For example, one principle in drafting a patent application is that the claims must be commensurate in scope with the description of the invention made in the application.  If the claims are too broad in light of the description or the description is too narrow in light of the claims, then the courts will invalidate the patent for failing to satisfy the “written description” requirement.  This principle, among others, might be the subject of a section in a DIY patent drafting book but, in my opinion, are only assimilated into one’s writing style through many years of practice and mentoring by a more senior patent attorney.  Accordingly, one should seek the advice of a competent patent attorney when protecting an invention through patents.

The following case illustrates one way in which an alleged infringer attempted to argue that the patent failed to satisfy the written description requirement but failed.  You can appreciate the complexity of the written description requirement and how this and many other patent law principles may not be conducive to a short description in a DIY patent drafting self help book.

The patent at issue was directed to a sunglass lens that can be removeably attached to prescription glasses.  The sunglass lens is attached to the prescription glasses by magnets.  The prior art magnetically attached the sunglass lens by mounting corresponding magnets in the frame of the prescription glasses.  Unfortunately, this set up weakened the frame of the prescription glass.  Also, the sunglass lens tended to fall off of the prescription glasses.  The patented invention solved these two problems (i.e., decreased strength and stable support) by embedding the magnets into projections formed in the prescription glasses and top mounting the sunglass lens on top of the magnetic projections.

Revolution built a similar device but attached the sunglass lens to the bottom of the magnetized projection.  They attempted to argue that the claims were invalid for not being commensurate with the scope of the detail description.  The specification discussed both the decreased strength and stable support problems and asserted that the invention solved these two problems.  The claims were directed to only the decreased strength problem and not the stable support problem.  Since the claims were broad enough to cover both top and bottom mounted sunglass lens, Revolution contended that the claims were not commensurate with the detailed description.  The Court disagreed.  It held that inventors can frame their claims to address one problem or several, and the written description requirement is satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in the claims.  Revolution Eyewear, Inc. v. Aspex Eyewear, 90 USPQ 1733 (Fed. Cir. 2009).

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The simplified definition for a continuation, divisional and CIP application involves what is disclosed and what is claimed.  The continuation application is the same disclosure as the parent application with claims similar to the parent application.  The divisional application is the same disclosure as the parent application but with claims directed to different subject matter compared to the parent application.  (e.g., receiver v. transmitter).  The CIP application adds new subject matter to the parent application with claims directed to the new subject matter.

There may be different reasons for filing the child application.  One important reason for filing the child application is to maintain pendency of your application with the Patent Office.  This allows you to broaden or shift focus of your claims as you see how the market and your competitors react to your product.  When your parent application matures into a patent, the claims can be broaden but only to a limited degree for a limited period of time.  Your competitors will look at your patent and attempt to “design around” the claims.  If your competitors are successful in designing around your patent, then the issued patent may be less valuable.

The claims that can be submitted in the pending child patent application can be much broader than the claims in the issued patent.  In this manner, the child application may be used to reintroduced claims so as to cover your competitor’s redesigned product at least to the extent that there is commonality between your patent disclosure and your competitor’s new product.  Without the child patent application, the claims of your issued patent may be broadened but only to a limited degree for a limited period of time which may not be sufficient to cover your competitor’s redesigned product.

Other reasons for filing the child patent application may include continuing prosecution of the claims in the parent application, seeking claims directed to other subject matter in your patent application and adding slight modifications to your invention, etc.

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The following case illustrates whether a particular printed document can be considered a “printed publication” and how to determine when the document became a “printed publication”.  In In re Hall, a protest was filed in relation to the patent application at issue.  The protest is a document submitted by a third party explaining reasons that the Patent office should reject a patent application.  The third party submitted a doctoral thesis found in a German library.  The doctoral thesis was on point with respect to the invention.  The patent applicant conceded that the doctoral thesis would prevent the patent application from maturing into a patent if the doctoral thesis is a “printed publication” with an effective date more than one year prior to the filing date of the patent application at issue.

