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Claim Drafting Checklist | Patent Claims

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Claim Drafting Checklist

Judge Giles S. Rich (one of the most important 20th. century patent jurists) once succinctly stated “the claim is the name of the game.”  As patent claims define an invention, poorly drafted claims will render a patent … worthless.

Although there are entire texts dedicated to the subject of claim drafting, this article highlights a number of items that patent practitioners may want to consider while reviewing the patent claims of a utility patent application.  Further, this article has a specific emphasis upon practice before the United States Patent and Trademark Office (USPTO).

 

Patent Claims | Review

  • Are all of the features/recitations which impact the patentability of a claim recited in the body of the claim instead of the preamble?  (MPEP 2111.02 – Effect of Preamble) (see IskraIP article: “Patent Claim Preambles: When is the Preamble Limiting?“)
  • Is the open-ended transitional phrase “comprising” utilized in the claims?  (MPEP 2111.03 – Transitional Phrases)
  • An “Applicant for a patent is required to furnish a drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented.”  (37 CFR 1.81 – Drawings Required in Patent Application)  Although several drawings are usually included in a patent application, is the aforementioned rule satisfied?
  • Do the drawings “show every feature of the invention specified in the claims”?  (37 CFR 1.83 – Content of Drawing)
  • Are all of the features which are included in the drawings discussed in the description?
  • Does the specification provide written description (possession of the invention) and enablement (how to make and use the invention) support for the claims?  (35 USC 112, First Paragraph: MPEP 2163 – Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112, para 1, “Written Description” Requirement / MPEP 2164 – the Enablement Requirement) (see IskraIP article: Enablement Rejections (35 USC 112, First Paragraph)
  • Are multiple embodiments (including commercial and alternative embodiments) described in the specification and claimed?
  • Does the broadest independent claim(s) include the fewest number of more general recitations while still satisfying all of the statutory requirements (e.g., 35 USC 101 / 35 USC 102 / 35 USC 103 / 35 USC 112)?  (see IskraIP articles: Broadly Drafted Patent Claims, Narrowly Drafted Patent Claims, Prior Art, and Patent Application Pre-Filing Review)
  • Although there is no requirement that a term recited in a claim must be the same term utilized in the description, “the meaning of every claim term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import…”?  (see MPEP 608.01(o) – Basis for Claim Terminology in Description)  Further, “the description is a dictionary for the claims and should provide clear support or antecedent basis for all terms used in the claims.” (see MPEP 608.01(g) – Detailed Description of Invention)  (It is preferred that the same term be used in both the claim and description.)
  • Do the patent claims “fail to interrelate essential elements of the invention as defined by applicant(s) in the specification”?  (35 USC 112, Second Paragraph – Indefinite for “failure to point out and distinctly claim the invention”) (MPEP 2172.01 – Unclaimed Essential Matter)
  • Do the patent claims “omit matter disclosed to be essential to the invention as described in the specification or in other statements of record…”?  (MPEP 2172.01 – Unclaimed Essential Matter)
  • In view of the Federal Circuit’s holding that “limitations are not to be read in the claims from the specification,” are all of the features/embodiments which are described in the specification recited in the claims?  (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993))
  • Does each claim element include sufficient detail (e.g., what it is, location, function, etc.)?  (It should be remembered that the patentability of an apparatus is determined by its structure while the patentability of a process is determined by its steps)
  • Is the name of each element used consistently across a claim and any claims which depend therefrom?  If there are multiple instances of an element, do the claims appropriately distinguish between each element (e.g., first transmitter, second transmitter, etc.)?  (35 USC 112, Second Paragraph)
  • Is relative terminology (e.g., about, essentially, substantially, etc.) utilized correctly in the claims to avoid potential definiteness issues (35 USC 112, Second Paragraph)?  (MPEP 2173.05(b) – Relative Terminology)
  • Is a trademark or trade name recited in a patent claim?  (MPEP 2173.05(u) – Trademarks or Trade Names in a Claim)
  • Is a proper antecedent basis provided for all claim recitations (e.g., use an indefinite article (“a” or “an”) when first introducing a feature and a definite article (“the” or “said”) when referring to the feature in a later portion of the claim or in a dependent claim)?  ( MPEP 2173.05(e) – Lack of Antecedent Basis)
  • Is every term in a claim required in view of the prior art?  Is it more appropriate for a term(s) which is unnecessary to instead be the subject of a dependent claim(s)?
  • Does each dependent claim build upon its parent claim(s) (e.g., add additional elements or further describe an existing recitation) and not contradict or broaden recitations included in the parent claim(s))?  (MPEP 608.01(i) – Claims)
  • Does each dependent claim refer back to the proper parent claim(s)?  (This inquiry is more of an “error check”)
  • As a “multiple dependent claim shall not serve as a basis for any other multiple dependent claim,” do any multiple dependent claims included in the patent application refer back (depend) from another multiple dependent claim?  (MPEP 608.01(i) – Claims) (Although multiple dependent claims are usually avoided with original patent applications filed at the USPTO, if a U.S. Applicant anticipates a number of international filings, multiple-dependent claims may be considered in certain instances (e.g., PCT application) to reduce fees abroad).  (see IskraIP article: International Patent Protection)
  • Is there a varied mix of different types of patent claims (e.g., processes, machines, manufactures, etc.)?  (MPEP 2106 – Patent Subject Matter Eligibility)
  • Is there a mix of claims of varying scope included at the time of filing the patent application (to minimize (or avoid) claim amendments during patent prosecution and thereby limit the creation of prosecution history)?
  • Has the Applicant acted as their own lexicographer to “rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s)…”?  (MPEP 2111.01 – Plain Meaning)  Further, Examiners give claims their “broadest reasonable interpretation consistent with the specification” during patent prosecution.  (see MPEP 2111 Claim Interpretation – Broadest Reasonable Interpretation)  In view of the foregoing, it should be stressed that if an Applicant wants a specific definition applied toward a claim term, such a definition should be explicitly stated in the description.
  • As the claim numbers of claims which are cancelled during patent prosecution are not reused, are new claims which are added during patent prosecution afforded the next available claim number(s) beyond the highest previous claim number?  (This inquiry is more of an “error check”)
  • If a new claim is added during patent prosecution, does it find support in the originally filed patent application to avoid introducing “new matter”?  (MPEP 706.03(o) – New Matter)
  • Do the claims satisfy the subject matter eligibility requirements of 35 USC 101?  (see IskraIP articles: Bilski v. Kappos | Supreme Court, Patent Prosecution after Bilski v. Kappos, USPTO Bilski Guidelines, and Abstract Ideas Exception | Research Corp. v. Microsoft.
  • Does any single claim recite multiple statutory classes therein (e.g., “product and process in the same claim”)?  (MPEP 2173.05(p) – Claim Directed to Product-By- Process or Product and Process states, “a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, Second Paragraph.)
  • If a markush group or an alternative expression is employed in a claim, is it being used correctly?  (MPEP 2173.05(h) – Alternative Limitations)
  • If a claim recites the term “means” or “step”  (or some variant thereof), does the Applicant desire a means-plus-function construction?  (MPEP 2181 – Identifying a 35 U.S.C. 112, Sixth Paragraph Limitation)
  • Are the claims drafted to capture infringing activities by different types of entities?  For example, would the drafted claims capture an end user,  a manufacturer of a product, etc.?
  • Are the claims drafted for direct infringement by a single entity (where appropriate) instead of joint infringement by multiple entities?  (see Akamai Technologies, Inc. v. Limelight Networks, Inc. 629 F.3d 1311 (Fed. Cir. 2010))

 

The reader of this article may be interested in the IskraIP Patent Frequently Asked Questions (FAQ) webpage which examines a number of patent law topics.

