Categories
Patents Q&A

What Patent Application Extensions of Time Are Available?

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

The Basics of Response Periods and Availability of Extensions of Time

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

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

Issue fee payment deadlines after allowance are not extendable (37 C.F.R. § 1.311).

Weekends and Holidays

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

Requesting an Extension of Time

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

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

Special Considerations After a Final Office Action — Advisory Action Practice

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

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

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

The 2-month after final deadline is optional. An applicant can still take action within the shortened 3-month period without any extension of time, and after that with an extension of time. But submitting an amendment after final beyond the 2-month deadline increases the chances that extension of time fees may be required in order to take still further action.

Other Options Related to Deadlines and Extensions of Time

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

Photo of Austen Zuege

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

Categories
Patents Q&A

What Are the Costs to Obtain a Patent?

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

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

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

Preparation and Filing

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

Official Filing Fees

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

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

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

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

Professional Fees (Attorney Fees)

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

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

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

Prosecution (Examination)

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

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

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

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

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

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

Issuance and Maintenance

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

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

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

Photo of Austen Zuege

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

Categories
Patents Q&A

What Is an Election Requirement?

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

The Basics of an Election Requirement

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

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

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

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

What is a “Species”?

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

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

What is “Generic” or a “Genus”?

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

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

PCT National Phase Entry Applications

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

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

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

Requirements for an Election of Species Response

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

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

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

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

Strategic Considerations for Election Requirement Responses

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

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

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

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

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

Petitions Against Election Requirements

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

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

Rejoinder

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

Photo of Austen Zuege

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

Categories
Patents Q&A

How Should I Respond to a Restriction Requirement?

Introduction

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

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

The Basics of a Restriction Requirement

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

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

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

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

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

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

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

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

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

PCT National Phase Entry Applications

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

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

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

Requirements for Replying to a Restriction Requirement

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

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

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

Strategic Considerations for Restriction Responses

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

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

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

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

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

Petitions Against Restriction Requirements

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

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

Rejoinder

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

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

Photo of Austen Zuege

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

Categories
Patents Q&A

What Is a Restriction Requirement?

The Basics of a Restriction Requirement

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

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

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

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

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

Determining Whether Claims Are Independent or Distinct

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

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

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

After a Restriction Requirement Is Issued

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

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

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

Why Are Restriction Requirements Made?

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

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

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

PCT National Phase Entry Applications

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

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

Photo of Austen Zuege

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

Categories
Patents Q&A

Can You Patent a Software App?

Patents are available for inventions.  Software per se is not patent eligible—source code text is copyrightable instead.  But a system, apparatus, or device configured to execute particular software-driven functions may be patent eligible and a method (or process) that is computer-implemented via software may also be patent eligible.  Ornamental aspects of software-driven graphical user interfaces (GUIs) are also eligible for design patent protection.  So, a software “app” (application) as a discrete whole is usually not patentable as such but a patentable invention might include or implicate some software-based aspect. 

The U.S. Supreme Court has said that “abstract ideas” are not patent eligible, which narrows the types of software-based inventions that are patentable.  A software-based invention that consists only of well-known concepts, mathematical calculations, data processing/manipulation, what could otherwise be performed as purely mental steps, or the like plus merely generic computer hardware is generally not patent eligible. 

Patent eligibility hinges on the particular “claims” in a patent application or granted patent, which establish the scope of a patentee’s exclusive rights.  More narrowly-drawn claims that focus on a particular inventive feature (e.g., a detailed computer-implemented algorithm) that solves a specific technological problem (e.g., improves hardware performance or transforms physical outputs in a new or improved way) are more likely to be patent eligible than broad, highly abstract claims (e.g., attempting to patent any insertion of an ad before an online streaming video plays).  In this sense, software patent eligibility is highly dependent on how the claims are written, an area where patent applicants have wide latitude.  Attempts to obtain a broad “preemptive” (or we might say greedy) patent monopoly that exceeds the quid pro quo of the inventor’s contribution to the useful arts raise the most concerns. 

Additionally, a software-based invention must be both novel and non-obvious over the prior art to be patentable, just as with any type of invention.  In this respect, all invention, software-based ones included, must represent a non-trivial advance over what is already known in order to be patentable.  Whether the inventor actually knew about the closest prior art or not is irrelevant—any and all prior art represents a potential barrier to patenting a new invention.

