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Patent Resource Center :: Quick Links
Basic Information About Patents
Frequently Asked Questions about Patents
Top Ten Interesting Things to Know About International Patent Law
Top Ten Things to Know About Foreign Patent Filing
Patent Protection for Web-Based Businesses
Application of 35 U.S.C. § 112(6) to Method Claims
On Sale Bar May Be Triggered Even Though Offer Did Not Identify Claim Limitations
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>Basic Information About Patents
AN OVERVIEW OF PATENT RIGHTS
I. Introduction
This article is a brief overview of selected aspects of patent law for inventors (or attorneys when advising their clients) as to the general nature of the patent system. Emphasis is placed on questions that are usually asked by inventors when they first encounter need for patent advice.
II. Attorney-Client Confidentiality
Most inventors expect their inventions to be the foundation for great fortunes and are, therefore, very hesitant to talk freely about their ideas. It is important for the inventor to understand that the attorney is bound by law and by the ethical rules of the legal profession to hold in strictest confidence disclosures regarding the invention. Otherwise, inventors should maintain the secrecy of their inventions and consult an attorney before consenting to make disclosure to others.
III. Nature of Patent Rights
Many inventors do not understand the protection offered by the patent system. The grant of Letters Patent entitles the patentee to a limited monopoly on his invention for a fixed period of time, empowering him to exclude others from making, using or selling the patented invention within the United States. The patent does not give the inventor the right to make his invention. For example, there may be other patents that would prohibit him from manufacturing his device.
There are three basic types of patents: a utility patent, a design patent, and a plant patent. The utility patent is issued to the inventor of a new and useful machine, article, method, chemical, compound, or improvement to a prior patented item. A design patent may be obtained for a new, original and ornamental design of a manufactured article. A plant patent covers a distinct and new plant variety that is non-tuber propagated and asexually reproduced. The plant and utility patents have a term of twenty years from the date of filing and the design patent has a maximum term of fourteen years from date of issue. However, patent maintenance fees must be paid to keep a utility patent in force for its full term.
IV. Time Limit for Filing Patent Applications
An inventor must file a patent application on his invention within the time allowed by 35 U.S.C. Sec 102. Basically, this statute requires that the patent application to be filed within one year of the first public use of the invention, the first sale or offer for sale of the invention, or the first printed publication which includes a description of the invention by the inventor or any other party. A major judicially created exception to the above rule is that experimental use does not create a bar to patentability. One purpose of allowing the inventor one year in which to use or sell his invention before he applies for a patent is to give the inventor an opportunity to test the market for his invention before incurring the expense of applying for a patent.
Most foreign countries, including Britain and most of Europe, Japan and the Far East countries, have an absolute novelty requirement for patentability. The law of these countries provides that the right to obtain a patent on an invention is barred by any publication or sale or offer for sale of the invention prior to the filing of a patent application. The filing of a United States Patent, however, will preserve foreign patent rights for a period of one year in countries that are signatories to the Paris Convention for the Protection of Industrial Property, but the inventor must still apply in the U.S. prior to any public disclosure to take advantage of the provisions of the Treaty.
V. Proof of Invention
If two inventors attempt to patent the same invention, in the U.S. the first to conceive the invention is entitled to the patent provided he diligently reduces the invention to practice (most foreign countries grant the patent to the first to file). Thus, it is important that an inventor maintain good records to prove these facts. Inventors should be instructed to keep a bound notebook and each page of the notebook should be signed and dated by the inventor and by witnesses who understand the invention. For example, an electronics invention should be witnessed by two electrical engineers or electronics technicians, if possible. It is also a good practice to have the signatures of the witnesses notarized. Also, the Patent Office provides a document disclosure program. For a small fee, the Patent Office will accept a description of an invention, note the filing date of the description and keep the invention description, in confidence, for two years. However, this does not prevent the running of any filing deadlines.
VI. Benefit of Promptly Filing Patent Applications
Although there is no need to race to the Patent Office with the U.S. patent application, it is advisable to file promptly. There is a legal presumption that the first to file a patent application was the first inventor. The second applicant on the invention has the burden of proving that he was the first to invent, i.e., the first to conceive of the invention and diligently reduce it to practice. Also, as previously indicated, a delay in filing a patent application may create a bar to patentability under 35 U.S.C. Sec. 102.
VII. What is Patentable?
Ideas per se are not patentable but recent developments in the patent law have made it clear that many methods of doing business are patentable. New and useful articles, methods of manufacture, compounds, chemicals, combinations, and improvements thereon are patentable. The structure of your invention must be unique --it must be different from, and not obvious when considered in light of, devices known in the prior art. However, the invention does not have to be complicated or earth shaking to be patentable. The invention can be very simple so long as it is "a better mousetrap".
The use that you intend to make of your structure does not make your structure patentable if the structure is disclosed in prior patents. Thus, an oval picture frame with a hinged cover would not be patentable because the structure of your "picture frame" is the same as the structure of a toilet seat. However, if your invention solves an existing problem in a novel way, and allows you to perform a task at less cost, eliminates a step in a known process, simplifies the construction of an article, enhances productivity, etc., it may be entitled to patent protection.
VIII. Patentability Search
Usually, the first step in the process of obtaining a patent is conducting a preliminary patentability search. If the invention is susceptible to key word indexing, the search can now be done through computer accessed databases with the patents being available on-line or at various depositories around the country. Alternatively, the inventor and patent attorney prepare a letter briefly describing the invention and pointing out the features of the invention believed to be patentable. This letter is sent to a professional searcher in Washington who performs a search in the Patent Office for United States and foreign patents that may affect the patentability of a particular invention.
The search typically produces several patents, usually less than ten, for the patent attorney to consider. The patent attorney renders an opinion as to whether the invention appears to be patentable based on the preliminary patentability search. The preliminary patentability search enables the inventor to determine with reasonable certainty whether his invention is patentable, and the result of the search may be used by the patent attorney in drafting the patent application to avoid the prior art. The inventor and his attorney have a duty of complete candor with the Patent Office and must disclose all pertinent prior art of which they are aware. The results of the patent search and any other pertinent information are reported to the Patent Office in a Prior Art Statement.
IX. The Patent Application
A patent application is a carefully drafted document that describes the invention in detail and carefully defines (claims) the novel features of the invention. The elements of a typical patent application are:
1. the title of the invention;
2. background of the invention;
3. cross-references to related patent applications, if any;
4. a brief summary of the invention;
5. a brief description of the drawings, if there are drawings;
6. a detailed description of the invention;
7. the claims of the invention specifically defining the novel features of the invention;
8. a brief abstract of the disclosure;
9. drawings of the invention, if any;
10. the signature of the inventor; and
11. the oath or declaration of the inventor attached to the patent application.
The claims of the patent application are precisely drafted legal descriptions of the invention that define the scope of the protection offered by the patent. If the invention is a relatively minor but patentable improvement to a known device, the claims must be narrowly drafted to provide limited patent protection. If, however, the invention is a radically new device as compared to the prior art, then the claims may be drafted more broadly to provide more extensive patent protection.
