Tag: Patents

When Should I Complete a Patent Invalidity Search?

Post author By Austen Zuege

There are many situations where it is desirable to challenge the validity or patentability of a granted patent or pending patent application. For instance, an invalidity search can be useful for an invalidity opinion to mitigate infringement liability, an invalidity defense in litigation, a proactive challenge to patentability at the U.S. Patent & Trademark Office (USPTO), or a pre-issuance submission (observations) to try to restrict or prevent a patent from being issued. But what is the best timing for such an invalidity search?

graphic of timeline for invalidity search

In one sense, an invalidity search is never strictly legally required. Though, practically speaking, invalidity searches are often crucial to avoiding or reducing liability for patent infringement in many contexts. These searches must be performed in a timely manner to obtain the greatest value from them. That includes performing searches in time to meet deadlines that require having suitable search results available.

Patent invalidity searches are reactive in the sense of being conducted in response to some infringement risk arising. That could be the receipt of a cease & desist letter, the filing of an infringement lawsuit against you, or other knowledge of a potentially problematic patent (e.g., via a freedom-to-operate study). In any event, an invalidity search requires first knowing which patent is the subject of the invalidity search. That is because an invalidity search depends on the scope of the particular claim(s) of concern and their effective filing date(s)—including any priority date(s).

It is a best practice to consider an invalidity search after a tangible risk of patent infringement comes to your attention. Knowledge of a patent coupled with a reasonable belief that infringement might be present can potentially give rise to enhanced damages for infringement. And knowledge of a pending patent application can potentially give rise to so-called “provisional rights” to pre-issuance infringement damages.

There may be deadlines that determine when invalidity search results are needed. For instance, in patent litigation in a district court, the court will issue a scheduling order that often sets a deadline to set for invalidity contentions. In is necessary to have search results available in order to formulate those invalidity contentions and prepare a suitable report. Other times, invalidity contentions might be requested through discovery requests, such as interrogatories. Either way, it is crucial to perform the invalidity search far enough in advance of such deadlines to allow for subsequent legal analysis of the search results.

Moreover, there are situations where a proactive challenge to a granted patent is desired. Proceedings such as inter partes review (IPR), post-grant review (PGR), oppositions, and the like may have various different deadlines by which a challenge must be filed. Such deadlines drive the timeline for completing invalidity searching. Just as in litigation, the search must be completed with time to spare to allow for legal analysis and preparation of any formal filing papers for the patent challenge, which may require considerable effort to prepare. Additionally, a pre-issuance submission (or observation) might be filed against a pending patent application and there likewise are both formal and practical deadlines to do so.

Lastly, if an opinion of counsel setting forth grounds for liability is desired to mitigate potential infringement damages, such an opinion should ideally be obtained before your relevant product (or process) is commercially launched. If patent in question is discovered only later, then such an opinion should be obtained without unreasonable delay. Having invalidity search results is a prerequisite to completing an invalidity opinion.

In all these possible settings, it is common for multiple invalidity searches to be performed. That can include follow-on invalidity searches performed in an iterative manner, in order to exhaustively locate prior art and to try to obtain sufficient prior art for desired (and reasonable) invalidity arguments as those arguments evolve and develop. It may also include searches performed by different searchers in different databases (including in non-patent literature databases), in different native languages, though investigation of prior public use and on-sale activities, and the like.

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.

Tags Freedom-to-Operate (FTO) & Clearance, Litigation, Patents, Searching, Third-Party Submissions (Observations)

Patents Q&A

When Should I Complete a Patent FTO Search?

Post author By Austen Zuege

If you have decided to perform a freedom-to-operate (FTO) or “clearance” study to try to reduce the risk of patent infringement, it will be necessary to determine when a patent search should be performed. This is a question about best practices for the timing of patent FTO/clearance searches.

The following timeline provides an overview of major timing considerations and the best time to conduct a patent FTO study.

In general, the ideal time to conduct at FTO search is before a product (or technical process/service) is commercially launched but after its technical design parameters are sufficiently established to know what the search should encompass. That is a window of time in between an initial business case and the beginning of research & development (R&D) efforts, on the one hand, and the formal product launch on the other. Additionally, the FTO search and accompanying legal analysis should be completed well enough in advance of the product’s commercial launch date to allow time for possible risk mitigation efforts before infringement liability might start to arise. If the FTO search uncovers a potentially problematic patent, you gain the most benefit from that information if you have allowed time to take responsive action before a product launch point-of-no-return.

In this context, a product launch can be anything that is potentially actionable as patent infringement, including making, using, selling, offering for sale, or importing an infringing product in or into the USA. Though product launch infringement risks tend to be greatest when there is a major commercial release that makes the product (or process) widely publicly available, as opposed to mere preparatory efforts (such as prototyping) that might happen only on a private and confidential basis.

Having technical design parameters that are sufficiently established to know what the search is important. This allows the FTO searcher to understand what, specifically, should be searched—and what is excluded from the scope of the search. This process of determining what to search is referred to as “feature identification” (or sometimes “product decomposition”). This involves itemizing individual patent-sized technical features present in the product that are to be searched. But feature identification is only possible if there is sufficient technical information available. If R&D efforts are still in preliminary stages, or if there is really only a (non-technical) business case available, it may not be feasible to conduct an FTO search yet, or at least not for all planned product features. In those situations, a more generalized “landscape” search is perhaps more appropriate. Otherwise, the FTO search(es) for insufficiently-developed feature(s) may need to await further technical R&D.

Updates?

After an FTO search is completed, there are various reasons why a later “update” search may be helpful. First of all, there is generally a delay of roughly eighteen (18) months between the filing and publication of most patent applications—and sometimes longer. This means that there may be relevant pending (but unpublished) patent applications that cannot be found during an initial FTO search. But, additionally, there may be changes to the technical design of planned or released product over time that merit further FTO searching and/or analysis. So, at what time(s) should such FTO search updates be performed? There are actually multiple possible approaches.