Unpersuasive Patent Prosecution Arguments

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Unpersuasive Patent Prosecution Arguments

This article examines a number of Applicant arguments held unpersuasive by the Board of Patent Appeals and Interferences (BPAI).


Arguing Features NOT Recited in a Claim

The Federal Circuit has stated: “in the patentability context, claims are to be given their broadest  reasonable interpretations. . . . [L]imitations are not to be read into the claims from the specification.”  (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)) (see also 35 USC 112, second paragraph, “the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”)  Additionally, ”an essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” (In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989))

If an Applicant intends for a claim term to be construed in a specific way, such a definition should be recited in the claim (“while Appellant may have intended a more narrow or specific definition of temperament, such a definition is not set forth in the claim.  See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005).” (Ex parte Ibarra, Appeal No. 2009-14483 (BPAI))

As an aside, it is the belief of many patent practitioners that if an Applicant references a claim recitation of their patent application during patent prosecution, the exact recitation (preferably using quotation marks) and the specific claim number should be included therewith.  By failing to reference the exact claim language, an Applicant risks modifying or characterizing the claim in an unintended way.  Accordingly, the foregoing action may result in the Applicant’s own statements being later used adversely against them (e.g, limiting claim scope).

Finally, in addition to failing to provide a legal basis for overcoming a prior art citation, arguing features not recited in a claim may actually be counterproductive as other features which aid an Applicant in the patentability context may be ignored (by the USPTO) in view of the emphasis placed upon the argued feature which is not claimed.

 

Data Signals or Carrier Waves

If a claim recites a “computer-readable medium” (or some variant thereof) and the specification describes the computer-readable media as including communication/transmission media such as data signals or carrier waves (e.g. “transmission media such as those supporting the internet”), it is likely that a non-statutory subject matter rejection (35 USC 101) will be received.  Accordingly, the aforementioned claim would likely be construed as being directed to signals, and therefore be found to not fall within one of the four statutory categories of patentable subject matter due to the description within the specification.  (see In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007))

The Federal Circuit has stated, “if a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.”  (In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007))  Further, “a transitory, propagating signal … is not a ‘process, machine, manufacture, or composition of matter.’ Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.”  (Id. at 1357)

The USPTO released a document entitled “Subject Matter Eligibility of Computer Readable Media” (signed January, 2010 by Director Kappos) in which guidance is provided regarding “computer readable medium”/“machine readable medium” claims (or Beauregard claims).  The document states, “the broadest reasonable interpretation of a claim drawn to a computer readable medium … typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of a computer readable media, particularly when the specification is silent. See MPEP 2111.01.”  The document further states that if a claim is drawn to a computer readable medium which covers both transitory and non-transitory embodiments, the claim may be amended (to cover only statutory embodiments) with the recitation “non-transitory.”  Further, the document states that such an amendment will normally not trigger a new matter issue even if the specification is silent unless the specification “does not support a non-transitory embodiment because a signal per se is the only viable embodiment….”

For further information regarding this topic, it should be noted that a number of articles have been published on this blog which examine patent eligible subject matter, including:

Analysis of the Supreme Court’s Decision in Bilski v. Kappos;

Patent Prosecution after Bilski v. Kappos;

Subject Matter Eligibility | USPTO Interim Guidance; and

Federal Circuit Analyzes Abstract Ideas Exception to Patent-Eligible Subject Matter.

 

Limitation in the Preamble

Although there are instances where a recitation/feature included in the preamble will be provided patentable weight, it is generally the case that Examiner’s will not afford such a feature with any patentable weight during patent prosecution.  The Federal Circuit has stated: “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” (Rowe v. Dror, 112 F. 3d 473, 478 (Fed. Cir. 1997))

Accordingly, to avoid unnecessary iterations of correspondence between the Applicant and the USPTO (resulting in greater costs), an Applicant should strive to include recitations/features in the body of a claim to ensure that all recitations are considered in a patentability analysis.  It should be noted that an article which was published previously on this website examines this topic extensively (see IskraIP article: “Patent Claim Preambles: When is the Preamble Limiting?“)

 

Intended Use | Apparatus Claim

Arguing the intended use of an apparatus claim will likely be found unpersuasive if the prior art describes all of the structural limitations of the subject claim.  The Federal Circuit has stated: “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”  (In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)) (see MPEP 2114 Apparatus and Article Claims – Functional Language)

Furthermore, it should be noted that “apparatus claims cover what a device is, not what a device does.” (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990))  Accordingly, “the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” (Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002))

 

Age of Reference

Regarding an argument directed to the age of a reference, MPEP 707.07(f) – Answer All Material Traversed states: “In response to applicant’s argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).”  If a reference qualifies as prior art, it may be cited by an Examiner during patent prosecution.

 

Nonfunctional Descriptive Material

Nonfunctional descriptive material “includes but is not limited to music, literary works, and a compilation or mere arrangement of data.” (see MPEP 2106.01 – Computer-Related Nontatutory Subject Matter)

An expanded BPAI panel in a precedential opinion held that “the particular sequence data … is nonfunctional descriptive material and does not distinguish the claimed computer-based system from the prior art system that is the same except for its sequence data.”  (Ex parte Nehls, 88 USPQ2d 1883 (BPAI 2008) (precedential))

The panel in Ex parte Nehls pointed out that the claimed sequence data did not “functionally affect the process of comparing a target sequence to a database by changing the efficiency or accuracy or any other characteristic of the comparison.” Id.  Instead, the Panel determined that the “specific SEQ ID NOs recited in the claims do not affect how the method of the prior art is performed – the method is carried out the same way regardless of which specific sequences are included in the database.”

Accordingly, data embodied on a computer-readable medium will be construed as non-functional descriptive material (and accordingly afforded no weight in a patentability analysis) if said data does not change the function of a machine or alter how process steps are to be performed.

 

Conclusory Statements

In traversing an art-based rejection (e.g., obviousness rejection or anticipation rejection), it is submitted that conclusory statements (e.g., “element A of claim 1 is not described by the cited art”) furthered by an Applicant which are unsupported by factual reasoning will likely receive little probative value by the USPTO.   Further, conclusory statements which are nothing more than general allegations of patentability likely fail to satisfy the requirement of 37 CFR 1.111(b) which states in part:

“The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action … The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references … A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section….”

To traverse an Examiner’s contention(s) more persuasively, an Applicant should present a substantive analysis (reasoning/explanation) focused on facts in support of any assertion they further which targets the Examiner’s specific findings which are erroneous.

 

Automating a Manual Activity | Changes in Size, Shape or Sequence of Adding Ingredients | Making Portable, Integral, Separable, Adjustable or Continuous | Reversal, Duplication or Rearrangement of Parts

MPEP 2144.04 entitled “Legal Precedent as Source of Supporting Rationale” examines each of these topics in greater detail.

 

Method of Producing a Product | Product by Process Claim

It should be remembered that: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.  The patentability of a product does not depend on its method of production.  If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)) (MPEP 2113 – Product by Process Claim)

 

Obviousness Arguments to Avoid During Patent Prosecution

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Obviousness Arguments to Avoid During Patent Prosecution

The following list of items was compiled after reviewing a number of Board of Patent Appeals and Interferences (BPAI) decisions in which the Board found the Applicant’s obviousness arguments unpersuasive.  It should be noted that an article published previously on this blog provides an in-depth examination of obviousness rejections (see IskraIP article: “Obviousness Rejections“).

