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Patents Q&A

How Can I Calculate Patent Term?

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

USPTO Patent Term Calculator

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

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

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

Relevant Factors

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

Type of Patent

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

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

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

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

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

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

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

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

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

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

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

Filing Date and Changes in the Law

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

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

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

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

Patent Term Adjustment

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

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

Patent Term Extension

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

Disclaimers

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

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

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

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

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

Lapse or Expiration for Non-Payment of Maintenance Fees

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

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

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

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

Invalidation and Cancellation

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

Withdrawn Patents

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

Laws Vary by Jurisdiction

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

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

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Patents Q&A

What Are Common Patent Drafting Mistakes?

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

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

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

Focusing on the Old Rather than the New

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

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

Omitting How It Works, or “Black Box” Gaps

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

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

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

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

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

Confusing Ambiguity with Breadth

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

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

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

Not Understanding Terms with Special Legal Meaning

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

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

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

Irrelevant Disclosure

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

Not Understanding the Closest Prior Art

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

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

Photo of Austen Zuege

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

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Patents Q&A

What Are Common Mistakes in Design Patent Applications?

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

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

“Engineering” Style Drawings Treated Unfavorably

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

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

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

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

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

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

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

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

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

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

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

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

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

The Title is Limiting

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

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

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

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

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

Partial Claims Are Permitted

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

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

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

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

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

USPTO Will Often Not Permit Changes in Claim Scope by Amendment

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

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

Multiple Embodiments are Sometimes Permitted

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

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

Drawings Must be Definite and Enabling

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

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

Mixing Photographs and Line Drawings is Not Permitted

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

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

Color Can Be Claimed

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

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

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

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

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

Appendices Are Permitted

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

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

Functional Aspects Are Not Protected

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

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

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

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Patents Q&A

How Should Invention Harvesting Be Conducted?

An important first step in obtaining patents is to identify potentially protectable inventions. The process of gathering up candidate ideas that might be the basis for new patent applications is sometimes termed invention harvesting. But that is an informal term. It generally connotes affirmatively investigating research and development efforts to draw out aspects that might be patentable. The following discussion explains when this sort of effort is worthwhile and how to go about it.

Who Should Consider Invention Harvesting?

There are two basic requirements in terms of who should consider invention harvesting, plus an important practical consideration. The first basic requirement is some desire to pursue a patent. Only companies that might want to pursue patents need to consider invention harvesting. For instance, budget constraints or company policy might mean that patenting is unlikely. The second is activity that comes reasonably close to what is potentially patent-eligible and patentable. For instance, if there is absolutely no technological or engineering activity underway, efforts to identify inventions might not be worthwhile until circumstances change.

In practical terms, however, invention harvesting is typically a process that takes place within companies of a significant size. When there are multiple people or departments with different responsibilities, there is the possibility that inventive activity might be taking place somewhere that has not yet come to the attention of other people who make decisions about patenting. The basic idea is that “invention harvesting” is a proactive way to bring people or teams with different responsibilities together to help them meet shared or company-wide objectives. It rests on an understanding that simply expecting scientists and engineers to step forward when they believe they have an important invention may not capture all patentable inventions.

When Should Invention Harvesting Take Place?

Generally speaking, invention harvesting should be considered around the time that inventions are sufficiently developed to be “ready for patenting” but prior to any public disclosure or commercialization.

“Ready for patenting” means the invention is sufficiently developed that the inventor(s)—with the aid of a patent attorney—can describe how to make and use it. Vague goals and undeveloped business objectives are not enough if they amount to little more than a plan or hope to invent something in the future. The same goes for high-level business plans to meet some kind of customer demand without any definite ideas of how to achieve any specific results—those things are not sufficient. But anything that has been “reduced to practice” in the form of a working prototype is likely sufficiently developed, even if there still is ongoing testing and development work.

There can be public disclosure, public use, and on-sale bars to patenting. This makes it important to consider any potential inventions before any part of a new product is disclosed to someone else, from potential customers to potential business partners or even industry trade groups. This is true even though some countries, like the U.S., have patent filing grace periods.

Key product development stages or milestones, such as engineering “design reviews”, can be excellent times to proactively assess potentially patentable inventions. Also, any planned non-confidential disclosures or sales activities also make good prompts to consider patenting before those disclosures or sales activities take place. But there is no single right time to consider patenting. In fact, it may be a question that needs to be revisited over time.

What Should Invention Harvesting Activity Look For?

