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On May 8, 2018, the United States Patent and Trademark Office (USPTO) announced press release #18-06 regarding the future of claim construction during post grant proceedings at the USPTO.  The press release indicated that all post grant proceedings such as the Inter Partes Review, Post Grant Review and Covered Business Methods will no longer use the “Broadest Reasonable Interpretation” (BRI) to determine the scope of the claims.  They will be transitioning to the ordinary and customary meaning which is advantageous for patent owners.

The policy change is not in effect at this moment.  The USPTO will release proposed rules in the Federal Register on May 9, 2018.  Unofficial copy: Changes to Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.  Finalized proposed rule for Changes to Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board will be posted on May 9, 2018.  I will update this blog post as developments arise.  The public will be able to comment on the proposed rule.  To provide your comment, see instructions below.  The Patent Office will formalize the proposed rules and take into consideration the public’s comments.

The USPTO stated several rationales for the proposed rule change:

  1. Greater uniformity and predictability of the patent grant
  2. Increase judicial efficiency
  3. Address concerns of unfairness between the BRI and ordinary and customary meaning standards

This policy change is disadvantageous to alleged infringers.  Inter Partes Review and other post grant proceedings allowed alleged infringers to use a broad definition for the claims to invalidate the patent claims being asserted against them through the post grant proceedings.  Using a broad definition of the claim terms under the broadest reasonable interpretation standard increased the odds that a prior art reference would anticipate or make obvious the patent claims, and thus invalidate the patent claims.  Not after the rule change comes into effect.

I’ve written many articles that highlight the benefits of the broadest reasonable interpretation standard for alleged infringers.

Related articles:

In contrast, for an alleged infringer to invalidate a claim in federal courts, the claims would be given their “ordinary and customary meaning,” not the broadest reasonable interpretation.  As such, during litigation in federal courts, it would be significantly more difficult to invalidate the patent claim.  This distinction between the broadest reasonable interpretation and the ordinary and customary meaning was a significant benefit to alleged infringers.

The stated goal for the policy change is to more closely align the interpretation used by the PTAB in post grant proceedings to the claim interpretation used in federal courts or the International Trade Commission.  The press release did not specifically indicate that the post grant proceedings will interpret the claims under an ordinary and customary meaning standard.  However, the preliminary proposed rules below indicate that is goal.

In my opinion, this greatly reduces the attractiveness of Inter Partes Review, Post Grant Review and Covered Business Methods review before the Patent Trial and Appeal Board.  I expect that the number of petitions filed at the USPTO is expected to go down but only time will tell after the proposed rule change goes into effect. There still are benefits to petitioning for a post grant proceeding compared to litigation.  One of them being cost and the ability of the defendant to address invalidity before the PTAB with judges that are more adept at patent law compared to federal judges that might handle just a few patent cases or less per year.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The post Claim construction switching from BRI to ordinary meaning in post grant proceedings appeared first on OC Patent Lawyer.

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Basic background of inter partes review

An IPR refers to an inter partes review.  The IPR is an administrative proceeding before the Patent Trial and Appeal Board (PTAB) of the USPTO in which a petitioner can request claims of a patent be invalidated to avoid patent infringement liability.  The petitioner is normally a business competitor to the patent owner wherein the patent owner has alleged patent infringement.  Under SAS Institute, Inc. v. Iancu (S. Ct. 2018), all challenged patent claims by petitioner must be included in the IPR if the single claim threshold is met.

Benefits of IPR

In a federal court where patent infringement is litigated, the alleged infringer would have to litigate multiple issues such as validity and noninfringement at the same time.  The IPR allows the alleged infringer to focus their resources to first attack the validity of the challenged patent claims before having to spend the time and money on arguing noninfringement.

In my opinion, the IPR is a preferred venue to challenge the validity of the patent.  One reason is that the IPR allows the alleged infringer to argue for the “broad reasonable interpretation” of the terms of the patent claims.  With the broadest reasonable interpretation (BRI), the claims are read broadly, and thus the prior art references are more likely to invalidate the patent claims based on a lack of novelty and obviousness.

If the challenged patent claims survive the IPR, then the alleged infringer can argue for the “ordinary meaning” of the challenged patent claims during litigation in federal court.  The ordinary meaning of a claim term is a narrower than the broadest reasonable interpretation, and thus, the alleged infringer would be less likely to infringe the patent claims.  The alleged infringer can have claim construction beneficially construed in their favor in both stages of the litigation by taking advantage of the IPR.

All challenged patent claims must be instituted in IPR, no partial institution

In SAS, the issue before the Supreme Court was whether the PTAB could institute an IPR on some but not all of the claims identified in the petition for IPR by the petitioner.  Before SAS, PTAB would be able to pick and choose which claims would be considered in the IPR under the power of a USPTO regulation “partial institution.”  In SAS, the Supreme Court held that the PTAB did not have the power of “partial institution.”  The USPTO has already issued its Guidance on the impact of SAS on AIA trial proceedings.

Before SAS, the alleged infringer could only take advantage of the IPR proceeding for those patent claims that the Board instituted.   The petitioner would petition the Board to cancel as unpatentable 1 or more claims of the patent by identifying the claims, providing grounds that the identified claims are not novel or obvious and submitting the evidence supporting the challenge.  The patent owner would then argue why no IPR should be instituted.  If the petitioner was successful in convincing the Board that at least 1 claim (i.e., single claim threshold) would be invalidated, then the Board could pick and choose which claims of the patent should be a part of the IPR. “The Director did all this on the strength of a Patent Office regulation that purported to recognize a power of “partial institution.”

In SAS, the Director of the USPTO argued that the power of “partial institution” was found in the language of the statute.  In particular, the Director pointed to various sections of the IPR statute which gives the Director discretion and authority to institute the IPR.  The Director construed those sections to say that they allowed the Director to institute the IPR on a claim by claim basis and was not forced to institute the IPR as a group as chosen by the petitioner.  Also, the Director made policy arguments based on efficiency and stare decisis that the courts should give deference to agency regulations under Chevron. Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).

The majority opinion written by Justice Gorsuch disagreed.  In fact, the majority opinion stated that proper statutory construction begins with the language of the statute.  Based on the language of the IPR statute, partial institution was not found anywhere.  As for the efficiency argument, the majority opinion indicated that the agencies should make regulations based on the statute as written and not based on policy.  Congress makes the laws based on policy and that the policy making discretion is not within the purview of the agency.  Also, agency deference under Chevron is given only if the meaning of the statute cannot be discerned after employing traditional tools of statutory construction. As discussed in the opinion, the meaning of the statute was easily discerned.

Before SAS, the Board was allowed to resolve less than all challenged patent claims chosen by the petitioner under the USPTO’s regulation of “partial institution.” In SAS, the U.S. Supreme Court held that the Board must resolve every challenged patent claim raised by the petitioner once the IPR is instituted by the Board.  They cannot pick and choose which patent claim to resolve.  Patentability on some of the challenged patent claims cannot be decided by the Board while the rest are litigated in federal courts.  The division is not for the Board to make.  The petitioner has the power to choose which claims should be included in the IPR, not the Board.

Ramifications of SAS opinion

The SAS opinion makes an IPR an even more attractive vehicle for challenging the validity of a patent.  Before SAS, the alleged infringer had to hope that the Board would institute the IPR for the claims (i.e., problematic claims) they thought they were most likely to infringe.  After SAS, the alleged infringer is given complete control over which claims are considered in the IPR so long as the single claim threshold is met.

This brings us to another benefit of an IPR to alleged infringers.  Before SAS, the alleged infringer had to spend the time and money to focus on all claims, especially the problematic claims to make sure that the problematic claims would be included in the IPR, if the IPR was instituted.

