Though the U.S. Patent and Trademark Office (USPTO) has reduced patent prosecution time a bit during the past five years, it still takes, on average, at least 18 months before the patent examiner acts upon an application. Throw in two or more office actions, and the average pendency of a patent application is more than three years from the filing date to either issuance or abandonment. However, a number of programs are available that can significantly reduce prosecution time.
Track One prioritized examination (PE) was introduced in September 2011 and provides expedited examination of a patent application for an additional fee. Though the additional fee is $4,140 ($2,070 for small entities), examination is significantly compressed. On average, PE results in either a notice of allowance or a final rejection in about seven months. Applicants must request PE at the time the application is filed, or at the time a request for continued examination (RCE) is filed.1
Accelerated examination (AE) also continues to be available, but is generally less desirable than prioritized examination. An AE petition only requires an additional fee of $140, but the other requirements are burdensome. In particular, the applicant must not only conduct a patentabilty search before filing the application, but also submit an Examination Support Document (ESD). The ESD must identify where each claim limitation is supported in the specification and describe how each claim is patentable over the closest prior art — including identifying any claim limitations that are disclosed in the prior art. As …
By now, you probably have heard of the infamous “left shark” in Katy Perry’s Super Bowl XLIX halftime show, who went off script and did its own moves during “Teenage Dreams” and “California Gurls.”
So much buzz built about the shark that a 3D printing service, Shapeways, starting offering Left Shark models online, which prompted a letter from Perry’s attorneys insisting that the service stop sales immediately, claiming that the shark character was protected by copyright.
Shapeways sent a response stating that it did not appear that Perry owned the copyright for Left Shark (because a copyright is owned by the “author,” in this case the costume designer, and she did not design the costume), and that she had no basis because courts have held that costumes are useful articles and, thus, ineligible for copyright protection.
But wait! Though a costume may be classified as a useful article, courts also have held that design elements that are separate from the function of “clothing” are eligible for copyright. In fact, the U.S. Copyright Office lists a registration for “Shark costume; Children’s shark costume” (VA0000624682) owned by the Children’s Museum of Indianapolis.
Whether Perry does, in fact, own the copyright is yet to be determined, but this exchange is a lesson for business owners who send cease-and-desist letters without thinking about the consequences. In the past few days, the Internet has spiked with anti-Perry comments, and the model has been downloaded more than 11,000 times. Probably not the result Perry desired.…
As we reported last year, one of the issues that has divided the U.S. Court of Appeals for the Federal Circuit (the CAFC) for nearly 20 years is the proper standard of appellate review of patent claim construction rulings. No less than four CAFC en banc decisions addressed the issue. In each instance, the majority applied a strict de novo standard for appellate review with no deference to the trial court even with regard to underlying factual determinations, while vigorous dissents objected to this standard.
The dissenters have been vindicated, as the Supreme Court has now held that a trial court’s underlying factual determinations with respect to extrinsic evidence used in patent claim constructions must be reviewed on appeal under the clearly erroneous standard. This decision should, at least in theory, result in an increase in claim construction affirmances by the CAFC. It remains to be seen, however, whether there will be a significant increase.
Patent claim construction basics1
The scope of a patent is defined by its claims, and construing those claims is the heart and soul of nearly all patent litigation. The meaning of the words and phrases used in the claims is critical to not only the question of infringement, but also patent validity.
The task of construing the meaning of patent claims is a question of law for the court — not a jury — to decide. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). Claim terms are given their ordinary and customary …