I understand that design patents are worth only a fraction of their utility patent namesakes. Each year, the number of design patent applications are only a small fraction of the number of utility patent applications filed., and design patents are – on average – less valuable than utility patents.
I do believe that utility patent law can learn something from design patent law. Let’s start with the recent en banc design patent case of Egyptian Goddess v. Swisa. In that case, the Federal Circuit defined the meaning of “infringement” of a design patent. The test created by the court looks to whether an “ordinary observer” who is “familiar with the prior art” would find an accused design “substantially similar” to the patented design. Thus, the test looks for substantial similarity in the context of the prior art.
|
“When the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.” |
Another way of interpreting the Egyptian Goddess test is that the scope of infringement varies inversely with the scope of prior art. When a patented design is in a field crowded with similar prior designs, the only infringing designs will be those that are strikingly similar to the patented design yet different from the prior art. Alternatively, when the patented design stands alone as a breakthrough design, the potential variety of infringing activity actually increases.
I like the idea of rewarding breakthrough innovations that go beyond ordinary invention. Here, Egyptian Goddess does that by increasing the potential claim scope when the invention goes well beyond the prior art. The question here is whether the law of utility patents can be arranged to likewise provide the best rewards for the most innovative creations.
Perhaps the system would be better changed to provide temporal rewards for more significant innovation rather than greater scope — both ultimately convert to dollars.
A standard patent life would be, say, 5 years from issue, and that would be extended in 5 year increments up to a max of 15 or 20 years as a function of the degree of innovation. The applicant would have to request the extension he feels is appropriate and provide a rationale, including the results of a prior art search to justify the extension and higher application fees to offset greater examination effort to determine the degree of innovation issue. If the applicant chooses not to provide the PA search, then the patent gets just a 5-year life.
I think a lot of us, including the courts, have a problem with the fact that many inventions, particularly s/ware, are technically novel and non-obvious but are just a trifling advance in the field. But these patents sitting in some troll’s safety box for 17 years can really gum things up. Why should such meager innovations get the same degree and length of protection as a true breakthrough?
At some point somebody has to make a subjective call as to the degree of innovation. As this post demonstrates, the examiners and courts make this call in all sorts of devious ways. The current thumbs-up or thumbs-down digital approach to granting patents almost requires this covert subjectivity, particularly with respect to obviousness.
I believe examiners would apply the law more faithfully if they know the patent for a de minimis but novel invention is only going to last 5 years. Besides, the inventor should have a role in making this call by having a chance to argue for greater patent life.
Someone above observed that a breakthrough is often not recognized as such for many years. I don’t agree. The the degree of innovation should be evident immediately when the invention is juxtaposed against the existing art. It may take years or decades to appreciate the true value or worth of the breakthrough, but that is not relevant to the patenting process once one gets past the very, very low utility threshold.
I agree with all the above who say that breadth of coverage can be greater for a breakthrough invention via broader claims and equivalents afforded by greater differences from prior art. My comment goes to depth rather than breadth. Particularly because breakthrough inventions are so different from the prior art, they take longer to be implemented. As pointed out above, many will not be commercially implemented until after any original patent expires. To correct this, I suggest the law be changed so that in the last years of a patent, the owner could petition for an extension of the term based upon the breakthrough nature of the invention.
This is a very interesting article. I think there are two mechanisms already present in US utility patent analysis that do consider the prior art in determining infrigmenet, at least indirectly. First, when determining obviousness, the scope and content of the prior art is considered per Graham v. John Deer. Accordingly, where the prior art is close, a determination of obviousness is more likely. Of course, an obvious claim cannot be infringed. More directly, when determining infringement under the doctrine of equivalents, the scope of claim expansion is limited by the prior art (Wilson Sporting Goods). Again, the closer the prior art, the less likely the claim is to be infringed.
Interesting concept, but difficult to implement… design patent claims are based on visual observations while utility patent claims are based on interpretation of words.
Guys.
I’ve got it!
Breakthrough invention!
A computer readable medium with information thereon which, when read by a computer, causes the computer to execute a method comprising:
Causing one or more desktop icons to fade out of view or to being transparent.
If someone can take my case pro bono I’d appreciate it. If you steal it I will hunt you to the end of my days and there will be blood.
Can I be rewarded now?
“We’ve had just such a device since 1836. We call it “claims.”
