,

Prafiiq9,:j~~~~~~,i\~,~§~,~~w~f~l~gri";8~"8;8'!il;' ,.....,.::;;.:)~;;:Part4:Eff~~tiv~TrCl~em,~~)SearchiQg .:i:i;

, ' i '

continued onp.8

Protecting your company's traderrnrk rightsrrey notbeas complicated asyounight think.Here aresome simple strategies thatyou canimplement to protect your company's trade­

.rrark rights without rraking a big impact onthe bottom line.

Choose a Protectable MarkNotall traderrarks are considered equal. Forexample, a rrark that is descriptive, or onethat describes a product's physical character­istics, generally is not eligible for traderrnrkprotection. lncontrast, a fanciful or sugges­tive mark is protectable. If you are uncertain

ln a little-publlcized change, Congress addeda provision to the patent code intheAmaricanInventor's Protection Act of 1999 ('~IPA')that

givesclaim; in published U.S. patent applica­tionsthesame one-year statutory interferencebar afforded issued patent clairrs, The provi­siongivesthe applicant of a filed patent appli­cation one year from the publication date ofanearlier filedpatent application to include po­tentially interfering claim; in a U.S. patent ap­plication. [faninterfering claimisnot includedin an application filed within the one-year pe­riod, thenthe Applicant of a laterfiledapplica­tion is effectively barred from attempting to'provoke an interference against the offendingapplication and resulting patent.

.The new provision also appears to apply topublished PCT patent applications - inany lan­guage - thatdesignate theUnited States. Thisputs the impetus on companies who are de-

twhether or not a proposed brand name is de-scriptive, consult with a traderrark attorney,,who can steeryou away from rrarks that arenot protectable. !

iPerform a Trademark Clearance Search. ,Before dedicating your corrpary's resourcesto a newbrand name for a prod~ct, it can bevery beneficial to performa tra~errnrk clear­ance search. A trademark search can be assimple asaccessing theUS. PatJnt andTrade-

rrrark Office's website at www.uijpto.govand

tf

continued onp. 7 I,

j'

veloping valuable technology of who are inhighly competitive fields of techn6[ogy to rroni­

. I

tor the claim; of both published U.S. patentapplications and published PeT/patent appli-

r . Ica Ions. II

The new provision further provices incentivesfor U.S. patent applicants to expedittously fileandpublish their U.S. patent applicatlons, be­cause it will protect them from!competitors'attempts to use a patent appliqation that isfiled rrore thanoneyear after p~tent publica­tion to provoke an interference. I

f1

The Published Patent AipplicationStatutory Interference Bar IPriorto the enactment of AIPA, qnecouldnotprovoke an interference against an issuedpatent If a "claimwhich is the sa!re as, or for

II~1.

~at~l;itIVall~i~Y~~~~~~mel;it~~ii,<:C«,<:i<iiY~HrGui~~ tQA"oidiQgJ~e On-Sale.lJarr.~a(tj1

The onsale bar to patentability. Fewthings can be more devastating to acompany's patent portfolio andbusinessstrategythanto have a keypatent irvali­datedunder35 U. S. C. § 102(b)becausethe invention was on sale more thanoneyear prior to the fiiing date of the patentappiication ('the critical date'). An invali­dation based onanon-sale bar is particu­larlydevastating because it is almosten­tirely avoidable and within a patentowner's control to prevent. Although itdoes notmatterwho places the invention"on sale," typically, it is the inventor orassignee that creates the issue by rrak­ing an offer for sale prior to the criticaldate.

In 1998, the Suprerre Court set forth atwo-prong test to govern the appiicationof the or-sale bar: "First, the productrrust be the subject of a cornrrercial of­fer for sale ... Second, the invention rrustbe ready for patenting." Pfaff V. WellsElecs., Inc" 525 U.S. 55, 67 (1998). Inthis first of a two-part series, we will ad­dress when a transaction is a corrrrer­cialofferfor sale under Pfaffandprovideguideiines to help you, as inventors andinhouse counsel, avoid the rristakesthatcan leadto.invalidation under theon·salebar.

Inaneffort to clarifythefirst prong of thePrafftest, the Federal Circuit has speci­fied that To]nly an offer which rises tothe ievel of a cornrrercial offer for sale,one which theotherpartycould make intoa binding contract bysimple acceptance(assuningconsideration), constitutes anofferfor sale under § 102(b)" Group One,Ltd. v. Hallmark Cards, Inc., 254 F.3d1041, 1048 (Fed. Cir. 2001). Addition­ally, Federal Circuit law; notstatecontractlaw, controis the issue of whether a par­ticular comrrunication rises to the level

. 2 Vol. 2, Issue 1,Aplil 2004

of a "cornrrercial offer for sale,"andtheFederal Circuit in turn looks to the Uni·form Cornrrercial Code (''UCC') for guid­ance. Lacksindus., Inc. V. McKechnie Ve·hicle, 322 F.3d 1335, 1347 (Fed. Cir.2003).

