant information is entered.
Read on for more information about the sorts of information relevant to proper patent term calculations.
Relevant Factors
What follows is a more detailed explanation of factors that determine the enforceable term of a given patent. These factors include factors that influence how to calculate a given patent’s term, as well as things that might cut short the enforceable term of a given patent. In any given instance, consulting with a knowledgeable patent attorney is recommend to determine the correct term of any given U.S. patent.
Type of Patent
Paten term first of all depends on the type of patent involved.
U.S. utility and plant patents have a basic term of 20 years from the relevant filing date (35 U.S.C. § 154)—there being some nuance about which filing date is used here.
Timeline Showing Basic Patent Term for U.S. Utility and Plant Patents (Including PCT National Phase Entries)
A priority claim to a foreign patent application (stemming from the Paris Convention or a PCT application that did not designate the USA) or to a prior U.S. provisional patent application does not count against the term (35 U.S.C. § 154(a)(3)). This means a foreign priority or prior provisional filing can effectively extend patent term.
Timeline Showing Basic Patent Term for U.S. Utility and Plant Patents Based on a Prior U.S. Provisional or Foreign Priority Application
For regular PCT national phase entries to the USA, the PCT international filing date is used for term calculation (not the date of later U.S. national phase entry). That is, a PCT international application designating the United States is treated as a U.S. application (see 35 U.S.C. §§ 372 and 375), with the national phase being just a different phase of the same application. So an ordinary national phase entry into the United States does not, by itself, involve a “priority” claim–although there may additionally be a priority claim involved.
The so-called domestic benefit of a prior U.S. non-provisional application (that is, for a continuation, continuation-in-part, or divisional application under 35 U.S.C. §§ 120, 121, 365(c), or 386(c), including PCT “bypass” applications) does count against patent term, so the term calculation should be based on the earliest such prior filing date. In other words, continuing applications that have priority/domestic benefit of a prior U.S. non-provisional application will have a reduced patent term. The related U.S. application data field (INID code 63) on the face of a patent, if present, can indicate an earlier filing date that may impact term.
Timeline Showing Basic Patent Term for Continuing U.S. Utility and Plant Patents Based on a Prior Domestic U.S. Application (Including PCT “Bypass” Applications)
Example of INID code 63 “Related U.S. Application Data” field on front page of U.S. Pat. No. 11,102,682, showing earliest filing date for patent term calculation of a continuing application
In contrast, U.S. design patents currently have a fixed basic term of 15-years from the date of grant (35 U.S.C. § 173). The filing date issues referenced above do not impact design patent term. This means that continuing design patents can potentially have later expiration dates, unlike with utility and plant patents.
Timeline Showing Basic Patent Term for U.S. Design Patents
Reissue patents are possible “for the unexpired part of the term of the original patent.” (35 U.S.C. § 251). This means that a reissue patent’s term is no longer than the term of the original patent, as subject to any extension or adjustment. It is possible that a reissue patent’s term could be shorter than that of the original patent (see discussion of terminal disclaimers below). But reissue does not lengthen patent term.
Filing Date and Changes in the Law
The laws around patent term have changed over time. Some patents applied for or granted prior to those changes in the law may be subject to a different term.
U.S. utility and plant patents applications filed before June 8, 1995 can have a term of 17 years from the date or grant rather than from the earliest applicable filing date. Any patent that was in force on June 8, 1995 will have a term that is the greater of the 20-year term as discussed above or 17 years from grant (35 U.S.C. § 154(c)).
For U.S. design patents, those issued from design applications filed before May 13, 2015 have a 14-year term from the date of grant (rather than 15-years from grant).
Of course, there may be future changes in the law that affect patent term calculations. And courts may issue decisions that affect the interpretation of laws that impact patent term calculations.
