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

hourglass
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.

Design patent rocket docket

Design patent rocket docket

Want to get your design patent application examined quickly? The USPTO’s design patent “Rocket Docket” cuts examination time down to only a few months, but requires that you put more effort (and fees) into your initial filing.

The USPTO’s design patent “Rocket Docket” (their term for a request for expedited examination of a design application) can cut the overall length of time that a design patent waits to get initially examined down from about 13 months to about 4 months. So if you would like to get your design patent examined quickly, consider filing your design patent using the “Rocket Docket”.

Here, more than just extra fees are needed. The USPTO also wants you to expedite their prior art search process.

Why this? Although some countries merely register designs without checking them for originality, the USPTO is required to check your design against other prior art designs. Although most new design patent applications pass, some are occasionally rejected for lack of originality or obviousness.

This prior art search is not that easy. Usually, prior art searches are done by searching for matching keywords. However, unlike other types of intellectual property, designs have hardly any keywords. Design patents are almost 100% images, and often the only unique keywords are in the title, and these are often useless. Perhaps in the future, the USPTO will turn to Machine Vision/AI type searching methods and do direct image-based prior art searching, but they are not there yet.

So given these difficulties, the USPTO will make a deal with you. If, in addition to submitting a competently done design patent application (and fee), you also help them with their prior art search and pay an additional fee, they will go faster. This additional “Rocket Docket” fee is called a 37 CFR 1.17(k) fee, and usually is a few hundred dollars (presently about $450 for small entities).

How do you help them with their prior art search? The USPTO requires a bona fide (i.e. a serious and competent) prior art search, such as one that might be done by an experienced searcher. They want documentation, on an SB27 form, of the various patent fields examined during this search, as well as what specific applications your design might be used for. They also want any relevant citations that turn up during this search to be reported on an IDS (SB08) form. It is not a good idea to cut corners here, because if this part looks too sketchy, the Rocket Docket request may be denied.

So although the extra Rocket Docket fees and search expenses cost more, if you are facing competitors, or if your design is in an area where rapid introduction of cutting-edge designs is particularly important, consider this option.

Contractor Copyrights

Contractor
Contractor

Want to pay a contractor to produce creative material for you, and then actually own the copyrights? Getting ownership of contractor copyrights is tricky.

Copyrighted material – be it text, images, music, or code, is important for many creative and commercial efforts. None of us have the time or talent to do all of this ourselves, and so it is natural to turn to experts to help provide this material.

We could hire employees for this purpose.  However, many projects are of limited duration, and alas, unlike “the good old days” where employees had no rights and could be hired and fired at whim, these days employees actually have rights and benefits. These include unemployment insurance, social security, tax withholding, and the like. No one wants to go back to the Victorian era, but at the same time, it can be a hassle to employ someone.

Contractors are often used to avoid this hassle.  Contractors are expected to deliver results, but to do so in their own way. We pay money, expect to obtain the benefit of the deal, and then no more hassles or obligations. This simple expectation breaks down when it comes to IP, however, and contractor copyrights are particularly tricky.

To somewhat oversimplify, if you want to pay someone and obtain ownership of copyrighted material in return, the following legal considerations can apply:

  • Under Federal law, full copyright ownership requires a “work for hire” agreement
  • “Work for hire” agreements may imply (and in California, can define) that the worker is an employee
  • Employees are legally entitled to various employee benefits
  • Contractors are not legally entitled to employee benefits
  • Absent an assignment, copyright ownership remains with the contractor
  • Copyright ownership assignments must be in writing
  • Copyright assignments that are not “work for hire” can be terminated by the author or heirs after 35 years

This creates interesting legal problems.  It is common to put “work for hire” terms in contract agreements. The idea is to automatically acquire full copyright ownership this way.  However, such “work for hire” terms can be inconsistent or even incompatible with the definition of “contractor”.  This can open the door to potential legal headaches.

In an alternative approach, there is no “work for hire” clause, but as part of the deal, the author-contractor agrees to assign all contractor copyrights to the work that you have paid for. This is not perfect either. Additional assignment paperwork is often needed, and Federal copyright law allows an author-contractor to petition to terminate this assignment 35 years later.

