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Category: Patent

Trademarks in Patent Claims

Can I use a trademark in a patent claim?

The quick answer is yes, but the follow-up question is why? Is there a specific reason that a particular type of product needs to be named – can the generic name for the product itself not be identified? Patent examination rules do permit the use a trade name or a registered trademark in the claim of a patent, however, it will likely spark a rejection.

First, it is important that, if a trademark is used in a claim, it must be used correctly. As is well-established under trademark law, a trademark should be used as an adjective, not a noun; it describes and identifies the source of a product, it does not describe and identify the product itself. Therefore, using a trademark in isolation will almost certainly solicit a rejection for failing to particularly point out and distinctly claim the inventive subject matter.

So, if a trademark has to be used, it should be used properly. Nonetheless, if a trademark does appear in a claim, the Examiner will probably still question why it is necessary, and may issue a rejection to raise that question. If you don’t address that question successfully, the application will never grant as a patent.



Patent Office Power Outage Shutdown

The Patent Office went down hard on December 22, 2015. A subdued Facebook post initially said: “We are currently experiencing some technical difficulties with some of our online systems, but we are hard at work and intent on having services back on line as soon as possible. Thank you for your patience, and stay tuned for details.” However, very quickly it became clear that the incident was major – catastrophic really. For some time, most (if not all) of the pages at upsto.gov were displaying 404 messages, including even the blog directed toward posting updates about the status of the electronic filing systems.

Apparently, the power supply lines at the USPTO incurred a “malfunction,” causing significant damage to two power filtration systems which otherwise provide power in a regulated form to the USPTO. These filtration systems are huge and could not be replaced quickly or easily.

The outage took out all of trademark and patent filing, searching, payment, and examination capabilities, effectively shutting down nearly everything the Patent and Trademark Office, and patent and trademark lawyers, do. For some of us, it was a nice week-long break when many of are taking holiday. For others, however, it was a stressful nightmare of re-learning Priority Mail Express (formerly Express Mail) rules and trying to get the Post Office – sometimes through horrible weather – to make filing deadlines. Filing by mail was still an option – but very few, if any, practitioners file by paper anymore, and I would guess that most who don’t file by paper have no clue how to file by mail. Another good reason to file early! The Office eventually did declare a few of the down days as federal holidays, purportedly giving applicants until the next (operational) business day to file. However, I cautioned colleagues not observe this PTO-granted grace period, as it was not clear that the PTO had the statutory authority to declare a holiday in this manner to toll both domestic and foreign deadlines. Better to mail it in that to find out years from now in litigation that the PTO “holiday” counted for nothing.

The systems are now up, but I have been warning clients this week to get me everything early because I believe the filing system is extremely fragile right now, given that it will probably be more heavily loaded by backed-up filings from the past week.

While the explanation that the Patent Office providfed is not entirely clear – and few details beyond this have been revealed – I am sure the Office did work tirelessly to get the systems back up. And now they are. What we can learn from this how fragile the filing system is. Yes, it apparently took a major power surge to destroy the electronic systems, but when it did, there was no backup. Or, there was a backup, but the backup was tied to a backbone common to the main system – which really isn’t a backup at all.

Practitioners have complained for years that the electronic filing system is antiquated, but the Office has failed to update it. Perhaps this will instigate a technology change at the office that represents innovation leadership in the world.



Continuing Patent Applications in light of Allowed and Rejected Claims

I’ve written about continuing applications before. I have seen lately in a few cases an unfortunate situation that the Patent Office places applicants. It fulfills the “bird in hand is worth two in the bush” line, and I have begun to advise clients slightly differently because of it.

The situation arises when a case has received an indication that some of the claims are allowable while others are rejected. It can be either in a first office action or a second, typically final office action. It is always great to see allowed claims, but clients typically also want to fight for the rejected claims, too. This is, of course, natural and rational; money was spent on the application, we try to get the broadest claims possible, and fighting for rejected claims gives you a chance at those broader claims.

However, responding to an office action rejection when some of the claims are allowed can jeopardize those allowed claims. When I first began working, I felt fairly comfortable that an indication of allowability meant the allowed claims were fairly safe. Now, though, presenting a response – especially when the response is in the form of an amendment – can cause the Examiner to withdraw the allowance of those claims.

