Saving patent eligibility

patent eligibility
USPTO attempting to fix legal confusion

The 2019 USPTO revised patent subject matter eligibility guidance attempts to bring some coherence and consistency to “Alice” patent eligibility issues.

USPTO director Andrei Iancu recently promised that the USPTO would try to clean up the “Alice” patent eligibility mess.  On January 7, 2019, the USPTO issued the “2019 Revised Patent Subject Matter Eligibility Guidance.” At first glance, this appears to be a promising approach. Hopefully, this 2019 guidance will greatly reduce the number of semi-random 35 USC 101 rejections. Some excerpts are shown below.

Properly applying the Alice/Mayo test in a consistent manner has proven to be difficult, and has caused uncertainty in this area of the law.

Since the Alice case, courts have been “compare[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases…While that approach was effective soon after Alice was decided, it has since become impractical. The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing. In addition, similar subject matter has been described both as abstract and not abstract in different cases…The USPTO, therefore, aims to clarify the analysis…

Under the procedure, if a claim recites a judicial exception (a law of nature, a natural phenomenon, or an abstract idea as grouped in Section I, above), it must then be analyzed to determine whether the recited judicial exception is integrated into a practical application of that exception. A claim is not “directed to” a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception…

If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis…

Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application… in revised Step 2A examiners should ensure that they give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application.

It is critical that examiners consider the claim as a whole when evaluating whether the judicial exception is meaningfully limited by integration into a practical application of the exception.

If the claim as a whole integrates the recited tentative abstract idea into a practical application, the claim is not directed to a judicial exception (Step 2A: NO) and is eligible (thus concluding the eligibility analysis).

Almost all patent applications are filed for practical applications. This 2019 guidance makes nearly all practical applications patent eligible.  It also somewhat reframes eligibility more in terms of the original (and in my opinion much better) “preemption” considerations. Hopefully, this will encourage examiners to stop rejecting otherwise good applications on dubious and subjective “not patent eligible” grounds.


Trademark “specimens”

Mere “advertisements” will be rejected!

Trademark “specimens” are required to prove “use in commerce”. Some website screenshots can work, but the recent In Re: Siny ruling shows that others may be rejected as “mere advertisements”.

Trademarks are very much a “use it” or “lose it” type of intellectual property. The US requires that before any trademark can issue, the owner must submit a “specimen” showing that the mark is actually being used in commerce. These specimens usually contain a JPEG (image) file with one or more examples of use in commerce.

Advertising doesn’t work: It is possible to just advertise something without actually selling it.  Thus “mere advertising” is not considered adequate proof. (For a funny example, look up “VIP“.)

Most trademark law predates the internet. However these days, much commerce is internet based “e-commerce.” Using webpages for proof can sometimes be problematic.  Webpages can be ambiguous.  Is the webpage for just advertising, e-commerce, both, neither? The old pre-internet rules are not always on point. So how does the USPTO decide what is and is not OK here?

The Federal Circuit, in the April 2019 In Re: Siny Corp. ruling, has clarified the situation somewhat. In this case, the Siny corporation filed for a trademark application. Their specimen was an image of a webpage. This webpage showed their product, along with a sales phone number and email address. So is this only advertising (reject), or mixed advertising and e-commerce (OK)?

The USPTO trademark examiner decided that this was “mere advertising”, and rejected the specimen. The examiner argued that just providing sales contact information, without more, wasn’t enough. His position was that additional sales information, such as “minimum quantity, cost, payment options or shipping information” was also needed.

Siny appealed to an intermediate USPTO PTAB board. The USPTO PTAB board agreed with the examiner. They further ruled that an adequate website specimen should show a website that functioned like a pre-internet “point of sale” display. Specifically, the website should give “enough” information to make a “purchasing decision”. They argued that the Siny specimen was deficient because: “if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.”

What is “enough” here? The PTAB board used the examiner’s list of at least some of: “minimum quantity, cost, payment options or shipping information”. Siny had none of these.

Siny appealed again, this time to the Federal Circuit. The Federal Circuit was pretty cautious. They gave the usual disclaimers that “this is a factual question which must be determined on a case by case basis”, with no “rigid” “bright-line” rules. However, they also decided that they “cannot say that the PTAB board acted improperly”.  And this is what we have for legal guidance at present!