35 years is fine for most purposes, but what if you are thinking on longer terms? Here, efforts to work around the 35-year copyright assignment termination issue should be considered. One option is to contract with a corporation that in turn “work for hire” employs the author.

Non-disclosure agreements (NDA)

Confidential
Confidential information

Non-disclosure agreements (NDA) can help preserve business trade secrets and other confidential information, but don’t expect your attorney to sign one.

Businesses often use non-disclosure agreements with their contractors, employees, product evaluators, and site visitors, as well as with other businesses such as suppliers, customers, potential partners, and the like.  These agreements are often required to establish diligence in preserving trade secrets.  If breached, such agreements may also be used, along with other suitable evidence, in subsequent legal action in state or federal court.

Although in some states, non-disclosure agreements are sometimes used as a backdoor form of a non-compete agreement (e.g. attempting to restrict an ex-employee’s employment elsewhere), this is not a universal practice. California, for example, disallows this sort of thing.

NDA typically include various clauses establishing:

  • Who is disclosing the information, and who is the recipient
  • The boundaries of the confidential information – what is and is not covered
  • Confidentiality obligations
  • When and/or how the agreement ends
  • Other legal provisions (beyond the scope of this blog)

Generally, NDA have carve-outs for publically available information and terminate either when information subsequently becomes available to others through no-fault of the recipient, or after a pre-negotiated number of years.

NDA can be particularly useful when you are working on an invention, but either have not filed a patent application yet, or else are continuing to work on improvements to the invention.  Here, if you want to work with vendors or contractors to produce components of the invention, NDA (and other IP rights agreements) can be important.

Attorneys, including myself, usually refuse to sign NDA.  Why is this?  The reason is that attorneys are already subject to strict state (and federal) attorney-client rules and regulations that require them to keep client (and potential client) secrets. In essence, by agreeing to talk to you, the attorney has already agreed to a standardized, legally enforced, type of attorney-client “NDA”.

Consider what would happen if this were not the case.  Clients would be afraid to even ask an attorney about their particular problems. Attorneys would be signing hundreds of NDA each year, each with different terms. The legal system would grind to a halt.

Professional investors (VC, Angels) usually also refuse to sign NDA.  Here, there is no duty of confidentiality.  However, the finance people control the money, see a lot of ideas they don’t fund, and usually don’t want any constraints on their future investments. This is where it is good to have your patent applications filed in advance.

Secondary considerations of nonobviousness

Reset button

Is your examiner repeatedly insisting that your patent application claims are obvious?  One option: “reboot” your examiner by submitting at least one Rule 132 declaration providing “secondary considerations of nonobviousness”.

 Obviousness rejections are needed to prevent trivial patents.  Obviousness is legally determined by considering if the invention would be obvious from the standpoint of an imaginary Person Having Ordinary Skill In The Art (PHOSITA). This is ultimately just legal guesswork, and as previously discussed, such determinations are often unduly influenced by hindsight bias.

There is an alternative mechanism. The patent legal system also allows applicants to rebut obviousness rejections by submitting “objective indicia of nonobviousness”, which we will call “outside evidence”. This outside evidence can include unexpected results, commercial success, long-unsolved needs, failure of others, professional approval, skepticism of experts, and the like.

Although allowed, such outside evidence has a rather second-class status.  You can even see this in the terminology: “secondary considerations of nonobviousness”.  The patent legal system actually prefers its imaginary PHOSITA reasoning over actual real-world evidence! Sounds silly, but remember that they are skeptical because applicants are constantly trying to game the system.

Submission of outside evidence is not done often.  You might think that with the 2007 KSR removal of anti-hindsight rules, it would be more frequently used, but it isn’t. However, in my opinion, it is a useful “in an emergency, break glass” kind of tool.  You use it when you want to try to break the examiner out of a mental “rut”, or even a mental “infinite loop” of obviousness rejections.

