Utility Patents

“I just invented something. What is a Patent, and Why Should I get One?”

If you have just invented something, congratulations!  If you are ready and willing to embark on the patent process, the U.S. government may reward you with a patent.

Patents are designed to reward innovation and encourage the free exchange of information.  When an inventor has proven to the government, via the United States Patent and Trademark Office (USPTO), that he or she has invented something new and useful, the government will reward the inventor with a patent in exchange for a public description of the invention.  The patent gives the inventor control over how that invention is made or used within borders of the United States for a limited period.  For twenty years, the inventor can choose who can practice or sell the invention within the United States and can choose to prevent others from practicing the invention within the United States.

For example, if an inventor has invented a new and useful widget, and obtains a patent on that widget, she can give a company the right to manufacture and sell the widget in exchange for a benefit, e.g., money.  This is known as a license.

If the inventor has discovered a competitor selling the patented widget without her permission, she can stop the competitor’s activities by filing a lawsuit for patent infringement.  The federal courts can then enforce the patent by ordering the competitor to stop infringing the patent and ordering the competitor to give the inventor her share of the profits.

The government recognizes many types of inventions with the patent system.  For the most part, any new or useful machine, method, article of manufacture, or composition of matter is eligible for patent protection.  Inventors have patented anything from engines to computer algorithms to textiles to chemical compounds.  However, there are categories, such as laws of nature and abstract ideas, that cannot be patented, to prevent an unfair monopoly over what some consider the building blocks of innovation.

In order to obtain a patent, you must file a patent application with the USPTO that fully describes your invention.  The USPTO will then publish and examine your application, and analyze what you have claimed to be your invention.  The USPTO may require you to redefine your invention, clarify your invention, or distinguish your invention from others in a process known as patent prosecution.  If the USPTO agrees that your invention is clear, new, and useful, the USPTO will grant you a patent.

Preparing a patent application and prosecuting the application before the USPTO is a complex process that requires legal and technical expertise.  Our patent attorneys and patent agents are legally trained scientists and engineers with the necessary knowledge and experience to get you the patent you deserve for your invention.

Frequently Asked Questions on Utility Patents (FAQs)

What are the minimum filing requirements for a utility patent application?

  1. Specification
  2. Drawing
  3. Claims
  4. Inventor’s Declaration*
  5. Filing Fees

* Although not needed to obtain a filing date, the USPTO charges a LATE FEE if submitted after the filing date.

What are the most common Objections the USPTO makes to the Specification?

  • Abstract is longer than 150 words

An abstract may not exceed 150 words in length. 37 CFR 1.72(b).  If a submitted abstract is longer than 150 words, an examiner will likely require the applicant to cure the defect in the first Office Action.

  • Images used for equations do not have a high enough resolution

An equation should preferably be typed using a word processor or equation editor. If an equation is embedded as an image, the image should have a sufficiently high resolution to be reproducible.

  • Font size is too large or too small

Text height has to be at least 0.32 cm (1/8 inch).  The USPTO recommends a 12pt. nonscript font such as Arial, Times Roman, or Courier.  37 CFR 1.52(b). Smaller fonts are allowed for superscript or subscript, as long as characters are clearly visible.

  • Use of photographs

Applicants may only submit photographs if “photographs are the only practicable medium for illustrating the claimed invention.”  37 CFR. 1.84.  Black and white photographs must be of such quality that the details of the photograph can be reproduced in the printed patent.  Color photographs may be accepted if they are submitted with a proper petition and are of sufficient quality the pertinent details can be reproduced in black and white in the printed patent.  The USPTO recommends a minimum resolution of 300 DPI.

  • Figure and view numbers are not oriented in the same direction

Indications of the figure and view number of a specific drawing must be oriented in the same direction as the drawing so that a reader does not have to rotate the sheet.

  • A figure has multiple sub-parts on a single page

The USPTO has been issuing objections to figures having sub-parts that are not separately labeled and/or separately described in the Specification.  For example, if FIG. 1 has sub-parts (a), (b), and (c), these sub-parts should each be labeled with reference to FIG. 1 (e.g., FIG. 1(a), FIG. 1(b), and FIG. 1(c)), and should be separately described in the Brief Description of the Drawings.

  • Drawing sheets do not have proper margins

The USPTO requires all drawing sheets to have specific margins.  Top and left side margins must be at least 1 inch.  Bottom and right side margins must be at least 3/8 inch.