Now, the burden on the alleged infringers appear to have been lowered.  In particular, the alleged infringer can focus on one or more claims that is likely to meet the single claim threshold, while spending less time and money on the other claims that they want included in the IPR because the PTAB must institute the IPR on all challenged patent claims as long as the single claim threshold is met.  Presumably, this should reduce the cost to alleged infringers for preparing a petition for an IPR.

I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The post PTAB must resolve all challenged patent claims in IPR appeared first on OC Patent Lawyer.

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What is a claim of priority?

A claim of priority is a reference in a later filed patent application back to an earlier filed patent application.

What is the benefit?

The claim of priority allows the later filed application to enjoy a priority date as of the filing date of the earlier filed patent application and not the actual filing date of the later filed patent application.  If the later filed patent application is rejected based on intervening prior art dated between the two filing dates of the earlier and later-filed patent applications, the claim of priority eliminates that intervening reference as prior art.  That can be the difference between an allowance or rejection of a patent application.

Does everything in the later filed patent application enjoy a priority date of the earlier filed patent application?

The claim of priority does not give the later filed patent application the benefit of the filing date of the earlier filed patent application for everything described or disclosed in the later filed patent application.  Rather, only those things that are described in both the earlier and later-filed patent applications enjoy a priority date of the earlier filed patent application.

A good way to understand this concept is to cover the terms used to describe the various types of patent applications.  A continuation patent application is a refiling of the original patent specification of the earlier filed patent application with claims relating to the same invention.  A divisional patent application (MPEP 201.06) is a refiling of the original specification of the earlier filed patent application with claims relating to a different aspect of the invention.  A continuation in part application is a refiling of the original patent specification and includes new features of the invention and has claims directed to the new features.

A claim of priority in a continuation or divisional patent application enjoys the priority date of the earlier filed patent application because they share the same specification.  Everything described in the later filed application is also described in the earlier filed patent application.  For a continuation in part application, the later filed patent application enjoys the earlier priority date only for the common subject matter and not for the new features.  The new features have an effective filing date as of the filing date of the continuation in part application.

Using a claim of priority to develop a patent portfolio around cornerstone technology

A claim of priority is made in a later filed patent application back to an earlier filed patent application when developing a portfolio of patents around cornerstone technology or technology that is important to a business.

A patent portfolio is a group of patents that may or may not be related to each other by a claim of priority.  For those that are related to each other by a claim of priority, they share a common specification.  The later filed patent application is a refiling of the earlier filed patent application with a new set of claims and includes the claim of priority.

Because of the claim of priority, the earlier filed patent application is not prior art to the later filed patent application at least for the common subject matter between the two. Otherwise, the earlier filed patent application when it matures into a patent or is published as a pre-grant publication will be prior art against the later filed patent applications which will be devastating to the later filed patent application because it is almost impossible to overcome your own patent application if it becomes prior art.

How do you make a claim of priority?

The requirement for making a claim of priority is discussed in Manual of Patent Examining Procedure (MPEP) Section 211: Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e).  For information on claiming priority to a foreign patent application, see MPEP Section 213: Right of Priority of Foreign Application.

A claim of priority in a later filed patent application can be made to an earlier filed provisional patent application, nonprovisional patent application, a design patent application or a foreign patent application.

The following highlights the more crucial aspects of the claim of priority.

A claim of priority is made when:

  1. The later filed patent application includes a specific reference to the earlier filed patent application;
  2. The specific reference is made within 16 months from the filing date of the earliest priority application or 4 months from the filing of the later filed patent application;
  3. The later filed patent application is filed before the abandonment or grant of the earlier filed patent application. The earlier and later filed patent application must be co-pendening with each other at some point in time.
Specific reference

The specific reference is a statement in the later filed patent application which refers back to the earlier filed patent application.   The specific reference must specify:

  1. Application Serial Number of the earlier filed patent application and
  2. The relationship (e.g., continuation, divisional, continuation in part, provisional) between the earlier and later filed patent application.

The specific reference is made by inserting the information in the Application Data Sheet (ADS).  The ADS is a document submitted with the patent specification.  The patent specification along with the ADS form a part of the overall patent application package.  The section of the ADS that needs to be filled out is shown in the example below.

Timing of specific reference

The specific reference needs to be made during a certain period of time.  It needs to be made within 16 months of the filing of the earliest filed patent application or 4 months after the filing of the later filed patent application.

Co-pendency requirement

The later filed patent application needs to be filed with the United States Patent and Trademark Office before the earlier filed patent application is abandoned or granted.   For example, if a provisional patent application is filed, the nonprovisional patent application must be filed while it is pending.  The provisional patent application is pending only for one year from its filing date.  When a nonprovisional patent application is allowed, then the follow-on patent application needs to be filed before it is granted.  If a patent application is rejected, then the follow-on patent application needs to be filed before the due date to file a response (i.e., date of abandonment).

How do you fix a defective claim of priority?

A defective claim of priority may be fixed before the patent application is granted through a petition to the Patent Office or after the patent is granted by way of a reexamination request.  The cheaper method is the petition.  The reexamination proceeding is a significantly more expensive procedure.  For both methods, the reason for the defective claim of priority must be unintentional.  A claim of priority can be fixed with a certificate of correction if the mistake was made by the Patent Office.

Reference MPEP 201 for the various petitions for fixing a defective claim of priority.

I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The post Claim of priority to an earlier filed patent application appeared first on OC Patent Lawyer.

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Collateral estoppel is a legal rule that protects a party from having to litigate issues that have already been fully and fairly tried in a previous action and adversely resolved against a party-opponent.  This rule can work against the patent owner or the defendant during litigation.

Collateral estoppel works against the patent owner

In general but not always, collateral estoppel works against the patent owner and helps the alleged infringer.  For example, if a term in a patent claim being asserted by the patent owner has already been construed by a court in prior litigation, then the patent owner cannot contest the correctness of the claim construction of the patent claim in a subsequent patent litigation against the same defendant.  This was the case in Nestle USA, Inc. v. Steuben Foods, Inc. (Fed. Cir. March 13, 2018).  It is also true for a different defendant which was not a party to the original litigation.

The patent owner must accept the claim construction that was previously determined by the court.

This is not the case for the defendant who was not involved in the original litigation.  The defendant does not need to accept the claim construction previously decided by the court.  The defendant can argue that the claim construction was too broad or too narrow.  This defendant did not have the full and fair opportunity to litigate the issue unlike the patent owner.  Hence, the defendant can take the position that the claim term should be interpreted much more broadly so that the patent claim would be invalid for being anticipated or obvious by the prior art.  Conversely, the defendant can take the position that the claim term should be interpreted much more narrowly so that the patent claim would be sufficiently narrow so that the defendant’s products or actions would avoid infringement of the patent claim.  This would be the defendant’s prerogative but not the patent owner’s.

Collateral estoppel works against the alleged infringer

Collateral estoppel can work against the alleged infringer in the case where there is multiple litigation on one or more related patents and a court in prior litigation ruled against the alleged infringer.  For example, if the alleged infringer advocated for a certain meaning of a claim term but lost, then in subsequent litigation against the patent owner, the alleged infringer cannot advocate for a different meaning for the claim term for a related patent.

Nestle USA, Inc. v. Steuben Foods, Inc.

In Nestle USA, Nestle filed an Inter Partes Review proceeding with the Patent Trial and Appeal Board (PTAB) in an attempt to invalidate Steuben’s patent.  Presumably, Stueben (Patent owner) alleged that Nestle (Alleged infringer) infringed on Stueben’s patent.  Steuben owns multiple related patents directed to systems for aseptic packaging of food products.

