• Find the point of novelty
  • Broadcast your rights
  • Turn ideas into assets
  • Drive forward
  • Draw the future

Category: Patent

Podcast: Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Windy Point on Mt. Lemmon

Aaron Moncur of Pipeline Design & Engineering recently interviewed me for his podcast Being an Engineer.  We talk a little about my early engineering time, but mostly about the transition from engineering to law and the basics of patent protection. Please have a listen:

Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Pipeline Design and Engineering designs elegant products for its customers.  They are experts in the fields of mechanical engineering & product development.  Aaron hosts the Being an Engineer podcast as a forum for engineers and those who work with them to share and learn about how others solve problems engineers face each day, and about the delightful idiosyncrasies that make engineers breed unique.  Aaron graced me in as a past engineer.  I share some ideas about when you may think it is time to jump the engineering ship, how much fun Laplace Transforms can be, how to protect a new soda bottle design, and why the Patent Office expedites patent applications for those over 65.

 



Line Differences in Design Patent Applications

Mesquites in Late Spring

The scope of protection of a design patent is defined by the drawings presented therein.  In that way, design patents can often seem like a very simple or straightforward form of protection: show some drawings in an application, file it, get a patent a year later.  Not quite.

The Patent Office manual for examination plainly states:

“The necessity for good drawings in a design patent application cannot be overemphasized.  As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture.  An insufficient drawing may be fatal to validity … Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.” – MPEP 1503.01

The Patent Office quote indicates how important drawing quality is from a validity and examination standpoint, and acknowledges the subtle dangers in haphazard drawing generation.  However, to this should be added that good drawings will also drastically affect the strength of a design patent.

The creation of design patent drawings has to be undertaken very carefully.  The lines illustrating the design are shown in solid lines and broken lines.  Solid lines define the actual protected design, while the broken lines show contextual information.

Broken lines are most commonly used to show environment and to define the boundaries of the claimed design.  Broken lines may show environmental structure or a feature that the design fits onto or is located near, to show the structure in context in its environment.  Broken lines may show portions of a claimed design which are unclaimed.  In some cases, broken lines may illustrate claimed design, such as stitching and fold lines.  However, broken lines are not permitted for the purpose of identifying portions of a claimed design which are immaterial or unimportant.  Broken lines cannot be used to show hidden planes or hidden lines – lines which cannot be seen behind opaque materials.  Broken lines can’t be used in design patent drawings to show alternate positions of a structure, such as a door moving between open and closed positions.

Broken lines may be drawn along a boundary that does not actually exist in reality.  For example, while broken lines are often drawn along real lines, such as the edge or corner of a table, broken lines could be shown extending across the face of the table’s smooth top.  This would show that the top – or a portion of the top – is not claimed.  Creative and flexible use of broken lines can drastically alter the scope of the design patent protection – intentionally or unintentionally.  They also present a powerful to build a packet fence around a design.  Apple granted multiple patents on the iPhone design, each with a different permutation of broken and solid lines:

Broken line permutations in design patent drawings

 

When broken lines are used, they must be explained.  A statement must be included in the specification explaining the significance of the broken lines.  Sometimes, if the broken lines are used for different reasons, slightly different broken lines are used and each is explained.

There are a lot of ways to prepare a good design patent application, and a lot of ways to mess it up.  When considering design patent protection, I strongly recommend you hire a registered patent attorney to do so, and that ensure that that attorney uses a professional patent draftsman experienced in creating design patent drawings for the United States.  You will rely both on the expertise of the attorney in deciding what views to show, how many views to show, and what material should be claimed and unclaimed, and also on the ability of the draftsman to deliver on instructions from the attorney.



CORONAVIRUS: Patent Office Form For COVID-19 Statement

Getting hotter in Phoenix

As discussed earlier, the Patent and Trademark Office is extending certain deadlines where a delay in filing a paper or paying a fee was due to the COVID-19 outbreak.  Initially, the guidance from the USPTO was to include a specific statement in a filing and make it conspicuous.

The Office has now created a fillable PDF form which contains this statement.  The form can be filled and filed directly to the PTO with its own Doc Code.  Upon filing, it should be easily identified by the Patent Office and processed accordingly.