What are the most common errors in the formal application documents?

  • An inventor’s name is abbreviated in the oath or declaration

In a declaration, each inventor must be identified by his or her full name, including family name and at least one given name.  If the inventor’s full given name is a singular letter, the inventor should clarify in the declaration that the letter is the inventor’s given name. MPEP 602.08(b).

  • The Applicant’s entity size is incorrectly identified as a large, small, or micro entity

An applicant qualifies as a small entity if it is a person, a small business concern, or a nonprofit organization. 37 CFR 1.27(a).  A micro entity qualifies as a small entity, and in addition, has filed no more than 4 previous applications, and earns less than a specified income. An applicant is a large entity if it does not meet any of the above requirements for a small or micro entity.

What is the timeline for responding to a non-final Office action (NFOA)?

A response to an NFOA is due three (3) months from the USPTO mailing date of the action, and three (3) one-month extensions of time are obtainable.  However, if a response is not filed within six (6) months of the NFOA’s mailing date, the application will be abandoned.

What is the difference between a final Office action (FOA) and an Advisory Action (AA)?

If the applicant’s response to a non-final Office action does not persuade the examiner, or if the applicant’s claim amendments result in a new ground of rejection, the examiner will issue a final Office action (FOA).  New claim amendments and evidence are limited in the applicant’s response to an FOA.

If the applicant’s response to the FOA is not persuasive, the examiner will issue an Advisory Action (AA).  In response to the AA, the applicant can file a request for continued examination (RCE) or an appeal.

What is the timeline for responding to a final Office action (FOA)?

The response to an FOA is due three (3) months from the mailing date of the FOA, and three (3) one-month extensions of time are obtainable. However, if a response is not filed within six (6) months of the FOA’s mailing date, the application will be abandoned.

What is the timeline for responding to an Advisory Action (AA)?

The deadline for response to an AA is six (6) months after issuance of the FOA.  This deadline is not extendable.  If an Advisory Action has isn’t received, and the six-month deadline is approaching, the Applicant may file a Request for Continued Examination or an appeal to ensure the Applicant’s response to the FOA is accepted before the application becomes abandoned.

What is the optional 2-month deadline for responding to an FOA?

The optional 2-month deadline is the date occurring two (2) months after the FOA is mailed.  If a response is filed by the optional 2-month deadline, extension of time fees can be reduced.

If the FOA response was submitted by the optional 2-month deadline, extensions of time fees for filing an RCE, if required, are calculated from the mailing date of the AA.

However, if the FOA response was submitted after the optional 2-month deadline, the extension of time is calculated from the date the response to the AA is filed.

What is an Information Disclosure Statement (IDS)?

An IDS is a submission to the USPTO by the Applicant to disclose references known to the Applicant and “material” to patentability. This disclosure is meant to satisfy the “duty of candor” owed to the USPTO under 37 C.F.R. 1.56. An IDS often includes, for example, references that are cited in Office Actions of related applications. The requirements for submission of an IDS depend on the time period during which it was submitted.

When is an IDS due?

An IDS is due during the pendency and prosecution of any patent application. An IDS may be submitted any time before a first Office action issues, but after that, it must be filed within three (3) months of discovery of a material reference.

What are the requirements for filing an IDS?

An IDS includes a listing and copies of references material to patentability and an English language translation of at least the abstract of any references that are not in English.  A certification and fee may also be required depending on when the IDS is filed.  For example, after the first Office action is filed, the Applicant must certify that the references became known to the Applicant within three (3) months of filing the IDS.

  • Time Period 1: before the 1st Office Action, no fee or certification is necessary.
  • Time Period 2: after the 1st Office Action and before a final Office Action or Notice of Allowance, there are no fees, but a certification may be required.
  • Time Period 3: after a final Office Action or Notice of Allowance, but before the Issue Fee is paid, both a fee and a certification are required.
  • Time Period 4: after the Issue Fee is paid, a Petition to Withdraw from Issue and an RCE must be filed to submit the IDS.
  • Time Period 5: after the patent issues it is no longer possible to file an IDS.

Design Patents

Design patents protect ornamental designs.  For example, design patents have been used to protect novel fonts, soda bottle shapes, and user interface designs.