In a prior litigation, Nestle (Alleged infringer) appealed and won on the claim construction issue for the claim term “aseptic” on a different but related patent.  In that prior litigation, the court construed the term “aseptic” to mean “FDA level of aseptic.”  Nestle now argues that a term similar to “aseptic” in the current litigation should have the same meaning as in the prior litigation.  That is the extra wrinkle or issue in the case.  The issue is whether collateral estoppel applies to claim language not identical but similar to the prior case.  In the prior litigation, the court construed the term “aseptic” to mean “FDA level of aseptic.”  In the current litigation, Nestle wanted the court to adopt the same definition for the claim phrase “aseptically disinfecting.”

The Federal Circuit explained that it was clear that identical claim terms are subject to collateral estoppel.  The Federal Circuit went further to say that since collateral estoppel applies to the identity of the issues and similar claim terms or variants thereof are also subject to collateral estoppel.

The Federal Circuit vacated the Board’s construction of “aseptically disinfecting” and construed it to mean “FDA level of aseptic.”

Ramifications of collateral estoppel on patent prosecution

The complexity of collateral estoppel increases because collateral estoppel transcends the current patent when the patent is a part of a portfolio of patents.  For example, if a patent portfolio is being developed for a particular technology through the filing of one or more continuation, divisional and continuation-in-part patent applications, then the identical claim terms across the related patents that are subject to collateral estoppel.  If the patent owner litigated one patent against a defendant, then the arguments and words used to define the terms of the patent claim in that patent will be applied to the identical claim terms across the related patents in the family.

The ramification of the Nestle opinion is that the patent litigator needs to be cognizant of the ramifications of the arguments being presented and how it affects the patents in the portfolio for similar claim terms.

Moreover, if the patent family still has a pending patent application that is being prosecuted, then patent prosecutor needs to be aware of the litigation arguments.  One because the patent prosecutor needs to advise the examiner when arguments in litigation might be inconsistent with arguments presented during patent prosecution.  Secondly, because merely using different but similar claim terms will not avoid the negative effects of collateral estoppel against future patents acquired later on. The patent prosecutor may have to find a solution to use terms that can be described not as similar but significantly different to mitigate the effects of collateral estoppel.

Because of the application of collateral estoppel across the entire patent portfolio, patent prosecution of subsequent patent applications may benefit from a consideration of how to craft different claim terms to mitigate the negative effects of collateral estoppel that may arise if litigation ensues.

I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The post Collateral estoppel applies to similar claim terms in a patent family appeared first on OC Patent Lawyer.

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The written description requirement is stated in 35 U.S.C. 112 which recites that the “specification shall contain a written description of the invention.” The standard for the written description requirement is whether the disclosure or application reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.  A body of case law exists that informs the inventing community how to satisfy the written description requirement.  Hologic, Inc. v. Smith & Nephew, Inc. (Fed. Cir. March 14, 2018) is another example of how to reason through whether the written description is satisfied.  In particular, the Federal Circuit used both the text and drawings of the patent specification to show that the written description requirement was satisfied. They also reasoned that the structural assembly of the device could provide written description support of the claimed limitation.

Hologic, Inc. v. Smith & Nephew, Inc.

In Hologic, S&N (patent owner) presumably alleged that Hologic (alleged infringer) infringed on its patent, namely, US Pat. No. 8,061,359 (‘359 patent).  In response, Hologic initiated an inter partes reexamination in an attempt to invalidate the patent to avoid patent infringement liability.  Hologic is an appeal of the decision of the inter partes reexamination.

The ‘359 patent is a national stage U.S. patent application based on an earlier filed PCT application.  The PCT application was made public more than one year before the filing date of the patent application which matured into the ‘359 patent.  The claims of the ‘359 patent included claim terms which were not used in the earlier filed PCT application.

In the inter partes reexamination, Hologic argued that the earlier-filed PCT application is prior art to the ‘359 patent because the claims of the ‘359 patent do not have written description support in the earlier filed PCT application.  If true, then it would difficult or impossible to overcome the earlier filed PCT application in terms of novelty and nonobviousness because the earlier filed PCT application is nearly identical to the ‘359 patent.  The ‘359 Patent would then be invalid and S&N would avoid patent infringement liability.

Hologic argued that three claim terms of the ‘359 patent do not have written description support from the earlier filed PCT application.  Hence, the earlier filed PCT application is an invalidating prior art reference and not a priority document of the ‘359 patent.  The claim terms at issue were “light guide” “first channel” and “permanently affixed.”

Written description requirement satisfied for “light guide”

The claims of the ‘359 patent recited light guide but the earlier filed PCT application did not use the term light guide in the specification.  Because of this, Hologic argued that the earlier filed PCT application did not provide written description support for “light guide” and should be an invalidating prior art to the ‘359 patent.  The Federal Circuit disagreed.  Because the earlier filed PCT application disclosed a “fibre optic bundle” which is a type of light guide, the earlier filed PCT application provides written description support for “light guide.”  In other words, disclosing a species provides written description support for the genus.  Be aware to not describe the species so that the written description is narrow because that would tend to narrow the patent protection.

Be aware that this is not the same standard in many foreign patent offices.  In foreign countries, the patent office requires the disclosure to expressly recite the genus and not just rely on a disclosure of a species.

Many foreign patent offices also require an express description of intermediate generalizations.  For example, expressly describing the species and the genus of the species may not be sufficient when trying to claim an intermediate embodiment of the genus and species.  For example, disclosure of a fastener and a nut and bolt might not be sufficient to claim a clamp during patent prosecution in foreign jurisdiction because a clamp might be an intermediate generalization between the two extremes of the fastener (genus) and nut and bolt (species).

Written description requirement satisfied for “first channel”

In regards to the “first channel” claim language, the Federal Circuit found written description support in Figures 2 and 3 as element 6 and described in the earlier filed PCT application as a “light channel” or “viewing channel.”  US patent laws do not require the specification use the exact same terms in the claims.  Rather, written description support can be found in the text and the drawings of the patent specification.

Be aware that many foreign jurisdictions require a tighter correlation between the terms used in the claims and those found in the specification.

Additionally, in Hologic, written description support was also found in the claims of the earlier filed PCT application.  In this regard, the claims themselves provide written description support for themselves.

Written description requirement satisfied for “permanently affixed”

Written description support for this claim phrase was found in the drawings, the text but also in the way that the device was assembled and manufactured.  At one point in the opinion, the Federal Circuit stated that “the fact that viewing channel 6 is bookended by lens 13 and viewing tube 7 is evidence that these components form a unitary part that is not removable.”

Perspective based on Hologic for the patent prosecutor

One of the goals of patent prosecution is to avoid litigation issues to the extent that the patent prosecutor can anticipate them and avoid them.  This is often difficult to do because of time constraints, changes in the law and technology among other reasons.  In this sense, although the USPTO takes a liberal approach to the written description requirement as discussed above, foreign jurisdictions do not.  Plus, even if the U.S. patent laws take a liberal approach, patent prosecution should take a more conservative approach to the extent possible.  For these reasons, try your best to expressly describe those things which are implied by the drawings and the context to mitigate arguments that a patent is invalid because of lack of written description.  This is not always possible but should be the goal or standard for patent prosecutors.

I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

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Failure to properly mark a product with its patent number limits an infringer’s liability for damages. Infringers have the burden of production to initially identify products which the patentee failed to mark. The patentee then has the burden of proof to show that the unmarked products are not covered by the patent.