In summary, while you generally cannot patent a software app as a stand-alone product, aspects of software-enabled products or processes may be patent eligible. The real answer to this question is that it often depends on the what invention is, what was known before, and how you try to claim a software-based invention in a patent application.

Photo of Austen Zuege

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

Categories
Q&A

What is the PCT Timeline for International Patent Applications?

The Patent Cooperation Treaty (PCT) provides a sort of clearinghouse system to facilitate filing for patent protection for an invention in participating countries. The PCT system is administered by the World Intellectual Property Organization (WIPO), together with local patent offices. Patents are still largely granted and enforced on an individual country basis. But the PCT system helps simplify and harmonize the filing of counterpart applications in multiple countries. But there are various deadlines and phases that are unique to PCT applications. What follows is an explanation of the PCT timeline for new international patent applications.

Typical timeline for PCT application up to national phase entry

In the timeline graphic above, applicant actions in the international phase are shown at the top and official actions are shown at the bottom. Items in dashed lines are optional, or are conditional upon optional action by the applicant. National phase entry, indicated at the right, requires applicant action in one or more individual countries or regions but is not shown in detail. There are other possible actions in PCT applications not specifically addressed here.

WIPO also provides a PCT time limit calculator that can be used to determine individual deadline dates for a given international application after initial filing.

The PCT system is not available for all types of patents in all participating countries. It is generally limited to utility (or invention) patents. Design patents (that is, for industrial/ornamental designs), plant patents (for certain asexually reproduced plants; plant-related inventions may still be eligible for a utility patent), and utility models (in certain foreign countries) cannot be pursued directly through PCT applications.

International and National Phases

The PCT timeline has two major phases. The first is called the international phase. This runs from the time the PCT application is filed with a receiving office (RO) until the deadline to enter the national (or regional) phase. Then the national (or regional) phase begins with the filing of one or more national phase entries (NPEs) in individual participating national and/or regional patent offices. The international phase ends when the national phase begins.

The PCT application is called an international application and is assigned an international application number. The national (and regional) phase applications are assigned a local application number. But the national phase is just a different phase of the same PCT application and does not involve a priority claim between different applications.

Priority Claims

A PCT application can claim priority to one or more prior local (national or regional) patent application(s). Priority can be claimed to a prior application, including provisional applications, from any country that has joined the Paris Convention for the Protection of Industrial Property or is a member of the World Trade Organization (WTO). The deadline to file a PCT application is twelve (12) months from the earliest claimed priority date.

Of course, there is no need to file a local priority application. It is common to do so. But it is equally possible for a PCT application to be the first patent application filed, without any priority claim.

The PCT timeline graphic shown above uses month zero (0) as the earliest claimed priority date. This could be either the filing date of the earliest local priority application or the PCT international filing date if there is no priority claim. In either situation, many subsequent deadlines are calculated in relation to the earliest priority date.

Claim Amendments Under Article 19 (Optional)

An applicant can optionally file claim amendments under Article 19 of the PCT. The deadline for Article 19 claim amendments is either two (2) months from transmittal of the international search report (ISR) by the international search authority (ISA) or sixteen (16) months from the earliest priority date, whichever is later. However, late Article 19 claim amendments are still accepted if received by the International Bureau (IB) of WIPO before the technical preparations for international publication have been completed.

Article 19 amendments allow the applicant the option to amend the claims based on the results of the ISR for inclusion in the published PCT application. Article 19 also allows amendments to be made a single time during the international phase, as opposed to making separate amendments later on in individual countries/regions in the national phase. Applicants can still make amendments later on in the national phase, subject to local procedures.

Chapter II Demand and Article 34 Amendments and/or Arguments (Optional)

The designated international search authority (ISA) will issue an international search report (ISR) and written opinion (WO). These documents assess the patentability of the claims of the PCT application, but are not binding on individual patent offices during the national phase. The applicant can optionally make a Chapter II demand and submit Article 34 amendments and/or arguments in response. Amendments filed this way can be to the claims, description (Specification), and/or drawings, so long as they are supported by the original disclosure and do not add new matter. Chapter II demands require payment of a preliminary examination fee. The deadline to file the demand is three (3) months from transmittal of the ISR/WO or twenty-two (22) months from the earliest priority date, whichever is later. Late filed demands are ignored.

