USPTO Rules on Special Status Petitions for Green Technology Patent Applications

In a Federal Register notice published and effective on December 8, 2009, the U.S. Patent and Trademark Office announced rules for implementing its previously-announced pilot program in which an applicant may petition to have an application involving green technologies advanced out of turn without meeting all of the requirements of the existing accelerated examination program such as examination support documents. The Green Technology Pilot Program will run for twelve months from its effective date. The USPTO may extend the pilot program (with or without modifications) depending on the feedback from the participants and the effectiveness of the pilot program.

Once a petition is granted, the special status applications will be placed on an examiner's special docket prior to the first Office action, on the examiner's amended docket after the first Office action, and will also have special status in any appeal to the BPAI and in the patent publication process.  However, petitions to make special under the Green Technology Pilot Program must be filed before December 8, 2010 and the USPTO will accept only the first 3,000 petitions, provided that the petitions meet several requirements, including:

• The non-fee petition must be in a nonprovisional, non-reissue application that was filed on or before the date of the notice (December 8, 2009), and at least one day before a first office action is mailed (which may be a restriction requirement) or appears in the Patent Application Information Retrieval (PAIR) system. Continuing applications will not automatically be accorded special status based on papers filed with a petition in a parent application. Each continuing application must on its own meet all requirements for special status.
• The petition to make special must be accompanied by a request for early publication in compliance with 37 CFR 1.219 and the publication fee set forth in 37 CFR 1.18(d).
• The application must be classified in one of the may classes identified Section V of the Federal Register notice copied below.
• The application must have no more than 3 independent claims and 20 total claims, or a preliminary amendment must be filed to reduce the number of claims at or below these thresholds.  Applicants may file a preliminary amendment to cancel the excess claims and/or the multiple dependent claims at the time the petition to make special is filed.
• The claims must be directed to a single invention and include a statement that if the USPTO determines that the claims are directed to multiple inventions, the applicant will agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements 
• The claimed invention must materially enhance the quality of the environment or materially contribute to: (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction, and explain how this standard is met

If applicant files a petition to make special under the Green Technology Pilot Program that does not comply with the requirements set forth in the notice, the USPTO will notify the applicant of the deficiency by issuing a notice and applicant will be given only one opportunity to correct the deficiency within the longer of one month or thirty days.  Otherwise, tithe application will not be eligible for the Green Technology Program.  The time period for reply is not extendable under 37 CFR 1.136(a).

For applications pertaining to environmental quality, the petition to make special must state that special status is sought because the invention materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements. If the application does not clearly disclose that the claimed invention materially enhances the quality of the environment by contributing to the restoration or maintenance of one of the basic life sustaining natural elements, the petition must be accompanied by a statement signed by the applicant, assignee, or an attorney/agent registered to practice before the USPTO, in explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially enhance the quality of the environment. Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may enhance the quality of the environment. See MPEP § 708.02 (item V).

 

For patent applications pertaining to: (1) The discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) the reduction of greenhouse gas emissions, the term ''renewable energy resources'' includes hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources. The second category would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances. The third category listed above would include, but is not limited to, inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies).

 

The petition to make special for an application directed to development of renewable energy or energy conservation, or directed to greenhouse gas emission reduction, must state the basis for the special status (i.e., whether the invention materially contributes to (1) development of renewable energy resources or energy conservation, or (2) greenhouse gas emission reduction). If the application disclosure is not clear on its face that the claimed invention materially contributes to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction, the petition must be accompanied by a statement signed by the applicant, assignee, or an attorney/agent registered to practice before the USPTO, explaining how the materiality standard is met. The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction, nor does the standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to (1) development of renewable energy or energy conservation, or (2) greenhouse gas emission reduction. See MPEP § 708.02 (item VI).

 

For USPTO the press release, click here.  For the Federal Register notice with more details of the program and the requirements to participate, click here.  USPTO Director Kappos also provides this entry on his official blog on the subject with links to his remarks from the press conference, as well as press accounts of the announcement in NYTimes.com and WSJ.com.

 

 

The following is a list of the eligible classifications:

