If you are interested in patenting a new invention, or simply interested in assessing its patentability, a helpful early step is to prepare an invention disclosure. Such disclosures gather relevant technical information, as well as details about the identity of all potential inventors. The invention disclosure should be written and should further include drawings or other visual aids. It should be kept confidential. There is no “official” government form for an invention disclosure, though companies may have a form for internal use.
The following sample invention disclosure forms can be downloaded and used to document a new invention for patent purposes:
The main purpose of preparing an invention disclosure is to convey relevant detail details about the structure and configuration of the invention, how it functions, what is believed to be significant about the invention in relation to what has been done before (the “prior art”), and potentially other things that might affect the ability to patent the invention. This disclosure should be prepared by the inventor(s) themselves. It is usually not fancy or long. These sorts of disclosures are simply meant to gather basic, essential technical information and to point out what are considered the most important features. A patent attorney and/or patent searcher can then use the disclosure to gain an understanding of the invention in order to prepare a patent application or conduct a patentability search.
There may be additional documentation and information needed beyond what appears in an invention disclosure. Requests for more technical information are common. For example, patent attorneys will usually conduct at least one inventor interview to gather more technical information for purposes of patenting. But an invention disclosure is a starting point. Inventor interviews are much more productive if the patent attorney has some relevant drawings and other materials beforehand. That allows the patent attorney to have some sense of what the invention is about in order to ask better and more pointed questions.
It is important that an invention disclosure mention all the important features of the invention that might be patentable. Patent attorneys can ask follow-up questions, but they are not mind-readers. Omitting some major aspect of an invention on the invention disclosure entirely is a common mistake. Another common error is to focus on commercial marketability information, omitting technical details about what an invention really is and how it works that matter most for patenting.
An invention disclosure should also be relatively short and focused. While voluminous technical materials might have value for a patent attorney at certain stages of patent application preparation, it is inefficient for a patent attorney to read through dozens or hundreds of pages of such materials without some guidance. And an attorney might not fully or immediately appreciate what is new and inventive in merely “raw” technical data. An invention disclosure should be like a beacon pointing out what the inventor(s) consider to be most significant, at least as a starting point.
Invention disclosure forms that are signed and dated can sometimes provide useful records about who developed a given invention and when. Though a confidential write-up by itself will generally not preserve any patent rights—filing a patent application is required to do that. And there may be bar dates or deadlines by which a patent application must be filed.
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.
For pending patent applications, office actions are commonly sent by the U.S. Patent & Trademark Office (USPTO) rejecting and/or objecting to aspects of the application on the merits. The applicant must respond to an office action within a certain response period in order to avoid abandoning the patent application. The back-and-forth communications between the USPTO and the applicant is called “prosecution”. Nearly all U.S. patent applications receive at least one office action. Yet most applicants are able to overcome the rejections/objections to obtain a patent. This means applicant responses to office actions are important in obtaining patents. But how should the applicant respond?
Overview
The best way to respond to an office action will vary for one case to the next. The most appropriate response strategy depends on the specific context. Generally, the following factors will influence how best to respond (if at all):
Specific rejections and/or objections made in the office action
Law and procedures governing the rejections/objections
Scope and content of the patent application:
current claims
original disclosure of the applicant’s invention (support/written description)
Applicant’s overall patenting strategy
In any situation, typical responses will consist of arguments or a combination of amendments and arguments. Any response that contains an amendment is called an “Amendment”. A response that contains only arguments can be called a “Response”, though the USPTO still classifies these as a type of amendment. Certain other types of information and accompanying filings, such as petitions, may also be submitted together with a response in some circumstances. Payment of official fees may also be required with a response, such as extra claim fees or extension of time fees.
The Specific Rejections/Objections
Not surprisingly, the appropriate way to respond to an office action depends on the particular rejections and/or objections being made. Though a compliant response generally needs to address all of the rejections and objections made in the office action. It is possible to informally group rejections and objections into three categories: (1) prior art-based rejections; (2) eligibility rejections; and (3) formality rejections and objections.
Prior art-based rejections are ones that assert particular claims of an application are not patentable based on what was already known in one or more cited prior art references. These include rejections based on anticipation (35 U.S.C. § 102), also called lack of novelty, or based on obviousness (35 U.S.C. § 103). Whenever there are rejections made based on cited prior art, the applicant should consider what the cited art actually discloses, teaches, and suggests, and whether the office action accurately characterizes those teachings and disclosures. It is common for applicants to disagree with the patent examiner about the scope of the prior art. These are often factual arguments about what was or was not actually known in the prior art.
Eligibility rejections deal with questions of whether the subject matter of the invention is eligible for patent protection. These usually pertain to the utility requirement for utility patent applications (35 U.S.C. § 101). Though design patents (35 U.S.C. § 171) and plant patents (35 U.S.C. § 161) have different eligibility requirements. Abstract ideas, natural phenomena, and laws of nature are not patent eligible in the USA. Eligibility/lack of utility rejections tend to be most common for certain types of technologies, such as software-implemented inventions, methods of medical diagnosis and treatment, etc. Responding to these rejections can often be challenging.
Formality rejections are ones that generally deal with the form of the patent application. These are very often about the procedures and technicalities that applicants must comply with. These include rejections based on indefiniteness or lack of enablement (35 U.S.C. § 112), and objections to the drawings or specification or for informalities like typographical, spelling, or grammatical errors in the claims. Formality rejections are sometimes cured through corrective amendments, though they can also be argued sometimes.
Applicable Law and Procedures
Office actions are prepared by patent examiners who must follow the patent laws, and interpretations of those statutes by courts, as well as USPTO regulations and procedures. In general, patent examination in the U.S. follows the guidance and procedures set forth in the Manual of Patent Examining Procedures (MPEP). The MPEP is usually the first place to look for guidance about the legal standards and procedures that a patent examiner is supported to follow.
Any rejections or objections set out in an office action must comply with applicable law. Applicants will often disagree with an examiner about legal requirements to sustain a rejection. It is common for applicants to argue that an examiner has not met his or her burden to reject a particular claim of a patent application. These are often legal arguments about what the law requires (or does not require).
Scope and Content of the Patent Application
A suitable office action response will depend on what is recited in current claims and in the original disclosure (specification) of the application. Any office action will have been based on the way the applicant’s invention is disclosed and claimed. The way that the applicant has presented the invention in the application can vary a lot. Applicants have a lot of discretion in how they do so. This means the application itself is an important starting point in determining how best to respond to the office action.
The claims of the application recite the scope of the exclusive legal rights sought in the invention. That is, the claims define the invention sought to be patented. Applicants can usually amend the claims to adjust their scope and format. New claims can also sometimes be presented. Narrowing amendments might be made distinguish the claimed invention from cited prior art, for instance. Or clarifying claim amendments might be made to resolve formality rejections or objections. The implications of claim amendments can be significant. Narrowing amendments reduce the scope of exclusive rights in any resultant patent. And amendments can also result in prosecution history estoppel, which limits the interpretation and scope of enforceable rights. But the key is that the claims can potentially be amended in order to overcome rejections and/or objections.
The rest of the patent application (or specification) is significant in terms of how it discloses the invention. For instance, there may be explicit definitions of certain terms used in the claims that are implicated by a rejection in an office action. Also, the scope of the original disclosure (the “written description”, which includes any drawings) is in most respects fixed at the time the patent application was filed. An applicant cannot add “new matter” to the application after filing. This is often important because any claim amendments must have support in the original disclosure. An applicant cannot try to avoid cited prior art by amending the claims to recite something “new” that was not originally disclosed. So the original application constrains what sorts of later amendments are permitted.
Applicant’s Patenting Strategy
Lastly, the applicant’s overall patenting strategy will play a major role in how best to respond to an office action. These are often questions about what claim scope the applicant desires and what scope the applicant is willing to accept or settle for.
For example, business objectives are important. A patent application might disclose multiple possible embodiments of an invention with different configurations, features, etc. Some of those things might be merely optional or have been omitted from commercial versions of the invention. While certain response strategies might result in allowance and grant of a patent, any that depart from the embodiment(s) of the invention that the applicant is actively commercializing might have limited practical value. The relationship of a given application to other pending applications or granted patents, if any, can also be significant. As can the potential for a further, related (continuing) application.
There may be timing considerations too. Sometimes an applicant wants to obtain a granted patent as quickly as possible. Alternatively, it may be desirable to slow down patent examination to allow time to determine which disclosed embodiment of the invention seems the most commercially viable.
Additionally, the applicant’s budget and available resources can play a significant role. Official fees and attorney fees associated with further pursuit of patent protection can be significant. Applicants usually desire to have broad exclusive patent rights in their invention. But broad claims are often much harder to obtain. There is frequently greater effort and expense involved in pursuing broad claims, which is why applicants might settle for narrower claims. On the other hand, there can be long-term cost savings associated with maintaining a single patent rather than multiple patents, which might suggest making a more robust response to try to avoid additional patent filings. In short, budget constraints and business considerations will sometimes influence the way an office action response is prepared aside from the merits of the case.
Summary
There are many—sometimes competing—factors that will influence how to respond to a patent application office action. There is no one right way to respond. The most appropriate response strategy will take into account the many different considerations, backed by knowledge of the applicable law and procedures as well as an understanding of the technology involved with the invention. The overview given here is really only a basic introduction. Other options may be available in specific situations that are beyond the scope of this introduction. Given the complexity of patent law a patent attorney will generally be aware of the full range of options and can advise about specific cases.
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.
There are a number of different types of patents and patent applications. The available types of patents and patent applications also vary by country. Before turning to those specifics, an important initial distinction to note is between a patent application and a granted patent.
Patent Applications Versus Granted Patents
A patent and a patent application are not the same thing. This is a common source of confusion for those unfamiliar with patent law.