 

Single Reference Traversal

When an Examiner’s obviousness rejection is based upon the collective teachings of multiple references, it is improper for an Applicant to focus on individual references in isolation. (In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986))  Instead, the Applicant’s traversal must address the combination of cited references.

 

Using “Teaching Away” For an Anticipation Rejection

Although teaching away arguments are effective when used properly in the context of an obviousness rejection, it is improper to traverse an anticipation rejection using a teaching away argument as the Federal Circuit has explicitly stated, “[t]eaching away is irrelevant to anticipation.” Seachange Int’l, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005) (citing Celeritas Tech., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).   Accordingly, teaching away arguments may only be utilized to traverse an obviousness rejection.

 

References Do Not Address the Problem Solved by the Claimed Invention

In view of the Supreme Court’s decision in KSR v. Teleflex, an argument that the cited references do not “deal with the problem to be solved by the claimed invention” will likely be found unpersuasive.  It must be remembered that the Court in KSR stated “[u]nder the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

 

Substitution of a Known Element | Express Suggestion

As stated in KSR, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result” and “if a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Furthermore, an “express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982).

 

Nonanalogous Art

Although there are occasions where a nonanalogous art argument is appropriate, an Applicant should use this argument sparingly.

As stated in KSR, “when a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.   If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”

To determine whether a reference may be considered analogous, the BPAI has recently stated:

“Whether a reference in the prior art is ‘analogous’ is a fact question. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citation omitted). Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’sendeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Id. at 658-59 (citations omitted). ‘A reference is reasonably pertinent if, even though it may be in adifferent field from that of the inventor’s endeavor, it is one which, becauseof the matter with which it deals, logically would have commended itself toan inventor’s attention in considering his problem.’ Id. at 659.”

The BPAI in at least one case found an Examiner’s observations regarding kitchen cabinets to be applicable to inverse microscopes. (Ex parte Bender, Appeal No. 2009-9688 (BPAI))

Accordingly, “a reference in a field different from that of applicant’s endeavor may be reasonably pertinent if it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his or her invention as a whole.” (MPEP 2141.01(a) – Analogous and Nonanalogous Art)

 

Bodily Incorporation of Secondary Reference into the Primary Reference

The CCPA has held, “obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).”

Patent Search

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Conducting a Prior Art/Patent Search Prior to Filing a Patent Application at the United States Patent and Trademark Office (USPTO)

Although a prior art/patent search is not legally required prior to filing a patent application at the USPTO, it is the view of many patent attorneys (including this one) that a professional patent search coupled with attorney review is an important component of the patent procurement process.

This article discusses the primary benefits related to a professional patent search and examines a number of popular and free resources for conducting a preliminary patent search.  However, it must be stressed that even if a prospective Patent Applicant conducts their own preliminary patent search to gain a better understanding of existing technologies that are related to an invention, a professional patent search (coupled with attorney review) should usually still be performed prior to filing a patent application.


Professional Patent Search | Benefits and Process

 

Prior Art Snap Shot | Scope of Legal Protection

The primary benefit that a professional patent search provides an Inventor and their patent attorney is a more accurate picture of the prior art related to a subject invention.  With this information, a patent attorney is better positioned to more properly advise the client regarding the likely level of patent protection that may be obtained.

If the patent attorney determines that patent protection may be available, an Applicant is able to make a more informed business decision upfront.  More specifically, once the Applicant is apprised of the available scope of legal protection, they can determine whether this protection satisfies their business objectives prior to incurring substantial costs related to the patent procurement process.

 

Patent Application Drafting | Patent Prosecution

A professional patent search will additionally aid a patent attorney in drafting all aspects of the patent application, including the most important part of the application, the patent claims.

As patent claim breadth is directly determined by the prior art, the patent attorney will be better positioned to draft patent claims of a more appropriate scope if they are aware of the prior art.  (see IskraIP articles: “Narrow Patent Claims: What are the Advantages and Disadvantages?” and “Broad Patent Claims: What are the Advantages and Disadvantages?“)

If a patent attorney drafts claims without knowledge of the prior art, the Applicant will likely incur additional costs during patent prosecution as it is likely that claim amendments will need to be furthered to traverse a patent examiner’s prior art rejections included in an office action. (see IskraIP articles: “Obviousness Rejections” and “Anticipation Rejections“)  Additionally, it must be stressed that an Applicant wants to minimize having to amend the claims of a patent application during patent prosecution as such actions may adversely affect an Applicant’s available remedies if a resulting patent is later asserted.

Knowledge of the prior art will also help a patent attorney ensure that a sufficient amount of detail has been included in the specification of a patent application to “teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’” and thereby satisfy the enablement requirement of 35 USC 112 (see IskraIP article: “Enablement Rejections (35 USC 112, First Paragraph“).

 

Professional Patent Search Process | Patentability Opinion

A patent attorney should coordinate the professional patent search with a third-party search company as the patent attorney is best positioned to analyze the search results.  More specifically, a patent attorney is able to advise a client regarding the patentability of an invention in view of various patentability requirements related to prior art which must be satisfied to obtain a patent grant.  For example, even if a single prior art reference does not explicitly describe the subject invention, patentability may be negated due to a combination of multiple prior art references (see link to IskraIP article above regarding Obviousness Rejections)

Once the search company has completed the patent search, the patent attorney will thereafter generate a patentability opinion.  The patentability opinion usually memorializes the attorney’s analysis of the search results (prior art) against the subject invention to determine the level of patent protection which may be available.

 

Preliminary Patent Search

Prior to contacting a patent attorney to obtain a professional patent search or for further information regarding the patentability of an invention, an Inventor may consider conducting their own preliminary patent search.

If an Inventor chooses to conduct their own preliminary patent search, it must be stressed that discovered or known prior art references which are “material to the patentability” of a patent application (namely the claims) must be disclosed to the USPTO.  (see IskraIP article: “What Information Must be Disclosed to the USPTO (Information Disclosure Statement (IDS))?”)  Additionally, an Inventor should contact a patent attorney as soon as practicable as various activities performed by the Inventor may foreclose their ability to obtain patent protection for an invention.  (see IskraIP article:  ”Statutory Bars (Time-Related Deadlines)”


Resources for Conducting a Preliminary Prior Art/Patent Search

 

USPTO Public Search Facility

A preliminary patent search may be performed at the USPTO in Alexandria, VA.  The systems available for public use at the USPTO are the same search tools that Patent Examiners utilize to search for prior art while examining patent applications.  It should be noted that staff at the USPTO provide reference help during specified hours and formal patent search training sessions are conducted monthly.  Further information regarding this resource is available at the USPTO Public Search Facility website.

 

Patent and Trademark Depository Library (PTDL)

If a visit to the public search facility of the USPTO is not possible, another resource for conducting a preliminary patent search is a PTDL.  Every state has at least one PTDL (e.g., Michigan has three PTDL’s with locations in Ann Arbor, Detroit, and Big Rapids).  Additionally, Librarians at PTDLs are trained to provide the public with assistance regarding the patent search process.  Further information regarding this resource is available at the USPTO PTDL website.

