January 2009

Patent Applications – Written Description Requirement

One of the most important aspects of the written description is to provide a clear description of the invention for which patent protection is being claimed. The claims of the patent define the boundaries of what is to be protected by a patent, and, in a patent infringement action, the analysis of whether a patent has been infringed will begin with a construction of the claim language to determine whether an aspect of an invention is protected at all. In addition, the written description described within the specification of the patent serves the main objective of patent law by placing within the public domain the knowledge of the invention, including the manner of making, using and practicing the new ideas embodied by the invention.

Under U.S. Law, the patent application must meet certain requirements, including describing in sufficient detail the manner and process of making and using the invention to be patented in sufficiently full, clear, concise, and exact terms. This description must enable a person of ordinary skill in the field in which the invention is classified (the “art”) to make and use the invention. This requirement ensures that the invention is described and communicated to the public in a meaningful way so that the invention contributes to public knowledge; accordingly, a patent claim may be ruled invalid if it is not supported by an enabling description.

The best mode requirement ensures that an inventor discloses the best way he or she knows of making and using the invention. This prevents an inventor from providing public knowledge of a functional yet inferior invention while keeping for his or her own benefit a better invention. Failure to disclose the best mode of making and using an invention may lead to the invalidation of a patent. Determination of whether the best mode has been disclosed is largely a subjective process. An inventor is not required to disclose as the best mode the use of a material in the invention that would render the invention commercially impractical even though use of that material would enhance the performance of the invention. In addition, if certain aspects of an invention perform equally well with several alternatives, the best mode requirement does not require an inventor to choose among the alternatives.

Patent Infringement — Doctrine of Equivalents

As previously described, when a patent is applied for, the inventor must include a specification, including the written description of the invention. The specification concludes with a claim or claims that particularly point out and distinctly claim the subject matter that the applicant asserts to be the invention to be patented. One of the purposes of claims is to put the public on notice as to what inventions have been patented and may not be patented again. Therefore, the language of claims is exceedingly important in a patent application because, in the event of a patent dispute, the language of the claims will define the scope of the patent protection.

Ordinarily, even if patentable, any part of the invention that is not included in the claims will not receive patent protection. Generally, each claim must conform to the description of the invention set forth in the specification.

In the event a patent is infringed, the patentee may sue under theories of literal infringement or under a theory of non-literal infringement also referred to as the doctrine of equivalents. Literal infringement means each and every element is met by the infringing device. This theory is often harsh in that it requires matching every element of the invention as claimed with a corresponding element on the infringing product. For example, if a patentee describes an invention in terms of two wheels and the infringing product includes two casters, the product may not infringe, even the wheels and casters are very similar.

The doctrine of equivalents represents a certain flexibility in evaluating infringement by evaluating the language of a patent claim. Under the doctrine of equivalents, if an invention that is claimed to infringe a patent does not come within the language of a patent claim and, thus, seemingly does not infringe the patent, a patentee might still prevail against an infringer if the changes in the infringing product are so slight that the elements of the infringing product should be considered to be equivalent to the patented invention. This provides patent protection against devices that make insubstantial changes that the inventor may not have foreseen and, thus, did not include within his or her claim.

There are certain limits to the application of the doctrine of equivalents. During the patent process, part of a claim may be found to have already been patented and thus does not qualify for a patent. A patent applicant will accordingly amend the subject matter of the claim so that there is no overlap with existing patents. In such a case, a patentee may not later seek protection of the subject matter that was removed from his or her claims by invoking the doctrine of equivalents. This limitation on the doctrine of equivalents is known as “prosecution history estoppel.” The doctrine of equivalents may apply, depending upon the particular circumstances, to amendments made to a claim that expanded the subject matter of the original claim rather than relinquished subject matter. The doctrine of equivalents may not be invoked in order to claim protection of an invention that is in the public domain.

Trademarks — Actual versus Intended Use

Trademark rights are gained by actual use of a mark rather than by registration. Generally, the first party who uses a mark in commerce has the right to use the mark in that geographic area as well as in the natural zone of expansion for that geographic area. Any shipment of goods bearing the trademark across a state line in the normal course of business satisfies the “use in commerce” requirement. Token sales made solely to establish trademark use do not constitute legally sufficient “use.”