What is protected by a design patent? Unlike utility patents, design patents protect ornamental or decorative features of new products, rather than functional features.  For example, a design patent may protect the unique design, shape, or form of a mobile device, while a utility patent may protect the functions of novel hardware in the mobile device.  In this way, design patents are conceptually similar to copyrights and trademarks.  Many items protected under U.S. copyright law and U.S. trademark law can also be protected by design patents.

The design patent application process.  A designer can apply for a design patent by filing an application with the U.S. Patent and Trademark Office (USPTO).  The application should include at least one drawing that shows the design, but most applications include multiple drawings showing different aspects or perspectives of the design.  If the USPTO determines that the design is novel and adequately shown in the application, the USPTO will issue the design patent to the designer.  It typically takes about 1 year for a design application to issue into a patent.

The benefits of a design patent. A design patent application is often less costly to prepare and is obtainable in less time than a utility application, yet offers powerful enforcement options.  The designer can use the issued design patent to prevent others from copying the patented design.  If a competitor starts selling a product with the same or similar design, the designer can assert the design patent in court.  The court may then order the competitor to stop selling the competing product, and may also order the competitor to give the money earned by selling the competing product to the designer.

Design patents can effectively prevent competitors from copying your designs.  Please contact us if you are interested in applying for a design patent, or asserting your design patent against a competitor.

Quick Reference Guide for a Design Patent Application

To be patentable, a design must be “primarily ornamental.”  Merely a by-product of functional or mechanical considerations fails the ornamental requirement.

Elements of a Design Patent Application.

A design patent application should include:

  • a preamble, title of the design and a brief description of the nature and intended use of the article in which the design is embodied
  • a description of the figure(s) of the drawing
  • a feature description (optional)
  • a single claim
  • drawings or photographs of all claimed features
  • an oath or declaration executed by each inventor

The drawings constitute the majority of a design application. Every design patent application must include either a drawing or a black and white photograph of the claimed design.  The drawing or photograph constitutes the entire visual disclosure of the claim.  Black and white photographs and ink drawings must NOT be combined in a formal submission of the visual disclosure of the claimed design.

Color drawings or photographs are generally not accepted.  However, the applicant may petition for acceptance of color drawings of photographs.  Such a petition will be granted if the applicant can show that the color drawings or photographs are necessary.

Tips for Drawings in Design Applications

Use surface shading to show the curvature of a design:

Use oblique line shading to show transparent materials:

Note that claimed elements visible behind transparent surfaces should be shown in light full lines, and not in broken lines.

Broken lines should be used to show the environment and boundaries that do not form any part of the claimed design.  For example:

Post-Grant Proceeding

Eliminating Someone Else’s Patent: An Overview of Post-Grant Proceedings

The U.S. Patent and Trademark Office (USPTO) thoroughly examines every granted patent, but the USPTO sometimes makes mistakes.  The USPTO may mistakenly grant patents that are fundamentally unclear, or that claim inventions that were not new at the time the corresponding applications were filed.  These patents are potential threats to the businesses of anyone working with similar technologies.

Fortunately, there are several options for invalidating patents that should have never been granted in the first place.

Ex Parte Reexamination – Each granted patent is supposed to cover a new and nonobvious invention.  When a patent appears to cover an old or obvious invention, the USPTO can reexamine and cancel the patent after it has been granted.

Anyone can request the USPTO to reexamine the granted patent in light of specific patents and printed publications – even the patent owner.  The request should explain why the patent was disclosed or obvious in light of the patents and printed publications.  The USPTO may decide to reexamine the patent based on the request.  If so, the reexamination proceeds much like the initial examination of the application.  An examiner will issue an Office Action detailing how and why the invention in the patent is not new or is obvious in view of the prior art presented in the request, and the patent owner will have an opportunity to respond, and even to amend claims.

However, ex parte reexamination does come with some risk for those wishing to invalidate a competitor’s patent. Third-party requesters are not allowed to fully participate in the reexamination once it has been granted.  In addition, if the request is not effectively drafted or if the patent owner successfully navigates the reexamination process, the patent could appear stronger than before.

Submitting a request for ex parte reexamination is a good option for eliminating a patent to an invention that was clearly old or obvious at the time the corresponding application was filed.

Inter Partes Review – Like ex parte reexamination, inter partes review can be used to cancel a patent that covers a technology that was old or obvious when the corresponding application was filed.  Unlike ex parte reexamination, the USPTO conducts inter partes review through a formal, adversarial process.