For example, assume the wheel has just been invented and is a radically different device compared to prior art. In the patent application for the wheel, the claims would be drafted broadly to cover practically anything that rolled, and the owner of the patent could exclude others from making, using or selling practically anything that rolls. Secondly, assume that the wheel has been invented and is in the prior art, but an inventor has now devised a wheel having spokes. This inventor would be entitled to patent protection covering his invention, but his protection should not be as broad as the patent on the original wheel. The claims of this second patent application would be more narrowly drafted so that the claims covered wheels with spokes, but not wheels without spokes.
Assuming both of the above inventions were patented, a manufacturer who desires to make a wheel must pay a royalty to the owner of the wheel patent. If he desires to manufacture a wheel with spokes, then he must pay a royalty to the inventor of the wheel and to the inventor of the wheel with spokes.
This last example is an illustration of the negative rights concept of patents. The patent owner may prevent or exclude others from manufacturing, selling or using the invention, but he cannot necessarily manufacture his own invention. The patentee of the wheel with spokes can prohibit others from manufacturing his invention, but this patentee does not necessarily, have the right to manufacture his own invention. The owner of the patent on the original wheel can prohibit the manufacture of any wheel, including wheels with spokes.
X. The Patent Office Process
When a patent application is submitted to the Patent Office, it is assigned to a group art unit and a patent examiner. The examiner makes a thorough search of the prior art relevant to the application, including United States patents, and some foreign patents and publications. After his examination, the examiner either rejects the application or gives notice that a patent will issue.
Many patent applications are rejected by the examiner at least once on the grounds that the claimed invention is disclosed in prior art. The applicant, through his attorney, may then submit arguments to the examiner as to the merits of his invention as compared to the prior art. It is also possible at this time to amend the claims of the application to avoid the prior art.
The process of arguing with the patent examiner and amending the patent claims in known as patent prosecution and, in a sense, is an adversary process. The Patent Office is protective of issuing a patent monopoly and seeks to insure that the patent protection afforded by any patent is appropriately and narrowly defined. The inventor on the other hand desires the broadest patent protection possible.
If the examiner persists in rejecting claims to which the inventor believes he is entitled, an appeal may be made to the Board of Patent Appeals and Interference. A Patent Office attorney is assigned to the case, and a true adversary process begins. The applicant may appeal decisions of the Board to the U. S. Court of Appeals for the Federal Circuit or to the United States District Court for the District of Columbia. Appeals from the U. S. Court of Appeals for the Federal Circuit go directly to the Supreme Court while appeals from the District Court proceed through the Court of Appeals and, then, to the Supreme Court in the usual fashion.
XI. Patent Pending and Patent Notices
Once a patent application is filed, the applicant may mark his products with the notation "Patent Pending" or "Patent Applied For". The fact that a patent is pending on an invention does not provide any legal protection to the inventor. But, as a practical matter, the Patent Pending notice will often discourage a competitor from copying the invention. Competitors normally will not be willing to incur the tooling and startup expenses involved in producing a new product when a patent may issue on the product at any time.
After the patent issues, the patentee may place a patent notice on his invention. A typical patent notice will read as follows: "U. S. Patent No. 4,000,000". Placing the patent notice on the invention preserves the right of the patentee to recover damages for patent infringement.
Mislabeling a product with the notice "Patent Pending" when a patent application has not been filed or with a patent notice when a patent has not issued is illegal and carries a penal sanction. An offender may be fined $500 for every offense, and anyone bringing suit against such offender may recover half of the fine.
XII. Cost of a Patent
The cost of filing and prosecuting a patent application varies tremendously with the complexity of the invention. It is much easier and less expensive to build a flashlight than a computer. Likewise, it is much easier and less expensive to prepare a patent application for a flashlight than for a complicated computer.
It should be noted that the total cost of applying for and maintaining a patent is spread out over a period of several years.
XIII. Value of Patents
Generally, the value of a patent is determined simply by the value of the invention that it covers. There are innumerable ways to exploit patent rights limited only by the imaginations of the patentee and his attorney, and by the anti-trust laws. Unless foreign patents are desired, exploitation of the invention may begin after the patentability opinion has been rendered. The ability to exclude others from a particular marketplace offers an obvious competitive advantage. Depending on the particular patentee, this competitive advantage may be exploited by manufacturing, selling, or using the product or process or by licensing others to do so. In many businesses, the patent portfolio is an important factor in placing a value on the business as a whole and may provide collateral for financing the business. A patent also has a certain intangible value. A strong patent portfolio may provide prestige in an industry, and favorable publicity is often created by press releases regarding new patents. Inventors, engineers and scientists are often evaluated, in part, by their peers and by their employers in terms of the patents issued to such persons.
XIV. Patent Licensing
The initial problem encountered in patent licensing is determining the conditions under which the invention will be disclosed. Most companies will not review an invention disclosure unless a disclosure form has been signed by the inventor limiting his rights solely to patent protection. The purpose of these forms is to forestall any subsequent allegation that the company stole the invention while in a confidential relationship with the inventor.
In drafting patent licenses, the inventor usually should insist on minimum royalties and minimum production of the invention. In this manner the inventor may assure himself of some return on his efforts, and his invention will receive an adequate exposure in the marketplace.
The anti-trust laws must be carefully considered when exploiting patent rights. The patent laws grant monopolies, while the anti-trust laws forbid certain monopolies. There is an illusive line between legal and illegal use of a patent right under the anti-trust law. For this reason, a patentee should normally consult his attorney regarding the legality of a plan to exploit his patent rights.
XV. Foreign Patents
Some brief aspects of foreign patents have been discussed above, but some additional information is noteworthy. A United States patent is only effective in the United States. It does not provide you any protection in any foreign country. Practically all foreign countries have patent laws to protect inventors, but each country is unique. Generally, European countries and Japan have an absolute novelty requirement as a predicate to granting patent protection. Thus, in order to secure patent protection in the European countries and Japan, you must file your patent application in the United States before making any public disclosure of your invention. You then have one year from the date of filing your United States patent application within which to file in European countries or Japan; provided however that in any event you must file in the foreign country before your United States patent issues. If you so choose, you can file an application under the Patent Cooperation Treaty with the United States Patent Office within the one year time period and thereafter you will have one year from the date of filing your disclosure under the Patent Cooperation Treaty within which to file in the Foreign countries that are members of the Treaty.
To be eligible for patent protection in Canada, you must file your patent application in the United States before any public disclosure of your invention from some third party source. However, in Canada, your own disclosures are not used against you, but disclosures of third parties will be.
In summary, if you think your invention is one on which you would want to seek protection in foreign countries, you should get your patent application on file in the United States before you make any public disclosure of your invention. Each country is unique and if there are particular countries that you would like to consider for protection, you should check with your advisor for specific information on the filing requirements in those countries.
The cost of filing foreign patents is expensive. While no hard and fast rules can be established, you should anticipate $4,000 to $5,000 per English speaking country and $6,000 to $7,000 for a non-English language country. Thus, the cost of foreign filings can be a major consideration.
