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

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
dreamstime_xs_35290763_med_hrPatent claims are all-out assaults on the English language. It’s not bad enough that they are technical. It’s not challenging enough that passive use pervades technical writing. And it’s not brutal enough that the US Patent and Trademark Office has a pro-obfuscation rule about patent claims that requires them to be single run-on sentence monstrosities. No, it’s all of these and more.
But still, the essence of the patent is in its claims. So if you’re looking at a patent for almost any reason, you must read the claims. I will try to ease the pain of that exercise.
The claims are at the end of a patent. They often start with an introductory “I claim” or “We claim” followed by a series of numbered claims. An actual claim for Apple’s iPhone looks like this:
A patent claim begins with a capital letter and often many semicolon-separated paragraphs later, ends with a period. Defenders of the rule requiring claims be a single sentence say that multi-paragraph long single sentences are clear. This argument is devoid of all logic: Retreating from the rules of grammar is no way to lead a charge towards clarity in writing.
On behalf of the US Patent and Trademark Office, for whom I am not authorized to speak in any capacity except that I, like you, am a taxpayer and their boss, apologize for patent claims’ opacity. Claims are hard to read.
A product or method infringes a patent if it falls within a patent claim’s scope. This is easier to understand in the context of an example.
Consider this fictional patent claim:
Claim 1. A chair comprising:
(1) 4 legs;
(2) a seat attached to at least one of the 4 legs; and
(3) a back attached to the seat, wherein the seat and the back attach to one another through a hinge.
The best way to look at this claim is to imagine that its words describe the boundaries to a property deed. But instead of “BEGINNING at a white oak on the E. bank of Sinking Creek, a corner to lots No. 8 & 10; thence S 53 E 20 P. 8 L. crossing said creek to three sourwoods; S 1.5 W 36 P,” the claim language might look something like this:
Seen this way, the claim language sets up the boundaries of what infringes the claim, and as a consequence, what the patent holder can prevent others from making, using, and selling. As shown in the example, a chair with 3 legs cannot infringe because the claim requires 4 legs. (Curiously, a five-legged chair might infringe the claim because a five-legged chair has 4 legs…plus one.) Similarly, a chair (stool) without a back would not be within the boundary, nor would a chair without a hinge between the seat and the back. None of these would infringe this claim.
But the chairs within the boundaries would infringe. One is a metal and fabric reclining chair and the other is a wood reclining chair. Despite the differences in these chairs, both have all of the claim elements and infringe claim 1.
You might ask “What are claim elements?” Claim elements or claim limitations are the words, usually broken into separate paragraphs or clauses, that make up the claim. Here, I made each of the claim elements a side in our “property.”
Note that the part of the claim “A chair comprising” is called the preamble. It may or may not serve as a boundary to the claim. Courts have said that the preamble is “necessary to give life, meaning, and vitality” to the claims. This is about as poetic as the patent law gets and we can see what the “life giving” might mean if we change the word “chair” to “something.”
As you can see, now the claim could cover a hippopotamus, which has 4 legs and a back attached though a hinge at the hip to a rather large seat.* Such a claim to “a something” would not likely ever issue in a patent but illustrates the importance of a preamble—it’s not something to totally ignore.
Returning to the claims, there may also be dependent claims in a patent. These are claims that add elements and further narrow a claim. For example, let’s add a claim 2 to our fictional patent.
Claim 2. The chair of claim 1, wherein the chair legs are wood.
Dependent claims usually have language like “The ___ of claim __” or “The _____ according to claim ___.” What this means is that the dependent claim includes all of the elements of the claim it refers to plus whatever is in the dependent claim. In our example, we would say that claim 2 depends from claim 1.
In determining the scope of claim 2, we might redraw the patent property boundaries like this:
This shows how the metal-legged chair that was within the scope of claim 1 is now outside the scope of claim 2 because claim 2 requires wooden legs.
This isn’t the complete infringement analysis process. What I just discussed is the second step in it: Comparing the claim language to an accused product. The first step is interpreting the claim language. It turns out that statements made in the patent description and during the patent proceedings in the US Patent and Trademark Office, drawings, and other factors help inform what the claim language means. Interpreting claim language is a topic for a more advanced article.
There are a lot of technical reasons a claim might be invalid. But one way that a claim might be invalid is if it lacks novelty or if it is obvious. Going back to our property lines, a claim would lack novelty if at the time of the application’s filing, one of the chairs within the property boundary already existed. Said in patent parlance, a claim lacks novelty if a prior art reference teaches or shows every claim element.
A patent claim may also be invalid if it obvious. A defendant may show this by taking one reference (a four legged chair with no back) and combining it with another reference (a three legged chair with a hinged back) to create a combination that shows all of the claim elements.
An infringement or invalidity study is a complicated analysis. If you are concerned that your product infringes a patent, or if you believe a patent asserted against you is invalid, you should find an experienced patent attorney and secure their opinion.
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* Alas, the hippopotamus cannot infringe the patent claim because it is a naturally-occurring composition of matter.