 

PTDL Search | USPTO Online-Training Video

Prior to visiting a PTDL, the reader may want to review an online video tutorial offered by the USPTO which provides step-by-step guidance regarding all aspects of the patent search process at a PTDL:  ”How to Conduct a Preliminary Patent Search: A Step by Step Strategy”

For the reader’s convenience, a slide from the aforementioned USPTO video which outlines the patent search process generally is reproduced hereafter.

“PATENT SEARCH OVERVIEW

  1. Brainstorm keywords to describe the invention.
  2. Use keywords to find initial class/subclass.  Index to the U.S. Patent Classification
  3. Verify the relevancy of class/subclasses using the Classification Schedule.
  4. Confirm scope of subclass.   Classification Definitions.
  5. Access complete patent documents and and published applications by classification.
  6. Review the claims, specifications and drawings of documents retrieved.
  7. Retrieve and review cited references and “Field of Classification Search”.  ”

Each of the above steps are examined extensively in the aforementioned USPTO online video.

 

Patent Databases

In addition to the above resources, a preliminary patent search may be performed utilizing the information provided above in combination with one or more of the following online patent search resources:

Google Patent Search : Google provides an online patent/published patent application search resource.  Similar to most other google products, this resource is quite impressive!  For further information regarding this resource, the reader may want to review Google’s About Google Patents webpage.

USPTO – Patent Search : This webpage includes links to two different USPTO databases: 1) patent database (located on left portion of the screen); and a 2) published patent application database (located on the right portion of the screen).  A prospective searcher would want to search both of these databases.  Further, links to other webpages which provide help for using the aforementioned resources (e.g., “PatFT Help Files”, “AppFT Help Files”, etc.) are included on the aforementioned webpage.

EPO Patent Search (Espacenet) : European Patent Office search database.  Further information regarding this resource is available at the following Help webpage.

To generate a more complete preliminary patent search, a patent searcher should try to utilize as many of the above resources as possible.

 

Non-Patent Prior Art

In addition to the aforementioned patent search resources, various other resources should be reviewed during a preliminary patent search; including: industry publications (e.g., magazines, catalogs, etc.), search engines, relevant distribution channels (stores, distributors, etc.), etc.

 

Concluding Thoughts for Conducting a Preliminary Patent Search

  • As an invention is made up of a number of discrete components/parts, compartmentalize each of the individual elements/features of the invention and generate a list noting each of said individual elements as a separate item of the list.  Furthermore, for each individual item of the list, think of other terms (e.g., synonyms) which may be employed to describe said item.  Write everything down during this keyword brainstorming process and continue to add new relevant terms which are discovered as the search continues.
  • Become familiar with the various components of the U.S. Patent Classification System (e.g., Classification Index, Classification Schedule and Classification Definitions).  Please note that each of the foregoing items are examined extensively in the aforementioned USPTO PTDL video.
  • Contact a Patent Attorney as early as practicable if you are interested in obtaining patent protection for an invention to avoid loss of legal rights as indicated above.

 

**A number of articles regarding various patent law topics are available on the IskraIP Patent FAQ webpage.

Patent Application Pre-Filing Review

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Patent Application Pre-Filing Review | New Invention

The objective of this article is to provide a list of inquiries that one may want to consider if patent protection is desired for a new invention.  Further, many of said inquiries will likely be echoed by a patent attorney during the invention intake process.

It must be stressed that in view of the complexity that accompanies the patent process, it is important that a patent attorney be contacted early in the process to ensure that valuable legal rights are not foreclosed due to various Applicant actions or delay in filing a patent application.

 

Applicable and Overlapping Intellectual Property Protection | Geography

  • What business purpose would a patent grant serve (e.g., obtain a technological advantage in the marketplace, procure capital for expansion, etc.)?
  • What type of patent application is applicable (design patent, utility patent, or plant patent)?  Please note that multiple forms of patent protection may be available.
  • Does another form of intellectual property protection (e.g., trademark, copyright, etc.) overlap with the appropriate type(s) of patent protection? (see IskraIP articles: copyright vs. patent and design patent vs. trademark (applicable section near end of article))
  • Is international patent protection desired?
  • If foreign protection is desired but additional time is required to determine which foreign markets will yield demand/profits or if the Applicant would like to delay major costs, has a Patent Cooperation Treaty (PCT) patent application been considered? (see IskraIP article: obtaining patent protection internationally)

 

Patent Procurement Costs

 

Invention Development

  • Have drawings been drafted which capture the various embodiments of the invention?
  • Has a prototype been constructed? (see IskraIP article: invention prototypes)
  • Does the invention presently solve the Inventor’s intended problem?
  • Can the invention be changed/improved in some way to solve a similar problem?
  • Can the invention be changed/improved in some way to solve a different problem?
  • Are there any desired future improvements for the invention?
  • What technology areas may the invention be utilized within?
  • Can one envision any other uses for the invention beyond the current intended use(s)?
  • Have alternate materials for each of the various components/items been considered?
  • Can the inventions intended solution still be achieved with fewer components?
  • Which components are absolutely required for the invention to achieve the intended solution?
  • Have all commercial embodiments of the technology been considered?  To provide worthwhile legal rights, the patent application should include at a minimum all commercial embodiments of the invention for which legal protection is desired.  Failing to include all embodiments in the initial patent application may foreclose an Applicant from obtaining protection later for certain features in certain instances. (see IskraIP article: patent time-related deadlines)

 

Informal Applicant Initiated Product and Patent Search

  • Has an informal search of existing products and patents been conducted?  If so, one should become aware of the USPTO’s disclosure requirements.  (see IskraIP article: uspto – duty of disclosure)
  • For a product search, have the following resources been reviewed: internet, catalogs, businesses which would likely sell the product, trade shows, etc.?
  • For a patent search, have the following resources been reviewed:  Google Patent Search, USPTO Patent Full-Text Database, EPO Patent Search (esp@cenet), etc.?  It should be noted that even if a “product” (the subject invention) does not appear to be commercially available, a patent/patent application publication may exist which covers the invention.

 

Marketplace/Competitor Analysis

  • Who are the Applicant’s competitors for the subject invention?
  • Is the market saturated with similar items or does the invention enjoy a first-mover advantage?
  • Is the Applicant aware of any products which are similar to the subject invention?
  • How is the invention an improvement upon existing technologies?
  • What are the specific novel features of the subject invention?
  • May conventional/known technologies be combined to arrive at the subject invention?
  • Can the Applicant anticipate a competitor employing a work-around to the subject invention?  As it is possible for a competitor to obtain an “improvement patent” upon an invention owned by another, it is critical for an inventor to fully develop their invention to thereby anticipate any work-arounds that a competitor may employ to avoid infringement of the patent.  Although various statutory requirements require an inventor to fully describe and set forth the “best mode” of their invention (e.g., see 35 USC 112 (enablement/written description/best mode).), it is critical for an inventor to look beyond actual commercial embodiments and view their invention more expansively to obtain a patent grant which will satisfy their business objectives and provide the greatest legal protection.

 

Document Inventive Activities

  • Have inventive activities been documented (e.g., maintaining an inventor notebook)?  Throughout the whole invention process, the Inventor will want to document all of their inventive activities. (see IskraIP article:  inventor notebooks)

It must be stressed that valuable legal rights may be lost upon various actions (or inaction) in the context of the patent process (see Statutory Bars article) as there are deadlines for filing a patent application.  For example, the United States provides a one-year “grace period” for filing a patent application after a public disclosure (public use/sale/offer for sale/etc. which includes marketing the invention/conversations with others/public experimentation unless additional steps are taken/etc.).  Conversely, nearly all other countries require that a patent application be filed to prior to any public disclosure otherwise the Applicant is foreclosed from obtaining patent protection.

