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Patents Q&A

What Is Non-Analogous Art?

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Under U.S. patent law, a distinction between analogous versus non-analogous art sometimes arises. Understanding when this concept matters, and how to draw a line between these two possibilities may be important. The following article explains what analogous and non-analogous art is, why it matters, and how to determine whether a given piece of prior art is analogous art or not.

I handled a patent application years ago related to fishing lures. The examiner had cited a prior art patent directed to a rocket fuel additive for a rejection in an office action. This fishing lure application was not rocket science, as the saying goes. But could the examiner properly say that a fishing-related invention was obvious because of a prior teaching about rocket fuel additives? The concept of non-analogous art helps to answer that question.

When Non-Analogous Art Status Matters

In order for a prior art reference to be usable to establish obviousness, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Teachings in non-analogous art cannot be relied upon to establish obviousness. However, there is no analogous art requirement for a prior art reference being applied for anticipation. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).

There are two different ways to establish something is analogous art. Satisfying either one of them is sufficient. Under these tests or prongs, a prior art reference is analogous art to a claimed invention under either of the following circumstances:

  1. the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or
  2. the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)

In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).

Although, the evidence and analysis relating to the field of endeavor and reasonably pertinent prongs may overlap. And some prior art might satisfy both tests, even though the requirement is only that it satisfy one of them.

A Burden To Meet When Disputed

The analogous art requirement is about the factual foundation needed to be able to rely on a given prior art reference for an obviousness argument. See In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995); In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed. Cir. 2007). This is not merely about what a given prior art reference literally teaches. It is about whether a person of ordinary skill would have been motivated to look at or otherwise consider a reference at all in relation to the claimed invention at the time of invention (or effective filing date). That makes this a kind of threshold that disallows obviousness arguments premised on obscure, remote, or out-of-context teachings.

This is also an aspect of the well-established notion that an obviousness analysis must not succumb to hindsight bias. Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1358-59 (Fed. Cir. 2023). Jorge Luis Borges wrote in “Kafka y sus precursores” [Kafka and His Precursors]” (La Nación, August 15, 1951) that a writer modifies our conception of the past to create precursors. After describing various prior works with elements that resemble Kafka’s later work, he said, “Kafka’s idiosyncracy is present in each of these writings, to a greater or lesser degree, but if Kafka had not written, we would not perceive it; that is to say, it would not exist.” This is not a bad way of thinking about non-analogous art that only appears as a relevant precursor in hindsight. While Borges refers to writers generally, what he really was referring to was Kafka’s new and unique genius rather than ordinary writing that might merely reuse commonplace ideas and styles. This is like talking about inventive genius with patenting.

In the end, establishing that a reference is analogous art is a factual, evidentiary burden that a patent examiner or challenger must satisfy as part of arguing that a claim is unpatentable or invalid as obvious. Although, normally, analogous art status is assumed unless the patentee or applicant asserts that a given reference is non-analogous art. That means this question is not routinely addressed. In practice, it only arises when a patentee or applicant believes that an obviousness argument is improper. So, it is up to the patentee/applicant to raise this issue when applicable. Then the examiner or challenger must be able to show that the reference relied upon is analogous. That involves pointing to evidence that satisfies at least one of the two tests.

Intrinsic evidence, contained in the patent/application and its prosecution history, is generally the best and most significant. It is helpful to look at what is said in the claims, the title, and the background section, for instance, where identifications of technical fields and discussions of problems to be solved are frequently found. Often, this type of evidence alone is sufficient to determine if a reference is analogous or non-analogous art. But extrinsic evidence can also be used. For instance, there might be expert testimony in court about the knowledge and skill of a person of ordinary skill in the art, or reliance on additional patents or publications that indicate the knowledge and skill that prevailed in the art.

The Same Field of Endeavor Test

The field of endeavor test or prong asks whether the art is from the same field of endeavor as the claimed invention, regardless of the problem addressed. Bigio, 381 F.3d at 1325. This test rests on an assessment of the nature of the patent or application and claimed invention in addition to the level of ordinary skill in the art. Bigio, 381 F.3d at 1326.

The field of endeavor is determined by reference to explanations of the invention’s subject matter in the patent or application. This includes the function and structure of the claimed invention, taking into account the complete factual description of all embodiments. So this involves considering similarities and differences in structure and function between the claimed invention and the cited art. The field of endeavor is not limited to the specific point of novelty, the narrowest possible conception of the field, or to a particular focus within a given field. Courts tend to take an expansive view of the relevant field of endeavor. Netflix, 80 F.4th at 1359.

