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Category: Patent

Revival of a PCT Application

Gila Monster, Brown’s Ranch, Scottsdale

The Patent Office is relatively generous when it comes to tolerating accidents in patent applications and patents. Revival of a PCT application is more difficult.  Patent applications can sometimes go abandoned when an applicant fails to submit a reply or response in time, or fails to pay the full amount of a fee that is due, or leaves out critical elements of an application. I recently inherited a client with a patent portfolio that had all of these problems, and fortunately, they can be solved in most circumstances. The Patent Office allows revival of an application with the filing of a petition explaining the lapse and delay, and payment of a hefty petition fee.

An owner can also “revive” a patent.  Utility patents have maintenance fees that must be paid periodically to keep the patent alive. If any of those payments are missed, the patent will expire. However, the Patent Office has a mechanism to accept the unintentionally delayed payment of a maintenance fee. Again, this requires a large surcharge.  I have had to do a few of these, all because an attorney passed away without a contingency plan for transferring or alerting his clients.

A PCT international application, however, is a different animal. PCT applications proceed along a strict and time-sensitive path. PCT applications must be filed within 12 months of a first priority date to initiate an “international phase” of the process, in which the PCT application is centrally searched, examined, and potentially amended. Then, the applicant must enter the “national phase” of the process within 30 or 31 months (depending on the country) of the priority date by filing national phase applications in foreign countries. If the applicant doesn’t file foreign-country applications by the 30/31 month deadline, the PCT application simply expires.

“PCT” stands for Patent Cooperation Treaty. More than 150 contracting states have signed the PCT. This treaty establishes a centralized process for searching and examining applications, internationally-accepted indications of patentability, and processes for filing local patent applications based off the PCT application. Another tenet of the PCT is that the international application has the effect of a national patent application in all contracting states when it is filed. In other words, filing a PCT application is considered to be effectively filing an application in each of the 150 contracting states’ patent offices.

This yields a helpful consequence in the US, with its generous abandonment and revival rules. The US revival rules are not limited to applications that are actually filed with the Patent Office; it applies to any application that is effectively filed. This means that, if an applicant files a PCT application and forgets to enter the US as a national phase application by the 30-monthe deadline, then you can actually revive the application as to the US.

This is not revival of a PCT application itself. There is no mechanism to do that. However, revival of a PCT application as to the US will allow you to file into the US and maintain the PCT’s priority date. Your ability to revive the application in other countries will be similarly determined by local law there. Reviving a PCT application in a national phase country is not simple. Check with foreign counsel or your local patent attorney and discuss the reasons the PCT application was abandoned to see if revival is even an option.



Oath Or Declaration in a Patent Application

Oath or Declaration in a Patent Application

Phoenix Mountain Preserve

When does a patent application require an inventor’s oath or declaration?  Well, almost always.

Only the inventor or inventors of an invention may file for a patent application claiming the inventive subject matter. “A person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented.” 35 U.S.C. § 102(f). This statute bars the issuance of a patent where the applicant, or identified inventor, did not invent the subject matter being claimed. See In re Verhoef, 888 F.3d 1362, 1365 (Fed. Cir. 2018) (citing Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998); City of Milwaukee v. Activated Sludge, 69 F.2d 577, 587 (7th Cir. 1934) (“When a number of persons make an invention jointly, a valid patent can not be taken out in the name of one of them.”)).

The Application Data Sheet sets forth the inventorship and is presumed to be correct on its face. An oath or declaration must therefore be submitted for each person identified as an inventor. An oath or declaration filed in a patent application must identify that the person making the oath believes the named inventor(s) to be the original and first inventor(s) of the claimed subject matter. This is to ensure that each inventor indicates what he or she believes to be the appropriate inventive entity.

The oath must also state that the signatory acknowledges the duty to disclose to the Patent Office all information known to be material to patentability. Inventorship is typically conception; reduction to practice – drafting someone else’s idea – is not sufficient to be considered an inventor.  See Fiers v. Revel, 984 F.2d 1164, 1168 (Fed. Cir. 1993).

So, when a person conceives of an idea, that person becomes an inventor, and that person must sign and file an oath or declaration making certain statements about the duties and facts surrounding invention and the examination of a patent application for the idea.

In some cases, multiple may be inventors. Joint inventorship can happen through close collaboration or because a project develops over time and is added to by inventors completely separate from each other. A joint inventor is a person who:

(1) contribute[s] in some significant manner to the conception or reduction to practice of the invention, (2) make[s] a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do[es] more than merely explain to the real inventors well-known concepts and/or the current state of the art.

Pannu, 155 F.3d at 1351. “When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. § 116. Joint inventors may not apply for a patent other than jointly; neither of them can alone file a patent application. 37 C.F.R. § 1.45(a).

It is prohibited for a joint inventor to receive a patent that doesn’t name the other joint inventor(s); doing so can be a basis for later invalidating the patent if the inventorship is not corrected. Thus, joint inventors must sign their own oath or declaration.

