The Puget Patent Blog

One Immediate "Patent Reform": A Patent Office Fee Increase

Posted Saturday, September 17, 2011.

Yesterday, President Obama signed the patent reform act, known as the Leahy-Smith America Invents Act of 2011, into law.

Among the provisions that will take effect almost immediately is a 15% increase in all patent filing fees collected by the United States Patent and Trademark Office. The new fee schedule is in place as of Monday, September 26, 2011.

The good news about the fee increase is that the additional USPTO funding should result in their ability to hire more patent examiners. With more examiners, applications that are pending examination will have more personnel available to tackle the backlog. The amount of time it takes for an application to receive consideration should come down.

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Patent Reform Bill Heads to The White House

Posted Thursday, September 08, 2011.

Thursday, September 8, 2011: The U.S. Senate today passed the House version of the patent reform bill, H.R. 1249, without amendment. Having been approved by both houses of Congress, the bill now proceeds to the White House. President Obama favors patent reform and is widely expected to sign the bill quickly.

Among the most significant provisions in the bill is a change of the U.S. patent law from a “First to Invent” system to a “First to File” system. The practice of “fee diversion” will still be permitted. However, the U.S. Patent and Trademark Office is given authority to raise the fees it collects for patent filings, leading to more revenue with which the office can hopefully reduce its backlog.

Most of the provisions of the bill take place one year from enactment of the legislation, although at least one takes effect immediately. The “False Marking” statute will be amended so that only the U.S. government can bring a false marking action, with the effective date of that portion of the bill being the date the bill itself is signed into law. Also, marking an article with an expired patent will no longer violate the statute. These measures will affect false marking suits currently in the pipeline, which may explain the decrease in the number of false marking suits filed in the past few months.

The bill is around 150 pages long and represents the most important revision to patent law in 60 years. There will be a transitional period for applications filed prior to the enactment of the law, so inventors need not worry about unexpected impacts to their pending applications.

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Obviousness Rejections Must Include References From Analogous Arts

Posted Friday, August 12, 2011.

In Bellevue and Seattle, patent clients are very savvy. When inventors contact me regarding their invention and an application for a patent, they are often already familiar with the basic requirements of utility and novelty. Nonobviousness, however, is a more difficult concept to grasp.

The United States Patent and Trademark Office (“USPTO”) doesn’t issue a patent for just any random idea. The concept sought to be patented has to be non-obvious. A previous legal standard for nonobviousness held that the idea had to demonstrate some inventive spark of genius. Another was that there was required to be synergy that made a combination of elements more than the sum of the parts. While these legal standards for nonobviousness are no longer used by courts, they help to get across the general idea.

Among my favorite examples is Post-it notes. (“Post-it Brand” is a registered trademark of 3M.) 3M had an adhesive that didn’t adhere permanently. Nobody saw the need for such a non-permanent glue, until it was combined with a scrap of paper, and voila! The Post-it was born. The combination of a glue that didn’t adhere with a piece of note paper was sufficiently nonobvious.

The USPTO may reject patent claims that present combinations of known elements for being obvious. If the USPTO were to reject the Post-it note on obviousness grounds, it would have found and cited a patent for a non-permanent glue and a patent for a quarter-sheet of note paper, and said it would have been obvious to combine the two to result in the invention for which the patent application was submitted. One way to overcome such a rejection is to point out that when making an obviousness-type rejection, the prior art (the prior patents or other documents the USPTO cites) must be from an “analogous art.” In other words, for it to be obvious, the problems being solved by the prior art must be in the same field or the same type of problem as the new invention sought to be patented. The theory is that an inventor trying to solve a problem would naturally be familiar with other developments in the same technology, but not necessarily know of innovations in other technologies. For purposes of obviousness, similar solutions in other technological arts can’t be used as prior art. (They can, however, be used for novelty-type rejections, but that’s for a different blog post.)

As an example (and credit goes to Ramsey al-Salam of the Seattle office of Perkins Coie for providing this example), if you come up with a chemical formula for new shoe polish, and it happens to have a similar structure to a formula for a hair dye, the hair dye can not be prior art against your shoe polish in an obviousness-type rejection. Why? Because the development of hair dye is not an analogous art to the development of an improved shoe polish.

