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.

You may also be interested in Patent Marking.

For more information, please feel free to contact me.

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.

Should you have any further questions, please feel free to contact me.

The issue of novelty is a much simpler issue compared to the issue of non-obviousness. The non-obviousness issue is an objective issue based on the scope and content of the prior art, the level of ordinary skill in the art, the difference between the claimed invention and the prior art and objective evidence of nonobviousness. Nonetheless, the obviousness issue is open to wide variance based on which person you ask. For example, the sophisticated person might determine that an invention is obvious due to its simplicity, whereas the less sophisticated person might determine that the same invention is non-obvious due to its complexity.

A couple of years ago, the U.S. Supreme Court reviewed the issue of what types of inventions are non-obvious in KSR Int. Co. v. Telefex Inc., et al. (S. Ct. 2007). In that case, the Supreme Court reshaped the then existing obviousness test which was characterized as rigid to one that is more flexible. In one aspect of the opinion, the Supreme Court rejected an obvious to try test which stood for the proposition that a combination is not obvious merely because it is a variation that is obvious to try. Rather, the Supreme Court stated that when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under SECTION 103.

On April 3, 2009, the Federal Circuit provided further commentary on the “obvious to try” test in In re Kubin (Fed. Cir. 2009). In a nutshell, the Federal Circuit re-emphasized the principles of obviousness that the U.S. Supreme Court laid out in KSR in that (1) an invention is obvious if a person of ordinary skill is pursuing known options from a finite number of identified, predictable solutions or (2) an invention is non-obvious if the improvement is more than the predictable use of prior art elements according to their established functions.

The Federal Circuit further made clear that the KSR decision is not limited to predictable arts but also applies to the unpredictable arts such as biotech inventions without categorical exceptions to types of inventions.