While this legal frarrework appears simpleenough on its face, the Federal Circuit'sapplication of thisfrarrework has resultedinsorre invaiidating transactions thatyounight not have expected. Forexample,Federal Circuit law has set forth that theinvalidating sale or offer to sell rrust bebetween two separate entities. NetscapeCommunications Corp, V. Konrad, 295F.3d1315, 1324 (Fed. Cir. 2002). Sur­prisingly, the lawon offers for sale evenencompasses transactions suchassalesbetween joint inventors. Therefore, asalebetween separate and distinct legal enti­ties qualifies as a sale under the statu­tory bar even where there is an overlapof ownership between the buyer andseller. Brasseler USA I L.P. V. StrykerSales Corp" 182 F.3d 888, 890 (Fed Cir.1999). This lawalso encompasses con­tracts with suppliers. Infact, the FederalCircuit has specifically rejected making a''supplier'' exception to the on-sale bar.SpecialDevices Inc. If. OEA, Inc. 270 F.3d1353, 1355 (Fed.Cir. 2001). Therefore,a contract to supply goods, including acost-plus type of contract, constitutes asales contract, regardless of the rreansusedtocalculate payrrent and regardlessof whether the goods are to be usedfortesting in a laboratory or for deployrrentin the field. Zacharin If. United States,213 F.3d 1366, 1370 (Fed Cir. 2000).Additionally, atransfer of funding betweentwo academe research facilities is alsoencompassed, even when the fundingoriginated from the same source.Netscape, 295 F.3d at 1324. Whetherthere isanonsalebarappears to depend

entirely onwhether the sellerso controlsthe purchaser that the invention remainsout of the public's hands. Id.

The or-sale bar applies even if the offerfor sale was unsuccessful (Scaltech Inc.v. Retec/Tetra LLC, 269 F.3d1321, 1328(Fed. Cir. 2001» or took place in secret(Special Devices Inc., 270 F.3d at 1357).As longas the offer provided sufficientlydefinite language to constitute acorrrrer­cial offer for sale within the meaning ofthe statute, thenthe or-salebar applies.Furtherrmre, appreciation of the inventionis nota requirement to trigger theon-salestatutory bar. "If the process that wasoffered for sale inherently possessedeach of theclaimlirritations, thenthepro­cess was on sale, whether or not theseller recognized that his process pes­sessed the claimed characteristics."Scaltech Inc., 269 F.3d at 1330. Finally,for a process patent, even if the claimedprocess itselfwas notofferedfor sale butwas onlyoffered to beusedbythe paten'tee for a third party, the offer is not out­side the onsale bar rule. Id. At 1329.

Before youget toodiscouraged, there aresome activities thattheFederal Circuit hasheld do not trigger the or-sale bar. Forexample, merely granting a license to aninvention, without rrore, does nottriggerthe on-sale barof § 102(b). In re Kollar,286 F.3d 1326, 1329 (Fed. Cir. 2002).Additionally, preparations for sale alonecannot give rise to anonsale bar. Prepa­ratory activities, suchas internal corrrru­nications between inventor/assignee andits sales reps, do not constitute anofferfor sale to a customer not privy to thecommunications. Publication of prelim­nary data sheets and prormtional infor­mation for the invention, so longasthey'communicate nothing to customers aboutthe inventor/assignee's intent, donottrig-

ger the bar. LinearTech. Corp. v. Micrel,Inc., 275 F.3d 1040, 1050 (Fed. Cir.2001). And, in the often used exampleof the Federal Circuit, an individual inven­tor taking a design to a fabricator andpaying the fabricator for its services infabricating a few sample products wouldnot raise the onsale bar. SeeBrasseler,182 F.3d at 891.

While mere advertising and prormting ofa product in and of themselves do nottrigger the bar, you mustpay special at­tentionto the language used inthese ac·tivities. The language of the advertise­ment or prormtional material may putreaders on noticethatyouwillmake suchoffersto sell inthenear future, but it mustbe clear that anoffer is not being madetoday. Linear Tech, 275 F.3d at 1051.In particular, language suggesting rmreprelirrinary negotiations, suchas" quote"or ''are you interested" should beusedinlieuof language suggesting a legal offer,such as "I offer" or " prornse." GroupOne, 254 F. 3d at 1048. One mustalsokeepin rnnd that responding to an irvita­tion raised by an advertisement or pro­rmtional rraterial may itself be an offer;Id. at 1048 (citingRestatement (Second)of Contracts §26 (1981».

As a side note, while the issue of experi­mental vs. comrercial sale istoo lengthya topic to include in this article, in Pfaffthe Supreme Courtexpressly maintainedthat proof of experimentation serves tonegate the section 102(b)statutory bar.EZ Dock Inc. II. SchaferSys.. Inc., 276F.3d 1347, 1352 (Fed. Cir. 2002)

So, what practical advice can you takeaway from the Federal Circuit's applica­tion of the first prong of the Pfaff test?Firstof all, try to keep closetabsonyourcompany's marketing and sales depart-

I,ttf

Iments. In particular, be ~ware of andclosely rmnitor any pre-sale activitiesconducted by these departrrents, Anydiscussions or contacts ~th someoneoutside of your company «.e., an entity

tnot underyour company's 'jontrol)abouta new product or potentialjnew productshould be a redflag that triggers promptfurther investigation. The kh is to makesure that noonecrosses th~ line between"preparation"for release of the new prod-

fuct and "offers" to sell the pewproduct.When in doubt, assume th~ activity hasstarted the one-year clock! and get thepatent application on file ~ithin that pe-

riod. IIn an upcorring issue of sl~ippetsTM, wewilladdress thesecond pro~ of thePfafftest, to helpyou deterrrin~ when the ln­vention is ''ready for patentIng"

IIt

IIf

II

!f

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sn'ij)'clets 3

~!

