Category Archives: Patents

New USPTO design patent rules create option for international design registration

May 13, 2015 marks a significant day for inventors who apply for design patent protection in the United States.  That’s the day that United States rule changes take effect to implement the Hague Agreement for the Registration of Industrial Designs, which allows applicants to designate over 60 countries with a single design application.

Under new rules that the USPTO published in April 2015, an applicant who seeks an international design registration may do via a single application. Under the new structure:

  • an applicant for an international design registration must designate the countries for which the applicant seeks registration;
  • the applicant must identify the number of designs included in the application (up to a maximum of 100);
  • applicants are encouraged to include a brief description of each drawing with the application (but the USPTO cautions that too much description of characteristic features can “serve to limit the claim in the United States”);
  • the applicant may be the inventor(s) or another entity such as the assignee;
  • the international application may be filed directly with the World Intellectual Property Office (WIPO), or through the USPTO; and
  • the application will publish 6 months after filing.

The new structure also extends the term for all U.S. design patents, including both international and domestic-only filings. Instead of the previous 14-year term, U.S. design patents and international design registrations resulting from applications filed on or after May 13, 2015 will have a term of 15 years from the date of grant.

When weighing the option of a U.S. design patent application against the option of an international design registration, applicants should consider the relative costs and benefits of each program.  The international design registration can be a very cost-effective way of obtaining protection in large number of countries, since it streamlines the application process into a single proceeding.  However:

  • Applicants who select the international option must pay a fee for each country that is designated in the application.
  • Unlike U.S. design patents, international design registrations are subject to renewal fees every 5 years.
  • Requests for continued examination are not available in industrial design applications.

Because of differences such as these, applicants who are considering only the U.S. (or the U.S. and a small number of additional countries) should weigh the costs of making individual filings in each country against the benefits of the new single-application option.

For more information, see the following resources:

  1. USPTO Final Rule re: Changes to Implement the Hague Agreement Concerning International Registration of Industrial Designs (Apr. 2, 2015)
  2. USPTO EFS-Web Guide for International Designs:
  3. WIPO Guide to International Design Registration
  4. WIPO online Hague System Fee Calculator tool (to help applicants estimate filing fees for international applications)

USPTO Launches Automated Patent Application Alert Service

Patent Application Alert ServiceThe U.S. Patent and Trademark Office has launched a new tool that helps interested parties monitor pending patent applications and receive alerts when applications of interest are published. The Patent Application Alert Service enables registered users to receive notice of published applications using various search criteria, including:

  • applications filed by particular inventors or assignees;
  • applications containing specified keywords in the claims, abstract, title or description, or
  • applications having certain CPC classifications.

The USPTO noted that the new service may help more third parties participate in the “pre-issuance submission” process. In that process, any interested party can submit prior art against a pending patent application for the USPTO Examiner to consider. The time frame for submitting prior art against an application is the later of (i) six months from publication, or (ii) the date of first rejection by the Examiner.

What is “patent misuse”?

“Patent misuse” is perhaps one of the most “misused” phrases in patent law. When faced with a patent lawsuit or even just a cease-and-desist letter, accused infringers who disagree with the patent holder’s actions often ask whether they can counter the infringement accusation with a claim of patent misuse.

Which leads to the question: what exactly is “patent misuse” in U.S. patent law?

Patent misuse can occur when a patent holder improperly tries to expand the scope of the patent in a way that has an anti-competitive effect. (See B. Braun Med., Inc. v. Abbott Labs, 124 F.3d 1419, 1426 (Fed. Cir. 1997).) Patent misuse requires more than just aggressive litigation tactics or disagreement as to whether or not an accused product actually infringes: “the defense of patent misuse is not available to a presumptive infringer simply because a patentee engages in some kind of wrongful commercial conduct.”  Princo Corp. v. International Trade Commission and U.S. Philips Corp.616 F.3d 1318, 1329 (Fed. Cir. 2010) (en banc). Because patent misuse typically requires an anti-competitive effect, courts give the doctrine a “narrow scope.” Id.  Even a finding of anti-competitive effect may not be sufficient to find that patent misuse occurred.   Continue reading

Software patent-eligibility after Alice: where are we now?