XVI. Related Intellectual Property Areas
Inventors with patent needs or problems usually have related concerns with other areas of intellectual property. The manufacturer of a new product protected by a patent may also develop trade secrets that should be protected. The descriptive literature regarding a new product may be proper subject matter for copyright protection. An inventor will often give his invention a new name that will develop into a trademark, which should be registered in the United States Trademark Office. Similarly, a person accused of patent infringement may also be exposed to a complaint for trade secret infringement, copyright infringement, trademark infringement, or unfair competition. |
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Frequently Asked Questions about Patents
1. What is a patent?
A patent is a monopoly grant from the U.S. government. This grant gives an inventor the right to exclude all others from making, using, selling, offering to sell, or importing the invention in the United States. The three types of U.S. patents are utility patents, design patents, and plant patents. For example, a telephone might be covered by a utility patent for its ability to communicate over long distances, and the appearance of the telephone might also be covered by a design patent. Thus, multiple patents can be issued for an invention where each patent covers a different aspect of the new design.
2. What is a plant patent?
Plant patents are directed towards asexually reproduced plants. This means that the plant must be one that can be reproduced by man without using seeds. Thus, a plant patent covers plants that are reproduced by grafting, budding, cutting, layering, or division. Some additional qualifications for plant patents include the requirements of novelty, distinctiveness, and non-obviousness. These qualifications allow a person to obtain a plant patent and control the exclusive right to reproduce the plant.
3. What is a design patent?
Design patents cover new, original and ornamental designs for articles of manufacture. The design must be novel, ornamental and non-obvious. Because a design patent does not cover the usefulness of the object, design patents cover the intellectual property located between copyrights and utility patents. Note that a design patent only covers the look or feel of the product and will not cover the useful features of the design. The useful features of a product need to be covered and protected by a utility patent.
4. What is a utility patent?
Utility patents cover the useful features of an invention. These patents cover a broad category of sciences. Utility patents have been issued for everything from anchors for buildings, zebra stripes as a method of camouflage, computer software, to methods of doing business.
5. How do I get a patent?
The process for obtaining a patent begins with a patent application filed in the United States Patent and Trademark Office. To qualify for a patent, a potential patentee must meet certain statutory qualifications that require the invention to be a new and useful process, machine, article of manufacture, composition of matter, or a new and useful improvement to one of these items. The invention must be one that was non- obvious to a person skilled in that particular area of the art at the time that the invention was conceived. The invention must not have been publicly used, described in a printed publication, or offered for sale more than one year prior to the date of filing the application.
6. How much does it cost to file a patent application?
Fees vary depending on the complexity of the invention and the quality of the disclosure that you supply the patent attorney. Our typical fee for preparing a utility patent application on a simple mechanical invention is in the range of $5000.00. Our fees for preparing an application in the area of electronics, computer software, biotechnology, or other complex technology typically range upward from $6000 - $8,000, but are may be more. This amount is exclusive of government filing fees. The minimum governmental filing fee, which you pay separately in a check to the Commissioner of Patents and Trademarks, is $365. In most cases, drawings supplied by you will be sufficient for filing purposes. If, however, formal patent drawings are required at the time of filing, there will be a charge for fees paid to a patent drawing draftsman. Drawing fees are in the range of $100 - $150 per page.
The cost estimates set forth above relate only to U.S. patent work and do not include any services to secure protection of the invention in foreign countries.
7. What happens after I file an application?
The next step in the patent process is called the prosecution of the patent application. The government's review of the patent requirements begins with the submission of a patent application with the United States Patent and Trademark Office. Once a patent application has been filed, it is assigned to an Examiner, who reviews the application and performs a search of the prior art associated with the invention. An examination of the results of this search will be used to compare the submitted application with the state of the art at the time the application was filed. The Examiner will generally review the patent application for three main determinations. These are directed towards (1) whether the claimed invention is new, (2) whether the claimed invention is useful, and (3) whether the claimed invention is non-obvious. Each of these requirements will be briefly reviewed in the following discussion.
8. How much does the prosecution of the application cost?
Most patent applications are initially rejected in whole or in part by the Examiner as a normal part of the examination process. This is called an Office Action. These rejections require the attorney to formally respond to the Office Action by amending the application and/or submitting arguments and evidence to overcome the rejection. Because each Response to an Office Action is different, the cost varies fees are normally charged at an hourly rate. Complex inventions may require extended time periods and a correspondingly increased cost. An important way to reduce costs is to provide a complete disclosure of the invention and clean copies of closest known prior art. Furthermore, an important way to keep costs down is to make us aware of deadlines (i.e., bar dates, etc.) as soon as possible.
9. What do you mean by 'new and non-obvious'?
An invention must be new in order to be patentable. This requirement prevents people from patenting devices that are already in the public domain. Thus, the inventor must not be claiming a device that has been previously known to the public. This novelty requirement can also pose some problems for the inventor. The inventor cannot offer the invention for sale, sell the invention, publish the invention, or publicly use the invention (or allow others to do these things) more than one year before filing a patent application. These events create what is known as a "statutory bar" to patentability. If this statutory bar cannot be overcome, then the inventor will be denied a patent.
By allowing the inventor to sell the invention for one year, the United States has taken a very lenient approach to the novelty requirement. For example, most foreign countries require absolute novelty for an invention to be considered patentable. Therefore, if you plan on pursuing international rights regarding your invention, you must have a patent application on file before you do anything that would expose the invention to the public.
Even an invention that is "novel" will not be considered patentable if the invention was obvious to a person of ordinary skill in art. Obviousness is determined by comparing the state of art or cutting edge of a particular field and reviewing the invention from the position of a person with this cutting edge information. The state of the art can be determined by many different methods, but it is usually determined by reviewing the various patents issued on similar inventions (the "Prior Art") and combining these references to determine if the invention is non-obvious. As an example, in the area of ski ramps for long-distance jumping, the amount of tilt of the ski ramp affects the speed of the skier. Therefore, it would be obvious to increase the tilt of the ramp to increase the skier's speed, and this would not be considered patentable. However, if the invention teaches that a flat ramp is inefficient and that a concave or convex ramp increases the skier's speed without increasing the angle of the ramp, then the shape of the ramp might be considered non-obvious and therefore patentable.
10. What happens after the Examiner's review of the application?
Once the Examiner has reviewed the patent application and considered the Prior Art, the Examiner will either (1) reject the patent application in an Office Action or (2) issue a Notice of Allowability. As a general rule, each patent application will have at least one Office Action, and most applications will go through at least two Office Actions. The applicant must submit a response to the Office Action in which the applicant responds to every rejection or objection from the Examiner.
During these rounds of Office Actions, the Examiner may make a Final Rejection or issue a Notice of Allowability. A Final Rejection means that he will no longer examine the application and that the Examiner considers the invention unpatentable. The 'unpatentable' decision can be reviewed by the Board of Patent Appeals and Interferences and a negative opinion from the BPAI can be reviewed in a court of law. However, this type of review can be very expensive to pursue and more cost-effective methods for continuing the prosecution of the application are available. Once the Examiner considers the application to be in a condition for allowance, the Examiner will issue a Notice of Allowability. The patent is then ready for issuance and the applicant must forward the necessary issuance fee.
11. What does 'patent pending' mean?
Once you have filed a patent application on your invention, you may place the mark "Patent Pending" on your invention. While "Patent Pending" does not carry any legal protection for your invention, it warns your competitors that you have filed for patent protection and that you are determined to protect your rights. This provides a clear indication to your competitors that they should not invest money in a competitive product that would infringe any potential patent that you are currently pursuing.