A. Alternative Energy Production

1. Agricultural waste (USPC 44/589).

2. Biofuel (USPC 44/605; 44/589).

3. Chemical waste (USPC 110/235–259, 346).

4. For domestic hot water systems (USPC 126/634–680).

5. For passive space heating (USPC 52/173.3).

6. For swimming pools (USPC 126/ 561–568).

7. Fuel cell (USPC 429/12–46).

8. Fuel from animal waste and crop residues (USPC 44/605).

9. Gasification (USPC 48/197R, 197A).

10. Genetically engineered organism (USPC 435/252.3–252.35, 254.11–254.9,257.2, 325–408, 410–431).

11. Geothermal (USPC 60/641.2–641.5; 436/25–33).

12. Harnessing energy from man-made waste (USPC 75/958; 431/5).

13. Hospital waste (USPC 110/235– 259, 346).

14. Hydroelectric (USPC 405/76–78; 60/495–507; 415/25).

15. Industrial waste (USPC 110/235–259, 346).

16. Industrial waste anaerobic digestion (USPC 210/605).

17. Industrial wood waste (USPC 44/589; 44/606).

18. Inertial (e.g., turbine) (USPC 290/51, 54; 60/495–507).

19. Landfill gas (USPC 431/5).

20. Municipal waste (USPC 44/552).

21. Nuclear power—induced nuclear reactions: processes, systems, and elements (USPC 376/all).

22. Nuclear power—reaction motor with electric, nuclear, or radiated energy fluid heating means (USPC 60/203.1).

23. Nuclear power—heating motive fluid by nuclear energy (USPC 60/644.1) Photovoltaic (USPC 136/243–265).

24. Refuse-derived fuel (USPC 44/552).

25. Solar cells (USPC 438/57, 82, 84,85, 86, 90, 93, 94, 96, 97).

26. Solar energy (USPC 126/561–714; 320/101).

27. Solar thermal energy (USPC 126/561–713; 60/641.8–641.15).

28. Water level (e.g., wave or tide) (USPC 405/76–78; 60/495–507).

29. Wind (USPC 290/44, 55; 307/64–66, 82–87; 415/2.1).

B. Energy Conservation

1. Alternative-power vehicle (e.g.,hydrogen) (USPC 180/2.1–2.2, 54.1).

2. Cathode ray tube circuits (USPC 315/150, 151, 199).

3. Commuting, e.g., HOV, teleworking (USPC 705/13).

4. Drag reduction (USPC 105/1.1–1.3; 296/180.1–180.5; 296/181.5).

5. Electric lamp and discharge devices (USPC 313/498–512, 567–643).

6. Electric vehicle (USPC 180/65.1;180/65.21; 320/109; 701/22; 310/1–310).

7. Emission trading, e.g., pollution credits (USPC 705/35–45).

8. Energy storage or distribution (USPC 307/38–41; 700/295–298; 713/300–340).

9. Fuel cell-powered vehicles (USPC 180/65.21; 180/65.31).

10. Human-powered vehicle (USPC 180/205; 280/200–304.5).

11. Hybrid-powered vehicle (USPC 180/65.21–65.29; 73/35.01–35.13, 112–115, 116–119A, 121–132).

12. Incoherent light emitter structure (USPC 257/79, 82, 88–90, 93, 99–103).

13. Land vehicle (USPC 105/49–61 (electric trains); 180/65.1–65.8 (electric cars)).

14. Optical systems and elements (USPC 359/591–598).

15. Roadway, e.g., recycled surface, all-weather bikeways (USPC 404/32–46).

16. Static structures (USPC 52/309.1–309.17, 404.1–404.5, 424–442, 783.1–795.1).

17. Thermal (USPC 702/130–136).

18. Transportation (USPC 361/19, 20, 141, 152, 218).

19. Watercraft drive (electric powered) (USPC 440/6–7).

20. Watercraft drive (human powered) (USPC 440/21–32).

21. Wave-powered boat motors (USPC 440/9).

22. Wind-powered boat motors (USPC 440/8).

23. Wind-powered ships (USPC 114/ 102.1–115).

C. Environmentally Friendly Farming

1. Alternative irrigation technique (USPC 405/36–51).

2. Animal waste disposal or recycling (USPC 210/610–611; 71/11–30).

3. Fertilizer alternative, e.g., composting (USPC 71/8–30).

4. Pollution abatement, soil conservation (USPC 405/15).

5. Water conservation (USPC 137/78.2–78.3; 137/115.01–115.28).

6. Yield enhancement (USPC 504).

D. Environmental Purification, Protection, or Remediation

1. Biodegradable (USPC 383/1; 523/124–128; 525/938; 526/914).

2. Bio-hazard, Disease (permanent containment of malicious virus, bacteria, prion) (USPC 588/249–249.5).

3. Bio-hazard, Disease (destruction of malicious virus, bacteria, prion) (USPC 588/299).

4. Carbon capture or sequestration (USPC 95/139–140; 405/129.1–129.95; 423/220–234).

5. Disaster (e.g., spill, explosion, containment, or cleanup) (USPC 405/129.1–129.95).

6. Environmentally friendly coolants, refrigerants, etc. (USPC 252/71–79).

7. Genetic contamination (USPC 422/1–43).

8. Hazardous or Toxic waste destruction or containment (USPC 588/1–261).

9. In atmosphere (USPC 95/57–81, 149–240).

10. In water (USPC 210/600–808; 405/60).

11. Landfill (USPC 405/129.95).

12. Nuclear waste containment or disposal (USPC 588/1–20, 400).

13. Plants and plant breeding (USPC 800/260–323.3).

14. Post-consumer material (USPC 264/36.1–36.22, 911–921; 521/40–49.8).

15. Recovery of excess process materials or regeneration from waste stream (USPC 162/29, 189–191; 164/5; 521/40–49.8; 562/513).

16. Recycling (USPC 29/403.1–403.4; 75/401–403; 156/94; 264/37.1–37.33).

17. Smokestack (USPC 110/345; 422/900).

18. Soil (USPC 405/128.1–128.9, 129.1–129.95).

19. Toxic material cleanup (USPC 435/626–282).

20. Toxic material permanent containment or destruction (USPC 588/ all).

21. Using microbes or enzymes (USPC 435/262.5).

USPTO Expands and "Enhances" First Action Interview Pilot Program

Effective October 1, 2009, the United States Patent and Trademark Office (USPTO) is expanding and "enhancing" the original First Action Interview Pilot Program which ended on June 28, 2009.   

Under the Enhanced First Action Interview Pilot Program ending April 1, 2010, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims.  Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments).  The response period to reply to this pre-interview communication can be extended by 30 days.

Should the applicant choose not to have a first action interview, a First Action Interview office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply.  If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims.  If agreement is not reached on all claims in regards to patentability, the applicant will be given a First Action Interview office action to which the applicant will be given one month to reply with limited extensions of time and this First Action Interview office action will be considered the first action on the merits.  The applicant can also waive receipt of the First Action Interview office action during the interview with the examiner, convert the previously-submitted draft amendment to a formal amendment, and proceed directly to the second substantive examination. 

Other aspects of the program include:

• Expanding the pilot across more art units in the Technology Centers, depending upon the filing date of the application. New utility nonprovisional applications that fall within one of the following groups may be eligible for the Enhanced First Action Interview Pilot Program:
  1. Applications filed on or before November 1, 2006, and assigned to workgroup 1610 (art units 161X).
  2. Applications filed on or before October 1, 2006, and assigned to art unit 1795.
  3. Applications filed on or before February 1, 2008, and assigned to workgroups 2150 and 2160 (art units 215X and 216X).
  4. Applications filed on or before July 1, 2008, and assigned to workgroups 2440 and 2450 (art units 244X and 245X).
  5. Applications filed on or before June 1, 2007, and assigned to art unit 2617.
  6. Applications filed on or before May 1, 2008, and assigned to art units 2811-2815, 2818, 2822-23, 2826, 2891-2895.
  7. Applications filed on or before December 1, 2007, and assigned to art unit 3671.
  8. Applications filed on or before January 1, 2008, and assigned to art unit 3672.
  9. Applications filed on or before November 1, 2007, and assigned to art unit 3673.
  10. Applications filed on or before February 1, 2008, and assigned to art unit 3676.
  11. Applications filed on or before July 1, 2007, and assigned to art units 3677.
  12. Applications filed on or before November 1, 2007, and assigned to art units 3679.
  13. Applications filed on or before May 1, 2006, and assigned to art unit 3735.
  14. Applications filed on or before April 1, 2007, and assigned to art unit 3736.
  15. Applications filed on or before December 1, 2006, and assigned to art units 3737.
  16. Applications filed on or before August 1, 2006, and assigned to art units 3768.
  17. Applications filed on or before December 1, 2006, and assigned to art unit 3739.
  18. Applications filed on or before September 1, 2007, and assigned to art units 3762 and 3766.
  19. Applications filed on or before September 1, 2006, and assigned to art unit 3769.
• Previously, all applicants had to go through all phases of the pilot’s procedure. After receiving a Pre-interview communication that contains the results of the examiner’s prior art search, applicants may now choose from the following:

  a. The full pilot procedure (Pre-interview communication, interview and first action).

  b. Waiver of the interview (Pre-interview communication and first action only).

  c. Waiver of the interview and first action (by filing a reply in compliance with 37 CFR 1.111(b) in response to the Pre-interview communication).

  d. Waiver of the first action (by requesting entry of a proposed amendment during the interview).

