How to Avoid Patent Infringement

Myth

I think part of the reason why patents are undervalued these days is the growing myth that you can avoid infringing a patent by changing your product by, say, 20% to 30% (what does a 20-30% product modification even mean?).

Reality

Let’s the set the record straight. There is no such rule about any percentage modification that would avoid patent infringement. Infringement is not about how different your product is from the patent. In fact, your product may seem very different, yet still infringe. Infringement is all about the claims, and avoiding infringement is about omitting what’s in the claims (not adding or changing).

How to determine infringement

To analyze infringement, you must check each independent claim in the patent and see if each claim feature is found in your product. If an independent is not infringed, then logically a dependent cannot be infringed. In contrast, invalidating an independent claim does not necessarily invalidate a dependent claim.

Suppose a utility patent (not a design patent or a pending application) contains two independent claims: Independent Claim 1 includes a combination of features, or claim limitations, AB while Independent Claim 2 recites a combination of BC. Let’s assume you’re thinking of launching a product with features ABCD.

In the above example, your product would infringe both Claim 1 because it has A and B, and Claim 2 because it has C and D. Notice how you do not avoid infringing Claim 1 by adding features on top of what is claimed. Notice also that percentage changes in the product have nothing to do with the infringement analysis.

Let’s assume you redesign your product so that it contains features A and C only. In this case, you would avoid infringing both Claim 1 – because B is missing – and Claim 2 – because D is missing.

Literal infringement vs. Doctrine of Equivalents

So far, we have been discussing literal infringement, but the analysis does not stop there. The doctrine of equivalents (DOE) must also be considered even if your product does not literally infringe. If a claim limitation is missing from your product (thus, no literal infringement), you still have to consider whether your product might include a feature that is equivalent to that missing claim limitation. The DOE can be a tricky gray area which deserves a separate discussion.

Patentable vs. Infringing: What’s the difference?

Can my patent protect me from liability for infringing other patents?

One of the most common misconceptions regarding patents has to do with the difference between patentability (or novelty) and infringement.  A patent does not give its owner the right to make an invention free from liability.  Instead, a patent provides the owner with the right to exclude or license others to use the patented invention.

What is the difference between patentability (novelty) and infringement?

To be patentable, an invention has to be new and unique over the prior art. Prior art generally consists of prior patents, printed publications, devices and methods in public use, etc. Basically, whether or not you can patent your invention depends on whether your invention is new over what has already been done.

Even if you own a patent, you might still infringe someone else’s patent. Infringement relates to whether your product or method contains all the limitations (i.e., features) of at least one claim in a patent.

Example

Consider the following:
The prior art discloses the combination AB. Your invention is comprised of the combination ABC.

To be patentable, your invention must be new and unique over the prior art. In our hypothetical above, the prior art shows a combination of AB (such as a prior art patent showing a structure with two features). Your invention consists of ABC. In other words, you add a new feature C. In this example, your invention would be patentable because it includes a new feature (aka “point of novelty”) that is not shown or suggested in the prior art.

Literal infringement

Let’s turn to infringement. If every limitation of at least one independent patent claim must be found in the accused device, you have “literal” infringement. In the example above, if you made a product with features ABC, would this product infringe the prior art patent that claims AB? Notice that we said product, and not invention. Infringement activities involve using, making, selling or offering for sale (advertising). Mere abstract ideas do not infringe.

In the above example, your product would infringe the patent literally. A helpful way to analyze literal infringement is to list each limitation or element of each independent claim in a chart. Then go through each element, and place a check next to each element that is found in your product. If you check off each element in an independent claim, you have “literal infringement.” If one or more elements are not checked, then you do not have literal infringement.

Doctrine of Equivalents (DOE)

To be thorough, however, infringement under the doctrine of equivalents should also be considered. This is a much more in-depth analysis that generally requires review of the file history, or prosecution history, of the patent, including the cited prior art and the back-and-forth communications between the patent examiner and the applicant.