In the Bigio case, it was found that that toothbrush art was analogous to a claimed hair brush invention. In support of that conclusion, the structure and function of the claimed hair brush invention was found to be similar to that of toothbrushes. Both were in the field of hand-held brushes having a handle segment and a bristle substrate segment. Also, it was found that toothbrush prior art could easily be used for brushing hair (e.g., human facial hair) in view of the size of the bristle segment and arrangement of the bristle bundles described in the reference.

Disputes over the proper application of this test are not particularly common, because it is often clear when a reference is or is not from the same field. But when disputes do arise, they tend to center around how broadly or narrowly the relevant field of endeavor should be defined. Patentees and patent applicants will tend to argue for a narrower definition of the field, which tends to exclude more potential prior art. Challengers and examiner may instead argue that the relevant field of endeavor is broad and generic. The correct approach in any particular case is the one best supported by the facts and evidence. In other words, this test requires both accurate identification of and careful review of the relevant facts.

The Reasonably Pertinent Test

The reasonably pertinent test or prong asks whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved, even if the reference is not within the same field of endeavor. Bigio, 381 F.3d at 1325. Sometimes this is discussed in terms of a “purpose” instead of a “problem”, but this means the same thing.

When addressing whether a reference is analogous or non-analogous art to a claimed invention under a reasonable-pertinence theory, the problems to which the claimed invention and reference at issue relate must be identified and compared from the perspective of a person having ordinary skill in the art. The relevant question is whether a person of ordinary skill would reasonably have consulted the reference in solving a relevant problem. Although the dividing line between reasonable pertinence and less-than-reasonable pertinence is context dependent, it ultimately rests on the extent to which the reference and the claimed invention relate to a similar problem or purpose. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359-61 (Fed. Cir. 2020).

A reference can be analogous art with respect to a patent even if there are significant differences. Familiar items may have obvious uses beyond their primary purposes. And, for instance, a person of ordinary skill might reasonably consult a reference even if she would not understand every last detail of it, so long as she would understand the portions relevant to solving her problem well enough to glean useful information. Yet the pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement. Sci. Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).

Also, the articulation of the purpose of or problem to be solved by the patent cannot be so intertwined with the field of endeavor as to effectively exclude consideration of any references outside that field. The second prong cannot be collapsed into the first. It must remain a distinctly additional way of establishing analogousness. Donner, 979 F.3d at 1360. And, further, the so-called teaching, suggestion, or motivation (TSM) test for obviousness was overturned by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). That means overly strict problem statements cannot be used to limit obviousness to express suggestions to combine references or to otherwise ignore or contradict the background knowledge possessed by a person having ordinary skill in the art. Airbus SAS v. Firepass Corp., 941 F.3d 1374, 1383-84 (Fed. Cir. 2019)

The Airbus case involved a patent that claimed “A system for providing breathable fire-preventive and fire suppressive atmosphere in enclosed human-occupied spaces” and addressed the problem of fire prevention and fire suppression. The cited reference that the patentee alleged was non-analogous was a prior patent by the same inventor that disclosed equipment for providing hypoxic air in an enclosed area for the purposes of athletic training or therapy. Four additional prior art references (that is, other extrinsic evidence beyond the cited reference alleged to be non-analogous) established that use of normbaric hypoxic atmospheres in enclosed environments was well-known in the art of fire prevention and suppression at the time of the invention. The court found that an ordinarily skilled artisan seeking to address the problem identified by the patent in question would reasonably have consulted the cited reference relating to enclosed hypoxic environments because it was reasonably pertinent to a similar problem, even though it was from a different field of endeavor. The court therefor overturned a prior decision refusing to consider the extrinsic evidence about knowledge that was available in the art, which linked the challenged claim and the cited prior art reference by a common technical problem.

In re Klein, 647 F.3d 1343, 1350-51 (Fed. Cir. 2011), involved a claimed invention addressing the problem of “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” The purpose of a first group of references was separating solid objects. But none of them showed a partitioned container adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments. A second group of references was directed to containers that facilitate mixing two separated fluids together. But the second group did not show a movable divider or the ability to prepare different ratios. The court ruled that an inventor considering the relevant problem would not have been motivated to consider any of the cited references. Accordingly, they were non-analogous and did not qualify as prior art for purposes of obviousness. Rejections of the claims were reversed.