The form is available here.  Please note: this is a patent form; it looks like the other forms used by the Patent Office.  I’m not aware of any crossover between patent and trademark forms.  It could probably be shoehorned into use as a trademark form, but only with modification, as the fields in the upper half of the form are specific to patent applications and issued patents.  However, you may still be better using the “miscellaneous statement” section of TEAS filings to make your COVID-10 statement in a trademark application or trademark registration.



Design Patent Rocket Docket

Near Eaton Canyon, Pasadena

The “Rocket Docket” program is the system the US Patent Office established to speed up the examination of design patent applications.  Recognizing that design patents cover the external appearance of an item, and that this external appearance, contrasted with the underlying guts, can often be easily copied, the Patent Office created a way to hurry along examination of design patent applications.  Formally known as Expedited Examination but referred to by practitioners and the USPTO alike as the Rocket Docket (even PTO forms use the doc code: “ROCKET”), this program can shave as much as a year off the pendency of a design patent application.

As of March 2020, the average time to a first office action – a first substantive review of a design patent application – was 15.2 months with a total average time from filing to issuance at 21.4 months.  Both of these numbers have been slowing creeping up over the years.  In contrast, it takes just over one month from the day an expedited exam request is granted to the first examination of a rocket docket design patent application.  This is an incredible savings in time.  So, what does it cost?

To be eligible for the rocket docket, a design applicant must conduct a pre-examination search and file a Request for Expedited Examination.  The request includes information about the pre-exam search, and the results of the search must be disclosed in an accompanying information disclosure statement.  Lastly, a fee must be paid.  Currently, the fee for small entities is $450.  This is relatively cheap compared to the cost of expediting a utility patent application for $2,000, but the pre-exam search can be costly, often running more than $2,000.  A thorough search must be run, because the Patent Office leans on that search heavily as a way to reduce the amount of time it needs to review the design application.

The US Patent Office states that the results of a search by a foreign patent office can be submitted in lieu of an internal pre-exam search.  However, it is questionable whether this is a practical approach, as most foreign offices merely register a design without search and examination.

Additionally, the design application must be complete when filed.  This means that the drawings must be acceptable and conform to the Office’s standards.  Drawings which contain errors or ambiguities are frequently an issue in design applications, so great care must be taken with these.  The basis filing, search, and exam fees for a design patent application must also be paid.  In short, the entire application must be complete and in condition for examination – this requires a lot of attention by the party preparing the application.

Failure to submit a request that properly reports on a competent pre-exam search can be basis to have the rocket docket request rejected.  As such, great care must be taken when conducting this search.  It is strongly recommended that a professional searcher perform this search.  Indeed, this firm uses an outside professional search to conduct the pre-exam search and even develop a report on the databases searched, the classes and keywords used in the search, and the results found.



Coronavirus: US Patent and Trademark Office Extends Deadlines Further

Drive Back from Solitude Ski Resort

The CARES Act gave the US Patent and Trademark Office the authority to toll, waive, adjust, or modify deadlines related to patent and trademark owners in light of the coronavirus pandemic.  At the end of March, the USPTO announced it would do just that.  As I summarized here, certain deadlines falling between March 27 and April 30 would receive 30-day extensions when accompanied by a statement regarding the effect of the pandemic on the deadline.

The Office has now modified that deadline extension.  Yesterday, the USPTO announced that deadlines falling between March 27 and May 31 will now be extended up to and including June 1, provided that the filing or fee payment is accompanied by a specific statement that the delay was due to the COVID-19 outbreak.

Please note – this is not an additional extension.  It does not grant another 10, 15, or 30 days to file.  Rather, it simply says that eligible deadlines can now be extended (under the right circumstances) up to a specific day – June 1.  If your deadline was originally due March 27, this gives you two additional months.  But, if your deadline fell on May 31, this only gives you a single extra day.  It s unclear at this time why the Office chose to create an extension running to a specific day rather than an extension of all deadlines by X number of days, as it previously had.

It is possible that this extension allowance will be modified again.



Vagaries of Design Patent Practice

Sunset in Phoenix

Design patents protect the ornamental and aesthetic aspects of a functional item.  Whereas a utility patent protects the parts of the item, the way its parts cooperatively move or operate together, how they are structured and arranged, etc., design patent protection how that item actually looks.  They do this by presenting drawings of the item and then claiming protection in the design shown in those drawings.  As such, the bulk of a design patent application is the drawings, and there is relatively little written text accompanying those drawings.

