Archive for January, 2011

Design Patents

January 28, 2011

Utility patents get all of the publicity in when discussing innovation.  Another option that an inventor may want to consider is a design patent.  Utility patents cover structural and functional aspects of an invention, while design patents cover the asthetic features.

Design patents differ from utility patents in a number of basic ways.  A design patent is granted to cover the ornamental design of an object that has practical utility.  For example, a design patent may be obtained for a new shape of a beverage container, the particular shape and features of the tread of a shoe, computer icons, and other items that have practical utility. 

A design patent is not permitted for something that exists for purely aesthetic reasons, such as a work of art.  A painting, sculpture, or other work of fine art would be protectable by copyright and possibly other intellectual property rights, but would not be eligible for design patent protection.

An invention may be entitled to both a utility patent and a design patent since a utility patent protects the structure of an article and the way it is used and works; a design patent protects the way an article looks.  If the design–the way the article looks–is dictated primarily by the article’s function, it would not properly be the subject of a design patent.  An example may be the shape of a gear that is designed primarily to fit with other gears and not for aesthetic purposes.

The requirements for obtaining a design patent are similar to that for utility patents.  The design must be novel and non-obvious; the examiner will perform a search of the prior art to be certain that the design meets these requirements.  Furthermore, the drawings must clearly show the features sought to be protected by patent.  The drawings will typically be more detailed than in a utility application as they will often show more views of the invention.  The drawings contitute the claims of the design patent.  Because they don’t require a detailed specification like a utility patent, design patents are also less costly to prepare and file.

Design patent protection lasts for 14 years from the date the patent issues compared to 20 years from the earliest filing date for a utility patent.  No maintenance fees are required for design patents.

Another advantage of design patents over utility patents is that they seem to be much easier to obtain.  In recent years, design patents have had an allowance rate of about 90% over the last few years, compared to utility patent allowance rates of under 50%.  Over 80% of design patent applications are allowed without rejection; only 1.2% are rejected based on prior art with a larger number rejected on formality grounds.

In an era of increasing backlog and pendency of utility applications, more than half of design patents are pending for less than a year, with the average pendency being about 16 months.

For an invention where design and utility patent protection are both appropriate, I would not skip the utility patent.  An inventor should at least file a utility application for its broadder scope of coverage and should also consider a design patent.  A design patent would provide some protection while waiting for a utility patent to issue.  They are also cheap since they don’t involve a great deal of preparation and prosecution.  Inventors should always consider whether their inventions are eligible for design and utility patent protection.

Another Argument That the False Marking Statute is Unconstitutional

January 26, 2011

While patent owners wait for Congress to amend the false marking statute, plaintiffs continue to file cases seeking damages for falsely marked products, such as with patent numbers that do not cover the product or with patents that have expired.

In one case filed last year, Alchemy Asset Services alleges that GlaxoSmithKline has marked its Fiber Choice product with expired patent numbers.  GSK responded with a motion to dismiss based on the fact that false marking cases are required to be pled with particularity, meaning the complaint requires a specific recitation of the facts that set forth the cause of action, similar to the requirement for cases alleging fraud.  The magistrate judge in the case recommended that the court grant GSK’s motion to dismiss on this basis.

GSK also argued that the false marking statute is unconstitutional under Article II, Section 3 of the Constitution.  For those not familiar with this provision, it sets forth the authority of the Executive Branch of the Government.  Specifically, the provision of this section at issue is the requirement that the president “shall take Care that the Laws be faithfully executed.”  This is known as the “Take Care” Clause.  By delegating enforcement of the false marking statute to private citizens, so the argument goes, Congress has delegated an executive function.  This it cannot do under the Constitution.

These types of actions, where enforcement of a law is permitted by a private citizen who then shares in the penalty enforced by the law, are called qui tam actions.  Most qui tam actions have been repealed or amended by Congress; the Patent Act’s false marking statute is one of the few that remain. 