I

;¢I.c1im;C~~sir~~ii9i1191fl(;;;?;!r;;i;!iii .,Unlocki~gthe Meaning of pre~l11bl~s

'I

Deterolning whether a patent claims pre­arrble is a lirritation retrains a difficult'

task. Generally, prearroles are thoughtof as introductory language that merelyset forth an intended purpose for the ln­

vention, not a limiting one. Not lntre­quently, however, courts havefound that

a claims prearrble acts as morethan this,and actually serves as a llmtatlon, Be­causethe Federal Circuit has provided noconcrete rulesfor interpreting prearrbles,tbereis no sureway to knowif a prearrblewill be construed as lirritirg. Thus, muchuncertainty retrains in this area for thosetrying to evaluate the scope of clairrs,

Federal Circuit Framework for Con­struing PreamblesThe Federal Circuit has stated: "A claim

prearrble has the import that the claimas a whole suggests for it." BellCommu­nications Research, Inc. v. Vitalink com­munications Corp., 55 F.3d 615, 620(Fed. Cir. 1995). if the claim prearrble,when read in the context of the entireclaim recites lirritations of the claim or,

if the claim prearrble is 'necessary to givelife, meaning, and vitality" to the claimthen the claim prearrble should be con­strued as part of the claim Kropa V.

Robie, 187 F.2d 150, 152 (C.C.P.A.1951). if, however, the body of the claim

fully describes the compiete invention,

includingall of its hrntatlons, andthe pre­

arrbEffers no distinct definition of anyof e claimed invention's lirritations, but

ra er merely states, for exampie, thepurpose or intendeduse of the invention,then the prearrble is of no significance toclaim construction because it cannet besaid to constitute or explain a claim lim­tation. Id. These characterizations ofprearrbles provide little guidance, servo

ing merely to, confirm that there is no

bright line rule and that the effect of theprearrble on claim construction depends

4 Vol. 2, Issue 1,April 2004

on the circurrstances. See, e.q., AppliedMaterials, Inc. V. Advanced Semconduc­tor Materials Am., Inc., 98 F.3d 1563,1572·73 (Fed.Cir.1996) ('Whethar a pre­arrble stating the purpose andcontext of

the inventionconstitutes a lioltation of theclaimed process is cetermned on thefacts of each case in light of the overallform of the claim and the invention asdescribed in the specification and illurri­nated in the prosecution history.').

Clearly, this framework is difficult to ap­ply because interpreting the scope ofwords is inherently subjective, especiallyusing such vague rules. Thus, to clarifythe effect of a preamble on a claimsscope, courts generally apply the usualcanons of claim construction: (1) claim

language under the plain meaning rule;(2)written descriptionof the specification;

and (3) prosecution history-the state­ments rrade by patent counsel to theUSPTO during the procurement of thepatent.

Plain Meaning Rule

The plain meaning rule dictates thatcourts should follow the explicit languageused in the clalrrs when construing them"Interpreting what is meant by a word in aclaim 1S not to be confused with adding

an extraneous llmtation, ... which is improper.''' Storage Tech. Corp. V. CiscoSys., tnc., 329 F.3d 823, 831 (Fed. Cir.2003) (citation orritted) Thus, if tbever­biage of the claim clearly indicates thatthe prearrble is not intended to act as a

llmtation, courts generallydo not disturbthe plain meaning of these words. Fur­ther, courts will look at the words themselves and how they relate to the otherparts of the clairrs for construction. Forexample, a prearrble that provides arte­

cedent basis for lirritations later recitedinthe body of the claim rray be construed

bycourts as a limtation becausethe plainmeaning of the words used in this con­

text rray suggest an inten~ to rely uponthe preamble. Catalina }ytktg. lnt'l v.Coolsavings.com, Inc., 2~9 F.3d 801,808 (Fed. Cir. 2002). '

~The Federal Circuit adcressed the issueof whether a claim prearrble constitutesa claim lirntation in Bristol-fr/yers SquibbCO. V. Ben Venue Labs., tnc., 246 F.3d1368 (Fed. Cir. 200l)("BMb The BMScourt considered whether la claim to a

{rrethod of treating cancer WfJs patentableover prior art disclosingthe Same method

~

but where no anticancer effect was ob-served. One claim at issud read:

';jj

1. A rrethod for reducingIIermtologictoxicity in a cancer pati~nt undergo­ing taxol treatment cornprlslng

parenterally admnisterirg to said pa­tient an antineoplastlcally effective

!amount of about 135-1\75 rrg/m'taxol over a period of ~bout threehours.

In finding the prearrble to tact as an in·tended result and not a limitation, thecourt cited In re Hirao, 53~ F.2d 67, 70(C.C.PA 1976), which helcjthat the pre­amble does not constitute a llmtation

where the prearrble rrere~ recites thepurpose of the process, the)remainderof

the claim does not depen~ on the pre­arrnle for completeness, apd the body's

process steps are able tolstand alone.264 F.3dat 1375. ;

Therefore, if the plainrreani,k of the bodyof the claim can support itsJlf without theinclusionof the prearrble, c6urts are less

:1

likely to view the prearrole as a limta-tion.,

Written DescriptionWhile the plain rreaning of the claimsgoverns, courts faced with any arrbigu­ity will read the claims in light of the writ­ten description and the.prosecution his·tory. Thus, if the specification's writtendescription explicitly relies uponthe pre­alYble to define the invention and holdsout the prealYble as an integral portionof the invention, a court will likely viewthe prearmle as an essential portion ofthec1airred invention. SeeStorage Tech.Corp., 329 F.3d at 834·35; see alsoCatalina Mktg. tntt, 289 F.3d at 808(,1.WJhen reciting additional structure orsteps underscored as irrportant by thespecification, the prealYble rrayoperateas a claim lirritation.'). For exarrple, awrittendescription that describes anele·mentof the prealYble asessential to over­come prior art would likelybe lirriting onthe claim See Catalina Mktg. Int'l, 289F.3d at 808·09. Thus, a writtendescrip­tion that indicates the intended weight ofa prealYble rray be deterrrinative, espe·ciallyif it contains language that indicatesthe intended purpose of the preamblephrase is absolutely required.