Since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the vast majority of district court decisions, Federal Circuit decisions, and Patent Trial and Appeals Board (PTAB) decisions that considered the issue have overturned software and business method patents under the new patent-eligibility standard of Alice.  In the first quarter of 2015 alone, when considering a motion to dismiss or a motion for judgment on the pleadings on the basis of patent-eligibility under §101, U.S. district courts have granted the motions and ruled the patents to be invalid over 66% of the time.

In November 2014, I published a post that summarized court and PTAB decisions that bucked this trend and found software to be patent-eligible. Since then, a small but growing number of cases refused to overturn patents that involved software, and the USPTO issued an Interim Guidance document describing actual and hypothetical claims that could survive post-Alice scrutiny.

To track the activity since then, I have updated my original post. It’s still available via this link. I intend to keep it updated on a periodic basis, so feel free to bookmark it or simply check back for future updates.

Comparing the Innovation Act and the STRONG Patents Act: competing proposals for patent reform

2015 could 37444451_sbe a pivotal year for U.S. patent reform, with two significant — and very distinct — patent reform bills pending before Congress.  This article compares the two bills, the Innovation Act and the STRONG Patents Act, the forces behind the bills, and the next steps in the U.S. patent reform debate.

Introduced in February 2015 by Rep. Bob Goodlatte as a measure to “curb abusive patent litigation,” the Innovation Act picks up where the America Invents Act of 2011 (AIA) left off by proposing additional reforms to patent litigation procedures. The Innovation Act would also streamline some of the AIA’s mechanisms for challenging patents.

In March 2015, Senator Christopher Coons and others introduced the STRONG Patents Act as a way to “reduce abuse while sustaining American leadership in innovation,” The STRONG Patents Act includes some reforms that are similar to those of the Innovation Act, along with several other sections that are designed to protect the positions of patent holders.

Significant provisions of each bill include: Continue reading

USPTO retires SAWS: will it have an effect on the USPTO’s effort to screen out poor quality patents?

The USPTO sealUSPTO’s recent announcement that it is retiring its Sensitive Application Warning System (SAWS) yielded mixed reactions from the patent community. While many noted that the announcement was a win for transparency and accountability in government, others (including some patent applicants) found little comfort after they incurred substantial time and expenses resulting from the USPTO’s delay of patent applications that were assigned to the secret program.

With roots dating to 1994, SAWS first came to light in 2006 after a leaked memo revealed that the USPTO was flagging certain patent applications that could be considered “controversial or noteworthy.” SAWS applications could not be allowed before the Examiner prepared a memo to the USPTO Deputy Commissioners for Patent Operations and Patent Examination Policy.

Some of the criteria for SAWS designation were straightforward:  applications covering perpetual motion machines, anti-gravity devices, and technologies that violate laws of physics were included in the list. Other criteria were more fuzzy: Continue reading

What does the USPTO’s 2014 Interim Guidance on Patent Subject Matter Eligibility mean for software inventions?

At the end of a year in which the patent eligibility of software inventions came under fire like never before, the USPTO finally issued its long-awaited 2014 Interim Guidance for Subject Matter Eligibility, which describes how patent examiners should assess whether a patent application includes patent-eligible subject matter. While the new Interim Guidance may not satisfy many inventors who wish to patent their software, it can help inventors identify the types of inventions that have a chance of success, as well as those for which a patent application may be an exercise in futility.

The new Interim Guidance was prompted in part by several U.S. Supreme Court decisions, including the Court’s June 2014 decision in Alice v. CLS Bank. In  Alice, the Court established a two-part test for patent eligibility. Under the Alice test, one must first “determine whether the claims at issue are directed to a patent-ineligible concept.” Then, one must determine whether there are sufficient limitations present in the claim “to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Since Alicecourts have overturned a significant number of patents covering software and business methods as lacking patent-eligible subject matter.

When it comes to software, the Interim Guidance provides direction almost exclusively by example, listing cases in which various courts have overturned or upheld patents relating to software.  However, some general themes are apparent throughout the document: Continue reading