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The top dog of FAQs: “Can I patent my recipe?"

By Stephen B. Schott
My mom challenged me to eat a hot dog with peanut butter on my 8th birthday and I did. It’s delicious and we call it a “nutty dog.”  She found the recipe in a cookbook, so it is not a new idea. But the thinking that lead to this Frankenstein’s monster food is the kind of crazy genius that leads people to ask the question that follows me everywhere: “Can I patent a recipe?”
The answer is a definitive “Yes.” But, and there’s a but, if you have a recipe that you believe should be patentable, you will face all of the same legal hurdles that any patent application faces. All inventions must be:

  1. patentable subject matter,
  2. useful,
  3. novel, and
  4. non-obvious.

These legal requirements can be hard to understand but both the USPTO and Gene Quinn at IPWatchdog have written great articles explaining how the law applies to food recipes. If you want a review of the legal issues, I encourage you to read those articles. Both articles reach the same conclusion: A recipe’s biggest hurdle is not 1-3 on the list, but 4: Is the recipe non-obvious?
To answer the non-obviousness question, let’s use a hypothetical, which is easier than plunging into the legal analysis out of context. In our hypothetical, you have created a new cookie. It’s delicious. Everyone who samples it loves it. But is it patentable, and in particular, non-obvious? A few things to consider are indicators of non-obviousness like:

  1. The invention's commercial success,
  2. Long felt but unresolved needs,
  3. The failure of others,
  4. Skepticism by experts,
  5. Praise by others,
  6. Teaching away by others,
  7. Recognition of a problem, and
  8. Copying of the invention by competitors.

Keeping those in mind and assuming that your invention is different than earlier recipes, let’s turn to some examples.
dreamstime xs 29368998
Recipe variation 1: Your cookie recipe is the same as a standard cookbook recipe, except that you adjusted the flour and sugar in a way that makes it sweeter. The sweet cookie is delicious—anyone who tastes it agrees that it’s incredible. Sadly, though, this cookie recipe is probably not patentable because it is obvious.
The USPTO even has a specific comment on the patentability of something like this. "A final food product typically is nothing more than the expected sum total of individual components. For example, the more sugar one adds to a cake batter, the sweeter the finished cake is expected to be.”
Conclusion: The patent dough does not rise. Non-patentable.
Recipe variation 2: You add hops to the cookie batter and the result is a bitter hoppy-tasting cookie that no one has ever tasted before. This too, according to the USPTO may hit a stumbling block. "Similarly, adding tarragon to a dish that doesn’t usually include tarragon may result in an unexpected taste for that particular dish, but not an unexpected result.”
Conclusion. The patent dough does not rise. The delicious beer cookie is non-patentable.
Recipe variation 3: You add a new ingredient that improves the cookie shelf life and the market loves it. Looking at the indicators of non-obviousness above, your new ingredient fills a long-felt need (improved shelf life), has commercial success, and solves a problem where others failed. These would weigh in favor non-obviousness.
Conclusion. The USPTO issued a patent for an improved shelf-life cookie in 1982.
Recipe variation 4: Everyone loves warm cookies, so you develop a mix of known ingredients that can cook the perfect—and warm—cookie in a toaster. There has been a resurgence in the pop(!)ularity of Pop Tarts and there’s been a demand for cookies that can cook in toasters. Existing toaster cookies tend to burn and cook irregularly. Even though you used common ingredients, the invention's commercial success and the failure of others weigh in favor of patentability.
Conclusion. The USPTO granted a patent for a toaster cookie in 2000.
star wars cookies 069
Recipe variation 5: The baking industry’s solution to helping cookies keep their shape was to add more flour to cookie dough but this was largely a failure.  You add an ingredient to the cookies that allows them to hold their shape better while maintaining the flour ratio. This overcomes the problem of cookies tending to spread when cooked and also recognizes that other solutions to the problem of spreading cookies only considered using more flour to solve the problem—something that did not work well—which is failure by others.
Conclusion. The USPTO granted a patent for a cookie that held its shape better in 1994.
The USPTO regularly grants food recipe patents, but they must clear the same hurdles as all inventions. Some are for things like synthetic fruit spreads and others are for lower calorie alternatives to natural foods. If you have a recipe and want to discuss its potential for patentability, please contact me.
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Using “Configured to” in Patent Claims