There are two factual considerations in play when considering whether prior art is from an analogous art. The first is whether the art is from the same field of endeavor, regardless of the problem addressed. The second is that, even if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. These considerations were set out by the Court of Appeals for the Federal Circuit. *In re Clay,* 966 F.2d 656 (Fed. Cir. 1992). For our shoe polish example, it seems pretty clear that inventors of shoe polish and hair dye are not in the same field of endeavor. With respect to the second consideration, when attempting to create an improved formula for making shoes shiny, would an inventor naturally look at formulas that change the color of one’s hair? The particular problems being solved are different. Therefore, in the shoe polish example, the hair dye could not be cited by the USPTO as part of a combination in an obviousness-type rejection. (Again, it could possibly be cited in a novelty-type rejection, but at least one wouldn’t see it in an obviousness-type rejection.)

Other methods of overcoming obviousness-type rejections exist. There are “secondary considerations,” for example, which are submitted by the inventor with factual evidence that the combination is non-obvious. Secondary considerations merit a blog post of their own.

But the bottom line is that if you are considering patenting your invention and it is a combination of known elements, you may not have as big of a challenge with obviousness as you might think. After all, most inventions are combinations of known elements to some degree. Just remember, if the USPTO rejects the combination for being obvious, the existing elements they cite must be from analogous arts.

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Process for Prosecuting Patents Overseas

Posted Tuesday, August 02, 2011.

You’ve decided there is a market for your invention outside the United States. You are already seeking patent protection within the U.S., but you want to expand that protection to other countries. However, there is no such thing as an “international patent.” What inventors who want patent rights in multiple countries need is a patent from each of those countries. What does the process entail? Must you submit an individual application for a patent to the patent office in each country in which you want a patent for your invention?

Thankfully, the process is more streamlined than that. Patent offices from around the world give priority to international applicants under the Patent Cooperation Treaty (PCT), and recognize a type of international patent application called a “PCT application.”

Under the PCT, patent prosecution is divided into phases. First, there is a “PCT Phase,” in which the applicant submits the PCT application to an “International Receiving Office.” In the next phase, called the “national stage,” an application receives consideration by the patent offices designated by the applicant. Patents are then awarded by country at the conclusion of the national stage in each of those countries.

In the PCT phase, the applicant will receive a document called an International Search Report (“ISR”) prepared by a searching authority. The ISR contains results from searches of worldwide patent databases for the invention disclosed by the PCT application. Inventors can use these results to determine the list of countries in which they want to pay for a patent. The applicant then enters the national stage in each of those countries.

In the national stage, the PCT application is submitted to the patent offices of the countries, along with the International Search Report, and the applicant pays national stage fees to the individual patent offices. This is where the process can become really expensive. In addition to filing fees for each country, applicants may also be required to pay for a translation of the application into the local language before it is submitted to that country’s patent office.

With the ISR in hand, however, inventors can make an informed decision about which countries they should spend money to seek a patent. Through the mechanism of the PCT application and resulting ISR, inventors can enter the national stage only in those countries where they feel they have the best chance of success for a patent. In addition, a number of worldwide patent offices issue the patent strictly on the basis of the information contained in the International Search Report, or at least do less searching on their own than they would for an application submitted to them directly without having first been through the PCT phase.

A significant benefit to the PCT mechanism is that it defers the payment of fees to worldwide patent offices for up to 31 months after the filing of the first application disclosing the invention. While it is true that a PCT application costs more to file than a U.S.-only application, for example, that initial cost pales in comparison to the total expense of getting into the national stage in three, four, or more countries. This cost-deferral allows inventors some flexibility with their capital, providing the 2 ½ year opportunity to see whether their invention is a marketplace success before committing the really big money to international patent protection.

One wrinkle in the process described above is courtesy of the European Union, where patents are prosecuted in a harmonized fashion by the European Patent Office (“EPO”), located in Munich, Germany. For inventors who want patent protection in European countries, at the conclusion of the PCT phase, the European phase begins. As with national stage applications, the PCT application and ISR are submitted to the EPO, who handles prosecution for all EU member countries. However, following the EPO’s examination of the application, which results in a European patent, applicants further select EU member countries for “nationalization.”