12. How long does the process for the application and prosecution take?
The application process and the issuance of a patent presently requires approximately 18-24 months from the date of the filing of the patent application.
13. How long does a patent last?
Once the patent issues, the patent protection begins on the invention. Utility patent protection extends for a period of 20 years from the date of filing, assuming that maintenance fees are paid when required. Plant and design patents have different terms.
14. Is there anything I should do before filing an application?
Because the various statutory requirements can be rather complex, and the cutting edge of the technology can be difficult to determine, we normally recommend that a preliminary patentability search be conducted before a patent application is filed. If the search finds a patent that teaches the invention, or the search reveals a combination of patents that would make the invention obvious, the inventor can decide not to pursue patent protection and may save a considerable amount of money. In addition, the search will outline the cutting edge of the technology and will provide a good reference point for determining the patentable aspects of the invention and the breadth of the patent claims that will be allowable. A further advantage of a patentability search is the presumption that a patent is valid over all of the prior art considered by the patent Examiner. This becomes important during the enforcement stage of a patent when a competitor will attempt to invalidate a patent. Therefore, we strongly recommend a preliminary patentability search on almost every invention because of the immeasurable advantages provided by the search results.
15. What does the search cover?
A standard preliminary patentability search covers the patents issued by the United States Patent and Trademark Office. This search will include the classes and subclasses of inventions normally associated with your invention. We will review the results of this search and issue a written opinion of patentability regarding your invention and the most relevant prior art uncovered during the patent search. This should provide you with sufficient information to determine the scope and breadth of the patentable aspects of your invention and allow you to consider the costs associated with the filing of a patent application.
16. How much does a search cost?
The cost for a preliminary patentability search and opinion on a simple mechanical invention costs approximately $800- $1000.00. Once again, this fee may increase for more complex inventions.
17. If I decide to have your firm represent me before the Patent Office in order to obtain a patent, how can I be sure that your firm will keep my invention confidential?
The Firm's attorneys and agents are expected to preserve the confidences and secrets of a client. The Firm's attorneys and agents will not reveal information relating to representation of a client without the client's informed consent.
18. What information does your firm need from me in order to prepare a patent application?
The firm needs a detailed written description of your invention and, in most cases, detailed drawings of your invention. The written description should include information regarding the problems currently existing in the industry and a description of how your invention solves the problems. In addition, the written description should include information regarding why your invention is better than existing products that address the problem solved by your invention. In this regard, it is particularly helpful if you point out how your invention overcomes disadvantages of any existing products. Finally, the written description should also include a complete description of each part that is included in your invention, including information regarding the function performed by each part as well as how the parts are interconnected and cooperate together.
19. Can I conduct my own search on the U.S. Patent Office's web page?
The U.S. Patent Office offers a searchable database with the full text of all U.S. patents issued since January 1, 1976, and full-page images of each page of every U.S. patent issued since 1790. We encourage you to go to the U.S. Patent Office's web page and conduct your own search, bearing in mind the database's limitations. This database is recommended for simple searching to get an idea of the extent of the patents issued in a particular area. It is also useful, for example, if you have a patent number and want to review the issued patent. However, it is not a substitute for a preliminary search by a professional searcher when seriously considering filing an application. Our professional searchers use multiple search strategies in order to provide complete search results. For example, our searcher will conduct a database search, a search of the classifications index, a physical search of copies of issued patents in the relevant classes, and they typically consult with an Examiner to verify that all appropriate classifications have been searched.
20. Does a U.S. Patent protect my invention in other countries?
No. Each country has its own patent system and legal requirements that must be fulfilled before a patent can be issued in that country. Although the filing of a U.S. Patent application can assist in providing an early filing date in other countries (under some conditions), a separate application will have to be filed in any foreign country in which patent protection is desired. |
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Top Ten Interesting Things to Know About International Patent Law
1. A U.S. Patent does not have extra-territorial effect nor does it establish a right to foreign reciprocity.
2. With minor exceptions, all foreign patent systems require absolute novelty - no public disclosure before filing.
3. Unlike in the U.S., foreign patents are granted to the inventor who was the first to file the patent application.
4. In granting a patent to the first to invent, the U.S. discriminates against foreign applicants.
5. U.S. patent filing dates can be used as effective foreign patent filing dates by the timely filing of foreign applications in accordance with the Paris Convention.
6. Patent Cooperation Treaty (PCT) and European Patent Convention (EPC) applications can streamline foreign patent filings and lower up front costs.
7. Subject matter coverage of foreign patent systems is not universally as broad as provided under the U.S. patent system.
8. Ownership of foreign patents can result in onerous requirements including patent "working", compulsory licensing, and publication of applications before the patent issues.
9. The International Trade Commission is a proper jurisdiction for determining patent infringement for purposes of stopping importation of infringing goods.
10. The use in a foreign country of a process that is patented in the U.S. can be an infringement if the products of the foreign process are sold in the U.S. |
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Top Ten Things to Know About Foreign Patent Filing
1. If an inventor discloses her invention before filing a patent application in the U.S., she will not be eligible for patent protection in the majority of countries around the world. Thus, if an inventor believes that she might want foreign patent protection, it is critical to file an application before the invention has been in public use or on sale, or made publicly known, anywhere in the world.
2. An inventor has one year from the date of filing a utility patent application in the U.S. to file foreign patent applications. This deadline is 6 months for design patents.
3. Obtaining foreign patent protection is an expensive process. To obtain a patent in most foreign countries costs between $8,000.00 and $15,000.00.
4. Although the U.S. grants a patent to the first inventor, foreign laws operate on a first to file basis, i.e., the first person to file an application is entitled to a patent, not the first to invent.
5. Unlike the U.S., where there are only 3 maintenance fees which must be paid over the life of a patent, many foreign countries require payment of yearly maintenance fees to keep a patent in force.
6. The Patent Cooperation Treaty (PCT) is a multilateral treaty to facilitate obtaining patent protection in the PCT Contracting States. As of September 1999, 102 countries will be Contracting States under the PCT.
7. A PCT application does not issue into a patent. Instead, it is a system of delay, which allows an inventor additional time to determine whether it is likely that she will be successful in obtaining patent protection in other countries as well as whether the invention is worth the expense of foreign patent protection. The PCT is also a system of combining some phases of the prosecution procedure to streamline the parts of the procedure, such as the patent search, which are common to all the Contracting States, thereby cutting costs.
8. Unlike the U.S., where patent applications are kept secret until a patent issues, most countries publish patent applications while the applications are pending. This is also true for PCT applications, which are published 18 months after the priority date.
9. Many foreign countries do not require the inventor to be the applicant. Thus, a company that is the assignee of an invention may file the application in its name.
10. Some countries have joined together to allow for regional patents. For instance, an inventor may file a European patent application which provides for a combined prosecution procedure in seventeen European countries. Regional patent applications are also available for blocks of countries in Africa and Eastern Europe. |
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Patent Protection for Web-Based Businesses
I. INTRODUCTION
As various methods of doing business over the Internet have evolved, the question has arisen as to what extent the basic functional structure of a business method can be protected by patents.