Patent Term Adjustment
Certain delays in examination can lead to an adjustment of patent term for a given original patent (but not for a reissue). This is called patent term adjustment (PTA) under 35 U.S.C. § 154(b). Normally, this PTA is calculated as the number of days beyond the basic 20-year term that the patent can remain in force. The PTA period normally appears on the face of each granted patent—typically in a “Notice” field denoted with an asterisk (*). The USPTO’s Patent Center portal also has a menu tab showing detailed PTA calculations for a given patent. However, it is possible for a patentee to challenge the USPTO’s PTA calculation in some circumstances, meaning the PTA period might be corrected later. PTA does not apply to design patents.
Example of PTA notice on front page of U.S. Pat. No. 10,000,000, showing 430 days of additional patent term
Patent Term Extension
Patentees can potentially obtain patent term extension (PTE) under 35 U.S.C. § 156 based upon premarket regulatory review of certain human drugs, food or color additives, medical devices, animal drugs, and veterinary biological products. This restores some term lost while awaiting premarket government approval from a regulatory agency. An application for PTE must be submitted within sixty (60) days of when permission for commercial marketing or use occurred. Patentees have to affirmatively apply for PTE, which is not automatically granted. Also, PTE is only possible for patents on certain types of subject matter; it does not apply to design or plant patents. § 156 PTE is not indicated on granted patents and must be researched in USPTO records, mainly through Patent Center.
Disclaimers
A given patent may be subject to a disclaimer (35 U.S.C. § 253). The two types of disclaimers are a terminal disclaimer or a statutory disclaimer.
In a terminal disclaimer, the patentee disclaims or dedicates to the public a portion of the term of a given patent. That is, the term of the patent is shortened from what it might otherwise be. Terminal disclaimers are frequently used to overcome double patenting, by disclaiming the period of patent term (if any) that would extend beyond that of one or more other patents. They are also used when design patent applications are revived after abandonment, disclaiming a period of patent term equal to the period of abandonment. Terminal disclaimers do not affect § 156 PTE, however.
Example of terminal disclaimer notice on front page of U.S. Pat. No. 11,102,682
Excerpt from example terminal disclaimer filed against U.S. Pat. No. 11,102,682, disclaiming term beyond that of U.S. Pat. No. 10,667,181
The USPTO has sometimes, but not always, printed an indication that a given patent is subject to a terminal disclaimer on the front page of the patent. Terminal disclaimers can also arise after a patent has been granted. In any event, the duration (and possibly also the existence) of a terminal disclaimer must be researched in the prosecution history of the relevant patent in USPTO records. This can generally be done using the online Patent Center portal and viewing the “Documents & Transactions”. Although the calculation of the disclaimed period may require additional research and analysis. For instance, it may be necessary to calculate the term of one or more other patents or the period of applicant delay for a design patent.
For statutory disclaimers, one or more claims of a patent are effectively surrendered. This means that some claims may no longer be in force, even though other claims might.
Lapse or Expiration for Non-Payment of Maintenance Fees
In order to keep a given U.S. utility patent in force, periodic maintenance fees are required (35 U.S.C. § 41(b)). These are due by four, eight, and twelve years from the grant of the patent. However, there are no maintenance fees required for U.S. design patents or plant patents (37 C.F.R. § 1.362(b)).
If a maintenance fee is not paid on time, then the patent will lapse or expire. This means that a given utility patent might no longer be in force even though it has not yet reached its maximum possible term.
What makes lapses/expirations complicated is that the patentee may be able to reinstate (that is, revive) the patent if a maintenance fee payment deadline was missed unintentionally. This may give rise to intervening rights (35 U.S.C. § 41(c)(2)). So, significantly, the expiration or lapse of the U.S. patent due to a missed maintenance fee may not mean the final and absolute end of rights in that patent if late payment is accepted.
Terminology describing this lapses/expiration for non-payment of maintenance fees hasvaried. The USPTO currently tends to use “expiration” but “lapse” is a better term because it differentiates situations where revival is possible from those in which a patent’s term has expired permanently because it has reached its maximum limit.
Invalidation and Cancellation
Patents can be invalidated by courts or cancelled by the USPTO, usually as the result of a challenge by another entity. This can affect all or merely some claims of a patent. Such an adverse ruling (after exhaustion of all rights of appeal) can end or limit rights in the patent short of its maximum possible term. It is necessary to research the existence and status of such an adverse ruling, if any.