In Arctic Cat Inc. v. Bombardier Recreational Products Inc. (BRP) (Fed. Cir. 2017), the Federal Circuit sorted the respective burdens of the alleged infringer and the patent owner when the alleged infringer tries to limit damages based on the patent marking statute.  In particular, “an alleged infringer who challenges the patentee’s compliance with §287 bears an initial burden of production to articulate the products it believes are unmarked ‘patented articles’ subject to 35 USC §287.  … Once the alleged infringer meets its burden of production, however, the patentee bears the burden to prove the products identified do not practice the patented invention.”

Patent marking: General Background Information

Before moving the particular facts of the case and the ramifications of the case, here is general background information on patent marking.

Related Article
Everything you want to know about Patent Marking

Patent marking as codified in §287 provides a means by which a patent owner can constructively give notice to the public of its patent so that infringers are liable for damages regardless of whether the infringer actually knew about the infringement.  The patent marking statute serves three related purposes:

  1. Encouraging patentees to give public notice that the article is patented, and
  2. Aiding the public to identify whether an article is patented.

To comply with the patent marking statute, the patent owner must place a mark on the patented product with the right patent number or a webpage that leads one to a webpage with the right patent number.  If so, the public is given public notice of the patent.

Now, if the patent owner does not mark their patented products with the right patent number or just fails to mark the patented product with the patent number at all, then those unmarked patented products will have the opposite effect of leading the public to believe that the patented product is actually not patented.  In this event, §287 places a limit on damages that the patent owner can receive should he or she fail to mark its products.  Damages do not start to accrue not until the alleged infringer has received actual notice of infringement of the patent.

Now moving to the facts of this case.

Evidence provided to meet Burden of Production

In this case, the alleged infringer (Bombardier Recreational Products, Inc. (BRP)) provided evidence that the patent owner (Arctic Cat) failed to mark all of the patented products (i.e., Personal Water Craft) with the right patent number. The evidence provided by the alleged infringer to meet its burden of production included:

  1. a licensing agreement between the patent owner and Honda to practice the patent;
  2. 14 Honda products which were unmarked;
  3. Expert testimony that if BRP’s model was infringing on the patent so would Honda’s product.

Thus, the alleged infringer argued that the patent owner should not be awarded damages at the start of the infringement via constructive notice under §287 but only after BRP received actual notice of the infringement of the patent.  Because of the evidence presented by the infringer, the burden switched to the patent owner.  The patent owner now has to prove that the Honda products were not covered by the patent, and thus the identified products which were not marked did not need to be marked with the patents at issue in this case.

Minimum needed to meet Burden of Production

In making its holding, the Federal Circuit specifically stated that they are not determining the minimum showing needed to meet the initial burden of production by the alleged infringer.  They made clear that  in the facts of this case, the alleged infringer did meet its burden of production.

Because the Federal Circuit did not provide a standard for how the alleged infringer can meet its initial burden of product, the next issue for the lower courts is to render opinions as to what the standard might be.

Does the alleged infringer need only identify the models which were not marked?  Can they merely list all of the patent owner’s models that might be covered by the patent and should have been marked regardless of whether it was marked?  These are all questions to be answered in future litigation.

Patent marking versus false patent marking
Related Articles:
Penalty for False Patent Marking
Liability for third party false patent marking
CAFC defines competitive injury for false patent marking

On the other hand, if a narrow interpretation of the patent claims is taken so as to avoid liability for false patent marking, then some of the patent owner’s products that should be marked, will not be marked and the patent owner would have failed to comply with the patent marking statue.This case also raises issue of false patent marking under §292.  On the one hand, if a broad interpretation of the patent claims is taken, then some of the patent owner’s products that should not be marked, will be marked with a patent number.  In this scenario, the marking of the unpatented product will constitute false patent marking and comes with its own set of liabilities for the patent owner.

Fortunately, the case law relating to patent marking appears to allow for some of the patented product to be unmarked yet still comply with the patent marking statute as long as patent marking has been “substantially consistent and continuous”. American Medical Systems, Inc. v. Medical Engineering Corporation (Fed. Cir. 193).  In Arctic Cat, the products which the alleged infringer asserted were not marked with the proper patent number were the products of the patent owner’s licensee.  In that case, the court recognizes that it might be hard for the patent owner to police all of its licensee’s products and thus uses a “rule of reason” as to whether the patent owner made reasonable efforts to ensure compliance with the marking requirements.  This is one of the issues to be decided on remand.

On the other hand, the false patent marking statue requires an intent to deceive the public.  If you have a good faith belief that the product is covered by the patent, then that fact would mitigate the changes that you would be liable for false patent marking.  If you have your patent attorney review the product to be marked and the patent(s), he or she can make a determination as to whether the product is covered by the patent(s).

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In order to ensure maximum compensation for any infringements on your patents, your products should include a clear patent marking to show that they are protected. Let’s dive-in:

Patent marking provides constructive notice to the public of your patent.  Constructive notice is given to the public of your patent by affixing the patent number on the patented product.  By doing so, alleged infringers are liable for patent infringement as soon as possible even if they don’t have actual knowledge of your patent. This article focuses on the patent marking requirements for the United States.

Each type of intellectual property, such as patents, copyrights and trademarks, has its own specific requirement for marking. For copyrights, the Copyright Office publishes a Copyright Notice Circular 3, which explains the requirements for copyrights in regards to marking. For trademarks, the marking requirement is explained within the Trademark Manual of Examining Procedure Section 906.

How do I comply with the patent marking statute?

The patent marking statute explains how to comply so that you are entitled to the benefit of the patent marking statute.

The patent marking statute provides you with two different methods to comply with the law. The first method I refer to as the “traditional patent marking.” This patent marking method requires that the product or its packaging clearly identify the patent(s), which cover the product. The second method I refer to as “virtual patent marking.” This method was created and enacted in 2013 with the America Invents Act. Virtual patent marking requires that the product or its packaging clearly identifies a web address that would allow a person to find the patent(s) that cover that specific product.

I generally recommend virtual patent marking over the more traditional method of patent marking because of its advantages, which I have listed below. If you do not have a website, or your product will only be covered by one patent, you might then consider using the traditional patent marking method.

Here are the necessary steps to comply with the patent marking statute. Always double-check this information with your patent attorney since laws can change, and courts might construe the patent marking statute differently in the future.

Step 1: Decide between a traditional patent marking or a virtual patent marking.

The traditional patent marking method places all of the patent number(s) directly on the product or, when that is not feasible, on its packaging or label. The problem with the traditional marking method is that the patent portfolios may grow, and patents expire over time. The product, packaging or label will need to be updated continually each time a patent is added or removed. Oftentimes, this was quite burdensome because it affects the manufacturing and assembly process for your product. If your product is covered by only one patent, it might be easier to use this traditional patent marking method since there would be no need to change the patent marking in the future..

In contrast, virtual patent marking is a hybrid system because the product is marked with an internet webpage, which displays the associated patent number(s). For example, the product itself can be marked with “Pat.: www.[domainname.com]/patents.” If the product cannot be marked with the internet webpage, then its packaging or label would include a reference to the internet webpage. The patent information placed on the product, packaging or label will remain the same regardless of what happens to the patent portfolio in the future. The patent information marked on the product would lead a person to a patent webpage that would contain the up-to-date status of the patent number(s) associated with the patented product.

The obvious benefit of virtual patent marking is that the manufacturing and assembly processes for your product never have to change when your product goes from being patent pending to patented, when your patent expires, or when more patents that cover your product are added in the future. The only thing that needs to change is the content on the patent webpage so that it includes the updated patent information. You do not need to change your product or its packaging in response to changes in the patent portfolio.

For this reason, I generally recommend virtual patent marking rather than the more traditional method of patent marking unless you do not have a website, or you will only have one patent for your product.

Step 2: For traditional patent marking, follow the format as defined in the statute.