If in doubt, consult your patent attorney. You may want to have a non-infringement opinion prepared in order to minimize the chances of enhanced damages (multiple money damages, up to three times).

Need an NDA to Talk to a Patent Attorney?

No. It’s a common question I get from startups, inventors, entrepreneurs and basically anyone starting up a new venture who hasn’t already worked with our firm. In most cases, a well drafted non-disclosure agreement (NDA) is a prudent way to protect your idea as you’re talking to service providers. Attorneys, however, are governed by strict rules and codes of professional conduct relating to communications with clients (e.g., see California Evidence Code Section 952California Rules of Professional Conduct Rule 3-100, and California Business and Professions Code Section 6068).

What if you wish to consult with a few different patent attorneys before engaging the right one?

The State Bar of California has issued a written opinion stating that even if you’re not a client, an attorney may have a duty to keep your communications confidential if the attorney’s words or actions “induce in the speaker a reasonable belief that the speaker is consulting the attorney, in confidence, in his professional capacity to retain the attorney or to obtain legal services or advice.” (Formal Opinion No. 2003-161).

Other state bars may have issued similar opinions regarding confidentiality of communications with potential clients. If you’re still uncomfortable sharing the details of your invention, then keep the communications general. For example, you can share the general subject matter and/or industry of your idea: “I have an idea for a new [device/app/process] to be used in/by [field/industry/target]. That way, the IP attorney can suggest next steps, rough costs and general timelines without getting into any potential conflicts of interest.

Patent Agents

If you’re planning on speaking to a patent agent, it may be wise to have an NDA signed before disclosing your idea since patent agents are not lawyers.

How to Review Draft Patent Applications

Reviewing a utility patent application can seem like an impossibly daunting task for applicants who don’t consider themselves experts.  It’s how I feel when my accountant asks me to review my tax return. It looks alright to me, I guess.

How do you know what to look for?

Inventors may feel tempted to approve a draft application because it’s difficult to read and the patent professionals supposedly know what they’re doing. I think inventors would help themselves immensely by focusing on two key sections and understanding their respective purposes:

1) Claims; and

2) Detailed Description (of the Preferred Embodiments) and Figures, sometimes collectively referred to as the specification.

Claims

The claims define the scope of legal protection the applicant is seeking from the USPTO.  A claim set begins with an independent claim which is typically followed by dependent claims.  Dependent claims add further claim limitations (e.g., features) to the independent claim.  Therefore, the scope of an independent claim is always the broadest in the claim set.

Here’s an example of a claim set to help illustrate the hierarchy and claim scope: Claim Structure

Independent Claim 1 recites only two elements: A and B. Therefore, the scope of Claim 1 is AB, meaning that this claim would be infringed by a product simply having those two elements. Claim 2 depends on Claim 1 and further adds element C, thereby narrowing the scope of Claim 2 to ABC. A product that includes features A and B, but not C, would infringe Claim 1, but not Claim 2. You can structure dependent claims to depend upon prior dependent claims, such as Claim 3 depending upon Claim 2 in the above example.  The scope of Claim 3 would include all prior claims linked in the chain, i.e., ABCD in this example.  Dependent Claim 4 is similar to Claim 2 in that it depends directly upon Claim 1, thereby making the scope ABE.

When reviewing your utility non-provisional application, the patent examiner will start with the independent claim, searching for prior art that discloses the combination of A and B.  If relevant prior art is found, the examiner will reject the independent claim and move on to the dependent claims, looking for prior art disclosing the additional elements. It’s common for an examiner to reject an independent claim of broader scope, but find a dependent claim of narrower scope allowable because, for example, the examiner only found the combination of AB in the prior art, but not ABC.

You can start a whole new claim set with a new independent claim differing in scope, e.g., DEF.

What typically occurs in the patent application process is that the examiner finds relevant prior art to reject several, if not all, of the original claims.  The applicant can then amend the claim scope by amending the existing claims or adding new claims.  After reviewing the Office Action claim rejections and the cited prior art references, you and your patent attorney may realize that your invention is distinguishable from the prior art because of a new feature (e.g., F).  So, you now wish to amend independent Claim 1 by adding F.

