Amazon.com is enough of an 800-pound-gorilla that its IP policies can impact trademark, copyright, and patent strategy. Amazon is not kind to descriptive (supplemental register) trademarks.
Amazon.com markets products from millions of manufacturers and vendors, resulting in a large number of IP (trademark, copyright, and patent) disputes.
Unfortunately, the US court system is designed to administer slow, careful (and thus expensive) justice to a small number of IP litigants. It can’t scale to Amazon volumes. So Amazon decided to make its own IP dispute process.
The Amazon Band Registry offers a number of methods to help trademark owners protect their rights and promote their products. However, at least for the US, just any trademark won’t work. The Amazon Brand Registry is presently only available for USPTO trademarks on the principal register. USPTO supplemental registry trademarks are out of luck.
The USPTO supplemental register is where otherwise OK, but “descriptive” trademarks are put to “age” for 5 years until the mark is considered to have “acquired distinctiveness”. So, the moral is that if you are planning to sell on Amazon, it is good to avoid the supplemental register. This can be done by registering a less descriptive product name. There are trade-offs here, however, since descriptive names help customers understand the purpose of new products.
Be careful about the text and images that you upload. It should either be your own material, or material that you have clear rights to (e.g. license, resale of previously purchased physical items). Amazon operates a Digital Millennium Copyright (DMCA) infringement reporting system that you (and others) can use to report issues. If you hold copyrights that you feel are important, consider registering them with the US copyright office, as this can make enforcement easier. Note, however, that under their terms of service, Amazon acquires a license to use your uploaded material.
Amazon has recently announced a pilot patent dispute program. The process is fast and (for patent law) inexpensive. The plaintiff provides the US patent number and the Amazon listing of the allegedly infringing product. Both parties can argue this (e.g. one submits written arguments for infringement, and the other submits written arguments in defense). Both can pay $4,000 to submit their arguments to an Amazon selected neutral patent evaluator. The neutral evaluator evaluates the patent and product in question.
The winner gets their $4,000 fee back. The loser loses its fee. If the allegedly infringing product loses, Amazon will take down the listing. The neutral evaluator’s decisions are apparently final, but you can still go to the court system if you want.
Disclaimer: I have no affiliation with Amazon. Amazon IP policy can change at any time. However, Amazon is enough of an 800-pound-gorilla that their IP policies are having an impact on the IP ecosystem.
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.
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 China, and India, you will have to file locally, for others, such as Canada, 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.
A patent is invalid if the invention was sold more than a year before filing (on-sale bar), and the recent “Helsinn v Teva” case shows that the courts can be harsh.
A patent applicant can accidentally ruin their own patent in various ways. In the US, one error is to first sell an invention (presumably in the form of a product with the same claims), and then wait more than a year to file the patent. This error violates the 35 USC 102on-sale bar of classic (pre-2012) patent law. This error also violates the latest 2012 AIA version of patent law, which phrases this as “on sale, or otherwise available to the public”.
However, the relationship between an “invention” and a “product” isn’t always clear, and it also isn’t always clear if a “sale” has taken place. Is the product identical to the invention’s claims? If I privately show you a cardboard box and say “I have an invention inside, want to buy it sometime if it works?”, and you say “Maybe”, is this a sale that invalidates a later patent? In the event of doubt, how will the courts rule? Will they err on the side of protecting the patent, or invalidating the patent?
In their May 1, 2017 “Helsinn Healthcare via Teva Pharmaceuticals” decision, the Federal Circuit took a harsh and patent unfriendly approach. Indeed, this ruling was so harsh that Lamar Smith, the Congressional sponsor of the 2012 AIA law, stated that the court was ignoring the intent of Congress.
To greatly simplify the Helsinn case: back in 2001, Helsinn was doing FDA clinical trials on the efficacy of various palonosetron drug formulations to reduce nausea during chemotherapy. During these trials, they signed a supply agreement with MGI (another company) stating that if the FDA approved some of Helsinn’s various drug formulations, and if MGI subsequently made purchase orders for these drug formulations, and if Helsinn subsequently accepted these purchase orders, then Helsinn would sell the drug to MGI. In 2003, after the clinical trials were successful, but before FDA approval, and before any actual product changed hands, Helsinn began filing for various patents.
Teva, a competitor, decided to challenge these patents as being invalid due to the “on-sale bar”. But was there really a sale? Was there an invention yet? Was it disclosed to the public? A lower court ruled in favor of Helsinn, but the Federal Circuit reversed.
The Federal Circuit used the Uniform Commercial Code (UCC – a set of laws intended to “save” ambiguous contracts by automatically supplying missing terms) to argue that there was a “sale” despite all the “ifs” and ambiguity. They then argued that the invention was in the (undelivered) product and that the invention existed before clinical proof that it actually worked. Strangely, they even argued that the AIA “on sale, or otherwise available to the public” language didn’t apply because… this would change past practice. Apparently Congress, (despite good reasons and clear intent) somehow doesn’t have enough authority to make these changes?