Discrete FTO Updates

A first approach is to perform one or more discrete FTO updates that resemble the initial FTO search and analysis. The timing of such discrete updates can be based on product- or technology-based milestones and/or calendar- or timeline-based milestones.

A typical product/technology milestone would be the release of a new or different version of a given product that has new, improved, or simply different features and functionality. An example would be releasing version 1.1 or 2.0 of a product that was previously cleared for its version 1.0 design only. Another typical product/technology milestone would be the occurrence of a particular pre-release design review phase. Technologies that have relatively long development cycles sometimes go through formalized design review processes with multiple distinct phases. In each phase changes to the product design might be introduced. For instance, a given initial product design might work well in prototype form but later be discovered to be too difficult to manufacture efficiently and thus might be replaced with a more easily manufactured design that was not previously searched.

An example of a calendar-based milestone would be to simply conduct a search update on a set periodic cycle, such as every year, or a single time after 18 months have passed since the original FTO search. There is no right or wrong update time period here, or even an particular appropriate number of updates. This is really a trade-off between the burden and expense of each update and the infringement risks likely raised, including the density of ongoing patenting on relevant technologies. Though recall that unpublished pending patent applications might first become available 18 months (or more) after the original FTO search.

Ongoing Monitoring

It is also possible to conduct ongoing monitoring of all patents and published applications for:

particular competitor(s)
particular technology area(s)

Ongoing monitoring can be facilitated through the use of alerts/saved criteria set up with proprietary search platforms or, alternatively, periodic (manual) searches. Such ongoing monitoring can take place in addition to or in place of other milestones or criteria for an FTO search. The main decision points with respect to ongoing monitoring are when to start and when to stop monitoring, and the scope regarding which competitor(s) and/or technology area(s) are included. Those factors are often highly influenced by the time and resource commitments required, as well as the relevance of those efforts to planned or ongoing commercial activities. It is worthwhile to periodically revisit the parameters for ongoing patent monitoring efforts, to ensure that those efforts are still relevant and appropriately focused.

Tags Freedom-to-Operate (FTO) & Clearance, Patents, Searching

Patents

Is Functional Language Permitted in Patent Claims?

Post author By Austen Zuege

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.

Contact Austen

Tags Patent Prosecution, Patents

Patents Q&A

What Are the Ways to Challenge a Granted Patent?

Post author By Austen Zuege

It may be desired to proactively challenge the validity or patentability of a granted U.S. patent for a variety of reasons. What are the available options to challenge a granted patent either at the U.S. Patent & Trademark Office (USPTO) or in court? The following table compares the different types of proceedings and summarizes the applicable standards.

————————	Post Grant Review (PGR)	Inter Partes Review (IPR)	Derivation Proceeding (DP)	Ex Parte Reexamination (Reexam)	District Court Civil Action — Declaratory Judgment (DJ Action)
*Eligible Target Patents* *Based on Effective Filing Date (EFD)*	AIA patents only: EFD ≥ March 16, 2013	Any patent	AIA patents only: EFD ≥ March 16, 2013	Any patent	Any patent
*Available Grounds*	§§ 101, 102, 103, 112 (no best mode), including double patenting	§§ 102 and 103 based on patents and printed publications (only)	Derived invention without authorization	§§ 102 and 103 based on patents and printed publications (only)	Any (except best mode)
*Timing Requirements*	Within 9 months of patent grant (or reissue)	AIA patents: after 9 months (end of PGR) *Non-AIA patents: after issuance Both*: only within 1 year of civil action	Within 1 year of grant or publication of claim, whichever is earlier	Anytime patent remains assertable	Anytime patent remains assertable
*Claim Interpretation Standard*	Same as district court civil action (Phillips)	Same as district court civil action (Phillips)	Same as district court civil action (Phillips)	Broadest reasonable interpretation (BRI) except Expired patents: Phillips	Markman / Phillips
*Eligible Filing Parties*	Any 3^rd party	Any 3^rd party	Inventor	Anyone	Anyone with standing (substantial controversy between parties having adverse legal interests of sufficient immediacy and reality; requires affirmative act by patentee)
*Threshold*	More likely than not unpatentable	Reasonable likelihood petitioner will prevail	Substantial evidence	Substantial new question of patentability (SNQ)	Plausibility (Iqbal / Twombly)
*Estoppel (Attaching to Challenger)*	Raised or reasonably could have raised	Raised or reasonably could have raised	None by statute, but derivation-specific administrative estoppel and deference	None by statute, but administrative estoppel and deference	Res judicata and collateral estoppel (for civil actions only)

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Tags Litigation, Patentability and Validity, Patents

Agreements Copyrights Patents Q&A Trade Secrets

Who Owns the IP for Things a Vendor Creates?

Post author By Austen Zuege

Introduction — Why This Matters

Businesses often hire vendors to develop things for them, perhaps due to a lack of expertise in some particular area or just a lack of capacity. The vendor might be another firm, an individual independent freelancer, a temporary contractor working on-site, or some other type of consultant. This is often referred to as outsourcing. But who owns the intellectual property (IP) for things the vendor creates? This question should be asked at the beginning of a vendor relationship. Ideally, it should be answered before hiring the vendor.

All too often businesses ignore ownership of IP rights until there is infringement or a big business deal long after the vendor was hired. But cutting corners or forgetting to put IP ownership in writing at the beginning of a vendor relationship can potentially have huge (if avoidable) consequences later on. Businesses do come to regret such oversights later on. For instance, when selling a business, a prospective buyer might raise questions about lack of IP ownership due to vendor or outside contractor involvement, which might present barriers to completing the sale or might lower the purchase price. Or, when there is infringement, a business lacking ownership will not have standing to sue the infringer while the vendor (who still owns the IP) may be unconcerned and disinterested.