By Stephen B. Schott
Claim drafting language choice is critical in a patent application. One of the terms that claim drafters sometimes use is “configured to.” Although there have been some warnings about the risks in using this term, Chief Judge Rader’s recent non-precedential concurring opinion in Superior Industries, Inc. vs. Masaba is the clearest indicator yet that “configured to” is a phrase that patent claim drafters may want to avoid until its scope is clear.
Superior Industries involved several patents including US Patent 7,424,943 that included a claim element for a support frame [32] that is "configured to support an end of an earthen ramp [150].” A figure from the patent helps show the claimed device.

Although Judge Rader did not specifically call out the “configured to” language, he offered advice to the District Court on remand:

I agree with, and join in, the majority opinion. However, in reviewing the claim constructions articulated by the district court, I observe that it read a great deal into the claims in the process of construing them. Thus, I write separately to articulate a couple claim construction principles that may assist the district court on remand when it revisits its constructions. First, in claim construction, one must not import limitations from the specification that are not part of the claim. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed.Cir.2012). Indeed, claims generally are not limited to any particular embodiment disclosed in the specification, even where only a single embodiment is disclosed. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.Cir.2004). Second, and relevant to this case, a system claim generally covers what the system is, not what the system does. Hewlett–Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function.Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed .Cir.2009).

Most commentators, including Dennis Crouch at Patently-O, interpret Judge Rader’s concurring opinion as directed at the “configured to” claim language. This is a safe assumption and may be an indicator that the Federal Circuit will take up a “configured to” case in the near future.
To date, the Federal Circuit has skirted around claims that use “configured to” and Judge Rader’s quote cites some relevant cases. The Manual of Patent Examiniton Procedures (MPEP) section 2114 advises examiners that  “While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function…Apparatus claims cover what a device is, not what it does.” The MPEP cites In re Schreiber, 126 F.3d 1473 (Fed. Circ. 1997) andHewlett Packard Co. v. Bausch and Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Despite the MPEP’s confident assertion, these cases do not stand for the premise it cites, and thus it remains unclear what the scope of a functional limitation is.
When drafting a claim with functional language, a claim drafter should consider the following.

  • Add depending claims with varying levels of structural detail to provide a patentability and validity position if the functional language is found to be indefinite.
  • Claim structural elements in combination with functional language.
  • When adding structural elements to functional language, be careful not to create a claim that is both a method and apparatus, which is prohibited. IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377 (Fed. Cir. 2005)
  • Be careful to avoid creating a means plus function claim that would be interpreted under 35 USC 112(f).

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Why You Should File a Provisional Patent Application, Especially if You’re a Start-up.