If a Chapter II demand is made, the international preliminary examining authority (IPEA) issues an international preliminary report on patentability (IPRP) under Chapter II. The IPEA is the same patent office previously-designated as the ISA. The IPRP under Chapter II takes into account all amendments and/or arguments submitted by the applicant. The point of making a Chapter II demand is generally to try to convince the IPEA to issue an IPRP that is more favorable than the prior WO with regard to patentability. (What is a little confusing here is that the IPRP is also referred to as an international preliminary examination report [IPER]; and if no Chapter II demand is made, the original WO of the ISA later becomes the IPRP under Chapter I automatically.)

Chapter II demands are entirely optional. Applicants can still make amendments and arguments later on in the national phase in the absence of a demand in the international phase. But making demand may be helpful in some situations. Whether it is worthwhile often depends on the applicant’s national phase filing strategy. For instance, some participating states extend the national phase entry deadline if a Chapter II demand is filed. Also, some national patent offices are more likely than others to defer to the results of international preliminary examination. At times, it also matters which patent office served as the IPEA in terms of how much weight and deference national phase offices will give to its conclusions.

Supplementary International Search Request (Optional)

Applicants have the option to request an additional search by a different search authority. This is called a supplementary international search (SIS). These require payment of additional fees and are not common. The deadline for a SIS request is twenty-two (22) months from the earliest priority date. When requested, these result in a SIS report (SISR).

National Phase Entry

After filing a PCT international application, the only further applicant action typically affirmatively required is to enter the national (or regional) phase. This is when the applicant commits to the individual countries and/or regions in which enforceable patent protection will be pursued. If no national or regional phase entry is filed, the international application is abandoned in all designated states.

The deadline for national phase entry varies by country, from 20-34 months from the earliest priority date. Most countries—including the U.S., Canada, Mexico, Japan, and P.R. China—have a thirty-month (30-month) national phase entry deadline. A significant number of countries and regional patent offices—including the regional European Patent Organization (EPO), South Korea, and Australia—have a thirty-one-month (31-month) national phase entry deadline. Some countries also extend the NPE deadline if a Chapter II demand is made. The shortest NPE deadlines are 20 months for Luxembourg (without a Chapter II demand; though a longer period is available via the EPO with later validation in LU) and 21 months for Tanzania (without a Chapter II demand). It is important to verify deadlines for the particular countries/regions of interest.

Early national phase entry is possible. It is not necessary to wait until close to the deadline to enter the national phase. Late national phase entry is sometimes possible, if local requirements are met (such as being unintentional, for delayed entry into the USA).

National phase entries are generally limited to utility (invention) patents. Although design, plant, and utility model patents are available in some countries, they must be pursued separately from a PCT international application. For instance, a U.S. design or plant patent application can potentially claim priority to a pending international application, though that is not common.

An important benefit of the PCT system is that the national phase entry deadline occurs relatively late. The applicant gains up to about eighteen additional months (about thirty months total) to decide which countries/regions will be pursued compared to the usual twelve-month foreign priority period (under the Paris Convention). And the international preliminary examination provides some assessment of patentability. The additional time and information available at the NPE deadline can allow more informed decisions about where further patent filing fees are worthwhile.

PCT “Bypass” Applications (Optional)

In the U.S., it is possible to file a so-called PCT “bypass” application in addition to or instead of a regular national phase entry (NPE). A bypass application is filed like a continuing application (continuation, divisional, or continuation-in-part) that claims priority to a pending PCT international application that designates the USA. However, bypass applications are rather unique to the U.S. and other countries may not permit these sorts of filings. Bypass applications must be filed while the PCT international application is still pending. This makes the bypass filing deadline thirty-month (30-months) from the earliest priority date—the same as the U.S. NPE deadline.

Bypass applications are occasionally useful because there are procedural differences in how PCT national phase entries and regular (non-PCT NPE) U.S. applications are handled and examined. For instance, Track One prioritized examination is not available for PCT national phase entries. A bypass application also avoids the need to file all signed invention oaths/declarations before a request for continued examination (RCE). Also, filing a bypass divisional application in parallel with a regular NPE and splitting up the original PCT claims between them may cost less in official fees than filing only the NPE and paying extra claim fees.

