Many products or packaging are marked with the label “patent” or a variant such as “pat.” and a full patent number or “patent pending”.  This “marking” provides notice to the public that the product is patented or has a patent pending.  Notice to the public is required to ensure a patentee’s right to damages for a time period prior to notice to the offending party if the patent is ever litigated.  In other words, failure to properly mark a patented product limits the time period by which one can recover damages. 

There are three types of “marking” prohibitions. The first type includes “counterfeit marking” which is the use of a patent mark without the owner’s permission.  The second type includes “false marking” which is the use of a patent mark on an unpatented article.  The third type includes “false patent pending marking” which is the use of “patent applied for” or “patent pending” when no patent application covering the product is pending with the United States Patent and Trademark Office.

If an unpatented product is marked with a patent number and it can be proven that the party marking the product had the intent to deceive the public, then a penalty of up to $500 per article can be recovered.  Any person can sue for this penalty, in which event one-half of the recovery goes to the person suing and the other half to the U.S. government.  By permitting members of the public to sue on behalf of the government, Congress has allowed individuals to help control false marking.

 However, for patents directed to process or method claims the notice provision or “marking” does not apply.  The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark. Where the patent contains both apparatus, i.e., product, and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to recover damages under the method claims prior to notice to the offending party.

Some recommendations that businesses may implement to avoid potentially false marking their products and minimize potential risk or liability include the following.  One recommendation is to review all current patent marking to verify that a product is marked with at least one claim in a patent that covers the product.  Also it is important to check for any expired patents and if there are any expiration dates approaching.  If any expired patents are found, then it is recommended to stop marking with that number upon expiration.  Similarly, if the maintenance fees have not been paid for a patent and the patent is no longer enforceable, then stop marking with that number.

 Additionally it is suggested to avoid conditional marking, i.e., “product may be covered by one or more of the following patents”, unless the product is covered by at least one claim of every listed patent.  Also avoid marking “patent pending” unless there is a reasonable belief that such marked products are covered by one or more claims in a pending patent application.  If a patent application is no longer pending, i.e., abandoned, then businesses should stop marking products with “patent pending”.

In addition to reviewing products, it is recommended to review product literature, brochures, presentations, advertising, and other materials that may be marked.  Businesses may also want to review any licensing programs for third party marking activities.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about patent marking or any other aspect of intellectual property law.

One drawback is the loss of patent protection in some foreign countries. Therefore, a patent application should be filed in the U.S. before any public disclosure of the invention if the right to file foreign patent applications is to be preserved.

A U.S. patent application can be filed any time within one year of publicly disclosing, publicly using, selling or first offering to sell the invention to another. This “in public use or on sale” in the U.S. results in an inventor losing their right to a patent on their invention and is termed a “statutory bar”.

The “on-sale bar” applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. Second, the invention must be ready for patenting.

It seems very little use and very little publicity are required to constitute a “public use.” Typically public use is defined by its natural and intended way. However, private use of one’s own invention is permissible.

There is an exception to the “on-sale” or “public use” bars – an experimental use. The experimental use exception provides that an activity that would place an invention “in public use or on sale” would not trigger the statutory bar if the use or sale was incidental to experimentation.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about statutory bar dates or any other aspect of intellectual property law.

Click here to read the full opinion, and please stay tuned for our further in-depth analysis of the Bilski v. Kappos decision.

Interestingly, the Notice is titled “Request for Comments on Proposed Changes to Restriction Practice in Patent Applications.” However, upon further review, it is clear that that the PTO is not proposing any actual rule changes at this time — just floating some ideas.

Here is a summary of the 6 areas the Office outlined for discussion:

1. What should be included in an Office action that sets forth a restriction requirement?

• Examiners may be required to set forth actual reasons why the inventions are independent or distinct and why there would be a serious burden in the absence of a restriction.

• Support for a “serious burden” might also come from an examination burden (and thus could be supported by non-prior art issues, e.g., under §101 and/or §112, first paragraph).

2. How might the process for traversing or requesting reconsideration of a restriction requirement be improved?

3. What exactly is necessary in order to restrict between related product inventions or related process inventions?

• For such restrictions not otherwise addressed in MPEP §§ 806 through 806.05(j), a restriction would require two-way distinctness (see MPEP § 802.01) and a serious burden on the examiner.