The constitutionality of many of these statutes has been challenged in the past and upheld.  Many courts have used an “executive control” test in upholding the constitutionality of such statutes.  If the Executive Branch, usually the Attorney General, has the right to be notified, to intervene, and to take over such cases, they pass constitutional muster.

In this case, GSK argues that the false marking statute does not contain any such “executive control” protections.  Without these protections, the Executive Branch does not have any control or say in the cases.  Thus, the statute is unconstitutional under the Take Care clause.  The Federal Circuit specifically declined to address this question last year in Stauffer v. Brooks Brothers, Inc. because it was raised in an amicus brief.  It was not argued by either party or decided by the district court.

Law360 (subscription service) reports that the court in the GSK case has granted the government’s motion to intervene to submit a brief on the constitutionality of the false marking statute.  The plaintiff in that case has stated that it welcomes the intervention and believes that the government will support the contitutionality of the statute.

Gray on Claims and the law firm of McDonnell Boehnen have sites devoted to false marking cases.

Patent Reform 2011

January 21, 2011

Here we go again. Sen. Patrick Leahy (D-VT), chairman of the Judiciary Committee, has announced that he plans to introduce his latest bill on patent reform next week. The bill is also being pushed by Republican members of the Committee Sens. Orrin Hatch (UT) and Charles Grassley (IA).

On his website, Sen. Leahy notes that the bill “mirrors key improvements” to the legislation announced last March as the “Manager’s Amendment.” He indicates that it is also based on legislation introduced by House Judiciary Committee Chairman Lamar Smith (R-TX) and Congressman Howard Berman (D-CA) that passed the House in 2009, but never made it to the Senate floor.

Sen. Leahy plans to introduce the bill on Tuesday, the Committee’s first day of executive business, and has scheduled a mark-up session already for Thursday, January 27. It appears that he will try to fast track the bill again without permitting hearings or debate.

What’s in the Bill?

Although we’ve seen most of this before, it’s a good idea to review the major changes contained in the bill.

1.     The bill proposes the switch from a first-to-invent system to a “first-inventor-to-file” system. They continue to try to draw the distinction between this and the first-to-file system that exists in most other countries.

Under current law, for prior art that is publicly available less than one year before an application for a patent, an inventor can prove that he invented the claimed invention prior to the date of the prior art. In that case, he can still get a patent for his invention. The bill proposes to change the one year grace period that currently exists to limit it to only disclosures by the inventor or someone who obtained the disclosure from the inventor.

A “first-to-invent” system sometimes requires a determination of who actually was the first to invent if two applications or an application and a patent both claim the same invention. Currently, these proceedings are referred to as “interferences.” The new bill would replace interferences with new “derivation” proceedings to determine if the inventor of an earlier-filed patent “derived” the invention from the inventor of a later-filed application.

2.     False marking cases would be limited to those filed by persons who have actually been harmed by the alleged misconduct. False marking cases would also include a statute of limitations that limits the time to file such cases to 10 years after the alleged misconduct or 1 year after the plaintiff in such an action became aware of the alleged misconduct.

3.     The bill contains a provision that permits patent applications to be filed by assignees without the requirement of a declaration by the inventor, provided the inventor is given notice.

4.     It also contains the damages compromise to require district court judges to act as gate-keepers for evidence and jury instructions on the issue.

5.     The bill includes the changes to make pleading and proving willful infringement more difficult, including requirements of pre-suit notification and specificity in pleadings.

6.     The bill includes the post-grant review proceeding that may be filed with the PTO within 9 months of a patent’s issuance, and an inter partes proceeding before the PTO after this time-frame. The bill includes yet another standard for the PTO to decide whether to institute such a proceeding. The petitioner must provide a “reasonable likelihood” (or more likely than not) that it will prevail in invalidating at least one claim of the patent. An accused infringer may not petition for post-grant review if it has already filed an action in court regarding the patent’s validity or more than 3 months after it is required to respond to an infringement suit filed against it. This should cut down on the number of co-pending Federal court and PTO proceedings. The bill also contains estoppel provisions for arguments raised or that reasonably could have been raised in the PTO proceeding. The arguments may not be raised in a later PTO proceeding or in a court action.