Patent Applications
A patent application is essentially a request by an inventor/applicant to obtain a patent. It is a custom-prepared document rather than a template form that is filled-in. Simply filing a patent application does not by itself entitle the applicant or inventor to enforceable legal rights. More is required to secure enforceable exclusive rights in an invention. Filing a patent application is just the first step in that process. Importantly, applications generally have to undergo an official examination to assess patentability. The applied-for invention may or may not be patentable.
Pending patent applications are normally (but not always) published after approximately 18 months. This means that there are publicly-available “patent application publications” or “published patent applications”. But these still only pertain to a (pending) patent application as opposed to a (granted) patent. A patent application publication, alone, is not enforceable.
There is really nothing final about a patent application when it comes to rights in an invention. Whether published or unpublished, the existence of a patent application really only means that someone currently is or was in the past pursuing patent protection. A good analogy is somebody filing a complaint to a commence a lawsuit: they hope to win, eventually, but merely initiating the lawsuit is not the same as a final judgement on the merits. There can be changes to a patent application while it is pending. So the published version of a given application may not fully reflect its current contents. And patent applications can be abandoned entirely.
Granted Patents
A patent is granted (or issued) by a government as a “public franchise” and gives the owner(s) exclusive rights to an invention. The scope of the enforceable legal rights are defined by the claim(s) of the patent. A patent is also enforceable only in a given jurisdiction. There is no such thing as an international patent enforceable throughout the world. So obtaining exclusive legal rights in multiple countries usually requires obtaining patents in each of those individual countries—though a few regionally-enforceable patents exist outside the USA. In the U.S., a granted patent is presumed valid because it has undergone pre-grant examination to assess patentability. Though even granted patents can still be challenged.
Every patent starts out as a patent application. And there may be multiple patent applications related to a given patent. But, on the other hand, any given patent application might or might not turn into a granted patent. A patent office may reject the patent application because the claimed invention is unpatentable, for instance. Or an applicant may simply abandon an application before a patent is granted for a variety of reasons.
Patent Families
Patents and patent applications that are formally related to each other are often referred to as a patent “family”. This includes reference to “parent” and “child” patents and applications.
Types of Patents
There are three types of patents available in the United States for different types of inventions:
Utility
Design
Plant
Utility patents are directed to useful inventions. If someone refers merely to a “patent”, chances are they mean a utility patent. Most U.S. patents are utility patents. In other countries these may have a slightly different name, like invention patents in the People’s Republic of China.
Design patents are directed to inventive ornamental designs of useful articles. They do not cover functional features or designs in the abstract—unconnected to an article of manufacture. In some other countries, designs are not covered under patent laws but instead as either “industrial designs” that are a unique type of protection or something closer to trademark (trade dress) protection.
Plant patents cover inventive asexually reproduced plants. Some inventions related to plants can be protected by utility patents, which is to say that a plant patent is not the only possible type of patent protection available for plant-related inventions.
The types of available patents are not the same around the world. In some countries, utility models or petty patents are available. But those types of patents do not exist in the USA.
Types of Patent Applications
There are a number of different types of patent applications in the USA:
Provisional
Nonprovisional
Continuing Applications:
Divisional
Continuation
Continuation-in-Part (CIP)
PCT International Application (and associated National Phase Entry)
Hague International Design Application
Reissue
Provisional applications are not examined but can be relied upon by a later-filed non-provisional application claiming “priority” to the provisional. They serve as a kind of temporary placeholder to preserve rights to file a nonprovisional application within a year. Provisional applications are available only for utility and plant inventions. They are not available for design inventions. The U.S. and a few other countries permit provisional applications but most countries do not.
A nonprovisional application is essentially just a regular patent application. It can be an application for a utility, design, or plant invention. Nonprovisional applications in the U.S. undergo substantive examination and can potentially result in a granted patent.
Continuing applications are special types of nonprovisional applications that claim priority to an earlier, co-pending domestic U.S. nonprovisional application or PCT international application designating the U.S. But an application with a priority claim to a prior foreign application or U.S. provisional application is not considered a continuing application. What is called a “divisional” application in many other countries might be called either a “continuation” or “divisional” application in the U.S.
The PCT system, which is administered by a United Nations agency (WIPO), provides a sort of application clearinghouse to facilitate the pursuit of patent protection in various participating countries. But the PCT system still requires action in individual countries or regions. At the start, a (single) PCT international application that designates selected participating countries (usually all participating countries) is filed in a “receiving office”. The international application can then later enter the national phase (or regional phase) in one or more designated countries or regions. A PCT national (or regional) phase entry is actually not separate from the PCT international application but merely represents a different (national/regional) phase in the life of the same international application.
Hague international design applications are roughly the equivalent of a PCT application but for design inventions.
Reissue applications are applications to correct an error in an issued patent. In other words, reissues only arise after a patent has already been granted. Broadening reissues, which enlarge the scope of the claim(s), must be filed within two years of grant of the underlying patent. Other (non-broadening) reissue applications are not subject to the two-year filing deadline. Grant of a reissue results in surrender of the original patent.
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.
Businesses usually assign primary responsibility for patents and patenting of the company’s new inventions to a particular person or department. But who should have that responsibility? There is really no right or wrong answer. Different companies handle this differently. Though there are some things to consider that may suggest the best way to assign responsibility for patents.
If a company is active enough with patents, it may have a dedicated intellectual property (IP) department or group with in-house patent attorneys taking primary responsibility. However, the question dealt with here is really how to assign responsibility for patents in the absence of dedicated in-house IP staff.
There is a Range of Possibilities
First off, let us take a brief look at the possibilities. Responsibility for patents could be given to any of the following departments that exist in many companies:
Engineering/Research & Development (R&D)
Legal (including an IP group within legal)
Finance/Accounting
Sales & Marketing
Responsibility can also be assigned to individual people in a company, often an executive, officer, or in-house counsel. These people might be the heads of the departments listed above. In smaller businesses, we could add to that list the CEO, president, general manager, or a member-owner of a limited liability company (LLC).
Assigning primary responsibility does not mean other departments are excluded from patent decision-making. And sometimes budgetary allocations for patents might be split between different departments, such as allocating some or all patent-related fees to engineering/R&D’s budget while a legal department maintains responsibility for overseeing day-to-day patenting activities. Inter-departmental committees can also be formed.
Key Considerations
The ideal way to look at where primary responsibility for patenting should be placed within a company is to look at what will best achieve the company’s overall objectives and goals. Those will not always be the same. For some companies, filing as many patents as possible is the goal. For others, minimizing overhead and cost-cutting is more important than patents. There are endless possibilities. Though in many situations, the company’s goals will not explicitly address how patents fit into the picture. Figuring out how patents might advance larger company goals is usually part of those very responsibilities. But there are a few recurring issues that may influence who should have primary responsibility for patents.
First, consider typical patent expenses as a proportion of a company’s overall budget, and the anticipated volume of patent activity. In small companies, the cost of seeking even a single patent may be substantial compared to other expenses, whereas in a large multinational company any individual patent has an insignificant impact on a company-wide budget. This tends to affect how (and how much) responsibility is delegated. The volume of patenting is also important. This is both a matter of the cumulative budget needed for patent activities but also the likely workload that supervision of a patent portfolio presents to the responsible person or department.
Intra-company rivalries may influence assignment of patent responsibilities. Different departments may compete against each other for resources and budget allocations. Responsibility for patenting might be seen as a way to exert control over certain budgetary issues. This has the potential to produce dysfunctional situations. One department with responsibility may try to under-utilize patenting in order to effectively (if somewhat surreptitiously) re-allocate budget resources elsewhere. Is that in line with company-wide goals? Consider the possibility and likelihood of this occurring when assigning these responsibilities.
Another important consideration is bandwidth. It makes little sense to assign patent responsibilities to a person or department with no time or capacity. This responsibility shouldn’t be like an unfunded mandate. Inaction due to lack of time is also a recipe for loss of patent rights. And yet, bandwidth concerns should, in theory, be temporary ones. In the long term, other considerations should take precedence. A company should eventually address bandwidth limitations through hiring or other organizational changes to allow the best-situated person or department the time and resources to meaningfully execute the company’s goals around patenting.
Individual temperament can be a significant factor. For example, an individual with a strong anti-patent bias may not be the ideal choice to lead a program intended to obtain the maximum number of patents. More generally, some people may not understand patents or legal issues well. This is often an is/ought problem. Some people act based on how they think the legal system—and patent examination in particular—ought to work, rather than based on how it actually operates. For instance, some engineers struggle with the ambiguities inherent to patent law and legal issues in general, and can get frustrated with legal matters that depart from the sort of scientific and engineering precision they expect elsewhere. As another example, some business people have ideas about legal definitions of what constitutes “prior art” or “obviousness” that are simply contrary to existing law. And on top of all that, some people simply lack the objectivity needed to oversee patent matters effectively.
Having a firewall between supervisors of patent matters and named inventors can be worthwhile. Particularly where bonuses are paid to inventors, conflicts of interest can arise when named inventors oversee their own patent applications. The main issue is that persons supervising patent applications sometimes show more interest in their personal bonuses than company goals. For instance, they may pursue futile or worthless patents or questionably name themself as an inventor simply to personally obtain a patent- or invention disclosure-related bonus. Having a policy in place that prohibits self-supervision of patent matters might be helpful, especially in larger organizations. Though, on the other hand, self-dealing is not always a problem, and in the absence of inventor bonuses this may be a minor concern.
What Is Most Common and Why?
Most commonly, responsibility for patents is assigned to (a) a legal department, (b) an engineering/research & development department, or (c) a patent committee specially formed to handle patent issues. Some combination of these possibilities is also common. In small companies where there are no “departments” as such, having the CEO or other high-level executive take responsibility is typical.
Because patents have a legal character, and often require working with an outside patent attorney specially licensed to practice patent law, it is very common to have an in-house legal department have responsibility. This way you have in-house lawyer(s) talking to outside patent lawyer(s). In-house counsel will understand legal concepts and may already be managing relationships with other outside attorneys. Also, having in-house legal departments involved can help funnel patent-related expenses through existing legal billing and expense tracking systems that the legal department may already be using in other contexts.