This unfortunate consequence unfolds when the Examiner conducts a new search. If you have present amendments to the rejected claims, the Examiner will (almost) always conduct a new search to see if the newly-introduced elements are present in other prior art. If the Examiner does find other prior art, and thinks that the prior art is relevant to, and destroys the patentability of, the allowed claims, the allowance on those claims will be withdrawn.

You really cannot blame Examiners for doing this. If they find art that is relevant to any of the claims, they are obliged to enter it into the record. For whatever reason however – perhaps there has been new training on it at the Patent Office – I am seeing it more frequently than I used to. That is not to say that I’ve been inundated with such situations, but I have had enough within the last year or year-and-a-half that I have noticed and made a practice change because of it.

Now, I advise clients of this risk, and let them know that it may be “safer” to proceed with cancelling the rejected claims, issuing the allowed claims, and pursuing the rejected claims with a continuing application. I do not always advise this, however; whether I do or do not depends on a wide variety of factors including the client, the examiner, my experience with both, the nature of the prior art, the reputation of the art unit, the strength of the claims, the difficulty of the prosecution, and other factors. For this reason, I strongly recommend against adopting one strategy or another every time, and I discourage any unrepresented applicant from adopting this strategy without first speaking with an experienced patent attorney. Canceling claims, issuing claims, and filing continuing applications involves a lot of experience, strategy, and know how, and missteps here can cost you valuable protection that may not be recoverable.



Patent Appeals

An appeal at the Patent Office is an administrative process providing for substantive review of some action taken by the patent examiner in a patent application. Where a patent examiner has twice rejected a patent application, such as for novelty or obviousness issues, an appeal can be filed to have the case reviewed by the Patent Trial and Appeal Board. PTAB appeals should not be lightly entered, and the below discussion only very quickly touches on the major phases of an appeal. Please consult an experienced patent attorney if you have particular questions about the process or about a pending patent application.

Notice of Appeal
A notice of appeal must first be filed to institute an appeal. This involves filing the Notice of Appeal paperwork and paying the appeal fee, which at the time of this writing was $400.00 for small entities. The Notice of Appeal filing tolls the period for responding to the last office action. Instead, it initiates a 2 month period for filing the Appeal Brief.

Appeal Brief
The Appeal Brief sets forth the Appellant’s argument. It must present arguments responsive to every ground of rejection stated by the examiner in the Office action from which the appeal has been taken. If any ground of rejection is not addressed, argument or challenge to that ground is waived. An appeal brief should be filed within 2 months of the Notice of Appeal. However, 1-month extensions can be obtained through payment of a surcharge.

Examiner’s Answer
After the Appeal Brief is filed, the Examiner may respond with a formal Answer. The Answer is simply the Examiner’s response supporting his or her previous rejections and addressing the Appellant’s argument. The Answer is deemed to include all the rejections presented in the Office Action from which the Appellant has appealed, and the Answer may also present new grounds for rejection. If the Answer presents a new ground of rejection, the Appellant is given two months to either reopen prosecution or maintain the appeal and present a Reply Brief that addresses the new grounds. The Examiner, together with a Supervisory Patent Examiner and another experienced examiner, will then conduct an appeal conference to discuss the state of the appeal.

Oral Hearing
Oral argument can be requested. It should be requested only in those circumstances in which the Appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.

Board Decision
After quite some time (several years, often) the Board will consider the appeal, the briefs submitted, the facts, and the law, and establish a decision. The decision will generally either affirm, reverse, partially affirm, or remand the decision of the Examiner. After decision, jurisdiction of the application returns to the Examiner for further review consistent with the decision of the Board. The Appellant may also request a rehearing within 2 months of the decision to raise new arguments in light of new law or new rejections.



Reissue Patents

A patent can be reissued under a limited patent office 3set of circumstances. Generally, if an error is discovered which renders the patent wholly or partly inoperative, reissue may be the vehicle to correct the error. The Patent Office will reissue the patent to correct the error. You must pay a fee to reissue an application, and you must agree to surrender the original patent being corrected; you cannot have two concurrent patents on the same invention. The term of the reissued patent is limited by the unexpired term of the original patent.