However, you cannot claim anything that was not disclosed in your specification.  That brings us to the second critical section of the application, i.e., the specification which comprises the detailed description and drawings.

Specification

The written detailed description and illustrated figures should show all the gory details of your invention, especially those features you consider unique. That way, if you ever need to claim a specific feature, the specification has it covered.

In reviewing the specification, you might feel tempted to omit or delete specific details because you don’t want to limit your patent.  The concern is understandable, but misplaced because the section that will limit your invention is not the specification. It’s the claims. Think of the specification as a toolbox containing all the parts that you may eventually use to build an allowable claim. Since you cannot foretell what prior art will be found or how the examiner will apply the prior art, you want your specification to provide sufficient ammunition for your claims. That is why you will often find a dichotomy between the broadly worded claims and the highly detailed specification.

Is my idea patentable?

Conditions for Patentable Inventions

Your concept may be patentable if it meets two conditions:

  1. eligible; and
  2. unique.

Eligibility

The types of inventions that have a higher risk of rejection based on ineligible subject matter include software, computer related technology and business methods. While it is still possible to patent software and business method inventions, you may face a potential battle with the examiner on Section 101 rejections.

Design vs Utility

If you want to protect how your invention looks, then file a design patent application.  If the appearance of your invention is unique, such as the 3-dimensional shape of an object, then you most likely have a patentable design.

If you want to protect how your invention works (e.g., functions, structures or processes), then file a utility patent application, which can be either a provisional or non-provisional application. With utility patents, eligible subject matter generally excludes inventions that consist of laws of nature, natural principles, natural phenomena and natural products with a few exceptions. As to novelty, the issue boils down to whether your concept is unique with respect to prior art.

Patentability Search

Patentability searches can help assess the level of novelty of your invention depending upon the prior art found. Such novelty searches, however, cannot guarantee success because it’s very difficult to predict what additional prior art the patent examiner may find or how the examiner will apply the prior art reference to reject your patent claims. Basically, patentability search results can provide a definitive no, but not a definitive yes. Novelty searches can also provide a roadmap for claiming your invention by focusing on key features that were not found in the search.

If you’re willing to try searching patents yourself, try Google Patents and freepatentsonline.com. Since these searches on these sites are based on keywords, use different synonyms and different combinations of terms to search for relevant prior art.

Filing a Patent Application

If you’re ready to move forward, see this post on filing a utility non-provisional application.

How to Write a Provisional Patent Application

What Is A Provisional Patent Application?

First off, there’s no such thing as a “provisional patent.” There’s only a provisional patent application (sometimes referred to as “PPA” or simply “provisional”). A provisional is a utility patent filing that opens the door to obtaining patent rights. A provisional is temporary in nature and ultimately useless if you fail to follow through with filing a timely non-provisional application. If you think of a provisional patent application as a first door, then the non-provisional application is the second door that you must open in the following twelve months. A provisional is essentially a placeholder that buys you time. Let’s delve into how to draft a provisional application.

Why file a provisional patent application?

In order to understand what makes a good provisional, you must first recognize its purpose. A provisional application gives you a filing date and patent pending status for one year. If you convert to a non-provisional patent application within that year, your non-provisional application will be back-dated to your earlier provisional filing date which is called the “priority date.” Since this back-dating benefit applies only to content disclosed in the provisional, any new subject matter added to the non-provisional does not benefit from the priority date. If you don’t convert, then your provisional will be abandoned and inaccessible to the public.

Will the Patent Office review my provisional?

No, provisionals do not get reviewed by the Patent Office (USPTO). Non-provisionals do. After a non-provisional is filed, a patent examiner may review your provisional to see if certain claimed subject matter was disclosed in the provisional in order to give the claim an earlier effective date (so that potential prior art with a later date can’t be used against you).

Why not file a non-provisional patent application in the first place?