A common mistake is to wrongly assume that merely paying a vendor automatically transfers IP ownership or that receiving physical copies (even the sole original) transfers IP ownership. In the absence of something in writing, the vendor most likely retains any patent or copyright ownership interests. Vendors, for their part, may also be ignorant or misinformed about IP rights. Anyone hiring a vendor should not assume that the vendor understands potential IP issues or that the vendor’s standard agreement (sometimes called a master services agreement) will adequately or satisfactorily address and allocate IP ownership.

Type of IP	Default Owner (Subject to Exceptions)
Patents	Inventor(s)
Copyrights	Author(s)
Trademarks	User of mark (to designate source)
Trade Secrets	Rightful owner

Table Summarizing Who Typically Owns IP Initially (In the Absence of an Agreement or Local Law to the Contrary)

Seeking to obtain IP rights from a vendor after the end of the relationship can be difficult. You may find yourself without leverage to insist upon vendor cooperation or the vendor may no longer exist (or be deceased). And vendors may opportunistically seek windfalls to assign over IP rights after-the-fact. In worst-case scenarios, the vendor may own the IP and be able to freely commercialize it to your disadvantage, as well as to potentially block further independent development by you.

From the vendor’s perspective, an assignment of IP rights might be undesirable. But this is a question of leverage (bargaining power) and whether the vendor is willing and able to turn down potential new work. Though a suitable compromise may be to provide a license-back to a vendor, allowing certain uses by the vendor while still transferring IP ownership to the vendor’s client. An example is a portfolio license allowing the vendor to show examples of past work to potential clients. What makes sense in any particular situation will vary, of course.

Patents and Copyrights

For patents and copyrights, the general rule in the United States is that whoever creates the IP is the owner. In the absence of a written agreement to the contrary, this means that a vendor will generally own any patent rights or copyrights stemming from the vendor’s own efforts by default, even if the customer paid the vendor for it. But there are exceptions. And it is possible to agree in advance who will own the IP — that generally needs to be in writing.

“For patents and copyrights, the general rule in the United States is that whoever creates the IP is the owner.”

By statute, transfer of ownership of patents (or a patentable invention) and copyrights must be in writing — though copyright law allows the copyright owner’s duly authorized agent to sign an assignment. Any written document, including purely electronic materials, could include or constitute an assignment if it shows intent to presently transfer ownership rights. The written document should use words like “assigns”, “hereby assigns”, “hereby conveys, transfers, and assigns”, etc. to create a present transfer of ownership. Oral assurances will not transfer ownership of an invention (patent) or copyright; although limited implied non-exclusive licenses or equitable rights (e.g., shop rights) might still arise without being in writing.

Agreements that constitute merely an obligation to assign — typically phrased in the future tense such as with “will own” or “shall assign” language — do not effectuate an assignment of IP. Rather, obligations to assign require later execution of a separate written assignment. But ambiguous language relating to possible future agreements (such as “shall be owned as agreed upon”) may not even create an obligation to assign.

Some jurisdictions have different default rules about IP ownership. At least one U.S. state, Nevada, may vest initial ownership of patent rights with the inventor’s employer rather than the inventor by statute. Under common law, a “hired to invent” doctrine may affect patent ownership too, in limited scenarios. Some other countries also have laws that place ownership of an invention in the hands of the employer rather than the inventor. Though sometimes these laws establish only an obligation to assign. It is important to consider the location of the vendor, the location(s) of the individuals involved, and the location(s) were relevant activities took place to determine which jurisdiction’s laws will apply.

Joint development may also result in joint ownership. If the vendor and your business collaborate to jointly develop IP, by default they are each the owner of an equal and undivided interest in the entire IP right(s). Under the patent laws, in the absence of an agreement, co-owners can each independently exploit the invention without an accounting to the other (though all co-owners must join a lawsuit to have standing to sue an accused infringer). Under copyright case law, an accounting is due to the other co-owner(s) for profits arising from the jointly-owned work to prevent unjust enrichment. Joint development agreements or the like can set forth various ownership rights in advance and can also govern the handling of relevant pre-existing “background” IP.

All the above concerns also apply to vendors themselves. For patents, an invention by a vendor’s employee is generally not automatically owned by the vendor. And if a vendor retains a subcontractor or non-employee then copyright ownership would likely initially vest in the subcontractor/non-employee creating a given work in the absence of an assignment or valid work made for hire agreement. Therefore, in the absence of a warranty relating to the vendor’s ownership of IP and/or a no-subcontracting contractual provision, or intimate knowledge of the circumstances involved in the creation of the IP, there is no assurance that an assignment from the vendor (alone) will transfer all IP ownership to you.

“Work Made for Hire”

An important potential exception to initial ownership under U.S. copyright law involves oft-misunderstood “work made for hire” statutory provisions. There are two, and only two, ways to qualify something as a work made for hire under current law. First, a copyrightable work prepared by an employee within the scope of his or her employment is deemed authored by and thus automatically owned from the outset by the employer. But vendors and even “internal” independent contractors do not fall within that definition.

Second, parties without an employee/employer relationship can also agree in writing that a work will be a “work made for hire” but only for nine categories of uses of works enumerated in 17 U.S.C. § 101, which may not apply—parties cannot contractually expand those statutory categories.