• The time period to reply set forth in the Pre-Interview Communication will be extendable by one additional month. (Previously, the time period for reply was non-extendable.)
• The time period within which to conduct the interview will be two months from the date of filing the interview request form. (Previously, the time period was two months from the Office notice date for the Pre-interview communication.)
• Failure to timely reply to the Pre-Interview Communication or to timely conduct the interview will not result in abandonment of the application. Instead, a first action will be provided, similar to waiving the interview.

• Applicant's request to participate in the program must be filed during the six month life of the program and at least one day before a first Office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system.  The request to enter the Pilot Program must be made via EFS-Web which can be accessed at: http://www.uspto.gov/ebc/index.html

 

More Information:

Original Pilot Program (04/28/08 - 06/28/08) (click for eligibility)

Enhanced Pilot Program (10/01/09 - 04/01/10) (click for eligibility)

For more information about the Enhanced Pilot Program, click here

Changes Between the Original and Enhanced Pilot Programs 

Forms:

• Request For First Action Interview (Pilot Program) [PDF]
• Applicant Initiated Interview Request Form (PTOL-413A) [PDF]
• First Action Interview Pre-Interview Communication [PDF]
• First Action Interview Office Action Summary [PDF]

Examples:

• Pre-Interview Communication Example 1 [PDF]
• Pre-Interview Communication Example 2 [PDF]

Tips to Consider When Preparing for Interview:

• Interview Talking Points [PDF]

Slide Presentation:

• First Action Interview Pilot Program: Overview [PPT]

Contacts:

• RE: EFS-Web or PAIR system - contact the Electronic Business Center at 866-217-9197.
• RE: a specific application - contact John Follansbee at (571) 272-3964.
• RE: the First-Action Interview Pilot Program Notice - contact Joseph Weiss ((571) 272-7759), Legal Advisor, Office of Patent Legal Administration, or e-mail first.action.interview@uspto.gov.

Press Release:

----- Forwarded Message ----
From: Karen Sewell <karen.sewell@uspto.gov>
To: BillHeinze@yahoo.com
Sent: Thursday, October 1, 2009 2:23:31 PM
Subject: USPTO Expands Pilot Program to Reduce Pendency and Improve Patent Quality

PRESS RELEASE                CONTACT: Jennifer Rankin Byrne or Ruth Nyblod
October 1, 2009                                                                      Phone:  571/272-8400 or
#09-20                                                                                            Jennifer.Rankin_Byrne@uspto.gov
                                                                                            Ruth.Nyblod@uspto.gov
                   
USPTO Expands Pilot Program to Reduce Pendency and Improve Patent Quality
First Action Interview Pilot enhances information exchange between applicant and examiner and promotes early resolution of outstanding issues

Washington – The Commerce Department’s United States Patent and Trademark Office (USPTO) today announced that it is expanding its First Action Interview Pilot Program in which an applicant is entitled to an interview with the patent examiner prior to the first office action on the merits in a new utility application.  The program will expand to additional technology areas for a six-month period beginning on October 1, 2009.  The initial pilot program was limited to two computer-related technology areas.

The initial six-month pilot program, which began April 28, 2008, has shown that the patent process benefits when interaction between the applicant and the examiner are enhanced at the beginning of examination because patentability issues can be resolved early when the applicant and the examiner discuss them one-on-one.  For the applications involved in the initial pilot, the First-Action Allowance rate increased six-fold when compared to applications from the same technology area not involved in the pilot.

“When people talk to one another and listen to one another they can quickly understand points of agreement as well as differences, and resolve those differences in real-time,” noted Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.  “Initial results from this pilot are very impressive and show that interviews present a clear path to resolve issues and move prosecution forward quickly.”

Currently, an applicant may request an interview prior to a first action. Granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.

Under the expanded pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims.  Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments). 

Should the applicant choose not to have a first action interview, a First Action Interview office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply.  If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims.  In this interview, if the applicant and the examiner reach agreement on all claims in regards to patentability, a notice of allowance and fees due will be issued.  If agreement is not reached on all claims in regards to patentability, the applicant will be given a First Action Interview office action setting forth any requirements, objections and rejections to which the applicant will be given one month or 30 days, whichever is longer, to reply, with limited extensions of time.  It is this First Action Interview office action that is considered the first action on the merits in the application.

There have been several improvements made to the program since the initial pilot. For example, the response period to reply to the pre-interview communication can now be extended by 30 days.  Also, the applicant can now waive receipt of the First Action Interview office action during the interview with the examiner, convert the previously-submitted draft amendment to a formal amendment and proceed directly to the second substantive examination.  This may be preferable to those who would prefer not to wait for the First Action Interview office action and refile the proposed amendment formally.

The USPTO will continue to survey applicants during the expanded pilot to make further improvements to the program.

For details regarding eligibility and criteria for participation in the pilot, see the USPTO Web site, at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_v2.htm.

### 

 

FTC Revises Guides Governing Endorsements and Testimonials

The Federal Trade Commission has issued revisions to its Guides Concerning the Use of Endorsements and Testimonials, which will take effect on December 1, 2009 under16 C.F.R. Part 255: Guides Concerning the Use of Endorsements and Testimonials in Advertising: Notice Announcing Adoption of Revised Guides

TGIF for Religion and Intellectual Property

On July 7, 2009, Pope Benedict XVI published his third encyclical letter titled "Caritas in veritate" (Charity in Truth) which, among other things, states that "On the part of rich countries there is excessive zeal for protecting knowledge through an unduly rigid assertion of the right to intellectual property, especially in the field of health care.  At the same time, in some poor countries, cultural models and social norms of behaviour persist which hinder the process of development." 

 

In response, the Intellectual Property Owners Association announced that it and others "are working to educate on the incentives that IP rights provide for advancing knowledge and creating jobs."

 

Good luck in bringing some of that same religious fervor to your organization.