7.     The bill permits third parties to submit prior art patents or publications, as well as PTO or court statements by the patent applicant to the patent examiner during pendency of a patent application. Such statements may be made confidentially.

8.     The bill includes provisions for Supplemental Examination. A patent owner may provide potentially material prior art to the PTO. If the PTO determines the information provided has no effect on patentability, no charge of inequitable conduct can be brought based on the information submitted. The information must be brought to the PTO and the reexamination must be completed prior to litigation.

The bill does not grant the PTO substantive rule-making authority, but does provide the PTO with fee-setting authority and retains provisions for reduced fees for small and micro-entities. The bill would also add a new fee of $400 for applications that are not filed electronically.

The bill repeals the Baldwin rule that requires Federal Circuit judges to live within 50 miles of Washington, DC; it deems patent applications on “tax strategies” to be within the prior art; and it retains the best mode requirement, but does not permit a patent to be invalidated for failure to comply with this requirement.

The text of the bill is available here. Patent Docs provides a good summary of the bill.

USPTO Issues Record Number of Patents

January 17, 2011

Patently-O is reporting that the PTO issued a record number of patents during the 2010 calendar year, just shy of 220,000.  This is a 31% increase over 2009 and about 27% more than 2006 when the PTO issued a record 173,000 patents.  Why the significant increase in the number of issued patents?

Filings were up slightly in 2010, but not 31% over the previous year, so that’s not the reason.  Patently-O believes the increase in issued patents is due to administrative changes by PTO Director Kappos who took office in mid-2009.  He notes that more applications are being rejected as well, but that the allowance rate is increasing over recent years. 

Is it time to get all panicky that examination quality is going down?  Is the PTO issuing a lot of bad patents?  Patently-O suggests that it is time for a quality study comparing patents issued in late 2008 with those in late 2010.

PTO Data

According to the PTO’s Data Visualization Center (the Dashboard), the current allowance rate using the traditional method of considering RCEs to be abandonments is 45.6%, while the allowance rate considering RCEs to not be abandonments, but rather continued examination, is 62%.  Are these numbers particularly high?  Should we be worried?  In December 2008 (the time for comparison suggested by Patently-O), the allowance rates were 42.3% and 60.3%, respectively.

Has the allowance rate increased significantly during this time?  It has gone up about 3.3% or 1.7% during those two years.  The rate is up, but historically the allowance rate had been about 65% under the traditional method, so this increase is hardly cause for alarm that quality must be suffering.  There must be another reason for the increase in patents issued.

Further review of the Data Visualization Center provides some clues.  First, in December 2008, the PTO had 6,063 patent examiners, while in December 2010 there were 6,420, an increase of nearly 6%.

Next, the PTO is decreasing actions per disposal.  Generally, when an applicant files a patent application, he is entitled to 2 office actions, a first action and a final action.  To continue examination beyond a final office action, the applicant must file an RCE or continuing application.  When an examiner must do a new search that is not related to claim amendments, such as when the first search is incomplete, additional non-final office actions may be issued after the first one.  This decreases the examiner’s efficiency because the first action was incomplete or otherwise defective. 

In December 2008, the PTO averaged 2.85 actions per disposal; in December 2010 that number was down to 2.42.  This means that applications are allowed or abandoned (or RCEs are filed) with nearly half an office action less over the last two years.  This means that examiners are able to get to more and more applications without having to re-do work on existing cases.  As a result, more applications will be allowed and rejected.  This has aided the PTO in reducing the backlog of unexamined applications from 760,000 in December 2008 to about 720,000 in December 2010.

Based on the PTO’s own quality initiatives, in comparing the first quarter (Oct-Dec) of FY2009 with FY2011, the final rejection and allowance compliance rate has risen from 94% to 96.2% and the in-process compliance rate has risen from 93.4% to 94.9%.  Independent verification is helpful, but the PTO itself thinks its quality is increasing, not decreasing.