The case is presently being appealed, but the moral is: be careful.
A strange way to help immunize US patents from IPR attack recently emerged – the “sovereign immunity defense”.
IPR attacks: Since the America Invents Act (ACA) went into effect in 2013, a popular way to invalidate patents has been to challenge them in Inter Partes Review (IPR) proceedings. IPR proceedings are a USPTO (Federal) Patent Trial and Appeal Board (PTAB) proceeding where challengers can argue that a given patent is not novel, or is obvious, in view of various published prior art.
Sovereign Immunity: The Eleventh Amendment to the US Constitution reads: “The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.”
Background: The University of Maryland (UMD) owned patent 7,635,386, covering a method of repairing cardiac valves. In May 2017, UMD successfully overcame an IPR challenge by arguing that UMD, as part of the State of Maryland, was therefore immune from the PTAB and IPR under the Eleventh Amendment (Sovereign Immunity).
OK… maybe so. Certainly, UMD was able to cite various cases supporting their view. PTAB agreed and dismissed the challenge.
They did what? Allergan PLC, a multinational pharmaceutical company with its own patents to protect, decided to push this concept to the limit. Allergan sold some of their patents to the St. Regis Mohawk Tribe (located in New York) and then immediately licensed the patents back again. In September 2017 Allergan then argued that since this tribe is also a sovereign government, “the tribe’s” patents also had sovereign immunity to IPR challenges!
Well, points for creativity! I don’t think anyone has ever thought of this angle before. Certainly, the tribe would have been very happy to supplement its Casino business.
In terms of sovereignty, the tribes’ legal status, “domestic dependent nations”, is best described as “it’s complicated”. Did Allergan invent a new form of “patent laundering“? Patent law could have taken an interesting turn.
But to contemplate an alternative reality, enjoy the enclosed map of the continental US, showing the larger tribal lands in color. They could have been the new frontier in creative patent law strategy! Perhaps they still could be, since the Federal Circuit ruling was narrowly focused on IPR. Other areas of patent, trademark, and copyright immunity remain to be explored.
Don’t like having your own inventions used against you? Before your patent issues, consider filing a continuation application.
Just got your US patent application allowed by your examiner? Congratulations! Now before it issues (usually about 2-4 months after you pay the issue fee), you need to decide if you ever will want to file any improvements or variations of that invention in the future.
If you do have some improvements or variations in mind, now is the time to start working on filing a “continuation-in-part” (or CIP). In a CIP, you are basically telling the USPTO that you have added some new concepts to your original patent application. This is OK – worst case the examiner may determine that the new concepts have a later filing date, but in any event, the examiner won’t hold your original patent application against you.
In contrast to a CIP, patent continuation applications are essentially a repeat of the original application. Any differences to the claims had better be fully disclosed in the original application.
Why file a continuation? One common reason is that you think that you may be able to get stronger claims the second time around, perhaps by making the claims shorter and hence stronger. Or perhaps there was something in the original application that you forgot to put into your original claims. Both types of claim changes are fine so long as you can show that the newer claims were fully disclosed in the original application.
A second common reason is a nagging fear that although you might not have thought of any improvements or variations yet, you can’t rule out the possibility that you might do so in the near future. Here, if you don’t file a continuation, after your patent issues, your own patent will be used against your later patent applications as if someone else had invented it.
However, if you do file a continuation, it essentially keeps your original patent “alive” a while longer (usually at least another year or so). Then, if you do come up with an improvement, you can then file a CIP to your continuation application. When you use this strategy, the USPTO will allow you to claim your later improvement without using your original application against you.
Non-publication requests: Patent non-publication requests can be an important part of your IP strategy. Under US law, patent applications can be filed with patent non-publication requests. When this request is made, the USPTO will hold a patent application secret (i.e. will not publish it) until when and if the patent finally issues. Otherwise, absent this request, the patent office will automatically publish the patent application 18 months after the initial filing date.
When to consider filing a non-publication request: Non-publication requests are particularly appropriate for certain types of software patent applications, such as “business methods” and related software patents. This is because the US patent law for this type of software is presently in an unsettled state, and the international acceptance of this type of patent is also more limited. By filing with a non-publication request, your disclosure remains a trade secret. If the USPTO grants you a patent that is broad enough to be worth disclosing your work; great. If not, then you can continue to elect to keep your work hidden from the public.
When filing a non-publication request may not be appropriate: If you have plans to file outside the US, then by international treaty, you must file for international patents within 12 months of your initial filing date, and also allow your initial application to be published within 18 months. Here you can either not include a non-publication request on initial filing, or alternatively send in another form rescinding your non-publication request.