When the prior art is far away, the claims are called “broad.” ”
LOL, I no rit? D with his joke posts.
We’ve had just such a device since 1836. We call it “claims.”
When the prior art is far away, the claims are called “broad.” (if they were drafted well). When the prior art is close, the claims are called “narrow.” We have claims that vary in scope from broad to narrow in order to take account of prior art that might be found in the future.
On the doctrine of equivalents side, there’s the Wilson Sporting Goods “hypotehtical claim” analysis that gives broader range of equivalents in uncrowded fields than in crowded fields.
This is a much more reasonable balance than a straight transplant of Egyptian Goddess would be. When I’m advising adversely to a patent, it makes it so much easier to have claims that give me notice of what I’m trying to avoid, even before I start a prior art search. Imagine if the patent specification were a “nose of wax” that could be twisted until it looked like the accused device and not like the prior art…
Federal Circuit in Cohesive Technoligies v. Waters Corp. (Oct. 7, 2008) said: “…we have emphasized that pioneering inventions often, by their very nature, result in broader application of the doctrine of equivalents. See E.G., Augustine Med. Inc. v. Gaymar Indus., Inc. 181 F.3d 1291, 1301-02 (Fed. Cir. 1999).”
This already happens. If the field of art is more crowded, then it is easier to show invalidity due to obviousness and anticipation during litigation. Sorry to state the obvious. An invalidity argument (especially if based on obviousness) in litigation is essentially a form of back-end check on infringement, the potency of which is proportional to the quantity of similar art.
Mr Morgan, I wonder if Dennis also has been looking at the new European Registered Design 25 year monopoly right and that it gave him the idea for this post. German utility patent law traditionally gives claims a wider reach, of infringement by equivalent, if the invention has proved to be a blockbuster, but for European utility patents that’s now nothing but history (except that, these days, Duesseldorf is even enjoining infringers of claims already declared invalid by the Federal Patents Court in Munich, so it’s a bit chaotic at the moment). In design patent law, Germany traditionally gives very narrow protective scope. Will Germany decide the scope of European design registrations? Too early to tell, unless another reader knows already….
Arguably the reverse doctrine of equivalents (if it were ever used) could be used to limit the broader scope of pioneering inventions. But as transactions costs decline, so too does the justification for limiting the scope of property rights.
“The true breakthrough innovations are usually not commercially implemented until after any original patent expires” — I agree, Mark
Dennis, I think that your “Egyptian Description” that: “When a patented design is in a field crowded with similar prior designs, the only infringing designs will be those that are strikingly similar to the patented design yet different from the prior art. Alternatively, when the patented design stands alone as a breakthrough design, the potential variety of infringing activity actually increases.”
Is a lot clearer than what the Egyptian Godess Court actually said.
BTW my impression was that the new European design patent protection will be a lot broader than that in the U.S.? [Not that that will necessarily be viewed as commercially desirable].
The true breakthrough innovations are usually not commercially implemented until after any original patent expires, so any real commercial benefit to the pioneering inventor is lost. While many examples can be found, one area that I am familiar with is perpendicular recording for disk drives. Although invented in the 1980’s, it wasn’t used commercially until a few years ago, and is now ubiquitous. Greater inventions, e.g., lasers, have had a longer gestation. With that in mind, some companies prefer to file patent applications that are predicted to be implemented within ten years, so that there will still be some life to the patent while the technology is used. And some monopolists or oligopolists don’t need or want breakthrough innovations that could disrupt their currently profitable positions, while smaller innovators can’t compete. The fix, if possible, would be to extend the patent term for true pioneering patents. Unfortunately, the proposed continuation rules run contrary to this. As an aside, the latest truly unscientific 101 cases further support the need for continuations, to “fix” claims to software that supposedly are no longer inventions.
Someone above said something along these lines, but: This is an interesting issue and a good post, but I don’t quite see the point. The scope of infringing activity of a utility patent is currently determined by the scope of its claims. You can only claim what hasn’t already been disclosed. If you made a breakthrough into a field where *nothing* has yet been disclosed, you can claim broadly. If you are in a crowded field, you have to do a lot of prior art searching and draft narrow claims around the prior art. So current doctrine already allows breakthrough inventors to have wide coverage.