There tend to be more disputes over application of the reasonably pertinent prong than the field of endeavor prong. But just as with the other prong, patentees and applicants are incentivized to define the relevant problem narrowly. Examiners and challengers may define the problem more broadly and generically. Reasonable pertinence rests on what is best supported by the relevant facts. For example, a statement of the relevant problem that is inconsistent with the discussion in a patent or application, viewed as a whole, is likely incorrect—whether broader or narrower than they way the disclosed invention was described. And extrinsic evidence from other patents, expert testimony, etc. can be used to establish pertinence. So even if a given patent is very short and says relatively little about problems faced in the art, other evidence might inform that inquiry.

Conclusion

The analogous versus non-analogous art question establishes whether or not a given reference qualifies as prior art for purposes of obviousness. But it is not applicable to use of the same reference for an anticipation/novelty analysis. This factual question is rarely explicitly discussed in practice and usually it is assumed that any cited art is analogous. That is partly because courts have generally taken an expansive view of what qualifies as analogous. But, at the end of the day, whether a reference is analogous or not is just one facet of the fact-intensive obviousness analysis. An obviousness position requires solid evidence and a good, logical argument. Reliance on non-analogous art is simply a type of bad argument resting on deficient evidence.

In my example of a fishing lure invention and a rocket fuel additive reference, the examiner eventually did acknowledge that his cited reference could not be relied upon for an obviousness rejection. It was bad optics. The argument that “this is not rocket science” when dealing with the patentability of a fishing lure invention was clearly a winning one (and a fun one to be able to make!). In particular, rocket science and fishing lure design and manufacturing were different fields of endeavor. And prior art about fuel additives designed to influence combustion properties had no bearing on the purposes of the fishing lure invention, which was intended to provide certain weighting characteristics during use without causing environmental pollution. So this was a stark illustration of non-analogous art.

Sometimes looking to disparate fields and combining teachings that were, individually, already known can be the product of true invention. Of course, on the other hand, sometimes an alleged invention is obvious and unpatentable. Simply because an applicant or patentee finds a cited reference to be inconvenient does not make it non-analogous art. The non-anlogous arts tests are occasionally useful as a way to draw the line between patentable and unpatentable ideas.

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

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Patents Q&A

What Is a Negative Limitation?

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Patents and patent applications have claims that define an invention. Those claims can have various elements or limitations to recite aspects of the invention. But what is a negative limitation? This article explains what they are and some considerations about whether and when they are permitted.

Basic Definition

In the simplest terms, a negative limitation in a patent claim defines an invention in terms of what it is not, rather than what it is. Any limitation in a patent claim that does this can be considered a negative limitation. Although, there are many different ways negative limitations can arise or be worded. There is no standard format for a negative limitation. Indeed, whether or not something constitutes a negative limitation might even be disputed.

When design patent claims include negative limitations is an interesting question that courts have not definitively resolved. The discussion that follows focuses mostly on utility or invention patents.

Example Negative Limitations

The following are some examples of patent claims with negative limitations.

“1. An apparatus comprising: a first panel; and a second panel, wherein the second panel is arranged parallel to and in direct contact with the first panel, wherein the first panel is perforated, and wherein the second panel is a continuous sheet of material without perforations.”

In this example claim 1 above, the limitation that the second sheet is “without perforations” is a negative limitation. It states what is not present (perforations). The negative limitation further defines what the limitation “a continuous sheet of material” means. It also emphasizes a difference from the first panel, which is perforated.

“2. A system comprising a printed circuit board having a first electrical conductor, wherein the first electrical conductor does not have a sinusoidal shape.”

Example claim 2 above includes the negative limitation “wherein the first electrical conductor does not have a sinusoidal shape.” This limitation does not specify the shape of the first electrical conductor. Instead, it specifies the shape that it does not have. That is, this limitation excludes one possible type of shape.

“3. An apparatus comprising: a platform; and one and only one pillar connected to the platform.”

In example claim 3 above, the recitation of “one and only one pillar” includes a negative limitation. It is actually both a positive recitation of a pillar and a negative limitation excluding the presence of more than one pillar. Recitation of a “single” element—as in “a single pillar connected to the platform”—is a similar type of negative limitation.

Different But Related Concepts

There are some other concepts in patent law that have similarities to negative limitations but are distinguishable in some way.