Withdrawn Patents
Lastly, some patent numbers have been withdrawn by the USPTO. These were essentially never really patents in the first place, for various reasons, and thus have no term. Although, to complicate matters, the USPTO has also reinstated some previously withdrawn patents.
Laws Vary by Jurisdiction
The discussion above pertains only to U.S. patents. In other countries, laws may differ regarding the calculation of patent term, the availability of supplementary protection certificates, and so on.
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.
Abstract: This article provides critical analysis of the doctrine of assignor estoppel for patent assignments following the Supreme Court’s Minerva v. Hologic decision, which limited the situations in which the doctrine is available to those that involve a “contradiction” by the assignor that violate norms of “fair dealing”. An overview of the likely abrogation of prior Federal Circuit cases is provided. Although, as explained, there are significant policy disputes that underlie the doctrine that have not been definitively resolved, which will undoubtedly be the subject of dispute in future cases. Also addressed, and questioned, are corollaries and related Federal Circuit precedents involving privity, the effect of purported assignments of future inventions and the role of claim construction to preserve validity defenses. For the latter, an “assignor estoppel donut” is conceptualized to highlight the multiple boundaries involved, of which Minerva’s holding addressed only one. Lastly, an analysis of pragmatic assignment scenarios and potential areas of dispute around them is set forth, in order to inform both assignment drafting and negotiation, on the one hand, and legal disputes over existing assignments, on the other.
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.
What are the minimum requirements to establish enhanced damages for patent infringement after the passage of the America Invents Act (AIA) and the U.S. Supreme Court’s decision in Halo, and what evidence can be presented on this point? Post-Halo cases reveal areas of ambiguity and dispute. Some dispute involves willfulness theories falling close to the line between reckless conduct sufficient to establish willfulness and merely negligent conduct that is not willful. But a lingering ambiguity is how 35 U.S.C. § 298 may exclude from willful patent infringement certain conduct that might be considered reckless—and thus willful—in other areas of tort law. For whatever reason, § 298 has received little attention or treatment, which has even led to decisions contrary to that statutory provision.
A Brief History of Willfulness
Let us begin with some context for how willfulness has evolved in patent law.[i] Damages enhancement is governed by 35 U.S.C. § 284, even though the term “willful” does not explicitly appear there. In the early 1980s, the Federal Circuit established an affirmative duty of due care and an adverse inference of willfulness if the accused infringer did not both obtain advice of counsel and waive privilege to present an advice of counsel defense.[ii] Decades later, the Federal Circuit abolished the adverse inference in Knorr-Bremse.[iii] Then it abolished the affirmative duty of due care in Seagate, substituting a two-prong willfulness analysis requiring “objective recklessness” as a prerequisite.[iv] In the aftermath of those cases, the AIA introduced § 298, which prohibits use of the failure to obtain advice of counsel or make an advice of counsel defense to establish willfulness (or inducement).[v]
In 2016, the Supreme Court in Halo threw out the “objective recklessness” prerequisite, finding its “inelastic constraints” insufficient to allow courts to punish “the full range of culpable behavior.”[vi] The Court held that “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.”[vii] Therefore, “[t]he subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless.”[viii] The Court discussed how reckless conduct supports punitive damages where willful intent is required while merely negligent conduct does not, clarifying that “a person is reckless if he acts ‘knowing or having reason to know of facts which would lead a reasonable man to realize’ his actions are unreasonably risky.”[ix] The abrogated “objective recklessness” threshold had allowed classically reckless conduct to be exonerated by after-the-fact rationalizations, which meant that some reckless conduct was inappropriately shielded from punitive enhanced damages.[x]
Later Federal Circuit cases have interpreted Halo as abrogating the “objective recklessness” requirement in a relatively narrow way but leaving intact much other pre-Halo case law,[xi] which presents challenges for anyone trying to parse out the way older cases may have been abrogated only in part but are potentially still controlling as to other aspects. The Federal Circuit has maintained that “willfulness” is a question of intent involving the accused infringer’s state of mind that is for the finder of fact (jury) to decide,[xii] and knowledge of the asserted patent is a prerequisite to a finding of willfulness.[xiii] After willfulness is established, the question of enhancement of damages is then a question for the court (rather than jury) to decide[xiv]—though a willfulness verdict does not automatically entitle the patentee to enhanced damages.[xv] But a court’s discretionary moral judgment regarding enhancement does not depend on any preceding factual finding of a particular state of mind or level of intent of the infringer.[xvi]