Because of this, design patents can often seem to be simple.  But there is a subtlety in each application that requires anticipating the prior art, the course of examination, and the need for expansion of design protection in the future.  Complicating this subtlety is the relative scarcity of practical information regarding design patents.  This is a systemic problem, created by a few factors.

First, there just aren’t many design patents out there.  Pretty consistently, less than 10% of the patents issued each year are design patents.  In recent years, that is about 30,000 issued design patents.  About 40 to 45,000 are filed each year, so very roughly, we can say that a third of filed design applications go abandoned (design apps generally have a pendency of about 6-18 months, meaning they are likely to issue in the same or next calendar year, if they issue at all).

Not only are practitioners not filing a lot of design patents, but the ones that are filed don’t provide much feedback.  Design patent applications are never published, so the 15,000 or so applications that abandon each year do so in secrecy.  This is a tremendous loss of learning opportunity from these abandoned applications.  For comparison, around 600,000 utility patent applications are filed each year and about 300,000 issue; though utility patents have a much longer pendency than design patents, we might safely say that at least one hundred thousand utility patent applications are abandoned each year.  A majority of these are published, and the file histories can be reviewed to see what went wrong.  From that, patent attorneys can determine how not to write and prosecute patent applications.  But because abandoned design patent applications are not publicly available, we can’t study what goes wrong in them.  Instead, we have to rely on what went right.  Moreover, it is not uncommon for a well-written design patent application to receive a first action allowance – in other words, no rejections.  While this is a good thing, it does not help expand a practitioner’s understandings to the edges of design patent practice – could more have been claimed, could the claims have been broader, would there have been a reason to claim differently or present different drawings or more drawings or several embodiments, etc.?  Answers to questions like these are just not available except to perhaps – perhaps – the largest entities with tremendous legacy knowledge and systems developed to pass that knowledge to its team (and almost certainly a large team) of lawyers who may be spread and isolated across different and often competing large law firms.

The Manual of Patent Examining Procedure – the Patent Office’s guidebook for reviewing patent applications – is mostly written to utility patents.  Often decried as a manual for Examiners to craft rejections against patent applications rather than a guidebook for level prosecution (defining the limits of rejections and response arguments), the MPEP pays scant little attention to design patent applications.  This means that examination consistency suffers among Examiners and that practitioner’s counsel to clients becomes more nebulous.  Design applications are then written from a few perspectives: not just based on objective rules in the MPEP and case law (few design cases are ever appealed), but the particular client’s tolerance to risk and cost involved in preparing and arguing an application with an Examiner who may or may not read the rules in the same manner as the last Examiner, or even as they did six months ago.  Principled and rule-based arguments that may win in the well-defined arena of utility patent prosecution may descend into pleading negotiation with an Examiner in light of a refusal in a design patent application.

 

 



CORONAVIRUS: Patent Frequently Asked Questions

Lost Dutchman State Park during Coronavirus Outbreak

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The Patent Office is allowing certain filing and fee deadlines to be extended due to the coronavirus pandemic in the US.  Below are common questions about this change:

Question 1: Coronavirus has prevented me from meeting my deadline. What can I do?

The US Patent and Trademark Office has instituted a 30-day extension of time for some patent deadlines. You may be able to benefit.

Question 2: How do I take advantage of the 30-day extension of time?

If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered timely when made within 30 days of the original due date. However, to qualify, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. Only certain situations will qualify as delays due to the outbreak. More information is available at the official  Notice of Waiver of Patent-Related Timing Deadlines under CARES.

Question 3: Are there any requirements about how the statement has to be made or presented?

The statement does not have to be verified or submitted in the form of an affidavit or declaration. It must, of course, be truthful, and it is recommended that you keep detailed internal records should there later be a question as to the nature of the delay.

Also, rather than including the statement within a normal filing, it is recommended that the statement be included in a separate paper. While the statement can be included in the paper lodged with the Patent Office, it may be initially missed by the Office and delays could result before it is accepted. If included within a filing, it should be made in a conspicuous manner.

Question 4: What qualifies as “a delay due to the outbreak?”