Closed and Partially Closed Transitional Phrases

Transitional phrases in patent claims can be closed or partially closed. The closed transitional phrase “consisting of” excludes the possibility of other elements being present. For instance, in a chemical compound this closed transitional phrase can be used to exclude the presence of additional substances. The partially closed transitional phrase “consisting essentially of” is limited to the explicitly recited elements and those that do not materially affect the basic and novel characteristic(s) of the claimed invention.

Closed and partially closed transitional phrases are not negative limitations in the strict sense. That is because they are transitional phrases and not substantive claim limitations or elements. However, they may have a rather similar effect as exclusionary negative limitations.

Reciting Holes, Voids, Etc.

A limitation directed to “a hole,” “a gap,” etc. is not strictly a negative limitation. But it also can partly resemble one. It is generally preferable to claim surrounding structures that define a hole, aperture, passageway, void, empty space, or the like. This avoids the awkwardness of trying positively claim nothing or the absence of something.

Are Negative Limitations Permitted?

In the U.S., negative claim limitations are not categorically prohibited. But that does not mean they are necessarily proper. Whether they are permitted depends on the context, including the scope of the limitation, support (or lack thereof) in the original disclosure, and the timing of introduction of the negative limitation.

A negative limitation that seeks to exclude the prior art and claim everything else is often problematic. Such claims tend to be based on the desired scope of a patent monopoly rather than pointing out the subject matter regarded as the invention. In other words, this kind of claim tries to carve out and exclude the prior art while preempting everything else. That might mean reciting a given result (perhaps using functional language) while excluding unpatentable prior art solutions. Courts have long disfavored this kind of approach and tend invalidate such claims one way or another. For instance, such a claim may be indefinite. This makes sense because peripheral claiming rather than central claiming is used in the United States.

Attempts to add a negative limitation by way of a later amendment can raise additional issues about support. For instance, if the original disclosure explicitly listed multiple alternatives, that is generally sufficient to later introduce a limitation to exclude one or more of them. However, silence will not generally suffice to support a negative claim limitation. So the ability to later add one by amendment in response to a rejection may depend on the sufficiency of the original disclosure. Claims present at initial filing (including in a preliminary amendment) are considered part of the original disclosure and may support themselves.

Best Practices: Is a Negative Limitation a Good Idea?

Negative claim limitations are generally disfavored. Patent attorneys usually try to avoid using them. As already discussed, they can sometimes raise issues about validity. Negative limitations that make up the entire recitation of the point of novelty, without more, have a greater chance of raising those kinds of problems than ones that merely clarify or elaborate on positively-recited elements. Claims with negative limitations also are sometimes easier to avoid when designing around a patent. This may impact how valuable or desirable it is to have them.

Yet, there are times when negative limitations fairly and helpfully delineate an invention. They are permitted in many instances and may be useful in the right context.

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

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Patents Q&A

Does Your Patent Allow for Infringement Detection?

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Patent law places the burden on the patentee to identify infringement and enforce the patent against infringers. This raises an important gating question. How can patent infringement be detected? Some patents—and more specifically some patent claims—can make detection of infringement either easier or more difficult. What follows are some important considerations about patent infringement detection, and a possible alternative to patenting for hard-to-detect inventions.

Proving Infringement

A patent establishes exclusive rights in an invention that provide a limited monopoly to the patentee. The claim(s) of a patent determine the scope of what is patented, and by implication what is not patented. There are different types of infringement possible under U.S. patent law. Each type has its own elements that must be proven.

Generally speaking, direct patent infringement in the U.S. requires that each and every element or limitation—as properly construed—of at least one claim of a patent is found either literally or (sometimes) equivalently in an accused product or method. The infringement analysis always involves comparing the asserted patent claim(s) to an accused product or method. Importantly, a patent only covers what is claimed. So the comparison for an infringement analysis always depends on what is (or is not) claimed. And literal infringement requires meeting each element of the claim exactly. Any deviation from a claim limitation (as properly construed) will preclude a finding of literal infringement.

Example Comparison for Infringement Analysis

The following illustration helps explain how patent claims are compared to a potentially infringing product (or process). This example is highly simplified and assumes that the hypothetical claim has no negative limitations and no closed or partially-closed transitional phrases following the preamble, and that no Doctrine of Equivalents issues arise.

graphic comparing claim elements A, B and C to an accused product with elements, A, B, Y, and C, with the respective elements A, B, and C connected by arrows, that is infringing

In the simplified example graphic above, a claim with elements A, B, and C is compared to an accused product. Here, the accused product contains each claim element A, B, and C. The accused product meets all the limitations of the claim, so there is infringement. Ordinarily, the presence of an additional element Y in the accused product does not change this result. The accused product does not have to be identical to embodiments disclosed in the patent. It only matters that the accused product falls within the scope of the given claim by meeting all of the claim limitations.