Thus, there appear to be multiple reasons that more patents are being issued (and applications rejected) and it does not automatically mean that examination quality has become lax.  Quality studies are nearly always helpful and patent quality is very important, but we need to be careful not to have a pre-conceived notion of what the result should be prior to conducting such a study.

Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition

January 14, 2011

Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition

 The Intellectual Property Section of the Virginia State Bar has a total membership of over 1,400, including both lawyers and members of the judiciary. The Intellectual Property Law Student Writing Competition seeks to promote academic debate and the dissemination of ideas and scholarly writing in the field of intellectual property. The Competition is sponsored by the Intellectual Property Section of the Virginia State Bar.


$4,000 cash and publication on the Section’s website.


The Competition is open to all students enrolled and in good standing during the 2010-11 academic year (including December 2009 graduates) at (i) any Virginia law school, or (ii) a law school outside Virginia as a resident of Virginia (with proof of residency). Articles must have been written solely by the entrant while enrolled in law school.

View the complete rules at  

More information:  flyer and rules.

Patent Reform in the 112th Congress

January 13, 2011

Last month, the 111th Congress concluded its work and ended its existence in a lame duck session and with it S. 515, the so-called Manager’s Amendment on patent reform.  Last week, the 112th Congress commenced with a slightly new dynamic in congressional leadershisp.

On the Senate side, Patrick Leahy (D-VT) remains the chair of the Judiciary Committee, while 3 Democratic members were not re-elected:  Arlen Spector (D-PA) lost in the Democratic Primary,  Russ Feingold (D-WI) was defeated for re-election, and Ted Kaufman (D-DE) did not run for Vice President Joe Biden’s seat that he was holding until the special election in Delaware.  Sen. Leahy has been a leading advocate of patent reform, viewing it as a legacy for him.  He was a leading proponent of S. 515.  Presumably, he will push a substantially similar bill through the Committee this year and then begin pleading for a full Senate vote.

More dramatic changes took place in the House with Republicans gaining control.  Lamar Smith (R-TX) will chair the House Judiciary Committee with Darrell Issa (R-CA), another member of the Committee, also chairing the Government Oversight Committee.  Rep. Smith has also been a strong advocate of patent reform.  His vision, however, may be substantially different from that of the Senate.  If both houses pass their own versions of patent reform, which seems likely, the bills would need to be reconciled during contentious Conference Committee proceedings.

Judge Michel

Law360 (subscription service) reports that former Federal Circuit Chief Judge Paul Michel is continuing his odyssey for patent reform.  In speaking at a panel at a DC Bar event, Judge Michel continues to call patent reform “the single most important issue facing the United States today.”  While this may seem a bit over the top, he rightfully noted that our economy is tied to innovation in significant ways.  To truly lift ourselves out of the current economic slump, patent reform is a necessity.

Judge Michel is now calling for piecemeal reform.  The comprehensive bills that have been introduced in the last several congresses have not passed because they covered too many issues, many of which were and are quite contentious.  The bills contained a number of vital provisions, however, that are not contentious and could be easily passed.  This is the approach that Congress should now take:  pass the easy stuff and then argue over the bigger stuff.

Many of the reforms that have been advocated recently are being handled by the courts, such as inequitable conduct, damage reform, declaratory judgments, injunctions, and now the presumption of validity.  The most vital reforms, however, need to take place at the PTO.  The courts cannot solve the PTO’s funding dilemma, nor can they address the need for improved infrastructure such as a new IT system.  Only Congress can solve these problems.  Congress should permit the PTO to keep all of the fees that it collects and permanently end fee diversion.  Judge Michel envisions a “titanic struggle” between the houses of Congress if each passes a substantially different reform bill.