Photo of Austen Zuege

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

Categories
Patents Q&A

What is Prosecution History Estoppel?

Prosecution history estoppel can arise when the patentee relinquishes subject matter during the prosecution of the patent—that is, during examination of a patent application at the U.S. Patent & Trademark Office (USPTO)—either by amendment or argument. A narrowing amendment made to satisfy any requirement for patentability (under 35 U.S.C. §§ 101-103, 112, 161, or 171) may give rise to an estoppel.  When it applies, prosecution history estoppel will prevent a patentee from relying on the Doctrine of Equivalents to establish infringement based on the particular equivalents surrendered. A given claim limitation might be given only its literal scope (as properly construed) but no more. This policy allows competitors to rely on prosecution history estoppel to ensure that their own devices/processes will not be found to infringe by equivalence

The Basic Rule

The Doctrine of Equivalents is an equitable doctrine created by courts long ago. It is premised on language’s inability to capture the essence of innovation, allowing some protection beyond the literal scope of a claim where the claimed invention and the accused product or process are equivalent.  Its purpose is to “temper unsparing logic” that “would place the inventor at the mercy of verbalism and would be subordinating substance to form” and it evolved in response to situations where accused infringers attempted to “practice a fraud on a patent” by introducing “minor variations to conceal and shelter the piracy.” However, there is a tension between such concerns and the need for patents to put the public on notice of what a patent does and does not cover.

Prosecution history estoppel is about interpreting patent claims by reference to the history that led to their grant. It limits the patentee’s ability to establish infringement by equivalence to help provide certainty to competitors about the enforceable scope of a U.S. patent. Accordingly, the Doctrine of Equivalents is not available where prosecution history shows the inventor was able to capture equivalent differences in words but chose narrower language. The patentee cannot later recapture what was previously surrendered under the guise of the Doctrine of Equivalents. Where the original patent application once embraced the purported equivalent but the patentee narrowed his claims to obtain the patent or to protect its validity, the patentee cannot assert that he or she lacked the words to describe the subject matter in question. 

Estoppel Can Arise Through Amendment or Argument

Prosecution history estoppel can arise two ways: (1) by making a narrowing amendment to the claim (amendment-based estoppel) or (2) by surrendering claim scope through argument to the patent examiner (argument-based estoppel). These two possibilities are discussed in turn.

How Amendment-Based Estoppel Can Arise

The first way that prosecution history estoppel can arise is by way of a narrowing amendment to a claim during prosecution. The question of what constitutes a narrowing amendment will depend on the context of a particular patent claim. But a classic example is adding words that narrow the limitations of a claim to avoid a prior art reference cited in a rejection in an office action. As another example, which is less intuitive, courts have said rewriting a dependent claim in independent form is an amendment adding a new claim limitation, which constitutes a narrowing amendment that may give rise to an estoppel. 

How Argument-Based Estoppel Can Arise

Argument-based estoppel arises when the prosecution history evinces a “clear and unmistakable” surrender of subject matter. Argument-based estoppel most often arises when the patentee tries to convince a patent examiner that the claims of an application recite something different from the prior art. For instance, a patentee may have argued that a claim term has a meaning that is narrow enough to avoid a disclosure or teaching in a cited prior art reference. In such a situation, the patentee will likely be estopped from later asserting that the Doctrine of Equivalents encompasses what was previously argued to be outside the scope of the claimed invention. Such arguments are treated like an acknowledgement that the patentee knew the meaning of the claim language and deliberately chose narrower language in order to obtain a patent.

Scope of the Estoppel

Though prosecution history estoppel can bar a patentee from challenging a wide range of alleged equivalents used by competitors, its reach requires examination of the particular subject matter surrendered. Even where prosecution history estoppel applies, the scope of the estoppel is not always absolute. These inquiries differ somewhat between amendment-based estoppel and argument-based estoppel.

Scope of Amendment-Based Estoppel

The scope of amendment-based estoppel depends on the claim language at issue and the reason for the amendment. For instance, where the reason for the amendment was not related to avoiding the prior art, it does not necessarily preclude infringement by equivalents of that element. But an amendment to clarify the recitation of the claimed invention to satisfy definiteness requirements for patentability would give rise to an estoppel, even though there was no prior art reference prompting the change. Also, cancellation of a claim can give rise to estoppel with regard to any the claim(s) that remain. However, the reason for an amendment is often not clear from the prosecution history.