Take home lesson: If using webpage-based specimens, try to incorporate as many elements from the “minimum quantity, cost, payment options or shipping information” list as possible. Add still more elements if available. Not all elements may be needed, but better safe than sorry.

Nice Trademark Classes

Trademark classes are like swim lanes

Welcome to the International Nice Trademark Class system, where we attempt to fit all types of goods and services into only 45 different classes. The results can be a bit strange!

As previously discussed, trademarks help protect the public from accidentally purchasing inferior products from unscrupulous business. Trademarks also help protect legitimate business from inferior knockoffs as well.

As economic growth and international trade expanded, trademark law encountered problems.  There were more products and services than there were good trademark names. Legal mechanisms needed to be created to allow similar trademarks to co-exist.  But this could only be in cases where the products and services were so different that customers would not be confused.

The trademark classification system evolved to allow at least some recycling of similar trademark names. But this is only allowed between very different types of products and services. The underlying concept is somewhat similar to the idea of “area codes” and “swim lanes”.  Think of all economic activity as being a “swimming pool”. The trademark classes divide up this swimming pool into a series of defined “swim lanes”. Any given area of economic activity thus has its own designated “swim lane” (trademark class).

The Nice classification system

Originally, every country defined its own country-specific trademark classes (swim lanes).  This created a lot of international trade confusion. To standardize this process, various countries met in Nice France in 1957. They adopted an earlier (1935 era) proposal and established a standardized list of 34 different trademark classes. This was originally just for trademarked goods. Later, 11 additional trademark service classes were also added. This brings us up to the present total of 45 goods and services. So at present, the trademark swimming pool (“all of commerce”) has 45 swim lanes. This is called the “Nice Classification”.

As might be expected from a 1935-era based classification system, it is a bit dated. Products in general use before 1935 tend to get more than their fair share of different trademark classes. More modern products and services tend to get crammed into a relatively small number of trademark classes. But this is the internationally standardized trademark law system we have, get used to it.

Why do we care?

Nice trademark classes are important when registering new trademarks. They are also important when trying to see if there are conflicts between trademarks. As a rule of thumb, if two similar trademarks describe products or services that fall into different Nice classes, then this is usually OK.  Trademark law will tend to assume that customers will not be confused.  But if two similar trademarks describe products or services that fall into the same Nice class, things may not be OK. There may be a possibility of confusion.

So, if you are filing a new trademark, it is important to specify what types of goods and services you are selling or planning to sell.  This allows the attorney to determine the Nice class for the goods and services.  A proposed trademark that may be totally fine for some Nice classes could be a total non-starter for other Nice classes.

Confusingly Similar Trademarks

Confused snail

If a proposed trademark looks or sounds too similar to another mark, and the proposed trademark is in a related area of commerce, it can be rejected as being confusingly similar.

Trademark applicants often think that if their proposed trademark is not identical to an existing mark, then it will be approved. This is not the case.

The law, in general, is all about human mental states and intentions. Trademark law is no exception. Here trademark law acts to protect us (as consumers) from accidentally purchasing the wrong thing. Trademark law also protects us (as sellers) from having unscrupulous competitors mislead our customers. For trademarks, a key issue is: would trademark “A” confuse the customers of trademark “B”?

For complicated “confusingly similar” cases, the courts can consider up to 13 distinct “Dupont factors”  (from In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563, 1973).  However, we can simplify. For most cases, the two biggest issues are Dupont factors 1 and 2:

Dupont factor 1:The similarity or dissimilarity of the marks in their entireties (to a human, who may not be paying careful attention) as to appearance, sound, connotation and commercial impression.

If a trademark examiner, judge or jury considers all of the elements of the marks and thinks that the marks are similar, this is bad. If there is actual real-world evidence that customers are being confused, this is also bad. There is some good news, however.  If similar-looking trademarks are for very different products or services, then the chance of confusion is much less. So this can be a way to escape this problem.

For example, back in the day, a customer looking to purchase music might not be confused by similarly named computer products. So originally, trademarks for Apple records and Apple computers could coexist. (Now not so much, and deals had to be made — which is OK under Dupont factor 10.) This brings us to:

Dupont factor 2:The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.” (Here there are various trademark classes, and products and services in different trademark classes are usually considered to be dissimilar.)

USPTO trademark examiners will often just initially consider factors 1 and 2. However, if you get a “confusingly similar” rejection, or someone else raises this issue, it is time to start considering the other Dupont factors.