I think Judge Michel is on to something.  His idea is certainly not new, but it is good to have a signficant voice advocating the passage of reforms that are not contentious and are vital to PTO reform.  Congress likes to work with large bills that cover many issues because it can often work out compromises within the bills.  One side may accept provisions that it doesn’t like in exchange for provisions within the bill that it advocates.  This system of reform has not worked for patent reform in the last few congresses.  Now, it’s time to try a new approach.

One of the problems with the patent reform bills in the 111th Congress was the lack of hearings that included those on all sides of the issues.  The Senate Judiciary Committee did hold some hearings, but they were not comprehensive and did not include all viewpoints.  The issue also deserves vigorous debate.  That, of course, is not how Congress works.

While it is certainly true that passing nothing is better than passing a bad bill, it is time to pass at least some patent reform to get the PTO on better track.

Patent Application Costs

January 10, 2011

On Friday, a new post on IPWatchdog caught my attention.  While I co-sign the post written by Gene Quinn, the post was about an issue that I believe is so important that I feel I must add my two cents.  The post concerned the cost of patent applications and prosecution.

I don’t want to repeat everything from the IPWatchdog post, but a few points bear emphasizing.  There are a large number of inventors and companies out there now that want patent work done as cheaply as possible.  Especially since the economy has tanked, many inventors and companies are attempting to low-ball fees for preparing patent applications.  Gene mentions the $1,400 patent application.  There is simply no way to have a quality patent application prepared for this price.

A typical situation that I encounter is where an inventor or company sends me a pending patent application and asks me to take over the prosecution because they are dissatisfied with their current counsel.  They believed that the invention would be patentable and that the examiner should be able to be persuaded of this fact quickly.  They have also had commercial success with the invention, but are afraid that if they don’t get a patent, knock-offs will appear that will undercut their prices and knock them out of the market.

Often, I find out that they are correct–certain aspects of the invention are patentable.  When I review the specification, however, I realized that it is only 8 or 10 pages long.  They didn’t want to spend much money when they had their application prepared and filed (often a couple years earlier), so they went with the low-ball price for its preparation.  Now, many of the features that seem to make the invention patentable are not sufficiently described in the specification; I cannot add them to the claims because they would constitute new matter.  I do the best that I can to salvage something from the application for them, but there is a lesson here.  If the description contained more details and was say 15 or even 20 pages long, these aspects of the invention could be added to the claims.  This is not to say that longer applications are always better, but in general this is the case.

As Gene notes, each invention should be treated as a million dollar invention when the application is being prepared.  At that time, who knows which ones will be?  I always tell clients that patents are speculative investments.  You can’t tell from the start which inventions will be successful and worth the investment; you can’t be certain which will be granted broad patent protection; and, perhaps most importantly, getting a patent doesn’t mean the product will be successful in the marketplace.  If you don’t spend the time and money to prepare an adequate patent application, it doesn’t matter.  The resulting patent, if any, will only be worth what you paid for it.

His point about the marketplace is also a good one.  With a down economy many or most patent attorneys either didn’t raise their rates or even lowered them slightly the past few years, and rightfully so.  The market dictated this event.  When comparing the services of an attorney who charges $800 per hour with one who charges $50 per hour, however, one must realize that the attorney with the low-ball rate would undoubtedly charge a higher rate if the market demanded it.  If he can be just as busy charging $200 or $300 per hour, why would he continue to charge $50 and make less money?

This isn’t to say that a higher rate always gives you a better product.  One should also take referrals and other factors into account when comparison shopping for patent services.  Sometimes a better patent attorney may choose to work for a smaller firm or in a smaller market where rates are lower than those in the big city at the big firm.  His or her work may be just as good or better than the big-firm attorney in New York or DC.  When a price is too good to be true, however, it probably is.

On the point of whether to begin a patent application by preparing the claims or the specification, I have done it both ways.  I generally find, however, that preparing the claims first is advantageous.  In this way, I can confirm with the inventor his or her understanding of what the invention actually is.  I then prepare the written description.  I try to make it as detailed as possible and get the inventor to provide me with as many different implemenations, embodiments, and optional features as I can.  It is indeed an iterative process:  when preparing the description, it is inevitable that I will discover features that that should be claimed, and vice versa.  And yes, all of this takes time; more than $1,400 worth of time.