Because patents involve inventions with a technical or scientific character, it is also very common to place primary responsibility with an engineering or R&D department. Inventions typically arise out of that department anyway. So it often makes sense to have that department’s personnel closely involved. For similar reasons, engineering/R&D personnel might also have the greatest interest in patents and the technology involved. In this sense they are more likely to see this responsibility as an interesting opportunity rather than an unpleasant chore. Inventors also often take pride in their inventions, so they and their immediate co-workers are usually motivated to see them protected by patents.
Lastly, having some kind of specially-created patent committee involved is another common approach. This committee might have only partial responsibility, such as responsibility for reviewing invention disclosures and determining whether or not to proceed with patenting or to manage patent portfolio maintenance and annuity payments. An advantage of these committees is that they can allow for cross-disciplinary teams that encompass personnel from multiple departments. These committees can be a great way for companies to help keep everyone in alignment. These committees can also help alleviate concerns that an engineering/R&D department will be overly eager to patent everything and anything. Though such committees really only make sense when a company is of a certain size.
Less Common Approaches
Various companies have assigned responsibility for patents to nearly every possible department or person. Not all companies are organized the same, and their resources and ongoing business activities might suggest different approaches. Not every company has an in-house legal department, for instance. Though a common reason for assigning responsibility outside of a legal or engineering/R&D department is simply bandwidth and capacity to take on the responsibility.
Sometimes patents are overseen by finance/accounting. The reasoning sometimes goes that patents are an overhead expense, so finance should keep those in check. Another more subtle reason is that finance often understands revenue sources and therefore might represent a relatively neutral arbiter of what sort of patenting expenses make sense for the business. On the other hand, finance personnel may not grasp the technology involved in patents as well as others, or simply may not have much interest in patents.
Other times marketing or sales oversees patents. This might make sense if a company is heavily involved with trademarks and only occasionally has patentable inventions. Another reason is that some companies see patents as protecting their sales activities—rather than their inventions in the abstract—and so they give sales & marketing say. On the other hand, sales & marketing personnel sometimes have a negative or ambivalent attitude toward patents. That is partly because inventions rarely originate with them. It is just as common, if not more common, for sales & marketing to see patents as taking budget allocations away from their own projects, like advertising campaigns. Lastly, sales & marketing personnel frequently have expectations that are not aligned with actually-existing patents laws. This may take the form of unrealistically expecting a broad legal monopoly without regard for the quid pro quodisclosure of an invention.
The main reason that other departments like finance/accounting, sales & marketing, etc. rarely have responsibility for patenting programs is that these departments tend to be further removed from relevant facts and information. To the extent that there are disputes over who should have a say over patent matters, having a committee that includes personnel from these other departments can be a good compromise that allows for input and shared responsibility without creating awkward disconnects or glaring inefficiencies. For instance, having a committee to approve individual invention disclosures and/or to set high-level patenting goals can be worthwhile when coupled with passing responsibility for day-to-day management of patent applications and granted patents to a specific department or individual.
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.
Novelty and non-obviousness requirements for patentability are assessed based on the contents of the “prior art”. Older patents and publications generally count as prior art. But public uses and on sale activities can count as prior art too. Prior “on sale” and public use activities of others (competitors) generally constitute prior art. Though an inventor’s own activities can potentially be treated as prior art as well. An inventor placing his or her claimed invention on sale prior to filing a patent application may be treated as prior art against that later application, unless a patent filing grace period applies. To account for the 1-year statutory grace period, it is common to say that an “on-sale bar” arises when an invention is commercially exploited by an inventor before a “critical date” that is one year prior to the effective filing date of the relevant claim(s) of the patent application. If an “on-sale bar” applies, it qualifies as prior art under 35 U.S.C. § 102(a)(1) against a given claim, for both novelty and obviousness analyses. Under current U.S. law, the on-sale bar applies to commercial sales activities that happen anywhere in the world—though older (pre-AIA) laws limited it to on-sale activities involving the U.S.
There are some nuances as to what does or does not qualify as placing an invention “on sale”. A two-part test is applied in the U.S. A patent claim is invalid or unpatentable under the on-sale bar if, before the critical date, the invention was both:
the subject of a commercial sale or offer for sale; and
This analysis hinges on how an invention is claimed. Depending on what specific subject matter is claimed in a patent or patent application, and how broadly or narrowly it is claimed, the on-sale bar analysis may lead to different conclusions. Also, the on-sale bar is subject to an experimentation exception when an inventor’s own activities are involved.
On-sale bars differ by jurisdiction. Many other countries have an absolute novelty requirement without a patent filing grace period. And some other countries have no on-sale bar at all, or one that applies only to sales in that particular country. It is important to consider the specific law in each individual country where patent protection is sought if sales activities have already taken place. Commercial exploitation of an invention might bar patenting in some countries but not others, depending on the specific circumstances involved.
Furthermore, it is important to note that the on-sale bar is just one among many potential bars to patentability. Public use or printed publication bars, for instance, might arise out an inventor’s or competitor’s activities occurring prior to filing a patent application.
Purpose
The on-sale bar serves a number of purposes. Principally, it avoids an extension of patent protection beyond the statutory term. Modern patent laws are premised on granting only a limited monopoly in a claimed invention in exchange for disclosure of the invention. If an inventor could commercially exploit or profit from an invention and then much later still seek a patent, the expiration of that patent would effectively be extended beyond the intended duration limits. Also, the public notice function around the exclusive rights granted in patents would be frustrated if patent rights could spring up long after an invention became commercially available. The on-sale bar also protects the public’s right to retain knowledge already in the public domain.
When dealing with an inventor’s own actions, this means an inventor has to make a choice between patenting his or her invention or keeping it secret:
“it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly.”
Inventors are not permitted to have things both ways, or, to have their cake and eat it too. Though, in practical terms, not all inventions lend themselves to secrecy. It may be possible to maintain secrecy over certain manufacturing processes or the identities of certain materials used in a liquid solution—like a proverbial “secret formula”. But it is usually impossible to keep the physical/mechanical configuration of a product secret except by not selling or publicly using it at all. That means patent protection may be the only way to have market exclusivity in certain types of inventions.
U.S. patent laws do, however, provide a one-year grace period for patent filings, unlike many other countries. And an inventor’s own experimental activities are excepted from the on-sale bar. But these are essentially the only exceptions to a general policy requiring that inventors promptly seek patent protection or forfeit rights patent rights by commercializing their inventions.
Another important purpose of the on-sale bar mentioned above is to prevent patents from removing things that are already commercially available from the public domain. While much of the discussion that follows emphasizes inventors’ own activities, which is often the primary question when these issues arise, on-sale bars can apply to commercial activity by anyone. If someone else had already placed something on sale, it usually counts as prior art against a later-filed patent claim (unless the later-filing inventor qualifies for the prior disclosure exception under 35 U.S.C. § 102(b)(1)(B)). It does not matter if the person or entity that previously commercialized something chose not to patent it. The on-sale bar is an independent bar to later patenting that does not depend on someone having previously patented or attempted to patent something.
Sales
Commercial sale of an invention before the critical date gives rise to an on-sale bar. Though a sale for experimental purposes is distinguished from a commercial sale and is excluded from the on-sale bar. A commercial sale normally involves transferring property rights (that is, title to the goods) for consideration that the buyer pays or promises to pay the seller for the thing bought or sold. However, in this context, commercially leasing an inventive product is treated as a commercial sale even though title to the goods is not transferred—this includes standard computer software licenses for software-enabled inventions, for example. Even a single commercial sale can give rise to an on-sale bar. It does not matter whether or not the details of the invention are made available to the public through the sale, or that it was a sale subject to buyer approval (that is, in a “sale on approval” where the buyer could potentially return the goods to the seller). Moreover, using an inventive product while providing commercial services triggers the on-sale bar too.
When an invention is for a method or process, a sale of that inventive method or process before the critical date will give rise to an on-sale bar. For example, if an invention is a method of manufacturing something, selling goods manufactured using that inventive process constitutes a sale. Additionally, selling a product that embodies the essential features of an inventive method of use will constitute an on-sale bar for the claimed method of use. However, whether inventive activity pertains to an invention involving a method, an apparatus, or both, may not be apparent until a patent application is prepared—or possibly not until much later when particular claims are allowed or granted.
Merely licensing or assigning rights to an invention does not constitute a sale. Though a commercial sale of an invention by a licensee before the critical date would give rise to an on-sale bar, because the licensee is considered to stand in the shoes of the patentee, and that would include commercial use of a method of making a product by a licensee.
However, an inventor outsourcing manufacturing to validate the manufacturing process for regulatory approval only and stockpiling the invention only for that inventor do not, without more, constitute a sale where the inventor maintains control of the invention. But commercial agreements between a patentee and its supplier or distributor are not exempt from the on-sale bar, such as where title to the goods passes to the distributor or where the manufacturer/supplier is free to market the product or disclose the process for manufacturing the product to others. Also, method or process inventions cannot be stockpiled, and outsourcing the commercial use of an inventive method/process of making something would generally trigger the on-sale bar.
Commercial Offers for Sale
A commercial offer for sale before the critical date, without a sale actually being completed, also establishes an on-sale bar. The U.S. Supreme Court has described commercial offers for sale as occurring when an invention is first marketed commercially. The offer must be commercial rather than experimental in character, just as with completed sales. Also, as with completed sales, a commercial offer for sale of a method/process invention before the critical date give rise to an on-sale bar, though mere licenses and assignments of rights do not.