Any third-party requester can file a petition for inter partes review of any enforceable patent.  The petition should present why the patent was anticipated or would have been obvious at the time of the filing in light of prior patents or printed publications.  If the petitioner shows that the patent is more likely than not to be invalid, a panel of three administrative law judges will grant inter partes review of the patent.

Congress intended inter partes review to provide a quick and cost-effective avenue to invalidate poor-quality patents.  As a result, the USPTO must act with relative speed throughout the entire proceeding, and ultimately determine whether to cancel the patent within one year after it institutes inter partes review.

Typically, the patent owner has three months to respond to the petition and/or request to amend the claims of the patent after inter partes review is instituted.  In turn, the petitioner has three months to respond to the patent owner and/or oppose the request to amend.  Optionally, the parties can agree to hold an oral hearing on the issues before the panel of administrative law judges assigned to the case.  Within a year of institution, the panel will decide whether to cancel the patent on the basis of the petitioner’s argument.

Inter partes review is a great option to quickly dispose of a patent that you are concerned about—whether because you are concerned it could be asserted against you or because it has already been asserted against you.  However, the rapid schedule and limited grounds to invalidate the patent may present problems to some would-be challengers.

Post-Grant Review – Like inter partes review, post-grant review is an adversarial process conducted before a panel of administrative law judges.  Unlike inter partes review, however, a petitioner can argue that a patent is invalid for nearly any reason under U.S. patent law.  For example, post-grant review can be used to invalidate a patent because its claims are indefinite, or because it lacks appropriate written description.  Post-grant review uniquely applies only to recently granted patents filed under the first-inventor-to-file provisions of the America Invents Act (AIA).

Procedurally, post-grant review also resembles inter partes review.  A challenger can request a panel of administrative law judges to institute review by filing a petition.  After institution, the panel will issue a final decision canceling or upholding the challenged patent within one year.

Post-grant review is close to a complete alternative to litigation for invalidating patents at a fraction of the cost.  Post-grant review currently only applies to a small percentage of enforceable patents effectively filed on or after March 16, 2013. However, if available, post-grant review is an attractive option for those who are able to identify the patent they would like to invalidate shortly after it has issued.

Patent Litigation – Issued patents can also be invalidated by a federal court in litigation.  Invalidity can be asserted against any enforceable patent in litigation.  However, in general, only a party that has been sued or threatened with a suit for infringement of a patent will assert that the patent is invalid in federal court.  If the party has not already been sued, initiating a declaratory judgment action to assert that the patent is invalid may invite a countersuit for infringement.  Either way, parties in litigation are often forced to engage two fronts simultaneously.

Defending infringement and asserting invalidity in court can result in a drawn-out and expensive battle, often costing millions in attorneys’ fees and years of delay before a final determination is reached. For this reason, defendants of patent infringement in litigation may seek to halt proceedings by initiating one of the other options listed above at the USPTO.

If you believe that you would like to challenge an enforceable patent using any of the options outlined above, please contact us

The Ex Parte Reexamination Process

Ex Parte Reexamination (EPR) is a unique kind of post-grant proceeding because it can be requested by anyone.  A patent owner can request the USPTO to reexamine an issued patent in order to bolster the strength of the patent or a third party can request reexamination to cancel the patent if it should never have been granted in the first place.  Although EPR can be a useful tool for specific purposes, it does hold some risks that should be considered before initiating the EPR process.

In contrast to adversarial proceedings, such as Inter Partes Review (IPR), EPR is conducted primarily between the USPTO and the patent owner.  Accordingly, the USPTO largely controls the EPR process after it is initiated.

The Request.  The EPR process can be initiated by filing a request with the USPTO.  The request can be filed by anyone—including the patent owner or any third party.  The request can be filed at any time during the enforceability of the patent.

A successful EPR request will cite prior art references and present arguments to convince the USPTO that the cited references raise a substantial new question of patentability of one or more claims of the patent.  The references may be new references, which were not considered by the USPTO in the original prosecution of the patent, or may be previously considered references interpreted in a new way.  Only patents and printed publications can be cited in an EPR request.

