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Monthly Archives: March 2014

How to Speed Up Patent Prosecution: Add a Glossary of Terms

By Stephen B. Schott

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The White House’s recent executive actions related to patent applicationsincluded one proposal for adding a glossary of terms. In response, the USPTO held a hearing and invited comments on a proposal for how such a glossary might look and last week, released its Glossary Pilot Programrules.

The pilot program, which is optional, starts on June 2, 2014 and will be available to the first 200 accepted applications or for 6 months, whichever comes first. The program comes with a nice reward: If you provide a glossary and enter the program, the USPTO will review your application as if it was filed with a Petition to Make Special. This could reduce the application’s prosecution time by more than a third.

There are several requirements for participating in the program and also some requirements for the glossary itself, all of which are available from the USPTO.

Requirements for Program Participation

  1. The application must be: (a) An original, non-reissue, non-provisional utility application filed under 35 U.S.C. 111(a) that does not claim the benefit of a prior filed U.S. application (i.e., cannot be a continuation or divisional application), except the application can claim benefit of a provisional application; or (b) a continuation-in-part application claiming the benefit of a prior non-provisional utility application under 35 U.S.C. 120 or 365(c) filed for the purposes of providing a glossary in accordance with this program. The application cannot be an international application, national stage application filed under 35 U.S.C. 371, design application, or plant application. Further, the application cannot also participate in any Patent Prosecution Highway (PPH) program.
  2. Upon filing, the application must contain a specification in the English language including a glossary section that meets all the Requirements below.
  3. Upon filing, all benefit and priority claims must be included in an application data sheet (see 37 CFR 1.76 and 1.78). If the application claims priority to one or more foreign applications, a copy of each the foreign application must be submitted concurrently with the filing of the application. If any prior-filed application (U.S. or foreign) is not written in the English language, an English-language translation of such prior-filed application must be submitted concurrently with the filing of the application with a statement that the translation is accurate.
  4. The applicant must file a completed Form PTO/SB/436 titled ‘‘Certification and Petition To Make Special Under the Glossary Pilot Program’’ with the application filing.
  5. Upon filing, the application must contain at least one claim, but no more than four independent claims, and thirty total claims. The application must not contain any multiple dependent claims.
  6. In order to be eligible for the Glossary Pilot Program, the application must be classified as a computer-related or business method patent application. This decision is made by the USPTO post-filing.
  7. The application and all following papers must be filed electronically with the USPTO via EFS-Web.
  8. If the applicant also requests advancement of examination based on another established procedure (e.g., Accelerated Examination, Prioritized Examination), then the application must satisfy all of the conditions and requirements of the other procedure(s), including payment of any fees required by the other procedure(s), in addition to the conditions and requirements specified herein for the Glossary Pilot Program.

6 Requirements for the Glossary

The glossary itself must meet the following requirements.

  1. The glossary must be placed at the beginning of the detailed description portion of the original specification, identified with a heading, and presented on filing the application, that is, an applicant cannot add the glossary after the initial filing.
  2. The glossary definitions cannot rely upon other parts of the specification for completeness, or upon any incorporation by reference to other sources such as patents, published patent applications, or non-patent literature reference.
  3. A glossary definition establishes limits for a term by presenting a positive statement of what the term means. A glossary definition cannot consist solely of a statement of what the term does not mean, and cannot be open-ended.
  4. Definitions provided in the glossary cannot be disavowed elsewhere in the application. For example, a definition cannot be presented in the glossary along with a sentence that states that the definition is not to be considered limiting.
  5. A glossary definition may include the usage of examples, synonyms, and exclusions. The glossary definition cannot, however, consist solely of a list of examples, synonyms, and/or exclusions.
  6. The glossary should include definitions that will assist in clarifying the claimed invention and creating a clear application file wrapper record. The USPTO suggests that definitions include key claim terminology (such as a term with a special definition), substantive terms within the context of the invention, abbreviations, acronyms, evolving technological nomenclature, relative terms, terms of degree, and functional terminology including 35 U.S.C. 112(f) functional limitations (previously 35 U.S.C. 112, sixth paragraph). If the glossary provides a definition for 35 U.S.C. 112(f) functional limitations, then the USPTO also suggests including the identification of the corresponding structure for performing the claimed function, in addition to any disclosure of the structure elsewhere in the specification.