A “work made for hire” is-
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use [i] as a contribution to a collective work, [ii] as a part of a motion picture or other audiovisual work, [iii] as a translation, [iv] as a supplementary work [see definition below], [v] as a compilation, [vi] as an instructional text, [vii] as a test, [viii] as answer material for a test, or [ix] as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
Definition of copyright “work made for hire” from 17 U.S.C. § 101

The “work made for hire” doctrine is frequently misunderstood. In practice, it might even be single the most misapplied and confusing provision in all IP law. Simply because you pay someone to make or provide something copyrightable is not enough. And even having a contract that purports to establish something a work made for hire may not actually achieve that goal. It is fairly common for contracts to include language about work made for hire that does not apply and has no legal effect. Only things that meet the statutory definition of “work made for hire” are legally effective.

Because the statute defines categories of possible works made for hire by a somewhat arbitrary and limited list, which is based on “use” rather than the inherent characteristics of the work, it may be difficult to know upfront if something will qualify with certainty. For instance, if a vendor is specially commissioned to write some text, that text could qualify as a work made for hire if commissioned for use as an “instructional text” but the identical text would not if instead commissioned for use in a novel or on an advertising billboard. Moreover, whether vendor-created software source code qualifies as “a contribution to a collective work” and/or “a compilation”, and was intended to be used in that manner, may be far from clear, particularly before any work begins. And agreements, on their face, may not clarify these crucial facts.

A work made for hire not only affects who owns the work but also who is considered the author. This can potentially be significant for copyright termination rights. The persons(s) who actually prepare a work made for hire have no termination rights, whereas person(s) who assign rights to a work can potentially invoke terminate prior assignment transfers (or licenses) decades later.

For older works, created before the 1976 Copyright Act, a much different “instance and expense” test was applied to determine who is the copyright owner. Under that older test, which is inapplicable to recently-created works but can still apply to old works, the commissioning or hiring party may be treated as an “employer” and thus the “author” and copyright owner for things a vendor or outside contractor creates—regardless of the type of intended use of the work.

Trade Secrets

The rightful owner of trade secret rights will be the party that develops the trade secret information, by default. This means technical know-how, etc. developed independently by a vendor will normally belong to the vendor. It may be unclear whether relevant trade secrets were part of “background” IP that pre-dated a relationship with the vendor or not, which can potentially become a point of dispute later on. But a written agreement can be used to establish intended trade secret ownership from the outset.

On the other hand, confidential information developed by a vendor might lose trade secret status if shared with a client business (or others) without reasonable measures to maintain secrecy. This might limit or prevent a vendor from attempting to assert trade secret rights against its client and/or its client’s customers, particularly if there was no non-disclosure agreement (NDA) or other enforceable contract term.

Trademarks

U.S. trademark rights accrue to the party actually using a mark in connection with commercial activity to designate the source of goods and/or services. For instance, a marketing firm creating a brand strategy and identifying a proposed mark for a client would not obtain U.S. trademark rights because only the client business would use (or intend to use) the resultant mark in commerce. But many other countries have first-to-register systems, which might allow a vendor to register your mark. Ownership of non-trademark rights, such as copyright, in graphical logos intended to be used as trademarks might be a little more complicated and might raise other issues too, including a potential divergence in who owns the copyright and trademark rights.

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Tags Ownership, Patents, Trade Secrets, Trademarks, Work Made for Hire

Patents Q&A

How Can I Determine Large, Small, or Micro Entity Status for Patent Fees?

Post author By Austen Zuege

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 qua li fy 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 — 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:

(i) the applicant qualifies as a small entity
(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.

Income in a foreign currency must be converted to U.S. dollars using Internal Revenue Service (IRS) exchange rates.

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:

(A) obtain the majority of their income from a United States institution of higher education; or
(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 — 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.

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Tags Patent Prosecution, Patents

Patents Q&A

When Should a Provisional Patent Application Be Considered?

Post author By Austen Zuege

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?

provisional application for patent cover sheet form PTO/SB/16 — 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 many cases 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.

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Tags Patent Prosecution, Patents, Provisional Patent Applications

Articles

Considerations for Patent Assignments After Minerva Ruling

Post author By Austen Zuege

By Austen Zuege & Benjamin Edlavitch

A version of this article about patent assignments and assignor estoppel appeared in an online magazine on August 4, 2021 as intellectual property “expert analysis”.

Introduction

For many decades, the terms and content of patent assignments have been relatively uncontroversial. However, the Supreme Court’s recent ruling in Minerva Surgical, Inc. v. Hologic, Inc. established that assignor estoppel will apply to some assignments but not others.[i] Consequently, the execution of an assignment of patent rights is now potentially more contentious than before. Parties to an assignment may now wish to scrutinize the terms of an assignment document as well as the factual context around the execution of an assignment that may give rise to implied terms. What follows is an analysis of practical considerations for a patent assignment, including sample assignment clauses that might be negotiated, in light of Minerva.

Minerva reaffirmed the doctrine of assignor estoppel but limited its scope to what an assignor represents in assigning patent rights. The assignor is estopped from challenging the validity of the patent when the “assignor’s claim of invalidity contradicts explicit or implicit representations” the assignor made.[ii] A key aspect of the Court’s holding involved determining the scope of “implicit representations” that result in assignor estoppel.