.Prosecution Histo!)'Courts alsoexarrine prosecution historyto interpretwhatis rreant by patent pre­arroles, For example, if the applicantrelies uponthe prealYble language in de·finingthe present invention overthe priorart, a court will likely construe the pre­arrole as a Iirritation.

In Invitrogen Corp. v. BiocrestMfg;, 327F.3d 1364 (Fed. Cir. 2003), the FederalCircuit examined the preamble of amethod claimwhichread "A process forproducing transforrrable E. coli cells ofirrprovedcompetence bya process comprising thefollowing steps inorder.... " Atissue was whetherthe phrase of irrproved

competence 0.e., capability of taking innew DNA) served as a claim Iirritation.The court notedthatgenerally claims areinterpreted bytheir "ordinary rreaning" asdefined by the "context supplied by thefield of invention, the prior art, and theunderstanding of skilledartisans gener­ally." id. at 1367. Further, the specifica­tion can supplymeanings for terms, andthe prosecution history canhelpillurrinatea claim's scope. Id. In Invitrogen, thecourt ultirrately foundthe. prealYble of aclaim lirriting because the applicants reolied heavily upon the prealYble in pros­ecution to distinguish the invention fromthe prior art.

Sirrilarly, inStorage Technology, 329 F.3dat 834, the Federal Circuitfoundthat theprealYble of a rrethod claimat issue limited the claim The court first looked atthe written description of the specifica­tion, which noted that a 'forwarding ce­vice" mentioned in the prealYble was a"key benefit of the invention." Id. Next,the court exarrined the prosecution his­tory, inwhichapplicants haddistinguishedtheir invention over the prior art basedon the prealYble's lirritation. Id. at 835.Notably, 'lc]lear reliance onthe prealYbleduring prosecution to distinguish theclairred invention fromthe priorart trans­forms the prealYble into a claim Iirrita­tion because suchreliance indicates useof the prealYble to define, in part, theclaimed invention." Id. (citation orritted);cf. id. at 831 (,1.WJhile properclaimcon­struction requires an exarrination of thewrittendescription andrelevant prosecu­tion historyto deterrrinethe meaning ofclaim limitations, additional limitationsrray not be read into the claims.'').

continued onp.6

sn'iji'p;~ts 5l_~"": t

Claim Construction Roundtable:Unlocking the Meaning of Preambles

. continued fromp. 5

Recent Application of the PrinciplesCurrent Federal Circuit case law contln­ues to apply the three canons of ciaimconstruction discussed above to analyzeciaimprearrbies, but the results are notas ciearas one rright hope,

For exampie, inJansen v, Rexall Sundown,Inc" 342 F,3d 1329 (Fed, Cir, 2003), thecourt considered andapplied these prin­ciples in deterrrining that the prearrbiein the following ciaimconstituted a ciaimlirritation:

1: A method of treatingor preventingmacrocytic-megaloblastic anemia inhumans which anerria is caused byeitherfolic aciddeficiency or by vita,rrin 8[12] deficiency which comprisesadrrinistering adailyoral dosage of avitarrinpreparation to ahuman inneed .thereofcomprising at leastabout0,5rrg.ofvitarrin 8[12]andat leastabout0.5 rrg. of folic acid.

The court relied on both the plain rrsan­ingand prosecution historyin supportofits conclusion, First, relying on the plainand ordinary meaning of the claim lan­guage, the court emphasized the irrpor­tance of the relation of (a)the prearrblelanguage characterizing the claimedmethod as one 'for treating or prevent­ing rracrocytic-rregaloblastic anemia"and (b) the recited application of themethod 'to a human in need thereof,"which referred backto the prearrble. ld.at 1332·33. The court characterized theprearrble as setting forth the objectiveof the method andthe bodyof the claimasdirecting thatthemethod beperformedon someone 'jn need thereof." Id. Thecourt concluded that the recitation of "ahuman in need thereof" injected IWe and

6 Vol. 2, Issue 1,April 2004

meaning intothe statement of purpose in .the preamble, presumably because theprearrble served to ciarify the meaningof the lirritation '1n need thereof"appear­ing inthe bodyof the ciaim td.

Second, thecourt also relied onthepros­ecution history of the patent, observingthat boththe prearrble and phrase 'to ahuman in need thereof" were added si­multaneously in response to a prior artrejection and usedto gain allowance ofthe clairrs. td. at 1333-1334.

It is interesting to compare the outcomeof Jansen with that of BMS, in which asirrilar ciaim form was at issue, but thecourt reached a differentconclusion, Asnoted above, the BMS court heldthat theprearrble phrase 'for reducing hemato­logic toxicity" rrerely expressed an in·tended purpose. 246 F,3d at 1375, Onits face, however, thereseerrsto be littlesubstantive difference between the lan­guage of the BMS ciaim andthe Jansenciaim The Jansen ciaimrecited adrrinis­trationto "a human inneedthereof,"whilethe BMS ciaimrecites administration to acancer patient undergoing taxol treat­ment, It is difficult to reconcile howthephrase ''a human in need thereof" injectslifeand meaning intothe preamble of theJansen ciaimbut a sirrilar effect was notfound for the BMS clalrn

ConclusionWhile the principles for analyzing pre­ambles are clear, their application is not.The bestwayfor predicting theweight ofa preamble is clear, however-by examining the patent contextually. Thus, theprearrble's truemeaning may begarneredonly after first looking at what was pre­sented as a whole during the patent pro­cess, looking at whatthe inventors actu­ally intended thatthepatent would encom

pass, andthenreading theof this information.

in light

Drafting the Technology Game PlanPart 4: Effective Trademark Searching

searching for traderrerkapplications andregistrations that are, identical or sinilarto the proposed product narre. The ad­vantages of thistypeof search arethat itis quick and inexpensive; its disadean­tages include the lag tirre between thefiling date of new applications and thedate they appear on the website, thesearcher's inexperience, and thefact thatthesearch is linited to federal traderrerkapplications and registrations.