For traditional patent marking, the patent number is placed on the product, packaging or label. See patent marking examples below.

ProductPatent marking example

The law dictates the exact words that you need to use to comply with the statute. You must use the term “Patent” or “Pat.” followed by the specific patent number. Remember that for design patents, the letter D must be included with the number. Here are some patent marking examples.

For Utility PatentsFor Design Patents
Patent: 7,654,321Patent: US D654,321
Pat.: 7,654,321Pat.: US D654,321

Some companies prefer the verbiage “This product is covered by U.S. Patent No(s). [insert patent number(s)] and other pending applications and foreign patents.” However, the statute does not require that you use this verbiage.

Step 3: For virtual patent marking, follow the guidelines as defined in the statute.

For virtual patent marking, the statute also states that the product must have the words “Patent” or “Pat.” followed by the internet webpage (not the patent number(s)) where a person can look up and find which patent(s) cover the product.

The patent marking statute requires you to put the webpage address on the product. You can put the patent webpage address on the packaging or label when it is no feasible to put it on the actual product itself. For this reason, I recommend that you make the internet address as short as possible.

The product, packaging or label needs to be clearly marked using the following format:
Patent or Pat. with the internet address such as:

Patent: www.example.com/patent

Or

Pat.: www.example.com/patent

The patent webpage needs to accessible to the public without requiring a fee or payment, and it cannot be placed behind a click-through agreement. For example, e-cigarette sites might require the user to identify themselves as being over 18. The patent webpage needs to be accessible without having to click through this type of warning or limitation.

On the internet webpage, the statute states that you must associate the patented article with the patent number. Put simply, the internet user must be able to make the association between the product and the patent number(s) easily. Don’t be creative; just get straight to the point. This is an instance where you need to be straightforward and as transparent as possible. You are trying to satisfy a statutory requirement, not optimize the patent webpage for search engines.

The statute has not been litigated at this point, so there is no magic format that the courts have sanctioned to define for us how to effectively associate the patent number and the patented article.

I recommend that you make the patented article easy to locate on your webpage. Anyone who is holding your product should be able to look at the product and find the patented article on the webpage quickly and without any significant effort. You can use a picture, product identification number, product number or any other method as long as the internet user can locate the patented article on the patent webpage for the product. You can use one or more product identifiers to help the internet user associate the product and the patent number(s) if that would help.

Next, the internet user should also be able to find the associated patent number(s) once they locate the product on your webpage.

The following is a sample virtual patent marking example for a patent webpage that might live on your website or a patent marking website.

Product NumberPatent number(s)
SKU: XYZAPat.: 123451
SKU: XYZBPat.: 123452
SKU: XYZCPat.: 123453
SKU: XYZDPat.: 123454
Patent webpage examples for virtual patent marking

These URLs are quite long, and it would be difficult to place such a long URL on a small product. It would also be aesthetically displeasing for the potential customer. A solution would be to register the shortest domain possible and have that domain forward internet users directly to your patent webpage on your website. It is also possible to have the shortest domain possible direct internet users to a webpage that is hosted by a virtual patent marking online service.

Step 4: Congratulations! You have now provided virtual constructive notice of your patent to the world.

By complying with the patent marking statute, the patent holder is automatically providing constructive notice of the patent to the public. The product, packaging or label now leaves a trail from the product to the patent via the webpage.

What are the advantages of complying with the patent marking statute?

Patent marking refers to a law that allows you, the patent owner, to collect damages from an alleged infringer even if they did not possess actual knowledge of your patent. When you comply with the patent marking statute, the law states that you have given the world constructive notice of the existence of your patent. Therefore, the alleged infringer should have known about your patent and are liable to you for damages even when you cannot prove that they actually knew about your patent. The alleged infringer is responsible for conducting thorough research to avoid infringing on other people’s patents.

Put simply, the benefit of compliance of the patent marking statute is that it allows the patent holder to impose patent infringement liability on the alleged infringer as early as possible and to maximize potential damage awards even if the infringer does not actually know about your patent.

If you are reading this, you probably were awarded a patent recently. You may also be interested in maintenance fees, policing the market for infringement on Amazon and eBay, licensing, etc.

What is the Patent Marking Statute and how it encourages compliance

35 U.S.C. § 287(a) states:

Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice. (emphasis added).

The last part of the patent marking statute explains the consequences if there is a failure to mark a product correctly with the patent number. Such failure to mark will mean that you have failed to give the public constructive notice of your patent. This means that you also give up your right to collect damages unless evidence is shown that the alleged infringer was notified (i.e., actual notice; e.g., cease and desist letter) of the infringement. The law presupposes that the alleged infringer could not have found out about your patent because your product would not have provided any indication that your product was patented. Hence, even if the alleged infringer did not look for your patent(s) on your products, they are not liable for patent infringement until they have actual knowledge of your patent.  In this way, the law encourages compliance with the patent marking statute by causing you to forfeit your ability to collect damages if you fail to comply.

Implied Benefits of Patent Marking for the patent holder and competitors

Marking your product with the proper patent number to comply with the patent marking statute is beneficial in two important ways for the patent owner and two significant ways for competitors.

Two benefits to the patent owner

For the patent owner, the first benefit is that, as discussed above, it gives you, the patent owner, the right to seek damages or redress for the infringement as early as possible. Liability for patent infringement can occur as soon as your patent application matures into a patent, which is referred to as the issue date of the patent. This date is located at the upper right-hand corner of your issued patent.

The patent marking statute allows you to give constructive notice to the public, including any alleged infringers, about the existence of your patent. This is similar to a recordation of a transfer of ownership on a house, which gives the public constructive notice of that transaction. Even if the public is not actually aware of it, they are legally responsible for knowing about the transaction so that they do not infringe on the new owners’ rights. The same is true with the patent marking statute. Even if the alleged infringer did not actually know about the issued patent, they are responsible for researching that information.

Constructive notice is based on the legal principal that:

Ignorantia juris non excusat or Ignorance of the law excuses not

If someone could avoid liability for their actions by merely claiming ignorance, everyone would do exactly that.

The second benefit for the patent owner is that it eliminates the potential for a declaratory judgement action against you. This protects you from getting dragged into litigation. If you had to give actual notice, such as a cease and desist letter, to every alleged infringer to impose liability of patent infringement, that notice might then be interpreted as a threat of litigation. The law allows those who are being threatened with litigation (i.e., alleged infringer), the option to be the first to go to court and ask the court to decide the rights and responsibilities between the parties.

By providing constructive notice of the patent instead of an actual notice of infringement, you are not threatening any one with infringement or a lawsuit. You are passively notifying the world of your patent.

Two benefits to competitors

For competitors, the first benefit is that it helps them to mitigate potential patent infringement liability. It isn’t a perfect system, but it works. Patent marking gives competitors a way to find information as to what patents might be out there so that they can avoid infringement. If you find a patent number on a product similar to your product, you may need to investigate to determine if your product will be potentially infringing on that patent.

One of the recommendations that I provide to new inventors who want to secure a patent on their product is to look for other products that serve a similar purpose. If they find a similar product, I tell them to look for patent markings on those products. This is a way to learn about the patents of their competitors and issues that they might need to deal with if they want to launch their own competitive product.

Side Note: Another way to find patents associated with a product is to conduct a simple Google search. Just type in PATENT and [PRODUCT NAME] in the google search engine. If nothing is found, you might then consider purchasing the product to inspect the labels and product packaging and literature for any patent marking.

The second benefit to competitors is that it gives them a sneak peak into how broadly the patent owner is construing their patent claims especially when the patent claims do not necessarily match up closely to the product.  This information is only an indication because in my opinion, anecdotally, most patent owners take a liberal approach to the breadth of the claims of their patents. Nevertheless, it may provide valuable information.