The European patent by itself does not confer any rights within the various countries of Europe. Once the applicant presents the European patent and a translation, if necessary, to the patent office of an EU member country, along with the appropriate fee, a patent is issued by that EU member country. Despite the last element of filing in the individual EU countries, the harmonized prosecution does actually streamline the patent process in Europe. The prosecution is where the complexity lies, and it is helpful to only have to do that once for the EU countries. Once the European patent issues, nationalization is primarily an exercise in paperwork.

In conclusion, while it is possible to file for patents in multiple countries by individually contacting those countries’ patent offices, the PCT application mechanism provides streamlined international patent prosecution. Another significant benefit is the lengthy deferral of the due date for the bulk of the patent fees. The process as described here may appear challenging, but navigating it is completely within the capability of a competent patent practitioner. You shouldn’t hesitate to inquire about patent protection overseas if you want to have the exclusive right to practice your invention in countries in addition to the U.S.

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Patents Outside the United States

Posted Thursday, July 28, 2011.

A United States Patent gives the holder a series of exclusive rights to practice the invention disclosed in the patent. Essentially, anyone other than the holder who uses, sells, distributes, or otherwise practices the invention in the United States without the consent of the patent holder infringes the patent. However, a U.S. patent only governs patent rights for activities taking place inside the U.S. The U.S. patent holds very little power over activities in the rest of the world.

Inventors can and should pursue patent rights overseas. A common misconception is that there is an “international patent.” In actuality, patents are granted on a country-by-country basis, and the patent offices of foreign countries grant patents to its own citizens and foreign nationals alike. Consequently, overseas patent offices issue patents to U.S. citizens, just as the United States Patent and Trademark Office (USPTO) issues U.S. patents to inventors who are not U.S. nationals.

A U.S. inventor who wants to be the exclusive seller in Japan, for example, can seek a Japanese patent issued by the Japan Patent Office (JPO). The U.S. inventor would then have exclusive rights to practice the invention in Japan, and could enjoin a Japanese national from practicing the invention during the term of the Japanese patent. Conversely, should a Japanese citizen apply for and receive a U.S. patent, that patent precludes anyone else from practicing the invention in the U.S. without the authority of the Japanese holder of the U.S. patent.

In fact, there are currently 173 countries which are signatories to the Paris Convention for the Protection of Industrial Property, in which each member country extends the same treatment of patent applications to foreign nationals as it would to its own citizens. Theoretically, one could receive 173 patents for an invention, but is that expensive to do? In a word: yes. The cost to obtain a patent in a foreign country is comparable to what it costs in the United States. In fact, in many countries the cost can be substantially more than in the U.S. for a variety of reasons.

For example, patents generally must issue in the official language of the country of issuance. If the target country’s official language is not English, the foreign patent office will typically require a translation of the application documents prior to granting the patent, which adds expense. In addition, after paying filing fees, some countries (Canada, for example) have a maintenance fee for each year that an application is pending. The application maintenance fee practice has not yet caught on in the United States Patent and Trademark Office. Finally, while in the U.S. individual inventors and smaller entities enjoy a 50% break on many of their fees, the USPTO is unique among its worldwide peers in that regard. Actually, prosecuting a patent in the United States can be a bargain relative to the rest of the world.

It is therefore easy to imagine that obtaining foreign patents that provide worldwide coverage gets expensive quickly. Therefore, most inventors pick and choose from a list of countries where the inventor might plausibly operate their business, and limit patent prosecution for the invention to those countries.

The cost of obtaining a foreign patent notwithstanding, inventors must give serious and careful consideration to protecting patent rights overseas. World markets are burgeoning as the populations of countries like Brazil, Russia, India and China grow, along with corresponding demand for U.S. goods. Existing U.S. trading partners such as Canada and the member-states of the European Union are natural avenues for growth. Australia, New Zealand, South Africa and other English-speaking countries offer the possibility of obtaining patents without requiring expensive translation. Asia offers inexpensive manufacturing possibilities as well as maturing patent systems that provide protection against copying of your invention if you decide on offshore manufacturing.

Your U.S. patent is generally valid for 17 years. Your invention is going to be a smashing success here. Who can say you won’t be getting inquiries from customers in other countries during the next 17 years? Due diligence related to your invention includes looking at patenting your invention overseas.

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