District court decisions post-Halo have begun to explore the minimum requirements to plead and then introduce evidence of willfulness, though the Federal Circuit has not yet reached some of the new theories definitively. These various new theories address what it means to subjectively “have reason to know” that accused conduct presents an unreasonable risk of patent infringement in the absence of direct evidence that the accused party actually knew about the patent and that there was a high probability its conduct infringed, as well as the effect of the accused taking affirmative steps to avoid learning of such facts.[xvii]
New Theories of Willful Infringement
First, a number of district courts have found “willful blindness” to be an acceptable theory of willful patent infringement. Motiva from the Eastern District of Texas is perhaps the most widely known of these cases, holding that “[s]ince the Supreme Court has explained that willful blindness is a substitute for actual knowledge in the context of infringement, it follows that willful blindness is also a substitute for actual knowledge with respect to willful infringement.”[xviii] Willful blindness has two basic requirements: (1) the accused must subjectively believe that there is a high probability that a fact exists, and (2) the accused must take deliberate actions to avoid learning of that fact; these two requirements mean willful blindness has a limited scope that surpasses recklessness and negligence.[xix] To avoid dismissal, patentees must make “plausible” willfulness allegations regarding both requirements for willful blindness.[xx]
What has generated much discussion about willfulness theories relying on willful blindness is the role of “no patent review” corporate policies that (at least on paper) bar employees from reviewing competitor patents.[xxi] Yet the mere existence of such a “no patent review” policy is not per se sufficient to plead willful blindness for willful infringement unless there is also a plausible allegation that the accused party subjectively believed a high probability of patent infringement existed.[xxii] In practical terms, this means there must be something more than simply a blanket corporate policy that applies to any and all (competitor) patents and that “something more” must plausibly suggest a culpable state of mind with regard to infringement of the asserted patent.
Second, some courts have addressed other theories—distinct from “willful blindness”—that an accused infringer should have reasonably known about the asserted patent. For example, district courts are divided about whether actual knowledge of an unasserted family-related patent coupled with an allegation that the accused should have investigated that patent family to discover the asserted patent—such as a broader continuation or broadening reissue—is sufficient to support willfulness.[xxiii] At times, these other theories appear uncomfortably close to the old, abrogated affirmative duty of due care.[xxiv] These other theories seem less stringent and more expansive than willful blindness, partly because they fall close to the boundary between negligence and recklessness but also because decisions on these theories often contain little or no discussion of why the accused had reason to know that there was infringement of a later-issued patent and not merely reason to know that the later-asserted patent existed.[xxv]
Statutory Limits on Evidence of Willfulness Under § 298
But what about § 298? A curious feature of many post-Halo willfulness cases is how little that section introduced by the AIA is discussed or even cited by courts when dealing with issues to which it directly relates, namely the relevance of evidence under the second Read factor: “whether the infringer . . . investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed.”[xxvi] This is most troubling when courts proffer reasoning based on case law that was abrogated by § 298 (if not also by Seagate). Section 298 states:
“The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.”[xxvii]
There can be no question that § 298 excludes certain evidence from use to prove willfulness, including (1) the failure to consult an attorney and (2) the decision to maintain privilege over advice received from counsel. Yet an asymmetrical framework remains: the accused infringer is still free to obtain a legal opinion and later voluntarily present an advice of counsel defense based on that legal advice,[xxviii] but a “decision not to seek an advice-of-counsel defense is legally irrelevant under 35 U.S.C. § 298.”[xxix]
The key effect of § 298’s framework has to be that “having reason to know” for a (recklessness) willfulness theory must be limited to what the accused infringer reasonably should have known at the time without the assistance of counsel. The scope of the accused party’s (subjective) knowledge of the intricacies of patent law will vary considerably, though. For instance, lay parties might reasonably believe that broader later-issuing patents or reissues are not likely or that something like prosecution laches would apply to them.[xxx] This subjective knowledge may be difficult to even infer from circumstantial evidence in situations in which the accused did obtain advice of counsel but chooses not to waive privilege and not to make an advice of counsel defense based on that advice. And mere speculation on this point is generally inadequate. Moreover, as one district court held, attempts to suggest what the accused knew based on privileged communications not in evidence may be improper as a “disguised” attempt to circumvent the limits set forth in § 298.[xxxi] In a somewhat counterintuitive way, § 298 provides two distinct incentives to obtain advice of counsel because an accused party can either waive privilege in such advice and present an advice of counsel defense or maintain privilege and later potentially shield certain state of mind inquiries or inferences implicating that (maintained) privilege.[xxxii]
Does a Duty of Due Care Still Exist? And Does It Matter?
