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| Practice Tips |
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Egyptian Goddess: New Standard for Infringement
Enhances the Value of Design Patents in the U.S.
Download a complimentary white paper
The Federal Circuit’s opinion in Egyptian Goddess, Inc. v. Swisa, Inc., No. 2006-1562, 2008 WL 4290856 (Fed. Cir. Sept. 22, 2008) significantly changes the standard for determining design patent infringement. The new standard reduces the burden on the patent owner to prove infringement and makes it harder for the accused infringer to prevail on summary judgment. The stronger litigation position afforded design patent owners under Egyptian Goddess enhances the potential value of design patents as IP assets and may influence how to claim and prosecute design patent applications.
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| International Section |
Foreign Origin Patent Applications
Little Changes Can Make A Big Difference
There are many potential pitfalls to filing patent applications in the US based on counterpart applications that originate in another country. The structure and content of applications filed in non-US jurisdictions may be problematic or limiting if filed in the same form in the US. The following practice points identify some of those pitfalls and highlight the standard practices adopted by MMH that add value to your foreign origin patent.
Here at MMH, we do not discriminate between US and non-US clients. That is, we treat a foreign origin patent application with the same care and attention to detail we employ with the original applications we draft for our US clients. As most practitioners realize, among other things, filing a foreign or PCT application in the US entails receiving the application written abroad, and filing the application with the US Patent & Trademark Office while claiming priority to the foreign application under the rights extended by the Paris Convention. Whether the application is being filed as a direct foreign filing under 35 USC § 119, or as a national stage application of an original or intermediary Patent Cooperation Treaty application under 35 USC §371, rather than simply file the received application verbatim, we carefully review the application for conformance with USPTO requirements as well as current US case law. By carefully amending the foreign specification and claims, we expedite the prosecution of the application, lessen filing expenses, and produce stronger, more effectively enforced US patents. Not only do we take these steps as a matter of course with each foreign origin file we receive, but we do so at a rate which is a fraction of our competitors.
Starting with the claims, we review each application to remove expensive multiple dependencies and potentially limiting reference numerals which are common in non-US practice. Multiple dependencies are allowed in the US, but at rates that discourage such usage¹, especially when substantially the same coverage can be obtained with single dependencies. As for reference numerals, their inclusion in the claims could potentially limit the construction of the claim to the exact element identified. Since there is no requirement in the US for such numerals, our clients are better served by having them removed.
The same can be said of the abstract. We carefully review the abstract and remove reference numerals and other limiting statements. For example, some countries require not only reference numerals to be included, but a representative figure as well. The US does not. More problematically, US case law clearly holds that the abstract can be used to construe the claims. Hill-Rom, Inc. v. Kinetic Concepts, Inc. , 209 F.3d 1337 (Fed. Cir. 2000). As a result, we amend the abstract as a matter of course to remove such reference numerals and representative drawing notations.
We also always review the specification, and amend it if necessary. As US claims will be construed in light of the corresponding specification, practitioners should make sure to remove potentially limiting language where available. For example, “objects” or “aims” of the invention should be removed. There is no requirement for such statements in US applications, and no benefit for their inclusion. In fact, by including them, the claims could be potentially construed based in part on that object or aim. Netcraft v. EBay, Inc. & PayPal, Inc., Case No. 2008-1263 (Fed. Cir. 2008). Moreover, if the object or aim is not achieved or not entirely achieved, the claim and/or patent could potentially be weakened as a result. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Similarly, phrases such as “the invention is”, or the “invention relates to” should also be removed. Again, the claims can be construed in light of all language in the specification and by definitively stating what the invention is, the claims could be construed to require such a limitation even if not explicitly stated in the claim. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).
The application language should also be amended to include a specific claim of priority to the parent application or applications and to include subject matter headings where appropriate. While the priority claim can also be handled in the application data sheet and inventor declaration, strict time limits for doing so are in place, and a specific claim of priority in the application will by definition satisfy the requirements of 37 CFR §1.55. As for reference headings, this straightforward amendment can easily be made at the time of filing to thereby avoid any 37 CFR §1.77 rejections in the case. Assuming the claims distinguish over the prior art, avoiding such formal rejections can potentially lead to a first action allowance and thereby limit the ability of an adverse party to raise the defense of prosecution history estoppel.
If you would like any further information about the above or other steps we take with each foreign origin application we receive, please let us know at your convenience. We would be happy to help.
¹The current filing fee charged by the US Patent & Trademark Office for a multiple dependent claim is $390. |
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| Focus on Service |
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Passionate Patent Prosecution
High-Quality, Cost-Effective Prosecution and Related Services
Patent prosecution and related opinion work is the lifeblood of MMH. We are prosecutors, not litigators -- focused exclusively on preparing and prosecuting patent applications, drafting opinions, and assisting with IP due diligence. While each of us has past experience with litigation, we do not litigate. Instead, our focus is on providing high-quality, budget-conscious prosecution and related services.
The three partners of MMH have been drafting and prosecuting patents and rendering patent-related opinions for 14, 13 and 19 years, respectively. We have been trained by Chicago's best patent firms. We also successfully created MMH from the ground up. With this wealth of experience and training, we provide our clients with exceptional service at fair costs.
We created MMH so we could provide quality patent prosecution and opinion services at reasonable rates, and so we could provide an alternative to high billing rates charged by larger patent firms and general practice firms. For example, larger firms with litigation departments, high overhead and staff commitments must set hourly rates at a premium. Larger firms also try to recoup costs of doing business like photocopies, phone charges, facsimile charges, postage, etc. And, larger firms also tend to bill for perfunctory report letters, reminder letters as well as associate training time.
At MMH, we have a better idea. We lower our overhead, reduce our rates and do not charge for any “cost of business” expenses. Our invoices are two-part: (1) time expended by the attorney, patent agent or searcher/paralegal; and (2) out of pocket expenses such as USPTO fees or drafting charges. We also charge less for “standard” or routine tasks. This strategy has enabled us to actively pursue fixed fee arrangements with a number of our clients.
We hustle. We can handle "rush" jobs. We understand that IP matters can be overlooked and sometimes a patent application must be filed immediately. While "emergency" or "rush" jobs should be avoided, you can be assured that we won't go home until the job is finished and done right.
Finally, we tackle patent prosecution with passion. Your prosecution work will be handled by a partner or by one of our agents with close supervision by a partner. Because patent prosecution is the life blood of MMH, it is not passed down the line to the younger associates. We exist to draft and prosecute patents and help our clients avoid patent minefields; it is our life's work.
Hustle, passion, fairness in billing practices. That is what you can expect from MMH. |
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