• Draw the future

Submitting Prior Art in Another’s Patent Application

There are various mechanisms for submitting relevant prior art references in an attempt to defeat a competitor’s patent or patent application.  The America Invents Act changed and added these mechanisms.  For pending applications, a protest or third-party submission can be made.  For an issued patent, one can file an inter partes review or a post-grant review.  There are other niche mechanisms that can be used as well.

Today, I’ll review the protest as a method for submitting art in another applicant’s patent application.  A protest against a pending application can be filed by any member of the public.  A party obtaining knowledge of an application pending at the Office can file a protest against it and can call attention to any facts within their knowledge which, in their opinion, would make the grant of a patent on the application improper.

There are specific requirements for filing a protest, which include serving the protest upon the applicant to provide them with notice.  The protest must also include a number of disclosures, including a listing of relied-upon information such as patent and publication references, an explanation of the relevance of the references, copies of the references, and translations of the references if necessary.

Timing is critical for a protest.  A protest must be filed before the application is published or before a notice of allowance is issued in the case, whichever is earlier.  Practically, a protestor should submit the protest as soon as possible after becoming aware of the existence of a pending patent application, which will provide the Patent Office the best opportunity to review the protest completely.

Once a patent application is published, the filing of a protest can only be made with the express written consent of the applicant.  However, a protest can be submitted after a notice of allowance, but will likely not be entered.  If it sets forth references which clearly anticipate or render obvious at least one of the claims, it may be considered.  A protest will not be considered if it provides information which is merely cumulative.

The involvement of the entity filing the protest ends after filing the protest – they are not informed or updated regarding the ongoing status of the case.

Filing a protest should be carefully considered.  There are strategic consequences for filing a protest that may dissuade the protestor from filing.



Revival of a Patent Application under the Unintentional Delay Standard

A post I wrote about five years ago discussed how to revive an abandoned patent application. Revive PatentAt that time, there were two standards for reviving an application: it could be revived under an “unintentional delay” standard or under an “unavoidable delay” standard. An application could be revived for a fee of about $900 if the entire delay in responding was unintentional. This was an easy standard to meet and essentially required, as long as it was truthful, a check-the box style statement that the delay was unintentional. Alternatively, an application could also be revived under the unavoidable delay standard, if the applicant and attorney had essentially tried just about everything to prevent abandonment of the application. That included calendaring everything and placing redundant reminders on file. It was a tough standard to meet, and applicant often opted simply to pay the increased fee under the unintentional standard rather than risk the lower fee (about $300) and be refused under the unavoidable standard.

In 2013, patent reform did away with the unavoidable standard for revival. While the Patent Office has continued to review petitions to revive which were filed on the unavoidable basis before the change in law, petitions filed afterward would not be considered if relying on that standard. Going forward, petitions to revive could only be filed on the unintentional standard and had to be accompanied by the higher filing fee.



But What About Space Inventions?

Did you know that US patent law worries about space inventions? Congress has written provisions into statute that account for activity in space. So, if you find yourself floating around in US-controlled space, rest assured that patent law has not forgotten you. For instance, 35 U.S.C. 105 states:

(a) Any invention made, used, or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States for the purposes of this title, except with respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party, or with respect to any space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space.

(b) Any invention made, used, or sold in outer space on a space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space, shall be considered to be made, used, or sold within the United States for the purposes of this title if specifically so agreed in an international agreement between the United States and the state of registry.

I’m guessing that there are plenty of other statutes which define space activity so that it can be regulated. Know of any?



Can I trademark a scent?

The short answer is yes, Scent Trademarkbut it can be very difficult. A scent mark is considered a nontraditional or non-conventional trademark. This category covers a broad spectrum of marks which includes any type of trademark that does not currently belong to a conventional category. Conventional marks are words, names, logos, and the like. Scents, sounds, colors, packaging – things like this fall under the non-conventional mark category. Non-conventional marks are not per se more difficult to register as trademarks, but they pose unique challenges not encountered when registering a more traditional mark.