Evidence of Intent to Use Before the US Trademark Office

The latest issue of The Trademark Reporter includes Sandra Edelman's timely and informative article on bona fide intent, entitled "Proving Your Bona Fides - Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act," 99 Trademark Reporter 763 (May-June 2009).

 

According to the TTABlog, the U.S. Trademark Trial and Appeal Board's recent decision in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential], brought the bona fide intent issue to the forefront for many trademark practitioners. There the Board sustained Honda's opposition to Herr Winkelmann's Section 44(e) application to register the mark V.I.C. for vehicles, ruling on summary judgment that Winkelmann had failed to establish the requisite bona fide intent to use his mark in the USA.

According to Edelman,"registration applicants should be very careful about including too many products or services in their intent-to-use based applications, and should maintain some minimal level of contemporaneous documentation and provable business rationale for the products or services listed in the application." 

The affirmative activities that have been deemed indicative of the presence of a bona fide intent to use a trademark in commerce include:

• conducting a trademark availability search
• performing preparatory graphic design work or labeling on sales material for a product;
• using a mark in international jurisdictions
• using a mark in test marketing
• testimony regarding informal, unwritten business plans or market research
• obtaining necessary regulatory permits
• obtaining a correlative domain name for the mark or setting up a website
• making contacts with individuals who might help develop a business;
• correspondence mentioning the planned use of the mark
• attempts to find licensees, including ones outside of the U.S.
• obtaining commercial space in which to perform the services

The factual circumstances that have been deemed indicative of a lack of a bona fide intent to use include:

·     an unrealistically broad listing of goods and services;

• a defensive intent to prevent others from using the mark;
• the filing of numerous intent-to-use applications without ever using them or subsequently abandoning them;
• the absence of any steps or planning to use the mark;
• lack of industry-relevant experience;
• misrepresentation of goods or services in order to reserve a mark

Website "Means" Requires Algorithm Disclosure

In Ex parte Catlin, __ Westlaw __ (U.S. PTO Bd. App. & Int. February 3, 2009)(precedential), the Board held that a method claim for implementing an on-line incentive system that recited "providing, at a merchant's web site, means for a consumer to participate in an earning activity to earn value from a merchant" was invalid for indefiniteness under 35 U.S.C.  Section 112, second paragraph, where the application failed to disclose any algorithms that transformed the disclosed general purpose processor to a special purpose computer programmed to perform the disclosed functions:

 

According to Administrative Patent Judge Horner,

. . . we have thoroughly reviewed the Appellants' Specification and have not been able to locate an adequate disclosure of structure, material, or acts corresponding to the functions of allowing a consumer to participate in an earning activity and earn value from an earning activity. In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to allow a consumer to participate in an earning activity and earn value from an earning activity. Accordingly, the Specification fails to disclose the algorithms that transform the general purpose processor to a special purpose computer programmed to perform the disclosed functions of the first elements of claims 1, 9, and 20. The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in the first step of claims 1, 9, and 20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and claims 2-8, 1 1 - 19, and 2 1-25 depending therefrom, are unpatentable . . . as indefinite.

UKIPO "Green Channel" for Expedited Searching and Examination of Eco-Friendly Technology; SIPO to Follow

The UK Intellectual Property Office has initiated a "Green Channel" where applicants will be able to request accelerated processing of their application if the invention relates to a 'green' or environmentally-friendly technology.  To enter the Green Channel, the applicant must make a request in writing, indicating:

• that their application relates to a ‘green’ or environmentally-friendly technology and
• which actions they wish to accelerate: Search, Combined Search and Examination, Publication, and/or Examination.

The Office will require no further reasons for accelerated processing.  This service will apply to existing applications as well as to applications filed after May 12, 2009. You can find further information about the various accelerated services in the patents fast grant guidance.

According to the press release, "the ‘green’ patents initiative was one of the key deliverables announced at the UK/China Economic and Financial Dialogue on May 11, with China already agreeing to adopt the proposal.  The Intellectual Property Office is working with other major trading partners to get them to sign-up to the green patents fast-track system."

In the U.S., so-called "petitions to make special" (except those based on applicant’s health, age, or the PPH pilot program), are required to comply with the detailed requirements for the accelerated examination program as set forth in this notice.

Federal Circuit Standard of Review for ITC Decisions

In Erbe Elektromedizin GMBH v. International Trade Commission (Fed. Cir. 2009; May 19, 2009), the court restated its standard of review for decisions of the U.S. International Trade Commission:

We review the rulings of the ITC under the Administrative Procedure Act, 5 U.S.C. § 706. 19 U.S.C. § 1337(c); Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1355 (Fed. Cir. 2007). "Rulings of law by the ITC are reviewed for correctness, and findings of fact are reviewed to ascertain whether they were supported by substantial evidence on the record as a whole." Osram, 505 F.3d at 1355. . . . 

We review claim construction de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). The claims "must be read in view of the specification, of which they are a part." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). We generally do not construe claim language to be inconsistent with the clear language of the specification; "[u]sually, it is dispositive." Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). . . .

. . . the fundamental disagreement between the parties boils down to whether fixed optics are a "working channel." . . . the parties agree that infringement requires the accused devices to be used with an endoscope having at least two "working channels" and that the accused devices have only a single "working channel" if the fixed optics are not a "working channel." Based on our claim construction, the ITC correctly concluded that ERBE presented no evidence that any accused device had been used with an endoscope that had at least two "working channels" and, therefore, that there was no evidence of direct infringement and thus no basis for finding induced or contributory infringement. In light of this holding, we need not address the other arguments raised on appeal. Accordingly, we affirm.

Federal Circuit Clarifies Materiality Test for Geographically Deceptively Misdescriptive Marks

In In re Spirits International, N.V., (April 29, 2009), the U.S. Court of Appeals for the Federal Circuit vacated the TTAB's decision in which the Board found the mark MOSKOVSKAYA to be primarily geographically deceptively misdescriptive of vodka. (TTAB decision here  via the TTABlog). The CAFC ruled that the Board had improperly applied the materiality test of Section 2(e)(3) because it failed to consider whether a substantial portion of all relevant consumers (not just Russian speakers) is likely to be deceived:

In this case, as in every case, in order to establish a prima facie case of materiality there must be some indication that a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark. Here the Board properly recognized that in order to be deceptive, foreign language marks must meet the requirement that “an appreciable number of consumers for the goods or services at issue will be deceived.” In re Spirits, 86 USPQ2d at 1085.