The Court held that the doctoral thesis became a printed publication when the library indexed the doctoral thesis.  Based on correspondence with the librarian which stored the doctoral thesis, the doctoral thesis was indexed, cataloged and shelved (i.e., publicly accessible) more than one year prior to the filing of the patent application based on the routine business practice of the library.  The Court affirmed the Patent Office’s rejection of the claims.  In re Hall781 F.2d 897, 228 U.S.P.Q. 453 (Fed. Cir. 1986).

Based on the foregoing case, even a remote paper with little to no circulation may be considered a printed publication.  Accordingly, when consulting with your patent attorney, you should disclose all types of publicly available papers related to your invention to your patent attorney so that any issues can resolved earlier than later.

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In my experience, each person’s situation is different which may require the client to address other issues even before a patent application is filed.  For example, ownership issues may have to be addressed prior to filing a patent application.  Infringement may be another issue that the client may want to address before filing a patent application.  These are some of the issues that may require attention prior to expending the time and money in filing a patent application.  Online websites may provide legal information in the form of helpful tips.  Unfortunately, these online sites do not provide legal advice on these or any other issues.  They do not listen to your situation and cannot provide a recommended course of action based on your particular situation.

Additionally, these online websites do not provide legal advice on how to draft a patent application.  Your answers are merely placed in the format of a patent application without any modification or addition.  The online websites may provide helpful tips or you may even have a book on how to draft a patent application.  However, unless you learn under the guidance and instruction of a competent patent attorney, your patent drafting skills will not significantly improve the quality of your patent application.  Patent attorneys do not answer a series of questions in preparing a patent application.  Competent patent attorneys have a basic approach to drafting a patent application that they have developed over the course of many years with the help of a more seasoned patent attorney.

As such, seek the advice of a competent patent attorney to determine whether there are any issues that need to be addressed prior to filing a patent application. Also, retain competent patent attorney in preparing and filing your patent application.

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After calcuating the basic patent term, the “Patent Term Adjustment” needs to be accounted.  Days may be subtracted from the basic term for delays caused by the patent applicant.  An example of a delay caused by the applicant is filing a response to an office action after its due date.  Days may be added to the basic term for delays caused by the Patent Office.  For example, days are added to the basic term if the Patent Office takes an excessive amount of time providing an initial office action.

The life of the patent may be shorter than the patent term discussed above if the patent owner does not pay the maintenance fees which are due at regular intervals throughout the term of the patent.  If the patent owner fails to pay these maintenance fees, then the patent will expire for failure to pay the maintenance fees.

The following case illustrates an aspect of calculating patent term in relation to Patent Term Adjustment.  Under current patent laws, the Patent Office must examine your patent application in a timely manner.  For example, an initial examination of a patent application must occur within 14 months after filing of the patent application.  Otherwise, any delays are added onto the patent’s basic term.  [“A” Type Delays].  Additionally, if a patent issues after three years from the filing date of the patent application, then the patent term is extended by the amount of time after the three year period.  [“B” Type Delays].

The “A” Type Delay extends the patent term if the “A” Type Delay occurs before the three year period.  If the “A” Type Delay occurs after the three year period, then only the B Type Delay is taken into consideration since there is an overlap between the two types of delays.  Weyth v. Kappos 2009-1120 (Fed. Cir. Jan. 7, 2010.  In Weyth, the Patent Office calculated 610 days of A Type Delay and 345 days of B Type Delay. Of the 610 days of A Type Delay, 51 occurred more than three years after the application was filed. Hence, there is an overlap of 51 days between the A and B Type Delays.  During the prosecution, the applicant caused 148 days of delay.  Hence, the patent term adjust should be 756 days, i.e., 610 (A Type Delay) + 345 (B Type Delay) – 51 (Overlap) – 148 (applicant delay).

The specific periods discussed herein are provided as examples.  To determine whether a patent is expired, many factors such as delays caused by the Patent Office or the Applicant or payment of maintenance fees are important.  If you need assistance regarding patent term, I recommend that you retain a patent attorney.