The Patent Glossary Danger

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Most of the comments in support of the glossary section were vehemently positive, pointing out the need for clearer patents and defined terms that accused infringers can rely on. That said, the flip side of the glossary is a patent owner getting stuck with an ill-crafted definition in litigation. If you take advantage of this program, make sure that you work with your patent attorney to carefully craft the glossary and be sure not to include narrower definitions than you intend.

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Obama the Troll Slayer: The White House’s Patent-Related Executive Actions.

By Stephen B. Schott

President Obama wants to vanquish patent trolls. His 2014 State of the Union address called for Congress to “pass a patent reform bill that allows our businesses to stay focused on innovation, not costly and needless litigation.” Not satisfied with leaving reform in Congress’s hands, the White House recently announced executive actions targeting patents and patent trolls.

Stepping back for a moment in case this term is unfamiliar, “patent troll” is a colorful descriptor that is hard to define. Generally, a patent troll is an entity that asserts a patent for products that it does not itself make.

No party accused of being a patent troll accepts that pejorative mantle willingly, preferring instead to be called something more benign like a non-practicing entity. But the term patent troll persists due to its color and it’s not about to fall into the politically incorrect vernacular in the near future, so non-practicing entities are probably stuck with being called trolls.

Returning to the reforms, the White House Press Secretary Jay Carney recently released a fact sheet calling on Congress to pass legislation to curb patent trolls, summarizing its accomplishments since 2013, and announcing new executive actions.

The Patent Troll “Problem”

The problem of patent trolls is, as my friends across the Atlantic might say, a sticky wicket. A lot of people feel like there’s some kind of a problem but no one seems to agree on who’s an actual troll.

A few examples illustrate the difficulty of defining a patent troll. Let’s say that a major automobile manufacturer invests several million dollars developing a new diesel engine. Along the way, it secures 50 patents on the technology, but then decides not to pursue the diesel engine and instead focuses on hybrid engines. A few years pass and one of its competitors releases a diesel engine using the patented technology. Is our automobile manufacturer a troll if it pursues the competitor for patent infringement, just because it didn’t produce the diesel engines?

Another problem example that commonly arises is universities, which are petri dishes of innovation that rarely make any products. Most universities do, however, have a technology transfer office that secures patent protection for innovations. If a university sees a company using its patented technology and approaches the company seeking a royalty, is the university a troll that should be punished?

And a third category is also troublesome. Picture a small business that invents a new technology and secures a patent on it. Later, a multinational corporation starts using the technology. The small business doesn’t have millions of dollars to bring a patent infringement lawsuit so it sells its patent to a third party who has enough money to bring the lawsuit. In this David and Goliath scenario, small-business David needed a sling, and the third party provided it. The third party may be in the business of nothing more than collecting promising patents—but legislation attacking the third party patent collector harms the small business and stifles innovation.

At the other end of the spectrum is an example where a patent attorney purchased a patent from an inventor. The patent was for a consumer product. The patent-owner/attorney sued a manufacturer for infringement even though it was clear that there was no infringement. The manufacturer was faced with a terrible decision tree: Choice 1: Pay the patent-owner/attorney a small amount of money to settle the lawsuit, or Choice 2: Pay litigation costs (hundreds of thousands of dollars at least) to win the lawsuit and pray for the never-to-be-found Questing Beast that is judge-awared attorney’s fees for bringing a frivolous lawsuit. Choice 1, as painful as it is, is often the better business decision.

The other problem with patent trolls is that they may be less of a problem than they appear. The argument is that while patent trolls may be a problem, the widespread reforms to combat them will harm innovators, universities, and small businesses and thus sweeping patent reform legislation is not necessary.