The problem with the Board’s decision is that it elsewhere rejected a requirement of proportionality, and discussed instead the fact that Russian is a “common, modern language[] of the world [that] will be spoken or understood by an appreciable number of U.S. consumers for the product or service at issue,” such number being in this case 706,000 people, according to the 2000 Census. Id. The Board, however, failed to consider whether Russian speakers were a “substantial portion of the intended audience.” Because the Board applied an incorrect test, a remand is required.

We express no opinion on the ultimate question of whether a substantial portion of the intended audience would be materially deceived. We note that only 0.25% of the U.S. population speaks Russian. Appellant’s Br. 26. If only one quarter of one percent of the relevant consumers was deceived, this would not be, by any measure, a substantial portion. However, it may be that Russian speakers are a greater percentage of the vodka-consuming public; that some number of non-Russian speakers would understand the mark to suggest that the vodka came from Moscow; and that these groups would together be a substantial portion of the intended audience.

We remand to the Board for a determination of whether there is a prima facie case of material deception under the correct legal test in the first instance. Because of our disposition on the question of the prima facie case, we do not reach the questions raised by the appellant as to the Board’s rejection of the survey as rebutting the prima facie case, though we note that the Board’s holding as to this issue was heavily influenced by its incorrect view of materiality.

USTR Releases 2009 Special 301 Report

The Office of the U.S. Trade Representative (USTR) released its annual “Special 301” Report on April 30, 2009 covering the adequacy and effectiveness of intellectual property rights (IPR) protection by U.S. trading partners.    Significant developments in this year’s Report include: 

·         Canada is being elevated to the Priority Watch List for the first time, reflecting increasing concern about the continuing need for copyright reform, as well as continuing concern about weak border enforcement. 

·         USTR is also elevating Algeria and Indonesia to the Priority Watch List, reflecting growing concern about the IPR situation in those countries.  

·         Korea is being removed from the Watch List in recognition of the significant improvements it has made during the past year, and the Korean Government’s policy direction of continuing to place a priority on improving its IPR regime.  This marks the first time in the history of the report that Korea has not appeared on either the Watch List or the Priority Watch List.  USTR will, however, continue to monitor closely the ongoing problem of Internet piracy in Korea, and will be prepared to consider returning Korea to the Watch List in the future if it does not respond effectively to this challenge through its implementation of newly enacted legislation and other steps. 

·         Again this year, USTR’s Special 301 Report highlights the prominence of IPR concerns with respect to China and Russia, despite some evidence of improvement in both countries:   

o        USTR announced that it would maintain pressure on China by including it on the Priority Watch List.  “I am particularly troubled by reports that Chinese officials are urging more lenient enforcement of IPR laws, motivated by the financial crisis and the need to maintain jobs,” said Ambassador Kirk. “China needs to strengthen its approach to IPR protection and enforcement, not weaken it.” 

o        The Administration also continues to seek improvements to the intellectual property regime in Russia.  The United States is committed to ensuring that Russia fulfills the promises it made to improve its IPR protection and enforcement regimes as part of a bilateral agreement with the United States. 

 

 

U.S. TTAB: No Famous Marks Doctrine

In Bayer Consumer Care AG v. Belmora LLC, Cancellation No. 92047741 (April 6, 2009) [precedential], the U.S. Trademark Trial and Appeal Board held that their is no famous marks Doctrine in the U.S.

.

Bayer alleged that its mark was "well-known" in this country prior to Belmora's filing date and that Belmora copied its mark and packaging for the FLANAX product.  The Board pointed out that the Paris Convention is not self-executing, and that "Articles 6bis and 6ter do not afford an independent cause of action for parties in Board proceedings." Nor does Section 44 of the Trademark Act "provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding.  According to the TTAB,

Turning next to petitioner’s claim under Article 6bis of the Paris Convention, “the Paris Convention is not selfexecuting. As such, Articles 6bis and 6ter do not afford an independent cause of action for parties in Board proceedings.” International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1603 (TTAB 2002); see also, In re Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1175 (Fed. Cir. 2005) (“the Paris Convention is not a self-executing treaty and requires congressional implementation”), and Person’s Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed. Cir.1990); compare, British-American Tobacco Co. v. Philip Morris, Inc., 55 USPQ2d 1585 (TTAB 2000) (denying motion to dismiss claim under Pan American Convention in part because Convention is self-executing).

Furthermore, while Section 44 was “generally intended” to implement elements of the Paris Convention, In re Rath, 402 F.3d at 1207, 74 USPQ2d at 1177, it does not, through subsections 44(b) or (h) or otherwise, provide the user of an assertedly famous foreign trademark with an independent basis for cancellation in a Board proceeding, absent use of the mark in the United States. See, ITC Ltd. V. Punchgini Inc., 482 F.3d 135, 82 USPQ2d 1414, 1433 (2d Cir. 2007), cert. denied, 128 S.Ct. 288 (2007) (“Congress’s specificity in dealing with registered marks cautions against reading a famous marks exception into sections 44(b) and (h), which nowhere reference the doctrine, much less the circumstances under which it would appropriately apply despite the fact that the foreign mark was not used in this country.”).

We acknowledge that the Second Circuit in Punchgini discussed the possible recognition by this Board and by the U.S. Court of Appeals for the Ninth Circuit of a famous mark exception to the territoriality principle, the latter Court apparently recognizing the doctrine “as a matter of sound policy,” in Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, 73 USPQ2d 1258 (9th Cir. 2004). Punchgini, 82 USPQ2d at 1430. However, the Second Circuit also noted that neither the referenced Board cases, one of which addressed the possible exception only in dictum, nor the Grupo Gigante decision found the exception to arise in the context of an Article 6bis claim. Id. at 1429-30. And petitioner’s claim is, as noted, based on Article 6bis of the Paris Convention. fn4 For all of these reasons, respondent’s motion is GRANTED with respect to petitioner’s claim under Article 6bis of the Paris Convention, and the claim is hereby DISMISSED, WITH PREJUDICE.

fn4. In any event, respondent amply demonstrates that a famous mark exception, whatever its possible basis in law, is a minority view, and that most courts which have considered the issue find that there is no cause of action under such an exception where, as here, the plaintiff relies on foreign use alone. Respondent’s Motion to Dismiss at pp. 5-10. More importantly, in Grupo Gigante, the Ninth Circuit found that “the Paris Convention creates neither a federal cause of action nor additional substantive rights” beyond those in the Lanham Act. Id., 73 USPQ2d at 1266. And Board decisions discussing the possibility of a famous foreign mark exception in the common law do not hold to the contrary. See, First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 77 USPQ2d 1334 (TTAB 2005), rev’d on other grounds, 476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007), The All England Lawn Tennis Club (Wimbledon) Limited v. Creations Aromatiques, Inc., 220 USPQ 1069 (TTAB 1983) . . .