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However, patent owners must be careful to ensure that the product marked as patented is indeed patented or patent applied for. Under current U.S. Patent law, anyone can file a lawsuit against a manufacturer that has falsely marked their product as patented with an intent to deceive the public. For example, if a patent application has become abandoned but the product still includes the “Patent Pending” mark, then others may have a claim against the product manufacturer for false marking. Under 35 USC Section 292, the public can sue the product manufacturer on behalf of the government for the sum of not more than $500 per each offense. This is referred to as a qui tam action. The government is seeking the help of the public to control false marking. The $500 maximum penalty may not appear to be much. However, it depends on how “each offense” is calculated.

The following case explains the meaning of “each offense.” Prior court decisions have reduced the severity of this penalty by counting each offense based on time (e.g., one week, one month, etc.). However, in The Forest Group Inc. v. Bon Tool Co. (Fed. Cir. Dec. 28, 2009), the Court held that the phrase “each offense” means each article or product. For example, if you sold 1,000 widget and falsely marked each widget, then the maximum potential liability is $500,000. This may seem unfair in light of the wide range of products that could be mismarked. For example, imposing a fine of $500 for each baseball cap may be unfair. The Court addressed this concern by pointing out that the $500 penalty is a maximum fine and not a minimum fine. Judges can adjust the fine amount to match the type of product so as to be fair.

Based on the foregoing discussion, it is important to consult with legal counsel to determine whether your product is patent pending or covered by your patent. Alternatively, you may want to consider removing any indicia indicating patent status on your product. Otherwise, you may find yourself defending a claim of false marking. Also, during enforcement of your patent, you may find yourself having to defend yourself against a counterclaim of false marking.

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The provisional patent application is described as a lower cost option compared to the non-provisional patent application. The minimum requirements to file a provisional patent application are less than the requirements to file a non provisional patent application. For example, the provisional patent application does not require a claim set, a non provisional patent application does. Also, the governmental filing fee for the provisional patent application is about $400 less for a small entity.

Even though the requirements for preparing the provisional patent application are lower than a non provisional patent application, a full disclosure of the invention must still be made in the provisional patent application in the same manner that a full disclosure of the invention must be made in a non provisional patent application. The following case illustrates the harsh consequences of an inadequate disclosure in a provisional patent application.

In New Railhead Manufacturing, LLC v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002), the patentee sold a new drill bit for drilling rock formations. As allowed under Patent Laws, the inventor filed a provisional patent application within one year after the sale date. If the inventor had waited more than one year, then the inventor would be barred from seeking patent protection. More than one year after the sale date but before the provisional patent application was abandoned, the inventor filed a non provisional patent application claiming priority to the provisional patent application.

The claim of priority allows any patent maturing from the non provisional patent application to have the filing date of the earlier provisional patent application instead of the later filed non provisional patent application, but only for the information disclosed in the earlier filed provisional application. If the non provisional patent application includes additional information, then the claim of priority would be ineffective for that new information.

In New Railhead, the accused infringer alleged that the claims at issue in the patent should not be allowed to receive the benefit of the earlier filed provisional patent application by way of the claim of priority. The reason was that the patent’s claims required the drill bit to be angled with respect to the drill bit housing. Unfortunately, the provisional patent application did not disclose any angular relationship. The Court agreed and invalidated the patent since the filing date of the provisional patent application is now irrelevant and the new drill bit was sold more than one year before the filing of the non provisional patent application.

It is important that the provisional patent application include a full disclosure of the invention. Anything less and the provisional patent application may be ineffective at establishing a filing date of your claimed invention.

The majority of time spent on preparing a patent application is on drafting and revising typically the detailed description of the invention section and explaining the drawings. This material attempts to explain in full detail all of the various aspects of the invention. Although the provisional patent application is a lower cost option, it is still not a cheap option if done properly.

Also, websites offer assistance in filing provisional patent applications at very cheap prices. Based on my review of some of these websites, they lead you through a series of questions so that at the end of answering all of the questions, your answers are placed in a provisional patent application format. However, they do not appear to provide any legal guidance which is needed to guide you in deciding whether to file a patent application, what to disclose in the patent application and how to use the right words so that your invention is not narrowly construed.

Patent attorneys work at drafting broad patent disclosures, interpreting current case law, and providing a patent strategy based on our experience and knowledge. The online patent services that I have reviewed do not provide legal advice regarding the patent process.

