The Puget Patent Blog

Application Publishing Revisited

Posted Monday, March 14, 2011.

In a prior post, I discussed the publication of applications for patents in the United States. For inventors who seek patent protection exclusively in the United States, there is an option for the application not to be published. For many, this is a good choice. Publishing of the application does have a benefit that is worth noting, however.

The benefit is in the area of damages in an infringement suit. Let’s say that after your patent issues, you become aware of a competitor who is practicing your invention without your permission (i.e. making knockoffs). You might consult with a patent litigator and decide to file an infringement suit against the imitator.

There are a variety of remedies you might seek upon proving infringement, including an injunction to require to competitor to stop selling the product, or a requirement that the competitor pay compensation to you for the unauthorized use of your patented invention.

These options are available to you after you are issued the patent. In other words, you can’t enjoin someone from selling the knockoff until after the patent issues. And normally, you can’t receive royalties from sales of the clone of your patented product before the patent issued. Any award of royalties would be computed from the date the patent issued. Unless, that is, your application for a patent was published.

If you do elect for the application to be published 18 months after filing, which is the default timeframe for apps to be published, in a subsequent infringement suit you can make a claim for “provisional damages”: compensation for the time period between the date the application published and the date of issuance of the patent. The theory is that once the application published, a potential infringer could have become aware of the pending patent.

The damages for this time period are limited to a “reasonable royalty”. You can’t make a claim for other damages or for other relief (like the injunction) for the period prior to issuance. But you can ask to be compensated as if there was a licensing agreement in place under which you would have been earning royalties on the potentially-infringing device. You aren’t guaranteed to receive these damages as there are additional showings that are needed (e.g. the infringer must have had actual notice of the pending patent, among other things). But it is one reason why you might elect to allow your application to publish.

Here’s the typical disclaimer: this post does not substitute for actual legal advice, especially in regards to an infringement suit.

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Patent Reform passes the U.S. Senate

Posted Wednesday, March 9, 2011.

Yesterday (Tuesday, March 8th), the United States Senate passed the “America Invests Act of 2011” by a vote of 95-5. As I have previously written on this blog, the act is a significant overhaul of the patent system in the U.S. The House of Representatives will be next to take up patent reform. Given the different political makeup in the House, it will be interesting to see whether the same provisions are in that bill, or if a serious attempt to retain our “First to Invent” system will be made.

Meanwhile, I thought I would post about another interesting provision of the bill that was passed yesterday: the establishment of a separate discounted fee for “micro-entities”. Currently, many PTO fees are halved for individuals and organizations with fewer than 500 employees. On the fee calculation worksheets, there is a checkbox for “Small Entity” status which I check for most of my clients.

Inherent in the new bill is a new category, the “micro-entity”. Individual inventors will qualify for micro-entity status under the bill and be eligible for a 75% discount on many of their fees. Now, assuming individuals can beat larger, well-funded inventive entities in the race to the filing window that will be the result of the shift to “First to File”, the prize is they are at least eligible for a reduced cost of dealing with the Patent and Trademark Office.

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First to File Remains

Posted Friday, March 4, 2011.

Yesterday, Senator Feinstein’s amendment to remove the “First to File” provisions from S.23, the “America Invents Act of 2011”, née the “Patent Reform Act of 2011”, was voted upon and did not have the votes. “First to File” remains in the current patent reform effort.

Historically, “First to File” has been looked at with less favor in the House, so the House version of the bill may retain the “First to Invent” system, leaving the discrepancy to be sorted out in a conference committee.

More to come…

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Patent Reform Debate Continues

Posted Thursday, March 3, 2011.

The “America Invents Act of 2011” is still being debated in the Senate. Among the amendments that have been made to the bill so far is an end to “fee diversion.”

The Patent and Trademark Office generates a large pool of revenue, and some of that cash has gone to fund other federal government activities. But the PTO needs more money to increase its modernization, and to hire more examiners to help reduce the backlog of unexamined applications for patents.

The end to the fee diversion means the PTO will be able to keep and spend more of the money it takes in. One eventual outcome may be that the three-year time period it generally takes from the time a non-provisional patent application is filed until a patent is issued will be reduced.

As I previously discussed in this blog, a key provision of the act is transforming our patent system to a “First to File” system, harmonizing our patent law with most of the rest of the world in this respect. It was thought that Senator Feinstein of California would introduce an amendment stripping the change to “First to File” from the bill, but it hasn’t happened yet and may not.

Yesterday’s amendment featuring the move to let the PTO keep more of the revenue it generates by ending fee diversion shows the Senate is serious about making progress on this bill. Patent reform has not made it through Congress in previous sessions, but it seems likely we will get some movement in 2011. Of course, the House of Representatives will need to pass its own bill and then the two bills must be reconciled, but Senator Leahy, the primary sponsor of the America Invents Act of 2011 seems to believe that all will happen quickly.

More to come…

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"At least", and support in the specification

Posted Wednesday, March 2, 2011.

Patent application drafters generally try to write applications that result in inventions being defined with a broad scope. A patent is essentially a property right, so wouldn’t an inventor would want the patent practitioner to try to acquire rights in the most property possible?

One way patent practitioners accomplish that is to sprinkle the term “at least” liberally through the application. For example, pretend that the bicycle had never been invented, and an inventor sought patent protection for the two-wheeled pedaled-vehicle. But it might be desirable to hold the property right for pedaled-vehicles with more wheels that might be invented in the future. Say, a tricycle for example.

To ensure the inventor receives protection for both the current bicycle, but also for future refinements in pedaled-vehicles that have additional wheels such as the tricycle, a patent practitioner might compose one of the patent claims like this:

A pedaled-vehicle, said pedaled-vehicle having at least two wheels.

I wouldn’t write a claim like that for various reasons, but it illustrates that the inventor’s bicycle having two wheels is encompassed by the claim, as is a tricycle invented by someone else in the future.

So is “at least” the best way to get an extremely broad patent? A recent U.S. District Court case shows what can happen if this is done carelessly. In MagSil v. Seagate, decided about two weeks ago in the District Court for Delaware, a claim using the term “at least” was invalidated because there was no support for the claim in the patent’s specification.

A patent specification must enable someone (not just any someone, but a PHOSITA, the meaning of which is a post for different day) to be able to make the patented invention. If the patent application contains “at least” in the claims, without there being a top end to the range, the specification must give some idea of how to construct the invention having virtually any number of whatever is being claimed. Otherwise, you haven’t properly told another how to make the device you are claiming.

In MagSil, the claim in question had a value for resistance, and the claim specified “at least” a certain resistance. At the time the claim was written, the inventor had no idea that technology would progress to the point that a version of the device with the high resistance used in the eventual device was even possible.

Years later, another company came up with a design for a high-resistance device that was technically within the range specified by the claim, and got sued for infringement. They successfully defended on the grounds that the inventor had not specifically detailed how to construct a device with that much resistance in the specification.

The moral of the story is that when using the term “at least,” it is important to reasonably bound the range with support in the specification for the range being claimed. Or, use claim language other than “at least” that still captures future variations.

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