I will often discover during prosecution that there are features of the invention that I need to add to the claims or that are patentable that were not included in the original claims.  By having an adequate disclosure from the beginning, adding such claims is easy.  If the description is too terse, however, this can’t be done.  New matter cannot be added to a pending application during prosecution.

When a client comes to me with a new idea for a patent application, I try to get all of the details of the invention from them and then provide what I believe to be a fair and realistic estimate of the cost to them based on the time it should take to adequately describe and claim the invention.  Sometimes my estimate is too high and the actual cost is lower; sometimes things happen that raise the costs.  I previously provided some tips and strategies to keep costs down and get better patents.

The bottom line is that in patent preparation and prosecution, like most everything else, you get what you pay for.

DuMont and Reyna Renominated to Federal Circuit

January 7, 2011

The Senate confirmed 19 Federal judges in its lame duck session, including Judge O’Malley to the Federal Circuit.  There were 19 other nominees confirmed by the Judiciary Committee that did not receive a vote by the full Senate including some that Republican find very controversial.  An additional 24 nominees did not make it out of the Judiciary Committee.



President Obama has resubmitted the nominations of 42 of those 43 who were not confirmed in the 111th Congress.  This includes the nominations of Edward DuMont and Jimmie Reyna to the Federal Circuit.  DuMont was originally nominated in April 2010 and Reyna in September 2010; neither received a hearing before the Judiciary Committee.

It is important that these nominees be confirmed by the Senate quickly, as there may be a large number of vacancies on the court in the near future.  Of the 10 active judges, Judges Newman, Lourie, Bryson, Gajarsa, and Dyk are all eligible for senior status should they so desire.  In addition, Judge Linn and Chief Judge Rader will likewise be eligible in the coming years.

Patent Pending, Marking

January 4, 2011

I’m sure you’ve seen the words “patent pending” or “patent applied for” on a product or package before.  What exactly do these phrases mean?  What legal rights are attached to them?


Patentees are generally only entitled to infringement damages once an infringer has notice of the infringement.  The patent marking statute permits patentees to provide notice to the public by marking a product or product package that is covered by a patent with the patent number.  This is why it is recommended that patentees mark their patented products or product packages with the number.

Patent applicants will often mark products or product packages with the phrase “patent pending” or “patent applied for”.  These phrases do not have a legal meaning under US patent law, as they do not indicate that the product is covered by a patent or that someone who copies the product is guilty of patent infringement.  The purpose of these phrases is to inform the public that the product is the subject of a patent application that has been filed and is pending in the Patent Office.  Although in general a patent application cannot be infringed, the public is informed that a patent may issue in the future that covers that product.  In this way, the phrases provide some deterrent effect against infringement.  Even if a patent does not issue for the product, it is believed that the patent applicant may deter some parties from copying the product while a patent application is pending, thus providing the applicant with a competitive advantage.

Patent marking is also used as a marketing technique.  Many consumers believe that a patented product is a cutting edge product–it must be better or an improvement over previous products.  “Patent pending” or “patent applied for” may provide this marketing advantage as well.

False Marking

US patent law also provides a penalty for falsely marking a product that is not covered by a patent.  This also includes marking the phrase “patent pending” or “patent applied for” on a product if an application has not be filed or is not pending in the PTO.  False marking with intent to deceive the public can result in a fine of up to $500 for each such offense.

In recent years, there have been a number of cases involving allegations of false marking.  Under current law, anyone may bring a lawsuit that alleges that a product is falsely marked.  The 111th Congress unsuccessfully attempted to pass legislation that would limit these suits to only those that are directly injured by such marking.  Presumably, this would mean only competitors.  Stay tuned for Patent Reform bills in the 112th Congress.