The Minerva Decision

Inventor Truckai had assigned patent applications to Novacept, Inc., which was later acquired by Hologic, Inc.[iii] Afterwards, Truckai founded Minerva Surgical, Inc., and Hologic sued Minerva for patent infringement on resulting patents.[iv] Hologic argued that assignor estoppel barred Minerva from arguing the patents were invalid and the district court and the Federal Circuit both found that assignor estoppel barred the defendant from pursuing invalidity defenses.[v] The Court vacated and remanded the case in a 5-4 ruling and explained that “the limits of the assignor’s estoppel go only so far as, and not beyond, what he represented in assigning the patent application.”[vi] Therefore, “if Hologic’s new claim is materially broader than the ones Truckai assigned, then Truckai could not have warranted its validity in making the assignment” and, thus, “there is no basis for estoppel.”[vii]

The Court outlined a total of three examples where assignor estoppel does not apply. “One example . . . is when the assignment occurs before an inventor can possibly make a warranty of validity as to specific patent claims. Consider a common employment arrangement. An employee assigns to his employer patent rights in any future inventions he develops during his employment; the employer then decides which, if any, of those inventions to patent. In that scenario, the assignment contains no representation that a patent is valid. How could it? The invention itself has not come into being.”[viii] “A second example is when a later legal development renders irrelevant the warranty given at the time of assignment.”[ix] Thirdly, a post-assignment change in patent claim scope in which the “new claims are materially broader than the old claims” does not trigger assignor estoppel.[x] This last example was the situation alleged in Minerva: materially broader continuation claims filed after execution of the assignment were not subject to assignor estoppel because the Court held there was no implied warranty of validity.[xi] While the majority opinion helpfully gave a few examples of circumstances that would or would not give rise to an implied warranty, they are hardly exhaustive and do not reach some fairly common assignment scenarios, leaving some ambiguity.[xii]

Practical Considerations and Possible Assignment Clauses

Almost all of the factors that determine whether assignor estoppel will apply may be within the control of the parties to an assignment. It may be possible to include explicit terms in the assignment document in order to avoid later dispute about what was or was not implied by circumstances of execution. The question becomes, what are the sorts of terms that assignors and assignees may now wish to consider? The following are simply examples; particular parties will have different interests and their relative bargaining power will of course vary from one situation to the next. Though as discussed below the enforceability of certain terms should not be assumed in all scenarios.

Assignees will now have motivations to try to add clauses to employment and services agreements establishing assignment obligations with some or all of the following additional terms: assignment timing requirements (i.e., after assignor estoppel attaches), requirements for non-quitclaim assignment or warranty of validity requirements, and express no-challenge clauses. For example, if an assignee’s claims are materially broadened, then the assignor could not have warranted the claims’ validity at the time of the assignment and there is no basis for assignor estoppel, as the Court held in Minerva.[xiii] Assignees seeking to acquire patent rights on a stand-alone basis will now have reasons to do one or more of the following: add an express warranty of validity or a no-challenge clause to an assignment, obtain a further post-grant warranty of validity (especially if any claim is materially broader), obtain a new assignment with each continuation or divisional application having materially different claims (especially any broader claims), and include a choice of law provision. The following are sample clauses that might be used to pursue assignee objectives:

I hereby waive all my rights to challenge validity of said invention in the United States and its territorial possessions and in all foreign countries and of all Letters Patent or similar legal protection in the United States and its territorial possessions and in any and all foreign countries to be obtained for said invention by said application or any continuation, continuation-in-part, divisional, renewal, substitute, or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted.
[No-challenge clause for stand-alone assignment]

I hereby waive all my rights to challenge validity of any and all inventions which I may solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the period of time I am in the employ of the Company in the United States and its territorial possessions and in all foreign countries (collectively, “the Invention(s)”) and of all Letters Patent or similar legal protection in the United States and its territorial possessions and in any and all foreign countries to be obtained for the Invention(s) by any application or any continuation, continuation-in-part, divisional, renewal, substitute, or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted.
[No-challenge clause for employment agreement]

Assignors (including employee-inventors[xiv]) will now have greater reasons to question and push back against terms present in—or missing from—assignee-supplied assignment forms. As the Supreme Court put it, assignor estoppel “raises the price of patent assignments.”[xv] For example, assignors will have reasons to demand one or more of the following: insist upon only a quitclaim assignment[xvi] or language expressly denying any warranty of validity, inserting a clause that assignor estoppel shall not apply, sign an assignment only with regard to a patent application lacking claims,[xvii] refuse to sign any “confirmatory” assignment that gives rise to a new warranty, and negotiate additional consideration (e.g., larger payment, bonus(es), a raise in base compensation, promotion in job title, etc.) if an assignee expects any express or implied warranty. The following are sample clauses that might be used to pursue some of those assignor objectives:

I hereby make this assignment without representation or warranty as to patentability or validity of said invention.
[No Warranty of Validity]

It is possible that an assignor could unilaterally write-in additional terms into an assignment form prepared by the assignee, given that only the assignor conventionally signs an assignment under U.S. law.[xviii] Assignees might be faced with scenarios where further consideration is required to subsequently “undo” terms unilaterally written-in by the assignor if consideration was already paid—giving rise to assignees withholding payment until the executed assignment (free from unilateral modifications) is delivered.

Given that assignors and assignees may have widely divergent interests, with each seeking to receive more in exchange for less, there may be a need to reach a compromise with regard to assignment terms. For example, one or more of the following terms might be agreed to: explicitly spell out what due diligence has or has not been performed and expressly include a partial warranty of validity limited to actual knowledge and due diligence activities and/or include express language that assignor estoppel is limited only to validity challenges based on the law as it exists at the time and/or only to prior art of which the assignor was actually aware at the time (putting the obligation on the assignee to inform the assignor of all material prior art).[xix] The following are sample clauses that might be used to pursue some of those compromise objectives:

After performing due diligence, I hereby warrant and represent my belief in the validity of the specific claims presented to me as of the Effective Date of this Assignment to define said invention only with regard to prior art actually known to me as of the Effective Date and only with regard to patent statues, regulations, case law, and any other controlling authorities in effect as of the Effective Date, but this warranty does not extend to any other patent claims that are materially broader than the specific claims presented to me as of the Effective Date, and I hereby accept no liability for any finding of unpatentability or invalidity by any competent authority; and
[Partial Warranty of Validity]

I agree, upon payment of a reasonable fee, to conduct further due diligence with respect to any materially broader claim and to make a similar warranty and representation of my belief in validity of that materially broader claim if, in my discretion, such a warranty and representation is justified by all of the facts and information available to me at that time.
[Promise to Make Future Warranties for a Reasonable Fee]

Enforceability Considerations

The enforceability and effectiveness of warranties of validity and related contractual clauses present a number of other issues. Among those is the need for consideration in order for an assignment to constitute a valid contract.[xx] This is where an inventor bonus program could be useful—a bonus could be provided as consideration for an assignment and an explicit warranty, or even just for the warranty alone.