To betteravoid problerrs withnew rrarks,you can commission a full clearancesearch through asearch firm Afull clear- 'ance search goes beyond federal appli­cations and registrations and includesstate registrations, common law trade­rrarks, and dorrein narres. ~ can alsobe more reliable because the searchersare experienced and routinely conductsuch searches, and results canoften beobtained within a week, or even soonerfor a fee. Of course, the drawback to afull clearance search is that it is more ex­pensive.

Regardless of which type of search isconducted, careful analysis of thesearchresults canhelp prevent a company frominvesting a greatdeal of money in devel­oping a rrerk that rrey later have to bechanged because of potential infringe­rrent problems.

Obtain an Opinion of CounselOnce asearch has been perforrred, havea traderrerk attorney review the searchresults. Ii there are any rrarks that aresimlar to the proposed rrark being usedwith the sarrs or similar goods, youshould get anopinion of counsel to pro­tect your company in the event of Iitiga­tion.Such anopinion typically discussestheclosest rrerksfound inthesearch andwhether these rrarks present aninfringe-

rrent concern. Opinions of counsel donot prevent litigation or guarantee its re­sults; however, theydoassista corrpanyin evaluating the business risks associ­atedwith adopting a new rrerk.

Apply for a federal RegistrationUnder thecommon law, traderrerkrightsaccrue with adoption and use in com­rrerce. Thus, afederal registration is notrequired to bring state or common lawtrademark infringerrent clairrs in statecourt. A federal registration, however,does have its advantages. Afederal reg­istration gives your traderrerk a nation­widepresurrption of use and allows youto bring a traderrerk infringerrent claiminfederal court. Further, a federal trade­rrerk application can be filed on twobases, actual use ininterstate comrrerceor intent to use. Thus, a federal trade­rrerk application can be filed before themark has been actually used in com­rrerce. Also, federal registration of therrerk canserve asconstructive notice ofthe registrant's claimof ownership to therrerk. Lastly, if a registered rrerk hasbeen in continuous use for five corsecutiveyears, it isconsidered incontestable.Thus, the benefits afforded by a federalregistration oftenjustify thecostsinvolvedinobtaining the registration.

Utilize Electronic Trademark filingTrademark applications, responses toofficeactions, and various otherpapers,including those filed with the TraderrerkTrial andAppeal Board, can now be filedelectronically. The U.S. Patent and Trade­rrark Office website guides the applicantthrough the process of electronic filingand provides agreatdeal of online assls­tance. Electronic filing is more efficientthan traditional paper filings and less ex·pensive overall.

Utilize Watch Services i

Your traderrerkattorney canlalso arrangefor a watch service to mo~itor uses ofmarks that night bethe sarj--e or similarto your traderrerks. Such !a watch ser-

ivice canheipkeep yourmai;ks strong byidentifying, for exarrple, traderrerkappli­cations, uses of trademarks, domainnarres, and corrpany narres that rnghtinfringe or otherwise whittl~ away yourrights. To help giveyourcOrfpany acom­petitive edge, a watch service can also

1monitor a compatitor's trademark appli-cations, registrations, or usks.

I!

With these strategies in rrird, you canbegin protecting your com/Jany's trade­rrerk rights'ina cost-effective manner.

, I

sn'iii'p~ts 7~f

II

A burden imposed bythe publication baris the time andeffort required to monitorpublished U.S. and PeT patent applica­tions. Another burden maybe additionalefforts to accelerate the preparation and .

Uncertainties andBurdensThepubiication bar creates uncertaintiesas well as new burdens on entities thatrely on patents to protect their intellec­tual assets. One uncertainty is evaluat­ing whether or not a claim is 'the sameor substantially the same subjectmatter"as a claimfiled on a published patentap­plication..Another is whetheror not pub­lishedPeT patent applications designat­ingthe United States-including thosepub­lished in a language other than English­are published patent applications under35 U.S.C. § 135(bX2). Also, left uncer­tain is whether or not the publication barapplies to issued U.S. patents withclaimsthat are so changed from the filed appli­cation claimsthat they are not the sameas or substantially sinilar to the corre­sponding pubiished patent applicationclaims.

Importantly, the publication bar appliesonlyto U.S. patentapplications having fil­ing dates after the publication date of apatent appiication at issue. ~ the poten­tially interfering patentapplication has afiling dateafter the filing dateof but priorto a publication date of the patent appli­cation at issue, then section 135(bX2)would not apply, but 135(bX1)-which isthe issued patent lyear bar-would stillapply.

corrplyingwithsection 371 resuiting frominternational applications filed on or afterNoveniber 29, 2000. That is, the publi­cation bar applies to published PCT ap-

. plications that designate the U.S. regard­less of the language of the appiication.

A claim which is the same as, or forthe same or substantially the samesubjectmatteras, a claimof anappli­cationpeblisbed under § 122(b)ofthistitle may be made in an applicationfiled after the application is publishedonly if the claim is made before oneyearafter thedateonwhichthe appli­cation is published.

The New Statutory Interference Bar: ,Should You Monitor Competitors' Published Patents? I

1filing of patentapplications :Covering newtechnologies in order to a~oid the publi-cation bar. !