Unfortunately, an original oath or declaration cannot always be obtained. Sometimes, an inventor can’t be reached, or refuses to sign, or has died. That doesn’t a patent app can’t be filed or a patent issued.  Rather, the rules account for these situations and there are mechanisms and procedures to file an application without the required oath or declaration.

An oath or declaration is not required in all continuing applications. Under 35 U.S.C. § 115(g), the requirement for a signed declaration does not apply if the inventor was also named as the inventor in a parent application, to which the subject application is a continuation or division. A properly-signed declaration previously submitted in such a priority application renders the requirement for a dec moot. Nevertheless, it can sometimes be easier to file the declaration from the previous application in the new application, just so that it is of record and the file is clear. And, if the inventorship has changed at all from the prior application, new oaths or declarations must be filed.



Fee Changes at the Patent Office

Florida River, Colorado

The Patent Office has raised many of its fees.

The Office attempted to soften this fee increase by explaining that it is the first raise in almost three years, it nevertheless comes in the midst of a pandemic where many are struggling to meet their financial obligations. Larger companies may not be greatly affected, but smaller companies, start-ups (especially self-funded ones), and independent inventors are disproportionately impacted by these fee changes. It is somewhat disappointing to see Office continue with these changes despite the current economic situation of most Americans.

Nevertheless, the Patent Office is largely self-funded and budgeted, and it is not immune to rising operational costs. As a consequence of mandated internal reviews of fees, costs, and revenues, the Office determined that fee adjustments were necessary to adjust to increasing costs and to provide necessary resources for its internal operations. In setting fees, the Office attempts to not just cover its current costs but its projected costs for the next several years. Thus, the hike feels steep now because it is, in part, set to off-set future fees. Most fees increased by approximately 5 percent, though some increased by quite a bit more.

Below I cover the fees for some of the more-commonly used actions. There are a number of changes to fees that I have not included here (more info is available at this link).  I’ve quoted the below fees at the small entity rate.

Adjusted Fees

  • Provisional Application Filing Fees increased from $140 to $150
  • Utility Patent Application Filing Fees increased from $785 to $830
  • Track One Requests for Expedited Examination increased from $2,000 to $2,100
  • Rocket Docket requests increased from $450 to $800
  • Design Patent Application Filing Fees increased from $480 to $510
  • International Application Transmittal Fees increased from $120 to $130
  • International Application Search Fees increased from $1,040 to $1,090
  • International Preliminary Examination Fees increased from $300 to $320
  • Extensions for Responses increased $10 to $80, depending on the length of extension
  • Terminal Disclaimers increased from $160 to $170
  • RCE fees increased from $650 to $680
  • Notice of Appeals increased from $400 to $420
  • Petitions to Revive Abandoned Applications increased from $1000 to $1050
  • Utility Patent Issue fees increased from $500 to $600
  • Design Patent Issue fees increased from $350 to $370
  • 3.5 Year Maintenance Fees increased from $800 to $1,000
  • 7.5 Year Maintenance Fees increased from $1,800 to $1,880
  • 11.5 Year Maintenance Fees increased from $3,700 to $3,850
  • Maintenance Fee Surcharge (for late maintenance payments) increased from $80 to $250

New Fees

  • Non-DOCX Filing Surcharge is a new fee at $200. The Office is beginning to require patent application documents be filed in DOCX format. This surcharge will not go into effect into 2022, however.

Discontinued Fees

  • The Office dropped fees for a bunch of actions and reports that are very infrequently used.


Always Stay Humble And Kind

Sometimes a prospective client calls in need of help prosecuting his or her patent application. Sometimes, the caller informs me that they wrote the patent application themself (a “pro se applicant”), that it has been rejected, and that they now want to consult an attorney.  I get about ten of these calls a month.  The caller usually wants me to write a response to the Patent Office.

Overend Park, Durango, Colorado

I do responsive work all the time; it is called patent application prosecution. I know pretty well what my average cost is for this kind of work, and I have found that, unfortunately, it often exceeds a pro se applicant’s budget. I usually try to explain the likely cost of such a response, and I try to explain why the costs can be so high.  In my experience, patent applications written by inventors require far more work than ones written by attorneys; one response is usually not sufficient – the first response is succeeded by one or more rejections.  Unfortunately, there usually aren’t ways to fix all the issues in a pro se application in one blow.

There are a lot of rules and pitfalls that an inventor doesn’t know about and will usually run afoul of when writing an application, and these then have to be fixed if the application has any hope of maturing into a patent. For that reason primarily, I don’t take on clients who have written their own applications anymore. I do caution them, however, that it will be difficult and expensive to get a patent, and so they should make sure that attorney they do hire discloses this to them.

I am fairly direct when I deal with clients. I always try to set expectations from the outset, because I don’t want them to be surprised with an outcome later on.  Sometimes, my directness is too blunt, and is interpreted as rudeness.  My wife likes to remind me of this.  I’m always trying to improve and better appreciate and understand each client and their unique position. While I will always tell clients only the truth, I am reconsidering my manner of delivering that truth.



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.