One of the largest complications in attempting to register a scent mark is that the perception of odor can vary from person to person. This subjectivity can lead to considerable argument when deciding whether the scent actually functions as a trademark. After all, trademarks are consistently used symbols that identify in a consumer’s mind the source of the product or service. Key to the ability to identify the source is that the mark be used consistently, or that the consumer experience the mark in a consistent way. If a scent can potentially vary each time it is experienced, a question is created as to whether it is sufficiently consistent so as to function as a trademark.

Another complication is whether the mark is functional. Functional portions of marks cannot be registered. This is most often seen with trade dress, where the Office refuses to protect portions of a product which are formed or shaped purely for functional reasons. This issue can arise with smell marks. For example, the distinct smell of a perfume cannot be protected with a trademark because it is a functional part of that particular perfume.



What is acquired distinctiveness?

To function as a trademark, a word, symbol, logo, name, or other mark must be capable of identifying the source of the product or service and distinguishing it from other sources.  Marks are either inherently distinctive, have not distinctiveness, or acquire distinctiveness.  Many marks are “inherently distinctive.”  An inherently distinctive mark is, as its name insinuates, unique by its very nature.  The more unique a mark is, the better it is at differentiating sources of products, and the more powerful it can be in the minds of consumers.  Inherently distinctive marks are eligible for immediate registration on the Principal Register.

Marks which lack distinctivenes cannot function as trademarks.  The Trademark Office will refuse to register such marks.  In many cases, an unregistrable trademark is any term or image that the Trademark Office believes describes the applied for goods or services.  In other cases, the mark may simply be a generic name for the product or service.  Descriptive marks, however, break down into those which are either “merely descriptive” or “geographically descriptive.”  These two terms describe a situation where a trademark is descriptive of the goods or services in the application or the location or origin of the goods or services.  For example, a merely descriptive mark would be PANCAKES for a restaurant that serves pancakes.  An example of geographically descriptive would be AMERICAN BURRITO for Mexican restaurant located in the US.  The Office, upon determining a mark is merely descriptive or geographically descriptive will refuse registration of that trademark.  There are ways to respond to such a rejection, however.

An applicant can respond by arguing that the mark is not descriptive.  These are not easy arguments to make.  Alternatively, in some cases, there may be an opportunity to argue that the mark has acquired distinctiveness and thus has become eligible for registration.

Acquired distinctiveness is when a company has been using a descriptive trademark for over 5 years and that trademark has gained recognition in the industry for the company’s goods or services.  Making an acquired distinctiveness argument is known as making a Section 2(f) claim because of the statute from which the basis arises.  Without the use of a Section 2(f) claim, the Trademark Office would not allow descriptive marks to register.  The Section 2(f) claim must establish that the mark has been used for five years with continuous and exclusive use that has allowed customers to relate certain goods or services to the company’s brand they are able to apply for the mark and rely on this provision to move the application towards registration.  It is important that the use be exclusive because if another company is using the mark in the same industry, then their exists a possibility that the distinctiveness quality of the mark is not so strong.  Often, the Trademark Office will accept a Section 2(f) claim, but sometimes, the Examiner requests to see additional proof of the efforts toward and extent to which the mark has been advertised and accepted as distinguishing the applicant’s goods or services.



What is an RCE?

An RCE is a Request for Continued Examination. It is a request that can be made in a pending patent application to obtain continued examination on that application, rather than having to file a continuing application. An RCE is a tool that can be used to re-open examination after an application has received a final rejection and examination of the application has been closed. Filing an RCE requires payment of a fee, which is less than the initial filing fee, but still a considerable expense.

An RCE might be advisable if some claims in an application were allowed, and you want to avoid issuing those claims now and then filing a continuing application for the rejected claims, because of the increased fees associated with maintaining two patents. If that is the case, an RCE would be filed to try to argue the rejected claims and have them allowed with the other already-allowed claims. An RCE might be necessary if, after a notice of allowance has been issued and the issue fees have been paid, you become aware of art that must be disclosed in the case. There are other situations still in which an RCE may be appropriate.