At this time, it is not clear exactly which situations will qualify as being due to the outbreak.
The applicant, agent, owner, petitioner, inventor, or attorney must be personally affected by the outbreak, so being sick will certainly qualify. However, it is less certain whether they actually have to be sick themselves. The rule identifies that one must be affected by the outbreak, not necessarily the disease. So it is possible that having to stay home to take care of a kid whose school was closed could be a qualifying reason (though it should be noted that the Office has not specifically identified this as qualifying reason). If an office closure, cash flow interruption, travel delays, or inaccessibility of files or other materials causes the delay, this will also qualify. The new rule further states that “similar circumstances” to the above will qualify if they materially interfered with the on-time filing or payment. While it does not appear that the Office requires details regarding how the outbreak delayed the filing, it may be a good idea to provide some basic information about the delay

Question 5: When does an extension start??

Day 1 of the 30-day extension of time is the first day after the original due date, in other words, the first day after the original due date.

Question 6: What if the 30-day extension of time ends on a Saturday, Sunday, or federal holiday?

If the 30-day extension of time ends on a Saturday, Sunday, or federal holiday, the extended deadline falls on the next regular business day.

Question 8: Are there any fees associated with extension?

No. The extension does not cost anything. The only fees that may be due are those associated with the filing or fee payment which is being extended.

Question 9: What appeal-related filings are eligible for a 30-day extension of time?

The following appeal-related filings are eligible for a 30-day extension of time:

  • notice of appeal
  • appeal brief
  • reply brief
  • appeal forwarding fee
  • request for an oral hearing before the PTAB
  • response to a substitute examiner’s answer
  • amendment in connection with a new ground of rejection by the PTAB
  • request for rehearing of a PTAB appeal decision

Question 10: Are all entities entitled to all CARES Act extensions?

No. Certain forms of relief are limited to small and micro entities.

Question 11: Which filing and fee extensions are only available to small and micro entities?

  • replies to an Office notice issued during pre-examination processing, e.g.:
  • reply to a notice of omitted items
  • reply to a notice to file corrected application papers
  • reply to a notice of incomplete application
  • reply to a notice to comply with nucleotide sequences requirements
  • reply to a notice to file missing parts of application (including, without limitation, the payment of the filing fees)
  • reply to a notification of missing requirements
  • a maintenance fee payment

Question 12: What PTAB filings are eligible for a 30-day extension of time?

  • request for rehearing of a PTAB decision in an AIA trial or interference proceeding
  • petition to the Chief Judge
  • patent owner preliminary response in a trial proceeding, or any related responsive filing

In the event that the USPTO extends a deadline for a patent owner preliminary response or any related filings, the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).

For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request for an extension of time can be made by contacting the PTAB.

Question 13: What PTAB filings are not eligible for an extension of time?

At this time, PTAB is not extending any statutory deadlines for filing an AIA petition under either 35 U.S.C. §§ 315(b) or 321(c).

Question 14: Has the Patent and Trademark Office provided any other relief in view of the COVID-19 outbreak?

Yes. The USPTO has waived the fee for petitions to revive applications that became abandoned because applicants could not meet the deadline for responding to an Office communication due to the COVID-19 outbreak. The Office has also waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.

Question 15: Will the USPTO extend the CARES Act relief beyond April 30?

At the time of this writing, the Patent and Trademark Office has not announced further extensions. However, I believe another 30-day extension is highly likely to be granted should the virus continue to keep the economy depressed for a few more weeks.

Question 16: If I have a question about CARES Act extensions, whom do I contact?

The USPTO has a help email dedicated to COVID, but I have found that emails sent to general email addresses at the USPTO never get returned. You can also contact the Office of Patent Legal Administration at 571-272-7704 (or 571-272-7703 for reexamination), or contact Arizona patent attorney Tom Galvani at 602-281-6481.



CORONAVIRUS: Patent Office Not Requiring Original Handwritten Signatures

The Patent and Trademark Office will not be requiring handwritten signatures during COVID-19 outbreak.  Correspondence with the Patent Office requires a signature of some form.  Generally, an electronic or S-signature is sufficient to submit a document to the Patent and Trademark Office.  However, in a few situations, an actual, pen-to-ink, handwritten signature is required.

For the seemingly foreseeable future, however, that requirement has been waived.  The United States Patent and Trademark Office considers the effects of COVID-19 to be an “extraordinary situation” for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.

The waiver applies mostly to attorney and agent issues, such as new licensing applications to practice before the US Patent and Trademark Office and disciplinary matters in front of the Office of Enrollment and Discipline.  Additionally, some credit card payments apparently must be accompanied by handwritten signatures, though in a decade of practice, I’ve never encountered this.

