Patent Law

How often have you noticed that a product bears a label of “patent pending” or “U.S. Patent No.”?  But, what if that patent does not cover the product?  Or maybe there is no “patent pending”?  Well, anyone could have a “false marking claim” against that manufacturer and could recover up to $500 per article manufactured with such label.  As one could imagine, the recoverable amount or damages could be very large.  Therefore, it is recommended that businesses implement procedures to avoid potentially false marking their products and minimize potential risk for liability. 

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.

Clients often want to know if they can file a patent application after they started selling, offering for sale, or telling the public about their invention. In most circumstances, the answer is ‘yes’; however, it is not without some caveats.

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.

The European Patent Office (“EPO”) has changed its rules for filing Divisional applications. Previously, divisional applications could be filed from any pending European application. Now, the deadline for filing voluntary divisional applications is 24 months from the date of the first official communication by the Examining Division. Note that search reports and search opinions do not trigger the 24 month period because they are issued by the Search Division, not the Examining Division. Also note that a new unity of invention objection establishes a new 24 month period for filing a divisional application. 

For pending applications for which the 24 month period has expired or expires before October 1, 2010, the deadline for filing a divisional application will be extended to October 1, 2010. Please let us know if you would like for us to review your European patent portfolio before the October 1, 2010 deadline. Additionally, if you have a European case of particular importance and would like more information regarding filing a divisional application, please let us know that as well. 

Click here for related information regarding changes to EPO patent practice

The United States Patent and Trademark Office (“USPTO”) is considering a proposal which would make a change to missing parts practice in nonprovisional applications. The proposed change, if adopted, would somewhat extend the existing 12 month decision-making time provided by a provisional application to 24-months. The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period. 

Currently applicants have a one-year period from the filing date of a provisional application to file a corresponding nonprovisional application in order to claim the benefit of the provisional application. The proposed change would not alter this requirement, but instead would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application. A missing parts notice is typically issued when a nonprovisional application is filed without complete payment of the required fees and/or with an unsigned inventor’s declaration. 

Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether to pay the required surcharge and the additional required fees. 

Most notably, the USPTO proposal does not allow an applicant to defer the legal costs incurred in preparing a nonprovisional application. Applicants would still be required to make a decision whether or not to incur those costs and file their nonprovisional application prior to the 12 month window. 

The USPTO is currently accepting comments on its proposal before considering it for implementation. A copy of the USPTO Notice is available here.

The Federal Circuit has affirmed an International Trade Commission (ITC) decision finding two asserted patents invalid because they did not satisfy the best mode requirement of 35 U.S.C. §112.

The two patents relate to improved methods of producing L-lysine using genetically modified E. coli. (L-lysine is a dietary supplement in animal feed and has a multi-billion dollar market worldwide.) The patent disclosed one method of creating the L-lysine producing E. coli. However, before the patent applications were filed, the inventors created another, better strain. (The evidence also established that the better strain was intentionally withheld from the patent applications.)

The best mode requirement comes from 35 U.S.C. §112, which requires that the inventor disclose the preferred embodiment of the invention and any preferences that materially affect the claimed invention, but only to the extent that information is known by the inventor when an application is filed.

The patentee unsuccessfully argued that the improvements in the better E. coli strain related to other, non-patentable, improvements that were not related to the “inventive aspects” of the claimed invention.

Here, the best mode requirement was not met due to the breadth of the claims. The asserted claim recited the step of “cultivating a bacterium belonging to the genus [E. coli] … having mutation to desensitize feedback inhibition of L-lysine.” Because the scope of the claimed invention included “cultivating a bacterium,” the failure to disclose the preferred, and in one case, only bacterial strain used by the patentee to practice the claimed invention the best mode requirement was not met and the asserted patents were held invalid.

See Ajinomoto Co., Inc. v. International Trade Commission (Fed. Cir. 2010).

Occasionally, a patent practitioner will become aware of a prior art reference after the issue fee has been paid, and the question becomes—will the examiner consider the reference at this late stage? 

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), there are advantages to proceeding 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. 

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 one can envision circumstances under which this approach might be appropriate, making such statements is typically not recommended. 

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. 

Please contact us if you would like to discuss this topic in greater detail or would like additional information.

At long last, the Supreme Court has issued its opinion in Bilski v. Kappos. As widely expected, the Court affirmed the unpatentability of Bilski’s risk-management method. With a majority opinion authored by Justice Kennedy and concurring opinions offered by Justices Breyer and Stevens, the Court, instead of relying on the Federal Circuit’s “machine-or-transformation” test, relied on prior precedent to conclude that the claimed method was an “abstract idea” and thus not patentable. Interestingly, the opinion does not interpret §101 to exclude business method patents, and although the Court expressly refused to rule on the patentability of software, early consensus is that software will remain largely patentable. 

See, Bilski v. Kappos (Supreme Court 2010)(08-964). Please contact us for more information on the Bilski decision and its impact on business method and software patents

At long last, the Supreme Court has issued its opinion in Bilski v. Kappos. As widely expected, the Court affirmed the unpatentability of Bilski’s risk-management method. With a majority opinion authored by Justice Kennedy and concurring opinions offered by Justices Breyer and Stevens, the Court, instead of relying on the Federal Circuit’s “machine-or-transformation” test, relied on prior precedent to conclude that the claimed method was an “abstract idea” and thus not patentable. Interestingly, the opinion does not interpret §101 to exclude business method patents, and although the Court expressly refused to rule on the patentability of software, early consensus is that software will remain largely patentable.

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

For all those who have been confused and/or down right frustrated by a restriction requirement or two … (Haven’t we all?) … the United States Patent and Trademark Office will be accepting written public comments on restriction practice until August 13, 2010. Click  here to access the Federal Register Notice announcing the request.

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.

Occasionally, a patent practitioner will become aware of a prior art reference after the issue fee has been paid, and the question becomes—will the examiner consider the reference at this late stage?

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.