As mentioned previously, it is critical that a patent attorney be contacted expediently if patent protection is desired to ensure potential valuable rights are not lost.  

Obtaining Patent Protection Internationally

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Obtaining Patent Protection Internationally (Foreign Filing License, PCT vs. Paris Convention filing)


As patent rights are granted by national governments, a single “Global Patent” which provides coverage worldwide does not exist. Accordingly, a patent granted by the United States Patent and Trademark Office (USPTO) on behalf of the United States government provides an Applicant with legal protection (exclusionary rights) only in the United States and its territories. For example, once a patent grant is obtained in the United States, the Patentee is provided with:

“the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into theUnited States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.” (see 35 USC 154)

Although the purpose of patent law is generally similar across all jurisdictions (e.g., promote technological progress by providing a temporary exclusionary property right in exchange for the full disclosure of an invention which may be practiced freely after the rights expiration) each jurisdiction has its own specific legal requirements which must be satisfied to obtain legal protection for an invention.

To obtain patent protection outside of the United States (and its territories), a patent application must be filed (and subsequently granted) in each respective jurisdiction in which patent protection is desired. This article will explore the two primary routes that are utilized by Applicants who are interested in pursuing international patent protection.


Foreign Filing License

Prior to filing a patent application outside of the United States (assuming the subject technology was invented (even partly) in the U.S.), an Applicant must receive a foreign filing license to comply with the Patent Secrecy Act. This requirement ensures that technology which may be detrimental to U.S. National Security is not published abroad as a patent/patent application publication. To obtain such a license, an Applicant may either: 1) file a United States Patent Application and wait to receive a foreign filing license thereafter on the filing receipt or through the passage of time (6 months); or 2) file a petition for expedited foreign filing license.


Patent Application Filing

The filing of a provisional, design, utility or PCT (in the US receiving office) application is considered a petition for a foreign filing license. (see 37 CFR 5.12(a)) Accordingly, if an Applicant files a patent application in the United States, a foreign filing license will usually be granted thereafter (unless it is made the subject of a secrecy order). Further, 35 USC 184 grants an implicit foreign filing license at 6 months from the filing of the application in the U.S. (see 35 USC 184 which states that: “except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country.”)


Petition for Expedited Foreign Filing License

Conversely, if an Applicant chooses to file internationally (without filing a national or PCT (in the US receiving office) application) or requires a foreign filing license expediently, a petition for expedited foreign filing license may be preferred as the USPTO will usually process it within three business days of receipt (see USPTO – Licensing and Review – Frequently Asked Questions (FAQ)).


Timing

Once a patent application is filed in one country (Paris Convention), the Applicant has one year to file a corresponding utility patent application further to either the PCT or Paris convention in another (member) country (or 6 months for a design patent application further to the Paris Convention but not the PCT). Further, it should be noted that if a provisional patent application is filed, this one year time period is calculated from the provisional patent applications filing date.

By “claiming priority” in a subsequently filed patent application (in one country) to an earlier filed patent application (in another country), the subsequently filed patent application has the same legal effect as if it was filed on the earlier filing date.


Absolute Novelty Requirement

The United States provides a “grace period” for filing a patent application after a public disclosure has occurred. However, nearly all other countries employ an “absolute novelty requirement” which bars patentability if a public disclosure has occurred prior to the filing of a patent application (or a priority claim to an earlier filing). Accordingly, it is critical for an Applicant to remember that if international patent protection is desired, the Applicant will usually be required to file a patent application prior to any type of public disclosure/sale/use/etc. to avoid loss of rights (as always, an attorney within each specific jurisdiction should be consulted regarding that jurisdictions laws). For further details regarding statutory bars, the reader is invited to review the following articles which were published previously on the PresumptionofValidity blog: “Statutory Bars” (and for design patents, “Design Patents.”)


Filing a Patent Application Internationally

Once an Applicant has determined that international patent protection is desired, the next step is deciding which of the preferred routes will be utilized: 1) a patent application under the Patent Cooperation Treaty (PCT); or 2) a patent application further to the Paris Convention. Each type of application has a number of items that must be considered from a cost and timing perspective, which are discussed below.


Patent Cooperation Treaty (PCT Application)


Overview

The Patent Cooperation Treaty (PCT) provides various advantages for Applicants who are interested in filing patent applications in multiple countries. Further to the PCT, an Applicant may file a single “international” application and obtain patent protection in one or more of the 142 PCT contracting states (a full listing of the PCT contracting states is available here).

It should be noted that Argentina and Taiwan are not signatories to the PCT treaty. If patent protection is desired in countries which are not signatories to any international patent treaties, an Applicant will likely file in such countries after a first local patent application is filed but prior to the patent applications publication/public disclosure (to avoid loss of rights), and further, after a foreign filing license is received from the USPTO.

A brief timeline highlights the major events that occur during the PCT process:

PCT Timeline
Month Event
0 File Local Patent Application
12 File PCT Patent Application
16 International Search Report & Written Opinion
18 International Publication
19 Request for Supplementary International Search (optional)
22 File Demand for International Preliminary Examination (optional)
28 Supplementary International Search Report
30 Enter National Phase (or Regional Phase)


National Phase/Regional Phase

Although a “single” PCT application is filed, the Applicant is still required to enter the “national phase” (or “regional phase”) within each of the jurisdictions for which patent protection is desired. During the “national phase,” each of the examining offices (of the elected jurisdictions) will examine the patent application and determine whether the invention described therein is patentable.

It should be remembered that because patent rights are geographical in nature (as indicated previously), each respective jurisdiction has its own patent laws which may differ from the patent laws in the United States. Accordingly, certain inventions which are patentable in the United States (e.g., inventions directed to business methods, etc.) may not be patentable in certain international jurisdictions. Thus, prior to entering the National Phase in a particular contracting state, the Applicant should verify that their invention satisfies the subject matter eligibility requirements of said contracting state.


PCT Benefits

A number of benefits may be realized through the PCT process, which are listed as follows:

  • Simplifies Patent Procurement Process if Filing in Multiple Jurisdictions: If the Applicant desires patent protection in a number of jurisdictions, the PCT process simplifies the procurement process generally (e.g., avoid having to file certified copies of the priority application with each national patent office, a single “international” application is filed which is prosecuted in each elected national patent office/regional patent system, etc.).


  • Search / Patentability Analysis: As indicated above, the Applicant receives an International Search Report (ISR) and Written Opinion (generated by an International Search Authority (ISA)) around 16 months after the filing of the Local Patent Application. The international search report cites patent documents/technical publications related to patentability while the written opinion provides a non-binding opinion regarding the patentability of the subject invention utilizing the documents cited in the international search report. Further, the ISA does not necessarily need to be the Receiving Office in which the PCT application was filed. For example, for a PCT application which was filed at the USPTO (Receiving Office), the following International Search Authorities (ISA) are available (which are the same International Preliminary Examination Authorities (IPEA)): 1) United States Patent and Trademark Office (USPTO); 2) European Patent Office (EPO); 3) Korean Intellectual Property Office (KIPO); and 4) IP Australia (IPAU).