For this discussion, the underlying assumption is that the novelty of the method of doing business resides in software which is utilized to allow certain interaction between the website and users of the website. Thus, the legal issue is the broader one of whether and to what extent computer software is patentable.
This is an issue which has gradually evolved over the last twenty years and has suddenly experienced dramatic development within the last twelve to eighteen months.
This presentation will:
(1) Review recent case law developments;
(2) Discuss what effect these developments have on the patentability of web-based business methods; and
(3) Look at examples of some web-based business formats and the patents which have issued on them.
II. "STATE STREET BANK"
This issue was addressed head-on by the Court of Appeals for the Federal Circuit in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F3d. 1368, 47 USPQ 2d. 1596 (Fed. Cir. 1998).
The technology involved in the State Street Bank case was a "Hub and Spoke"® data processing system as described in U.S. Patent No. 5,193,056. The basic concept is that by the use of this computer program, a group of mutual funds can pool their assets in a single investment portfolio which is organized as a partnership. Thus, a single administrator can administer the pooled assets resulting in economies of scale.
It is necessary, however, for the system administrator to determine on a daily basis an allocation of the assets to the various mutual funds, and to report those allocations to the mutual funds very rapidly, sometimes within as little as 90 minutes after the stock market closes on a given day. Thus, the only realistic way for conducting business via this pooled mutual fund partnership, and providing the necessary reporting to the separate mutual funds on a daily basis, is by computer implementation of all of the calculations and reporting.
Signature Financial Group had written such a computer program, and they obtained U.S. Patent No. 5,193,056 which covers the structure of this computer program.
State Street Bank & Trust Co. had negotiated with Signature for a license to use its patented data processing system, and when negotiations broke down, State Street brought a declaratory judgment action asserting invalidity, unenforceability and non-infringement of the patent. They key issue in the reported decision was whether the computer program as claimed constituted patentable subject matter. This is an inquiry under 35 U.S.C. § 101 which defines the various types of subject matter which may be patented if the particular subject matter, in fact, meets the other requirements for patentability such as non-obviousness. Section 101 reads:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
A literal reading of § 101 would make it appear that any new and useful "process, machine, manufacture, or composition of matter" should be patentable subject matter. Since a computer program is a type of process, this literal reading would appear to lead to the relatively easy conclusion that a process or machine incorporating a computer program would be patentable.
There has, however, for many years been a judicially defined exception to the definition of patentable subject matter, namely the "mathematical algorithm" exception.
The Supreme Court has stated that certain categories of subject matter are unpatentable, namely "laws of nature, natural phenomena, and abstract ideas." Diehr 450 U.S. 175, 185, 209 USPQ 1, 1 (1981). The Court has held that mathematical algorithms are not patentable subject matter to the extent that they are merely abstract ideas.
Thus, the confusion and debate for the past two decades has been how to distinguish between a computer program or mathematical algorithm that is merely an abstract idea and thus is not patentable subject matter, and one which is in fact patentable subject matter. That debate continues, and the line has been much more clearly drawn by the recent State Street Bank case and subsequent decisions.
For many years this restriction was interpreted as requiring that patent claims to machines or processes involving computer programs must include a physical transformation of matter operated on by the process involving the computer program. After the State Street Bank decision, this is no longer true.
In State Street Bank, the Federal Circuit, drawing on its previous decision in Alappat 33F. 3d. 1526, 1540-41, 31 USPQ 2d. 1545, 1554 (Fed. Cir. 1994), held that a computer utilizing a computer program to produce "a useful, concrete and tangible result" is patentable subject matter.
The particular "useful, concrete and tangible result" resulting from the computer program involved in the State Street Bank patent was a final share price calculated for the various individual mutual funds and reported to them. Thus, there is no longer any requirement for the claim to recite physical elements outside of the computer program itself.
A second very critical issue addressed in the State Street Bank case was another judicially created exception to the patentable subject matter defined in 35 U.S.C. § 101, namely the "business method" exception. For many years, it had been accepted wisdom that methods of doing business were not patentable subject matter.
In State Street Bank, however, the Federal Circuit upon reviewing those authorities held that they had never been well founded and that there was in fact no "business method" exception to patentable subject matter. The Court stated that claims to business methods should be treated just like all other process claims.
Thus, in one fell swoop the Federal Circuit removed the two biggest obstacles which had existed to the patenting of computer software in general, and web-based business methods in particular. Immediately after the publication of the decision, the Intellectual Property press was flooded with predictions that this decision had opened the door to the wide scale patenting of web-based business methods. So far those predictions appear to be accurate. See "The Rest of the Wall Comes Down: Federal Circuit Holds Software is Freely Patentable", INTELLECTUAL PROPERTY TODAY, September, 1998, page 32-35; "State Street Bank Fuels Boom in Business Model Patents", INTELLECTUAL PROPERTY TODAY, April, 1999, page 30; "The State Street Bank Case – Its Implications to Financial Institutions", INTELLECTUAL PROPERTY TODAY, January, 1999, page 8-10; "State Street Bank: Are Useful Algorithms Patentable?", INTELLECTUAL PROPERTY TODAY, March, 1999, page 18-20.
III. AT&T CORP. V. EXCEL COMMUNICATIONS, INC.
U.S. Patent No. 5,193,056 involved in the State Street Bank case involved only machine claims. That is, the claims in the patent were written to "a data processing system", and are what is commonly referred to as apparatus claims.
Now the Federal Circuit has extended its State Street Bank holding to a case specifically involving method claims. This is found in AT&T Corp. v. Excel Communications, Inc., No. 98-1338, 172 F. 3d. 1352, 50 USPQ 2d. 1447, (Fed. Cir. April 14, 1999).
The AT&T case involves U.S. Patent No. 5,333,184, relating to the generation of information in an electronic record for long distance telephone calls that permits differential billing treatment for subscribers.
The Federal Circuit affirmed the rule of the State Street Bank case and found the method claims in the AT&T case to be patentable subject matter under 35 U.S.C. § 101. The Federal Circuit rejected the argument that method claims containing computer programs must involve a physical transformation of subject matter. As previously noted, the older case law which required a physical transformation of subject matter has now been completely discredited.
Thus, it is apparent that the door which was opened by State Street Bank to the patenting of computer software, is open to all types of claims, including both apparatus and method claims.
The predictions we have seen in the Intellectual Property press of a substantial increase in the number of patents which will be filed on web-based business methods are clearly coming true. We see this in our own practice and hear from others that they are experiencing the same.
The front lines in the battle for broad patent protection for computer programs now will move beyond the fundamental question of whether they can be patented, because indeed, they can. The next battleground will be the development of appropriate policies in the Patent and Trademark Office and the courts for granting and interpreting these claims.
The remainder of this paper will turn to the examination of some notable examples of web-based business methods which have been the subject of recently issued patents.
IV. PRICELINE.COM/WALKER DIGITAL
One of the shining success stories in the past year for newly launched internet businesses is that of Priceline.com.
Priceline's business is based on what is often referred to as a "reverse auction" business format. A customer connects to the Priceline.com website, makes an "offer" to purchase a certain product at a specified price, and provides credit card information by means of which the funds can be provided to complete the purchase if a willing seller is found. Priceline then shops that offer to various potential sellers, and the first seller to accept the offer communicates its acceptance over the Internet to Priceline which then completes the transaction transferring the funds from the buyer's credit card.