When to use it?  Obviousness rejections are routine.  It usually takes at least two office actions to see if the examiner is showing signs of having a non-negotiable “I still think it’s obvious” position.  If this seems to be the case, outside evidence can potentially be used to try to “reboot” the examiner and break out of the loop. This is because according to the USPTO examination rules MPEP 716.01(d)   Weighing Objective Evidence…“When an applicant timely submits [outside] evidence traversing a rejection, the examiner must reconsider the patentability of the claimed invention.”

Outside evidence is submitted as various “Rule 132 declarations”.  Here the identity and the credentials of an outside declarant (someone other than the attorney, and preferably other than the applicant) are presented, the relevant outside facts are given, and the declaration is signed by the declarant. It is important to try to find credible individuals for this and to submit the best evidence available.

Due to USPTO concerns that the outside evidence is unreliable, this is not a sure tactic.  The rules state that there must be a “clear nexus” between the outside evidence and the invention’s claims. The examiner may rebut by arguing that no such clear nexus exists, proposing alternative explanations, and/or looking for other ways to discount the declaration.  Still, if you do have good evidence, why not use it?

Obviousness, hindsight, KSR

Training the human neural network: by Novasdid (CC BY-SA 4.0)

The 2007 KSR v. Teleflex Supreme Court (SCOTUS) decision is why the patent examiner, ignoring hindsight issues, just used your own teaching against you to reject your patent application claims as being “unpatentable” (obvious) under 35 USC 103.  Unfortunately, the US patent “obviousness” rules and regulations still have some “bugs”. 

The patent examiner has just reviewed your patent application, and has sent you a response. What are all these “rejected under 35 USC 103 as being unpatentable over (various citations)” statements? It almost looks like the examiner just copied your claim, interspersed it with various citations matching some of the claim words, and concluded with “therefore it would have been obvious to one of ordinary skill in the art…

This might even look to you like a standard formula that could be used to reject almost anything. Why does the USPTO work this way?

Some background: Without obviousness rejections, your patent could soon be swamped by many other competitor patents that claim the smallest, most trivial changes to your work. To keep the patent system healthy, there needs to be some “shielding”, some sort of “force field” that keeps competitors from getting too close to your work. In the US, the depth of the “shielding” or “force field” is set by trying to legally determine, often years later, what a person having ordinary skill in the art (PHOSITA) would think was obvious.

The big problem is “hindsight bias”. Lots of non-obvious things look obvious in hindsight. Here the legal system is attempting to cope, with varying success, with a very complex underlying problem of pattern recognition. Once you see the solution to a puzzle, it is hard to see anything else.

Prior to 2007, the USPTO used anti-hindsight rules in an attempt to minimize hindsight problems. However, in the 2007 KSR v. Teleflex case, SCOTUS made what, in my opinion, was a key error. Dictionaries define hindsight somewhat incompletely as: “understanding of a situation or event only after it has happened or developed”. SCOTUS ran this incomplete dictionary definition into the ground. They argued that the earlier anti-hindsight rules were too “rigid”, and that “common sense” should be used. They held that hindsight could be avoided by just considering if the invention would be obvious “at the time of the invention”.

This is an almost meaningless statement.  Who would file a patent application if it could be invalidated by later filed patent applications?

In reality, the patent applicant has just shown the examiner the solution to a puzzle, thus “training the examiner’s neural net” to subsequently view this solution as “obvious”.  However, the examiner is told to examine with 100% hindsight bias.  The examiner can also dismiss “hindsight” rebuttals by merely stating that under the newer, post-KSR, USPTO rules (MPEP 2141.01 III): “Content of the prior art is determined at the time the invention was made to avoid hindsight.”

In other words, thanks to the KSR ruling, the present USPTO rules can be paraphrased as Don’t bother us about “hindsight”, we’re not listening, and SCOTUS says that we don’t have to!

Fortunately, there are other ways to rebut obviousness rejections. Examiners often misquote the citations, have gaps in their reasoning, and their proposed combination is often a Frankenstein monster that differs significantly from the claim.  Secondary considerations can also be raised. So things can be done, but this hindsight “bug” (or feature) in US obviousness patent law is annoying.