The request must, among other things:

  1. Point out each substantial new question of patentability based on the cited references
  2. Explain the pertinence of the cited references to each claim on which reexamination is requested
  3. Present a copy of each of the cited references
  4. Certify that the cited references have been served on the patent owner, if the requester is not the patent owner

Unique to EPR, the patent owner may also submit a proposed amendment to the claims with the request if the patent owner is the requester.  The availability of claim amendments post-issuance is limited for patent owners.   Although claim amendments are available in some adversarial proceedings, the patent owner has limited control over the nature of the amendments being made.  Claim amendments may also be available via a reissue application, but this requires surrender of the patent and does not permit amendments that broaden claim scope unless the patent is less than 2 years old.

Once a complete request is received by the USPTO, the request cannot be withdrawn.

Institution of EPR.  The USPTO assigns each EPR request to an examiner who was not directly involved in the original prosecution of the patent.  Within three months of the filing date of the request, the assigned examiner will issue a decision on the request.  If the assigned examiner finds the request persuasive, the USPTO will begin reexamining the claims at issue.[1]

After reexamination is ordered, the patent owner may file a statement within two months explaining why the patent owner believes the claims to be patentable in consideration of the references cited in the request.  The patent owner must serve the response on the requester, if the EPR request was not filed by the patent owner.  Within two months of service, the requester may submit a reply to the statement filed by the patent owner.  However, no additional submissions by the requester are permitted if the patent owner chooses to waive its right to file a statement.

The Reexamination Process. During reexamination, the assigned examiner will reexamine the claims in view of the references presented in the request, and issue Office actions as necessary.  The patent owner may present arguments and/or amendments in response to the Office actions, similar to a conventional examination process.  However, because only the references and claims discussed in the request are considered, and the patent owner cannot file a request for continued examination (RCE), the EPR process generally takes less time than conventional examination.

The Reexamination Certificate.  At the conclusion EPR, the examiner issues a reexamination certificate.  The reexamination certificate confirms the patentability of the claims that the examiner finds allowable, and/or cancels claims that the examiner finds unallowable.  A reexamination certificate allowing specific claims can be valuable evidence of validity in future proceedings, such as litigation or IPR.

EPR can be a cost-effective tool for invalidating or bolstering patents before they are asserted in litigation.  In 2017, the cost for submitting a request for EPR as a large entity is $12,000, with additional discounts for small and micro entities – a fraction of the price of IPR.  However, EPR does have limitations.  For a third party requester, the limited ability to participate in the reexamination process in EPR may make IPR a more attractive option.  For the patent owner, even the ability to amend claims may not be worth the possible risk that the USPTO will invalidate claims.

Regardless of whether you are a patent owner or a third party requester considering EPR, a carefully crafted request and legal experience in the EPR process are essential for a successful outcome.  If you would like more information on filing a request for ex parte reexamination, please contact us.

  • Article on Inter Partes Review: “The Inter partes Review Process”

Inter partes review (IPR) is a type of administrative proceeding before the U.S. Patent and Trademark Office, in which the Office determines whether a patent should have been granted.  If the Office determines that any claims of the patent should not have been granted, it will cancel the claims in a final decision.  Although the rules governing IPR can be complicated, a brief overview the IPR proves  helpful in determining whether this type of proceeding is a viable option.

The Petition.  A third-party can request the Office to institute an IPR on an enforceable patent by filing a petition with the Patent Trial and Appeals Board (PTAB).  The petition should articulate how one or more claims of the patent are anticipated or obvious by prior patents or printed publications.

An IPR is sometimes used as a defensive response to a civil lawsuit alleging patent infringement.  In this case, the defendant must file the petition to institute IPR at the USPTO within one year of the date the case was initiated in order to pause the case.

This approach to defending an infringement suit has a few advantages over alleging invalidity in court.  For example, a defendant in an infringement case can halt the litigation proceedings by filing an IPR petition.  After filing the petition, the defendant can apply to stay the infringement case, and solely focus on challenging the validity of the patent in the IPR proceeding.  This permits the defendant to assert invalidity in a less costly and more technically savvy forum than federal court.  In addition, if successful, the defendant can avoid the substantial litigation costs of simultaneously defending against an allegation of infringement while asserting that the patent is invalid.

Opposing the Petition to Institute IPR. After the petition to institute IPR is filed, the patent owner may, but is not required to, file an opposition to the petition within three months of the petition’s filing date to point out why the IPR should not be instituted.  For instance, the opposition may be used to argue that the petitioner has failed to establish that the patent is more likely than not to be invalid.

