Inter Partes Reviews Wipe Out Three Napkin Patents

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Have you ever read an article about a new patent, or seen a patent number on a product, and thought to yourself, “You can patent that??”  After nearly eight years in the intellectual property field, I’ve read some patent applications that were real doozies, but rarely do the really “out-of-the-box” ideas make it all the way to being a granted patent.  Consider, for example, napkin folding.  Is napkin folding an area of intellectual property that is hotly sought after?  It turns out, yes it is, as highlighted by three inter partes reviews (IPRs) that were recently entered by the Patent Trial and Appeal Board (PTAB). 

In February, the PTAB entered three IPR decisions relating to three patents owned by Essity Hygiene and Health AB and all directed to folded napkins (8,597,761, 8,273,443, and 9,320,372).  Did you just ask yourself, “Someone got not one, not two, but three patents to folded napkins?”  Because I did.  But all  joking aside, not only did Essity own three folded napkin patents, but also one company (Cascades Canada LLC) thought that it was worth the costly and intensive effort to knock these patents down—highlighting that folded napkin patents are valuable.

            For example, claim 1 from 8,597,761 recites:

A stack of interfolded absorbent sheet products, comprising:

a plurality of absorbent sheets

wherein each sheet comprises a first fold that is offset from a line bisecting said sheet substantially parallel to said first fold, and an interfolding fold that is substantially perpendicular to said first fold,

wherein the first fold is unidirectionally peaked,

wherein panels defined by the first fold of each sheet directly contact each other, and

wherein at least one of the panels defined by the interfolding fold of each sheet is inserted between two panels defined by the interfolding fold of another sheet in the stack.


Unfortunately for Essity, the IPR decisions did not go their way, as all three of their patents “folded” under pressure from Cascades and the prior art cited in the petitions. On the upside, the prior art used to invalidate the three patents is owned mostly by Essity, so at least for the time being, Essity still maintains at least some share of the napkin IP landscape.

So what is the take-away? Well one lesson I learned from reading the patents and IPR decisions is that even mundane-sounding technology can be relevant and have value to multiple companies.  But the flip side is that it appears Essity had not innovated in its napkin technology over the last 10-20 years and had essentially tried to gain coverage for embodiments discussed but not claimed in their earlier filings, but without the benefit of continuations or other priority claims.  Such a strategy is obviously risky, and especially if your patents pose any market barrier to your competitors.

Filing Third Party Observations

Third-party or preissuance submissions are a tool for third parties to submit patents, published patent applications, or other non-patent literature that may be of potential relevance to the examination of a patent application. The U.S. Patent and Trademark Office’s Third-Party Submission Program has been available since September 2012, but has not been frequently used, though the USPTO considers third party submissions to be a valuable tool, as examiners are motivated to apply the best prior art available to make a rejection, regardless of who found the prior art.

 However, current U.S. law limits when a preissuance submission can be filed, and thus the owner of the subject patent application is free to work with the U.S. examiner to overcome any submitted references, and the third party cannot participate in the ongoing prosecution.

Regardless, third-party submissions can be useful in disrupting the prosecution of competitors’ patents.

In regards to filing the submission, the submission must be made in any non-provisional, design, or plant application before the earlier of:

1.      The date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or

2.      The later of:

2.1.   Six months after the date on which the application is first published under 35 U.S.C. 122 by the USPTO, or

2.2.   The date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.

The third party should ideally file the submission electronically through EFS-Web, though submissions can also be submitted in paper via first-class mail, or by hand delivery, but not via facsimile.

The following forms should be included in the submission:

1.      Form PTO/SB/429 (or equivalent document list), identifying the publications, or portions of publications, being submitted;

2.      A concise description of the relevance of each item listed in the document;

3.      A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;

4.      An English translation of any non-English language item identified in the document list;

5.      Statements by the party making the submission that:

5.1.   The party is not an individual who has a duty to disclose information regarding the application under section 1.56; and

5.2.   The submission complies with the requirements of 35 U.S.C. 122(e) and section 1.290; and

6.      Any required fee, or the statement that the fee exemption applies to the submission.

The USPTO issued a very handy guide for third-party submissions that can be found here:

https://www.uspto.gov/sites/default/files/documents/Quick%20Start%20Guide%20Third%20Party%20Preissuance_06-03-2015.pdf   

 

In regards to the fee, a fee is incurred for every ten documents listed or fraction thereof, unless the third party is submitting three or fewer documents, provided the submission is the first for the party, and a “first and only” statement is filed.

If the submission is found to be non-compliant, it won’t be entered into the image file wrapper of the application or considered by an examiner, and the fee will not be refunded. However, the third party can make another submission, provided that the statutory time period for filing a submission has not closed.