The Priceline.com system can be observed by going to www.priceline.com. Under the heading "What is Priceline.com?", there is the option to "Take a Tour" which will lead the viewer through the basic operation of the Priceline.com on-line reverse auction business method.
The Priceline operation started with the sale of plane tickets, and is rapidly expanding into car sales, home mortgages, hotel rooms and other areas.
Priceline went public in the Spring of 1999 with less than a year of operating history. Its total sales at the time it went public were something less than $100 Million. Within a couple of weeks of the IPO, the market capitalization for Priceline.com was in the neighborhood of $30 Billion and with recent market drops, it is still in the range of $15-$20 Billion.
The tremendous value which the market has placed on Priceline.com is based in significant part on the fact that Priceline owns a portfolio of patents which purport to give it the exclusive rights to this "reverse auction" model of doing business on the Internet for any and all products.
The fundamental patent involved is U.S. Patent No. 5,794,207. The claims of this patent are remarkable for their clarity and breadth. Claim 1 of Patent No. 5,794,207 reads as follows:
"1. A method for using a computer to facilitate a transaction between a buyer and at least one of sellers, comprising:
inputting into the computer a conditional purchase offer which includes an offer price;
inputting into the computer a payment identifier specifying a credit card account, the payment identifier being associated with the conditional purchase offer;
outputting the conditional purchase offer to the plurality of sellers after receiving the payment identifier;
inputting into the computer an acceptance from a seller, the acceptance being responsive to the conditional purchase offer; and
providing a payment to the seller by using the payment identifier."
The first two steps of the patent claim describe the inputting by the buyer of his offer and his payment data. The third step describes the outputting by Priceline of that offer to a plurality of sellers. The fourth step involves the inputting by the seller of an acceptance. The fifth step describes Priceline's provision of the payment to the seller.
As is apparent from claim 1, this method is not limited to any particular goods or services being sold.
Of equal interest is the company behind Priceline.com, a private entity known as Walker Digital Corporation. Walker Digital is something of a "think tank" run by Jay Walker, the first named inventor in the Priceline patent. Walker Digital Corporation develops and patents innovative information based solutions for businesses. They currently own over 250 pending patent applications. The Priceline.com business was conceived and developed by Walker Digital Corporation, and then those assets were spun off into Priceline.com which was subsequently taken public.
The Priceline patents are just the tip of the iceberg of what Walker Digital Corporation is developing. A recent search for their issued patents (keeping in mind that most of their 250 patent applications have not yet issued) is attached. This report shows 21 issued patents which, from their titles alone, show the wide breadth of activity being engaged in by Walker Digital Corporation.
V. THE POINTCAST SCREENSAVER PATENTS
Another interesting example is that of the PointCast screensaver. PointCast was recently acquired by EntryPoint, and can be viewed at www.entrypoint.com.
The basic concept of the PointCast screensaver is a computer program which is downloaded by the user and in which the user then provides information identifying the user's preference in news information that the user would like to view. The screensaver then functions in a conventional manner so that when the computer is not utilized for a pre-determined interval, the screensaver pops up on the screen. The PointCast screensaver displays current news items corresponding to the previously identified categories input by the user.
The PointCast screensaver is covered by U.S. Patent No. 5,740,549. Again, a review of claim 1 of that patent is instructive. It reads as follows:
"1. A computer-implemented method of displaying information on a computer having a local storage device and a display device, the computer being coupled to a network, the computer-implemented method comprising the steps of:
storing advertising information and news information downloaded from the network in the local storage device of the computer, wherein each of the advertising information and the news information is associated with at least one category in a list of predefined categories, the list of predefined categories being based on user selected preferences;
detecting a predefined idleness criteria for the computer wherein the predefined idleness criteria is met when the computer fails to receive user input for a predetermined amount of time;
selecting a first set of advertising information and a corresponding first set of news information from a first category in the list of predefined categories; and
displaying the first set of advertising information and the first set of news information in a screen saver on the display device of the computer after a predetermined period of time."
Again, the claim is notable for both its breadth and clarity.
VI. OTHER EXAMPLES
Some other interesting examples include the following:
1. Sightsound.com – owns U.S. Patent Nos. 5,191,573 and 5,675,734 which relate to the sale of audio or video recordings in a download fashion over the Internet.
2. Cybergold.com – owns U.S. Patent No. 5,855,008, covering its concept of offering incentives to people to pay attention to ads on the Internet. See also U.S. Patent No. 5,794,210.
3. U.S. Patent No. 5,715,314 describes a "network sales system" which is in effect the "shopping cart" approach to Internet sales transactions.
VII. IS THE PATENT AND TRADEMARK OFFICE GOING TOO FAR WITH ITS AWARD OF ELECTRONIC COMMERCE PATENTS?
The issue now being raised by many is whether the Patent and Trademark Office is applying the appropriate standard of non-obviousness in granting many of these electronic commerce patents.
In many instances, it would appear that patents are being granted for a method or apparatus which aside from its implementation over the Internet is old.
Some commentators complain that these overly broad patents covering web-based business methods are ultimately going to be detrimental to the growth of the Internet. See "The Trouble With Internet Patents", FORTUNE magazine, July 19, 1999, page 118.
VIII. CONCLUSION
Regardless of whether one views the granting of broad patents on web-based business methods as a positive or negative development, the undeniable fact is that such patents are being granted today.
With the increasing use of the Internet by businesses of all types, this is an issue of substantial importance to all businesses and their legal advisors.
WALKER DIGITAL PATENTS
5,949,875 Parallel data network billing and collection system
5,949,044 Method and apparatus for funds and credit line transfers
5,947,747 Method and apparatus for computer-based educational testing
5,946,388 Method and apparatus for priority queuing of telephone calls
5,945,653 System and method for establishing and executing functions to affect credit card accounts and transactions
5,926,796 Method and apparatus for selling subscriptions to periodicals in a retail environment
5,923,763 Method and apparatus for secure document timestamping
5,921,864 Electronic word puzzle game
5,909,486 Method and apparatus for awarding and redeeming prepaid telephone time
5,884,274 System and method for generating and executing insurance policies for foreign exchange losses
5,884,272 Method and system for establishing and maintaining user-controlled anonymous communications .
5,884,270 Method and system for facilitating an employment search incorporating user-controlled anonymous communications
5,871,398 Off-line remote system for lotteries and games of skill
5,862,223 Method and apparatus for a cryptographically-assisted commercial network system designed to facilitate and support expert-based commerce
5,828,751 Method and apparatus for secure measurement certification
5,825,863 Prepaid limited usage calling card
5,798,508 Postpaid traveler's checks
5,797,127 Method, apparatus, and program for pricing, selling, and exercising options to purchase airline tickets
5,794,207 Method and apparatus for a cryptographically assisted commercial network system designed to facilitate buyer-driven conditional purchase offers
5,768,382 Remote-auditing of computer generated outcomes and authenticated billing and access control system using cryptographic and other protocols
5,737,414 900 number billing and collection system and method for on-line computer services |
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Application of 35 U.S.C. § 112(6) to Method Claims
I. INTRODUCTION
During the last ten years there has been a substantial evolution of the meaning and application of 35 U.S.C. § 112(6) as it applies to apparatus claims using classic means-plus-function language. We have seen the scope of interpretation given such claims evolve from what many thought was the broadest possible claim language into what is now often the narrowest possible claim language.