  • Claim Amendments During the International Phase: After receiving the ISR and Written Opinion, the Applicant may decide that an amendment of the claims is required prior to entering the national phase. Accordingly, because such an amendment (commonly referred to as an “Article 19 Amendment” which may be accompanied by a brief explanatory statement of the amendment) occurs during the International Phase, the Applicant avoids having to further said amendment in each of the National Phase patent applications. Accordingly, such a feature is value-added for the Applicant as patent prosecution costs are reduced by avoiding duplicative action. As an aside, an Article 19 Amendment cannot include an amendment to the description and drawings of the PCT application, and the Applicant is provided with only a single opportunity to amend the claims of the PCT application during the International Phase unless they file a Demand for International Preliminary Examination (which provides a second opportunity to amend the claims). Further, because an Article 19 amendment is filed within two months from the date of transmittal of the ISR and written opinion, the Article 19 amendment will be included in the PCT application at the 18 month International Publication (which is important for Provisional Rights (35 USC 154(d)) purposes – an article regarding provisional rights will be published soon).
  • Application Amendments During the International Phase: If the Applicant believes that: 1) an amendment to the written description, claims (second opportunity), or drawings of the PCT applications is required; or 2) desires another opinion regarding the patentability of their invention (beyond the ISR and written opinion), the Applicant has an opportunity to further the foregoing during the International Phase. The aforementioned amendment is referred to as an “Article 34 Amendment” and requires that a Demand for International Preliminary Examination be filed thereafter (the demand must be filed within 3 months from the transmission date of the ISR and written opinion or within 22 months from the priority date (whichever is later)). The Article 34 Amendment is value-added as it allows the Applicant to reduce patent prosecution costs by avoiding duplicative action (similar to an Article 19 Amendment). The international preliminary report on patentability that results from filing a demand for international preliminary examination is also value-added as it evaluates the patentability of the invention (and considers amendments furthered during the International phase).
  • Delay Significant Costs: Costs for entering the national phase in each respective country (e.g., translation fees/national patent office fees/local attorney or agent fees) are generally delayed for up to 30 months from the PCT applications priority date and in some cases even later (see the next list item for further information regarding time limits). During this time period, the Applicant may determine whether (and where) commercial demand exists for the subject invention. If the Applicant realizes that commercial opportunities do not justify the costs of continuing the patent procurement process (either entirely or in certain jurisdictions), the Applicants financial loss is minimized due to the PCT application process. More specifically, had the Applicant instead filed a number of separate patent applications further to the Paris Convention, a number of the aforementioned costs (translation fees/national patent office fees/local attorney or agent fees) would have been incurred upfront (or within a year of the local patent applications filing date). With the PCT process, the Applicant is (usually) provided with at least an additional 18 months of delay (beyond the 12 month priority period) regarding the aforementioned costs.


  • Delay National Phase/Regional Phase Entry: The Applicant may delay entry into the national phase for at least 30 months from the priority date of the PCT application for a majority of jurisdictions; however, it should be noted that for a handful of offices the time limit is 20 months. Further, it is vital that time limits be monitored precisely as designated national phase offices DO NOT send reminders. For further information regarding time limits, the reader is invited to review the following WIPO resources: “Time Limits for Entering National/Regional Phase Under PCT Chapters I and II” and “PCT Time Limit Calculator.”


  • Improved National Phase Examination: Although the aforementioned reports/opinions are non-binding upon each of the national patent offices, positive patentability findings contained within the aforementioned documents may indicate that national phase patent examination will require minimized correspondence (reduced cost) with each national patent office to obtain a patent grant.

All parts of the PCT application may be amended during the national phase, and a patent agent or attorney located in each of the international jurisdictions (in which the national phase is entered) will likely need to be utilized for prosecuting the PCT patent application.

It should additionally be noted that a number of the contracting states to the PCT are members of regional patent systems, including: the African Intellectual Property Organization (OAPI); the European Patent Convention (EPC); the African Regional Intellectual Property Organization (ARIPO); Eurasian Patent Organization (EAPO). (see MPEP 1817 – PCT Member States). Further, certain contracting states which are members of one of the aforementioned regional patent systems may allow entry into a national phase or a regional phase, while others may only allow entry into a national phase (e.g., “Either national patents or European patents for member States are available through PCT, except for Belgium, Cyprus, France, Greece, Ireland, Italy, Monaco, Netherlands, and Slovenia, for which only European patents are available if the PCT is used” – MPEP 1817).

Further information regarding PCT applications may be found here: World Intellectual Property Organization (WIPO) | PCT Resources and USPTO – PCT Legal Administration.


Paris Convention


Overview

Under the Paris Convention, an Applicant has one year (or 6 months for a design patent application) to file in another signatory country(s) after a first patent application is filed in a first signatory country. It should be noted that if a provisional patent application is filed, the Applicant has one year to file a patent application further to the Paris Convention from the provisional patent application filing date (not the non-provisional patent application filing date). Further, most signatory countries to the PCT are also signatories to the Paris Convention, and most countries are signatories to the Paris Convention.


Benefits

Filing in Fewer International Jurisdictions: Filing directly in each patent office further to the Paris Convention is typically preferred over the PCT from a cost perspective when an Applicant is interested in obtaining patent protection in just a couple of countries.

Expediency: If speed is an important consideration, a patent application filed further to the Paris Convention will usually yield a more expedient examination.

Utility Patent Application Process

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Utility Patent Application Process | USPTO Resource

The United States Patent and Trademark Office (USPTO) provides an informative webpage which details the “Process for Obtaining a Utility Patent.” Although the reader is encouraged to visit the aforementioned USPTO webpage as it includes a flowchart with links to a number of other webpages/resources, the flowchart (without any hyperlinks) is reproduced below for the readers convenience.

Utility Patent Process

Process for Obtaining a Utility Patent

For further information regarding the patent process, the reader is invited to review the IskraIP Patent FAQ (Frequently Asked Questions) webpage.

Design Patents

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Design Patents Examined


Definition

A design patent is defined as:

“A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture. (see USPTO – Patents Guidance, Tools, & Manuals)

A design patent covers the non-functional aesthetic characteristics ( 1) configuration or shape, 2) surface ornamentation, or 3) combination of configuration and surface ornamentation) of an article of manufacture (but not the article of manufacture itself).   Conversely, a utility patent covers the functional aspects (use, operation, etc.) of an article (a functional object). (see 35 USC 171).   Stated simply, “a ‘utility patent’ protects the way an article is used and works (35 U.S.C. 101), while a ‘design patent’ protects the way an article looks (35 U.S.C. 171).” (see MPEP 1502.01)

Further, the MPEP states that “in design patent applications, ornamentality, novelty, nonobviousness, enablement and definiteness are necessary prerequisites to the grant of a patent.”  (see MPEP 1504 – Examination – Design Patents).


Duration

Design patent protection lasts for 14 years from the date of issue (in contrast to 20 years from filing for a utility patent filed after 6.8.95 – see MPEP 2701 – Patent Term).  Additionally, once a design patent is filed, the Applicant may utilize a “patent pending” designation.


USPTO Search

To view recently granted design patents, the reader is invited to perform a search on the USPTO search website: Patent Full-Text and Image Database.   If the reader is interested in performing such a search, enter “APT/4″ in the Query textbox to see recently granted design patents, or “APT/4 AND KEYWORD” if the reader is interested in performing a search for a specific keyword (e.g., “APT/4 AND jewelry”).


Expedited Examination

Design patent applications qualify for expedited examination if a number of requirements are satisfied (e.g., compliant drawings (1.84), pre-examination search, request for expedited examination w/ fee and statement, IDS, etc.).  For further details regarding the foregoing, the reader is invited to review: MPEP 1504.30 – Expedited Examination and 37 CFR 1.155).