A non-provisional is not cheap. Non-provisional applications must follow a strict format and include claims that are proper not only in form, but also in substance. The way claims are drafted differs drastically from the way your invention is described through the rest of the written specification. If your claims are too narrow, you may end up with a worthless patent. If your written specification is deficient, you won’t be able to claim features which were omitted from your description. While it’s not impossible to file a non-provisional yourself, it is definitely not advisable for those who don’t have substantial patent experience. So, you’ll likely want to hire a patent professional when you’re ready to file the non-provisional.

Discuss the problem you were trying solve

All ideas originate from a problem, concern or issue that you were trying to solve. While a description of the problem is not critical to getting a patent, it often helps in fleshing out the description of the solutions.

Identify the features that make your concept unique

Assuming existing products (aka “prior art”) inadequately address the problem, identify the new features that make your concept unique. If it helps, try completing this sentence: My invention is the first ________________. The bulk of your write-up should focus on those new features.

Be broad and narrow in describing each new feature

A robust provisional is one that provides both breadth and depth on each significant feature of your invention. For example, say you have an idea for a consumer product with new features X and Y. You should discuss each feature in gory detail. Talk about each structure, dimension, its relationship to other components, what it does and doesn’t do, what it includes and omits, etc. Don’t worry about your description being too limiting because the claims, not the description, will ultimately define the scope of your patent rights.

At the same time, you can also explain that features X and Y are not limited to the specific examples, or embodiments, shown and described. Discuss variations in structure and function that might also accomplish the same result.

Ask yourself tough questions

It has become increasingly common for the Patent Office to reject utility patent applications on the grounds of obviousness – namely, that it would have been obvious to a person of ordinary skill in the art to take a prior art product and combine/add/delete/modify it to arrive at your claimed invention. Therefore, you can strengthen your provisional by discussing reasons why it would not be obvious to come up with your invention (e.g., folks have always been doing things a certain way and would not think to do it my way because . . ., etc.). You can discuss hurdles, challenges and non-obvious factors that might cause others to stay away from your solutions.

Plan ahead for the non-provisional

Make sure to calendar the 1-year deadline for filing a non-provisional and any foreign patent applications. Our firm not only calendars this date in our docketing system for our clients, but also provides email reminders to clients on a regular basis well in advance of the deadline.  To give your patent attorney sufficient lead time, you’ll want to plan on making a decision at least as early as three months from the 1-year anniversary of the provisional filing date. So, make the most of the months following the provisional filing so that you’ll have sufficient financial resources to proceed with the non-provisional.

If you have developed new features or improvements that were not included in your provisional as filed, you should quickly follow up with a either a subsequent provisional or the non-provisional so as to obtain the earliest possible filing date for the new subject matter.

What is the cost and process for filing a trademark application?

Trademark Application Costs

Costs for applying for federal registration of a trademark with the USPTO depend largely upon three key factors:

  1. number of classes of goods and services;
  2. filing basis (whether based on actual use of the trademark or an Intent-To-Use); and
  3. the number of Office Actions from the USPTO, if any, and the type of rejections or requests therein.

Since the number of classes and filing basis can be determined upfront, our firm provides flat attorney’s fees for filing trademark applications. The variable cost factor in federally registering a trademark is the possibility that the trademark examining attorney may reject your application or issue follow-up questions and requests.

Currently, my firm charges $900 per class of goods/services, including the $275 USPTO filing fee. If the application is based on an Intent-To-Use, then our firm currently charges $400 per class to file the Statement of Use (or Amendment to Allege Use as the case may be), including the $100 USPTO fee. So, the total cost of an ITU application is $1,300 per class, not including any responses to Office Action rejections.

Reducing the Cost and Timeframe of a Trademark Application

The most practical way to reduce cost is to minimize rejections. Two of the most common rejections consist of likelihood of confusion (i.e., your mark is too similar to another trademark filing) and mere descriptiveness (your mark describes a quality, characteristic or feature of the goods/services identified in the application).

knockout trademark search helps identify potential sources of a likelihood of confusion rejection. Knowing what similar marks have already been filed by others can help you recognize obvious landmines before applying for the mark. Such searches often lead to additional brainstorming of new marks which may be less risky than the original mark. Our firm’s trademark filing package includes a knockout search at no additional cost.