It has sometimes been noted, but rarely discussed, that the literal language of 35 U.S.C. § 112(6) applies equally to method claims utilizing step-plus-function language.
The purpose of this paper is to review two recent decisions of the Court of Appeals for the Federal Circuit which show very clearly that the application of these rules to method claims is something we must be concerned with in the future.
II. THE CASES
The first case from the Federal Circuit to seriously address this issue was O. I. Corp. v. Tekmar Co., 42 USPQ 2d 1777 (Fed. Cir. 1997). The Tekmar case involved both apparatus and method claims. Interestingly, it included apparatus claims in classic means-plus-function format, and a "parallel" method claim wherein the steps recited the identical language of the elements of the apparatus claim, except for the deletion of the introductory "means for" phrase. In Tekmar, the Court clearly held that 112 (6) applied to method claims. The Court found that the particular method claim in question was not in step-plus-function format, regardless of the fact that it paralleled the language of an apparatus claim that clearly was a means-plus-function claim.
The second case is Seal-Flex, Inc. v. Athletic Track and Court Construction, 50 USPQ 2d 1225 (Fed. Cir. 1999). The procedural history of Seal-Flex is of interest. Only method claims were at issue. The parties had stipulated at trial that the element in question was in such format as to be governed by 112(6). Based upon that stipulation, the trial court instructed the jury regarding interpretation of an element under 112(6) in language that somewhat confused the test for a means-plus-function element with that for a step-plus-function element. Based upon this instruction, the jury found literal infringement due to the use of an "equivalent" of the various disclosed embodiments of the element in question. On appeal, the majority affirmed, but in a concurring opinion, Judge Rader discussed at length the proper manner of interpretation of §112(6) as applied to method claims. He concluded that the element in question was not governed by 112(6). While Judge Rader's concurring opinion is thus not a binding decision of the court, it is in line with the previous decision in Tekmar. Until further guidance is provided, it is the best indication we have of what will probably be the ultimate interpretation of 112(6) as applied to method claims.
For a further discussion of other cases on this issue see, Thomas, "Applicability of 35 U.S.C. §112, ¶6 To Method Claims – Better Watch Your Step", Intellectual Property Today, March 1998, p. 42 and April 1998, p. 20.
III. A REVIEW OF THE CURRENT STATE OF THE LAW REGARDING MEANS-PLUS-FUNCTION APPARATUS ELEMENTS UNDER 112(6)
Before we review Judge Rader's analysis of 112(6) as applied to method claims, it will be helpful to review the current state of the law regarding application of these rules to means-plus-function elements in apparatus claims, with which we are all much more familiar.
The language of §112(6) in question reads as follows:
"An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claims shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."
The language of the statute addresses both means-plus-function apparatus elements and step-plus-function method elements together in the same sentence. First, we must grammatically dissect this language to determine which portions apply to means-plus-function and which to step-plus-function. This had already been done in the Tekmar case, and was repeated by Judge Rader in his concurring opinion in Seal-Flex. The language applicable to means-plus-function apparatus elements is as follows:
"An element in a claim for a combination may be expressed as a means… for performing a specified function without the recital of structure (or) material… in support thereof, and such claims shall be construed to cover the corresponding structure (or) material… described in the specification and equivalents thereof."
Analogously, the proper reading of 112(6) with regard to step-plus-function elements is as follows:
"An element in a claim for a combination may be expressed as a… step for performing a specified function without the recital of… acts in support thereof, and such claims shall be construed to cover the corresponding… acts described in the specification and equivalents thereof."
See Tekmar, 42 USPQ 2d 1777, 1782 and Seal-Flex 50 USPQ 2d 1225, 1233.
The rules as applied to means-plus-function elements have been interpreted as follows:
1. If the word "means" appears in the claim element, there is a presumption that it is a means-plus-function element to which §112(6) applies.
2. This presumption is overcome if the claim itself recites sufficient structure or material for performing the claimed function or when it fails to recite a function associated with the means.
3. When an element of a claim does not use the term "means", treatment as a means-plus-function claim element is generally not appropriate.
4. However, when it is apparent that the element invokes purely functional terms, without the additional recitation of specific structure or material for performing that function, the claim element may be a means-plus-function element despite the lack of express "means" language.
See Seal-Flex, 50 USPQ 2d 1225, 1233 and various cases cited therein in support of the four "rules" set forth above.
IV. THE APPLICATION OF 112(6) TO STEP-PLUS-FUNCTION ELEMENTS
The Tekmar and Seal-Flex decisions have interpreted the applicable portions of 112(6) regarding step-plus-function elements in a manner parallel to that described above for means-plus-function elements. "Certain phrases trigger a presumption that §112, ¶6 applies, but other aspects of the element, such as recitation of a specific act, may overcome that presumption." Seal-Flex at 1233.
While it is easy to cite or state a rule, Judge Rader recognized that the application of this rule to method claims is inherently more difficult than it is with regard to apparatus elements.
We will first recite the "rules" as they have been stated for application to step-plus-function elements, and then look at the examples presented in the Seal-Flex and Tekmar cases to provide some guidance and illustration of the meaning of these "rules".
The analogous "rules" as they have been set forth for interpretation of step-plus-function language are as follows:
1. The "magic language" to signal an intention to use step-plus-function language to be covered by 112(6) is to introduce the language with the phrase "step for". Thus, the phrase "step for" in a method claim raises a presumption that 112(6) applies.
2. However, even if the "step for" introductory phrase is used, 112(6) still does not apply when the claim limitation itself recites sufficient acts for performing the specified function.
3. When an element of a claim does not use the term "step for", treatment as a step-plus-function claim element is generally not appropriate.
4. However, claim elements without express "step for" phraseology may fall under 112(6) if they merely claim the underlying function without recitation of acts for performing that function.
Seal-Flex at 1234.
V. WATCH YOUR "STEP FOR"
With regard to apparatus elements, the magic word tends to be "means" which may or may not be followed by the word "for". Judge Rader recognized, however, that the term "step" may be used in a broader fashion than "means" and that the word "step" may introduce either an act which is not governed by 112(6), or a function which is covered by 112(6). Thus, the use of the word "step" by itself does not indicate a presumption that 112(6) applies.
Judge Rader's analysis concludes that if the claim drafter wishes to draft a claim which is intended to be governed by 112(6), the convention is to use "step for", whereas, if the claim drafter does not intend to invoke 112(6), the convention is to use the phrase "step of".
As an aside, as I think back over the hundreds of times I have drafted such claims, I tend to agree with this conclusion. But I would be much more comfortable with it if someone had told me these were the "conventions" twenty years ago.
Regardless of whether you agree with Judge Rader's conclusion, the very clear lesson to be learned is that you should not use the phrase "step for" in claim drafting unless you specifically wish to invoke the interpretory rules of 112(6) with regard to that claim. It is submitted that it is a rare case where the claim drafter will in fact wish to have his or her claim interpreted under 112(6), and thus in most every instance the introductory phrase "step of" should be utilized when drafting a method claim.