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
Yesterday I heard this conversation between a venture capitalist and a start-up company with an excellent idea.
VC: “It’s a crowded market with lots of competition. Do you have patent protection?”
Start-up: “No, not yet.”
VC: “But you have some pending patent applications?”
Start-up: “No, we wanted to get our product to market first then go back and maybe get a patent.”
dreamstime xs 35664308
The venture capitalist politely exited the conversation. Why? Did you ever see Ghostbusters? If you did, there’s a moment in it where Winston advises Ray that “When someone asks if you're a god, you say YES!” I would advise innovative start-ups similarly. “When someone asks if you are seeking patent protection, you say YES!”
The VC manager bailed out of the conversation not because the start-up might fail, but because the the start-up didn’t have the foresight to start protecting its idea and creating the most valuable of assets: the patent. Why should a small company, start-up, or new business consider filing a at the very least a provisional patent application? Here are a few reasons.
(Before discussing the reasons why you should at least file a provisional application, take a gander over here if you want to know what a provisional patent application is.)
6 Reasons to File a Provisional Patent Application
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(1) A patent application shows you’re innovative. Filing a patent application lets people know that you think your idea is so good that you want a patent on it. If you’re willing to bet on your innovation, someone else might be willing to do the same.
(2) A patent application creates an asset. The monopolistic rights that go along with a patent don’t exist until the patent grants but the application starts the process of getting a patent. The patent is a more valuable asset but the application is also an asset that will impress an investor or business partner.
(3) You can use PATENT PENDING. PATENT PENDING is a label that informs the world (clients, competitors, investors) that you appllied for patent protection. When someone sees this on your products, packaging, advertising, and marketing, it puts them on notice that you are pursuing a patent and if they are thinking of copying your idea, they must tread lightly.
(4) Your partners and investors will take comfort from seeing you invest in your own ideas. Filing an application shows that you raised or spent money and invested it in your invention. This inspires confidence in others.
(5) Filing an application is important because of the “first inventor to file” rule. The United States recently followed many other countries and became a “first to file” country, meaning that if two people invent something independently, the first of them to file their application at the patent office will receive the patent for it, regardless of who invented it first. Thus, filing your patent application is critical to insure someone else does not file for patent protection on your invention.
(6) A provisional application is an inexpensive way to buy yourself a year to vet your idea. If you decide to file a provisional patent application instead of a non-provisional patent application, you will make less of an investment to secure a patent application filing date for a year while you test your market. This savings can be spent on marketing, tooling, and other start-up expenses. At the end of the year, you can decide whether you should then file your nonprovisional application.
If you have questions, please contact me.
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Patent Law Basics: What is a Provisional Patent Application?

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
Provisional patent applications are confusing. They don’t mature into patents. But they kind of do. The US Patent and Trademark Office doesn’t review them like they do a nonprovisional patent application. But they still must meet strict legal requirements or they are useless. And the name itself is confusing because the “real” patent application that matures into a patent—the nonprovisional application—is named with a negative prefix of the provisional.
While I can’t defend the poor naming of the nonprovisional, I can take a shot at explaining what a provisional patent application is.
What is a provisional patent application? A provisional patent application is a placeholder application. It establishes a filing date for your patent application and if you file a nonprovisional patent application within one year of filing the provisional, it secures a filing date for your invention.
Provisional patent applications DO:

  • Give you the right to use the term PATENT PENDING. This has marketing advantages and puts competitors—large or small—on notice that you are seeking protection for your invention.
  • Secure your application’s filing date for purposes of the first inventor to file rule. This is increasingly important because the United States grants patents to the first inventor to file, so getting your application on file is critical—the last thing you want is for someone to come up with your idea later than you and beat you to a patent because they filed first. (Dan Lievens at 3DL Business Studio wrote a blog post on this topic that summarizes the first to invent issue well.)
  • Establish a filing date for the purposes of prior art that will be cited in the US and international patent offices. The provisional application’s filing date is the date from which the US Patent and Trademark Office measures whether references can be cited as prior art, that is, whether a reference can be used to argue your application is not novel or non-obvious.
  • Give you time to market your invention, test the market, raise money, contact manufacturers, and build your business. The catch is that once you file the provisional application, you start a one year clock ticking until you must file your nonprovisional application or you lose your filing date.
  • Keep your invention secret, if you want. Your provisional patent application is kept confidential in the US Patent and Trademark Office until any nonprovisional patent application publishes or until any eventual patent issues. Thus, if secrecy is your goal at the moment, you can file the provisional application and continue to keep your invention secret.

Provisional patent applications DO NOT:

  • Give you the right to exclude others from making, using, or selling any product. The provisional application grants no right to exclude and there is no such thing as infringing a provisional patent application. Only a patent grants a right to exclude and a patent is the end result of a nonprovisional patent application, not a provisional patent application.
  • Mature into patents. Provisional patent applications do not mature into patents. If you file a nonprovisional application within a year of the provisional patent application’s filing, in a sense, they may eventually mature into a patent.
  • Receive examination from the US Patent and Trademark Office. The USPTO will only review your provisional patent application to confirm that you have met the formalities requirements. It does not review your provisional application for patentability.

Provisional patent applications do not need to meet all of the standards of a nonprovisional patent application, and for that reason they are less expensive to file. But provisional applications must still meet certain legal standards.
Requirements of a provisional patent application:

  • a written description of the invention that complies with all legal requirements of 35 USC 112,
  • any drawings necessary to understand the invention in compliance with 35 USC 113, and
  • formalities requirements such as the title, identification of the inventors, correspondence address, and whether there is a government ownership interest.