New matter cannot be introduced into a reissue, but the scope of the claims can be enlarged to include broader subject matter when filed within two years of the grant of the patent. This is a common reason to file a reissue. Other reasons include correcting inventorship or adding narrower claims that should have been incorporated into the original patent. Some things, however, cannot be cured with a reissue. For instance, if a divisional was not filed during the pendency of the original application (after a restriction requirement was made), a reissue cannot be used to file the claims that would have been in the divisional application. Somewhat similarly, a reissue cannot be used to “recapture” claimed subject matter which was canceled from the original application, because such subject matter is considered to have been surrendered to the public.



Patent Office Automated Interview Request

The Patent Office has started a new program called “AIR,” which stands for Automated Interview Request. The program allows patent attorneys, agents, and applicants to file online requests for interviews with Examiners in their cases. Examiners can sometimes be difficult to get hold of, as many of them work non-standard schedules or practice “hoteling,” in which they work from home. They rarely answer the phone, though most are very good about returning calls. The AIR program is designed to improve the communication between patent attorneys and examiners in scheduling interviews. One issue I see with the AIR form is that it does not allow the applicant or applicant’s representative to request an interview with the Examiner and his or her supervisor, which is often desired. For this, I presume one should still call to request the interview.

By submitting this type of interview request, the pending patent application will be in compliance with the written authorization requirement for Internet communication in accordance with MPEP §502.03. This authorization will be in effect until the Applicant provides a written withdrawal of authorization to the Examiner of record.



Certificates of Correction

An issued patent should be reviewed upon receipt for errors. Occasionally, an error will crop up, either because of a minor clerical or typographical error, or because of something the Patent and Trademark Office processed incorrectly. These errors can be corrected if caught soon after issuance of the patent.

If the mistake was the applicant’s fault but occurred in good faith, then a certificate of correction may be requested. A fee must be paid along with this correction request. Once the certificate of correction issues, the certificate and patent together will operate in law as if the patent had originally been issued with the correction.

Two requirements must be met for a certificate of correction to issue. First, the error must be minor: it must be clerical or typographical or equally small in nature. Second, the correction cannot include new matter or anything that would require reexamination. Therefore, substantial changes to the claims, or changes beyond minor clerical or typographical changes, are not proper for such a request. Anything that would affect the scope or meaning of the patent would require reexamination. If a certificate of correction is the not the proper vehicle for the change, then you must try to implement the change through a reissue application.



Direct and Indirect Patent Infringement – Evolving Standards under Akamai v. Limelight

Though I’m not a litigator, infringement concerns are a primary concern for many of my clients. Those concerns evolve with time. Despite decades of case law, the courts are still developing some of the fundamentals of patent infringement. There are two basic types of infringement: direct and indirect (which is further subdivided as contributory infringement and induced infringement. Direct infringement is – generally – infringement that you yourself participate in: you sell something infringing, you make something infringing, you use something infringing, etc. Indirect infringement, on the other hand, occurs when you contribute to another’s infringement, make another’s infringement possible, or benefit from another’s infringement.

Yesterday the Federal Circuit issued an opinion regarding direct infringement after the Supreme Court gave its opinion and told the Federal Circuit to take another look. The case involves the question of whether, when a patent is directed to a method comprising a number of steps, a single party can infringe that patent even if it did not practice every single one of the steps. In another way, the case asked whether a defendant may be liable for inducing patent infringement when no other party has actually directly infringed the patent. As may seem immediately obvious, the Supreme Court said no; induced infringement will not lie unless there is at least a direct infringer first.

The Federal Circuit has now expanded the definition of infringement to include situations where all of the steps, while not necessarily being performed by the defendant, may still be attributed to the defendant. Now, liability can be found where the defendant “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” This broadens the scope of liability beyond the earlier rule which required that the defendant either perform all the steps, use an agent to perform some or all of the steps, or contract with another or enter a joint venture to perform some or all of the steps. This new rule adopts the Supreme Court’s analysis of induced infringement under copyright law, which was used in the seminal case of MGM v. Grokster on internet-based peer-to-peer music file sharing (which happens to have been the subject of this author’s Law Review article).