• Where claims define the same essential characteristics of a single invention, e.g., the claims vary only in breadth (ranging from broad to narrow), the examiner could not require restriction between such claims.

4. How could the Office modify Markush practice?

• If an elected species is found allowable, the examination of the Markush-type claim would be extended to the extent necessary to determine the patentability of the claim, i.e., to determine whether any nonelected species is unpatentable for any reason (35 U.S.C. 101, 102, 103, or 112, or nonstatutory double patenting). If a nonelected species is determined to be unpatentable, the Markush-type claim would be rejected, and the search and examination would not be extended to cover all nonelected species.

• For amended Markush-type claims, whether an Office action may be made final would be determined by whether the conditions in MPEP § 706.07 for making a second or subsequent Office action final are met and would not be dependent upon whether the examiner previously required a provisional election of species.

• The Office is exploring situations where restriction would be proper between a subcombination and a combination when a subcombination sets forth a Markush grouping of alternatives.

5. How might the process for determining which claimed inventions are eligible for rejoinder be simplified?

6. What other areas of restriction practice are in need of improvement?

So if you’ve ever wanted to give your 2 cents on how restriction practice can be improved, please remember to submit your written comments to the Patent Office by August 13, 2010. All indications are that rule changes are on the way. We will keep you posted on any developments in this area.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about restriction practice or any other aspect of intellectual property law.

 The bottom line is that there is no requirement to conduct a patentability search before filing a U.S. patent application.  However, in most cases, it is a very good idea to do so.

Depending on the technology, a basic patentability search will typically cost $750-$2,000.  We use the term “basic” because this type of search does not cover all documents in all languages throughout the world.  Instead, it is a cost-minded approach intended to give the client “the biggest bang for their buck.”   

 A basic patentability search will typically include a search of issued U.S. patents, published U.S. patent applications and PCT publications — and sometimes a quick Google search to uncover products not disclosed in patent literature and products for which a corresponding patent applications has not yet published.  (Occasionally, for certain technologies, there is a need to search academic publications and other types of non-patent literature.)

 While a basic search is not guaranteed to uncover every document that could weigh in on the question of patentability, if carried out by a qualified firm or practitioner, it will undoubtedly provide you with valuable insight about the patent landscape surrounding your new invention and your chances of obtaining a patent.  (We emphasize the word “qualified” because some searchers are better than others.  Before hiring a firm to conduct your patentability search, be sure to understand their search methodology.  Most qualified firms, like us, use the WEST system which accesses the same database used by US examiners to examine your patent application.)

There are many good reasons to perform a basic patentability search, but in our experience, there are at least two primary reasons to do so:

1.         A basic patentability search can save you a lot of time and money (and heartache) down the road.  Everyone knows that filing a patent application, and seeing that application through to issuance, are expensive propositions.  So ask yourself …would you rather find out now — or later — that you’ve made a good investment?  That is, do you want your answer after you’ve spent $1,500, for example, on a patentability search, or after you’ve spent $10,000 … $20,000 … or more on a patent application and its ensuing prosecution?

2.         If, after obtaining the results of the patentability search, you decide to file a patent application, you can rest assured that the quality of the application will be better as a result of the search — that is, assuming (a) the person drafting the application conducted the search or has access to the search results; and (b) the search was conducted by a competent firm or practitioner.  Armed with general knowledge about the prior art, and often a specific understanding of one or more significant prior art references, the drafter will have a much better idea of what to include in the application — and just as importantly, what not to include in the application — to give the best possible chance of success.

Thus, while there is no requirement to conduct a patentability search before filing an application, we believe it is a very good idea to do so in the vast majority of cases if you consider the overall expense of drafting, filing and prosecuting an application.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice.  Please contact one of our attorneys to learn more about patentability searches or any other aspect of intellectual property law.

The short answer is “yes”.  But as you probably guessed, it requires a little more than a simple phone call to the examiner.  Instead, the applicant will need to file a petition under 37 CFR 1.313(c) to have the patent application withdrawn from issue.  This includes payment of the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why the withdrawal is necessary.