Seagate abrogated the affirmative duty of due care; but when Halo later abrogated the “objective recklessness” standard, a question arose as to the impact of Halo’s abrogation of the abrogation of the duty of due care.[xxxiii] The Federal Circuit has not explicitly weighed in on this point, and no Federal Circuit case since Halo mentions the term “duty of due care” at all. On the one hand, § 298 makes the existence or nonexistence of a judicially created duty of due care less important. But a real question remains about how patentee use of the second Read factor against an accused infringer may now be abrogated in whole or part. Can an accused party’s failure to conduct a nonlegal investigation of some sort regarding an asserted patent be used to establish willfulness today?
Worth mentioning at the outset is the Federal Circuit’s Broadcom case regarding induced infringement. There, despite the abolishment of the duty of due care, “[b]ecause opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer ‘knew or should have known’ that its actions would cause another to directly infringe, . . . such evidence remains relevant.”[xxxiv] This is not at all straightforward. At first blush, failure to meet an abolished/nonexistent duty of due care hardly seems relevant, logically if not legally. But in any event, the passage of § 298 abrogated precedent like Broadcom with regard to failure to obtain advice of counsel (or to present such a defense).[xxxv] But if the duty of due care only ever pertained to advice of counsel, then its abrogation (by statute or case law) might have left intact some separate due inquiry obligation under the second Read factor.[xxxvi]
Tending to complicate matters here are cases reaching conclusions plainly contrary to § 298, or reaching conclusions as to the boundaries and implications of that section without meaningful explanation. For instance, one district court ruled that “failure to produce . . . an opinion for trial can be considered as a factor in the jury’s determination of willfulness.”[xxxvii] Astoundingly, that court discussed old cases without any reference to their abrogation, and its ruling ended up permitting use of statutorily barred evidence for willfulness.[xxxviii] Moreover, a nonprecedential Federal Circuit decision discussed the second Read factor and found that a lack of investigation of asserted patents provided some evidence of willfulness, reaching that conclusion without discussing legal relevance limits under § 298.[xxxix]
Justice Breyer’s concurrence in Halo suggested that a nonlawyer analysis of an asserted patent might be enough to show a lack of willfulness,[xl] though the majority opinion was silent about that scenario. But that very issue came up in a district court case that held a willfulness verdict to be supported by evidence that “years of lucrative infringing sales [occurred] after failing to respond to the . . . licensing letter with a minimally adequate analysis of whether a license would be necessary,” which the court said was not prohibited by § 298 because the jury was instructed to disregard such matters, although the accused did try to present evidence of a nonlawyer invalidity analysis that the court excluded at trial.[xli] This illustrates the problem of courts too often suggesting what is in effect an adverse inference in jury instructions and then trying to immediately unring the bell by stating that no adverse inference of willfulness is permitted.