While the requirement for a handwritten signature has been waive, the requirement for a signature has not.  Indeed, where handwritten signatures were once required, corresponding parties must now submit photocopies of original signatures and S-signatures will satisfy during waiver.



CORONAVIRUS: US Patent and Trademark Office Response

Quail eggs in our backyard

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The US Patent and Trademark Office has made extensions available to filing, response, and fee deadlines in certain patent and trademark matters. The Office recognizes that the outbreak, and the economy impact thereof, have made it difficult or impossible for some entities to meet their deadlines. Applicants have been affected. Patent and trademark owners have been affected. Law firms and legal personnel have been affected. The Office is allowing some deadlines to be extended for 30 days under certain circumstances.

In all cases, a deadline can be extended only if the outbreak materially prevented or interfered with an on-time trademark filing, response, or fee payment. “Materially prevented” or “materially interfering” includes situations such as office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or other similar circumstances. Further, only certain people can claim the extension: the person affected by the outbreak must be a practitioner, applicant, registrant, or other person associated with the filing or fee.  Lastly, only deadline falling within certain dates will qualify.

If you request an extension, you need to do so explicitly and conspicuously; if the request is hidden, it will probably be delayed or may even

be missed completely. This will require further follow-up by you with the Patent and Trademark Office to make sure it gets processed – just extra work from you during a time when you don’t need more on your plate, if you’re being truthful that the outbreak has affected you. And of course, you must be truthful when making the statement. It is a good idea to at least internally and carefully document the circumstances that are preventing the filing from being made on time, and then to keep those detailed records in case a question about their veracity ever arises. I predict that in five to ten years, some patents and trademarks could be invalidated in litigation because a COVID-19 extension was taken but shouldn’t have, or because the legitimacy of the conditions around the delay could not be shown.

An extended deadline window starts the day after the original deadline. That is day 1. Day 30 – the end of the window – is 30 business days afterward, so long as day 30 is not a weekend or federal holiday. If it is, then the extended deadline falls to the next regular business day.

I’m publishing more information about the US Patent and Trademark Office’s response to coronavirus this week. In the meantime, you can contact patent and trademark attorney Tom Galvani at 602-281-6481.  During the pandemic, Tom is working remotely and will likely return your call from a 435 number.  Videoconferencing is also available.



New Specimen Rules in Trademark Applications

On Friday, February 15th, a number of new rules governing trademark applications went into effect.

All trademark applications, and all correspondence in trademark applications and registrations, must now be filed electronically expect in limited circumstances.  The Trademark Office had been pushing stakeholders in this direction for years, most recently by significantly raising the cost of paper filing versus electronic filing.  However, now nearly all communications with the Trademark Office must be through the TEAS filing system or email (in certain limited circumstances).

In situations where the electronic filing system is unavailable (the Patent Office filing system frequently does down; the Trademark Office’s system does so less often), then submissions may be made via fax.  Yes, fax.

As part of this change, the Trademark Office proposed that applicant’s personal email addresses would have to be submitted and would be made public.  While we have always placed our firm email address on trademark applications as the official correspondence address for communications, this change is significant.  It spurred concern from many practitioners, who were worried that their clients would be spammed to no end.  Before last week, applicants receive spam paper solicitations, often with false information, fake deadlines, and large fee requests.  However, publishing a personal email address for each applicant would open the doors to widespread spamming.  So last week, I joined 198 other trademark attorneys in sending a letter to the Trademark Office explaining the consequences of this rule.  Thankfully, the Trademark Office rescinded this rule change on Thursday.  However, there has been talk since then that other systems at the Trademark Office are nevertheless requiring applicant email info.

The rule change has also affected specimens in trademark applications.  For specimens showing use of the mark with goods, the specimen must show use on the goods, on packaging for the goods, on labels or tags affixed to the goods, or on displays associated with the goods.  Previously, one could submit a photograph of a label or tag in isolation; that will only work now if the tag clearly shows the mark in actual use in commerce, such as by showing information like net weight, volume, UPC bar codes, ingredients.  Better practice is to simply show the goods with the tag of label affixed thereto.  As before, the specimen must show actual use; printer’s proofs, artist renderings, computer or digital illustrations, and similar mockups will still not be sufficient.  For screengrabs or screenshots, specimens must now show the URL and print date.

It is possible that these rules will change.  I expect the Trademark Office to issue a revised rule regarding applicant email addresses soon, and hopefully it will maintain the privacy of that information.  Check back for updates.