Of course, patentable invention might arise at different levels of generality and at different times during development. A product as a whole might not be patentable but specific features of it might be.  Those narrower patentable aspects might not be identifiable at the outset of new product development and may only arise later on after considerable work has been completed.  On the other hand, investment in research & development (R&D) is no guarantee that any patentable invention will arise. But the catch is that if you sometimes will miss patentable inventions unless you look for them. From that perspective, it is not a waste of effort to consider patentability even if nothing patentable is identified yet.

How Should Invention Harvesting be Conducted?

Some key foundations of invention harvesting are education, communication, and having resources in place to retain and act upon information gathered. 

Education starts with emphasizing a desired to consider patenting. It also means cultivating, or bringing in by way of retaining an outside patent attorney, a reasonable awareness of patent law. Inventors might not have a good understanding of patent law and therefore may misunderstand what can (and cannot) be patented, for example. Education also means informing patent counsel about what kind of patenting strategy is desired from a business perspective. Some inventions might be more challenging than others to patent. There is an element here of establishing a comfort level with risk tolerance: do you want to aggressively pursue patent applications including ones that might not succeed, or take a more conservative approach and only file patent applications that seem to have a high probability of success?

Communication is about bringing the right people together to talk about potentially inventive activities. Sometimes, inventors may be very humble or shy and not willing to step forward and promote their own work. As another example, an invention may be patentable even if its inventor does not subjectively consider it to be “important”, such as where the inventor applies an idiosyncratic standard of “importance” that does not align with current laws around patentability. Sometimes having an explicit “invention harvesting” session with patent counsel is worthwhile, in which potential inventors talk about their ongoing work in an open-ended way to try to tease out potentially patentable inventions.

Resources like having a plan to document inventions and giving people or committees responsibility to approve patenting are really the lase piece of the puzzle. Having some sort of “invention disclosure” form to document potential inventions in writing is worthwhile.  Such a form can not only provide a written record of the substance of a potential invention, it can also collect supporting information. Such supporting information can include the names of the potential inventor(s), any planned commercial release or public disclosure date(s), relationships between the invention and business initiatives, and other information that can be useful when making patent filing decisions and reporting on company activities. 

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

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Patents Q&A Trademarks

What Is a File Wrapper?

A file wrapper, synonymously called a file history, is the written record associated with a given patent or trademark application and any resultant granted patent or trademark registration. It is the official record for a given matter. Generally, the file wrapper includes more information than is formally published by a patent or trademark office in patents, published patent applications, or trademark registration certificates.

The sorts of materials maintained in file wrappers, the period of time those materials are retained, and the level and ease of public accessibility to them varies by jurisdiction. For instance, in the USA, patent application information is kept confidential initially and generally only made publicly available for published applications and granted patents, with pending applications normally published 18 months from the earliest filing or priority date (subject to potential non-publication requests). (35 U.S.C. § 122).

How & Where to Obtain a File Wrapper

In the past, file wrappers were only available as hard copies in on-site storage at official offices. Today, many patent and trademark offices make at least some file wrapper contents available online—though whether online versions are the official ones or not and whether the online versions are complete or not are questions that can vary by jurisdiction. File wrapper materials are generally also available as certified copies that must be specially ordered (and may have to be physically mailed). Usually a given file wrapper must be obtained from the relevant patent or trademark office that maintains it, although centralized file wrapper access for a few global patent offices is available.

The U.S. Patent & Trademark Office (USPTO) has “Patent Center” and Trademark Status and Document Retrieval (TSDR) online portals. Very old materials are not always available through these portals. Moreover, some materials are not accessible through Patent Center to the general public, like copies of non-patent literature. The USPTO also has a separate Certified Copy Center that allows officially-certified copies of file wrappers or specific documents from them to be ordered, upon payment of required fees. Certified copies of file wrapper may include materials that are not otherwise publicly available, and include official seals and signatures attesting to their authenticity.

The European Patent Office (EPO) has a European Patent Register with file wrapper information. These materials are also accessible via the Espacenet portal, by clicking the “Register” link within a given record.

There are also separate systems for file wrappers for PCT international patent applications and Madrid Protocol trademark registrations. These are the Patentscope and Madrid Monitor online portals maintained and administered by the World Intellectual Property Organization (WIPO). It is also possible to order certified copies of Madrid international trademark registration materials from WIPO, or for applicants to order certified copies of PCT applications from individual PCT receiving offices.