However, lower courts have effectively read-in a significant limitation on what constitutes a “commercial offer for sale” based on commercial contract law. “Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale . . . .” Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir. 2001). Lower courts have pointed to general commercial law for these determinations rather than the law of the particular state where the transaction took place, looking to the Uniform Commercial Code (UCC) for guidance. Though the UCC does not define “offer”. So courts have further looked to the Restatement (Second) of Contracts, which says, “An offer is the manifestation of willingness to enter into a bargain, so made as to justify another person in understanding that his assent to that bargain is invited and will conclude it.” (§ 24). The Restatement also says there must be intent to be bound, because “[a] manifestation of willingness to enter into a bargain is not an offer if the person to whom it is addressed knows or has reason to know that the person making it does not intend to conclude a bargain until he has made a further manifestation of assent.” (§ 26). Although no particular language is required to constitute an offer for sale, lower courts have said (citing and extending § 33(3) of the Restatement, which says that leaving proposed term(s) open indicates a non-“offer”) that a communication that fails to include material terms (such as quantities, time of delivery, place of delivery, or product specifications) is not an “offer” in the contract sense. Though a “quote” (sent in response to a request for quotation) has been considered equivalent to a commercial offer for sale when it included essential price, delivery, and payment terms (plus alternative product amounts that reflected multiple distinct offers for sale).
These judicially-created limitations on commercial offers for sale mean that the standard is an ambiguous one based on the involved parties’ subjective intents and understandings, rather than a bright-line one. As long as current lower court interpretations prevail, whether a communication naming a price constitutes a commercial offer for sale or mere preparations for future offers for sale (that alone do not give rise to an on-sale bar) depends upon the facts and circumstances of each particular case. So early sales, marketing, and promotional efforts may or may not trigger the on-sale bar, depending on the circumstances (including whether and how a customer responds to them). A salesperson vaguely discussing the possibility of offering a product in the future without the potential customer actually being able to accept a specific offer on specific terms may not qualify as a “offer for sale” under current lower court case law.
Keep in mind that other types of bars to patentability might apply even if there was no sale or commercial offer for sale. For instance, an advertisement of an invention before the critical date might qualify as a “printed publication” bar instead of (or in addition to) an on-sale bar. And a non-experimental public use of an invention before the critical date would give rise to a public use bar. The on-sale bar is only one among many potential bars to patentability that must be considered.
Secret Sales & Offers for Sale
In the U.S., the on-sale bar still applies to a confidential, private, or otherwise secret commercial sale or offer for sale before the critical date. This means that merely having a non-disclosure agreement (NDA) or other contractual confidentiality terms in place will not avoid triggering an on-sale bar. An NDA might still help establish that a sale or offer for sale was primarily experimental rather than commercial, depending on all the other relevant circumstances. And the existence of an NDA may mean that a given use of an invention does not give rise to a public use bar or that the confidential exchange of documents does not constitute a printed publication bar. Moreover, an NDA may make discovery of prior sales by third parties difficult to identify. But any commercial sale or offer for sale of an invention triggers the on-sale bar, regardless of the public versus confidential/secret nature of such commercial exploitation. While having an NDA in place may have certain advantages for the parties involved, it will not avoid an on-sale bar in the U.S. when there has been non-experimental commercial exploitation.
Applicable law in other countries may be different, however. Indeed, countries that lack a distinct on-sale bar might even allow a later inventor to obtain a patent and enforce it against the prior inventor who did not patent or publicly use the invention (because all use was confidential rather than public).
Experimentation Exception
There is an experimental sale exception to the on-sale bar. A sale or offer for sale that is primarily for experimental purposes, as opposed to commercial exploitation, does not raise an on-sale bar. Though the experimental sale exception applies only if the commercial exploitation is merely incidental to the primary purpose of experimentation to perfect the invention.
Only certain activities are considered experimental, depending on the purpose or intent behind them. A use may be “experimental” only if it is designed to: (1) test claimed features of the invention, or (2) determine whether an invention will work for its intended purpose. This judicial definition of what is experimental applies to both the public use bar and the on-sale bar. But experimental use cannot occur after an invention has actually been “reduced to practice”; once an inventor realizes that the invention as later claimed indeed works for its intended purpose, further alleged “experimentation” may constitute a public use and/or on-sale bar. Similarly, a contract characterizing commercial activities as “equipment testing” will be insufficient to establish experimental use if unnecessary, that is, if the testing could have been performed satisfactorily before or without the sale.
Courts have applied the following factors to determine if a sale constitutes experimentation or commercial exploitation, though not all factors will apply in any given situation:
the necessity for public testing,
the amount of control over the experiment retained by the inventor,
the nature of the invention,
the length of the test period,
whether payment was made,
whether there was a secrecy obligation,
whether records of the experiment were kept,
who conducted the experiment,
the degree of commercial exploitation during testing,
whether the invention reasonably requires evaluation under actual conditions of use,
whether testing was systematically performed,
whether the inventor continually monitored the invention during testing, and
the nature of contacts made with potential customers.
While the experimentation exception to the on-sale bar has long been recognized in the U.S., it is rather difficult for an inventor to qualify for it. Successfully invoking it might even be more rare in the on-sale bar context than in the public use context. So think of it almost like a unicorn defense against invalidity. And when a patent is enforced, any reliance on this experimentation exception by the patentee is certain to be challenged by the accused infringer. Therefore, it may be advisable in many situations to avoid relying on it (other than as a backup plan or “plan B” fallback position). A better strategy is to file a patent application before accepting or seeking any payment for an invention, or at least to file within one year of any payment, request for payment, or any other activities that could potentially be seen as exploiting or seeking to profit from an invention.
All this makes sense if we turn back to the basic purposes of the on-sale bar. The experimentation exception arises because the inventor is not really extending the expiration of patent rights when he or she is not yet certain that the invention is viable or complete. A key reason the experimentation exception against the on-sale bar is so rarely established is that inventors normally don’t try to sell inventions that they know are not yet in working order. When they have sold or offered to sell things, that tends to give rise to an inference that the inventor really did believe the invention was sufficiently workable for the buyer’s purposes (despite after-the-fact inventor denials that often come across as self-serving). If anything, the exception is more likely to apply where the only reasonable experimental testing involves using the invention in connection with commercial services under close supervision—as in the famous case City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878) where the inventor garnered more sympathy than most.
“Ready for Patenting”
An invention is “ready for patenting” when, prior to the critical date, the invention is either: (1) reduced to practice; or (2) depicted in drawings or described in writings of sufficient nature to enable a person of ordinary skill in the art to practice the invention.
Reduction to practice means being embodied in a distinct form, like through construction of a working prototype. Reduction to practice happens when occurs when the inventor/seller had possession of the claimed subject matter and that it was shown or known to work for its intended purpose. For something to qualify as a reduction to practice, it must show that the invention works for its intended purpose beyond a probability of failure but that need not be established beyond a possibility of failure. Importantly, reduction to practice does not require that the invention, when tested, be in a commercially satisfactory stage of development—for utility patents this analysis is from the standpoint of technical feasibility rather than marketability or saleable appearances. It does not, however, require that the seller recognize that his or her on-sale invention possesses specific later-claimed characteristics when there was no question that the invention was useful at the time it was placed on sale.
Whether or not an enabling disclosure has been documented (in the absence of actual reduction to practice) is generally assessed in the same way as for priority claims. In any event, any time there are engineering specifications available that are sufficient for use to manufacture an invention, or to allow a customer to know specifically what is being purchased, the invention will usually be considered ready for patenting.
Difficult questions arise when advance development agreements or pre-availability contracts are involved. In some situations, a contract may be signed for a seller to deliver to a customer at a later date something not yet invented. In other words, the customer understands that goods meeting certain requirements do not yet exist but believes that the seller will be able to devise one or more inventions that will make delivery of suitable goods possible in the future. This is a situation where the customer does not know upfront exactly how those goods will be configured. But certain general requirements, goals, or objectives that the goods be better, faster, lighter, etc. would likely be set forth in such an advance contract. When does the on-sale bar arise in these situations? The answer is it depends when the invention was conceived subsequent to the signing of the contract. For purposes of the on-sale bar, it is initially viewed as an open offer to sell an idea for a product (or service) that is converted into a “commercial offer for sale” at whatever time the relevant invention is later conceived:
“[A]n invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.”
When, exactly, conception happens may very well be disputed. But once there are drawings that might enable the invention to be made and used, or it is actually reduced to practice (even if the inventive aspect is not yet appreciated or recognized), an on-sale bar can arise.
Joint research & development agreements potentially raise further limits on application of the on-sale bar where they do not bear commercial fruit and are cloaked in confidentiality. That is to say that research & development activities, even where conducted jointly, may pertain only to the process of invention or related experimentation rather than to commercial activities. But, as always, this will depend on the specific circumstances involved, including what the applicable contract(s) say. There is not always a bright line separating research & development and on-sale activities when joint efforts are involved.
Anytime there is already a contract or commercial proposal of an idea for a product (or process), the inventor must diligently pursue a patent filing after something inventive is actually conceived to ensure that filing occurs within the one-year U.S. grace period. Though keep in mind that the ways these issues are treated in other countries may differ.
Best Practices and Words of Caution
Assessments of potential on-sale bars must be approached with caution. The treatment of potential on-sale bar activities is governed by somewhat subjective and imprecise standards in the USA. The consequences of incorrectly relying on an experimental sale exception to the on-sale bar can be severe for both the patentee and the patentee’s legal counsel. For instance, if a court later rejects an inventor’s determination that a pre-critical date sale was experimental, an entire patent might be found unenforceable in addition to specific claims being found invalid—if information about the on-sale bar was withheld from the USPTO with deceptive intent (which can be inferred). Moreover, because on-sale bar activities apply to obviousness analyses too, commercialization of an earlier version of a product or process before the critical date potentially be relevant to the obviousness of a later-developed variation or improvement.
The best strategy to avoid an on-sale bar worldwide is to file a patent application before any activities that could potentially be seen (in the light least favorable to the patentee) as exploiting or attempting to profit from an invention, or, at least in the USA, to file within one year of any such activities. But if there has already potentiallybeen definite commercial sales activity before the critical date, or anything that might potentially be viewed as the commercial exploitation of an invention before the critical date, consider explicitly disclosing it to the USPTO in order to satisfy the duty of disclosure. This is because court rulings about experimental sales will happen only many years later and may be driven by sympathies and impressions given by witnesses at least as much as the “cold” factual record. And there are risks of self-serving biases when inventors make these determinations themselves.