Alleging Infringement

In order to bring a lawsuit for infringement, there must be a reasonable basis to believe that infringement has occurred. Federal Rule of Civil Procedure 11 requires “an inquiry reasonable under the circumstances” before commencing a lawsuit. This encompasses both legal and factual aspects and bars complaints made for improper purposes (such as to harass). Courts can issue sanctions on attorneys, law firms, and parties for violations of this rule.

Courts have said that in patent cases Rule 11 requires, at a minimum, interpreting the asserted patent claim(s) in a non-frivolous manner and comparing the accused device with those claims before alleging infringement. See Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1300-03 (Fed. Cir. 2004).

“In bringing a claim of infringement, the patent holder, if challenged, must be prepared to demonstrate to both the court and the alleged infringer exactly why it believed before filing the claim that it had a reasonable chance of proving infringement. Failure to do so should ordinarily result in the district court expressing its broad discretion in favor of Rule 11 sanctions . . . .”

View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000)

So it is not permitted to simply wildly guess or casually speculate that an accused product meets all the limitations of a patent claim. But applicable rules means that judges ultimately decide what is reasonable or non-frivolous under the circumstances.

Detectability

Establishing infringement means proving that all the elements of an asserted claim are present. And bringing a lawsuit in the first place requires reasonable confidence you will prevail. But what if you can’t tell exactly how a potentially infringing product is configured or how it was made or operates during use? For instance, what if there are inaccessible internal components, the composition of certain materials cannot be tested, manufacturing methods are not apparent from resulting physical characteristics, or the performance of certain software-based computer processing steps is unclear? Or what if a method of use requires that an end user operate a device but it is unknown if or when that has happened? These are all problems with detecting infringement.

The crux of the detectability issue is that you need to have a level of information about potentially infringing products commensurate with the level of detail recited in the claim(s) of a patent. Investigations to locate that information can range from the simple to the complex and expensive to the impossible. Sometimes merely reviewing marketing materials for competing products is insufficient to understand if claimed elements are present or not. Then it may be necessary to obtain one of the products for evaluation, or look for some other source of the missing information.

Example Detectability Problems

In the simplified example graphic immediately below, another accused product is compared to the claim with elements A, B, and C. This accused product meets claim element A and B. However, it is unclear whether claim element C is found in the accused product or not. This is a detectability problem. Whether infringement has occurred or not here is not yet known because it has not yet been established that the accused product falls within the claim. More information about the accused product is required to make a final determination.

graphic comparing claim elements A, B and C to an accused product with elements, A, B, and an unknown "?", with the elements A and B connected by arrows and an arrow pointing to the question mark, that presents a detectability problem

Take as another example a patented software-driven device that produces a particular result based on a certain type of calculation (following a specific algorithm). If it is possible for competing products to achieve the same result using different calculations, then it may be hard to detect infringement. It may not even be possible to reverse-engineer how particular software commands are written. In this situation, detection of infringement may be difficult even if all the physical hardware components are the same.

Yet another example involves a claim to a chemical with a particular molecular structure. You must have the means to test for the presence of that molecular structure to detect infringement. This might necessitate obtaining product samples and sending them to a lab for analysis.

Patentability and Detection

Ideally patent claims will only recite elements that are easily detected through convenient forms inspection or testing of an accused product. This aids with enforcement of the patent. During patent preparation and prosecution, care should be taken to write claims that recite what is detectable rather than what is not. Although, this is sometimes more easily said than done.

Before enforcing a patent you first have to obtain a patent. This means convincing at least one patent examiner that the claimed invention is patentable. The broader the claim, the more difficult it can be to establish patentability. It is fairly easy to want broad claims. What patentee wouldn’t want wider coverage? But you can’t always get what you want. Sometimes difficult- or impossible-to-detect elements are precisely what make inventions patentable over the prior art. Without them, the claims may be rejected as unpatentable. In those situations, the choice may be between claims that make it hard to detect infringement or having no patent at all.