If you have questions, contact me.
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December-January Newsletter is out!

by Stephen B. Schott
Did you know that we have a Newsletter called Idea Law News? It’s out and you can view it here.
If viewing it online isn’t good enough and you want to our Newsletter delivered to your inbox once every month, you can sign up here.
And if once every two months is not enough for you, look over there on the left of this page. You can sign up to see our blog updates as they happen.

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Demystifying the Final Office Action: 7 Options for Responding to a USPTO Final Office Action

By Stephen B. Schott
When the US Patent Office named the final office “final,” it made a mistake. In Japan, a final rejection is truly final. It’s the end of the line. But here in the US, our “final” office action is just an action that opens up several options for response.
I put together this chart with an explanation of the 7 options for responding to a final office action. It’s an ugly flowchart but please don’t blame me, blame the USPTO—it’s not the simplest stage in the patent prosecution process. (Click on flowchart to get full size view.)

  1. File a response under the After Final Consideration Pilot Program (AFCP). The USPTO’s AFCP program encourages examiner-applicant interviews. Under the AFCP program, you file a response and the examiner either:

(1) determines that the response requires more than 3 hours of additional search and issues an advisory action (keeping the response simple avoids this outcome);
(2) issues a notice of allowance; or
(3) schedules an interview to discuss the response.
After the interview, the examiner will either issue a notice of allowance or an advisory action.
The deadline to respond to the final office action continues to run when participating in the AFCP program so it is important that we start this process as soon as possible after receiving a final office action.
The response under the AFCP program must:
(1)   respond to final office action;
(2)   amend at least one independent claim without broadening the scope of the claim in any way; and
(3)   include a request and statement signifying applicant is willing to participate in an examiner interview.
There is no USPTO fee for choosing this option.

  1. File a response within two months of the final office action’s mailing date to minimize the impact of extension fees. If you file a response within two months from the date of the final office action’s mailing date, the USPTO will calculate your extension fees differently, and usually examine your response quickly.

When filing a response within the two month deadline, the USPTO calculates extension fees from: (1) the final office action due date if the advisory action is mailed within three months of the final action mailing date and the applicant’s response was filed within two months of the final action, or (2) from the date of the advisory action if the applicant’s response was filed within two months of the final action and the advisory action was mailed more than three months from the final office action mailing date.
The response should have no, or minimal, amendments and include argument or remarks explaining the reasons for patentability.
The deadline set in the final office action continues to run even if the examiner does not respond. This means that you may incur late fees or even abandonment if the examiner does not reply in a timely manner.
If the examiner believes that the response fails to overcome the final office action, the USPTO will issue an advisory action. If the examiner believes that the response overcomes the final office action, the USPTO will issue a notice of allowance.
There is no USPTO fee for filing a response within two months of the final office action mailing date.

  1. File a notice of appeal and (1) A pre-appeal brief conference request, or (2) File an appeal brief. A notice of appeal starts the appeals process and requires payment of an official USPTO fee. At any time during the appeals process, you can file a continuation application, divisional application, continuation-in-part application, or a request for continued examination with a response (see number 4, below).

You may elect to file a pre-appeal brief conference request that must not include claim amendments and have no more than 5 pages of argument regarding 35 USC 101, 102, 103, and 112 issues. A three examiner panel, including the examiner who issued the final office action, reviews the request. If the panel agrees with the request, the USPTO issues a notice of allowance or new office action. If the panel disagrees with the request, the application proceeds to the next step in the appeals process.
You may elect to file an appeal brief. If you do, your appeal brief is due within 2 months of filing the notice of appeal. The examiner will issue a brief in response to that, and you will have the option of replying to that brief. You can request an oral hearing before an impartial panel of examiners who will make a determination on the appeal once the briefing is complete.
The USPTO charges a fee for filing a notice of appeal and another fee for requesting an oral hearing.

  1. File a response with a request for continuation (RCE). If your response is substantive, the RCE removes the finality of the last office action and the next office action you receive will be nonfinal.

The USPTO charges a fee for filing an RCE and subsequent RCEs incur a higher fee than the first RCE.

  1. File a response more than two months after the final office action’s mailing date. You may file a response after the two month deadline discussed in (2).  If the examiner believes that the response fails to overcome the final office action, the USPTO will issue an advisory action. If the examiner believes that the response overcomes the final office action, the USPTO will issue a notice of allowance.