In order to make a legal determination about whether or not an on-sale bar applies, there must first be a sufficient investigation of the relevant facts. It would be nice if the legal standards for on-sale bars allowed for a straightforward and uncomplicated assessment. But the reality is that these are complicated, nuanced legal determinations that depend on a variety of specific facts that will differ from one situation to the next. If important relevant facts are unknown, overlooked, or even concealed, then it may be impossible to reliably determine whether an on-sale bar applies in a given situation. So, beyond the lack of bright-line legal standards as to certain aspects, the dependency of these legal analyses on underlying fact gathering is yet another reason caution is merited.
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.
Obtaining rights in an invention require affirmatively filing a patent application. There is a limited one-year grace period in the U.S. to file a patent application after the invention has been disclosed or commercialized before patent rights are lost. In the context of an inventor’s own prior activities, the term “critical date” refers to the beginning of the grace period one year before the “effective filing date” of a claimed invention. Understanding this grace period is important in order to know when patenting becomes barred, or may have already been barred, due to an inventor’s own prior actions.
The U.S. patent laws generally bar patenting if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or if “the claimed invention was described in a patent . . . or in an application for patent published or deemed published . . . [that] names another inventor and was effectively filed before the effective filing date of the claimed invention.” (35 U.S.C. § 102(a)). In other words, disclosures and commercial exploitation of an invention prior to the critical date qualify as “prior art” that can be held against a later-filed patent or patent application. Such prior art is used to evaluate the patentability (or validity) of a claimed invention.
Illustration of Timeline for U.S. Patent Filing Grace Period
However, there is a one-year grace period for filing a patent application following a disclosure or commercialization of the invention by an inventor (or someone who obtained that subject matter from an inventor). This grace period is formally stated as follows:
(b) Exceptions.-
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor
***
(2) Disclosures appearing in applications and patents.-A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
*** or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. [see also § 102(c) regarding inventions under joint research agreements that may satisfy this provision]
So if an inventor has publicly disclosed an invention or placed it on sale, the clock has begun on the one-year deadline to file a patent application. Under current U.S. law, disclosures and on-sale activities happening anywhere in the world trigger the grace period filing deadline. But disclosure of an invention more than one year earlier represents a complete bar to patentability. The grace period is not extendable.
This 1-year grace period is somewhat unique to U.S. patent law. Most other countries have what is called an absolute novelty requirement. That means a patent application must be filed before there is any disclosure of the invention. Though the specific things that do or do not count as a prior disclosure vary somewhat by country (for instance, sometimes the country in which the disclosure was made matters, and sometimes secret sales are not considered public disclosures). What this means is that even though the U.S. has a patent filing grace period, the applicant needs to consider the most restrictive patenting requirements among all relevant jurisdictions. If it is desired to pursue foreign patent protection, or even just to preserve the possibility of foreign filings, then it is important to file a patent application before any disclosure or sales activity to ensure that patent rights are preserved for all foreign countries.
Another aspect of this grace period is the exception set forth in 35 U.S.C. § 102(b)(1)(B), which says a disclosure falling within the grace period does not qualify as prior art (under § 102(a)(1)) if “the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” In other words, a disclosure by someone other than the applicant (occurring one year or less before the effective filing date) can potentially be defeated and removed from the realm of “prior art” if the inventor or applicant had previously publicly disclosed the claimed invention (one year or less before the effective filing date). So, in very limited situations, a prior public disclosure within the statutory grace period can also potentially aid a patent applicant against competitors trying to patent or commercialize the invention.
In general, the initial filing of a patent application to preserve U.S. patent rights and stop the clock on the 1-year grace period encompasses both U.S. and foreign applications. The “effective filing date” (as defined in 35 U.S.C. § 100(i)) is the earlier of the filing date of a given U.S. patent application or, if there is a qualifying foreign priority or domestic benefit claim to earlier application(s), the filing date of such an earlier U.S., PCT international, or foreign application that disclosed the claimed invention. Where this can become complicated is that there may be multiple prior applications but the effective filing date is assessed on a claim-by-claim basis. The effective filing date is not necessarily the earliest prior application if the relevant “claimed invention” (as defined in 35 U.S.C. § 100(j)) was not yet disclosed in it.
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.
A question that comes up frequently is whether functional language is permitted in patent claims. Sometimes this is called functional claiming. This has long been a fundamental yet unresolved issue in patent law. In general, functional language is permitted in U.S. patents and patent applications. But that does not mean it is always acceptable. The acceptability of functional claim language depends on where and how the functional language is used in a given claim and also on how the functional claim language relates to what was actually invented (and disclosed). These questions are often about whether the applicant/patentee’s intentions behind the particular use of functional claim language are proper or not.
To be clear, functional claiming generally refers to describing something by what it does rather than what it is (structurally). Method claims naturally use functional language. The focus here is on functional language in apparatus claims.
The first question to ask is whether the functional claim language is used to recite the point of novelty—the limitation(s) that purportedly distinguish the claimed invention from the prior art. If not, the use of functional language is much more likely to be acceptable and free from dispute. For instance, using functional language in a claim preamble to highlight intended use (possibly in a non-limiting way) is generally acceptable. Though functional recitations appearing anywhere in a claim could still raise concerns. But the situation is most critical when the functional claim language appears right where the claim purports to recite the point of novelty. Suspicions are often raised when a claim includes many structural recitations related to what was already known in the art but then conveniently switches to functional language when setting forth the point of novelty.
When the functional claim language appears at the point of novelty, further analysis is merited. Some other questions should be asked. Is the functional language an attempt to draft a preemptive claim that covers all possible solutions to a technical problem? Or is the functional language an attempt to claim an entire genus of possible solutions? Those are questions about overbreadth in light of the quid pro quo policy underlying modern patent law. This is a matter of preventing an improper extension of a patent’s scope beyond what was actually invented. Also, does the use of functional render the scope of the claim indefinite? This tends to be a concern about whether the functional language makes the claim’s scope unclear by obfuscating what is or is not encompassed. It also reflects concerns about attempts to circumvent the required “peripheral” claim format and instead utilize “central” claiming; that is, attempting to recite merely a vague central inventive concept without informing those of ordinary skill in the art about the scope (outermost boundaries) of the claimed invention with reasonable certainty.
With regard to questions of claim breadth, functional language must be assessed based upon its meaning within the claim as a whole and in light of the entire disclosure of what was actually invented. This inquiry involves looking at the particular functional claim language in context to see if it is purely functional language or only partially functional language that is limited by associated structural recitations or by the invocation of means-plus-function format (“means for . . . [a recited function]”) specifically authorized by statute (35 U.S.C. § 112(f)).
For example, consider the claim, “An assembly comprising part A, part B, and a connection between part A and part B, wherein the connection is configured to rigidly fix a base portion of part A to an end of part B.” Such a claim seems acceptable even though the “configured to” language is followed by “rigidly fix” language that might be seen as functional if viewed in isolation. In other words, this example uses partly but not wholly functional claim language. The functional recitations are limited by further structural recitations of part A, part B, and a connection.
On the other hand, consider the claim to an improved widget that recites, “A widget configured to achieve good result X.” Such a claim is not structural but instead uses results-based and purely functional language at the point of novelty to try to claim all solutions to a problem. This latter claim is preemptive of all possible solutions that “achieve good result X”, even those that have not yet been invented. Claims directed merely to a desired result have long been considered objectionable primarily because they cover any means which anyone may ever discover of producing the stated result.
Also, it is possible to add structural recitations such that the functional language is only partially functional. We can continue here from the last example. Consider an amended claim that recites “A widget configured to achieve good result X, comprising:” as merely the claim preamble, and then proceeds to recite the structure that achieves the “good result X” in the body of the claim, such as “substrate Y; and a coating Z applied to the substrate Y, wherein the coating Z comprises a thermally insulating material containing at least 5% yttria by weight.” That claim would not be purely function because of the functional language in the preamble—we can just assume here that “good result X” has something to do with high temperature operation. In this case, the additional structural recitations in the body of the claim would explain what the invention is (in structural terms) rather than stopping with merely a statement of the result it achieves.
There may also be situations where functional-looking language really has a structural meaning (to a person of ordinary skill in the art). For instance, the portmanteau term “screwdriver”—derived from the German word schraubenzieher (screwpuller) and/or the French word tournevis (turnscrew) from the middle ages—could be seen as functional. But, today, anyone would recognize the word “screwdriver” as referring to a generic name for a kind of tool, in a structural way. If we imagine that a patent claim using the term “screwdriver” was presented in the early middle ages, before there was an accepted structural meaning for that term, such medieval usage could raise concerns about its breadth in relation to what was really invented—would it have also covered a pair of pliers that might be used to grip a screw in order to “drive” it, or a hammer? This example in medieval times would look like purely functional claiming of merely a desired result—driving a screw. Whereas, today, usage of “screwdriver” would be an unremarkable structural reference to a genus of tools (having a tip that can can engage one of the many different types of screw drives, but excluding pliers and hammers).
A patent claim that uses functional language to refer to an entire genus may (or may not) be acceptable. Genus/species issues are also among the most fundamental in patent law. The philosophical idea behind reference to an entire genus is that it encompasses an unknown or unstated species. For a patentee, this is usually the intent! Patentees often want to get the broadest possible monopoly rights, including blocking rights over later inventions. But a key component of modern patent law is that patents should be limited to what the patentee actually invented. So, very often, questions about the use of functional claim language are about the reasonableness of claim scope that goes beyond what was actually invented—or at least what was actually disclosed in a patent application. These questions often turn on the breadth of the disclosure of an invention and whether that disclosure is robust enough to support a claim covering an entire genus or not. Functional claim language is frequently used to recite something like a genus or class rather than merely one or more particular species. A recitation encompassing multiple species may or may not be improper. It is a matter of degree and context.