Frequently Asked Question for patent marking Why do I recommend virtual patent marking over traditional patent marking?

Put simply, virtual patent marking does not interrupt the manufacturing and assembly process in the future because the patent webpage that is printed or placed on the product, packaging or label does not need to change over time. When more patents are acquired that cover the product, no change to the product, packaging or label is necessary. Only the patent webpage content will change to reflect the newly acquired patent(s).

What happens when a patent expires? You should remove the patent number on the patent webpage. To do this under a traditional patent marking method, you might have to make new molds. For example, a few years back, Solo Cups used the same injection molds for their lids for a period of time longer than the life of their patent. They were sued for false patent marking. They did not remove the patent number from their lids after the patent expired because the patent numbers were a part of the mold, and removing the numbers would have meant making new molds. They decided that they did not want to incur that expense, but they ended up having to possibly face legal fees to deal with the false patent marking lawsuit instead.

With virtual patent marking, no new molds would have been necessary. You can just change the information on the patent webpage when the associated patent expires.

Side Note: Virtual patent marking was recently enacted, and there has been little litigation to provide detailed guidance as to what would be considered sufficient or insufficient association between the patented article and the patent number.

Do you need to have a record of when the patent number and patented product was first associated on the patent webpage? Do you need to keep record on a daily, weekly, monthly or yearly basis to show that the association was always there and available to the public?

I would say yes to both questions as a precaution. The reason is that it might be unfair to the public or your competitor to leave the patent webpage blank and only associate the patent number and the patented product right before litigation. Similarly, it would be unfair to put up the patent webpage but take it down until such point as litigation occurs. These would not serve the overall goal of constructive notice to the public. On the other hand, the statute provides for no requirement to keep records regarding your patent webpage. I suggest doing so for your own protection in the case of future litigation.

These are potential areas where one might legally accuse the patent owner of not complying with the patent marking statute by not providing sufficient constructive notice.

I would take a conservative approach and, to the extent that is reasonable, take regular snapshots of the patent webpage and keep those in your records. You could have your web developer take pdfs of the webpage and save it to the website hosting server on a regular basis. Similarly, you could have the image emailed to someone for safe storage and retrieval later on during litigation if necessary.

What are virtual patent marking online services?

Online companies exist that will maintain your patent webpage. Supposedly, they will also help you to comply with the patent marking statute. I have not researched them and have never used any of them.  You can find several by typing “virtual patent marking online services” into www.google.com. Here are a few examples, but please be aware that these are not endorsements.

Do I really need to comply with the patent marking statute?

No. However, if you do not comply, you forfeit the benefits of the statute. The alleged infringer is no longer liable for any damages to you until the alleged infringer is provided actual notice of your patent.

Additionally, you risk the possibility of being dragged into court by the alleged infringer through a declaratory judgement action when you do provide actual notice of the infringement via a cease and desist letter.

Patented method claims are an exception to the patent marking requirement. For patented methods, you can accrue damages prior to actual notice to the alleged infringer even without any patent marking.  In many cases, patented method do not need to be marked with the patent number. A part of the inherent problem of marking a method as patented is that there is no way to mark a step or action with a patent number.

However, that is not true all of the time. In prior cases, an alleged infringer was not liable for damages that the patent holder incurred before actual notice was..

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Licensing Termination Provisions for Under-performing License Agreements

After securing a patent on an invention and you are making money, another company may want to use the patented technology in their product or service. To give a business the right to use the patented technology, the patent holder and the business enter into a contract for the right to use the intellectual property of the patent holder.  The relationship might start off well but over a period of time with the pressures of business, the patent holder or the licensee may want to get out of the license.  Because the patent holder may be dissatisfied with the licensee, the patent holder must negotiate the terms of the agreement so that the patent holder can terminate license when that happens.  We will explore licensing termination provisions which would help the patent holder get out of the license when it is not beneficial.

First off, why would a patent holder want to license the technology out to someone else if they are using the patented technology in its own products?

In many instances, I would agree.  Why would you want to let a competitor incorporate your patented feature into their product offering?  You would think that there would be very little incentive for a patent owner to allow others to compete against them in the marketplace.  The theory would be that every widget that the competitor sells is one less widget that the patent holder could have sold and made a profit.

Two benefits for extending a license

Here are two reasons the patent owner may want to license the patented technology out to others such as cross-licensing.

  1. Expand current market share: The inventor has started to market and manufacture the patented product but is unable to fully penetrate the market. The inventor may want to collaborate with another company that might have a better distribution model or some specialized knowledge to bring revenues to the next level and penetrate the market.  The potential licensee may have special know-how that is useful to the patent owner that will allow them to expand their market share.  In this instance, it may be worthwhile to allow others to license out the patented technology.
  2. Different niche: If the potential licensee wants to utilize the patented technology in an unrelated niche field from that of the inventor.

Typically, an inventor would get a patent in their niche field.  However, the goal of patent protection is, yes, to secure patent protection in the inventor’s niche field but over the long run to broaden the scope of patent protection into other niches or what we refer to as fields of use.

To give you an example, if the inventor patented a feature that goes on a desktop computer, the goal would be to secure a patent for the feature as it would be incorporated into a desktop computer.  However, a good patent strategy would be to expand that patent protection by building a portfolio of patents to include laptops, smartphone, etc.  Since the inventor is not in these other niches, a possible win-win situation would be to license and collect royalties from multiple licensee from diverse niches while still selling widgets in the inventor’s own niche.

Why is it important to negotiate licensing termination provisions to help you exit a license agreement?

Okay, now that possible reasons for extending a license has been discussed, the thought process of reviewing the license agreement will be discussed.

An important structural aspect of a license agreement is the “exit.”  There is no clause or title referred to as the exit but it is important to learn about how to set up the contract through the licensing termination provisions so that the patent holder can terminate the agreement and exit the deal.  After all, the patent owner wouldn’t want to be bound by the deal if it isn’t beneficial.

The patent owner and the licensee wouldn’t want to be bound by the deal if it is not beneficial to either one of them.  If the term of the license agreement is five years but one party fails to deliver on results, then the other party would want to be able to exit the deal.  During negotiations, the patent owner may puff up the benefits of the technology and the licensee may exaggerate its ability to market the invention.  The puffery and the exaggeration increase the expectations of the parties as they enter into the license agreement.  This sets up the relationship for failure because one or both parties won’t be able to live up the expectations that they set up for themselves.  One or both parties may want to exit the deal and terminate terminate the agreement.

How to build in the exit in a license agreement?

A good place to start is the termination or term of the license provisions.  This section will provide the conditions under which the parties can terminate the agreement.  Thinking in terms of worst case scenario is a good idea when reviewing a license agreement.  If the term of the license agreement is five years, then the patent owner needs to consider whether it is acceptable to have this entity as a licensee during the entire five year period.  For example, let’s say that the licensee exaggerated its capabilities but only delivers meager results during those five years.  Would that be acceptable?  Would it be acceptable for the patent owner to be bound by the license agreement for the full five years?

If the license agreement is exclusive to one licensee and the licensee is not performing as claimed during the negotiation process, then that would be a bad deal because the patent owner would have to accept meager results and would not be able to license the patented technology out to others because of its exclusivity.  The agreement should have a way that the patent owner can terminate the agreement before the five years is up.

Nonexclusive agreement doesn’t necessarily help

The patent owner might think that setting up the license agreement as a non-exclusive license so that the patent holder can extend multiple licenses might be the way to mitigate being bound by a nonperforming license.  However, that might not be the case.  If the patent owner found another licensee but that licensee wanted an exclusive, then the deal cannot be made because the patent owner cannot get out of the non-exclusive license and cannot extend an exclusive license.