In defense, arguments might be made that the suppliers use different trade channels (factor 3); that the buyers are sophisticated buyers that are not easily confused (factor 4); or that multiple suppliers use a similar type of mark to sell similar goods or services (factor 6).

Another good option to consider is revisiting factor 2. See if you can narrow the scope of goods or services covered by your mark. If so, perhaps you can avoid overlapping with the goods and services covered by the other mark.

Inventorship and co-inventors

Participants: RRZE (CC BY-SA 3.0) license

US patent inventorship criteria are tricky, but “conception” of the invention and “intellectual domination” are more important than reduction to practice.

If multiple people are involved with your invention, one issue that commonly arises is: “who gets listed as inventor or co-inventor, and in what order?”

For academic and scientific papers, there is a common order – the junior person who did most of the work often goes in front, the senior professor or principal investigator who may or may not have done much work goes at the end, and other persons go in the middle as co-authors according to usually unwritten criteria. So long as no one is seriously offended, the co-author list otherwise doesn’t matter too much.

Many inventors begin their careers by writing academic papers, and often make the mistake of thinking that the same rules apply to patents.

However, patents are different.  You probably wouldn’t let a friend put his name on the deed to your house unless you want to give him co-ownership.  Patents are more like property deeds.  In the US, just who is and who isn’t a patent inventor can make a big difference in terms of who ultimately owns the patent.  As a result, patents have their own set of rules as to who is and who isn’t considered an inventor.

So what are the rules for inventorship? The USPTO rules are covered by MPEP 2137.01 INVENTORSHIP.  These rules were worked out through a number of court cases, and are occasionally a bit fuzzy and open to interpretation.  At the risk of oversimplification, the main idea is that the inventor is the person who conceived of the invention, and not necessarily the person (such as a supervisor) who suggested working on the problem, or the person (such as a technician or programmer) who did the hands-on work to reduce the invention to practice (e.g. make a working prototype). In fact, reduction to practice is usually not necessary.

Other considerations, such as the issue of “intellectual domination”, are also important.  An inventor who is “intellectually dominating” an invention may still be able to use suggestions from others without making them co-inventors.

Things can get tricky. Sometimes the supervisor’s suggestion is really the key insight behind an invention,  making the supervisor an inventor. Similarly, sometimes the person reducing the invention to practice ends up solving unexpected problems, and these solutions form a key part of the invention, making the “technician” an inventor.  Here looking at the invention’s claims can help sort things out.  Who was responsible for what?  Note, however, that claims can change during the examination, and sometimes an inventor can end up being added to an invention, or left on the “cutting room floor” as a result.

In any event, the best time to consider these issues is in advance of filing.  It is also important to discuss assignment in advance of filing as well since the usual goal is to have 100% of the invention assigned to the same persons or organizations.


Writing patent claims

A patent claim is like a jigsaw puzzle piece
A patent claim is like a jigsaw puzzle piece

Writing patent claims is analogous to describing multidimensional jigsaw puzzle pieces using words.  Your claims have to fit in the spaces between prior art.

Patent claims are the most important part of a patent because the claims are legally enforceable.  Claims are also the trickiest part because they have to follow many rules.  Claims should describe your invention, not read on the prior art, and not be obvious variations on prior art. Claims should also be precise enough that others can clearly determine what it is that you are claiming.

Like a jigsaw puzzle:  As a useful analogy, consider each patent claim to be somewhat like a multidimensional jigsaw puzzle piece. Each claim should be written using words and clauses that, in addition to describing your invention, “bend in” to avoid prior art, and “bend out” when there is no prior art.

From the patent examiner’s standpoint, he or she is looking at your claims in the context of the other prior art (the other pieces). The examiner is determining if each of your particular claim “pieces” is fitting nicely into the holes between prior art, or if they are hitting the other prior art “pieces”.  If there is overlap, the examiner will, at a minimum, want you to make your claims “bend in more” to avoid that prior art.  Part of the process of writing patent applications is to try to anticipate where this might happen and to write the patent in a way that gives you more options to “bend in” and “bend out” during the patent examination process.

There is one big difference between jigsaw puzzles and patent claims, however.  In jigsaw puzzles, although the different pieces can’t overlap, the gap between the different pieces can be made very small.  Think of this gap as the area where, given that one piece is “bending in“, it is “obvious” that the other piece must “bend out“.