Ornamentality vs. Functionality

Primarily Ornamental

A design must be “primarily ornamental” (and not “primarily functional”) to be patentable, and “in determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.” L. A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993)” (see MPEP 1504.01(c) – Lack of Ornamentality)


Ornamentality – Alternative Designs

As stated by the Federal Circuit,

“[I]t has long been settled that when a configuration is the result of functional considerations only, the resulting design is not patentable as an ornamental design for the simple reason that it is not ‘ornamental’–was not created for the purpose of ornamenting.”).  A design is not dictated solely by its function when alternative designs for the article of manufacture are available. see L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed.Cir.), cert. denied, 510 U.S. 908, 114 S.Ct. 291, 126 L.Ed.2d 240 (1993).”


Functional Considerations

In addition to “alternative designs,” the Federal Circuit has provided a number of items to consider in determining whether a “patented design as a whole” is dictated by functional considerations:

“Consideration of alternative designs, if present, is a useful tool that may allow a court to conclude that a challenged design is not invalid for functionality. As such, alternative designs join the list of other appropriate considerations for assessing whether the patented design as a whole–its overall appearance–was dictated by functional considerations. Other appropriate considerations might include: whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.”  See Berry Sterling Corp. v. Pescor Plastics, Inc. 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997).


Hidden Design

Furthermore, if “a design is not visible in its ultimate end use,” it is likely that there is a lack of ornamentality (see MPEP 1504.01(c)).  The MPEP additionally states that “hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).”  At least one court has held that “it is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961).”


Multiple Embodiments

Regarding multiple embodiments, MPEP 1504.05 states, ”it is permissible to illustrate more than one embodiment of a design invention in a single application. However, such embodiments may be presented only if they involve a single inventive concept **>. Two designs involve a single inventive concept when the two designs are patentably indistinct according to the standard of obviousness-type double patenting.  see In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).”


Drawings

In view of the foregoing, it should not be surprising that the drawings are the most important component of a design patent application.   Accordingly, Applicants should ensure that the drawings that are included in a design patent application cover the actual product that legal protection is sought for.  The MPEP at Rule 1.84 – “Standards for Drawings” outlines the drawing requirements for design patent applications.  A few items are somewhat important and should be remembered in preparing design patent application drawings:

  • File Complete Drawings Initially:  The drawings should illustrate the design at the time of filing the design patent application as certain amendments to the drawings at a later point during patent prosecution may be construed as introducing new matter into the application (which is not allowed).
  • Provide Views of All Perspectives:  The drawings should contain an appropriate number of views to completely disclose the claimed design.  More specifically, the drawings should illustrate each view (front, rear, right side, left side, top and bottom) of the article of manufacture to avoid definiteness (35 USC 112) issues.  However, if a view is duplicative of another view (“mirror image”) or which is flat and does not include any ornamental features, such a view may be omitted.   Please note that if a view is omitted further to one of the foregoing conditions, an appropriate statement should be included in the Specification. (see MPEP 1503.02 Drawings – Design Patents)  Further, to obtain the greatest claim breadth, the Applicant may consider including within the drawings, only the items which are necessary for patentability purposes.
  • Surface Shading:  Although surface shading is not required, it must be employed appropriately if it is indeed utilized to avoid having the drawings held as being indefinite and nonenabling under 35 USC 112. (see MPEP 1503.02)
  • Broken Lines:  Broken lines are usually employed to “disclose the environment related to the claimed design and to define the bounds of the claim.” (see MPEP 1503.02 for further details)  Conversely, the claim scope of a design patent application is defined by solid lines.
  • Black and White Drawings:  Black and white drawings are normally required; however, to determine whether and if color drawings/photographs are acceptable, a thorough review of Rule 1.84 is required.


USPTO Fees

Large Entity

The USPTO (government) fee (large entity) for filing a design patent is $460 (Design Basic Filing Fee: $220; Design Search Fee: $100; Design Examination Fee: $140) – substantially less than the cost of filing a utility patent application (see PresumptionofValidity article: “How Much Does it Cost to File a Patent Application (USPTO Fees)“).  Additionally, if the design patent application is allowed, there is a design issue fee of $860 (large entity).  Further, as mentioned above, there are no maintenance fees for design patents.


Small Entity

It should be noted that if a party qualifies for Small Entity status, the aforementioned fees will be reduced by 50%.  Additionally, as the USPTO fees may have changed since this article was posted, the reader should review the USPTO Fees webpage to obtain the most current information.  (see Current USPTO Fee Schedule)


Timing

Public Disclosure – Loss of Rights

As stated above, utility patents and design patents share many of the same patent laws.   One of these laws (35 USC 102(b)), requires an Applicant to file a patent application within a year of public disclosure (printed publication/on sale/offer for sale/public use, etc.) or “patenting” anywhere to avoid the “statutory bar” of 35 USC 102(b) which bars the patentability of an invention (loss of right to obtain patent protection over invention).   However, it should be noted that most other countries (outside of the United States) do not provide such a time period for filing, and a public disclosure prior to filing will likely foreclose patentability in most foreign jurisdictions.  For further information regarding the foregoing, the reader is invited to review the following articles which were published previously on the PresumptionofValidity Blog: “Statutory Bars” or “Shortcut Table for Analyzing 35 USC 102“.


Foreign Priority

It should be stressed that “in order to obtain the benefit of an earlier foreign filing date, the United States application must be filed within six months of the earliest date on which any foreign application for the same design was filed.   Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e).” (see MPEP 1504.10 – Priority Under 35 USC 119 (a)-(d) – Design Patents)  Further, most countries (WTO member countries) provide a six month period to file a design application which claims priority to a U.S. design application filing.  Additionally, it should be noted that “the United States will recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or multilateral treaties as the “Hague Agreement Concerning the International Deposit of Industrial Designs,” “Uniform Benelux Act on Designs and Models” and “European Community Design.” (see MPEP 1504.10)


Foreign Jurisdictions – Design Patent Grant or Registration Upon Filing

Unlike the United States which employs an examination process to ensure compliance with various statutory provisions, many other countries provide a design patent grant or registration upon filing.   For further information regarding which foreign jurisdictions provide a design patent grant or registration upon filing, the reader is invited to review: MPEP 1504.02 – Novelty – Design Patents.


Design Patents and Utility Patents | Overlap

Design patent protection and utility patent protection may be available simultaneously.  For example, utility patent protection may obtained to protect various functions related to a laptops operation (e.g., components/processes), while design patent protection may be obtained for some aspect(s) of the laptops appearance (e.g. shape of case, etc.).  Design patents are obtained for a wide variety of manufactured articles (e.g. sneakers, jewelry, vehicle components, etc.).

The primary statute related to design patents ( 35 USC 171 – Patents for Designs) states that, “whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.  The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.”  Accordingly, the patent laws that are applicable to design patent applications and utility patent application include: 35 USC 102, 35 USC 103, 35 USC 112, 35 USC 132, and 35 USC 172 (see MPEP 1504 – Examination | “in design patent applications, ornamentality, novelty, nonobviousness, enablement and definiteness are necessary prerequisites to the grant of a patent.”)

A design patent application may (when appropriate) be a continuation application of an earlier filed non-provisional patent application or claim benefit to an earlier filed PCT application.   MPEP 1504.30 states:

“Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. See In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application.”