The non-exclusivity of the license agreement only allows the patent owner to extend additional non-exclusive licenses.

Two provisions for negotiating in an exit to the license agreement

Two provisions can be written into the license agreement which require the licensee to make the licensor or patent holder satisfied with the license are performance milestones and a minimum yearly royalty.  If these requirements are not met by the licensee, then the licensee would be in breach of the agreement.  The contract would allow the patent holder to provide notice that the license will be terminated.  The patent holder can exit the agreement before the full term of the agreement.

Performance milestones

The first is performance milestones.  These are acceptable performance markers that make the agreement attractive in terms of whether the patent owner would want to stay in the agreement.  For example, performance milestones may be a series of concrete steps that the licensee must take within a certain period of time.

In the beginning, the concrete steps may be to:

  1. prepare a business plan,
  2. build a website,
  3. set up manufacturing for the patented technology,
  4. get three distributors or
  5. whatever steps the parties agree are reasonable.

As time progresses, the performance milestones may turn into minimum yearly sales requirements.  If the performance milestones are not met, the terms of the agreement should allow the patent holder to give notice to the licensee and terminate the contract.  The performance milestones can mimic those activities that are required for the licensee to build up sales.  If the licensee is not doing the basics, then that would frustrate the patent holder.  The patent holder would naturally want to terminate the license.

Minimum yearly royalty

The second is referred to as a minimum yearly royalty.  The minimum yearly royalty is a minimum dollar amount that the patent holder would like to be paid for the licensee to tie up the patent rights of the patent holder.  The minimum yearly royalty is the royalty that the licensee is required to pay even if the royalty calculations based on sales fall below the amount of the minimum yearly royalty.  By paying the minimum yearly royalty, the licensee forces the patent owner to stay in the agreement if the licensee believes that the drop in sales will go back up in future years.  The licensee doesn’t have to lose the rights granted under the license just because of a bad year or missing one of the performance milestones.

The minimum yearly royalty should be the amount that the patent holder would want to make to be satisfied with the contact.  In the event that the licensee is not able to generate enough sales to exceed the minimum yearly royalty, the licensee must still pay the minimum yearly royalty or the patent holder has the option to terminate the license. The patent owner could exit the agreement if and when the minimum yearly royalty is not paid.   The minimum yearly royalty is a minimum benefit that the patent owner is willing to accept to maintain the license.

Conclusion

Many different terms of the agreement needs to be negotiated when reviewing a license agreement.  A quick search on the internet will uncover various lists produced by other attorneys regarding specific provisions and clauses.  However, the performance milestones and the minimum yearly royalty should be negotiated into the agreement.  Otherwise, the patent holder risks the possibility that they would be required to stay in the agreement.

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All business owners think that their trademarks is unique and easily recognizable and may apply for a “trademark” to protect their logo and branding. Trademark protection is not available, however, for marks that are considered to be descriptive unless the mark is known as a trademark and not just a way to describe the goods or services. When the trademark application is first filed, the application will request registration on the principal register.  However, the USPTO may refuse registration of the mark on the principal register and inform the business owner that the mark can be registered on the supplemental register.  This blog post will discuss the pros and cons of registering a trademark on the supplemental register and conditions under which one might do so.

Supplemental register versus principal register

The United States Patent and Trademark Office (USPTO) maintains two different lists that identify registered trademarks in the United States.  The lists are referred to as the supplemental register and the principal register.  The principal register is the preferred list to be registered on for a proposed mark because of the significant benefits to the trademark owner.  The supplemental register has some benefits but they are not as significant as the principal register, as will be discussed below.  Initially, a trademark application should not request registration of the trademark on the supplemental register.  Registration should be sought on the principal register.  However, if the mark is descriptive, then the examining attorney may suggest registration on the supplemental register.  The issue is whether the trademark applicant should request registration of the trademark on the supplemental register instead of the principal register given that the principal register provides significantly more benefits.

Supplemental register is for non-distinctive trademarks

When reviewing a trademark application, the USPTO will refuse to register a trademark on the principal register if it deems the mark to be “merely descriptive” of the goods and services of the applicant. If this occurs, counsel may suggest applying to the Supplemental register, which is reserved for marks that are descriptive, but not inherently distinctive to be recognized as a trademark.

Option to amend or argue acquired distinctiveness

If a descriptiveness refusal is made, then the applicant has two options.

  1. The first option is to amend the trademark application to request registration on the supplemental register instead of the principal register.
  2. The second option is to argue that the proposed mark is actually suggestive[1], not descriptive of the goods and services. If successful, the mark would proceed to registration on the principal register.

Assess the likelihood of overcoming the descriptiveness refusal

To decide whether to take option 1 which would provide less benefits or option 2,an assessment should be made as to the likelihood of overcoming the descriptiveness refusal.  The descriptiveness refusal could be overcome by presenting:

  1. arguments to the examining attorney that the mark is suggestive and not descriptive; or
  2. evidence that the proposed mark has acquired distinctiveness which means that the public now recognizes the mark as a trademark of one person or entity.

If the chances of overcoming the descriptiveness refusal is low, then the applicant should strongly consider registration on the supplemental register.  The alternative is to spend more money with a low probability of success. If the applicant does request registration on the supplemental register, then it is important to understand what the applicant is giving up via registration on the supplemental register.

Benefits of principal register not granted to supplemental register

The following are benefits of registration on the principal register which are NOT given to marks registered on the supplemental register.  Registration of the mark on the principal register receives the benefits of prima facie or “on its face” evidence of the:

  1. validity of the mark;
  2. registration of the mark;
  3. registrant’s ownership of the mark; and
  4. registrant’s exclusive right to use the registered mark;

in commerce on or in connection with the goods or services specified in the registration.

Also, registration of a mark on the principal register has the option of becoming incontestable after five years of substantial and exclusive use.  An incontestable mark is stronger because such status limits the ways that the validity of the trademark registration can be attacked.

The supplemental registration does not provide the benefits mentioned above.

Supplemental register – Pros

Registration on the supplemental register does provide some benefits to the trademark owner.  For example, registration on the supplemental register:

  1. prevents registration of another mark on the principal and supplemental registers if a likelihood of confusion exists with the mark registered on the supplemental register;
  2. the option to refile a trademark application and request registration on the principal register later usually after five years of substantial and exclusive use the mark in commerce to show acquired distinctiveness
  3. allows the trademark owner to use the circle R ®; and
  4. the option to file a suit for infringement in federal court instead of state court.

A significant benefit is number 2 above.  Put simply, registration of the mark on the supplemental registration is a road to registration on the principal registration is everything goes well in the future.

Supplemental register – Cons

A significant downside of registration of a mark on the supplemental register is that another entity could acquire state trademark rights or common law trademark rights in other parts of the United States where the trademark owner is not using the mark.  This other entity’s use of the same or similar mark would give that entity senior rights to the trademark applicant.  This situation would be detrimental to the trademark applicant’s ability to secure registration on the principal registration later on.

One must keep in mind that registration of the proposed mark on the supplemental register does not confer trademark rights to the trademark applicant.  It merely prohibits others from registering a confusingly similar mark on the principal and supplemental registers.  This benefit is described in number 1 above.

Arguing against descriptiveness-When to incur costs

If, at the time of receiving the descriptiveness refusal, the applicant has evidence that the proposed mark has acquired distinctiveness[2], then it is generally beneficial to incur the cost to submit the evidence than to just request registration on the supplemental register.  Building brands takes considerable time and money and securing registration on the principal register now may be worth the cost as opposed to risking the possibility of not being able to do register the mark in the future.