Unlike jigsaw puzzles, examiners often require that this “gap” be big enough so that the shape of your jigsaw puzzle piece (claim) is not immediately obvious in view of the shape of the neighboring pieces.  In fact, a big part of the patent examination process is negotiating the extent of this gap, and how best to amend the claims accordingly.

USPTO office actions

USPTO office actions
USPTO office actions

USPTO office actions are used to reject most patent applications by using “done before”, “obvious”, “vague”, or “not patent eligible” type arguments.

Although we all hope that a patent application will sail through the USPTO patent examination process and be allowed “as is”, this usually doesn’t occur.  As a practical matter, examiners work on a quota system. The net effect of this quota or “count” system is that the average successful patent is usually rejected several times before it is allowed.

Typically an examiner will first read the patent claims, and search for various citations (often earlier filed patent applications) that match certain claim key-words.  The examiner will then write a 20-40+ page “office action” document that rejects your various claims for various reasons, and send it to the correspondence contact of record.  The examiner expects you to respond within three months by submitting a written “office action response” that rebuts these various rejections.

The most “popular” USPTO rejections are:

Done before – 35 USC 102: The examiner thinks he has found another single citation that teaches everything in your particular claim. However absent actual copying, no two patents are usually totally alike. This type of rejection can often be rebutted by explaining where the citation is different, or amending the claims to add additional detail that differs from the citation.

Obvious – 35 USC 103:  The examiner (sometimes impermissibly guided by your disclosure) is attempting to reject your claim by combining features from multiple citations. The examiner may often create a Frankenstein concept that may or may not be plausible. Fortunately, there are examination rules here. Often this type of rejection can be rebutted by any of 1) showing that the examiner is misquoting the citations, 2) amending your claims, 3) showing which “103” examination rules were broken.

Vague – 35 USC 112:  This “vagueness” or “indefinite” type rejection is used for different things. Sometimes it is harmless and easily corrected, such as when the claim’s grammar is off. Sometimes it is deadly, such as when your underlying patent application doesn’t teach how your invention works in adequate detail.  This is more likely to happen if the original application lacks specific examples.  Although this can often be rebutted or fixed by changing the claims, sometimes the only way to attempt to fix this is to file a “continuation in part” application that adds the missing detail.

Not eligible – 35 USC 101:  In the old days (i.e. before 2015), this was a rarely used rejection because the 35 USC 101 law was written to be very expansive. However, recent court decisions have made this area quite a swamp, and this is still being sorted out. In the meantime, realize that business methods and financial methods have a higher than average rejection risk.

Patent & trademark annuity fees

Time passes, set up reminders for your annuity (maintenance) fees

It is easy to lose patents and trademarks by forgetting to pay their annuity fees. Set up your automatic reminder systems today.

You have just received your US utility patent or trademark, congratulations!  But remember that unless you pay annuity fees (maintenance fees) during certain future time windows, your patent or trademark will expire early.  No, you can’t pay these fees early. You must wait until the time window opens to pay.

Why do we have this system?  IP (Intellectual Property) laws are intended to balance both public and private rights.  The underlying idea is that if the IP is really important to you, then you will keep track of the payment windows.  If it is not important to you (as evidenced by your forgetting to pay), then the public rights part of the policy kicks in. The IP rights get transferred back to the public.

Utility patents (the most common type of patent) will often have about a 17-20 year term (your mileage may vary), with maintenance fees due during specific time windows at 3-4, 7-8, and 11-12 years after issue. There is no requirement that patents actually have to be used to keep them in effect.  So during these time windows, the USPTO will just ask you to affirm that you are authorized to pay, and take your money.

Trademarks have to be renewed during specific time windows at 5-6 and then every 9-10 years (forever) after issue.  Unlike patents, trademarks are a “use it or lose it” type of IP.  The USPTO, in addition to charging fees, also requires proof of actual use in commerce. They will deny renewal if this proof is absent or unconvincing.

The responsibility for ensuring that these annuity fees are paid ultimately rests with the IP owner.  Although some law firms may occasionally send out courtesy reminder notices, such courtesy reminders should not be relied upon.

Instead, consider setting up your own reminder system.  At a minimum, enter the dates into at least one (preferably two) long-term electronic calendars or other automatic reminder (docketing) systems, and keep these systems going.