The outcry against patent troll reform has reached enough of a pitch that Congress seems to have slowed its troll hunt and while it will probably pass something in the next couple of years, it may be carefully crafted to target the more egregious offenders.

2013 White House Patent Reform

The White House fact sheet summarizes its 2013 goals and achievements:

  • Promote Transparency — The United States Patent and Trademark Office (USPTO) recently published a draft rule to ensure patent owners accurately record and regularly update ownership information when they are involved in proceedings before the USPTO. This effort is aimed at improving the quality of patents issued, enhancing competition, facilitating technology transfer, and making it harder to hide abusive litigation tactics behind shell companies. After receiving input from the public, the USPTO aims to issue a final rule in the coming months.
  • Make Patents Clear — The USPTO has developed and implemented a training program to help its examiners rigorously examine so-called “functional claims” to ensure claims are clear and can be consistently enforced. In the coming weeks, the USPTO will launch a pilot program that uses glossaries in patent specifications to promote patent clarity.
  • Protect Main Street from Abuse — To help ensure consumers and main-street retailers know their rights before entering into costly litigation or settlements, the USPTO is today launching an online toolkit aimed at empowering consumers with answers to common questions, information about patent suits, and details about specific patents. The toolkit will include information and links to services and websites that can help consumers understand the risks and benefits of litigation or settlement, and pick their best course of action.
  • Expand Outreach and Focused Study — Today, the USPTO is announcing the expansion of its Edison Scholars Program, which brings distinguished academic experts to the USPTO to develop and make available to the public more robust data and research on issues bearing on abusive litigation. USPTO will also continue to expand its engagement with stakeholders—including patent holders, researchers, advocates, and others—and build on the successful roundtables the agency hosted across the country over the past year on high-tech patent issues.
  • Strengthen Exclusion Order Enforcement — To make the enforcement of exclusion orders issued by the International Trade Commission more transparent, effective, and efficient, the Office of the U.S. Intellectual Property Enforcement Coordinator launched an interagency review and will, in the coming months, deliver its recommendations on refining that process.
  • Innovation For Global Development — In addition, today, the Administration is committing to sustain, going forward, the Patents for Humanity Program, which creates business incentives for using patented technology to address global humanitarian needs.

2014 Executive Actions for Patent Reform

The White House’s fact sheet also describes what it is doing this year through executive action.

  • Crowdsourcing Prior Art — To help ensure that U.S. patents are of the highest quality, the USPTO is announcing a new initiative focused on expanding ways for companies, experts, and the general public to help patent examiners, holders, and applicants find relevant “prior art”—that is, the technical information patent examiners need to make a determination of whether an invention is truly novel.
  • More Robust Technical Training — The USPTO is expanding its Patent Examiner Technical Training Program to help patent examiners keep up with fast-changing technological fields by making it easier for technologists, engineers, and other experts to provide relevant technical training and guidance to patent examiners. To make the most of these changes, the Administration is calling on innovators to volunteer their time and expertise to help ensure that USPTO training is robust and reflects the state of the art.
  • Pro Bono and Pro Se Assistance — To increase the accessibility of the patent system, the USPTO will dedicate educational and practical resources to assist inventors who lack legal representation, appoint a full-time Pro Bono Coordinator, and help expand the existing America Invents Act pro bono program to cover all 50 states. The Administration is calling on members of the patent bar to participate in the program.

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What is a Design Patent and How is it Different than a Utility Patent?

An Article in Schott, P.C.’s IP Law For Start-ups Series

By Stephen B. Schott

The patent that you think of when you hear the word patent is a utility patent. But it’s not the only kind of patent that there is. 5% (over 30,000) of all patent applications filed per year are design patent applications. 0.1% of all patent applications filed per year are plant patent applications. From a marketing perspective, that’s why this article is about design patents.

Design patents protect a manufactured article’s ornamental appearance. The protection for ornamental appearance is what differentiates a design patent from a utility patent. 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), and the way that the patents express this protection reflects this difference. In a utility patent, the scope of protection is expressed in a series of carefully-worded claims. In a design patent, there is a single claim that defines the scope of protection according to its drawings. For example, consider the difference between claims for a utility patent  (left) versus a design patent (right) for the same product: the iPhone.