When filing a response under this option, all deadlines for responding and all extension fee deadlines continue to run, even if the examiner does not review your response. Thus, you may incur substantial fees or your case may go abandoned.
We do not recommend this course of action unless you have extremely minor amendments that will place your application in condition for allowance.
The USPTO charges no fee for filing a response after final.

  1. File a continuation, divisional, or continuation-in-part application. These are all new applications based on the current application. Continuation and divisional applications have the same disclosure as the current application and share its priority date. A continuation-in-part application adds disclosure to the current application and does not share its priority with respect to the additional disclosure. All three types of applications are new applications and restart the application process for the new applications. The current application’s response date will continue to run until you file a response or the current application goes abandoned. Abandonment of the current application does not abandon the new application.

The USPTO charges its normal filing fees for filing any of these applications.

  1. Abandon the application. At any time, you may take no action and allow the application to go abandoned or affirmatively abandon the application.

The USPTO does not charge a fee for abandoning an application.
If you have questions, contact me.
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A Patent Attorney, the Musical?

By Stephen B. Schott
There’s an old line (a knee-slapper in patent circles) that goes something like, “The only person you want to avoid more at a party than an accountant is the patent attorney.” I get it. We’re lawyers, and as if that wasn’t bad enough, we’re scientists. We are the neurosurgeons of the law—super-specialists with few good stories and propeller-head personalities.
As you can see below, even my best efforts probably won’t contradict your opinions, but I gave it a try.

Maybe this will be my new elevator pitch.
If you have questions, contact me.
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Hot Off the Press: Updates to USPTO Practice

By Stephen B. Schott
imgres_med_hrLike ebony and ivory living together side by side on my piano keyboard, the US Patent and Trademark Office’s goal is harmony. The PTO’s current harmonic goals bring it into compliance with the Patent Law Treaties Implementation Act of 2012. That act became law on December 18, 2013 and further aligns United States patent practice with that of other countries.
The USPTO issued a memo summarizing the changes for its examiners. The highlights for applicants include:
(1)   Patent applications no longer require a claim at the time of filing. Failure to file an application with a claim will result in the USPTO issuing a notice requiring a claim to be filed at a date specified in the notice.
(2)   Many office actions that previously set one month to respond, including those for restriction requirements and non-compliance, now allow for two months to respond. This is especially welcome for firms that work with international clients where correspondence and translations to and from the client may be delayed for weeks.
(3)   An application may now validly claim priority to, or the benefit of, a foreign or provisional application filed up to fourteen months earlier (eight months for designs to validly claim foreign priority). Any application that claims priority to a foreign application or the benefit of a provisional application filed more than twelve months earlier (except as a continuing application of another non provisional application) must include a petition to restore the right of priority to the foreign application.
Thanks to Donald Zuhn at McDonnell Boehnen Hulbert & Berghoff LLP for bringing the memo to my attention in his blog.
If you have questions, contact me.
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The Ten Most Important Patent Cases

By Stephen B. Schott
What are the 10 most important patent cases? University of Iowa professor Jason Rantanen of Patently-O answered this question with his list of the top 10 patent cases. My Christmas gift to you: A short summary of each case.
Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Once upon a time, there was a case called Texas Digital Systems, Inc. v. Telegenix, Inc. The author of this article worked on that case, was on the trial team that tried it in Dallas over 4 boiling weeks in August, and won the federal appeal from that trial. For 3 years, Texas Digital Systemswas the most cited patent case in the United States. ThenPhillips came along, overruled just one part of Texas Digital Systems, and ended my 15 minutes of patent fame. You could say that Phillips messed with Texas.
Phillips is the primary reference case when deciding how to interpret the meaning of a word or phrase in a claim. Specifically, courts must look at, in order of importance:

  1. A claim term’s plain and ordinary meaning in view of the patent’s use of the term;
  2. The meaning of the term as informed by the patent’s prosecution history, that is, the back and forth correspondence between the inventor and the US Patent and Trademark Office; and
  3. The meaning of the term in extrinsic sources like scholarly journals, expert witness testimony, and perhaps dictionaries, although dictionaries can inform the plain and ordinary meaning in (1).