When no explanation for an amendment is provided, there is a rebuttable presumption that the Doctrine of Equivalents is not available at all.  When the purpose underlying a narrowing amendment cannot be determined—and hence a rationale for limiting the estoppel to surrender of only particular equivalents—it is presumed that the patentee surrendered all subject matter between the broader and the narrower language.  But that presumption of the amendment-based estoppel can be overcome for a particular equivalent when (1) the equivalent in question was unforeseeable at the time of the application, (2) rationale underlying the amendment bears no more than a tangential relation to the equivalent in question, or (3) the patentee could not reasonably be expected to have described the insubstantial substitute in question. 

Scope of Argument-Based Estoppel

The scope of argument-based estoppel is based on the scope of particular arguments made during prosecution. Unlike amendment-based estoppel, there is no presumption-and-rebuttal approach. Rather, the question is how far argument-based estoppel applies in the first place, if at all. The question is whether there was a clear and unmistakable argument-based surrender of particular subject matter. Courts have said that simple arguments and explanations to the patent examiner do not surrender an entire field of equivalents. But any arguments can still surrender some equivalents, even if they do not surrender all possible equivalents. This is very context-dependent. The key to this inquiry is whether a competitor would reasonably believe that the patentee’s argument had surrendered the relevant subject matter.

However, courts have said that any clear assertions made during prosecution in support of patentability, whether or not those assertions were actually required to secure allowance of a claim, may still create an argument-based estoppel. Also, once an argument is made regarding a claim term that creates an estoppel, that estoppel will apply to that term in other claims in the patent too.

Prosecution Disclaimer

Prosecution disclaimer is a separate but related concept. Rather than relating to the availability of the Doctrine of Equivalents to establish infringement, prosecution disclaimer or disavowal can limit the proper construction of a claim’s literal scope. Thus, it may affect whether or not literal infringement is found—prior to any consideration of the Doctrine of Equivalents. For example, it can arise when a patentee makes arguments during prosecution about how the pending claims differ from the prior art. This is meant to prevent patentees from opportunistically taking different (and broader) positions in court when asserting infringement than when obtaining the patent in the first place. Statements made during the prosecution of family-related applications, even foreign counterparts, may sometimes result in prosecution disclaimer as well.

Questions about prosecution disclaimer pertain to proper claim construction. Claim terms are presumed to carry their full and customary meaning unless the patentee unequivocally imparted a novel meaning to those terms either in the patent application itself (called acting as her own lexicographer) or expressly relinquished claim scope during prosecution. Just as with argument-based estoppel, prosecution disclaimers must be “clear and unmistakable” in order to limit claim scope. An ambiguous statement during prosecution will not limit a claim term’s ordinary meaning.

An important difference between prosecution disclaimer and prosecution history estoppel is when they are taken into account. Prosecution disclaimer is a matter of claim construction. That is something courts do as a first step in patent infringement analyses, without reference to the specific product or process accused of infringement. In contrast, the Doctrine of Equivalents is bound up with the subsequent comparison of the accused product or process to the asserted patent claims as properly construed. Prosecution history estoppel is a question of whether a patent owner is permitted to invoke the Doctrine of Equivalents in particular ways in the second part of infringement analysis, after claim construction. But if literal infringement is found—despite any prosecution disclaimer—there is no need to reach the Doctrine of Equivalents.

Photo of Austen Zuege

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

Categories
Patents Q&A

What is a “Printed Publication” for Patentability?

Novelty and non-obviousness requirements for patentability are assessed based on the contents of the “prior art”, which can include information previously published by anyone—even by an inventor. Section 102 of the patent laws formally defines what qualifies as prior art in the USA. An earlier “printed publication” will usually count as prior art for novelty (anticipation) and obviousness assessments against a later patent application. Though there are some exceptions, including a one-year grace period that may exclude prior disclosures by an inventor.

The question at hand is about the legal requirements for something to qualify as a “printed publication” for patentability in the U.S. (since the adoption of the America Invents Act [AIA]) This mostly depends on whether relevant technical disclosures appeared in something was generally publicly accessible long enough ago. For the discussion that follows, we will simply assume that given materials contain some kind of relevant technical disclosure.