While the iPhone utility patent has drawings, its claim scope is not solely limited to the drawings, but instead the claim words themselves define its scope. The iPhone design patent, on the other hand, is limited in scope to its drawings. The design patent thus provides a more narrow scope of protection.

The above iPhone example answers a common question about utility and design patents: Can they both cover the same product? The answer is yes. In fact, multiple design patents may cover a single product, with each one covering the ornamental appearance of a different feature. I could secure on design patent for a watch face and another for the band.

HOW DO YOU INFRINGE A DESIGN PATENT?

Design patent infringement requires proof that an “ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design….If the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer.” “The ordinary observer test applies to the patented design in its entirety, as it is claimed. [T]herefore, minor differences between a patented design and an accused article’s design cannot, and [do] not, prevent a finding of infringement.”

It’s this “ordinary observer” test that is at the heart of deciding whether there has been design patent infringement. Here are some examples of cases and how they were decided.

You can see other comparisons in this excellent article.

WHAT OTHER DIFFERENCES ARE THERE BETWEEN DESIGN AND UTILITY PATENTS?

1. Design patents costs less than utility patents. The cost for filing a design patent application is substantially less than a utility patent application, as much as 80-90% less. The majority of the cost of a design patent is in preparing the drawings, which are critical. Due to their narrow scope, design patent applications usually require less back-and-forth with the US Patent and Trademark Office (USPTO), so you will also save attorney fees. Design patent fees due at the USPTO are less than utility patent fees. Finally, design patents do not require payment of costly maintenance fees that utility patents require.

2. Design patent terms are measured differently than utility patents. Utility patents have a term of 20 years from the earliest U.S. application to which priority is claimed. Design patents have a term of 15 years from their issuance (for design applications filed before December 15, 2013, the term is 14 years from issuance).

3. Design patents don’t take as long to get as utility patents. It takes about 2 years to get a design patent on average, but more than 3 for a utility patent.

4. Design patents start with the letter “D” followed by a number; utility patents are just a series of numbers. 

Design patents offer a narrow scope of protection but they are less expensive and easier to secure than utility patents. In applying for one, you can use the valuable “patent pending” wording and once you receive the design patent, you can mark your product as patented. Thus, design patents are valuable if your product’s appearance is important to its success. Design patents are commonly filed for shoes, electronic device housings, jewelry, clothing, and automobiles.

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The Layman’s Guide to Reading Patent Claims: Can a Hippopotamus Infringe a Patent?

 

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott

dreamstime_xs_35290763_med_hrPatent claims are all-out assaults on the English language. It’s not bad enough that they are technical. It’s not challenging enough that passive use pervades technical writing. And it’s not brutal enough that the US Patent and Trademark Office has a pro-obfuscation rule about patent claims that requires them to be single run-on sentence monstrosities. No, it’s all of these and more.

But still, the essence of the patent is in its claims. So if you’re looking at a patent for almost any reason, you must read the claims. I will try to ease the pain of that exercise.

WHAT ARE THE CLAIMS?

The claims are at the end of a patent. They often start with an introductory “I claim” or “We claim” followed by a series of numbered claims. An actual claim for Apple’s iPhone looks like this:

WHY ARE CLAIMS SO HARD TO READ?

A patent claim begins with a capital letter and often many semicolon-separated paragraphs later, ends with a period. Defenders of the rule requiring claims be a single sentence say that multi-paragraph long single sentences are clear. This argument is devoid of all logic: Retreating from the rules of grammar is no way to lead a charge towards clarity in writing.

On behalf of the US Patent and Trademark Office, for whom I am not authorized to speak in any capacity except that I, like you, am a taxpayer and their boss, apologize for patent claims’ opacity. Claims are hard to read.

WHAT DO THE CLAIMS HAVE TO DO WITH INFRINGING A PATENT?