.. IWhat Is ''The Same or SUbstantially The

1Same Subject Matter'? iThe publication bar prohibits a patentapplicant from provoking a~ interference

.against a published patent applicationunless the later filed patent applicationincludes claims that are 'the! same or sub-

.Jstantiallythe samesubjectratter" asthepublished patent application, and such

Iclaims are made part of t~e applicationwithina year from the publication dateofthe earlier filed patent application. 35

IU.s.C. § 135(bX2). The term ''substan-tially the same .subject mltter" was re­

icently interpreted by tbeFederal Circuitto mean that the copiedc1~im cannotdif-

lfer ina "rraterial limtation.] Inre Berger,279 F.3d 975, 98 (Fed. Cirt 2002). This

)-

standard is easilymetwhere a later filedpatentapplication is amen~ed within the,statutory one-year period;to include acopied claim from an earlier publishedpatent application. HoweJ,er, it may bemoredifficultto prove that ~ claim is sub­stantially thesame asaneaJlierfiled claim,when the published patentlapplication isnot discovered and there i~ no opportu­nity to amend the apPlic~tion claim toconformto the earlierfiledlclaim Inthisscenario, the later patent Applicant canuse onlyon the claims preJent fn the ap-

l

plication at the end of the! one-year pe-riod asthe basis of provokihg aninterfer­ence. In such a situation the proof that. I

the pending claims in theIlater applica-. tion cover 'the same or substantially the

Isarre subject matter" as ttje earlier pub-Iished patent couldbe difficult

. tPublished PeT Patent ApplicationsII is the position of the USPTO that 35. (

U.S.C. § 135(bX2) encorhpasses pub-

I

35 U.S.C. § 135(bX2). The publishedpatent application statutory ihte.rferencebar (hereinafter "pubiication bar') tookeffect on Noveniber 29, 2000. The pub­lication bar applies to all pubUshed U.S.patentapplications filed under35 U.S.C.§ 111(a) having filing dates on or afterNoveniber 29,2000. The provision alsoappears to appiy to patent applications

The AIPA added the now-tamliar U.S.patentpublication provision to the patentcode, see35 U.S.C. 122(b), andfurtheramended the code in several respects toaccount for the new patent applicationpublication provision. One amendment toSection 135 of the Patent Code treatspublished patent applications essentiallythe same as issued U.S. patents as faras the statutory interference bar isconcerned. The new code provisionprovides:

the same or substantially the samesubject matter as, a claim of an issuedpatent" was not included in a pendingpatent application before the expirationofoneyearfromthe grantdateof a patentwith potentially interfering claims. 35U.S.C. § 135(b) (1999). This solestatutory interference bar prohibited apartyfrom usingclaimsfiled or added toa patent application more thanone yearafter a patent issued as the basis forprovoking an interference against theissued patent

8 . Vol. 2,lssue 1,April 2004

lished PCT patent applications that des­ignate the United States. Therefore, un­lessinterpreted differently bythecourts,the publication bar is applicable to PCTapplications designating theUnited Statesregardless of the application language.As a result, U.S. patent applicants whoare concerned about foreign corrpetitorspatents rrust now scrutinize and poten­tially translate pUblished PCT applications.

Moreover, rmny PCT applications cesig­nating the United States are never per­fected in the United States. PeTpatentapplications are published eighteenrmnths after the earliest c1airred filingdateandtwelve rmnths before a U.S. na­tional phase filing rrust be perfected.Thus, theapplicant of a U.S. patent appli­cation filed after the PCT application' ispublished will not know if the publishedPeTapplication has been perfected intheUnited States before the one-year graceperiodfor including thesarre or substan­tially the sarre claim; in a later filed ap­plication expires. This places the laterpatent applicant inthedifficultposition ofdeciding whether or notto addpotentiallyinterfering claim; into a patent applica­tion before knowing whether therewili bean U.S. patent application against whichto provoke an interference against.

Forced Prosecution of Potentially Interfer·ing Claim;The publication bar has the insidious ef­feet of forcing a later filed patent appll­cant to provoke an interference 'by add-

, ing unexpected claim; to an applicationandthen to prosecute the added clairrs.This couldrequire theapplicant to arrendthe newclaim; in a rmnner that createsanundesirable prosecution history estop­pel. Moreover, inthecase of a publishedPeTapplication, it couldplace the appli­cant iii a position of prosecuting the

added claim; andthen learning that the'published PCT application was never per­fected inthe United States.

These hardships can be arreliorated byincluding claim; that are the sarre as orSUbstantially sirrilar to claim; of an ear­lierpublished patent application ina sepa­rate continuing or continuation-in-part(CIP) application filed within one year ofthe publication date of the potentially ot­fending patentapplication strictly for thepurpose of provoking an interference.This strategy allows the later patent ap­plicant to prosecute the contiunuation orCIP application claim;separately fromtheparent application clairrs. The later ap­plicant canthensirrply abandon the con­tinuation or CIP application if the offend­ingPCT application is notperfected intheUnited States or if the earlier filed claim;arearrended esufficiently to render an ln­terference no longerrreaningful. The fil­ing of a continuation or CIP applicationrmy not, however, elirrinateall issues ofprosecution history estoppel ViS-EWis theparent application.