While there are three distinct ways to accomplish a withdrawal under 37 CFR 1.313(c), in our experience, it is usually preferable to proceed under section (2) which involves filing a Request for Continued Examination (RCE) under § 1.114 (including payment of the separate RCE fee set forth in 37 CFR 1.17(e)).

In brief, when proceeding under 1.313(c)(2), the newly-discovered reference will be included in an Information Disclosure Statement (IDS) which will qualify as the RCE submission.  Once the RCE and petition are filed (preferably electronically), it is advisable to call the Office of Petitions to notify them of the filing.  (In some cases, it might even be a good idea to call them before filing the petition to make sure you are doing everything correctly.)

Calling the Office of Petitions is a key step since you want to verify immediately that the petition was received and that, if the petition can be granted, it will be granted before the patent issue date.  As MPEP §1308 warns, “… while a petition to withdraw an application from issue may be granted as late as one day prior to the patent issue date, to avoid publication and dissemination, the petition decision must be granted at least 3 weeks prior to the issue date.”

As mentioned previously, there are two other ways to accomplish a withdrawal under 37 CFR 1.313(c).  Under section (1), the applicant can provide an “unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable.”  While we can envision circumstances under which this approach might be appropriate, we would generally avoid it since making such statements can open a Pandora ’s Box of issues including alleged inequitable conduct.

Still a further alternative is section (3) which involves filing a continuing application under 37 CFR 1.53(b) and then expressly abandoning the earlier application.  The usual “RCE vs. CON” factors will come into play when evaluating this option.  However, for a host of reasons—expense being a major one—starting over with an entirely-new application is often undesirable.

Not only is filing a continuation application more expensive than an RCE, but importantly, if the applicant withdraws the application under 1.313(c)(2) by filing an RCE and the application is again found allowable, it is possible to “reapply” the previously-paid issue fee toward the subsequent issue fee.  See MPEP § 1306.  Conversely, if the applicant expressly abandons the earlier application in conjunction with 1.313(c)(3), the previously-paid issue fee is lost.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice.  Please contact one of our attorneys to learn more about this or any other aspect of intellectual property law.

If the core of your invention is fairly well established but you are still making improvements, you should strongly consider filing a U.S. provisional patent application.

A U.S. provisional patent application expires 12 months after it is filed. While a provisional application, as such, is never examined by the U.S. Patent and Trademark Office (and thus will not mature into an issued U.S. patent), a provisional application can form the basis for U.S. and non-U.S. patent protection if the proper steps are taken. (Essentially, to retain the benefit of the “provisional” filing date, the provisional application must be converted into a regular, non-provisional U.S. application and/or an International [PCT] application before the end of the 12-month period.)

Thus, in a situation where the product is fairly well developed but refinements are still being made, filing a provisional application would allow the applicant to “lock in” an early effective filing date for the core inventive concept while still leaving opportunities to supplement the original filing during the 12-month period.

This approach highlights some of the major benefits of starting with a provisional application when the core inventive concept, while mostly complete, is still being “fine tuned”. Any time during the 12-month period, you would be able to supplement the first provisional with one or more additional provisional applications—for example, to cover any newly-added features, improvements, modifications, etc. (Typically, the sum total of all provisional disclosures is converted into a regular application during the 12-month period of the first provisional application so as to retain the early effective filing date of the first provisional.)

Additionally, at the time of converting the provisional application(s) to a regular, non-provisional application, you would again have the option to supplement the provisional disclosure.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about filing U.S. provisional patent applications or any other aspect of intellectual property law.

This new streamlined procedure is applicable to appeal briefs filed in ex parte reexamination proceedings on or after May 25, 2010. It does not apply to inter partes reexamination proceedings; however, the USPTO is considering a streamlined procedure for these as well.

 The purpose of this program is to reduce patent backlog at the patent office, as well as give applicants more control over the priority in which their applications are examined.  In exchange for abandoning an application that may be less important, an applicant can advance a more important application to the front of the examination queue.  In theory, this program will also benefit applicants that do not qualify.  Indeed, applicants should see their applications taken up for examination more quickly than would otherwise occur in the absence of this program even if they have only one pending application or do not have a pending application they are willing to abandon.

 The expanded Project Exchange will be limited to 15 applications per entity through December 31, 2010.  Additional details of this program will be available in the Federal Register in the coming weeks and on the USPTO website.