International Patent Filings Break Record

The Patent Cooperation Treaty (PCT) provides a mechanism for filing one patent application, referred to as a PCT or international patent application, that can later branch out into one or more national or regional patent applications.  PCT applicants receive an International Search Report and a Written Opinion regarding the patentability of the claimed invention based upon the references found in the search report.  In addition, PCT applicants have the option of requesting an International Preliminary Report on Patentability, which is a preliminary assessment of whether the claimed invention is novel, represents an inventive step (i.e., is not obvious), and has industrial applicability.

PCT applications are useful in that a single filing can preserve the right to later pursue patent protection in regional patent systems like the European Patent Office and in the patent offices of most industrialized nations including the United States.  A PCT applicant can use the International Search Report, the Written Opinion, and other relevant business factors in deciding where to further pursue protection.

In 2013, there were 205,300 PCT filings, the first time the 200,000 annual threshold has been crossed and a 5.1% increase over 2012.  The United States retained its leadership as the top PCT filing country with just over 57,000 applications.  Japan came in second with almost 44,000 applications.  China moved up to third place for the first time at over 21,500 filings, followed by  Germany at almost 18,000 and South Korea nearing 12,500.  Together, the filings from the U.S. and Japan represented almost half of all PCT filings in 2013.

If the member states of the European Patent Convention (EPC) are analyzed collectively, rather than individually, the EPC would represent the co-leader in the number of PCT filings at about 28% of the annual total.

The year-to-year change in filing activity is particularly interesting.  While the EPC member filings declined slightly in 2013, the PCT filings from China increased about 15% compared to 2012.  The next highest annual increases were the U.S. at 10.8% and Sweden at 10.4%.  The rapid increase in filings from China may be attributed in part to government patent subsidies to small and medium sized domestic enterprises and research institutions.

So, You've Just Read About Someone Getting a Patent

A day does not go by without a new article about a company or individual obtaining a patent. A company itself may be behind an article because it wants to hype its technical achievements, as was the case with “Powerhouse Dynamics Gets Patent for Appliance Monitoring Technology.” Or someone may publish a piece to report on his patent “sleuthing,” see “Apple Patents A Smarter, More Accurate Wrist-Based Activity Tracker.”

Understanding some basic patent concepts will help you interpret this kind of “news.”  It will also help you in discerning what your competition may be up to with their (possibly) patented new technology.  Some definitions are in order:

According to 35 U.S.C. 271, “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States,….infringes the patent.”  This is often referred to as a “negative right” in that a patent provides the patent owner with the ability to prevent others from making, using, selling, etc.  As to determining what has been patented, i.e., what is protected, one looks to the patent claims.

A patent, according to 35 U.S.C. 112, includes “a written description of the invention, and of the manner and process of making and using it, in … terms as to enable any person skilled in the art … to make and use the same.”  In addition, the specification “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”  If you have ever read a patent, those numbered paragraphs at the end of the description are the claims and, in some cases, may be where you stopped reading because they can be, at times, inscrutable.

The claims define the “metes-and-bounds” of the invention and one looks at the claims to determine whether infringement has occurred.  The claims are central to understanding the protection provided by the patent.  The interpretation of claims, however, has filled volumes of court decisions and is beyond the scope of this article.

In the United States, patents issue every Tuesday and are assigned a patent number.  As of this writing, Patent No. 8,671,461 appears to be the highest number to date.  An issued patent gives the owner the rights of exclusion outlined above.

Additionally, every Thursday, pending patent applications are published per the American Inventor’s Protection Act which requires publication of some patent applications eighteen months after their earliest effective filing date.  Not all patent applications, however, are published. These publications are given a number in the form of 20140075637, where the first four digits indicate the calendar year.  Published patent applications, in and of themselves, do not provide the owner with any exclusionary rights although they may function to put potential infringers on notice (an issue not being discussed here).

So, returning to the two online articles above, we note that the first one tells us that “Powerhouse Dynamics has been awarded a patent for a technology which can remotely monitor appliances to gauge how efficiently they are operating.”  This tells us that they are talking about an issued US patent.  One could then look to the claims to get some idea of what was being protected.

The second online article indicates that Apple has patented some technology, at least according to the title.  Reading further, however, it states that “Apple has applied for a patent for an improved wearable pedometer design….”  Clearly, this is referring to a pending patent application.

There is, however, information to be obtained from reviewing a published application.  First, patent applications may reflect the technical area a company is researching and indicate where new products from that company may be targeted.  By looking at the published claims, one can get a sense about what aspect of the invention the applicant is trying to protect.  This could be different from the characterization provided in an accompanying article or press release.  In addition, once a patent application has published, its progress through the Patent Office can be monitored by third parties who can then possibly discern the ultimate scope of coverage as based on the claims.

I have attempted to provide the reader with an understanding as to the differences between an issued US Patent and a US Patent Publication and how reviewing the claims will give an indication of the protection obtained or being sought, respectively.  It must be strongly emphasized, however, that one should only rely on a claims interpretation provided by a qualified attorney, as the claims construction ultimately relies on more than just the words in the claims.  Any business decisions, and certainly conclusions as to non-infringement, must be based on a qualified analysis.

What is "Patent Marking?"

Patent marking is a way for a patent owner to let the public know an article is believed to be covered by one or more of its patents.  This is referred to as “constructive notice” to the public that the article may embody patent rights.

What Purpose Does Patent Marking Serve?

Some people mark their products with applicable patent numbers to discourage copying: “Hmm – this company went to the trouble of obtaining patents.  They may also be willing to enforce those patents.”  

Others use it as a marketing tool:  “Look!  The latest in patented technology!”

But the main legal advantage provided by proper patent marking has to do with the amount of damages a patent owner can seek in an infringement suit.  If an infringer was given constructive notice of patents through a properly marked article, all sales of its infringing articles may be used in calculating money damages.  If the patented article wasn’t marked, the patent owner may only seek damages dated from when the infringer was given actual notice of the patents.  

What Does Patent Marking Look Like?

Marking includes the word “patent” or the abbreviation “pat.” followed by the relevant patent numbers.  (Some precede this with “U.S.” since different countries have different requirements).  This notice can be printed or stamped directly on an article, or printed on a label attached to the article.  If the article is too small, the notice can be printed on packaging for the article or on documentation that ships with it.

What If Lots of Patent Numbers Apply?

Patent owners now have the option of providing a URL which links to a list of patent numbers associated with a given article.  Such a notice might look like: “Patent www.CompanyABC.com/patents”.  This virtual marking makes it much easier to provide current, up-to-date patent information to the public.

When Can a Product Be Marked or Described as “Patent Pending?”

As long as a relevant provisional, utility, design, or plant patent application has been filed and remains pending, the article may be marked or described as “patent pending.”

How Big a Problem Is an Out-of-Date Listing of Expired Patents on an Article?

As long as the expired patents used to cover some aspect of the article on which they are listed, it’s okay if they remain.  A periodic review of all patent markings is not only a good way to facilitate the removal of expired patent numbers, but also to enable the addition of newly issued patents.