Yet a contradiction often remains. A more defensible formulation is that a jury’s inferences of knowledge of the asserted patent and of infringement can support a willfulness finding in the absence of countervailing evidence. That is, an accused infringer simply runs a greater risk of a willfulness finding if no advice of counsel defense or the like is pursued to rebut willfulness allegations because a jury can properly infer minimally sufficient knowledge and intent even in the absence of direct evidence on those points, and this does not require going so far as to assign any probative value to a failure to act. There is an important difference between willfulness being inferred from unrebutted circumstantial evidence and the failure to act (e.g., to investigate or seek legal advice) itself being treated as positive evidence of willfulness.
It is fair to distinguish the possibility of the accused making a nonlawyer analysis or inquiry defense to a charge of willfulness from an affirmative duty to do so. On its face, § 298 bars patentees from arguing about failures to obtain or present “advice of counsel” evidence.[xlii] But nothing in the literal text of § 298 bars evidence of a failure to conduct a lay investigation of an affirmative claim of infringement. Yet excluding evidence of nonlawyer investigations or analyses by the accused runs against Justice Breyer’s Halo concurrence, if not also the implicit framework of § 298.
In these senses, the question of what evidence is relevant and what, if any, quasi “duty of due care” investigation/analysis requirement remains under the second Read factor becomes significant. While cases have relied on investigative failures to support willfulness, the reasoning and justifications for such conclusions are often shaky at best or simply stated in a confusing manner. Courts will need to sort this out more definitively. But, for their part, patent litigation counsel need to be more consciously aware of these issues so they can be raised and argued when appropriate.
Key Takeaways
Post-Halo, the Federal Circuit applies a two-step process to claims for enhanced patent infringement damages under § 284: willfulness is initially a question for the finder of fact, and then subsequent enhancement, if any, is at the court’s discretion.
Failure to obtain or present an opinion of counsel cannot be used to prove willfulness, though obtaining an opinion can still be valuable to rebut charges of willful infringement; however, the value or necessity of nonattorney patent infringement and validity investigations is not yet clear.
“Willful blindness” has been accepted by many district courts as a willfulness theory, but at the outset it requires plausible pleadings about the accused’s subjective belief that there was a high probability that the asserted patent both existed and was infringed and that the accused took deliberate actions to avoid learning of those facts; “no patent review” policies may or may not meet all of those requirements.
District courts are divided over whether willfulness can be plausibly supported by a failure to monitor or investigate a patent family after learning about an unasserted patent in that family (in the absence of affirmative avoidance of facts akin to willful blindness).
Relevance limits under § 298 have often been overlooked by courts but should be considered for evidentiary objections and motion practice.
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.
[ii]. Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389–90 (Fed. Cir. 1983) (“Where . . . a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing,” including “the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity.”).
[iii]. Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1345–46 (Fed. Cir. 2004) (en banc) (“Although there continues to be ‘an affirmative duty of due care to avoid infringement of the known patent rights of others,’ the failure to obtain an exculpatory opinion of counsel shall no longer provide an adverse inference or evidentiary presumption that such an opinion would have been unfavorable.” (citation omitted)).
[xiii]. WBIP, 829 F.3d at 1341; see alsoSRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1310 n.6 (Fed. Cir. 2019) (when willfulness began is a factual issue).
[xvi]. But questions arise where the Federal Circuit appears to suggest that certain levels of intent can support willfulness but not enhanced damages, which seems contrary to Halo. SeeSRI Int’l, Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1329–30 (Fed. Cir. 2021); see also Austen Zuege, “The Federal Circuit’s Standard for Enhanced Damages,”blue over gray (Oct. 12, 2021). This apparent discrepancy might allow courts to moot a jury’s willfulness finding. SeeSchwendimann v. Arkwright Advanced Coating, Inc., No. 11-cv-820, slip. op. at 50 (D. Minn. July 30, 2018).
[xix]. Global-Tech, 563 U.S. at 769–70; Motiva, 408 F. Supp. 3d at 837 (“By definition, willful avoidance requires more than mere recklessness—and Halo holds that recklessness alone is enough to show willful infringement.”).