The question is whether we need to somehow give those breakthrough inventors more reward through higher damages or something
Now I have read Axel, I have to support him and add a thought of my own.
The mischief of barmy claim construction comes when the Statute fails to give the Court a symmetrical playing field, by which I mean a 2 x 2 matrix for infringement versus validity. On a skewed playing field, courts choose crazy claim constructions, out of a fully understandable need to “do justice” between the warring parties. In the symmetrical Englsh matrix, there are 4 possible outcomes, ranging from “valid and infringed” to “not valid and not infringed” and the patent owner wins in only one of them. Both the horizontal and vertical line that creates the 4 field matrix is a “preponderance of evidence” tipping point. Therefore, depending on the case, an English court can just as easily settle itself in the “Valid but not Infringed” field as in the “Invalid but with a scope that does include the accused embodiment” field. With that symmetry, claims ALWAYS get construed in a “common sense” way. In these days when all those who are not patent lawyers have it in for us, I think it vital to create a system which tends to produce robust law that is in line with simple reality, making it a pleasure to explain it to engineers, scientists, politicians, journalists and other leaders of opinion. Our innovative clients’ futures depend on it.
The European Patent Convention (Protocol to Art 69) requires a balance between legal certainty and “fair” scope for a breakthrough inventor. But that doesn’t mean that you have to stretch the claim beyond what it means to the PHOSITA. To do that plays havoc with legal certainty, for no good reason. Let’s assume that claims are written by patent attorneys, highly rewarded professionals, whose life’s work is securing a full measure of protection for what their client has contributed to the art. It should be a given that the attorney claims all about the “invention” (as perceived) that is new, and the PTO cuts it down to what is patentable, but no further. Hence all those ridiculously wide biotech patents that have given so much trouble in recent years. The problem is not too little scope but too much. And when readers say that the drafter isn’t omniscient, I say that if the attorney and inventor together don’t perceive the “invention” and competently describe and claim it well then they aren’t yet in possession of it and so shouldn’t be able to monopolise it. As ever, it all comes down to “Be Careful What You Ask For” as some wise judge recently counselled. Patent attorneys are careful people and can do a competent drafting job. Why have a law that encourages drafters to be vague and lazy?
Doesn’t Egyptian Goddess apply a concept of claim scope to design patents that utility patents have anyway?
Visually thinking: If you were to draw the prior art on a piece of paper you would end up with little dots all over the place. Expand them to adjust for obvious permutations. A new utility patent claim can put another dot on that paper – without touching any existing dots. Now, if you are in a crowded area you will only be allowed to draw a tiny dot. A breakthrough innovation will however be in an area where nobody else has put dots yet, so you are allowed a really big dot.
Breakthrough innovation is inherently rewarded in utility patents by allowing for broader claims. Design patents don’t have the advantage that you can verbalize your claim scope vs. the prior art – so the court had to do it for you.
>>I’ve actually heard an argument that the reasoning of EG leads to a narrower claim for breakthrough inventions.
Essentially, if the Patented Design differs from the PA in 4 different ways then the infringer would have to meet all 4 limitations, but if it only differed from the PA in 1 way, then there would only be one limitation.
I was convinced by the logic, as it seems contrary to the intent of EG, but it is not illogical.<< Actually, it is illogical in view of the fact that EG did away with the point of novelty test that indeed would have required all 4 novel elements to be in the accused design before finding infringement. Now, the test, as pointed out, is much more subjective, asking simply whether the overall accused design is closer visually to the overall patented design than either is to the prior art; if so, infringement is more likely to be made out. If either the accused design or the patented design is closer visually to the prior art, infringement is not likely to be made out. This is great news for design patentees; it is entirely appropriate for the test to be more subjective (not entirely subjective, but certainly moreso than before), since designs by their very nature are subjective - you really can't objectify a visual design. This is butressed by the Federal Circuit's abolition of the requirement in EG that during Markman claim construction of a design patent it is necessary for a court to verbalize, or put into words, a detailed description of the claimed design, something that no two courts would do alike, and something that not only unduly narrowed the design patent claim, but is really impossible to do: a picture is worth a thousand words. I think EG is a good harbinger for utility patents which have been over-objectified in recent years, reducing their scope and thus value. Let's return to those thrilling days of yesteryear, where the range of equivalents of a utility patent claim was broader for pioneering inventions, and narrower for those in a crowded art.