With regard to enablement requirements, “If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable.” And this is directly tied to the breadth of monopoly the applicant or patentee demands, and whether, commensurate with that demand for a monopoly, the inventor’s disclosure identifies a quality common to every functional embodiment. This means that the acceptability of functional language that effectively claims an entire genus or class rests not only on the claim language but also on the entirety of the disclosure and the level of predictability in the relevant technological field or art.
For instance, these issues often do not turn merely on whether a given claim uses “configured to” vs. “adapted to” vs. “operable to” language (or the like). Though patent attorneys and judges sometimes try to reduce the larger and more fundamental questions to such superficial formalities—sometimes as a matter of “university discourse” (i.e., making highly ideological policy arguments through the guise of seemingly neutral and objective technical rationales).
With regard to definiteness or clarity concerns, partially functional language is frequently acceptable and might sometimes be more clear and definite than certain alternative types of claim limitations (like a negative limitation). For instance, with a mechanical invention, partially functional claim language used to recite the way certain enumerated structures are connected and moveable—or not movable—relative to each other may be perfectly clear and uncontroversial. But when purely functional claim language is substituted for structural language such that the (purely) functional language entirely displaces structural language, as a way to consciously avoid limiting the scope of the claim to particular structures, then it might not be acceptable. This is more like the “good result X” or medieval “screwdriver” examples given above. It is the broadness, ambiguity, and overhanging threat of purely functional claiming that is problematic. The public cannot tell what does or does not fall within the scope of the purely functional language.
Another legal issue around functional claim language under U.S. patent law is the use of means-plus-function format (under 35 U.S.C. § 112(f) or pre-AIA § 112, ¶ 6)—also called step-plus-function format for method/process claims. An applicant can invoke means-plus-function claim format to utilize functional language in the claim, in which case the claim language is construed to cover the corresponding structures, materials, or acts described in the specification and equivalents thereof. A catch is that the specification (including the figures) must provide an adequate disclosure of structure corresponding to the means-plus-function claim language. Means-plus-function format can sometimes be useful to recite known (prior art) elements but with recitations at the point of novelty it is often considered a narrow and less desirable claim format. That is because an equivalent structure for means-plus-function purposes must have been available at the time of the issuance of the claim, but does not extend to after-arising technology developed after the issuance of the patent (except under the the Doctrine of Equivalents, if it applies).
There have been many, many cases that deal with functional claiming. However, U.S. courts have not not definitely and conclusively resolved these issues. That is not really surprising because patent applicants have numerous incentives to try to obtain monopoly rights over more than what they invent.
In the USPTO’s Board of Patent Appeals and Interferences’ (BPAI) precedential case Ex parte Miyazaki (which now seems to stand in conflict with Federal Circuit cases, at least in major part), it was explained that “when [a] limitation encompasses any and all structures or acts for performing a recited function, including those which were not what the applicant had invented, the disclosure fails to provide a scope of enablement commensurate with the scope of the claim . . . .” Such purely functional claim language is unpatentable unless the applicant has given the public notice that the limiting conditions of 35 U.S.C. § 112, sixth paragraph (now § 112(f)) are being invoked. Therefore, according to Miyazaki, purely functional claim language is unpatentable when it is “unlimited either by (1) the application of 35 U.S.C. § 112[(f)], or (2) the additional recitation of structure.” (emphasis in original).
Where this has been complicated is that the Federal Circuit has (controversially) held that purely functional language that does not use “means for” to explicitly invoke § 112(f) might still be interpreted as means-plus-function language. This stands in contrast to the more convincingly-argued BPAI Miyazaki decision regarding the need for notice to the public regarding invocation of § 112(f) limitations. The Federal Circuit is trying to save applicants from themselves (and potentially from the invalidity or unpatentability of the purely functional claims they chose to pursue) at the expense of the general public’s entitlement to clarity and predictability regarding the scope and validity of patent claims. This is also another example of Federal Circuit hostility to Supreme Court precedent regarding breadth- or preemption-related invalidity issues other than for sliding-scale enablement requirements.
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.
At the beginning of 2022, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.
Patents
“DOCX” filing format deadline extended
The deadline for the implementation of a surcharge for non-DOCX patent application filings has been extended until January 1, 2023. In recent years, most U.S. patent applications have been filed electronically in PDF format. DOCX-format filings are currently possible but non-DOCX PDF-format filings are still permitted without any surcharge. The non-DOCX surcharge will eventually be $400/$200/$100 for large/small/micro entities. Note that the non-DOCX surcharge will not apply to PCT national phase entries into the USA. The applicability of the non-DOCX surcharge to U.S. applications filed in a language other than English is still rather unclear (it is not clear if a DOCX copy of only the English translation, only the non-English original, or both the original and translation is required to avoid the surcharge).
In general, the greatest concerns about DOCX format have to do with rendering of complex application content, such as embedded mathematical equations created with a word processing program’s equation editing functionality, which may not render as the applicant intended at the USPTO side. The official reason given for the implementation delay is to “provide the public an opportunity to more fully comprehend the nature of, and prepare to comply with, the DOCX format[.]” But while the DOCX format is an administrative convenience for the USPTO, its mandated use is a more of a burden than a benefit for applicants. The need for applicants and their counsel to review and correct potential USPTO-side DOCX rendering errors (which may occur more frequently than with certain PDF-format filings) may make PDF-format filing and payment of the non-DOCX surcharge preferable in some situations. Though for applications containing only simple text, without complex or unusual formatting or embedded equations (other than equations inserted as images), DOCX-format filing should not pose any major problems.
Digital-only patents
Starting sometime in 2022, the USPTO will cease issuing paper patents and will issue digital patents instead. However, paper “presentation copies” (also called ribbon copies) of patents (on heavy paper with an embossed gold seal and the USPTO Director’s signature) will still be available upon request for a $25 (US) official fee per copy. The USPTO says that digital patent issuance will speed up the process of issuance after payment of the issue fee, with a target of one week to issuance. This will shorten the time available to file a divisional or continuation patent application, which must be filed no later than the day of issuance of the parent patent. Though it has always been—and will remain—a recommended best practice to file any desired divisional/continuation application no later than the date of issue fee payment.
Bilateral exchange of certified priority documents with EPO ending
The USPTO’s bilateral electronic priority document exchange (PDX) program with the European Patent Office (EPO) is ending. For any U.S. applications filed on or after January 01, 2022 with a priority claim to an earlier EP application, a WIPO Digital Access Service (DAS) code will need to be provided in order to electronically retrieve a certified copy through PDX. This will require registering the EP application with the WIPO DAS exchange. This change will not affect PCT national phase entries into the USA where the EP priority document is made available under PCT Rule 17.
Starting December 1, 2022, the time to respond to trademark office actions (under 37 C.F.R. § 2.62(a)) will be shortened to three (3) months. A single three-month extension of time to respond can be requested, which will carry an official fee of $125 (US). The extension must be affirmatively requested within the original three-month period. However, the shortened response periods will not apply to Madrid extensions to the USA. For refusals in Madrid extension cases (§66), the applicant will still have a full six-month response period available without paying any extension fees.
Digital-only registration certificates
Starting in spring 2022 the USPTO will cease issuing paper trademark registration certificates and will issue digital certificates instead. [UPDATE: the USPTO began issuing only electronic registration certificates on May 24, 2022.] However, paper “presentation copy” trademark registration certificates (on heavy paper with an embossed gold foil seal, the name(s) of the owner(s), the mark, bibliographic data, and the classes of goods and/or services) will still be available upon request for a $25 (US) official fee per copy. Registrants who filed an initial trademark application before the implementation date (a date that is not yet fixed) will be able to order presentation copies with no official fee. Additionally, certified copies of U.S. trademark registration certificates with current title and status information are also available with payment of an official fee, currently $30 (US).
Filer Identify Verification
[UPDATE: the USPTO has postponed the deadline for filer identity verification to August 6, 2022.] By April 9, 2022, persons filing trademark applications, responses, and the like must complete identity verification in order to electronically file with the USPTO. These identity verification procedures will be available starting January 8, 2022.
New expungement and reexamination proceedings
Two new proceedings are available for an existing trademark registration to be challenged. Both of these new proceedings are conducted on an ex parte basis. That is, a challenger files a petition to request expungement or reexamination and, if granted, the rest of the proceeding is conducted only between the USPTO and the registrant in a manner similar to original examination. Unlike traditional cancellation (or opposition) proceedings, after institution of an expungement or reexamination proceeding, the challenger cannot substantively participate. Summaries of the two new proceedings follow, but more details about applicable procedures can be found in the USPTO Examination Guide 1-21. In addition to the two new types of proceedings, expungement is also available as a new ground for a traditional cancellation proceeding after three years of registration (15 U.S.C. § 1064(6)).
Expungement proceedings:Any party may request cancellation of some or all of the goods or services in a registration because the registrant never used the mark in commerce with those goods or services. The official filing fee for an expungement proceeding is currently $400 (US) per class. An expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, there is currently an extended expungement filing period. Until December 27, 2023, 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 registrations but will be especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required to initially obtain a U.S. registration.
Reexamination proceeding: Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before either (1) the application filing date (when the underlying application was initially filed based on use of the trademark in commerce under §1(a)) or (2) the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired (when the underlying application was filed with an intent-to-use basis under §1(b)). Reexamination proceedings are available for registrations under 15 U.S.C. §1051 (§1) but are not available for marks registered under the Paris Convention (§44) or the Madrid protocol (§66). The official filing fee for a reexamination proceeding is currently $400 (US) per class. Reexamination must be requested within the first five (5) years after registration.
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.
Official fees for U.S. patent applications depend on the size of the applicant(s), plus that of any licensees, affiliates, or other associated parties. There are different fee rates applied to large, small, and micro entities. What follows is an explanation of how to determine if large, small, or micro entity fees apply.