Examples of Printed Publications

Printed publications can be all sorts of things. They can include books, technical journal articles, web pages, videos, audio recordings, etc. This type of prior art is not limited to the particular format of the materials. In the Internet age, printed publications encompass more than just written text, and more than just hard copy materials.

But “printed publications” generally exclude products themselves. That is, a commercial product or the public use of a method/process would not normally be considered a “printed publication”, although they might instead fall within on-sale and/or public use prior art categories. Yet associated product manuals, product advertisements, and the like might qualify as printed publications.

“Printed Publications” Versus a “Patent” or “Application for Patent Published or Deemed Published”

Before going any further, it is important to note that U.S. law calls out patents and published patent applications separately from “printed publications”. (35 U.S.C. § 102(a)). But patents and published patent applications can be considered “printed publications” too. Patent-related publications can potentially qualify as prior art as any (or all) of a “printed publication”, something “patented,” and/or as a “a patent issued under section 151, or in an application for patent published or deemed published under section 122(b).” In other words, those categories are not mutually exclusive.

The important point here, which may be counter-intuitive, is that “printed publications” include but also go beyond patent-related publications. For that reason, the term “non-patent literature” (NPL) is sometimes used to describe a typical kind of non-patent prior art that falls under the category of printed publications. That terminology sometimes helps to highlight unique issues that can arise when seeking to establish that an NPL reference qualifies as prior art.

Public Accessibility

The first question in determining if something qualifies as a printed publication is determining whether it was published. Courts have said that “public accessibility” is the touchstone in determining whether a reference constitutes a “printed publication”. A given reference will be considered publicly accessible only if it was made available to the extent that persons interested and ordinarily skilled in the relevant subject matter (or art) exercising reasonable diligence can locate it. There is no formula or checklist for making that determination. Whether a reference is publicly accessible is determined on a case-by-case basis based on all the facts and circumstances surrounding disclosure of the reference to members of the public.

There are really three ways something can be established as publicly accessible in the eyes of U.S. courts:

  • Cataloging/indexing – By establishing that a document was catalogued or indexed in a publicly accessible archive (e.g., a library catalog or Internet search engine) so that persons interested and ordinarily skilled in the subject matter or art can locate it by exercising reasonable diligence and using available research tools, regardless of whether anyone actually accessed it;
  • Distribution/dissemination – By establishing that a document was distributed or disseminated (e.g., mailed, handed out in person, sent in a newsgroup electronic message, or announced orally at a conference and made available) in a sufficiently broad way, without a reasonable expectation of privacy, so that members of the public interested in and ordinarily skilled in the subject matter or art could obtain copies by exercising reasonable diligence; or
  • Public display (without literal distribution) – By establishing that materials (e.g., a temporarily displayed slide presentation, video shown on-site, poster, billboard, etc.) were publicly displayed for a sufficient time and in a sufficiently broad manner, without a reasonable expectation of privacy, so as to be sufficiently accessible to persons interested and ordinarily skilled in the subject matter or art by exercising reasonable diligence, even though copies of the materials were never distributed or indexed and the materials never physically left the presenter’s control.

Notably, courts have said that a sufficient public dissemination or display of materials can make them a “printed publication” even where those materials were never searchable and never indexed/cataloged. Cataloging or indexing something is just one among many ways that something can be considered published and publicly available.

Private communications do not count as printed publications, whether designed for the use of single persons or of a few restricted groups of persons. Anything that is reasonably expected to remain secret, such as private communications marked as confidential or not for distribution or exchanged under a non-disclosure agreement (NDA), will not qualify as printed publication prior art. When dissemination or display is asserted as the basis for public accessibility, it is necessary to look at certain factors to determine the reference was sufficiently publicly accessible to count as a “printed publication”. For instance, establishing public display requires looking at where and how the display occurred, including the openness, size, and nature of the display venue.

Also, technical accessibility alone is not enough if no one of ordinary skill in the art could have reasonably found the materials except by accident. The materials have to sufficiently publicly accessible to be considered “published”, by doing something that reasonably alerts the relevant public to their existence. Materials that are in a library or on web server, or randomly left lying in a public place, but that have not been indexed, disseminated to, or otherwise affirmatively announced to the interested public will not be considered generally publicly accessible, for example.