Institution of the IPR. Within six months of the petition’s filing date, the Board will decide whether to institute the IPR.  The Board will issue a formal decision detailing its reasons for instituting or not instituting the IPR case on the grounds presented in the petition.  Optionally, the petitioner or the patent owner may file a request for rehearing in order to ask the Board to reconsider any part of the institution decision.  However, the institution decision is not appealable.

Responding to the Petition after the IPR is Instituted. Pursuant to a scheduling order set by PTAB, the patent owner is granted a time period from the date of institution to file a Response and an optional motion to amend the claims.  The patent owner may have, for example, about three months from the date of institution to file the Response.  The Response may argue that the one or more claims at issue are valid, or that the petitioner has not proven that the claims are invalid by a preponderance of the evidence.  The Response is the patent owner’s only formal opportunity to respond to the allegations of invalidity in writing.

After the patent owner files the Response, the petitioner is granted a time period to file a Reply to the patent owner’s response, and, if applicable, a response to the patent owner’s motion to amend the claims.  Typically, this time period expires six months after the date of institution.

If the patent owner filed a motion to amend, and the petitioner opposed the motion to amend, the patent owner may have an additional time period after the Reply is filed to respond to the petitioner’s arguments against the amendment.  The patent owner is typically granted a month to file a response to the petitioner’s opposition.

Discovery.  In support of the patent owner’s Response and the petitioner’s Reply, the parties are permitted to utilize the tools of routine discovery without permission from the Board.  For example, one party may depose any of the other party’s declarants.  In order to obtain information outside of the scope of routine discovery, however, permission from the Board must be granted in advance.

Oral Hearing. An oral hearing is optional, and available on request by the parties.  If an oral hearing is requested, it is scheduled in advance by the Board.  The oral hearing is conducted in-person at a USPTO location, with the panel of judges assigned to the IPR in attendance.  Representatives for the patent owner and the petitioner are allowed to present their arguments, and may be questioned by the panel.  No witness testimony is permitted at the oral hearing.

Final Decision.  After the oral hearing, the Board must issue a final written decision within twelve months of the date of institution.  The Board may decide to cancel one or more of the claims challenged in the IPR proceeding based on the arguments presented by the petitioner and the patent owner.  The Board’s final written decision is appealable to the Federal Circuit.

The USPTO has published the following flow-chart summarizing an example IPR schedule:

Compared to other USPTO proceedings, IPR is relatively fast, but costly.  No fee discounts are available for small or micro entities.  However, a full IPR proceeding generally costs less than a full trial in federal court.  In 2017, the USPTO charged petitioners with the following fees:

Fee (USD)
IPR Request Fee – Up to 20 Claims 9,000
IPR Post-Institution Fee – Up to 15 Claims 14,0000
IPR Request Fee For Each Claim in Excess of 20 200
IPR Post-Institution Fee for Each Claim in Excess of 15 400

If you are interested in filing a petition for IPR, or if someone else has filed a petition for IPR of one of your patents, please contact us for more information

The Post-Grant Review Process

Post-Grant Review (PGR) is an adversarial proceeding conducted before the USPTO to determine whether an issued patent is valid.  It is very similar to Inter partes Review (IPR) procedurally (for more information on IPR, see our article), but permits the assertion of more possible grounds of invalidity than IPR.  As a result, PGR is the USPTO’s closest equivalent to litigating the issue of invalidity.  PGR, however, has limitations that may impact whether it is a preferable alternative to litigation or an available alternative to IPR.

The Petition. A petitioner can request that the USPTO institute PGR of an enforceable patent by filing a petition challenging the validity of one or more claims of the patent with the Patent Trial and Appeals Board (PTAB).  The petition must be filed within 9 months of issuance (or reissuance).  A successful petition must show a panel of three PTAB administrative law judges that the challenged claims are more likely than not to be invalid.

Unlike Inter partes Review (IPR), in PGR, a petitioner can raise nearly any ground of invalidity that is available in litigation.  The petitioner may argue that the claims are invalid based on grounds such as novelty, obviousness, written description, enablement, and indefiniteness.  However, the petitioner is not permitted to raise invalidity arguments based on best mode, and is not permitted to raise unenforceability arguments such as inequitable conduct.  PGR is therefore a close, but not perfect, analog to litigating patent invalidity before a federal district court.

In general, PGR may only be used to challenge patents subject filed under the America Invents Act (AIA).[1]  That is, PGR is not available for most patents effectively filed prior to March 15, 2013.  Thus, most issued patents cannot be challenged under PGR.