Advantages of the NewInterferenceBarThere are advantages to the publicationbar. When a U.S. patent application ispublished, the patent applicant can befairlycertainthat patent applications filedinthe U.S. more thanoneyearafter theirpatent application is published cannot beusedas a basis for provoking aninterfer­ence against theearlier published patentapplication. While this is not an insub­stantial advantage, theadvantage rmy notoutweigh the burden placed on patentapplicants to rmnitor the claim; of peb­Iished U.S. and PeTpatent applications

, continued on p. 10

..... 1 tSmpi=le s~!I,

iti

9

The New Statutory Interference Bar:Should You Monitor Competitors' Published Patents?

continued fromp. 9

and evaluate the published applicationsfor pctentially interfering subjectmatter.

Efforts to Rescind the Publication BarThe publication bar is generally viewedas being unfair to patent applicants be­cause they are forced to add pctentiallyinterfering claims into a patent applies­tion before the patentability of thoseclaims is deternined by the U.S. PatentOffice. This is especially troublesomewhere the claims that are patented arenot the same, or evensubstantially sirn­lar to the claims that were filed with thepublished application. The language ofthestatutesuggests that a claimcanstillbeinserted intoanapplicationto provokeand interference once apatent is grantedso long as the added claim and the is­sued patentclaims are not the same asor substantially sirrilar to a claim of theoriginally filedandpublished patent appli­cation. It is not certain that the statutewill be interpreted in this way, however.These uncertainties with the publicationbar and its application demonstrate thatitsusefulness may beIinited while its ap­plication could be unfair to later patentApplicants.

Efforts are now underway to elininate thepublication bar. However, these effortswill taketime. A strategicplan issued bythe U.S. Patent andTrademark Office forelininating the publication bar indicatesthat, under a best case scenario, thestatutoryprovision maynotbeelininatedbefore early2008- fouryears fromnow.

Protecting Your InventionsThe steps you can take to rnnrnze theimpact of the publication bar on patentapplications are generally thesame stepsthat aretaken to protectquickly evolving

10 V~1. 2, Issue 1,April 2004

and highly valuable technology. You cantakeoffensive measures to linit yourcompetitors' ability to provoke interferencesbased on your patent applications anddefensive measures to ensure that yourcompetitors do not catchyou off guard.

One offensive tactic is to obtain anearlyprioritydatefor eachnewinvention. Thiscan be achieved by filing provisional ap­plications covering new inventions at anearly stage in their development. TheUSPTO publishes patent applications eigh­teen months from the earliest date towhich an applicatn claims priority. 35U.S.C. § 122(bX1XA). Thus, by filing aprovisional application covering a newinvention early in its development, anap­plicant canestablish anearlyinvention fil­ingdate, andthecorrespcnding U.S. and/or PeTpatentapplication publication datewill be calculated from the provisionalapplication filing date.

Another offensive step to consider is torequest early publication of a patent ap­plications under 37 CFR § 1.219. Suchrequests must include a $300.00 publi­cationfee. Publication night also beac­celerated further by filing patent applica­tionselectronically.

A defensive measure to consider is tomonitor published U.S. and PeT patentapplications. Alternatively, for each newU.S. patent application that you file(whether it be a provisional or utility ap­plication) you should consider performing a search of U.S. and PeTpatent ap­plications published within the prioryearto deternine whether or not any closelyrelated published patent applications ex·ist that may merit further investigation.Another strategynight beto search andanalyze publisbed U.S. and PCT applies­tions on a regular basis (E.g., once a

monthfor exarrple). Web sitesexistthatcan translate foreign lahg~age applica­tionsor claims cheaply, or in~ome cases,at no cost. '

~

The new publication bar ~inforces theconcept that there are a~vantages tobeing the first to file-and rPw publish­patentapplications. Those tho aretardyin filing for patent protection, andthose

}

whoignore applications filedjbytheircompetitors may find themselv$s out of thegame by being statutorilyjbarred fromproving-in aninterference-{that theyareentitled to a patent because they werethe first to invent a c1aimed!invention.

!'C~~g~t!~~g~~r:iiiii/i.ii./)/"..i">.i///'iiii/'ii>/i.i.iii .WhatElse IsAttached to VourE;.Mail?Part1··

Not just in bigb-tech fields but in rmnyothers as welte-rrall has become a re­quired, if not preferred, method of comrrunication. Law is no exception. As eli­ents dermnd fast and efficient rrethodsof comrunicating with their attorneys, e­rrail is no longer just a convenience forattorneys but a necessity. Many attor­neysroutinelyrelyon e-rrail to send cocu­rrents to their clients. lt provides sorre­thing that overnight rrail, couriers andevenfacsirriles cannot provide-nearly ln­stantaneous delivery of original quality

docurrents.

The same reasoris that rmke e-rrail aconvenient rrethod for exchanging docu­rrents with clients also rrake it a corwe­nient rrethod for exchanging docurrentsin adversarial settings. For exarnple, e·rrail can be used to provide draft docu­rrents to opposing counsel in litigation(e.g., draft protective orders, draftsettle­rrents agreerrents, etc.) or to providedrafts of contracts, licenses .or otheragreerrents during negotiations. Tbere­ceivingparty can rmke their changes andthen e-rrail the revised docurrent back to

. theoriginalpartyfor approvalor additionalrevisions. This rrethod of negotiating the .

final text of docurrents can significantlyreduce the tirrs and cost-expended byboth sides.

In·house attorneys can also benefit frome-rrailing docurrents as they work alorig­side outside counselor as they handlermtters on their own. Attorneys are not

t.heonlyonesthat rright usee-rrailto senddocurrents inadversarial situations. Busi·ness persons rright use e-rrail to send·

confidential bids or price lists to peter­tial custorrers, to send draft contacts to

suppliers or clients, to send draft jointventure or other agreements to corrpeti-

. tors or to send a variety of other confi·

12 Vol. 2,Issue 1,April 2004

dential docurrents. Simply attaching

dccurrents to e-rrails, however, is fraughtwith danger as the documents often con­tain rruch more inforrrntion than just theunderlying text. But just what additionalinforrration do these docurrents includeand are there consequences to providingthis additional inforrmtion?