Experienced trademark attorneys can also provide guidance on the potential of a merely descriptive rejection. The issue is not how common the words are, but the meaning of the words in your mark in relation to your goods or services.

Trademark Application Process

Initial Filing

We think checklists are wonderful, so we’ve provide a simple questionnaire/checklist to help clients gather the necessary information and materials for a trademark application Trademark Form-ICLG. If an ITU application is contemplated, then specimens of use and dates of first use are not required.

Office Actions

After the initial filing, it takes about 3-6 months for a USPTO examining attorney to review the application. If the examining attorney rejects the application or has any questions or requests, an Office Action will be issued giving the applicant a non-extendable 6-month period to respond.

Mark Published for Opposition

If there are no rejections or any prior objections have been fully resolved, the mark will be published for opposition. The applicant will receive a Notice of Publication identifying the starting date for the 30-day window during which any member of the public may oppose the registration of the mark. If there are no oppositions, then the USPTO will issue either the certificate of registration (for marks where evidence of use has already been submitted) or a Notice of Allowance for ITU applications.

Notice of Allowance (ITU only)

A Notice of Allowance provides the applicant with a 6-month timeframe to submit the Statement of Use. If additional is required, the applicant may request further extensions of time in 6-month increments for a maximum total of three years from the Notice of Allowance date.

Certificate of Registration

You may place the circle R symbol only after the certificate of registration has been issued. Renewal deadlines are generally at the 6-year anniversary of the registration date, the 10-year anniversary, and every ten years thereafter. Unlike patents, trademark registrations can continue indefinitely as long as the owner continues using the mark on the goods or services identified in the registration.

Filing a Utility Non-Provisional Patent Application: Cost and Process

Keep Your Invention Confidential Until After Patent Application Is Filed

This gives you the flexibility to pursue foreign patents. It also reduces the risk of someone beating you to the Patent Office under the first-to-file rule.

If you’ve already publicly disclosed your invention, you can still apply for a US patent as long as your US application is filed within one year of your earliest date of public disclosure.

Patentability Search Before Filing?

Before investing in a utility non-provisional patent application, you should consider having a patentability search done to find out what the prior art already covers.

Writing the Patent Application Part 1 – Understanding How Your Invention Is Different

It comes as no surprise that the one who is drafting your patent application should understand how your invention works. So, the first group of questions I would ask basically relates to the whats and hows of your invention. This fact-finding expedition would typically drill down into the nitty-gritty details of an invention. Our firm uses an Invention Disclosure Form to help clients flesh out these details.

Yet, I will want to know more. The key is pinpointing the potentially novel features that set apart the client’s invention from what already exists (aka “prior art”). Patent attorneys want to know where to draw the line between the old and new. A patentability search, also known as a novelty search, can be particularly helpful in this regard.

I will also want to prioritize those unique features based on their significance to the client. For example, if a client cares about only one out of five potentially novel features, then that top feature needs to be prioritized above others when it comes to drafting the claims.

Writing the Patent Application Part 2: Describing vs. Claiming the Invention

Now let’s focus on what goes in the patent application.  This is where understanding the dichotomy between the description of the invention and the claims will be hugely useful. Your patent rights will be defined by the claims, not the description. The purpose of the description is to provide support for the claims. Patent practitioners typically think of the description portion of the application as comprising the drawings (aka figures) and the Detailed Description of the Preferred Embodiments.

This is why the description section of a patent application will often seem to include a bunch of gory details that seem largely insignificant. What the patent attorney is trying to accomplish here is to describe all the features that may possibly be claimed, either now or in the future. You never know when some small detail which seemed insignificant early on will turn out to be a major distinguishing factor over the prior art. Sometimes, those details can be the absence of something that is typically found in the prior art. By expressly describing even the lack of some otherwise common feature, the description in the application is providing ammunition for the patent attorney to use if and when necessary.