A product or method infringes a patent if it falls within a patent claim’s scope. This is easier to understand in the context of an example.

Consider this fictional patent claim:

Claim 1. A chair comprising:
(1) 4 legs;
(2) a seat attached to at least one of the 4 legs; and
(3) a back attached to the seat, wherein the seat and the back attach to one another through a hinge.

The best way to look at this claim is to imagine that its words describe the boundaries to a property deed. But instead of “BEGINNING at a white oak on the E. bank of Sinking Creek, a corner to lots No. 8 & 10; thence S 53 E 20 P. 8 L. crossing said creek to three sourwoods; S 1.5 W 36 P,” the claim language might look something like this:

 

Seen this way, the claim language sets up the boundaries of what infringes the claim, and as a consequence, what the patent holder can prevent others from making, using, and selling. As shown in the example, a chair with 3 legs cannot infringe because the claim requires 4 legs. (Curiously, a five-legged chair might infringe the claim because a five-legged chair has 4 legs…plus one.) Similarly, a chair (stool) without a back would not be within the boundary, nor would a chair without a hinge between the seat and the back. None of these would infringe this claim.

But the chairs within the boundaries would infringe. One is a metal and fabric reclining chair and the other is a wood reclining chair. Despite the differences in these chairs, both have all of the claim elements and infringe claim 1.

You might ask “What are claim elements?” Claim elements or claim limitations are the words, usually broken into separate paragraphs or clauses, that make up the claim. Here, I made each of the claim elements a side in our “property.”

Note that the part of the claim “A chair comprising” is called the preamble. It may or may not serve as a boundary to the claim. Courts have said that the preamble is “necessary to give life, meaning, and vitality” to the claims. This is about as poetic as the patent law gets and we can see what the “life giving” might mean if we change the word “chair” to “something.”

As you can see, now the claim could cover a hippopotamus, which has 4 legs and a back attached though a hinge at the hip to a rather large seat.* Such a claim to “a something” would not likely ever issue in a patent but illustrates the importance of a preamble—it’s not something to totally ignore.

Returning to the claims, there may also be dependent claims in a patent. These are claims that add elements and further narrow a claim. For example, let’s add a claim 2 to our fictional patent.

Claim 2. The chair of claim 1, wherein the chair legs are wood.

Dependent claims usually have language like “The ___ of claim __” or “The _____ according to claim ___.” What this means is that the dependent claim includes all of the elements of the claim it refers to plus whatever is in the dependent claim. In our example, we would say that claim 2 depends from claim 1.

In determining the scope of claim 2, we might redraw the patent property boundaries like this:

This shows how the metal-legged chair that was within the scope of claim 1 is now outside the scope of claim 2 because claim 2 requires wooden legs.

This isn’t the complete infringement analysis process. What I just discussed is the second step in it: Comparing the claim language to an accused product. The first step is interpreting the claim language. It turns out that statements made in the patent description and during the patent proceedings in the US Patent and Trademark Office, drawings, and other factors help inform what the claim language means. Interpreting claim language is a topic for a more advanced article.

 

THAT’S GREAT. HOW CAN I TELL IF THE CLAIM IS VALID?

There are a lot of technical reasons a claim might be invalid. But one way that a claim might be invalid is if it lacks novelty or if it is obvious. Going back to our property lines, a claim would lack novelty if at the time of the application’s filing, one of the chairs within the property boundary already existed. Said in patent parlance, a claim lacks novelty if a prior art reference teaches or shows every claim element.

A patent claim may also be invalid if it obvious. A defendant may show this by taking one reference (a four legged chair with no back) and combining it with another reference (a three legged chair with a hinged back) to create a combination that shows all of the claim elements.

An infringement or invalidity study is a complicated analysis. If you are concerned that your product infringes a patent, or if you believe a patent asserted against you is invalid, you should find an experienced patent attorney and secure their opinion.

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* Alas, the hippopotamus cannot infringe the patent claim because it is a naturally-occurring composition of matter.