If a mark is not actually being used but someone has the “bona fide intent” to use it in the future, the use of that mark may be secured by filing what is known as an “Intent to Use” Application with the United States Patent and Trademark Office (USPTO). The filing of an Intent to Use Application essentially reserves the mark in incremental periods of six months. Thereafter, the USPTO must be satisfied that the mark is being used or the right is lost.

Sometimes a state registration is filed by someone who is using a mark locally. This really doesn’t give any additional benefits other than what is gained by actually using the mark in commerce, but it does serve to put the world on notice of use of the mark.

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the USPTO has the ultimate right to use and register the trademark.

Trade Dress Protections

Trade dress is governed by the same set of laws that protect unregistered trademarks. While traditional trademark law protects words or logos, trade dress law protects the look and feel or total packaging and design of a product. In some cases, the overall look and feel of an item may often serve the same function as a trademark or service mark. The overall look and feel may be used to identify the source of a good or service in the marketplace. Trade dress is protected under the federal trademark laws and in some cases registered as a trademark or service mark with the United States Patent and Trademark Office.

When Trade Dress is Protectible

To be protectable, trade dress must be inherently distinctive or possess secondary meaning, which means that the public associates the packaging with a single source. Such evidence of secondary meaning may be shown through long term use of the design, large volumes of sales and advertising, unsolicited public comments concerning the design, licenses and requests to license the design, copying of the design and consumer testimony concerning the design. Additionally, the trade dress must be nonfunctional.

Infringement of Trade Dress

Protectible trade dress is infringed when a “likelihood of confusion” exists between a plaintiff’s trade dress and a defendant’s trade dress. The similarity between trade dress is gauged by the “ordinary buyer” standard, that is, whether an ordinary buyer would believe that both products came from the same source. Courts weigh various factors to determine likelihood of confusion, including the following:

  • the strength or distinctiveness of the trade dress;
  • the intent to copy and “cash in” on plaintiff’s reputation and goodwill;
  • the similarity of the products;
  • evidence of actual confusion;
  • degree of care exercised by buyers; and
  • the area, manner, and degree of concurrent use.

Trade Dress Rights

Similar to trademark protection, trade dress rights arise from use of the particular trade dress. Generally, trade dress rights become stronger the longer and more extensively they are used. When a party is successful in establishing a protectible trade dress interest, that party may assert its rights against others offering goods having a confusingly similar trade dress. The overall appearance of the articles or their packaging is then compared to determine whether the trade dress at issue is infringed.

Foreign and International Copyright Protection

There is no such thing as an “international copyright” that automatically protects an author’s works throughout the world. Protection against unauthorized use in a particular country depends on the national laws of that country. However, most countries offer protection to foreign works under certain conditions that have been greatly simplified by international copyright treaties and conventions. There are two principal international copyright conventions, the Berne Union for the Protection of Literary and Artistic Property (Berne Convention) and the Universal Copyright Convention (UCC). Generally, the works of an author who is a national or domiciliary of a country that is a member of these treaties or whose works were first published in a member country or published within 30 days of first publication in a Berne Union country may claim protection under them.

Berne Convention

The United States became a member of the Berne Convention on March 1, 1989. There are no formal requirements in the Berne Convention. The United States changed its law on March 1, 1989, making the use of a copyright notice optional because the Berne Convention prohibits formal requirements that affect the “exercise and enjoyment” of the copyright. United States law, however, still provides certain advantages for use of a copyright notice; for instance, the use of a copyright notice can defeat a defense of “innocent infringement.”

Universal Copyright Convention

The United States became a member of the UCC on September 16, 1955. Under the UCC, any formality in a national law may be satisfied by the use of a notice of copyright in the form and position specified in the UCC. A UCC notice consists of the symbol (c), which is a C in a circle, accompanied by the year of first publication and the name of the copyright proprietor. The notice must be placed in such manner and location as to give reasonable notice of the claim to copyright.

Bilateral Agreements and National Laws

Even if a work cannot be brought under an international convention, protection may still be available in other countries by virtue of a bilateral agreement between the United States and other countries or under a specific provision of a country’s national laws. An author who wishes copyright protection for his or her work in a particular country should determine the extent of protection available to works of foreign authors in that country before the work is published anywhere because protection may depend on the facts existing at the time of first publication. There are some countries that offer little or no copyright protection to any foreign works.