After the PGR petition is filed, the patent owner is permitted, but not required, to file a preliminary response.  A successful preliminary response will dispute the petition’s arguments, and convince the board not to institute PGR.

Decision to Institute PGR. Within six months of the petition’s filing date, the PTAB panel will issue an institution decision that grants, grants in part, or denies the petition’s request to institute PGR.  A decision by a PTAB panel to not institute PGR is not appealable, but a request for reconsideration on any ground may be filed by the petitioner or the patent owner.

The PGR Process. Because the PTAB must issue a final written decision on the PGR within one year of the decision to institute absent a showing of good cause, the schedule for a PGR proceeding is relatively crowded.  The patent owner is typically provided three months after the institution decision to file a response to the petition.  The petitioner subsequently has about three months to submit a reply to the patent owner’s response.

The patent owner has the option to file a motion to amend any claims under review.  Typically, the motion to amend must be filed with the patent owner’s response after review is instituted.  The petitioner may file a response to the motion to amend.  The petitioner may be given, for example, an additional month after the deadline to submit the reply in order to respond to the motion to amend.

Thereafter, both the patent owner and the petitioner may use the tools of routine discovery without prior authorization from the board.  For example, the petitioner may depose any declarants proffered by the patent owner in the patent owner’s response.

As with litigation in federal court, the parties may dispute the admissibility of any evidence by filing motions to exclude.  The Federal Rules of Evidence apply to all evidence presented in the PGR.  However, additional admissibility restrictions apply to PGR proceedings that may not apply to a federal district court.

The panel may hold an oral hearing on request of the petitioner or the patent owner.  If requested, the oral hearing is scheduled after the parties have opportunities to file motions to exclude.

Final Decision. The panel will then issue a final decision on the PGR.  The final decision may also include a decision on any motions to exclude filed by the parties.  Typically, the final decision will be issued within one and a half years of the petitioner’s filing date, making PGR a relatively quick option for invalidating claims on the merits.

The following flow-chart, published by the USPTO, summarizes a sample timeline for a PGR proceeding:

PGR has its drawbacks.  PGR’s limited applicability, and relatively high cost can be unattractive to some potential petitioners.  In 2017, the USPTO charges the following fees:

Cost (USD)
Request Fee – Up to 20 Claims 12,000
Post-Institution Fee – Up to 15 Claims 18,000
Request Fee for Each Claim in Excess of 20 250
Post-Institution Fee for Each Claim in Excess of 15 550

Challenging a patent using PGR is therefore significantly more expensive than challenging a patent using IPR.  However, a PGR may nevertheless be less expensive than litigating patent validity in a federal district court.

If you are interested in filing a petition for PGR, or defending your patents against a petitioner in PGR, please contact us for more information.

 Trademark

“What is a Federal Trademark Registration and Why Would I Need One?”

A trademark, put simply, is anything that associates a business with the goods and services it provides.  A trademark can be used to protect your brand for goods or services.  A trademark may be a word, phrase, design, color, scent, sound, or virtually anything else, that when used in association with goods or services, indicates the source of those goods or services to consumers.  That is, a trademark is fundamentally tied to its use in connection with goods sold or services rendered.

Limited scope of state-level trademark protection. Because a trademark is defined  in association with commercial activity—such as the sale of goods, the rendering of services, or “use in commerce” – state-level trademark rights begin the moment  the mark is used in conjunction with the commercial activity.  However, state-level trademark rights are limited.  State-level trademark rights are limited geographically to the state in which you are doing business, and thus, cannot be used to prevent another business from using your trademark in a different state.  In addition, although you can use state-level trademark rights to object to a competitor’s use of a similar marks based on your prior use of the mark, you cannot use these rights to recover money from the competitor.  In addition, due to the legal fees involved, enforcing state-level trademark rights may be more costly than seeking a state or federal registration.

Benefits of federal registration. A federal trademark registration permits the trademark owner to sue infringers for damages, and serves as prima facie evidence of superior trademark rights.  In practice, this means even if a competitor has used the trademark before you, they would likely have to hire legal counsel to establish that those rights are superior.  In addition, if you have a federal registration, you can prevent competitors from seeking a similar registration in the first place on a national scale.