U.S. Trademark Fraud Cured Post-Registration

Thanks to the TTABlog for pointing out a non-precedential decision of the U.S. Trademark Trial and Appeal Board from October 2008 that adopted the approach of the panel majority in University Games in ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud." Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (October 23, 2008) [not precedential]. According to John Welch,

It appears from this decision that fraud may be curable even after
registration, as long as the false statement regarding use is corrected before
the registration is challenged. Note well that this is a non-precedential
decision by one panel of the TTAB, so it is not etched in stone. But it is
certainly a promising approach to the fraud problem. . . .

Let the post-registration fraudits begin!! [Maybe we should call them "f®audits"?]

TTAB Clarifies Requirements for Intent-to-Use Application Based on Foreign Registration

In Honda Motor Co., Ltd v. Friedrich Winkelmann (Opposition No. 91170552), the U.S. Trademark Trial and Appeal Board (the "TTAB") recently ruled that even though actual "use in commerce" is not required, the applicant must possess a bona fide intent to use a mark in U.S. commerce at the time it files a trademark application with the U.S. Patent and Trademark Office under Section 44(e). Under that section of the trademark statute, a mark registered in a foreign country may be registered on the U.S. registry, but the application must state the applicant has a bona fide intent to use the mark in commerce for the described goods and services. See Lanham Act § 44(e), 15 U.S.C. 1126(e). Although Section 44 does not require evidence of actual use in U.S. commerce prior to registration, the recent TTAB decision has put some teeth into Section 44(e)'s intent-to-use requirement.

New U.S. Patent Status Monitoring Service

PriorSmart (http://www.priorsmart.com/) will monitor the docket of any application, reexamination, or issued patent and then e-mail reports. "Track documents affecting your litigation or freedom–to–operate opinion; Monitor competitors en masse; Be alerted to new continuations or divisionals."

You just select how long you want your document(s) monitored, how often you want to be alerted, and what billing code to assign to the document. The pricing structure is shown below.

Monitoring frequency Cost

Monthly $3.97 $47.64 per year
Weekly $7.97 $95.64
Daily $15.97 $191.64

U.S. Trademark Fraud Cured Post-Registration

Thanks to the TTABlog for pointing out a non-precedential decision of the U.S. Trademark Trial and Appeal Board from October 2008 ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud." Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (October 23, 2008) [not precedential]. According to John Welch,

It appears from this decision that fraud may be curable even after registration, as long as the false statement regarding use is corrected before the
registration is challenged. Note well that this is a non-precedential decision
by one panel of the TTAB, so it is not etched in stone. But it is certainly a
promising approach to the fraud problem. . . .

Let the post-registration fraudits begin!! [Maybe we should call them "f®audits"?]

Dependent Claim Element Insufficient to Trigger U.S. Inventorship

In Nartron Corp. v. Schukra U.S.A., Inc. (March 5, 2009) the Federal Circuit court of appeals reiterated that one "does not necessarily attain the status of co-inventor by providing the sole feature of a dependent claim." In this case, dependent claim 11 recited "The [seat control module for introducing massage to a seat control with an adjustable lumbar support] invention as defined in claim 6 wherein said lumbar support adjustor includes an extender."

According to the opinion by Circuit Judge Lourie,

We agree with Nartron that there is no genuine issue of material fact in this case and that Benson was not, as a result of suggesting an extender, a co-inventor of claim 11 of the ’748 patent as a matter of law. Any contribution Benson made to the invention described in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor. "One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor." Ethicon, 135 F.3d at 1460 (quotation marks omitted); see Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir. 2004) ("[A] person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known in the current state of the art." (quotation marks omitted)). Moreover, a joint inventor must "contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention."
Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998); see Caterpillar, 387
F.3d at 1377 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473
(Fed. Cir. 1997)).

. . . .the contribution of the extender is insignificant when measured against the full dimension of the invention of claim 11, not just because it was in the prior art, but because it was part of existing automobile seats, and therefore including it as part of the claimed invention was merely the basic exercise of ordinary skill in the art. See Fina Oil, 123 F.3d at 1473 ("The basic exercise of the normal skill expected of one skilled in the art, without an inventive act, also does not make one a joint inventor. Therefore, a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known and the current state of the art." (citations omitted)); see also Eli Lilly, 376 F.3d at 1362 ("A contribution of information in the prior art cannot give rise to joint inventorship because it is not a contribution to conception.").

Borg Indak admitted at oral argument that a lumbar support adjustor with an extender existed in automobile seats in the prior art. Thus, Benson’s contribution of supplying the extender to the patented invention was the exercise of ordinary
skill in the art. The specification of the ’748 patent makes clear that the
automobile seat, including its lumbar support adjustor and extender, comprises
the existing object on which the invention (i.e., the control module) operates,
or the background to the invention. . . . As Borg Indak admitted, the extender
was an existing feature in an automobile seat. In fact, the necessity for the
invention described in the ’748 patent arose from the fact that existing
automobile seats had the parts required to provide a massage (e.g., lumbar
support adjustors including extenders), but simply lacked the controller that
would move those parts in a way that would provide a massage. . . .Thus,
Benson’s suggestion that the control module be capable of operating with an
automobile seat that has a lumbar support adjustor including an extender only
amounted to the exercise of ordinary skill in the art.

Further supporting the conclusion that Benson’s contribution of the extender was
insignificant when measured against the full dimension of the invention of claim
11, the specification and claims of the ’748 patent primarily focus not on the
structure of the seat itself, but on the structure and function of the control
module, which operates the seat. The specification mentions the extender only
once in a twenty-column patent.

The only time that the specification mentions the extender, it does no more than refer to it as the background upon which the invention is built. . . . The patent contains no description of the physical characteristics of the extender, nor does it contain any drawing of the
extender.

. . . This is not a case in which a person claims to be an inventor because he has suggested a non-obvious combination of prior art elements to the named inventors. Such an individual may be a co-inventor. There is not, and could not be, any claim that the addition of the extender here was anything but obvious. Benson’s contribution therefore does not make him a co-inventor of the subject matter of claim 11.