If such evidence of acquired distinctiveness is not available yet, then the next question is whether it is worthwhile to file arguments to show that the mark is not descriptive but suggestive.  If successful, the mark would be registered on the principal register and receive all of the benefits described above.  It depends on assessment of the likelihood of success.

The factors involved in deciding which route to take is dependent on many factors.  Those factors include:

  1. the available funds of the trademark applicant to prepare and submit such arguments
  2. the likelihood of successfully convincing the examining attorney that the mark is suggestive
  3. the risk tolerance of the trademark applicant that another entity might acquire state or common law trademark rights, and other factors

Route if no funds are available

If the trademark applicant does not have the money to prepare and submit arguments or present evidence of acquired distinctiveness, then the trademark applicant should request registration on the supplemental register.  After five years of substantially exclusive and continuous use, then the trademark applicant may refile another trademark application and request registration on the principal register.  The goal is to prevent others from registering the same or similar mark on the principal register which keeps the principal register clear for registration of your mark after an extended period of time has elapsed and the mark has acquired distinctiveness.

When dealing with trademark issues, it’s always best to seek the guidance of an attorney experienced in trademark law. We can review your trademark, application, or USPTO refusal and work with you to determine the course of action suitable for your business.

End Notes:

[1] Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of the goods or services.  A suggestive mark is different from a descriptive term, which immediately tells something about the goods or services.  For example, a suggestive mark is SPEEDI BAKE for frozen dough because it only vaguely suggests a desirable characteristic of frozen dough, namely, that it quickly and easily may be based into bread.  TMEP 1209.01(a).

[2] Acquired distinctiveness is also referred to as secondary meaning.  Acquired distinctiveness means that even though the descriptive mark is primarily perceived as describing the goods and services, consumers have come to recognize the mark as serving a second meaning, namely, as a moniker to identify the source of the goods and services.  Acquired distinctiveness may be shown by submitting evidence of use of the mark for the past five years substantially exclusive and continuous.

I invite you to contact me with your trademark questions at 9949) 716-8178. Please feel free to forward this article to your friends. As a Trademark Attorney helping clients in Orange County, I welcome your inquiries to see if we are good fit.

The post Trademark registration on the supplemental register: Pros and Cons appeared first on I OC Patent Lawyer.

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Apple iPhone Design Patent

The drawings for a design patent application is the most important part of the design patent application.  The drawings define the scope of protection afforded under the design patent.  The drawings for the design patent application are not designed to tell a story as in the drawings for a utility patent application.  Rather, because a design patent protects the ornamentation of a product, it is primarily concerned with showing the protected design of the product.  Simply put, the drawings should show the look of the product it is protecting.

Keep the End Goal in Mind when Preparing Drawings for a Design Patent Application
  1. Show the unique design

The end goal for the drawings of a design patent application is to show the unique design of the product.

  1. Focus only on the unique portion

The focus of the drawings should be only on the unique portion of the design.  If the overall design of the product is unique, then the drawings should show the overall design of the product.  If more of the product is shown than the unique portion, then doing so will unduly narrows the scope of protection granted by the design patent.

In general terms, if a bicycle wheel had a unique design and the bicycle manufacturer wanted to seek a design patent on the bicycle wheel, then to add the frame, handlebars, brakes, etc. which are not related to the uniqueness of the bicycle wheel limits the scope of protection given to the design patent.

For a competitor to infringe on a bicycle wheel design patent that also shows the other components of the bicycle, the competitor would have to copy the design of the bicycle which is peripheral to the unique bicycle wheel.  In contrast, if only the bicycle wheel is shown, and thus claimed in the design patent, then as long as the competitor’s bicycle wheel copies the unique design elements of the patented bicycle wheel, then the competitor is liable for design patent infringement liability.

When do you prepare the drawings for the design patent application?

As indicated above, the drawings for the design patent application must represent the unique portion of what one wants to protect.  In this sense, the drawings for the design patent application should be prepared after you are settled on the design.  The drawings for the design patent application should not be prepared early in the product development cycle.  The reason is that the design might change at any time before product launch.  If so, the drawings might not be useful for filing of the application.

In general, the drawings should be prepared as close to the product launch as possible.  It could be filed earlier such as after machining the plastic injection molds or some other financial investment that locks the design in place.  Why?  Because after the molds are made, it would be financially difficult to justify a change in the design.  It also probably means that the management has settled on the design and there will probably be no more changes.

Patent Rules

Patent applicant’s must comply with the Code of Federal Regulations (C.F.R.).  They are referred to as the “rules.”

Rule 152 (37 C.F.R. 152) states: “The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design.”

Patent Guidance

From the rules, the United States Patent and Trademark Office (USPTO) produces guides to implement the rules.  To this end, the USPTO has published a Design Patent Application Guide (“Guide”).  The Guide discusses all aspects of drawings for design patent applications.  For example, the Guide explains “The Views” to be shown in the drawings and use of “Broken Lines.  These are important aspects of the drawings among other things.

In practice, the common views that are shown in a design patent application is one perspective view of the product.  The product can be placed in its environment but the environment should be placed in broken lines.  By environment, we mean the context of the unique design.  In the bicycle wheel example above, the bicycle frame, handle bars, etc. would be considered the environment of the unique bicycle wheel.

Broken lines represent the environment and do not show or reflect any part of the design or ornamentation to be protected.  Solid lines on the other hand show features of the unique design and define the ornamentation or design to be protected.

Along with the perspective view, six other views are commonly shown, namely, the front view, the rear view, the top view, the bottom view, the left view and the right view.

More views than those described above may be needed.  Simply put, there must be a sufficient number of views to show all of the surfaces to be protected by the design patent.

You can also find out more information about design patents in Chapter 1500 of the Manual of Patent Examining Procedure.

The Guide and the MPEP will be the best resources for anyone interested in the mechanics of preparing drawings for a design patent application and drafting the text portion of the design patent application.

Hire a Patent Attorney, Patent Drafter, or Do It Yourself

The USPTO provides great resources for those that might want to learn how to prepare and file a design patent application.  However, in my humble opinion, those resources are insufficient to learn how to protect the design.  Oftentimes, the design patent appears simple and it really is simple to prepare but because of certain nuances, it is quite tricky to secure broad design patent protection unless you hire an experienced patent attorney.

In my experience, bypassing the patent attorney and going direct to a patent drafter will not be useful to the do-it-yourself inventor.  The reason is that the patent drafters cannot provide advice on what to protect and how to protect it.  The do-it-yourself inventor must give the drafter instructions on which views to show and which portion of the product is to be in solid lines and which sections are to be shown in hidden lines.

Tip when filing corresponding utility and design patent applications

Sometimes corresponding utility and design patent applications are filed on the same product.  Design patents protect the ornamentation, whereas, the utility patent protects the functional features of a product.  In this regard, the design and utility patents protect different things.  Hence, both can be filed to protect a product.

One of the issues with filing both a utility and design patent application on the same product is that it is tempting to utilize the same drawings for both the utility and design patent applications to save on drawing costs.  However, it may be prudent to incur additional costs so that the utility drawings are not the same as the design drawings, and vice versa.  The design drawings cannot protect functional features.  As such, if the utility drawings are used in the design drawings, then there may be an implicit admission that the drawings of the design patent application are functional in nature and may limit the protection in the design patent because design patents cannot protect functional features.  Conversely, the use of the design drawings in the utility patent may be an admission that the features shown in the utility patent are ornamentation and not really functional in nature, and thus limiting the scope of protection of the utility patent.

I invite you to contact me with your patent questions (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The post Preparing drawings for a design patent application appeared first on I OC Patent Lawyer.

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