A strategy that is embraced by many organizations to obtain maximum legal protection involves procuring design patent and utility patent protection (as each type of patent provides separate legal protection), in addition to trademark and copyright (when appropriate).


Design Patents and Utility Patents | Comparison

Design Patent Utility Patent
Protection Aesthetic (non-functional) characteristics Functional/Structural
Term 14 years from issue 20 years from filing (see MPEP 2701 – Patent Term)
“Patent Pending” Yes Yes
Maintenance Fees No Yes (see article: “What are patent maintenance fees?“
Provisional Applications No Yes
Difficulty in Obtaining Grant Less difficult More difficult
Claims Single claim Multiple claims
USPTO Examination Patent examiner Patent examiner
Inventorship Standard Same standard Same standard
Most important part of application Drawing disclosure Claims
Patent Cooperation Treaty (PCT) – Application Filing No Yes
Foreign Priority – 35 USC 119(a)-(d) 6 months 1 year
Request for Continued Examination (RCE) No Yes
Publication (35 USC 122(b)) No Yes


Design Patents and Copyright | Design Patents and Trademark

An overlap may exist between design patents and copyright; and similarly, between design patents and trademark.  Regarding the overlap between design patents and copyright, “an ornamental design may be copyrighted as a work of art and may also be subject matter of a design patent.”  (see MPEP 1512 – Relationship between Design Patent, Copyright, and Trademark)  Additionally, a trademark and design patent may be obtained on the same subject matter.

As stated previously, “a design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone.”  Accordingly, surface ornamentation by itself (without the article to which it is applied) would not be eligible for design patent protection; however, the surface ornamentation by itself may be eligible for copyright protection.  Copyright is defined by the U.S. Copyright Office as “a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.”

Regarding trademark, the USPTO defines the term trademark as “protecting words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.”   Accordingly, a logo (source identifier) which would distinguish an article (source of goods) from others could possibly qualify for trademark protection.


Infringement

In an en banc rehearing, the Federal Circuit (CAFC) in Egyptian Goddess v. Torkiya (2008) provided design patentees with an (arguably) more lenient standard for determining design patent infringement.  More specifically, the Court held that the “ordinary observer” test is the only applicable test for determining design patent infringement.  Prior to this ruling, two distinct tests (“ordinary observer” and “point of novelty”) had to be satisfied to prove design patent infringement.

In rejecting the point of novelty test, the Court stated that, “one such problem is that the point of novelty test has proved difficult to apply in cases in which there are several different features that can be argued to be points of novelty in the claimed design.”  Further, the Court stated that “applying the ordinary observer test with reference to prior art designs also avoids some of the problems created by the separate point of novelty test.”

The Court indicated that the “starting point for any discussion of the law of design patents is the Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871).”  The Gorham Court stated that,

“[I]f, in the eyes of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

The primary question that the CAFC formulated for determining design patent infringement under the ordinary observer test is: would an ordinary observer, familiar with the prior art designs, be deceived into believing that the alleged infringing design is the same as the patented design?


USPTO Resources

To obtain further information regarding design patents, the reader is invited to review the following USPTO resources:

USPTO – Manual of Patent Examining Procedure (MPEP) - Chapter 1500 Design Patents

USPTO – A Guide to Filing a Design Patent Application

USPTO – Frequently Asked Questions (FAQ) about Design Patents

Interim Guidelines for Examination of Design Patent Applications for Computer-Generated Icons

Abstract Ideas Exception | Research Corp. v. Microsoft

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Federal Circuit Analyzes Abstract Ideas Exception to Patent-Eligible Subject Matter

Ever since the Supreme Court’s decision in Bilski v. Kappos, much uncertainty has existed regarding what is required for a claim to satisfy the threshold patent eligibility inquiry of 35 USC 101 and avoid being construed as an “abstract idea.”  The Federal Circuit has provided guidance re. the foregoing in Research Corporation Technologies, Inc. v. Microsoft Corporation.

The Federal Circuit in Research Corp. reversed the District Court’s holding that certain claims of the subject patents were invalid under 35 USC 101.  Focusing particularly upon the “abstract ideas” exception to the ”Patent Act’s broad patent-eligibility principles” of 35 USC 101, the Court found “nothing abstract” about the claims stating “the ’310 and ’228 patents claim methods (statutory ‘processes’) for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.”  It should be noted that the panel consisted of Judges Rader, Newman, and Plager.


Claims

Claims 1 and 2 of the ’310 patent and claim 11 of the ’228 patent which the Federal Circuit held as patent-eligible subject matter are reproduced below:

“1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.” (’310 patent)


“11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.” (’228 patent)


Federal Circuit Guidance

The following statements from Research Corp. provide guidance for determining patent-eligible subject matter under 35 USC 101:

  • “Section 101 emphasizes that ‘any’ subject matter in the four independent categories and ‘any’ improvement in that subject matter qualify for protection.   The Supreme Court recently reemphasized the significance of these broad statutory categories with the broadening double ‘any’ exhortation as well.   Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). In that recent case, the Supreme Court also focused on the Patent Act’s definition for ‘process,’ the statutory category at issue in this case….”
  • “Chakrabarty recited that ‘Congress plainly contemplated that the patent laws would be given wide scope.’ Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)”
  • “The Supreme Court has articulated only three exceptions to the Patent Act’s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract ideas.’ Chakrabarty, 447 U.S. at 309.”
  • “The section 101 patent-eligibility inquiry is only a threshold test.   See Bilski, 130 S. Ct. at 3225.”
  • “In this case, the subject matter is a ‘process’ for rendering a halftone image. As a process, the subject matter qualifies under both the categorical language of section 101 and the process definition in section 100.”
  • “The statutory provision that approves the broad categories of subject matter, section 101, itself directs primary attention to ‘the conditions and requirements of [Title 35].’ 35 U.S.C. § 101 … in refocusing the eligibility inquiry on the statute, the Supreme Court advised that section 101 eligibility should not become a substitute for a patentability analysis related to prior art, adequate disclosure, or the other conditions and requirements of Title 35. In other words, section 101 does not permit a court to reject subject matter categorically because it finds that a claim is not worthy of a patent.  See Bilski, 130 S. Ct. at 3238 ….”
  • “The invention presents functional and palpable applications in the field of computer technology. These inventions address ‘a need in the art for a method of and apparatus for the halftone rendering of gray scale images in which a digital data processor is utilized’ … The fact that some claims in the ’310 and ’228 patents require a ‘high contrast film,’ ‘a film printer,’ ‘a memory,’ and ‘printer and display devices’ also confirm this court’s holding that the invention is not abstract.”
  • “Indeed, this court notes that inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.”
  • “This court also observes that the claimed methods incorporate algorithms and formulas that control the masks and halftoning. These algorithms and formulas, even though admittedly a significant part of the claimed combination, do not bring this invention even close to abstractness that would override the statutory categories and context. The Supreme Court has already made abundantly clear that inventions incorporating and relying upon even ‘a well known mathematical equation’ do not lose eligibility because ‘several steps of the process [use that] mathematical equation.’ Diehr, 450 U.S. at 185.  Indeed, the Supreme Court counseled:  In determining the eligibility of respondents’ claimed process for patent protection under section 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.  Id. at 188.”

For further information re. patent-eligible subject matter under 35 USC 101, the reader is invited to review the following articles which were published previously on this blog: Analysis of Bilski v. Kappos; Patent Prosecution after Bilski v. Kappos; and Subject Matter Eligibility | USPTO Interim Guidance.