VI. A FEW EXAMPLES
Let us now review the examples presented by the actual claim language which was analyzed by the courts in the Seal-Flex and Tekmar cases.
The Seal-Flex case dealt with a method for constructing an all weather activity mat on a foundation. This process could be utilized, for example, to construct a running track. The portion of the claim of interest reads as follows:
"A method for constructing an activity mat over a foundation comprising the steps of:
spreading an adhesive tack coating for adhering the mat to the foundation over the foundation surface."
The true difficulty in interpreting claims to determine whether they are covered by 112(6) will not be the question of whether the introductory phrase "step for" is used. Presumably most claim drafters will studiously avoid the use of the phrase "step for". Instead, the difficult analysis will involve determination of whether the claim describes "function" or "acts". A claim which sets forth only "function" will likely come under the rules of 112(6), whereas a claim which sets forth "acts" or both "function" and "acts" will not. It is submitted that this issue will lead to a great deal of semantics and dispute.
Judge Rader attempts to clarify this issue as follows:
"In general terms, the "underlying function" of a method claim element corresponds to what that element ultimately accomplishes in relationship to what the other elements of the claim and the claim as a whole accomplish. "Acts," on the other hand, correspond to how the function is accomplished. Therefore, claim interpretation focuses on what the claim limitation accomplishes, i.e., its underlying function, in relation to what is accomplished by the other limitations and the claim as a whole. If a claim element recites only an underlying function without acts for performing it, then §112, ¶6 applies even without express step-plus-function language."
Seal-Flex at 1234.
In the Seal-Flex case, Judge Rader applies those rules to an element which is recited as a "step of… spreading an adhesive tack coating for adhering the mat to the foundation over the foundation's surface".
Because of the absence of the language "step for" there is a presumption that this element is not intended to be governed by 112(6).
In interpreting the phrase "spreading an adhesive tack coating for adhering the mat to the foundation over the foundation's surface", Judge Rader concludes that "spreading" is an act, and "adhering" is the underlying function accomplished by the act of spreading. He further notes the use of the introductory phrase "step of" which he has previously told us is classic language for introducing acts, not function.
Thus, the element in question, although it does describe a function, also recites an act in support of that function and thus, is not covered by 112(6).
Judge Rader goes on to give two further examples of how this phraseology might have been changed in a way that would invoke 112(6).
"If, instead of this language, this limitation had claimed "a step for adhering the mat to the foundation," without the recitation of an act or acts for "adhering," then §112, ¶6 would have governed its interpretation. Likewise, if this claim limitation had specified only the underlying function, namely, "adhering the mat to the foundation," without recital of specific acts for "adhering," §112, ¶6 would have governed, despite the lack of "step for" language."
Seal-Flex at 1235.
Perhaps this seems clear to you at this point, but questions arise when one challenges the semantics involved.
Why can not the term "adhering" be considered just as much an act as the term "spreading"? What if the claim drafter had written the same step as "adhering the mat to the foundation for preventing slippage of the mat upon the foundation"? Might not that phraseology be interpreted as stating a function of preventing slippage carried out by an act of adhering, which taken in total would not be governed by 112(6)?
With all due respect to Judge Rader, the application of 112(6) to method claims is going to raise a great many difficult interpretational issues for which predictable results will be problematic.
The other example we have is from the Tekmar case in which the claim in question reads as follows:
"A method for removing water vapor from an analyte slug passing between a sparge vessel, trap and gas chromatograph, comprising the steps of:
(a) passing the analyte slug through a passage heated to a first temperature higher than ambient, as the analyte slug passes from the sparge vessel to the trap; and
(b) passing the analyte slug through the passage that is air cooled to a second temperature below said first temperature but not below ambient, as the analyte slug passes from the trap to the gas chromatograph."
The court's analysis of this language concluded that the function was that recited in the preamble, namely "removing water vapor from an analyte slug" and that the two "passing" steps did not invoke 112(6).
The court's analysis was not as rigorous as that subsequently done by Judge Rader in his concurring opinion in Seal-Flex. It appears to be more of a "I know it when I see it" analysis, and the court justified its conclusion with the very true observation that: "If we were to construe every process claim containing steps described by an "ing" verb, such as passing, heating, reacting, transferring, etc. into a step-plus-function limitation, we would be limiting process claims in a manner never intended by Congress." Tekmar, at 1782.
One might conclude from the Tekmar analysis that if the resulting function of the overall claim is recited in the preamble, this might be sufficient to convert all of the specifically recited steps into "acts" carrying out that function, and thus, take the claim out of 112(6). Judge Rader's analysis clearly addresses this point and says this is not the case. "[T]he recitation of the overall function of the claim in the preamble does not suffice to convert each element into an act for performing that function so as to preclude application of §112, ¶6. Rather, according to the statute, each element must be examined individually to determine whether it recites that element's function or a specific act for performing it."
Seal-Flex at 1235.
VII. SUMMARY
It is submitted that Judge Rader's rules for applying 112(6) to step elements are going to lead to much semantical argument and uncertainty in the interpretation of method claims.
At this point, it is probably safe to say that a couple of guidelines should be followed if a claim drafter wishes to avoid having his or her claims interpreted under 112(6):
1. First, the introductory phrase "step for" should never be used and instead "step of" should be used to introduce the steps of the claim.
2. The recitation in a step of a single "ing" verb may lead to debate as to whether that verb is an "act" which is not governed by 112(6) or merely a "function" without a supporting "act" which is governed by 112(6). In many cases, the application of 112(6) will likely be avoided by careful claim drafting which states both an act and a resulting function.
With careful claim drafting, it should be a relatively rare case where 112(6) will actually be used to interpret a method claim. As Judge Rader observed in his Seal-Flex concurring opinion, "Only a few cases have found the existence of a step-plus-function claim element." 50 USPQ 2d at page 1234, n. 2.
In conclusion, I leave you with the following advice regarding the drafting of the of your method claims:
1. You probably should "step of" it;
2. And if you wish you can "step for" it;
3. But be very, very careful that you don't "step in" it. |
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On Sale Bar May Be Triggered Even Though Offer Did Not Identify Claim Limitations
The Court of Appeals for the Federal Circuit has ruled that an offer to sell an invention prior to the critical date need not specifically identify claim limitations. Also, the seller need not recognize the significance of those claim limitations at the time of the offer to start the 102(b) on sale bar clock ticking. In Scaltech Inc. v. Retec/Tetra L.L.C., the Court stated that if the waste recycling process offered by Scaltech inherently possessed each of the claim limitations, then the process was "on sale." It did not matter if the seller did or did not recognize that the process possessed the later claimed characteristics.
To trigger the on sale bar, however, the invention offered for sale must be something within the scope of the claim. Accordingly, the 102(b) analysis will include a determination of whether the subject matter of the sale met each limitation of the claim and was an embodiment of the invention.
At Waddey & Patterson, we can help you determine the best paths to take for your individual needs both before and after filing for a patent application so you can avoid pitfalls that may bar you from obtaining a patent. We also recommend consulting with us before any offer for sale or public disclosure of your invention. |
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