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.

John Zuccarini registered hundreds of domain names incorporating other individual’s trademarks, including “officedepot.com.” Office Depot successfully sued Zuccarini under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). The ACPA provides a cause of action for trademark owners against persons who register their mark(s) as domain name(s) to profit from the trademark. Office Depot obtained a judgment against Zuccarini, but was unable to collect and subsequently assigned the judgment to DS Holdings. 

DS initially sought to have 109 “.com” domain names that were registered to Zuccarini transferred directly to it. However, a California statue prohibited the court from ordering transfer of property held by a third party (a registrar maintains domain name registrations). DS then successfully had the court appoint a receiver to take possession of the domain names and sell them to satisfy the judgment. 

The irony is that this judgment arose from Zuccarini’s liability from registering these domain names to sell to trademark owners for profit. Now, DS will presumably sell the same domain names to the same trademark owners to satisfy the judgment. While this situation likely does not meet the definition of bad faith required under the ACPA, the end result is the same: a third party selling a domain name confusingly similar to another party’s trademark. 

In any event, this decision provides a roadmap to levying domain names to satisfy a judgment. In many cases, domain names would not be worth the effort to seize. But in other cases, domain names can have significant commercial value, making such efforts worthwhile.

•  Before You File – overview of the most important issues you should be aware of when filing a trademark application, including trademark availability searching, ownership information, differences between drawings and specimens, identifications of goods and services, and filing bases.
•  Searching – use of the Trademark Electronic Search System (TESS) and an overview of the system and tips for how to use the system effectively.
•  Applicant Information – focuses on what is meant by the term “applicant.”
•  Drawing Issues – focuses on what is meant by the term “drawing” and how to comply with the requirements for submitting a drawing to the USPTO.
•  Goods and Services Issues – focuses on identifying the correct “goods and services” for filing in association with your application.
•  Basis Information – provides specifics about the filing requirements for both Section 1(a), Use-in-Commerce, and Section 1(b), Intent-to-Use-in-Commerce, filing bases.
•  Specimen Issues – provides examples of acceptable specimens and highlights the differences between a “drawing” and a “specimen.”
•  After You File – provides an overview of the most important issues you should be aware of after filing your application. It covers such topics as using the USPTO’s electronic resources to keep your application current, who to contact with questions, and what you must do to avoid abandonment.
•  Post-Registration Issues – provides an overview of the most important issues you should be aware of after your application has matured into a registration. The video explains the required maintenance documents that you must file to keep your registration alive, as well as discusses an optional filing to enhance the legal strength of your registration. 

The Anchor in the videos is the Trademark Information Network’s Mark Trademan. We will leave it to you as to whether his name is either a great coincidence or an attempt at humor.

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 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.

Please contact is if you would like to learn more about “Project Exchange.”

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.

US Applicants may request participation by filing the appropriate form (Form PTO/ SB/20PCT-EP or Form PTO/SB/20PCT-JP). When filled via EFS-Web, the form is indexed as “Petition to make special under PCT-Patent Pros Hwy”. 

On a related note, Applications may now be prepared in a Common Application Format (CAF) developed by the Trilateral Office. This format streamlines direct filings in the EPO, JPO and USPTO where applications in this format are not subject to additional formality requirements. For US applicants, the CAF goes beyond what is required in the US. However, using the CAF can provide significant savings when nationalizing PCT applications in the EPO and JPO. More information may be found at by clicking here. 

Please contact us if you have any questions regarding this update to the patent prosecution highway.

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.