Additionally, consider engaging a professional annuity service. A number of such annuity services exist. Without making any particular recommendations, some of these annuity services include:  Computer Patent Annuities Global, Computer Packages Inc., Dennemeyer & Company, and Maxval.

Reviving abandoned patents

The reanimation of dead patents!
The reanimation of dead patents!

Have an accidentally abandoned US patent or patent application?  These can often be revived if you promptly file a USPTO petition for revival.

It just so happens that your friend here is only mostly dead. There’s a big difference between mostly dead and all dead.” Miracle Max, “The Princess Bride”.

The USPTO declares both patents and patent applications to be “abandoned” for various reasons. Patents are usually declared abandoned for failure to pay maintenance fees. Patent applications are usually declared abandoned for failure to respond to USPTO office communications (and pay any needed fees) within the time stated on the office action.

Don’t despair.  Many of these are initially only “mostly dead”, rather than “all dead”, and can be revived by promptly filing a petition to “revive”, paying the appropriate revival fee (and other fees due), and generally fixing whatever other problem caused the abandonment in the first place.

The key word here is “prompt”.  Here, the USPTO attempts to distinguish between “unintentional abandonment” and “intentional abandonment”.  As you might imagine, this can be a rather subjective determination that can often be decided by the length of the delay and explanations of the circumstances.

A determination of “intentional abandonment” means that the patent is legally now “all dead”, which is why it is important to act promptly.

The issue of what is “unintentionally abandoned” is a tricky gray area in patent law. Although often a form statement such as, “the entire delay was unintentional” will suffice, the longer the delay, the more that this strains credibility, and the greater the chance that additional explanation will be required/and or the petition to revive may be denied.

The general rule is thus that you should try to initiate the revival actions as quickly as possible.  Fortunately, this is “quick” by legal standards, rather than “quick” by video gamer standards.

As a very rough and informal rule of thumb, which you should not rely upon, petitions filed within about six months of abandonment often have a good chance of succeeding. Petitions filed up to two years after abandonment can often also work (although the risk of rejection may increase). Even after two years or more, a petition to revive may be accepted, but here the situation does become more problematic. The petitions office may require more of an explanation for the delay, and the chances that the petition will be denied can be substantially greater.

Note that “expired” patents – patents that have died because their full patent term (often 20 years from the filing date) is up, are “all dead”.  They cannot be revived.

Hague international design patents

Hague countries, by L. tak: CC-BY-SA-4.0

The Hague system allows you to use one application to file design patents in many countries simultaneously, but it is quirky and doesn’t work everywhere.

Thinking of filing your US design patent application outside the US?  Although for some countries like Canada, China, and India, you will have to file locally, for Europe (EU), Japan, and Korea, consider using the Hague system.  In either case, think fast, because the deadline is often just six months after your initial filing.

What is the Hague system?  The Hague system (Hague Agreement Concerning the International Registration of Industrial Designs) is a series of international treaties allowing applicants from participating countries to directly register design patents in other participating countries.  If you or your company is not a resident of a participating country, you are out of luck.  You must get international coverage the hard way by finding a local representative and filing with the local patent office.

The US signed up in 2015.  Other countries are also in the process of joining but are not in yet. There are presently 66 countries participating.  So as the map shows, coverage is still rather uneven.

The rules are not totally uniform. The drawing requirements and extent of post-filing examination can vary between countries.  The EU, for example, limits design drawings to a maximum of seven views, but otherwise, acts as a registration system that doesn’t require much subsequent effort.  By contrast, like the US, Japan also requires examination as well, and the applicant must thus do additional activities and pay additional fees.

Unlike US design patents, the Hague system allows for multiple related designs to be registered at the same time in one application.  However for those thinking of gaming the system for US design patents, realize that the USPTO will require you to select just one design, and pay extra to examine any other versions.  Still, if you are feeling indecisive, this is an interesting option to consider.  However, note that the Hague system also publishes all design applications within six months of filing, while the US does not, so there can be less confidentiality.

Hague system registrations must be renewed every five years, and can generally be renewed up to a total of 15 years total coverage. By contrast, after a US design patent has issued, the USPTO will give you 15 years of coverage with no maintenance fees.

Like other patents, the USPTO will accept Hague system patent applications and forward them on to the international office in Switzerland.  If your design patent has not yet previously passed a security review and obtained clearance, then you should (must) file via the USPTO.  However, if you have clearance, use the Hague’s E-filing system, as it is both quicker and easier.