Obligations to assign, such as in employment agreements, are subject to state (or foreign) law.[xxi] But obligations to assign do not necessarily also create an obligationto warrant as to validity. A party under an obligation to assign might therefore refuse to provide a warranty of validity absent receipt of further consideration. And the enforceability of an employment agreement or master services agreement that purports to impose a prospective obligation to warrant validity of an invention not yet conceived is a question distinct from the enforceability of prospective obligations to assign, and may need to be sorted out by courts.

To even further complicate things, it has been suggested that a confirmatory assignment could create a warranty of validity that did not attach to an earlier assignment.[xxii] That position seems doubtful, though it turns on the particular language used. A true “confirmatory” assignment merely acknowledges (confirms) a prior assignment, perhaps curing technical defects such as to fix a typo, add missing information needed to accommodate recordation requirements in particular jurisdictions, or to omit sensitive price information in a publicly recorded version. If the prior assignment contained no warranty of validity, express or implied, then merely confirming that prior (warranty-less) assignment creates no new warranty. That would be especially true for nunc pro tunc assignments that relate back to the effective date of an earlier warranty-less assignment. Many assignments include boilerplate language about further writings to effectuate the transfer in the event of a technical defect or barrier to recordability. But if a new warranty is expressly (or implicitly) added to a purportedly “confirmatory” assignment, then the assignment is not really (or not merely) a confirmatory assignment and there must be consideration for the new warranty term—continued employment alone would not be sufficient consideration in some states.[xxiii]

Conclusion

The execution of an assignment of patent rights is now potentially more contentious than before. However, it seems that amending an assignment in light of Minerva may reduce disputes subsequent to its execution.

Endnotes:

[i] U.S. No. 20–440 (June 29, 2021).

[ii] Id. Slip Op. at 1.

[iii] Id. at 2-3.

[iv] Id. at 3.

[v] Id. at 3-4.

[vi] Id. at 16.

[vii] Id.

[viii] Id. at 15.

[ix] Id.

[x] Id. at 15-16.

[xi] Id. at 16-17.

[xii] There are also ambiguities in the Court’s decision that stem from shifting terminology. For instance, are (granted) “patent claim(s)” = (pending) patent application claim(s) “presented” to the USPTO = (unfiled) claims prepared by assignee’s attorney = (unfiled) claims prepared by assignor or assignor’s attorney? A “patent claim” is not necessarily synonymous with a “patent application claim”. An assignment knowingly executed while a pending patent application claim stands rejected might arguably carry no warranty, though Minerva does not explicitly address such a scenario.

[xiii] Id.

[xiv] See Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776, 786 (2011) (“In most circumstances, an inventor must expressly grant his rights in an invention to his employer if the employer is to obtain those rights.”); Banks v. Unisys Corp., 228 F.3d 1357, 1359 (Fed. Cir. 2000) (“The general rule is that an individual owns the patent rights to the subject matter of which he is an inventor, even though he conceived it or reduced it to practice in the course of his employment.”).

[xv] Minerva, Slip Op. at 14,n.4.

[xvi] See, e.g., Van Renesselaer v. Kearney, 52 U.S. 297, 322 (1851); Black’s Law Dictionary 503 (10th ed. 2014) (quitclaim deed is one that “conveys a grantor’s complete interest or claim in certain real property but that neither warrants nor professes that the title is valid.”). Assignor estoppel for patents is derived from real property law. Minerva, slip op. at 5-6. A patent quitclaim assignment could include language such as “hereby conveys and quitclaims” or “hereby transfers by quitclaim”, and the document title could explicitly use the word “quitclaim” (or “quit-claim”).

[xvii] A U.S. utility patent application (but not a design patent application) can receive a filing date even if lacking a claim. 37 C.F.R. § 1.53.

[xviii] However, handwritten changes to an assignment are normally initialed and dated by each of the assignor(s) to avoid disputes about post-execution changes not agreed to by the assignor(s). See MPEP § 323.

[xix] See Mast, Foos, & Co. v. Stover Mfg. Co., 177 U.S. 485, 493 (1900) (“we must presume the patentee was fully informed of everything which preceded him, whether such were the actual fact or not”); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) (“we presume full knowledge by the inventor of all the prior art in the field of his endeavor. However, with regard to prior art outside the field of his endeavor, we only presume knowledge from those arts reasonably pertinent to the particular problem with which the inventor was involved.”) accord Airbus SAS v. Firepass Corp., 941 F.3d 1374, 1380 (Fed. Cir. 2019).

[xx] See Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1370 (Fed. Cir. 2008) (“Construction of patent assignment agreements is a matter of state contract law.”) and Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1572 (Fed. Cir. 1997) (“the question of who owns the patent rights and on what terms typically is a question exclusively for state courts”; collecting cases); but contrast, e.g., Hewett v. Samsonite Corp., 507 P.2d 1119, 1121 (Colo. App. 1973) (continued employment insufficient consideration for patent assignment, which was found invalid for lack of consideration) and Jostens, Inc. v. Nat’l Computer Sys., 318 N.W.2d 691, 703-04 (Minn. 1982) (mere continued employment provided insufficient consideration under Minnesota law for coercive intellectual property agreement) with, e.g., Preston v. Marathon Oil Co., 684 F.3d 1276, 1284-85 (Fed. Cir. 2012) (under Wyoming law, no additional consideration is required to support an employee’s post-employment execution of an agreement to assign intellectual property to his employer). A state-by-state or country-by-country survey is beyond the scope of this article.