To file an RCE, there must be at least several requirements met. First, prosecution must be closed. Prosecution is closed if the application has been appealed, if the most-recently issued Office Action is final, if a notice of allowance has been mailed, or if an advisory action or other type of action has been mailed which otherwise closes prosecution. Second, the RCE fee must be paid. The fee, at the time of this writing, is $1200 for large entities, $600 for small entities, and $300 for micro entities. Third, a submission must be made. The submission can be one of many things, depending on the status of the application. If a final Office Action was mailed last, for instance, a proper submission may be a response to that Office Action. Or if an Advisory Action refused to enter an amendment made after the final Office Action, the amendment could constitute a proper submission. Or, as another alternative, an information disclosure statement could be a proper submission, if for some reasons the normal methods for submitting an IDS are not available to the applicant.

An RCE can be a beneficial way to gain additional examination of an application with remaining issues that need to be cleared up. An RCE must be filed correctly, so it is recommended that you contact a patent attorney if you have questions or are considering filing one.



New Website at US Patent and Trademark Office

Last week the US Patent and Trademark Office rolled out a new website.  So far, I have heard nothing but complaints.  The new website is intended to improve the experience of doing business with the USPTO.

The site is supposed to be easy to use for everyone.  Patent attorneys and agents who frequent the site probably will not have much trouble getting used to it.  I have no issues with the no site yet, as most of my work occurs off the front page, where the majority of the changes seem to have taken place.  The pages I use frequently – Private PAIR, EFS-Web, TESS, TEAS, and TSDR – haven’t changed at all.

For those who don’t frequent the site, there are two primary tabs for Patents and Trademarks near the top, and a helpful QuickLinks button at the top right which includes really just about anything you need to get work done.

Patent Attorney



How Good Do Patent Drawings Have To Be?

Patent drawings have to be good enough to show and describe the invention as is necessary for a skilled artisan in the relevant industry to understand the invention when viewing the drawings together with the written description of the invention. There are few hard-and-fast rules on the quality of the drawing, though. Drawings must include black-and-white lines, and will generally be rejected where they include shading or color. In rare cases, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented. But generally, drawing must be in black-and-white.

Drawings can be produced by hand or by computer. Photographs are not accepted except, again, in very limited situations where a photograph is the only practical medium for disclosing the subject matter, such as when describing cell growth, crystalline structures, electrophoresis gels, and other complicated illustrations. Instead, black and white line drawings are preferred in almost all situations.

Drawings used to be produced by hand. They were human and beautiful. Today, most drawings are done with CAD tools or other computer drawing programs. There is no requirement that the drawings be created by a computer, and no prohibition against hand-drawn drawings. Generally, as long as the drawings are clear and can be reproduced, they are acceptable.

All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.



Super Lawyers Southwest Rising Star for Third Year

I’m pleased to announce that, for the third year running, I have been selected as a Super Lawyers Southwest Rising Star.  One of these days I imagine I will age out of the Rising Star category, but for now, it is good to be among recognized colleagues.  The patented process Super Lawyers uses for acknowledging the best attorneys includes peer nominations and third-party research.  Only 2.5% of attorneys are selected to the Rising Stars list each year.

I wouldn’t be here without the great work I get to be involved in with exceptional clients, and the support of family and friends.  I’m looking forward to making 2015 another great year for everyone!



Supreme Court Sanctions Patent Attorney

Previously, I have described how not to write a claim in a patent application. Now, the Supreme Court has let us all know how not to write a Petition for Writ of Certiorari. Such a petition is a necessary part of having a case argued before the Supreme Court of the United States. Unlike the first level of appellate courts, to which any party can appeal, only some appeals are accepted by the Supreme Court to be heard. This is a necessary mechanism: thousands of trial courts funnel appellate work to a handful of appeals courts, and many of those cases are requested to be reviewed by the Supreme Court. However, the Court has only nine justices and can hear only so many cases a year. Thus, the Court picks and chooses which arguments it will hear, and refuses to hear other cases by denying their petitions for writ of certiorari. It would thus seem obvious, then, that a petition would be written clearly to convey the depth and importance of the question presented in the case.

Well, apparently not always. The Court recently denied a petition in a patent case because the petition was so lacking. The question presented in the petition “focused” on a developing line of precedent in the Supreme Court on subject matter eligibility (what types of inventions can be patented). The Court was not impressed with the question, nor should you be. The petition was long, oddly formatted, asked at the outset:Patent Supreme CourtI can’t make too much sense of it, and neither could the Court. It is now requiring that the attorney explain why he shouldn’t be sanctioned for submitting a petition in this fashion.