Trade Secrecy as an Alternative to Patenting

There is an alternative to patenting. And that is trade secrecy. Of course, not all inventions lend themselves to being kept secret. But an invention that is not detectable in physical products, or only involves steps performed away from public view, may be a good candidate for trade secrecy. An example is a manufacturing method, or a machine, tool, or fixture used in manufacturing. These sorts of things can often be keep secret inside a private factory. Another example is a “secret formula” for a chemical composition that cannot be reverse-engineered through testing. So an inventor may have a choice between either pursuing a patent or instead maintaining a non-detectable invention as a trade secret.

An important consideration when relying on secrecy is the level of confidence you can have that it is practical to do so. Trade secret protections are lost when something is publicly disclosed. So foregoing patent protection means thinking long and hard about what steps can be taken to maintain secrecy and how effective those steps are likely to be.

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

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Patents Q&A Trademarks

What Is the Federal Circuit?

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In the field of U.S. intellectual property (IP) law, there are often references to the Federal Circuit. What is the Federal Circuit? This brief article will explain it.

Overview

The United States Court of Appeals for the Federal Circuit, or “Federal Circuit” for short, is a U.S. Federal appeals court. It hears cases appealed from various places including U.S. federal district courts and certain Federal agencies including the U.S. Patent & Trademark Office (USPTO) and the International Trade Commission (ITC). It was created in 1982. It replaced and merged the prior U.S. Court of Customs and Patent Appeals and the appellate division of the U.S. Court of Claims, which no longer exist.

Jurisdiction

What makes the Federal Circuit rather unique is that it has exclusive subject matter jurisdiction for certain types of cases. (28 U.S.C. § 1295). In general, appeals in Federal cases are made to regional circuit courts. That is, federal appeals courts are mostly divided into geographic “circuits”. They hear appeals from lower (district) courts within their respective geographic areas. But, instead, the Federal Circuit hears appeals from any district court in the country relating to patents and certain other matters, as well as appeals from certain executive branch agencies.

Map of geographic boundaries of U.S. courts of appeals (and U.S. district courts)
tree graphic illustrating Federal Circuit jurisdiction

In particular, the Federal Circuit has exclusive appellate jurisdiction over all U.S. federal cases involving patents, plant variety protection, trademark registrations, government contracts, veterans’ benefits, public safety officers’ benefits, federal employees’ benefits, and various other types of cases. Appeals involving Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) decisions and patent and trademark prosecution (that is, cases related to the examination and granting of patents and trademark registrations) all go to the Federal Circuit. There are some exceptions, however. Cases involving assignments of patents may go to a regional circuit court instead. Trademark infringement matters are appealed from district courts to regional circuits, not to the Federal Circuit.

Conclusion

Because of the number of patent and trademark cases it hears, and its exclusive jurisdiction over cases involving U.S. patent laws, the Federal Circuit is important to know about in order to understand IP law in the United States. Federal Circuit opinions and orders (i.e., decisions in individual cases) can be found here, or via proprietary case reporter publications and databases.

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

Contact Austen
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Patents Q&A

What Are Claims in a Patent?

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

Purpose of Claims

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

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

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

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

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

35 U.S.C. § 112(b)

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

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

Content

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

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

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

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

Format

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

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

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

Types of Claims

Independent Claims vs. Dependent Claims

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

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

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

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

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

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

Multiple Dependent Claims

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

Omnibus Claims

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

Other Types

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

Difference Between Claims and Other Disclosures

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

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

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

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

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Patents Q&A

How Do AFCP 2.0 Requests Work?

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

Basic Contours of the Pilot Program

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

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

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

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

Examination Time Constraints

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

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

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

Eligibility Requirements

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

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

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

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

How to Make an AFCP Request

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

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

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

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

Is an AFCP Request Worthwhile?

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

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

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

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

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Patents Q&A

What Is the Deadline to File a Continuing Patent Application?

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

What Is a Continuing Patent Application?

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

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

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

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

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

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

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

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

Best Practices

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

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

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

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

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

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

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Patents Q&A

What Is a Published Patent Application?

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

Contents of a Published Application

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

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

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

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

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

Publication Numbers

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

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

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

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

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

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

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

Publication Makes File Wrapper Available Too

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

Differences From a Granted Patent

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

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

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

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

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

Contact Austen
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Patents Q&A

When Are Patent Applications Published?

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

When Publication Normally Occurs

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

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

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

Exceptions to the Normal Publication Schedule

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

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

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

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

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

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Articles

New and Upcoming Changes in U.S. Patent, Trademark, & Copyright Law for 2024

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Important Developments

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

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