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In New Railhead Manufacturing, LLC v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002), the invention was related to a drill bit for drilling rock formations and a method for drilling rock formations. The drill bit was actually used underground, out of plain sight of others. Nonetheless, the Court explained that the phrase “public use” under U.S. patent laws does not mean open and visible in the ordinary sense. The meaning of “public use” does not hinge on whether the device was seen by others. “Public use” includes “any use of the claimed invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor”. Hence, the use of the drill bit was “public use”.

Testing and experimentation of the invention could negate the use of the device as a “public use” for the purposes of determining when the “one year” time period begins. However, such testing and experimentation must cease at the time the inventor realizes that the invention works for its intended purpose. Otherwise, continued use may constitute “public use” which would bar the inventor from seeking patent protection after the “one year” time period. In New Railhead, the inventor made a second prototype which contained some improvements to the first prototype. Unfortunately, the record did not indicate that there was an issue as to the efficacy of the drill bit. Hence, the use of the first drill bit prototype was not considered to be an experimental use.

U.S. Patent Law provides a limited time period (i.e., one year) in which inventors can market and sell their invention for various reasons without filing a patent application. However, it is typically beneficial to file as early as possible. Also, if interested in seeking patent protection in foreign countries, a patent application should be filed prior to any type of public disclosure, offer for sale or distribution of any printed material to the public in order to preserve the maximum rights.

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(1) provide actual notice to the infringer of your patent,
(2) demand that they immediately cease and desist in their infringing activity, and
(3) offer a license without any express threat of infringement, among other things.

However, the cease and desist letter may allow the alleged infringer to file a declaratory judgment action (“DJ Action”) against the patentee when the correspondence between the parties indicate that there is a threat of litigation. The DJ Action allows the alleged infringer to take the initial legal steps and prevents the alleged infringer from having to wait for the alleged infringer to initiate a lawsuit while the patentee continues to threaten litigation. The DJ Action requests the court to resolve the dispute between the parties.

In many instances, the DJ Action is undesirable for the patentee. The DJ Action may be filed in a different state forcing the patent owner to incur additional costs and burdens of litigating out of state, while providing a convenient, home town advantage for the alleged infringer.

Accordingly, it is important to carefully draft the correspondence to the alleged infringer so as to achieve the desired results – no DJ Action while opening the door to amicably resolving the dispute. In the following case, the patent owner did not want to litigate the patent issue but was dragged into court by the alleged infringer by way of the DJ Action.

Acceleron LLC (“Acceleron”), a patent holding company, sent a letter to Hewlett Packard Company (“HP”) providing notice of an issued patent that Acceleron owns, requesting that HP not file a DJ Action and requesting that HP agree to not file the DJ Action. Additional letters were sent between the parties. HP filed the DJ Action. Acceleron sought dismissal of the DJ Action. Hewlett-Packard Co. v. Acceleron LLC, 2009-1283 (Fed. Cir. Dec. 4, 2009).

For patent cases, a declaratory judgment action is appropriate if the patent owner asserts its rights under the patent based on certain ongoing or planned activity and where the alleged infringer contends that it has the right to engage in the accused activity without a license to the patent. HP contends that the DJ action is proper since Acceleron identified its patent and HP’s product line in the demand letter. The court disagreed. Rather, the court said that the propriety of the DJ Action is whether HP had a reasonable belief of litigation based on the totality of the circumstances.

In reviewing the totality of the circumstances, the court considered the content of the letters sent between the parties and also considered Acceleron’s business model. Acceleron is a patent holding company that generates revenues by enforcing its rights and obtaining licenses from infringers under its patents. The Court indicated that this fact favors a decision that there was a sufficient threat of litigation. Based on various items in the letters sent between the parties and the business model of the owner of the patent, the Court held that the DJ Action is proper.

It is thus important to consider the tone and content of the demand letter but also other circumstances that might allow the alleged infringer to file a DJ Action. In the Acceleron case, the patent owner’s business model of licensing patents for profit, while making no patented products, was a factor in the Court’s ruling that the DJ Action is proper.

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