Bowman v. Monsanto, 133 S.Ct. 1761 (2012). You can’t copy a patented article and reuse it. This holding may seem obvious but in this case, the article was Monsanto’s patented soybean seed, and the reuse was a later planting using seeds produced from the first planting.
450px-Samuel Morse 2
O’Reilly v. Morse (also known as The Telegraph Patent Case), 56 U.S. 62 (1853). Samuel Morse is just off the Mount Rushmore of famous inventors. Not only does he have an unmatchable appearance, but at least in this case, he tried to protect not only his invention, but just about every improvement that would come subsequent to it, using the language in a patent claim, “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims….” The Supreme Court found that this language went beyond the scope of patentable protection and was not enabled. Later cases expanded the O’Reilly holding to preclude inventors from claiming mere abstract ideas.
Diamond v. Chakrabarty, 447 U.S. 303 (1980). General Electric’s inventor Chakrabarty created a bacterium capable of breaking down crude oil, a useful life form for cleaning up oil spills. The Supreme Court considered whether creation of this living organism was within the scope of patentable subject matter and decided that a live, man-made organism was an article of manufacture, and thus protectable under patent law.
corset spring
Egbert v. Lippmann, 104 U.S. 333 (1881) and City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878). These two cases consider the limitations of the public use and the on sale bar that prohibit an inventor from securing a patent when the invention is publicly used or sold more than a year before the date of the application for patent. In Egbert, the inventor of a steel corset-spring gave his inventive corset to his then-girlfriend in 1855, showed the corset to someone in 1863, applied for a patent in 1866, and later sued for patent infringement. The Supreme Court found the corset-spring patent invalid both for being used in public—even though such use was modestly unseen—for 11 years before the application for patent, and because the corset-spring gift was given without restriction to keeping it secret. City of Elizabeth considered just the public use question. In City of Elizabeth, the inventor Nicholson experimented with his inventive pavement for years before his application for patent. He performed his experiments using his pavement in publicly trafficked areas. After 6 years of such experiments and having identified which pavements were the most advantageous, Nicholson applied for a patent. In ruling that the patent was not invalid due to public use, the Supreme Court created an exception to the public use bar for experimental uses.
Graham v. John Deere, 383 U.S. 1 (1966); KSR v. Teleflex, 550 U.S. 398 (2007). These two cases describe the tests for determining whether a patent claim is invalid as obvious. InGraham, the Supreme Court held that in considering whether a patent claim is obvious, courts must consider the following factors: (1) The scope and content of the prior art; (2) the differences between the claimed invention and the prior art; and (3) the level of ordinary skill in the prior art.
The Supreme Court went on to suggest “secondary considerations” that could serve as evidence of nonobviousness including: (1) The invention’s commercial success; (2) long felt but unsolved needs; and (3) failure of others. From 1966 to 2007, obviousness law was in a state of flux until a string of cases in 2004-2007 resulted in an obviousness test that Justice Scalia described as “gobbledygook.” Seeking to de-gobbledygook obviousness, the Supreme Court in KSR held that there is no rigid test for obviousness and that a patent claim is invalid as obvious if a person of ordinary skill in the art would have found it obvious to try the claimed solution when choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
The Incandescent Lamp Patent Case, 159 U.S. 465 (1895). The inventors in this case sought to accuse none other than Thomas Edison and his bamboo filament bulb, of infringing their patent. On reviewing the patent in question, however, the Supreme Court found that the patent’s description was so vague and uncertain that the public could not tell, except by independent experiments, how to construct the patented device, and thus found the patent invalid.
Graver Tank v. Linde Air Products, 339 U.S. 605 (1950). Graver Tank took up the issue of whether a product infringes a patent claim when the claim does not quite read on the product. In deciding that a product can infringe a claim if the product is equivalent to, but not literally within, the claim, the Supreme Court formulated a test for equivalents. An accused product is equivalent if it performs substantially the same function as claimed, in substantially the same way as claimed, to yield substantially the same result as claimed. This function-way-result test remains a valid equivalents test and the cornerstone of the Doctrine of Equivalents
Gorham v. White, 81 U.S 511 (1871). Gorham involved forks and in particular the test for infringement of a specific type of patent on a fork called a design patent. A design patent’s scope is limited to the ornamental appearance of its drawings. Compare the accused and found-to-be-infringing designs on Christopher V. Carani’s webpage. The test for infringement of a design patent is “If in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such to deceive such an observer, inducing him (or her) to purchase one supposing it to be the other, the first one patented is infringed by the other.” This is the “ordinary observer” test.
If you want a more in depth discussion of the cases, please take Jason’s Introduction to Intellectual Property class. Otherwise, give yourself an A and I’ll see you after Christmas.
If you have questions, contact me.
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