If the submission is entered into the image file wrapper, the applicant will be notified of the entry if the applicant participates in the USPTO’s e-Office Action program. Otherwise, the contents of the submission will be made available in the application’s image file wrapper.

Steamboat Willie and the Impact of Trademarks on Public Domain Film

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On January 1, 2019, for the first time in over 20 years, works published in the United States will fall into the public domain due to copyright term expiration.  After the passage of the 1998 Copyright Term Extension Act (CTEA), copyright on works published before January 1, 1978 was granted a 20-year extension, increasing the term of copyright from 75 to 95 years.  Though all works published in the United States prior to December 31, 1922 were already in the public domain, those scheduled to be admitted on January 1, 1999 (i.e., all U.S. works published in 1923) were to remain bound by copyright protections for another 20 years.

            The CTEA generated controversy during its development, as major media conglomerates, most memorably The Walt Disney Company, had been lobbying for nearly a decade to extend copyright protections.  As a result, the CTEA was derisively referred to as the “Mickey Mouse Protection Act” by opponents of the legislation.  Indeed, a major motivation for Disney’s intervention was to extend protections for its earliest cartoons.  A particularly defining moment in the company’s history was the release of Steamboat Willie, a short cartoon with synchronized sound which introduced one of the most well-known popular culture icons of modern times, Mickey Mouse.  Notably, the CTEA represented the third extension of copyright of Steamboat Willie since its publication in 1928, a term which was originally set to expire in 1956.

            Trademarks stemming directly from early films are rarities.  By and large, the nascent 1920s film industry had yet to capitalize on the potential for extensive marketing campaigns.  Films in this era were often viewed as one-off experiences likened to symphonies or plays, though with less artistic standing.  Mickey Mouse stands as perhaps the most notable anomaly, a character that became a trademarked symbol of one of the largest mass media organizations on the planet.  It is precisely as a trademarked symbol under which Mickey Mouse will retain extensive legal protection.

            As a result, marketing of footage of Mickey Mouse, even footage which may have unambiguously passed into the public domain, may not be so straightforward.  Perhaps an enterprising person, looking to capitalize or build upon Disney’s intellectual property, will be able to produce a DVD of Steamboat Willie – but can they feature Mickey Mouse on its cover?  Even as a still from the film?  It is highly likely that any attempt to do so would result in litigation.  Disney is notoriously protective of intellectual property.  In one of the most highly publicized cases, in 1989, Disney threatened legal action against daycare centers which had painted Mickey Mouse on their walls.

            Any precedent that may result as a consequence of similar legal action will not be decided upon for some time, as Steamboat Willie is not set to enter the public domain for another five years.  Yet the case of Mickey Mouse is only one legal issue among many which may arise from the reopening of the public domain.  As such, the complex interplay of creators and the market in which they commoditize their creations is sure to fall under renewed scrutiny.

Lessons from the “Nut Wizard”

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Inventions are often born out of a desire to improve upon current market products. If this is the case with your invention, clearly pointing out prior art that your invention has improvements over is useful information to include in a patent application.

One example of a patent application that includes discussion of prior art is for the “Nut Wizard” (U.S. Pat. No. 6,460,249 B1), a rolling basket with a handle that is used to pick nuts and fruit off of the ground.

The patent application for the “Nut Wizard” does a great job of emphasizing improvements made over other devices in the same space. For example, the “Nut Wizard” application points out how U.S. Pat. Nos. 3,215,293 and 3,604,190 includes axles that run through a basket, which may be difficult and expensive to produce. Then, to clearly contrast this prior art, the “Nut Wizard” application explains features that make it simple and inexpensive to construct.   

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Pointing out disadvantages in prior art and how your invention addresses these disadvantages is a strategy that may improve prosecution efficiency. For example, it is less likely that you will need to re-explain improvements over this prior art through an Office action response.

Learning from the “Nut Wizard”, do not be shy to point out disadvantages with previous approaches. Your patent application is a chance to point out all the great features of your invention and why these features are improvements over other products out there. Getting specific with the prior art that your invention has improvements over not only highlights advantages of your invention but also can make patent prosecution go more smoothly.

U.S. Tariffs and China’s IP System

The U.S. tariffs being implemented against various goods imported from China has raised a lot of questions around IP protection strategies.

            Historically, enforcing IP rights in China has been difficult, primarily due to a lack of recourse and structure for enforcing rights against infringers. However, in recent years there has been an initiative in China to revamp their IP system, and the result has made filings in China stronger for foreign filers.  

            So in view of recent tariffs, what makes sense for intellectual property strategies? The answer, is “it depends”.