Each patent attorney will have his or her own individual writing styles and preferences. My team and I prefer to start with the claims and work backwards. We find this to be a more disciplined approach as we’re forced to outline the key claim elements. Once the claims are drafted, we write the detailed description to make sure enough support is provided for the presently drafted claims as well as for any new or different claims to be prosecuted after the initial filing.

Reviewing and Revising Drafts 

In reviewing drafts of the application, the inventors should keep in mind that the claims are in a temporary state and will likely be amended, perhaps several times, over the course of prosecution. While it’s good to understand and approve of the scope of the claims to be filed, the focus should be on the description.  In particular, inventors should make sure that the description is:

  1. accurate (nothing is described incorrectly); and
  2. complete (nothing has been left out).

Don’t hesitate to suggest revisions to your patent attorney and to seek feedback on whether your suggested changes make sense.

Filing the Non-Provisional

When the final draft of the application is approved, we have the client sign the necessary paperwork, including inventor declarations and, if necessary, a patent assignment to transfer the ownership of the patent application to a company or other entity. While such executed documents are not necessary for the initial filing of the application, you will save late filing fees by having all the signed paperwork upfront.

As soon as the application is filed, the USPTO will instantly provide a filing receipt with the confirmed filing date and an application serial number.

When Can You Say Patent Pending?

Assuming that a provisional patent application had not been previously filed, the client may indicate that a product or service discussed in the non-provisional application is patent pending as soon as the application is filed with the USPTO.

Initial Filing Costs of a Non-Provisional Application

The cost of the initial filing of a non-provisional application can vary widely even within the same firm depending upon the complexity of the subject matter and the length of the application. In our firm, we provide flat rate estimates for the initial drafting and filing of non-provisional applications which can range from $5,000 to over $15,000. You should also factor USPTO filing fees and illustrator fees which can easily add at least another $1,000.

What are key dates to remember if not yet patent-pending?

Avoid public disclosure before filing your patent application

If you haven’t yet filed a patent application for your invention, it’s best to keep your invention confidential until after your patent application is filed. That way, you secure two advantages:

  1. You may beat others in the first-to-file race to the USPTO, especially if a third party may attempt to file for a similar invention after seeing yours; and
  2. Your invention is eligible for foreign patent protection.

Foreign patents: zero grace period

Securing an early patent filing date prior to publicly disclosing your invention enables you to pursue foreign patents. Followed by most foreign countries, the “absolute novelty bar” states that the filing date of the first patent filing for the invention, known as the “priority date,” must precede the earliest date of public disclosure.

You need not file in every foreign country before disclosing the invention to the public. A single patent filing with a pre-disclosure priority date is sufficient to reserve the right to file in foreign countries. For most US applicants, that first patent filing will be a US application (either provisional or non-provisional application) or an international PCT application. Counterpart foreign applications may then be timely filed and backdated to the priority date of the first patent application.

We strongly recommend that you avoid publicly disclosing your invention until after your patent application has been filed. Even if you have no interest in foreign patents at the time of the initial US filing, things may change.

What if you’ve publicly disclosed your invention prior to filing a patent application?

All is not lost, at least as far as the US is concerned. If you want to patent in the US only and you don’t care about foreign patent rights, then you have up to 1 year from your earliest date of public disclosure to file a US patent application. However, don’t wait until the 12th month to file your US application. Each day you wait, the prior art grows as others apply for similar inventions.

Use an NDA so that disclosure of your invention is not public

To avoid publicly disclosing your invention, use a non-disclosure agreement when working with vendors and other parties. Many investors will not be willing to sign an NDA so you should consider filing a provisional application prior to raising capital.

Easy Way to Remember Two Critical Patent Deadlines

One easy way to remember these two deadlines is to memorize “0/1yr.” If you want to reserve the option of pursuing foreign patents, then you have no grace period, i.e., zero days to file after your public disclosure. If you want to patent in the US alone, then you have a 1 year to file your US application from your earliest date of public disclosure.

In summary:

Foreign patents: zero grace period

US patents: 1-year grace period