Metadata is generallyunderstoodas "dataabout data" and is often used to refer tothis extra inforrmtion embedded intofiles.The particular rretadata embedded intoa document depends on the particularformat used to store that docurrent. A

basic Microsoft WorcJTM docurrent con­tains the most rretadata when comparedto other common docurrents formatssuch as RTF (rich text format) and PDF(portable document format). For ex­ample, a Word document typically in­c1udes rretacata that specifies the vari-

Ious authors who edited the document,

. when the docurrent was cjeated, whent

the docurrent was last rroditied, the to-tal editing tirre for the docurrerf, andtheternplate used to create thi~ docurrent.

IA Word docurrent can also include othermore insidious rretadata. For example,it includes a revision log Ii~ting the lastten edits to the document. IThe revision

\log typically identifies who rrade each ofthe edits. It also identifies the particular

1location where the docurnent wassaved-thereby allowingomlto deterrrine

on whose computers the ~ocument isstored and whether it was ever copied to,a floppy disk. In addition, tre docurrentrright also include hidden text trackingall the changes to previous versions ofthe documents and corrri-Jnts insertedby the various authors of t~e docurrent.In fact, in post·1997 versio~s of WorcJTM

,

I,

Excel'M and PowerPoint™, asaved filecaninclude fragments of data fromotherfilesthatwere deleted or opened while a userwas editing thesaved file. Thatis,aWorddocument can include portions of textfromother unrelated files auserhappenedto have opened at the same time on theuser's desktop.

Some of this metadata is easily acces­sible through Word's userinterface, suchas through tha properties tab on the filemenu. Other metadata is only availablethrough low-level binary file editors; how­ever, these types of fileeditors arereadilyavailable onthe Internet. Thus, any computersavvy person candownload one ofthese file editors and access all themetadata available in a particular Worddocument without much effortor difficulty.Just what could be the consequences ofsending this metadata along with a Worddocument and how could it be exploitedbyanadversary?

These issues are not just faced by attor­neys. In another example,.a salespersonsubnits a bidto sellavariety of productsto Company A. Rather thancreating thebidfromscratch, the salesperson simplyrevises abidpreviously subnittedto Cernpany B. Afteradding and removing prod­ucts included inthe bidandalso revislrg'theprices of the products included inthebid, it is then forwarded to Company Aasa Word document. A studious employeeat Company A then decides to exaninethe metadata inthe Word document andrecovers theprevious versionofthecocu­ment-includingthe products and pricesin the bid previously subnitted to Company B. Company A is understandablyupset to learn that Company B is obtain­ing lower prices on certain products. Ofcourse, Company B is alsoupsetwhen iteventually learns that the list of the prod-

ucts lt buys and the prices it buys themat was supplied to its corrpetitor, Company A.

Are bad public relations just hypotheticalproblems? Notto theBritish government.In February 2003, the British PrimeMinister's office released its dossier onIraq. tt was, in part, usedto justify thesubsequent nilitary action against Iraq.The dossier was released by posting itas a Word document on 10 DowningStreet's website. It was not long beforethe metadata inthe Word document wasthoroughly examined. The document'srevision log clearly identified four dffer­entemployees who edited the document.The names of theemployees were inturnused to identify thedifferent departmentswithin the Prime Minister's office involvedinpreparing thedossier. The revision logalso revealed that one of these individu·alscopied the dossier to a floppydisk.

The British Parliament subsequently heldhearings on the dossier. Thanks to therevision logand theothermetadata intheWord file, the British Parliament knew ex­actly who to thoroughly question aboutthe preparation of thedossier. Theques­tioning also demanded anexplanation forwhy the file was copied to a floppydiskand who. eventually received the floppydisk. This no doubt made for sorre veryuncomfortable.times for those identifiedthrough the metadata as well asa highlyembarrassing incident for the BritishPrime Minister's office. As a result, theBritish Government has now begun post­ingfiles inPDF formatrather than inWordformat.

Does PDF actually provide increased pro'tection against revealing potentially damaging metadata, how doesPDF corrparewith RTF and other common document

J

iformats, and what other ~teps can betakento prevent the releaselof metadata?We will explore these issue! in Part II.

If

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smpp;ets 13l..!:.J. :l

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.nlbl1.~/Nevvs:·.i> ••·•.•••• >(·.. S:::~II~Conversion to LLPForrnof Pc I

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•adopt a limited liability partnership structure. The partners of McDonnell Boehnen Hulbert &Ii E'erghoff("MBHB") have elected to convert our partnership intothis riew structure and, hereinafter, to 4ngage inthe practice of lawas a limited liability partnership ("LLP"). We have completed the neces$ary stateand court filings, such that the conversion to LLP structure has already taken place. I

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of lawasanLLP. However, the LLP business organization was available to and widely adopted byotherservice professionals in Illinois and by lawyers inevery other state. The pertinent rules inillihois werechanged asof July 1, 2003, so asto permit Illinois lawyers to practice law asanLLP, while at~he sarretirre mandating minimum insurance protections for clients above and beyond those require~ in many~~. 1

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IWith offices in Chicago and Washington state, MBHB providescomprehensive legalservicesto obtain andenforce our clients'intellectualpropertyright~, fromnavigat­ing patent office procedures to litigating complex infringement actions. However;wedon't merelyprocurerights andlitigate cases; we craft winning !ptrategies thatachieve our clients' business objectives. t

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