Utility Model Protection In China

According to Professor Wegner, yesterday, "at the opening of the oral hearing in the Zhejiang High People's Court in Chint v. Schneider, Chinese utility model holder Chint completed its major victory over French competitor Schneider through an unprecedented $ 23 million settlement (RMB 157 million), approximately half the damages awarded two years ago by the Wenzhou Intermediate People's Court."

He also offers a few lessons from Foley and Lardner's presentation on "China Patent Practice: The New Realities Strategies for Success for the Multinational Enterprise," including

• The 828,000 Chinese patent, utility model and design applications filed last year represent –by far –the largest number of patent filings of any country in the world.
• Because early patent protection will not be possible [due to rising application backlogs], utility model protection should be considered as an alternative.
• Less than one (1) percent of utility model applications are by foreign enterprises.
• Utility model protection is excellent for prompt grant of the patent right.
• The patent is registered with a substantive examination deferred until enforcement.
• Utility model protection is an excellent way to quickly boost the size of granted patent protection.
• Utility model protection has resulted in very high damages awards on a case by case basis
• a trade secret invention practiced in the United States may still be the basis for patenting in other countries; Only the United States adopted the unique bar against patenting an applicant’s secret invention. No other country has followed the U.S. lead of Judge Learned Hand in Metallizing Engineering.
• it is anticipated that many disputes will arise as to ownership of improvement inventions that are made as part of outsourcing or joint venture agreements.

Gasket on Flange Not Equivalent to Gasket on Lid

In Felix v. American Honda Motor Co. (April 10, 2009) the Federal Circuit held that the patent was not literally infringed because the accused product mounted a gasket on the automobile trunk lid, not on a flange as claimed in the patent. The patent was not infringed under the doctrine of equivalents because Felix surrendered claim scope with amendments made during USPTO prosecution.

According to the opinion by Circuit Judge Linn,

On Honda’s second motion for summary judgment, the district court held that Felix was precluded under the doctrine of prosecution history estoppel from arguing that the In-Bed Trunk infringed the gasket limitation by equivalents. Equivalents Op. at 7. Felix argues that he rebutted the presumption of prosecution history estoppel by showing that the amendment giving rise to the estoppel was tangential to the equivalent in question—namely, a gasket mounted on the lid, rather than the flange of the channel. . . .

. . . Amendment-based prosecution history estoppel “arises when an amendment is made to secure the patent and the amendment narrows the patent’s scope.” Festo, 535 U.S. at 736. “A patentee’s decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim.” Id. at 740. But the patentee may rebut this presumption by “demonstrat[ing] that the alleged equivalent would have been unforeseeable at the time of the narrowing amendment, that the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question, or that there was ‘some other reason’ suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., . . .

1. Presumption of Surrender

We first consider which amendment—if any—gave rise to a presumption of surrender of claim scope encompassing the equivalent at it issue. The limitation at issue here is the gasket limitation. That limitation was not contained in original independent claim 1, but was present in dependent claim 7. In Felix’s first amendment on September 10, 1999, he cancelled original claim 1 and rewrote original dependent claim 7 in independent form as claim 14 to contain all of the limitations of claims 1 and 7. J.A. 490-91. It was this first amendment that had the effect of adding the channel and gasket limitations of dependent claim 7 to the broader claim that was cancelled. “[T]he rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel.” Honeywell, 370 F.3d at 1134. Thus, Felix’s decision in the first amendment to cancel original claim 1 and to rewrite original claim 7 in independent form as claim 14 gave rise to a presumption of surrender.

The interesting wrinkle in this case is that even after Felix cancelled original independent claim 1 and rewrote original dependent claim 7 in independent form, the examiner still did not allow the rewritten dependent claim. In other words, even though Felix amended the claim and thereby narrowed its scope in an effort to secure allowance, that effort did not succeed.5 It was only after claim 8 was rewritten in independent form to include the limitations of claims 1, 7, and 8 that the claim was allowed.

The fact that the first amendment did not succeed and that a further amendment was required to place the claim in allowable form, however, is of no consequence as to the estoppel. It is the patentee’s response to a rejection—not the examiner’s ultimate allowance of a claim—that gives rise to prosecution history estoppel. . . .We therefore hold that the presumption of prosecution history estoppel attaches when a patentee cancels an independent claim and rewrites a dependent claim in independent form for reasons related to patentability, even if the amendment alone does not succeed in placing the claim in condition for allowance.

It is also immaterial in this case that the cancellation and amendment were to application claims 1, 7, and 14—rather than to application claims 8 and 16, which resulted in the asserted claim. The presumption of surrender “applies to all claims containing the [added] [l]imitation, regardless of whether the claim was, or was not, amended during prosecution.” Deering, 346 F.3d at 1326. . . . To hold otherwise would be to exalt form over substance and distort the logic of this jurisprudence, which serves as an effective and useful guide to the understanding of patent claims. The fact that the [the limitation in question] was not itself amended during prosecution does not mean that it can be extended by the doctrine of equivalents to cover the precise subject matter that was relinquished in order to obtain allowance of [another claim].”). Thus, in this case, the cancellation of original independent claim 1 coupled with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a presumption of surrender applicable to all limitations, found in any of the claims of the ’625 patent, that correspond to the limitations of claim 7.

We next turn to the scope of the presumptive surrender. “[W]hen a claim is rewritten from dependent into independent form and the original independent claim is cancelled . . . the surrendered subject matter is defined by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation. Equivalents are presumptively not available with respect to that added limitation.” Honeywell, 370 F.3d at 1144. Equivalents are therefore presumptively not available as to any of the subject matter added in Felix’s first amendment. It is immaterial that Felix chose to add both the channel and the gasket limitations, rather than just one. The resulting estoppel attaches to each added limitation. See Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir. 2008) (“It is not relevant to the determination of the scope of the surrender that the applicant did not need to amend the claims [as they were amended] in order to overcome the prior art.”) . . . Felix is therefore presumptively barred from relying on the doctrine of equivalents to prove that Honda’s In-Bed Trunk meets the gasket limitation—one of the two limitations added by amendment.

2. Tangentiality

Felix argues that he has rebutted the presumption of prosecution history estoppel as to the gasket limitation, because “the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question.” Felix argues that the first amendment “was made because the applicant thought the prior art lacked a channel,” not because of the presence or position of a gasket. Appellant’s Br. at 34. . . .