            For companies in industries that are particularly competitive in China right now, such as artificial intelligence, it would be wise to build a portfolio of filings in China regardless of manufacturing location. This approach may prove helpful downstream to block direct competitors from using the same technology. Moreover, if your industry is particularly competitive in China, there may be a greater chance for your suppliers to come from China (especially for specialized parts). Thus, Chinese filings may also prove helpful for protecting your IP against potential suppliers, even if the final products are assembled outside of China.

            For companies which have R&D or manufacturing in China, building a portfolio of filings in China is critical. Even if a company does not intend to sell their goods in China and is solely using facilities in China for R&D or manufacturing, Chinese filings are critical to help preserve recourse against potential infringers. By filing in China, you are in a position to take advantage of China’s patent system and have improved chances of stopping potential infringers.

            However, in a situation where a company may be moving manufacturing from China to the U.S. in view of the new tariffs, there may be further considerations. For example, if a company manufactures their products in the U.S. and does not intend to sell their products in China, it could make sense to focus filings only within countries where the goods will be sold, with the knowledge that there will be no recourse for knock-offs made and sold in China. These U.S. based companies may have the ability to stop infringing goods from being imported into countries where they have protection without having to pay for filing Chinese patents.

          There are many factors that come into play when implementing an IP protection strategy, and companies may be pivoting their IP approach in view of the recent policy changes.

Have a technical question? Look to patent applications!

Tankless Water Heater US8276548B2

Tankless Water Heater US8276548B2

My husband and I are in the process of remodeling our house.  Among the more fun tasks associated with the remodel is the selection of new appliances.  During a recent discussion of hot water heaters (we have to upgrade to an instant tankless heater!), my husband mentioned that he was curious how gas-fueled tankless hot water heaters work.  While I had a good guess, I didn’t want to share it with him until I confirmed I was correct.  A quick search on the web sites of some major appliance retailers provided little technical information, so I turned to the source I use daily at work—the USPTO’s patent and patent application database.  To narrow the results, I entered the name of a common manufacturer of hot water heaters into the assignee field, and searched for gas tankless hot water heaters.  The search results produced a few solid patent applications, including one application with a well-written background section that explained the core technology.  By reading the application, I confirmed my guess was correct, plus I learned about new mechanisms for recovering waste heat produced by fuel-fired heating appliances.

So what is the point of this little anecdote?  After I read the patent application, it occurred to me that most people may not appreciate that the single largest collection of technical details relating to actual, manufactured and/or retail products is the USPTO’s patent and application databases.  The US government grants limited monopoly rights to inventors of new and useful inventions (including processes, machines, manufacture, or composition of matter) in exchange for public disclosure of how to make and/or practice the inventions.  Accordingly, typical patent applications include informative background sections where the general state of the art is discussed as well as extensive details pertaining to the invention.  These details might include overall system/apparatus structural details, controls, alternative implementations, and more, all accompanied by drawings illustrating the features of the invention. 

While granted patents have been publicly available in the US since the first patent was granted on July 31, 1790, the advent of the Internet as well as the decision by the USPTO in 2000 to also publish applications for patents, regardless of patentability, has led to an enormous database of patents and applications that are available for free, at one’s fingertip, and easily searchable by keywords, inventor, owner/assignee (e.g., the company at which the invention was developed), classification, and more.  So the next time you have a question about how one of your household appliances works, or you are wondering how your competitor’s product is made, look it up in a patent! 

The Early Filer Gets the Poke

As poke restaurants grow in popularity across the United States, trademark conflicts have been rising to the surface. For example, “Aloha Poke Holdings LLC” out of Chicago, IL, known as “Aloha Poke Co” has already been granted a trademark on the words “Aloha Poke”.

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            The Chicago-based poke company has wasted no time in defending their mark against competitors using “Aloha” or “Aloha Poke” in their name or marketing. At least one Washington-based company has already opted to change their name in response to a cease and desist letter from “Aloha Poke Holdings LLC”. Considering the close tie between the words “aloha” and “poke”, there are likely to be many other poke restaurants that will fall under fire.

            However, although “Aloha Poke Co” has been winning battles in defending their trademark, there has already been some negative PR over their aggressive protection for use of the word “aloha”.

            It goes to show that although the early filer gets the worm (or poke, in this case), it is still important to think through enforcement strategy.

Protect Your Brand Against Competitors

Continuing on the topic of “IP Prep Before a Big Event,” another consideration before moving forward with a public presentation is protecting the look and feel of your company and products. For example, design patents and trademarks may be helpful for protecting visual intellectual property.

            People often think of utility patents when it comes to patent protection, which may protect a method, device, or system that achieves a technical improvement. However, design patents protect the visual aspects of an article. For example, visual aspects such as a configuration, shape, and/or a surface ornamentation of an article may be protected via a design patent.

            As to trademark protection, trademark protection of company logos is another option to protect the look and feel of a company. For example, trademark protection of a company logo may help to prevent competitors from selling products with confusingly similar marks.