Other considerations: Unless a specific reason for non-publication can be identified, I generally recommend filing using the default, “publication” mode. This is because published patent applications can be useful. They help provide published prior art to help establish priority over patent filings from competitors. Additionally, published patent applications look impressive to investors, and can help give you more credibility.
Prior art searches: Before investing a lot of time, effort, and money in trying to patent a potential new invention, it is always good to spend at least a few hours doing patent searches to see if there is any prior art (earlier patent or non-patent publications) that might cause problems. As a rule of thumb, if you haven’t found any prior art that concerns you at least a bit, then you probably haven’t looked enough yet!
Why do this? Because eventually, skeptical USPTO examiners will be going through your patent application, looking for ways to reject on the basis that the application is either not novel or obvious in view of prior art.
Patent examination is an adversarial process. Patent examiners have, in effect, quotas that require them to initially reject most patent applications. It is a bit of a game, like tennis, where the examiner initially rejects by citing some combination of prior art. The examiner then hits the ball back onto the applicant’s side of the court. The examiner is expecting the applicant to hit the ball back onto the examiner’s side of the court by submitting convincing arguments pointing out where the examiner was wrong. If the applicant can convincingly argue that the examiner is wrong, usually (often after a few additional volleys), the examiner allows the patent, and the applicant wins. But if the applicant cannot argue back convincingly, it is like dropping the ball or hitting the ball back out of bounds. The applicant loses, and that patent application is going nowhere.
The patent examiner typically starts by doing computer searches for prior art using search terms that the examiner thinks will work best. This computer search will come up with unexpected citations, which the examiner may, in turn, combine in unexpected ways to try to show that the invention is “obvious”. Because of the quota to initially reject almost everything, often these initial rejections are unreasonable. Unreasonable rejections are “good news” in disguise because the applicant can then rebut these by reasonable arguments. It is the reasonable rejections that are the real “bad news”. This is because these are harder to argue against. So before putting a lot of time and money into an invention, it is a good idea to do at least some initial checking to see what the examiner (or for that matter, a competitor) might try to use against you later. This is the idea behind a “feasibility study” type prior art search.
Sometimes, particularly when the inventor or inventors are experts, the inventors themselves may decide that they are sufficiently familiar with their field so that the search-time expense/benefit ratio is low, and no additional prior art searches are worthwhile. Here, since the USPTO will do an independent search anyway, the only obligation that the inventors have is to inform USPTO of the most important prior art that they are aware of.
Some common mistakes that inventors make is to underestimate the amount of prior art that a patent examiner can use against their invention. Although pretty much everyone understands the problem of prior patent applications by others, this is only part of the prior art problem.
For example, for the US, anything published more than a year ago can be used against your invention, including your own publications. This includes that “cool” YouTube video, that “cool” social media posting, or that research paper/thesis that you may have published last year. Foreign patent offices are even worse in this regard. Patent examiners know that often the inventor’s own worst enemy is the inventor’s own earlier publications. As a result, patent examiners often specifically search for the inventor’s own publications and internet postings to use against them.
Another problem that inventors sometimes have is that they are a bit too emotionally attached to their cool new idea. This problem can result in sub-optimal prior art searches. The inventor may, perhaps subconsciously, avoid search strategies that may kill that shiny new idea.
Here, there are several advantages to having a patent attorney do a quick feasibility prior art search for you. One is that the patent attorney does prior art searches all the time. Another is that the patent attorney, being both less emotionally invested in the idea, and being expert in finding prior art, may have an easier time thinking of thorough search strategies. The third is that often doing the search helps the patent attorney understand variants of your idea better, which can translate into a better patent application with better claims.
For example, if something highly relevant comes up (and often something does come up), then the new idea can be better evaluated in the context of this new-found prior art. The scope of the initial idea may be altered or expanded, and a better patent application can result. Worst case, if it becomes clear that the idea has been done before, then time and money can be saved. Alternative ideas can be explored instead.
In conclusion, “feasibility study” type prior art searches are a good way to get at least a rough estimate of the legal feasibility of a new idea. Although the prior art search may uncover what looks at a first glance to be a tough obstacle, often this initial obstacle may encourage further thinking and improvements to the initial idea, resulting in a better patent down the road.
Note that in addition to “feasibility study” type prior art searches, there are other types of patent searches called “freedom to operate” searches or opinions as well. These represent a different and more extensive type of search, and this is a different topic.
PTAB: The 2011 America Invents Act (AIA) significantly changed many aspects of patent law. One change was to try to improve patent quality by allowing potentially invalid patents to be challenged in new types of post-grant opposition procedures.