Additionally, Global Dossier portals provide access to file wrapper contents from a number of the most active patent offices worldwide, together with machines translations. Global Dossier has gone by other names in some jurisdictions, like “One Portal Dossier” in Japan and South Korea. Because of the availability of machine translations, these portals can be highly convenient for gathering information about foreign patent applications in other languages. But some documents may not be immediately available through these portals, either due to technical glitches or database update lags.

Why Might You Need a Wrapper?

There are many reasons a file wrapper might be consulted. For instance, they can provide a record of the prosecution history that may inform the status or interpretation of something related to a given patent or trademark. A record of official actions like rejections/refusals and/or applicant amendments or arguments might be found in the file wrapper. Particular documents within a file wrapper might be relied upon for various purposes, or might be needed for submission in other contexts. For instance, in U.S. patent law, the file wrapper might be relied upon for claim construction, doctrine of equivalents analysis, inequitable conduct inquiries, and more.

File wrapper materials in informal, online formats might be sufficient for many purposes, and may be free and easy to access. Information materials might be used for competitive intelligence purposes or as a reference example for work on an unrelated matter, for example. Certified copies or an entire file wrapper, or one or more selected documents from it, might be required for certain formal uses, such as to make priority claims in foreign applications or to be relied upon in legal proceedings where authentication of the materials is important.

The legal important of a file wrapper often depends on the substantive law of the relevant jurisdiction. Under U.S. patent law, prosecution history estoppel or prosecution disclaimer found in a file wrapper might arise and bind the patentee. But many other jurisdictions do not have any such patent prosecution estoppel doctrines, making file wrappers less formally significant. And, moreover, the USPTO does not accept formal file wrapper estoppel in trademark matters.

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

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Patents Q&A Trademarks

What Is Prosecution History?

For patents and trademarks, the term “prosecution history” refers to the back and forth between an applicant and the patent or trademark office. It includes submissions by the applicant, starting with an original application and extending though any amendments or arguments the applicant might later make during official examination of the application. It also encompasses official communications, like office actions, and the particular rejections, objections, refusals, and other notifications that may be contained in them. Oral communications like interviews are a part of it too.

But “prosecution history” refers to more than just a set of documents or particular communications. It is a blanket or umbrella term that refers to all the actions and events involving the patent or trademark office from the time a new application is filed to through grant or registration and even beyond that to post-grant or post-registration actions involving corrections, maintenance or renewals, and the like. So, even if a particular document is purged or deleted or never made part of the permanent record, such a document and the events surrounding it are still part of the prosecution history.

Prosecution histories are important for many reasons. As reflected in “file wrappers,” they are often consulted to understanding the status of a pending application or of a granted patent or issued trademark registration. They can provide insight into why a patent or trademark registration was issued in a particular form, or why a application was abandoned. Sometimes events or materials from the prosecution history of a given patent or trademark registration can even impact the scope or validity of enforceable legal rights.

The prosecution history tends to matter most where prosecution history estoppel or prosecution disclaimer might arise and legally bind the applicant later on. In the U.S., it tends to be more important for patents than for trademarks. Many other countries have different laws that make prosecution history less consequential.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

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Articles

Patent Assignments and Priority in an International Context

Materials from a presentation by Austen Zuege and Jonathan Bench about patent assignments and rights of priority, including presentation slides and an on-demand video recording, are available here:

“Patent Assignments and Priority in an International Context”

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

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Articles

New and Upcoming Changes in U.S. Patent & Trademark Law for 2023

Important Developments

At the beginning of 2023, following a year in which new filings declined, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.

Patents

Reduced official fees for small and micro entities

A change in the U.S. patent laws governing fee reductions for small and micro entities was passed as a small part of a wide-ranging legislative budgetary package at the very end of 2022.  The relevant portion was titled the Unleashing American Innovators Act of 2022.  It is characteristic of U.S. politics that certain non-budgetary matters like this are appended to budgetary legislation shortly before passage during a holiday season with little public discussion.  These patent fee reductions therefore came as somewhat of a surprise.  As of December 29, 2022, most official patent fees are now discounted by 60% for small entity applicants (previously this was only a 50% reduction) and by 80% for micro entity applicants (previously this was only a 75% reduction).  These reductions apply to most official fees associated with initial filing fees for new applications, actions during examination (such as extension of time fees, request for continued examination [RCE] fees, etc.), as well as fees after grant such as maintenance fees.  The requirements to qualify as a small or micro entity are unchanged. 