            Together, both trademark protection and design patent protection can strongly discourage copy cats from creating look-alike products, helping you to stand out from the crowd while developing your brand. That being the case, taking a look into design patents and trademark protection is an excellent idea before presenting your product at a public event.

Third Party Submissions During Patent Prosecution

During patent prosecution, patent offices have specific windows for accepting third party submissions.  If properly used, a third party submission may be a cost effective way for limiting or blocking a competitor’s potential claims to prevent future costly and prolonged invalidation proceedings or infringement litigation.  Third party submissions work differently in different countries. Herein, we compare the third party submission practices and strategies of using them in the U.S. and China.

The following table summarizes the procedural differences among the various third party submission practices in both the U.S. and China.

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The most noticeable difference between the U.S. and China practices is that the window for filing the third party submission in China is much broader than in the U.S.  In the U.S., there are two types of third party submissions that may be filed after the publication and before the issuance of a patent: the third party pre-issuance submission and the third party protest.  Both of them have a relatively tight window to file.  In China, there are three types of patent applications: invention, utility models, and design applications.  The public opinion is only accepted during the prosecution of the invention application, which is analogous to the utility application in the U.S.  The window for filing the public opinion in China is during the entire prosecution period of the application.  It is anonymous and it is free!  Thus, even with potential risks in the future (such as that the unaccepted prior art may not be relied in future invalidation procedure), filing the public opinion in China may be a very cost effective way to block the competitor’s potential coverage.

One way to monitor a competitor’s progress in patent applications in China is through the Global Dossier (https://globaldossier.uspto.gov/#/).  The Chinese patent Office has made impressive progress in digitizing and publishing the patent document database.  Currently, the amended claims entered after each Office action can be accessed through the Global Dossier while the application is still pending.  As to how to know whether the competitor has filed a related patent, one way may be to monitor if any patent application in your patent portfolio have been cited by others. 

 

 

Related links:

君合专题研究报告

http://www.junhe.com/download?filePath=/upload/law-reviews/eeaae1e5a6bceb7ad5f24c5a98b509d9.pdf&fileName=%E4%B8%93%E9%A2%98%E7%A0%94%E7%A9%B6%E6%8A%A5%E5%91%8A-%E4%B8%93%E5%88%A9%E7%94%B3%E8%AF%B7%E4%B8%AD%E7%9A%84%E5%85%AC%E4%BC%97%E6%84%8F%E8%A7%81%E7%A8%8B%E5%BA%8F%E4%B9%8B%E6%B5%85%E6%9E%90%EF%BC%8820151112%EF%BC%89.PDF

Protests: Are Those Still Around?

https://www.finnegan.com/en/insights/blogs/prosecution-first/protests-are-those-still-around.html

Third Party Inquiries and Correspondence in a Published Application

https://www.uspto.gov/web/offices/pac/mpep/s1134.html

Global Dossier

https://globaldossier.uspto.gov/#/

Tips and Tricks: Filing a PPH Request in the United States

The Patent Prosecution Highway (PPH) program can be an excellent way to more quickly move a patent to issue. Via PPH, participating patent offices may expedite examination of applications which have at least one claim allowed in another PPH patent office. A listing of participating PPH offices may be found here.

U.S. patent applications eligible for PPH must meet the following requirements:

  1. At least one claim in a corresponding application must be allowed at an eligible* Office of Earlier Examination (OEE)
  2. The U.S. application must have the same earliest priority date as the OEE application
  3. Substantive examination of the U.S. application must not have started

Should your U.S. patent application meets the PPH requirements, a PPH request form may be submitted. There are several pieces of information that are required by the U.S. Patent Office to complete a PPH request. Below are a few tips and tricks to help make the process of filing a U.S. PPH request go smoothly:

1. Notify your legal counsel early

  • A U.S. PPH request must be filed after at least one claim has been allowed in an OEE and before substantive examination of the U.S. application has started
  • Once at least one claim has been allowed in an OEE, discuss with your legal counsel if you wish to apply for PPH status as soon as possible
     

2. Provide the most recent Office of Earlier Examination (OEE) work product which shows allowed claim(s)

  • If the OEE work product is not in English, you will also need to provide a translated copy of the OEE work product which shows that the claims are allowed
  • If the OEE work product needs to be translated to English, machine or manual translations are accepted (translations do not have to be verified)
  • Examples of OEE work products may include International Search Reports, Decisions to grant a patent, and Extended European Search Reports

 

3. Provide a full listing of the OEE claims in English to your legal counsel

  • A U.S. PPH request requires that the OEE claims correspond with U.S. claims
  • An English listing of the allowed OEE claims will help your legal counsel to properly fill out a claim correspondence table in the PPH request form

 *eligible OEEs are PPH participating offices