A Special Brand of Claim Drafting

Sometimes an invention employs a proprietary branded product and the only way to describe and claim it is to refer to it by the trademark.  This presents unique problems for the patent prosecutor because a branded product is usually not in the control of the patent applicant, and thus can change after the application is drafted and filed.  This is a particular problem in the claims, where the changing scope could invalidate the claim or make the claim impossible to infringe.  The MPEP addresses the use of trademarks in a patent application:


VELCRO appears the claims of 2077 patents, TEFLON appears om the claims of 3585 patents, ETHERNET appears in the claims of 7425 patents, and JAVA appears in 3690 patents.  For examples, see U.S. Patent No. 6,959,462, Claim 2 (VELCRO); U.S. Patent No. 8,485,489, Claim 12, and 8,062,571, claim 4 (TEFLON); U.S. Patent No. 8,457,003, Claims 2, 3, U.S. Patent No. 8,422,359, claim 10, and U.S. Patent No. 8,363,655, claim 5 (ETHERNET); and U.S. Patent No. 8,330,862, Claim 4, and U.S. Patent No. 8,254,757 (JAVA).

When Being Critical is Critical

It is well established that a patentee may limit the scope of the claims by disavowal, and one of the many ways such disavowal can occur is by criticizing the prior art.  When a patent specification criticizes the prior art, it is presumed that the invention does not share the criticized featuers.  Thus in Chicago Board Options Exchange, Inc., v. International Securities Exchange, LLC., (Fed. Cir. 2012) the Federal Circuit affirmed the district court’s finding of disavowal noting that “the specification goes well beyond expressing the patentee’s preference for a fully automated exchange over a manual or a partially automated one, and its repeated derogatory statements about the latter reasonably may be viewed as a disavowal of that subject matter from the scope of the Patent’s claims.”  Criticism of the prior art also limited the claims in In re Abbott Diabetes Care, Inc., (Fed. Cir. 2012), but this time to the applicant’s advantage.  Abbott successfully argued that the broadest reasonable interpreation of its claims on appeal was at least in part limited by its criticism of the prior art.

A patent prosecutor should be aware of the limiting effect of criticisms of the prior art.  Sometimes they help the applicant (Abbott), but sometimes they hurt (Chicago Board).  Like most things in the law, an absolute rule against being critical of the prior art is not appropriate, but it must be done carefully and thoughtfully.  Moreover, a good prosecutor will recall that the MPEP prohibits disparagement of the prior art:

Maybe Mom had the best advice for prosecutors. . . “If you can say anything nice, don’t say antyhing at all.”

Copyright in Patent Text and Drawings

There has been alot of comment recently about the fact that Fig. 5 from Google’s U.S. Patent Application 2013/0181936:

Fig. 5, US Patent Application No. 2013/0181936

looks alot like Fig. 12 from Apple’s U.S. Patent No. 8,089,233:

Fig. 12, US Patent No. 8,098,233

If one of these figures was copied from other, would this be copyright infringement?

37 CFR 1.71(d) alows a copyright or mask work notice to be placed in a design or utlity patent adjacent the material for which copyright or mark work protection is claimed.  Inclusion of copryight notice is only permitted if the authoriziation of 37 CFR 1.171(e) is also included:

A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.

37 CFR 1.84(c) permits copyright notice on patent drawings under the condidtions.

M.P.E.P. 608.01(v)(II) staes that:

The inclusion of a copyright or mask work notice in a design or utility patent application, and thereby any patent issuing therefrom, under the conditions set forth above will serve to protect the rights of the author/inventor, as well as the public, and will serve to promote the mission and goals of the U.S. Patent and Trademark Office. Therefore, the inclusion of a copyright or mask work notice which complies with these conditions will be permitted. However, any departure from these conditions may result in a refusal to permit the desired inclusion. If the authorization required under condition (C) above does not include the specific language “(t)he (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent files or records,…” the notice will be objected to as improper by the examiner of the application.

However, does the absence of copyright notice and authorization of 37 CFR 1.71(d),(e) dedicate the copyrighted material to the public?  Copyright notice is not usually a prerequisite to copyright protection.  The Berne Convention prohibits the imposition of formalities such as notice or registration as a prequisite to copyright protection.  It would not seem that the U.S.P.T.O. could impose by implication from its regulations, a requirement of copyright notice as a prerequisite to copyright protection.

Whether or not copyright notice is a prerequisite to protection, it seems like a good idea, and U.S. Patent No. D687,048, which issued on July 30, 2013, illustrated how it can be done.

US Patent No. D687048