The federal trademark process.  The federal trademark application process can be straightforward.  To get started, the U.S. Patent and Trademark Office requires only an image of the mark and an intent to use the mark in commerce in association with specified goods or services.  However, moving the application forward to registration can become complicated, depending on the issues involved.  Nevertheless, the return on investment for registering your trademark cannot be overstated.

In short, a federal trademark registration can be a powerful tool in your arsenal of IP rights.  Not only does it serve as a shield preventing competitors from seeking similar marks, it can also serve as a sword to enforce your brand.

The Federal Trademark Application Process for U.S.-Based Applications

Obtaining a federal trademark can be a straightforward process, but there are some pitfalls trademark owners should consider as they begin the process.  This article provides a basic overview of the trademark process for U.S.-based applications.

Filing the Application. To file a federal trademark application, an applicant simply needs two things: a final image of the mark to be registered, and a true intent to use that mark in association with the sale of goods or the rendering of services.  By filing an intent-to-use application, the applicant can preserve rights in the mark before using the mark in commerce.  However, the USPTO will not grant a registration until the applicant has shown actual use of the mark.  Alternatively, an applicant can also file a use-based application, based on the applicant’s current use of the mark in commerce.

Examination. Whether the application is use-based or intent-to-use, USPTO representatives examine the application usually within 3-6 months of filing.  The USPTO assigns an Examining Attorney to the application, who looks primarily for potentially conflicting federal trademarks and confirms that the listed goods and services the applicant intends to use with the mark are adequately described, among other things.  If there are problems with the application, the Examining Attorney will issue an Office Action describing the problems, and give the applicant 6 months to respond.

Publication for Opposition. If all issues in the application are properly addressed, the mark will be published in a 60-day publication period, within which potential competitors are given an opportunity to object to the mark’s registration.  If a third party objects to registration during this period, the applicant may be able to negotiate a consent or other agreement prior to the end of the opposition period in order to proceed with registration.  Otherwise, the third party will proceed with an opposition proceeding before the Trademark Trial and Appeal Board.  During the opposition proceeding, the USPTO pauses the application process until a party establishes superior rights in the mark.

Proceeding to Registration. If no one files an opposition to the trademark application, the next step toward registration depends on whether the application is a use-based application or an intent-to-use application.  The USPTO will automatically register a mark presented in a use-based application after an unopposed 60-day publication period.  For an intent-to-use application, however, the USPTO will issue a Notice of Allowance.  This triggers a 6-month period during which the applicant can file evidence of use of the mark in commerce to proceed to registration.  If the applicant is not ready to file evidence of use at the end of the 6-month period, an extension can be obtained for another 6 months.  Further extensions are available if the applicant is maintaining efforts to bring about use of the mark in commerce.  However, the USPTO will not register the mark until the applicant actually uses the mark in commerce and files proof of use.

All told, from filing to registration, the typical trademark process takes about 1 year to complete.  Although this is a short timeline compared to the federal patent application process, many issues may arise along the way that make legal counsel invaluable.  If you are interested in preserving your rights in a trademark by filing a federal trademark application, please contact us.

Copyright

“What is a Copyright?”

Copyrights protect creative works.  Usually, copyright law focuses on artistic works like music, visual art, and literature.  The scope of copyright law in practice, however, is much broader.

Scope of copyrightable subject matter. A copyright can protect artistic works, and can also protect creative works that may also be protected under other intellectual property rights.  For example, software code can be copyrighted, and may also be eligible for patent protection.  Designs, such as for  a website or a consumer product, may be copyrighted and/or protected by trade dress or even design patents.  Whether a copyright is used as a primary level of intellectual property protection or as an additional layer of intellectual property protection, it can be a valuable asset.

Benefits of a copyright registration. Copyright protections begin with creation. However, without federal registration, copyright protection is limited.  A federal copyright registration permits copyright owners to sue for copyright infringement and to seek enhanced damages and/or an injunction.  Federal registration enables a copyright owner to prevent others from using, copying, distributing, performing, or displaying a copyrighted work.

The registration process.  Obtaining a federal copyright registration can be simple.  The U.S. Copyright Office generally requires basic applicant information, author information, and a deposit of the work at the Office along with a small fee.

A federal copyright can be a simple and inexpensive way to obtain actionable protection for some of your intellectual property.  The difficulty with copyright law, however, often lies within the exceptions and defenses to allegations of infringement.  For more information on copyright law or obtaining a federal copyright registration, please contact us.