Large Entity (Undiscounted) Status
By default, all applicants are subject to large entity official fees. Large entity fees are also called undiscounted fees. A for-profit business having more than 500 employees (including employees of affiliates) is a large entity. But, really, the best way to look at undiscounted or large entity status is to say that it applies whenever any applicant does not qualify for reduced fees as a small or micro entity.
If there are multiple applicants, undiscounted (large entity) fees must be paid if any of them fail to qualify for reduced fees as a small or micro entity.
Also, an applicant is required to pay undiscounted (large entity) fees if sufficiently connected with a large entity, such as through an affiliation, assignment, obligation to assign, licensing agreement, joint ownership, or shop rights.
Small Entity Status
Qualifying as a small entity allows for discounted official fees. Small entity fees are generally forty percent (40%) or two-fifths of large entity fees. Though not all fees or surcharges are eligible for a small entity discount.
To qualify for small entity status, the applicant(s) must each be a person, small business concern (having no more than 500 employees, including those of affiliates), or nonprofit organization (including non-profit universities and certain non-profit scientific or educational organizations). But an applicant is required to pay undiscounted (large entity) fees if associated with an entity that does not qualify as a small entity, such as through an affiliation (a potentially confusing circumstance explained further below), assignment, obligation to assign, licensing agreement (subject to certain exceptions discussed below), joint ownership, or shop rights.
In general, entities are affiliates when one has the power to control the other or a third party has power to control both. However, affiliation under that standard is assessed based on the totality of the circumstances. For instance, an affiliation with a single shareholder (or a group of shareholders) holding less than 50% of the voting stock can be present if that minority block of stock is large compared to other outstanding blocks of voting stock and provides “negative control” through veto power over an important aspect of the business concern. Accordingly, an affiliation with a venture capital firm or the like having sufficient control over a portfolio of multiple companies can mean that employees of all affiliate companies in that portfolio are aggregated together when assessing the 500-employee limit. As another example, an affiliation can be established when one firm relies on a second firm (including a customer) for 70% or more of its revenue in a longstanding relationship, due to economic dependence, meaning the employees of the second firm are counted against the total of the first firm. Contractual relationships short of ownership are also considered.
There are certain exceptions to the types of licenses that result in loss of small entity status. Firstly, a license or similar transfer of rights in the invention is only relevant if it involves a U.S. application or patent. A license involving only a related foreign application or patent would not affect U.S. small entity size status, for instance. Moreover, implied licenses to use and resell patented articles purchased from a small entity will not preclude the proper claiming of small entity status. Also, a use license to the U.S. Federal Government does not result in loss of small entity status.
A security interest (such as using a patent or application as collateral for a loan) does not result in loss of small entity status unless there is a default that triggers the security interest. An inventor or applicant retaining a firm to build a prototype of an invention for the applicant’s own use is not considered to constitute a license for purposes of the small entity definition.
Small entity status requires claiming that status, such as on an Application Data Sheet (ADS). However, there is no further certification or supporting evidence required.
If small entity status is lost, the applicant must submit a notification of a loss of entitlement to small entity status. However, once small entity status has been established, fees can continue to be paid at the small entity rate without regard to the change in status until the issue fee is due or any maintenance fee is due. In other words, an established small entity fee status remains in effect during ongoing examination of an application and discounted small entity fee rates are only formally lost at the time of issue fee payment (after allowance) or when the next patent maintenance fee is due.
Any attempt to intentionally establish inaccurate status as a small entity, or pay fees as a small entity, is considered fraud on the USPTO. Such fraud can make a resultant patent unenforceable. Also, the USPTO can assess a fine—even after a patent has issued—of no less than three (3) times the amount that was unpaid due to a false certification of small entity status.
It may be possible to correct errors related to payments at the small entity rate. If small entity status is established and small entity fees are paid in good faith, and it is later discovered that small entity status was established in error or through error the USPTO was not notified of a loss of small entity status, the error will be excused upon compliance with separate submission and itemization requirements plus a fee deficiency payment. The deficiency amount owed is calculated using rates in effect on the date upon which the deficiency is paid, not the fee rates at the time of the original (but deficient) payment. There is no time limit for such corrections.
A refund is possible, for fees timely paid in full (that is, at the undiscounted large entity rate) prior to establishing small entity status. However, such refund requests must be made within three months of the date of the timely payment of the full fee. Yet the costs and burdens associated with requesting such refunds may exceed the value of the refund in many cases.
Micro Entity Status
There are two possible bases for micro entity status: gross income basis and institution of higher education basis. The requirements for each are rather confusing. Micro entity compliance requirements are also more burdensome than for small entity status. Micro entity fees are generally half (50%) of small entity fees and a fifth (20%) of large entity fees. Though not every official fee/surcharge is eligible for a micro entity discount.
Micro Entity—Gross Income Basis Certification Form PTO/SB/15A
To qualify for micro entity status—gross income basis, the applicant(s) must each certify the following:
(ii) no applicant or inventor has been named as an inventor on more than four previously filed U.S. non-provisional patent applications (including PCT applications designating the U.S.)
(iii) no applicant or inventor had a gross income in the previous year of more than the “Maximum Qualifying Gross Income,” which is three times the median household income (as of September 12, 2023 that was $223,740 (USD) but that amount changes yearly), and
(iv) no applicant or inventor has assigned, granted, or conveyed, or is under an obligation to assign, grant, or convey, a license or other ownership interest to another entity that does not meet the “Maximum Qualifying Gross Income” limit.
For the previously filed application limit, applications resulting from prior employment are not counted against the total. So an applicant/inventor is not considered to be named on a previously-filed application for micro entity status purposes if he or she has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of his or her previous employment—this exception does not apply to prior applications as part of current employment, however. Also excluded from the total are any PCT applications for which the basic national phase entry fee to enter the U.S. was not paid. Lastly, USPTO guidelines say that the filing of a future application will not jeopardize entitlement to micro entity status in any of the (up to five) applications already filed.
To qualify for micro entity status—institution of higher education basis, the applicant(s) must each qualify as a small entity and certify micro-entity status. But there are two possibilities. Each micro entity applicant (that qualifies as a small entity) must either:
(B) have assigned, granted, or conveyed, or be under an obligation by contract or law to assign, grant, or convey an ownership interest in the application to such a United States institution of higher education.
Micro Entity—Institution of Higher Education Basis Certification Form PTO/SB/15B
Importantly, the institution of higher education basis for micro entity status also requires that the inventor(s) be the applicant(s), not the university.
Both possibilities for micro entity status require that all applicant(s) qualify as a small entity. Small entity status might be lost if there is a license granted to a large entity, for example. However, the micro entity requirements do not exclude licenses for U.S. Federal Government use, meaning that an exception allowing certain applicants to qualify for small entity status does not apply for micro entity status. Also, the micro entity regulations do not explicitly refer to security interests, making it unclear if they are treated the same as for small entity status.
All applicants must still be entitled to micro entity status to pay a fee in the micro entity amount at the time of any official payments. Written certification is required to initially establish micro entity status. But more is required after establishing that status. It is further necessary to determine whether the requirements for micro entity status exist at the time each fee payment is made. Also, if the prosecution of an application under the gross income basis status extends across multiple calendar years, each applicant, inventor, and joint inventor must verify that the gross income limit for the requisite calendar year is met to maintain eligibility for the micro entity—gross income basis discount. And under the institution of higher education basis, each applicant, inventor, and joint inventor potentially must verify that a majority of his or her income comes from a U.S. institution of higher education. These requirements make micro entity status compliance more onerous than for small entity status. Unlike with small entity status, micro entity status can be lost during ongoing examination of an application.
Whenever micro entity status is lost, it is necessary to file a formal notification of loss of entitlement to micro entity status. As explained above, loss of micro entity status can potentially occur at any time. So a notification of loss of micro entity status can generally not be deferred and must be filed promptly (and before any official payments) when an applicant or inventor’s status changes. Small entity status may or may not still be available if micro entity status is lost.
Any attempt to intentionally establish incorrect status as a micro entity, or pay fees as a micro entity, is considered fraud. Such fraud can make a resultant patent unenforceable. Also, the USPTO can assess a fine—even after a patent has issued—of no less than three (3) times the amount that was unpaid due to a false certification of micro entity status.
It may be possible to correct errors related to payments at the micro entity rate. If micro entity status is established and micro entity fees are paid in good faith, and it is later discovered that micro entity status was established in error or through error the USPTO was not notified of a loss of micro entity status, the error will be excused upon compliance with separate submission and itemization requirements plus the fee deficiency payment. The deficiency amount owed is calculated using the date on which the deficiency is belatedly paid, not the fee rates at the time of the original (but deficient) payment.
There is no possibility for refunds of previously-paid fees based on later establishment of micro entity status. In this respect, micro entity status does not provide a window for requesting a refund of previously-paid fees as is possible for subsequent establishment of small entity status. Although if the fees were originally paid at a large entity rate a refund of the difference between undiscounted and small entity rates may be possible when micro entity status is establish, because micro entity status requires that the applicant also qualify as a small entity.
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.
A provisional patent application — sometimes called a “provisional application”, “provisional” or “PPA” for short — is a type of patent application that can be filed in the United States. They were intended to provide lower-cost first patent filings for new inventions. A provisional acts kind of like a placeholder for up to one year. It is never substantively examined for patentability. And a provisional can never directly be granted as an enforceable patent. But you can file a further non-provisional application that claims “priority” back to the provisional application filing date. A provisional filing lets you put a stake in the ground to preserve patent rights, so-to-speak.
The question at hand is really what factors weigh in favor or against filing a provisional. In short, what are the pros and cons of filing a provisional?
USPTO Provisional Application Cover Sheet Form (PTO/SB/16)
Advantages and Benefits
Some of the most common advantages and benefits of a provisional patent application are the following:
Extends patent expiration date (patent term benefit)
Allows products to be marked “patent pending”
Establishes filing date (priority) to cut-off potential later-arising “prior art”
Allows commercial potential of invention to be explored for up to a year without losing patent rights
Helps win race to the patent office if others are working on similar inventions
No need to comply with formalities for drawings, etc.