The newly amended law further gives the USPTO power to impose fines for false assertions of small or micro entity status of no less than three (3) times the fee underpayment—with no pre-defined upper limit on that amount.  Such fines are not yet in effect and will require the USPTO to first issue implementing regulations that will establish exactly how they will be assessed.  However, depending on the scope of later regulations, this creates the possibility of significant penalties for innocent or negligent errors.  Historically, a fraudulent assertion of small or micro entity status, done knowingly or willingly with intent to deceive the USPTO, would qualify as inequitable conduct that renders the associated patent unenforceable.  But the appeals court responsible for all patent appeals set the threshold for the required intent to deceive extremely high.  While the possibility for unenforceability due to intentional fraud will remain, the USPTO will have new authority to impose fines if the assertion of entitlement to small or micro entity fee reductions was merely “false”.  There is no explicit statutory requirement for such a “false” assertion to be made with intent to deceive.  Thus, the USPTO can potentially impose fines without establishing intent to deceive, potentially including even good faith mistakes.  Failure to pay such fines will likely have an impact of the enforceability and/or abandonment/lapse of an associated patent or application.  It is unclear how the USPTO will discover or otherwise come to know about false assertions of entity size in order to subject applicants and patentees to fines.  It will therefore be important to monitor subsequent USPTO regulations regarding these fines and to see how existing safe harbor provisions for correction of good faith errors will be affected, if at all.  In the meantime, this highlights the need to accurately determine entity size status and to notify the USPTO at the appropriate time if entitlement to reduced fees is lost. 

Non-DOCX filing format requirements postponed (again)

The highly unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed until January 17, 2024 [Update: this deadline has been again postponed beyond a previously-announced April 3, 2023 and June 30, 2023 implementation deadlines].  Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications.   Additionally, the USPTO has extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format indefinitely, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many objections from U.S. patent practitioners and practitioner organizations

The non-DOCX surcharge is part of the USPTO’s plans to automate certain administrative tasks to reduce administrative overhead costs and staffing associated with legacy systems for processing application materials.  While touted as providing benefits to applicants and practitioners, the reality is that there are no meaningful benefits to applicants or practitioners.  But, alarmingly, the USPTO has pushed forward with its cost-cutting objectives despite substantial problems apparent with its new Patent Center platform used for DOCX format filings and its tendency to introduce errors.  In effect, the USPTO has prioritized budgetary cost-cutting over maintaining the integrity of the contents of newly filed patent applications.  This is what has troubled practitioners most of all. 

In brief, the Patent Center system alters uploaded DOCX-format patent application files and has been shown to introduce errors in the substantive content of some uploaded applications.  These errors occur only some of the time, but in a significant enough percentage of cases for it to matter.  This creates new burdens on applicants and their U.S. patent counsel to review uploaded applications to try to identify errors introduced by the USPTO’s electronic filing platform.  These burdens are particularly difficult to manage for U.S. applications based on a Paris Convention foreign priority claim, where U.S. counsel did not prepare the original application and is therefore less familiar with the intended contents.  In addition, the USPTO has greatly limited opportunities to correct errors resulting from the way its (proprietary) systems process, convert, “validate”, and alter uploaded application documents.  In many circumstances (when a priority claim cannot be relied upon), corrections must be made within one year of initial U.S. filing and will require a petition fee larger than the non-DOCX surcharge.  The USPTO has indicated it will deny petitions filed more than a year after initial filing seeking to correct errors that its proprietary computer systems introduced.  Moreover, the non-DOCX surcharge is essentially punitive.  It far exceeds the estimated administrative savings of $3.15 per application that the USPTO has been able to quantify.  Most problems with the roll-out of the non-DOCX surcharge are the result of the USPTO committing to adopt certain proprietary computer systems based on a cursory and inadequate initial investigation of alternatives, greatly misunderstanding the stability and capabilities of the DOCX file format (and its alleged status as a “standard”), and having unrealistic goals for software development associated with implementation of a new proprietary filing platform (and unrealistic projections of net cost savings), coupled with a Kafkaesque disregard for the burdens imposed on applicants and the general public by its actions. 

Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here.  Bu applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content. 

Hard copies of patents still being issued (for now)

[UPDATE: The USPTO has announced that electronic patent grants, now being called “eGrants”, will begin April 18, 2023. There will also be a transition period of unspecified duration during which paper ceremonial copies (with a certification statement and a special ribbon and seal) will still be issued in addition to an eGrant electronic copy. A paper presentation copy, certified copy, or ceremonial copy can be ordered for a fee after the transition period.] The USPTO previously announced that sometime in 2022 it would cease issuing paper patents and would issue only digital patents instead.  However, the USPTO has continued to issue hard copies of granted patents and has made no further announcements about the date after which only electronic patents will be issued.  Presumably, the USPTO will eventually cease to issue hard copies of patents (except upon an express request) but it is unclear exactly when that will occur.