The Europeans have had a patent opposition process for years, and having observed it in operation at first hand, I am unimpressed. The European system lacks legal protections that Americans take for granted (e.g. rules of evidence, protections against unfair surprise). It is also possible to game the European system by requesting that the opposition be done in a language that (conveniently) the original European examiner or other parties may not speak. Another problem is that the European opposition review panels operate by making instant verbal “shoot from the hip” decisions, and only “justify” the decisions in writing months later.
The USPTO had and continues to have a low budget process to challenge an issued patent, called an Ex-Parte Reexamination. Here the challenger essentially writes their own office action challenging a patent as being not novel or obvious in view of some new prior art citations. This process is very inexpensive but only allows a challenger one time “at bat”. No further challenger comments or rebuttals are allowed. So it is a more limited type of challenge.
The USPTO Patent Trial and Appeal Board (PTAB) has been working to implement an American version of the opposition process. The US version is called an “Inter Partes Review” (IPR). The USPTO has been hosting roundtables to show their progress to date and solicit feedback. I attended one of their roundtables at Santa Clara University and came away favorably impressed. The present rules are here:
In my opinion, the real challenge in doing decent post-grant opposition procedures is the delicate balance between trying to bring in more of the legal protections of common law/Federal law rules of evidence and civil procedure (thus improving on the European system), while minimizing the burdens of a conventional trial process. Here, in addition to the obvious high costs and long times associated with conventional trials; there is also an issue of legal expertise.
Conventional patent trials are so complex that typically they are handled by expert litigation attorneys. These litigation attorneys have a detailed knowledge of the trial process, but sometimes less knowledge of patent law and the underlying technology. By contrast, patents are usually prosecuted by patent attorneys who may have very detailed knowledge of patent law and the underlying technology at issue, but often less trial process expertise.
PTAB appears to be attempting to devise a streamlined review system that retains a number of common law/Federal trial conventions and legal protections, without being overly burdensome. In my opinion, their approach does improve on the due process of law deficiencies I noticed in European oppositions. At the same time, relative to standard trials, the PTAB approach appears to be relatively simple. There is only one forum (even for Indian tribes), and certain procedural rules are clearly defined.
With some review of the rules of evidence, civil procedure, and of course PTAB procedures, patent attorneys (often most knowledgeable about the patent and related technology), as well as litigation attorneys, should be able to handle PTAB IPR.
35 USC 103 rejections: Ever have something rejected as “obvious” in view of a combination of 5+ references? The re Gorman case is how such absurd rejections are rationalized.
Patent examiners must follow the Manual of Patent Examining Procedure (MPEP). According to MPEP 707 section 7.37.07, arguments that the examiner used an excessive number of citations are presently found to be “unpersuasive”. Section 7.37.07 is based upon an old case In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). However, Gorman uses reasoning that is now obsolete and unsupported due to patent law developments since 1991.
Some key aspects of the In re Gorman decision were:
“When it is necessary to select elements of various teachings in order to form the claimed invention, we ascertain whether there is any suggestion or motivation in the prior art to make the selection made by the applicant. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.Cir.1985). ” ‘Obviousness can not be established by combining the teachings of the prior art to produce the claimed invention,absent some teaching, suggestion or incentive supporting the combination.’ ” In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed.Cir.1990) (quoting Carella v. Starlight Archery and Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed.Cir.1986)).
The extent to which such suggestion must be explicit in, or may be fairly inferred from, the references, is decided on the facts of each case, in light of the prior art and its relationship to the applicant’s invention. As in all determinations under 35 U.S.C. Sec. 103, the decisionmaker must bring judgment to bear. It is impermissible, however, simply to engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps. Interconnect Planning, 774 F.2d at 1143, 227 USPQ at 551. The references themselves must provide some teaching whereby the applicant’s combination would have been obvious”
However, since 2007 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, the “teaching, suggestion or incentive” requirement for combining citations is no longer required (although still allowed). When this part of the 1991 Gorman court’s reasoning, shown in the first paragraph above, is removed, it becomes clear that the legal and logical underpinning of their 1991 decision no longer applies!
Yet they persist… Under present rules, MPEP 707 section 7.37.07, based upon the now obsolete 1991 Gorman legal reasoning, still acts as a roadblock for any applicant who attempts to argue that the examiner did: “engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps.”
At present, there is no upper limit to the number of citations that an examiner can apply, and indeed I personally have seen combinations of eight citations used in obviousness rejections. Some 35 USC 103 rejections look more like ransom notes, where the examiner parses the applicant’s claim into various sentence fragments, and then computer-matches these with corresponding sentence fragments from other citations.
Note to USPTO: At present, MPEP 2145 cites In re Gorman as justification for combining 13 prior art references in a 35 USC 103 (obvious) rejection! Indeed, MPEP 2145 teaches no upper limit. Under the present post-KSR rules, where hindsight is not viewed as being a problem, an examiner could, in theory, write a pure “ransom note” type rejection. Just use the applicant’s claims and assign each claim word to a different reference.