Might be filed quickly in the face of an impending loss of patent rights associated with a public disclosure/use or sales activity
Kept confidential (at least until cited in a later-published application or granted patent, such as through a priority claim)
Evidence of inventorship as of filing date
Lower initial official filing fees than a non-provisional application
Can later claim priority to multiple provisional applications
One of the biggest benefits of a U.S. provisional application is that the time period between the provisional filing date and the filing date of a non-provisional application claiming priority back to the provisional is not counted against patent term. This means that a provisional can push out the patent expiration date by up to a year (but this happens partly by delaying the grant of any patent by roughly the same amount of time). It can effectively extend the patent term to 21 years from filing. For some inventions, the most valuable period of patent protection may be later in the term, making such an extension valuable.
A pending provisional application also allows products to be marked as “patent pending.” That serves as a warning to potential copyists. It may also provide marketing and business development benefits.
Filing a provisional application establishes an official “filing date” for the disclosed invention. This is significant because patent rights generally go to the first inventor to file a patent application. So provisionals help win the race to the patent office. If there is some public disclosure that occurs after the provisional filing date it will not count as “prior art” against a later claim with “priority” to the provisional filing date. Prior art can potentially bar patentability. It can stem from your own disclosures and activities or someone else’s. Either way, a provisional can potentially exclude later-arising disclosures from being used as prior art against you. It is this aspect that allows you to disclose the invention to potential customers, etc. during the year after the provisional filing without loss of rights.
Another advantage is that provisionals do not require formal drawings, claims, etc. Here we can loosely distinguish between “informal” and “formal”/”full” provisionals. A “formal” or “full” provisional is one that could be filed as a non-provisional because it is written up in full detail to comply with all the requirements of a regular non-provisional utility patent application. An “informal” provisional is one that would not be sufficient or compliant as a non-provisional utility patent application.
A formal/full provisional generally offers no savings on preparation costs and effort compared to a non-provisional application. But the official filing fee is less and an eventual patent expiration date can be extended. The main advantage is that you reduce the risks of having inadequate disclosure of the invention. Not all provisional applications are equal. A provisional is really only as good as the disclosure it contains. If a provisional application omit details that are essential to patentability of an invention the provisional may be ineffective or even worthless. Putting in the effort to prepare a full disclosure of the invention reduces such risk.
An informal provisional departs from the format of non-provisional applications and granted patents somehow. It might have drawings with shading or lacking reference characters (labels), pages pulled from presentation slides with text in different orientations, figures (graphical illustrations, diagrammatic views, flowcharts, and/or diagrams) inserted into the middle of pages of descriptive text, etc. They sometimes repurpose existing documentation. Such informality may allow for quick filing. For example, if disclosure of the invention at a trade show or customer meeting is immanent, an informal provisional can be filed on an urgent basis to preserve patent rights.
Any type of provisional allows exploration of the commercial possibilities of the disclosed invention before deciding if a non-provisional application is worthwhile. The USPTO keeps provisional applications secret initially. If you abandon the provisional without claiming priority to it or disclosing it in some other way, its contents will never be made public by the USPTO. That means you might be able to still pursue patent protection later (despite loss of priority) if there was no intervening public disclosure or commercialization of the invention by you or anyone else. But if you claim priority to a provisional in a non-provisional application the contents are made public (upon publication or grant).
When seeking to generate interest in an invention or make sales, do keep in mind the scope of protection a provisional will and will not offer. A provisional is generally effective if it includes as much or more disclosure as what is publicly disclosed, publicly used, sold, or offered for sale (or what has already been publicly disclosed, publicly used, sold, or offered for sale within the prior year). The limits of protection are discussed in the disadvantages and risks section below.
Provisionals are also occasionally useful in providing evidence of inventorship. For instance, a provisional might provide some evidence of independent invention as of the provisional filing date (as part of self-authenticating official U.S. government records), although this is not always sufficient by itself.
Additionally, if research and development is ongoing, it is possible to file multiple provisional applications. A later non-provisional application can claim priority to any or all of those provisionals — assuming they are all filed within a year and have at least one common inventor. And one (or more) of those provisionals could be abandoned and kept confidential if unnecessary to later patenting strategies. In other words, with up to a year of hindsight, you could pick and chose some but not all of the provisionals for priority claims. And new matter can still be added to a later non-provisional application too. That new matter just won’t receive priority to an earlier provisional filing date.
Disadvantages and Risks
Some of disadvantages and risks associated with filing a provisional patent application are the following:
Adds to total cost of obtaining a patent
Delays the (potential) grant of a patent
Risk of inadequate disclosure in an “informal” provisional
If foreign patent protection is eventually sought, the disclosure requirements may differ from U.S. law
Patentability might already be barred before filing (that is, the provisional is already too late)
Not available for designs
Foreign law may necessitate first filing in a foreign country or obtaining a foreign filing license before filing the provisional for inventions made wholly or partly outside the United States
Filing a provisional adds to the total cost of obtaining a patent. If you simply file a non-provisional application from the start you avoid the provisional filing fees entirely, plus any attorney fees associated with the provisional.
A provisional also delays the grant of a patent (assuming the invention is patentable). Though, in exchange, the expiration date of the patent is pushed out the same amount of time. Sometimes that trade-off is acceptable. But if the invention is likely to be copied, delays in obtaining a patent might delay enforcement action against infringers.
The main risk of a provisional filing stems from it containing an inadequate disclosure. From one perspective, filing a patent application (provisional or non-provisional) is better than not filing when it comes to helping protect an invention. But not all provisional applications are equal. put another way, the question is not merely about filing or not filing a provisional but about filing an adequate and sufficient provisional or not. A poorly-prepared provisional application may inadequately or unfavorably disclose the invention. In that sense, it may create a false sense of security. Never forget that a provisional is only as good as the disclosure it contains. Whether a given provisional is good enough comes down to what public disclosure and commercialization takes place, the scope of the prior art, and your overall patenting strategy and expectations.
If you file a provisional application to avoid a patentability analysis or even just to avoid hard thought about what is really the invention and how to claim it, you can’t know if the provisional application contains sufficient disclosure of a patentable invention. This might be risky if you rely on an “informal” provisional that cuts corners compared to a “full” or “formal” provisional (see definitions above). That is a particular concern if you sell or publicly use a product but important technical details about that product were omitted from the provisional.
Legally, the provisional application disclosure (written description) must enable one of ordinary skill in the art to practice the entire invention claimed in a later non-provisional application. There have been manycases where omission of some detail in a provisional application (that turns out to be important to patentability of a later-filed claim) resulted in a loss of priority to the provisional filing date for one or more claims. So you have to understand what will be later claimed in order to know if a provisional’s disclosure is sufficient. Complex or highly abstract technologies raise this issue. For example, an invention related to signal processing is probably not directly observable, meaning a provisional write-up must sufficiently capture the unobservable.
An important legal concern is that you cannot preempt a future invention before it has arrived. So you need a disclosure in the provisional that corroborates conception of the invention you will later claim. If you later try to claim an entire “genus”, this often turns into a question of whether the provisional disclosure was limited to a particular “species” (i.e., specific embodiment) within that genus or made clear that an entire genus was invented and enabled — usually by disclosing either a representative number of species in that genus or structural features common to the genus sufficient for member species to be recognized. Another potential issue involves claiming ranges of particular values. If you later claim a narrow numerical range, perhaps to avoid prior art falling in a different range, previously disclosing only a broader range might not be sufficient. These are fact-intensive inquiries.
Legal requirements in other countries vary. For instance, other countries may have stricter requirements about claims using nearly the identical language as the preceding description of the invention. And other countries may not permit reliance on disclosures contained only in drawings. They may instead look for textual descriptions of what is in a drawing. If foreign patent protection is (or might be) contemplated, differences in disclosure requirements should also be considered when preparing the provisional.
A provisional application also won’t save you when patentability is already barred. For instance, if the invention was already sold or publicly disclosed by the inventor more than a year before, then patentability is already barred in the United States. Any pre-filing public disclosure by the inventor may bar patenting in some other countries too. And an invention that lacks utility, is anticipated, or is obvious won’t be patentable either, regardless of whether a provisional was filed.
Additionally, provisional applications cannot be used in connection with designs. If your invention pertains to an ornamental design of a useful article, a regular (non-provisional) design patent application is the only option.
Lastly, some countries have laws that require patent applications to be filed in that country first if the invention was made or conceived in that country, or that a license be obtained to file abroad first. If any inventor resides in a foreign country or performed inventive activity while temporarily outside the United States, any applicable foreign laws should be considered. Those laws may impose penalties for making a provisional filing in the United States rather than in the foreign country. Foreign priority cannot be claimed in a U.S. provisional application.
Concluding Thoughts
Provisional patent applications are routinely used by applicants ranging from individual inventors to large corporations. There are many excellent reasons to file a provisional, including extending the expiration date of any resultant patent. It is always worthwhile to consider filing a provisional application. But a hastily- or poorly-prepared provisional may be insufficient to preserve a priority claim. Cutting corners to file a provisional cheaply or quickly imposes some limits on the scope of protection obtained. Always remember that a provisional is only as good as the disclosure it contains — that point is worth repeating.
A common mistake in applications self-prepared by inventors is to focus on the prior art or problem to be solved but omit the crucial disclosure of the substance and structure of the new invention — or do so only with general, vague, and conclusory statements that fail to establish anything more than a hope that an invention will be discovered later. A provisional also won’t be effective if key enabling aspects of the invention are purposefully withheld from the application. For instance, a disclosed algorithm cannot obscure key steps of the purported invention within a “black box”. Another common mistake is to characterize the invention in a way that limits the ability to claim the invention more broadly (or narrowly) later on.
Whether a provisional patent application is worthwhile will ultimately depend on circumstances such as the subject matter of the invention(s), the state of the art, any looming bars to patentability, the business goals and objectives of the applicant, the realistic commercial value of the invention, and the applicant’s worldwide patent strategy.
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.