The ruling indicates that infringement can now be found where a party performs some of the steps of the method claim even if the other steps are performed by another party.



After Final Consideration Pilot 2.0 Program

After a final Office Action has been issued, prosecution of a patent application is considered to be closed. This means that the Examiner will not automatically consider or enter further arguments or amendments. Arguments and amendments can nevertheless be presented, however, if they do not place the application in condition for allowance or would require non-trivial amounts of searching by the Examiner, the Examiner will generally refuse to enter the response. A Request for Continued Examination is then typically used to obtain further examination of the case.

Since 2012, the Patent Office has operated an After Final Consideration Pilot Program (“AFCP”) which allows applicants to obtain continued examination of a case without having to pay for an RCE. The AFCP allows Examiners to take additional time to review cases, and provides for additional interviews for the purpose of moving an application toward allowance.

There is no fee for requesting the AFCP itself, but there may be fees involved if a response is filed beyond the shortened statutory period. AFCPs can only be filed in original, continuation, and divisional patent applications, or for international applications in the national stage, and only after a final rejection has been issued. Argument alone cannot be presented; there must be an amendment to least one of the independent claims, and the applicant or its attorney must be available for interviews with the Examiner regarding the response filed with the AFCP.

The AFCP can provide a helpful means of compacting and expediting examination of a patent application toward issuance without the costs and delays associated with a Request for Continued Examination.



Patent Drawing Requirements

Patent drawings have changed over time. Patent drawings have gradually shifted from being hand-drawn masterpieces to machine-drawn printouts. Hand drawings are a lost art that we probably will never recapture. Many of the formal requirements associated with patent drawings have also changed over time. The Patent Office is much more lax in its acceptance of patent drawings. Nevertheless, there are many requirements which it still reviews drawings for and will occasionally reject just after filing, or which an Examiner will object to later on. This article describes some, but not all, of the things the Patent Office reviews when it comes to drawings, as well as some best practices for drawings.

  • Orientation of the page – the page is supposed to be oriented with sheet numbering at the top, or if the sheet is turned so that it is in landscape, with the sheet numbering at the right. I don’t believe the Office is strict with this requirement, but it is supposed to be a requirement.
  • Orientation of the numbers – the sheet number is the only number, letter, or other indicia which can have a different orientation than the others. If the sheet is to be read in portrait, then all reference characters should be oriented in that direction. If the sheet is to be read in landscape, then all reference characters should be oriented to facilitate reading in that direction, other than the sheet number. There should never be inconsistent orientation among the reference characters.
  • Words – other than reference characters, there should be no other marks, indicia, or words on a sheet Legends can be used but are subject to the Office’s final approval.
  • Black and white drawings are normally used and are preferred. Only in rare cases can color drawings be used. Photographs are almost never permitted. The exception is when color drawings or photographs are the “only practicable medium for illustrating the claimed invention.”
  • Greyscale drawings can really destroy the quality of your patent drawings once uploaded to the Patent Office. If you scan drawings in as black and white only, and be sure they are not greyscale, do so. The Patent Office pixelates greyscale drawings in a way that can often lead to a drawings rejection a year or two down the road.
  • Margins – each sheet must include a top margin of at least 1 inch, a left side margin of at least 1 inch, a right side margin of at least 5/8 inch, and a bottom margin of at least 3/8 inch.
  • Character of lines, numbers, and letters. 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.
  • English reference characters should be used except where other languages are commonly used (such as Greek alphabet letters to indicate angles)
  • Lead lines. Lead lines are those lines between the reference characters and the elements or structures. They should be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.

I have rarely or never seen the Patent Office enforce these rules. Don’t rely on that, though – they may change their policy any time, or they may decide to pick on your application!

  • The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points (i.e., cross-hairs) printed on two cater-corner margin corners.
  • Orientation of multiple figures on one page. All views of the drawing must be grouped together and arranged on the sheets without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract.
  • Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.