WEB PATENT NEWS--April, 2001

by contact usRobert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and innovating organizations.


I. TO PUBLISH OR NOT TO PUBLISH: YOUR PATENT APPLICATION, THAT IS--If you are planning to file a U.S. utility or plant patent application, you have a decision to make.

II. ADMISSIONS DURING PATENT PROSECUTION: WHEN WORDS CAN HURT YOU--Learn how to avoid inadvertantly limiting the value of your patent during the prosecution process.


A significant change has been made in the U.S. patent system. For over 200 years, a patent application filed in the U.S. was maintained in confidence by the U.S. Patent and Trademark Office (USPTO) until a patent issued on the application. Now, under a new law, almost all regular U.S. utility and plant patent applications filed after November 29, 2000, will be published by the USPTO 18 months after the earliest effective filing date or priority date of the application. A separate publication fee (currently $300) will be charged at the time of patent grant. Provisional patent applications and design patent applications will not be published.

Publication can be avoided under certain conditions. An applicant who certifies that he has not and will not file in a foreign country or under an international agreement (e.g., the Patent Cooperation Treaty) that publishes applications after an 18-month period from the effective filing or priority date may request nonpublication, but the request must be submitted when the application is filed. Submitting the request after the application is filed has no effect--it is too late. On the other hand, an applicant can also request publication of a utility patent application that was filed before November 29, 2000, and/or request that an application be published earlier than 18 months after filing.

Any of these requests can be rescinded by the applicant. If an applicant does change his mind and files a non-U.S. application, he must notify the USPTO within 45 days of the non-U.S. filing date. Failure to timely notify the USPTO of the non-U.S. filing will result in abandonment of the U.S. application.

In implementing this law, the USPTO has decided that every utility and plant application must be "perfected" before it is released for examination or published. An important implication of this rule is that formal drawings must be filed "up front." In the past, it was not necessary to incur the expense of preparation of formal drawings until claims had been allowed (and the applicant was sure that his patent would issue). If time is required to perfect an application, time extensions can be purchased from the USPTO under existing rules. (You will note that "no new fees" is NOT a theme of this new process.)

The USPTO has also decided that claims to priority or continuity based on the filing of a provisional or parent regular U.S. or foreign application must be made within 16 months of the claimed priority date, or four months of the filing date, whichever is later. Unintentionally delayed priority or continuity claims will be accepted by the USPTO only after the payment of a surcharge. In the past, such claims could be made at no cost at any time during the pendency of the application.

So, patent applicants who have no current intent to file non-U.S. patent applications when they file their U.S. application have a decision to make: to publish or not to publish. The purpose of this article is to assist patent applicants make that decision.

What are the advantages of deciding to allow the USPTO to publish your application before it issues as a patent? A significant advantage of publication is that it gives a patentee the right to collect a reasonable royalty from infringers for the period between the date of publication and the date of the patent grant. For a patentee to prevail in such a suit, actual notice of the published application must have been given to the infringer(s) and the patent must have issued with claims that are substantially identical to the claims in the published application. This rule (and the recent Festo court decision discussed in my January, 2001, newsletter) means that the prudent applicant who decides on publication should include a wider variety of claims in his application. More claims, however, mean higher initial costs (due to increased claim drafting time and higher USPTO fees).

Another significant advantage of early publication is that the application will become "prior art" under 35 U.S.C. ß 102(e) as of its effective U.S. filing date. This will allow inventors to "put their foot in the door" of the USPTO and create a prior art barrier to the issuance of other patents on their invention. Such two-patents-on-the-same-invention "mistakes" could occur in the past when applications were confidential and Examiners could not use pending applications as prior art except in limited situations, e.g., when common inventors or assignees existed. A related implication is that novelty searches must now include searching of published U.S. applications, which, over time will become the predominant form of prior art.

A further advantage of publication is that the USPTO "advertises" the existence of the invention for the inventor. If the invention is "mature" and the inventor is seeking licensees in a non-confidential effort or it is already being incorporated into a product, this advantage could be very important to the applicant.

What, then, are the disadvantages of deciding to allow the USPTO to publish your application? The primary disadvantage is related to the advantage just mentioned aboveóthe world (including your competitors and those who are motivated to protest the issuance of your patent and "patent around" or "design around" your claims) will find out about the details of your invention sooner. For university inventors and independent inventors, whose inventions are often "embryonic" in nature, this is a serious consequence. Those with a "the U.S. patent system ainít broke, why fix it" perspective may want to select the nonpublication approach that has served U.S. inventors well for over 200 years. The other disadvantages accrue from the numerous cost increases mentioned above.

The bottom line it that Congress has "moved your cheese." A significant change has occurred and most U.S. patent applicants will have an important decision to make BEFORE they file their patent applications.


The old adage "sticks and stones can break my bones, but words can never hurt me" is not true in patent prosecution. In fact, admissions by the applicant or the applicantís patent agent/attorney either in the patent application itself or in papers filed during prosecution can seriously limit the scope of patent claims, and hence, significantly reduce the value of an issued patent. Of course, such admissions typically only become important during litigation of a patent infringement suit and such suits are filed only if a lot of money is at stake.

Under the doctrine of prosecution history estoppel, a patentee in an infringement suit is precluded from construing a claim in such a way that would resurrect coverage that she relinquished during prosecution. Prosecution history estoppel generally applies as a defense to an assertion by the patentee that some structure in an allegedly infringing product is equivalent to the structure described by a patent claim under the "doctrine of equivalents."

Prosecution history estoppel often occurs as a result of an applicant having to amend a claim to avoid a rejection, even if no reason is given for the amendment and even if the amendment is filed in an application that is a parent or a child of the application at issue. Estoppel can also arise from prosecution arguments made in support of nonamended claim language. As I indicated in my January, 2001, newsletter, the recent Festo court decision has hammered home the consequences of prosecution history estoppel.

An example of a statement by a patentee (Alpex) during prosecution that was held by a court to limit the scope of a claim of an issued patent was an admission that a particular reference (Okuda) was not applicable to rejection of a different claim containing the same structure. It reads as follows: "Claim 1, as amended, now clearly distinguishes over Okuda. The claim requires a random access memory which, as indicated previously, is not disclosed in Okuda."

Now, donít get me wrong. Disclosure in a specification of a variety of structures to support "means claims" is good practice. Moreover, it is almost always necessary to amend claims to get an application allowed, and such actions constitute "admissions" when infringement is litigated. Likewise, sometimes sworn statements or declarations that may later affect claim interpretation must be filed to overcome obviousness rejections. That said, it is the wise applicant who understands that "words can hurt" and works with the patent agent/attorney to ensure that claims of varying breath are included when the application is filed and to ensure that claim-narrowing admissions are minimized during patent application preparation and prosecution.

Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku'ula Rd.
P.O. Box 1291
Kamuela, HI 96743
tel (808) 885-4194
fax (808) 885-4114
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