Just to voice the dissenting position here, isn’t this a receipe for more uncertainty (as if we don’t have enough) in patent law? Plainly, nobody knows whether a patent will be found to be “pioneering” or “breakthrough” until well after filing, since you need to find the best prior art and nobody really looks for it until litigation. So only fifteen years later does the patentee find out whether he’ll get a broad construction because his invention is “pioneering” or a narrow construction because his invention is mundane; which is an invitation to feed the “litigate and see” beast of patent enforcement that both sides collectivley bemoan (because it enriches the lawyers) and yet collectively engage in. If the invention is mundane but the claim meets the other requirements of patentability (as it must to survive), why the additional penalty late in the game by construing it more narrowly than otherwise deserved? If the invention is brilliant but the patentee failed to claim it right, why give a windfall when it can no longer provide any additional incentives to invent (since the patentee already got the claim he desired)?
In light of recent comments, perhaps UK infringement principles should be considered by the Supreme Court: see, Kirin-Amgen, Inc. v Hoechst Marion Roussel Ltd. ([2004] UKHL 46) and the Improver Questions as guidelines when infringement questions arise – that is
“(1) Does the (infringing device) variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no?
(2) Would this (ie that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes?
(3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.
On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy) denoting a class of things which include the variant and the literal meaning, the latter being perhaps the most perfect, best-known or striking example of the class.”
Just some thoughts…
National Inventor’s Hall of Fame — does it count as a “reward”?
“The question here is whether the law of utility patents can be arranged to likewise provide the best rewards for the most innovative creations.”
Nobel prizes don’t count?
“The question here is whether the law of utility patents can be arranged to likewise provide the best rewards for the most innovative creations.”
(1) What do you mean by “best rewards”?
(2) How and who decides what are the “most innovative creations”?
I’ve actually heard an argument that the reasoning of EG leads to a narrower claim for breakthrough inventions.
Essentially, if the Patented Design differs from the PA in 4 different ways then the infringer would have to meet all 4 limitations, but if it only differed from the PA in 1 way, then there would only be one limitation.
I was convinced by the logic, as it seems contrary to the intent of EG, but it is not illogical.
I believe that a good patent attorney will draft claims in utility patents that cover more area in a new field than in a crowded field. Thus, utility patents already do what you suggest. Because design patents don’t have any written claim limitations, the test needs to take prior art into account. For utility patents, the examiner does this job by making sure the claims do not cover the prior art.
For example, in the field of protein variants, the first person to make some amino acid substitutions at position X of a protein has a fair chance of getting any substitution at position X. A later person can only get specific substitutions, and then only if they show a different property from the earlier substitutions.
Under the all elements rule, infringement is an objective all or nothing test. The rule articulated in Egyptian Goddess is subjective.
One could imagine a more subjective test for utility patents that revolved around the inventive step disclosed in the patent. There would be a spectrum of infringement ranging from use of the inventive step alone to complete duplication of the claimed invention. At the one extreme, infringement would only be found if the inventive step was a ‘breakthrough’ or ‘pioneer’ invention. At the other extreme, infringement would always be found regardless of the (in)significance of the inventive step.
Of course, subjective tests add uncertainty. Without the comparative certainty of the all elements rule, the value of a patent would be harder to ascertain. Litigants would be less likely to settle because a subjective test makes the result less certain.
Of course, any new rule would be accompanied by years of expensive refinement by the Federal Circuit.
I think the reward for breakthrough patents is that they protect more valuable inventions. I’m not sure that a different infringement test would be worth the cost.
Yes, the pioneering patents rule was a good idea, and it may come back. The Supreme Court threw out an offhand note (in Festo?) to the effect that those cases were still good law. While the Federal Circuit has ignored the doctrine, it seems to be hewing more closely to Supreme Court precedent these days.
I believe there used to be a notion that “pioneering” patents were entitled to a little slack under the enablement requirements, so that the inventor could claim a bit more broadly and reap benefits comensurate with the significance of his invention. But I think the Federal Circuit has shut down this idea. (See, e.g., Plant Genetic Systems N.V. v. DeKalb Genetics Corp., Fed. Cir., No. 02-1011, 1/13/03.)
I just wrote some software to make that little red-haired cartoon dude on the right do a little dance when you click on his feet.
Comments are closed.