[xxi] See Allen v. Riley, 203 U.S. 347, 355-57 (1906); Akazawa v. Link New Tech., 520 F.3d 1354, 1356-58 (Fed. Cir. 2008); see also 35 U.S.C. § 261; but see DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008) (whether patent assignment clause creates automatic assignment or mere obligation to assign treated under Federal Circuit law).

[xxii] Dennis Crouch, “Assignor Estoppel Persists — But Only for Claims Specifically Assigned,” Patently-O (June 29, 2021).

[xxiii] See, e.g., Jostens, 318 N.W.2d at 703-04.

Tags Assignments, Assignor Estoppel, Patents

Patents Q&A

When is an Opinion of Counsel Worthwhile?

Post author By Austen Zuege

Obtaining an opinion of counsel is a way to help defend yourself in a later patent infringement dispute. In the most general sense, opinions help demonstrate that you acted in good faith at the time. In court, an opinion can be used for an advice of counsel defense against charges of active inducement of infringement or willful infringement, and to rebut demands to pay the other side’s attorney fees because the case is “exceptional”. A finding that infringement was willful can lead to enhanced damages (up to 3x). And the patentee’s attorneys fees can be considerable. So an opinion can help limit exposure.

Opinions are not required. By statute, failure to obtain an opinion of counsel, or to rely on one at trial, cannot be used against the accused infringer to prove willfulness or inducement. It is up to an accused infringer to decide if the burden of obtaining an opinion is worthwhile or not. So the real question become: what circumstances make an opinion worthwhile? Below is a summary of some factors to consider when deciding if you should get an opinion. There are grouped into three categories, though the categories do overlap.

In the end, many of these factors are about whether your conduct might be seen (after-the-fact) as having been reckless and therefore unreasonably risky, with an opinion representing the best way to show that your intent was reasonable at the time. More generally, obtaining an opinion can be a key component of overall efforts to develop and implement strategically beneficial legal positions going forward.

Elevated Exposure Risk Factors

Certain circumstances present elevated exposure risks when it comes to patent infringement. In other words, some circumstances make a patent lawsuit more likely or more costly if you lose. These factors include:

You received a cease & desist or licensing letter from the patentee
The potential amount of (enhanced) damages is high, such as from high-volume sales
The potential amount of attorney’s fee award is high, such as if both sides are inclined to fight to the end rather than settle
There is a particularly high chance of a lawsuit; for instance:
- the patent owner is a direct competitor in a highly competitive industry
- the patent owner is litigious or has been suing many others in your industry for infringement
- you have a history of disputes with the patent owner, even if not necessarily about patents
- the patent owner sued you for infringement in another jurisdiction
- the patent owner is a former vendor you broke ties with to make a similar product yourself
- you hired away an inventor-employee from the patent owner to work on a competing product
- you recently won over a customer, contract, or bid from the patentee
You believe there is a high probability the patentee will sue and seek a preliminary injunction

Factors Relating to Particular Defenses

Various patent infringement defenses depend on the accused infringer’s state of mind. But many legal questions surrounding patent infringement are complicated. A written opinion by competent legal counsel documents a defense so that it is clear later on that the investigation and legal analysis were sufficient to reasonably rely on. In other words, it makes clear that your defense was not conclusory, superficial, based on inaccurate information, biased, exaggerated, conjured up after-the-fact, or unreasonable. These factors include:

You want to completely avoid liability for inducement of infringement based on non-infringement (lack of scienter); this often applies when another entity such as a customer or end-user performs steps of a method claim using your product
You want to rely on an invalidity or unenforceability defense; it is almost never reasonable to rely on the invalidity or unenforceability of an asserted patent without an opinion of counsel because those defenses usually involve complex legal and factual issues, and because patents are presumed valid and overcoming that presumption carries a high burden of proof in court
Your non-infringement position relies on a particular claim interpretation (rather than the unambiguous and uncontroversial absence of a claim element under its plain and ordinary meaning); for instance:
- non-infringement rests on the interpretation of a “means-plus-function” claim limitation
- non-infringement relies upon a claim interpretation citing dictionaries, technical treatises, or other extrinsic evidence
- you want to rely on something in the prosecution history to inform claim interpretation, such as a prosecution disclaimer or disavowal of claim scope
- you believe the patent owner disclaimed or disavowed something in the patent or acted as his or her “own lexicographer” to define a claim term in a particular way
- differences between products within the claimed technology area are extremely complex, nuanced, or counter-intuitive in general, making proper interpretation prone to error
- the claims would be difficult for an ordinary juror to understand on their face
Your non-infringement position relies on complex indirect (contributory) infringement, extraterritoriality, or permissible repair issues; for instance, your position implicates the repair/reconstruction doctrine for non-staple-of-commerce goods, implicates manufacturing processes performed abroad on goods later imported, or implicates split or divided infringement issues for method/process claims
The doctrine of equivalents is a concern; that is, you want to rule out a plausible infringement theory under the doctrine of equivalents where there is no prosecution history estoppel, or you want to confirm that prosecution history estoppel applies to a crucial claim element

Business and Reputational Factors

Other relevant factors are less about the legal basis for defenses but instead have to do with business relationships, company policies, practicalities of technology, and marketplace considerations. These factors include:

An opinion can evaluate the effectiveness of a “design-around” that changed your planned product configuration to avoid infringement; in other words, the opinion is the culmination of more wide-ranging efforts to avoid infringement
You want to document your position so that you can better stick to it despite changes in company personnel, corporate mergers, etc.; this also includes documenting your position to avoid unwittingly undoing efforts to “design-around” a patent with subsequent product changes (possibly years later when the reasons for the design-around are nearly forgotten)
An opinion can help convey technical and legal issues to corporate leaders and decision-makers who lack a deep understanding of the technology or patent law
Having obtained an opinion of counsel can help provide comfort and a confidence boost to executives and employees who would likely be called to testify in an infringement lawsuit
You signed a contract that requires you to obtain an opinion of counsel
You offer an indemnity to a customer, distributor, etc. and want to limit exposure for those others’ activities (which may not be entirely within your control)
You want to tell customers, distributors, business partners, or investors that you obtained an opinion, in order to reassure them (while withholding the substantive opinion to preserve privilege)
Establishing a regular policy of obtaining opinions when aware of infringement risks as concrete evidence of a general good faith posture regarding competitor and other 3^rd party patents; it may even be what you would expect others to do if your own patent was at issue
Obtaining an opinion can allow for risk mitigation without limiting action to the most conservative legal position; that is, an opinion can help legal counsel or a legal department devise an acceptable path forward and avoid a reputation for saying “no” to too many business proposals
You want to limit liability of individual corporate executives or directors in their personal capacity, including for inducing infringement by the corporation or in piercing the corporate veil scenarios

Parting Remarks About Opinions

Opinions of counsel may not be legally required but obtaining them is often still worthwhile. They can provide great evidence to present to a judge or jury in defense against infringement allegations. That is especially the case when relying on an invalidity argument or a particular claim interpretation. Having an opinion provides a fall-back position so that if you are found to infringe you (hopefully) don’t have to also pay punitive damages or the patentee’s attorney’s fees. A non-infringement opinion can also potentially avoid any and all liability for inducement of infringement (if applicable). But any opinion really needs to be in writing and be prepared by competent outside counsel in order to have the best chance of being effective in those respects. Seriously consider obtaining an opinion whenever a potentially problematic patent comes to your attention.

Contact Austen

Tags Freedom-to-Operate (FTO) & Clearance, Inducement, Opinions of Counsel, Patents, Willfulness

Patents Q&A

When Should a Patentability Search Be Performed?

Post author By Austen Zuege

A full assessment of patentability requires identifying the closest prior art and then performing a legal analysis of the invention you want to patent in light of that prior art. Doing this meaningfully requires a patentability search. You need to conduct a patentability search at the right time to get the most value from it. An example timeline for a patentability search is shown below. This example timeline is meant to illustrate best practices for timing a patentability search in relation to filing a new patent application.

graphic of timeline for patentability search

You start with an initial idea or business case. That is the point at which there is a commitment to spend time and resources to try to come up with an invention. But it may be no more than a wish or plan. Sometime after that research & development (R&D) and product development begins. And at some point one or more inventions are conceived. That might occur at the same time as the initial idea or closely following it. Or there might be considerable R&D and development work needed before it appears that an actual invention has been conceived.

The invention is ready for patenting when it is possible to document how to make and use it. This might happen at the same time as conception. Or an invention might start as a loose collection of thoughts in the inventor’s and require extensive experimental testing before before the details can be meaningfully documented. Building a working prototype is sufficient but not required. Sometimes you might just want to test different embodiments to determine which is most viable. What matters most is that an invention must be sufficiently developed beyond a mere wish or plan to invent before a patent application can be prepared. But the applicant also has to subjectively feel ready to move forward with patenting a particular invention too.

Ideally, a patent application should be filed before any public disclosure, public use, or commercialization of the invention. This is required in many countries. Though there is a one-year grace period for patent filings in the United States after a public disclosure or sale by the inventor.

The patentability search should ideally be conducted before patent application drafting begins. This allows the results of the patentability search to be fully taken into account while preparing the application. It is often possible to write a better patent application when the closest prior art is known. Differences and improvements over the prior art can be described more thoroughly. Also, if the patentability search is unfavorable then you can avoid the expense of preparing and filing a patent application. That is one of the best reasons to perform a search.

It is possible to perform a patentability search while a patent application is being prepared. But once application drafting has begun it gets progressively harder to incorporate search results. And once a non-provisional application is filed the benefits of a patentability search drop close to zero. Though searches are still beneficial when done between the filing of a provisional patent application and the preparation of a non-provisional application.

But a particular invention must already be conceived before the patentability search is performed. If you don’t have any idea what the invention actually is, you cannot perform a meaningful patentability search. Otherwise you wouldn’t know what to search for. These searches are directly tied to the invention you want to patent after all. If you haven’t actually conceived an invention yet and just want to evaluate business opportunities (rather than patentability) then a landscape search is more appropriate.

In some circumstances, you may wish to delay a patentability search. That can help avoid wasted search effort if other inventions might take precedence in business plans. But, on the other hand, a patentability search might help you determine if an invention is ready and worthy of patenting. Applicants have wide latitude to define their inventions however they want. Sometimes you start with a broad view of an invention but a patentability search reveals that some aspects were actually already known. You might then have to do further development in order for the most promising “new” aspects to be ready for patenting. Or you might find that the patentable aspects are simply not commercially valuable enough to pursue.

You might also combine a patentability search with a freedom-to-operate (FTO) search. FTO searches assess risks of infringement for a planned product or service. The timing has to be right for both types of searches for a combined study to make sense. The parameters and legal considerations for patentability and FTO studies also differ significantly. So a combined search always involves more effort than one search individually. But sometimes there is enough overlap in the searching effort for a combined search to make sense.

Contact Austen

Tags Patents, Searching