It may be helpful to consider a push vs. pull distinction regarding the public accessibility threshold. Publication in effect requires that materials be pushed out in some manner that allows the interested public to know about them. Such a “push” could be any of the three options described above: cataloging/indexing, public dissemination, or public display. An interesting facet of this is that anyone can publish a “printed publication.” There is no hierarchy of worthy/unworthy publications. Publication is not limited to certain channels (controlled by gatekeepers). But the mere fact that someone could “pull” information by specifically requesting it is not enough. It begs the question to say that information could be requested if there was no reason for someone to know in the first place that it could (technically) be requested. In short, printed publication status for patentability requires some kind of “push” out of the realm of private knowledge and into the realm of public accessibility.

Date of Public Availability

In order to qualify as prior art against a given claim, a printed publication must also be old enough. The essence of something being “prior art” is that it pre-dated a later effort to patent an invention. This requires looking whether a given publication was publicly accessible (published) before a critical date. The term “critical date” is often used in order to implicitly acknowledge that the date that divides prior art from things that are not old enough to be prior art varies depending on whether or not an exception applies—possible exceptions are discussed below. For a typical “printed publication” by a third party, where no exception applies, the critical date means before the effective filing date of the patent claim at issue.

The date of public availability is sometimes easily determined, but not always. This question is easiest when the materials in question are the kind subject to a predictable and reliable means of publication. For instance, using a U.S. patent application publication as a “printed publication” is straightforward because the patents are official U.S. government documents that are publicly available from the time they are issues and the issue dates printed on the face of patents are reliable indicators of the actual date of issuance (publication). This question is also fairly easy for foreign patent documents.

When in comes to many types of materials, however, dates may not appear on the materials themselves or those dates might not be sufficiently reliable. To use a famous example, Sigmund Freud’s book Die Traumdeutung [The Interpretation of Dreams] was first published in November of 1899 but the title page was post-dated to 1900. Also, dates appearing on a document may indicate something other than a date of general public accessibility. For example, the mere presence of a copyright notice date, printing date, Internet server upload date, or the like on reference itself will not necessarily satisfy public availability evidentiary requirements. But publication by an “established” publisher on something bearing traditional hallmarks of publication (a book’s ISBN, etc.) may be sufficient in AIA trials before the USPTO’s Patent Trial & appeal Board (PTAB).

There can also be disputes about revisions or different versions of a given publication. This is especially true for online materials. Sometimes a publication date may reflect only the initial publication date. But it may not account for the dates that revisions, modifications, or later additions took place. The date of public accessibility is assessed on the basis of the particular version put forward as potential prior art, and cannot be assumed to match that of a substantively different version.

Legal Standards for Evidence of Publication

To complicate matters, use of “printed publication” evidence in formal patent examination or disputes requires satisfying rules around the use and introduction of evidence. Different evidentiary standards will apply depending on where and how patentability or validity is being assessed.

During regular examination of a new patent application at the USPTO, a relatively low evidentiary standard is applied. A date appearing on a document can establish its publication for examination purposes unless the applicant challenges it. (MPEP § 2128).

However, higher standards are applied in contentious proceedings, including IPR proceedings and during infringement suits in courts. In those situations, there are rules against hearsay (Fed. R. Evid. 802 and 803) and rules requiring authentication of evidence (Fed. R. Evid. 901 and 902). These requirements may necessitate use of a witness to authenticate something put forward as a “printed publication” and its alleged publication date. This can include testimony from a librarian who cataloged something as of a particular date or a computer forensic expert able to retroactively determine the date of publication.

Web pages are a common type of printed publication evidence for which the publication date normally needs to be established beyond just a date that appears on the web page itself. Aside from witness testimony, demonstrating a clear reliable process for capturing, preserving, and presenting the web page, such as using the Internet Archive’s “Wayback Machine,” might be acceptable. (See https://archive.org/legal/faq.php).

Complicating matters still further is that a preponderance of the evidence standard is applied in all USPTO matters while a higher clear & convincing evidence standard is applied in courts. So the PTAB may accept something as a printed publication while a district court might not, based on these different evidentiary burdens (under essentially the same evidentiary rules).

Potential Exceptions

A printed publication will not count as prior art if (a) it was by an inventor within a one-year grace period before the patent application’s effective filing date or (b) the publication is by another but an inventor had previously publicly disclosed the invention (within the grace period).