[xx]. Bos. Sci., 415 F. Supp. 3d at 494–95; Nonend Inventions, N.V. v. Apple, Inc., No. 2:15-cv-466, 2016 WL 1253740, at *3 (E.D. Tex. Mar. 11, 2016), adopted, No. 2:15-cv-466, 2016 WL 1244973 (E.D. Tex. Mar. 30, 2016).
[xxiii]. CompareVasudevan Software, Inc. v. TIBCO Software Inc., No. C 11-06638, 2012 WL 1831543, at *3 (N.D. Cal. May 18, 2012) (“requisite knowledge of the patent allegedly infringed simply cannot be inferred from mere knowledge of other patents,” such as “the [parent] patent, or, more generally, [the plaintiff’s] ‘patent portfolio’”), andMaxell, Ltd. v. Apple Inc., No. 5:19-cv-00036, slip op. at 9-10 (E.D. Tex. Oct. 23, 2019) (dismissing willfulness allegation based only on knowledge of application and not ultimately issued patent or knowledge of allowance of application), withSIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., No. 1:18-cv-05427, slip op. at 7–9 (S.D.N.Y. Aug. 29, 2019) (rejecting Vasudevan), andOxygenator Water Techs., Inc. v. Tennant Co., No. 20-cv-358, slip op. at 8–13 (D. Minn. Aug. 7, 2020), andSiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 609 (D. Mass. 2018).
[xxiv]. See, e.g., Schwendimann, No. 11-cv-820, slip. op. at 42 (duty of due care remains abrogated); Biedermann Techs. GmbH & Co. KG v. K2M, Inc., 528 F. Supp. 3d 407, 429 n.17 (E.D. Va. 2021) (noting abrogation issues and not intending to impose duty of due care; allegations were similar to willful blindness).
[xxv]. E.g., Oxygenator Water Techs., No. 20-cv-358, slip op. at 8–13 (passing over willful blindness to find failure to monitor/investigate willfulness theory plausible); Meridian Mfg., Inc. v. C & B Mfg., Inc., 340 F. Supp. 3d 808, 844 (N.D. Iowa 2018). But seeHalo, 136 S. Ct. at 1936 (Breyer, J., concurring) (“‘[W]illful misconduct’ do[es] not mean that a court may award enhanced damages simply because the evidence shows that the infringer knew about the patent and nothing more.”).
[xxxii]. See id. In contrast, enhanced damages were affirmed where the infringer delayed obtaining advice of counsel for years. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1371 (Fed. Cir. 2017). There, legal advice was (eventually) obtained and privilege waived, but the delay was held against the infringer.
[xxxiv]. Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 699 (Fed. Cir. 2008) (holding that “failure to procure . . . an opinion [of counsel] may be probative of [subjective] intent”).
[xxxvi]. SeeSRI Int’l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1464–65 (Fed. Cir. 1997) (“[T]he primary consideration is whether the infringer, acting in good faith and upon due inquiry, had sound reason to believe that it had the right to act in the manner that was found to be infringing.” (emphasis added)). Broadcom is still cited without mentioning its statutory abrogation. Omega Pats., 920 F.3d at 1352–53. Compare Broadcom, 543 F.3d at 699, with35 U.S.C. § 298.
[xxxix]. WCM Inds., Inc. v. IPS Corp., 721 F. App’x 959, 970, 970 n.4 (Fed. Cir. 2018) (nonprecedential) (questioning cases suggesting no duty to predict what claims will issue from a pending patent applicable because prosecution histories are now normally publicly available); see alsoSIMO Holdings, No. 1:18-cv-05427, slip. op. at 5–7; 35 U.S.C. §§ 154(d), 284.
[xl]. Halo, 136 S. Ct. at 1936 (Breyer, J., concurring); see alsoSchwendimann, No. 11-cv-820, slip. op. at 42–43; Idenix Pharms. LLC v. Gilead Scis., Inc., 271 F. Supp. 3d 694, 699 (D. Del. 2017). But seeSSL Servs., LLC v. Citrix Sys., Inc., 769 F.3d 1073, 1092 (Fed. Cir. 2014) (excluding lay testimony of belief in invalidity and noninfringement to rebut willfulness).