Patent public search tool

The USPTO’s legacy open-access patent and published patent application search tools (PatFT and AppFT) have been retired. The PubEAST and PubWEST systems previously only available in-person (and to examiners) have also been retired.  In their place a new Patent Public Search tool is now freely available online. It is based on the old PubEAST/PubWEST tools.  Its new USOCR database allows U.S. patents granted before 1970 to be keyword searched—the old PatFT system previously had a 1970 cut-off for keyword searching. The launch of this new tool was rather awkward, with little training or instructional information initially provided on how to use it.  But, since its launch, training guides and frequently asked questions (FAQs) have become available.  This tool currently exists with two different interfaces:  Patent Public Search Basic (PPUBS Basic) and an advanced search. Both allow U.S. patents and published applications to be searched simultaneously.

The Basic search interface allows granted U.S. patents and published patent applications to be fetched by number, and allows some keyword-based searches, but returns only PDF copies. 

As the name implies, the advanced search includes advanced search functionality.  Although the advanced interface is highly esoteric and non-intuitive, and the interface may not display properly on all computers (in particular, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens like laptops).  The advanced interface is currently the only way the USPTO provides “full text” of published patent documents.  PDF image versions are also available by clicking the “T / [camera icon]” button at the top left of the “Document Viewer” panel that normally appears at the right-hand side of the screen along with the text.  Toggling that button allows switching between text or PDF image displays of a given patent document.   

Fetching a particular patent or published application by number is surprisingly difficult with the “advanced” interface.  A given patent can be queried using the “.pn.” field code or by typing in an “external search” URL to a web browser. But expect some frustration because these “external search” URLs do not seem to consistently work at all.

An alternative way to reach a particular U.S. patent or published application is to utilize the Patent Center interface and enter a patent or published patent application number.  From the resultant record, there are links available to the Patent Public Search text versions of the published application and granted patent (if any) under the Patent Center “Application Data” tab.  The button with the “T/[camera icon]” label can be clicked to toggle between a text view and a PDF image of the patent document in Patent Public Search. While navigating to patent documents through Patent Center requires many clicks, you might say too many, using it may still be easier than the other alternatives available through the USPTO.

More information about using Patent Public Search is available here.

More U.S. patent filing information

Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim.


Trademarks

Shortened response periods in effect

The time period for responding to U.S. trademark office actions is now only three (3) months.  This shortened response period is indicated in new office actions.  Applicants can, however, request a single 3-month extension of time by paying an official fee (currently $125 if filed electronically). An extension must be expressly requested by the original 3-month deadline.  This shortened response period does not apply to Madrid Protocol extensions, which will still enjoy a full 6-month office action response period.  Moreover, shortened response periods will not apply to post-registration office actions until October 7, 2023. 

Unlimited window for expungement requests still open

Any party may request cancellation by expungement of some or all of the goods or services in a U.S. trademark registration because the registrant never used the mark in commerce with those goods or services.  Normally an expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, a temporarily unlimited expungement filing period is in effect until December 27, 2023 during which expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit.  In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023.  Expungement proceedings are available for all U.S. registrations but are especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required prior to registration.  Additional general information about expungement proceedings is available here, and a listing of reexamination and expungement requests made to date is available here

More U.S. trademark filing information

Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications.

January 2023
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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A

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

The U.S. Patent & Trademark Office (USPTO) requires that non-provisional patent applications filed on or after January 17, 2024 be submitted electronically in Office Open XML “DOCX” file format in order to avoid a non-DOCX official surcharge. This means applications can still be filed electronically in PDF format, or by paper, but doing so will require payment of an additional official fee that varies according to the applicant’s entity size (initially $400/$160/$80 for large/small/micro entities).

What Types of Applications Must be in DOCX Format?

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

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

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

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

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

In an answer to a frequently asked question (FAQ), the USPTO has said that the non-DOCX surcharge applies to U.S. applications filed in a language other than English under 37 C.F.R. § 1.52(d)(1). That is, avoiding the surcharge requires filing a DOCX copy of the non-English original. This approach was not officially announced prior to implementation of the surcharge. Of course, that position is at odds with the USPTO’s justification for implementing the non-DOCX surcharge in the first place, because only the English translation is published.