“(a) Novelty; Prior Art.-A person shall be entitled to a patent unless-

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) Exceptions.

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.-A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents.-A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. [see also § 102(c) regarding inventions under joint research agreements that may satisfy this provision]

35 U.S.C. § 102(a) and (b) (emphasis added)

This rather long list of possible exceptions is no doubt confusing. But some general points may aid in understanding the exceptions.

First, the exceptions under § 102(b) fall into two categories depending on whether the alleged prior art is put forward under § 102(a)(1) or under § 102(a)(2). Here, note that § 102(a)(2) applies only to U.S. patents and published patent applications (plus PCT international application publications designating the U.S.). So any non-patent materials like books, journal articles, web pages, and the like will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered. Similarly, any foreign patents or published applications will only be able to qualify as prior art under § 102(a)(1) and only the exceptions under § 102(b)(1) need to be considered.

Second, under the § 102(b)(1) exceptions that apply to a “disclosure in a printed publication,” there are two possibilities: (A) disclosures made by (or on behalf of) an inventor within the one-year grace period, and (B) where an inventor made a qualifying public disclosure that pre-dated the printed publication. Where they apply, these exceptions establish a “critical date” one year before the effective filing date of the inventor’s patent application (assessed claim-by-claim). In practical terms, exception (B) will rarely arise, partly because it requires satisfying exception (A) plus additional requirements. The more common of the two exceptions is that an inventor’s own printed publication disclosures up to one year prior to a new patent application filing will not count against that inventor as prior art in the U.S.

Illustration of Timeline for U.S. Patent Filing Grace Period
Illustration of Timeline for U.S. Patent Filing Grace Period

One of the more important aspects of these exceptions is that an inventor’s own prior patent application may not qualify as prior art against that inventors own later application depending on when the prior application is published. This situation can arise when a later application does not formally claim priority to the inventor’s own prior application.

These exceptions to prior art status are rather unique to U.S. patent law. Most other countries follow more of an absolute novelty approach, with no grace period for delayed patent filings. So keep in mind that every jurisdiction will have its own rules for what counts as prior art and those rules offer differ from those in the U.S.

Photo of Austen Zuege

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

Categories
Patents Q&A

How Should I Prepare an Invention Disclosure for Patenting?

If you are interested in patenting a new invention, or simply interested in assessing its patentability, a helpful early step is to prepare an invention disclosure. Such disclosures gather relevant technical information, as well as details about the identity of all potential inventors. The invention disclosure should be written and should further include drawings or other visual aids. It should be kept confidential. There is no “official” government form for an invention disclosure, though companies may have a form for internal use.

The main purpose of preparing an invention disclosure is to convey relevant detail details about the structure and configuration of the invention, how it functions, what is believed to be significant about the invention in relation to what has been done before (the “prior art”), and potentially other things that might affect the ability to patent the invention. This disclosure should be prepared by the inventor(s) themselves. It is usually not fancy or long. These sorts of disclosures are simply meant to gather basic, essential technical information. A patent attorney and/or patent searcher can then use the disclosure to gain an understanding of the invention in order to prepare a patent application or conduct a patentability search.

There may be additional documentation and information needed beyond what appears in an invention disclosure. Requests for more technical information are common. For example, patent attorneys will usually conduct at least one inventor interview to gather more technical information for purposes of patenting. But an invention disclosure is a starting point. Inventor interviews are much more productive if the patent attorney has some relevant drawings and other materials beforehand. That allows the patent attorney to have some sense of what the invention is about in order to ask better and more pointed questions.

It is important that an invention disclosure mention all the important features of the invention that might be patentable. Patent attorneys can ask follow-up questions, but they are not mind-readers. Omitting some major aspect of an invention on the invention disclosure entirely is a common mistake. Another common error is to focus on commercial marketability information, omitting technical details about what an invention really is and how it works that matter most for patenting.

Invention disclosure forms that are signed and dated can sometimes provide useful records about who developed a given invention and when. Though a confidential write-up by itself will generally not preserve any patent rights—filing a patent application is required to do that. And there may be bar dates or deadlines by which a patent application must be filed.

The following sample invention disclosure forms can be downloaded and used to document a new invention for patent purposes:

Photo of Austen Zuege

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