Felix relies on the language in his argument to the examiner that “the cited references do not show the channel of Claim 7, which is formed at the rim of the bed opening, in combination with the other structure of Claims 1 and 7.” J.A. 494. We reject Felix’s argument for two reasons. First, the cited language in Felix’s argument to the examiner expressly refers not only to the “channel of Claim 7” but also to the “other structure” of the claims. It is therefore not “objectively apparent” from this argument that the channel was the only reason for cancelling original claim 1 and rewriting dependent claim 7 in independent form, as Felix argues. Second, the cited language does not explain the entire amendment. If Felix had intended only to add a channel and not add a gasket, he could easily have simply amended original claim 1 to add limitation (e) and not limitation (f). Thus, Felix has identified no explanation in the prosecution history for the addition of the gasket limitation, and Felix therefore cannot meet his burden to show that the rationale for adding the gasket limitation was tangential to the presence and position of a gasket.

. . . Because we conclude that Felix is barred by the doctrine of prosecution history estoppel from relying on the doctrine of equivalents to prove that the accused In-Bed Trunk meets the gasket limitation, we also affirm the district court’s summary judgment of no infringement by equivalents.

. . . We agree with the district court that prosecution history estoppel bars Felix from relying on the doctrine of equivalents to show that Honda’s In-Bed Trunk meets the gasket limitation—“a weathertight gasket mounted on said flange and engaging said lid in its closed position.” We therefore affirm the district court’s summary judgment of no infringement under the doctrine of equivalents.

Experimental Use Explained

In Clock Spring, L.P. v. Wrapmaster, Inc. (March 25, 2009), the Federal Circuit held that Clock Spring's 1989 demonstration was an experimental use and not a prior public use:

The experimental use exception is not a doctrine separate or apart from the public use bar. EZ Dock, Inc. v. Schafer Sys. Inc., 276 F.3d 1347, 1351-52 (Fed. Cir. 2002). Rather, something that would otherwise be a public use may not be invalidating if it qualifies as an experimental use. Electromotive Div. of Gen. Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1211 (Fed. Cir. 2005) (limiting "experimentation sufficient to negate a pre-critical date public use or commercial sale to cases where the testing was performed to perfect claimed features, or . . . to perfect features inherent to the claimed invention"). In Allen Engineering Corp. v. Bartell Industries, Inc., we catalogued a set of factors that in previous cases had been found instructive, and in some cases dispositive, for determining commercial versus experimental uses. 299 F.3d 1336, 1353 (Fed. Cir. 2002). These factors include:

(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, (9) the degree of commercial exploitation during testing, (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.

Id. (quotation and alteration marks omitted). Though a prior commercial sale and not a prior public use was at issue in Allen Engineering, the factors explicated are equally relevant to an analysis of experimental use.

We have said that lack of control over the invention during the alleged experiment, while not always dispositive, may be so. Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1366 (Fed. Cir. 2008). In that case, we held that a public use had occurred, finding "dispositive" the fact that the patentee "did not have control over the alleged testing," which was performed by its customer. Id. Clock Spring argues that Fawley, a named inventor, exercised tight control over the demonstration, as shown through the detailed reports made of the demonstration. But, the detailed reports do not provide evidence that Fawley controlled the demonstration. An independent observer "analyzed and recorded" the 1989 demonstration. Three of the eleven Clock Spring installations were done by the pipeline’s personnel. None of these individuals was under Fawley’s control or surveillance. We need not, however, rely on lack of control as establishing public use because we conclude that the use cannot qualify as experimental for other reasons.

A use may be experimental only if it is designed to (1) test claimed features of the invention or (2) to determine whether an invention will work for its intended purpose—itself a requirement of patentability. See In re Omeprazole Patent Litig., 536 F.3d 1361, 1373-75 (Fed. Cir. 2008). In other words, an invention may not be ready for patenting if claimed features or overall workability are being tested. But, there is no experimental use unless claimed features or overall workability are being tested for purposes of the filing of a patent application.8 See EZ Dock, 276 F.3d at 1352, 1354; Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 1333 (Fed. Cir. 1998) (stating that the public use provision strives to provide "inventors with a definite standard for determining when a patent application must be filed" (quotation marks omitted)). Indeed, the experimental use negation of the § 102(b) bar only exists to allow an inventor to perfect his discovery through testing without losing his right to obtain a patent for his invention. See EZ Dock

Clock Spring does not urge that refining the claim limitations was the subject of the 1989 demonstration. Rather, Clock Spring argues that the demonstration was experimental because the 1989 demonstration was designed to determine durability of the method, i.e., its suitability for the intended purpose. See City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 136 (1877). The reports make no such explicit statement. The NCF report states that "[t]he purpose of this demonstration . . . was to demonstrate to Panhandle Eastern attendants and guests the steps of application and the ability of minimally-trained crews to make Clock Spring installations." J.A. 2447. The 1994 GRI report states that "[t]his demonstration was designed to familiarize pipeline personnel with the Clock Spring technology, and to begin training of maintenance personnel in the use of the coil pass installation method." J.A. 1441 (emphasis added). The demonstration was similarly described to the United States Patent and Trademark Office ("PTO") during prosecution, where the applicant stated that the purpose of the demonstration was to seek "input from people in the industry on the performance of the bands and the practicality of their installation techniques." J.A. 2452.

To be sure, the 1994 GRI report can be read as suggesting that the 1989 demonstration was for durability testing because it states that "recovery and analysis of installed composite after several years of exposure in pipeline settings was the only means of verifying the long-term performance of [the clock spring’s] composites in moist soils." J.A. 1441. Clock Spring’s problem, however, is that no report in the record states, or in any way suggests, that the 1989 demonstration was designed to test durability for the purposes of the patent application to the PTO. In fact, the reports make clear that the durability testing was for "acceptance by regulators and the pipeline industry," J.A. 1444, and that the 1989 installation was not dug up and examined until almost a year after the 1992 patent application. Thus, even if durability were being tested, it was not for purposes of the patent application, and cannot bring the experimental use exception into play. By filing the 1992 application, the inventors represented that the invention was then ready for patenting, and studies done thereafter cannot justify an earlier delay in filing the application under the rubric of experimental use.

Finally, Clock Spring asserts that because the Department of Transportation did not grant any installation waivers until 1993, the 1989 demonstration must have been experimental. This terse argument is unsupported by any citation to law. That the inventors were not legally allowed to perform the method on a pipeline in commercial operation, does not mean that a public use did not occur. The former fact has absolutely nothing to do with the latter question.

In summary, during the 1989 demonstration, all elements of the repair method in claim 1 of the ’307 Patent were performed. There was no evidence that the overall suitability of the ’307 Patent’s method nor any of the claim elements was being tested as would be required for experimental use. Accordingly, claim 1 of the ’307 Patent is invalid due to prior public use.