Potential Problems

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

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

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

Many of these things are fairly common in patent applications.

The USPTO treats a DOCX version as the definitive record copy, potentially allowing later correction of USPTO-side conversion errors by filing a petition. However, the USPTO has clarified that only the “validated” DOCX file as modified by the USPTO’s systems during the filing process are treated as authoritative and not the applicant’s pre-“validation” source version. The USPTO has also said that petitions requesting a correction more than one year after a DOCX submission will not ordinarily be granted (except that, if applicable, incorporation by reference of a priority application or filing a pre-English-translation version may provide a different, independent basis to request correction more than a year later). This time limit stemmed from the USPTO saying it may discard applicant submissions after one year, retaining only a USPTO-converted/validated file — although a later USPTO rule announcement indicated that applicant-generate PDFs will now be maintained as part of the permanent record and not discarded. There remain some ambiguities and inconsistencies in these USPTO statements, particularly because the USPTO never specifically retracted its statement that petitions filed more than one year after an application is filed will not ordinarily be granted.

The USPTO has permitted a limited opportunity to file a back-up applicant-generated PDF version (“Auxiliary PDF”) of an application filed in DOCX format that can further allow for later correction of USPTO-side conversion errors. However, this Auxiliary PDF submission is being permitted indefinitely, during which time there are no extra official fees associated with submitting an Auxiliary PDF or to petition to correct a USPTO-side conversion error based on such an Auxiliary PDF. And the USPTO has said that the Auxiliary PDF will be retained as part of the permanent record for a given application. However, there is significant effort (and associated time cost) required for an applicant to prepare and file a petition to correct a USPTO error, and there is no guarantee that such a petition will be granted. Indeed, some petitions to correct USPTO-side DOCX conversion errors have been denied and/or have significantly delayed examination.

Another very significant point is that the USPTO has taken the position (stated only in a FAQ answer seemingly published only after the surcharge went into effect) that a preliminary amendment filed on the same day as an application subject to the DOCX requirement must also be in DOCX format. This places tremendous burdens on applicants. For one, the USPTO’s Patent Center electronic filing system does not permit DOCX format preliminary amendments to be filed simultaneously with a new application (!). Instead, applicants must make a separate preliminary amendment submission in DOCX. However, doing so is only possible if the original application is processed by USPTO systems to allow a follow-on submission, which in some instances takes many hours. Failing to file the preliminary amendment on the same day as the new application means it will not be treated as part of the original application. But doing so without the non-DOCX surcharge may be impractical or impossible. Also, the USPTO had for a long time informed practitioners that DOCX amendment filings in Patent Center did not work properly and should be avoided. Therefore, by imposing a non-DOCX surcharge to preliminary amendments tends to place applicants in a difficult, no-win situation, with no good options. And lastly, due to the USPTO deleting “tracked changes” in uploaded DOCX files, requirements to show (preliminary) amendments with marked-up text is made substantially more difficult for applicants.

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

Best Practices for DOCX Filing

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

Top DOCX application compliance tips:

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

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

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

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

An Auxiliary PDF can be filed without charge in addition to a DOCX file, and doing so is recommended. Although it is still a best practice to utilize a reliable DOCX file or pay the non-DOCX surcharge. That is because corrections premised on the contents of the Auxiliary PDF require, at a minimum, significant time and effort associated with formal petitions for correction. Also, in worst case scenarios, such petitions to correct DOCX-related errors might be denied, even if they result from USPTO-side problems. In this sense, Auxiliary PDFs might provide some benefit but are not an ideal or complete solution to the problems posed by DOCX filing

Non-DOCX Filing Alternatives

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

Filing a PCT application and entering the U.S. via the national phase (perhaps early) is another approach. Because PCT national phase entries are not currently subject to the non-DOCX surcharge, many difficulties are avoided. However, there are different rules and official fees associated with PCT applications that may (or may not) be significant. For instance, for national phase entries, “Track One” prioritized examination is not available and filing a request for continued examination (RCE) requires first submitting all inventor declarations/oaths. And this approach is usually more expensive than paying the non-DOCX surcharge, although some fee deferrals and other additional benefits can arise through PCT filings.

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

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

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Agreements Copyrights Patents Q&A Trademarks

How Can I Correct An Assignment?

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

Marking-Up and Approving Corrections

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

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

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

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

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

The retroactive (nunc pro tunc) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

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

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

Newly-Created Corrective Assignment

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

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

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

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

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

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

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed (nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

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

Photo of Austen Zuege

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