According to USPTO Rule 1.56, a duty of candor and good faith towards the USPTO rests on each named inventor, each attorney or agent who prepares or prosecutes the application, and every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee, or with anyone to whom there is an obligation to assign the application. All such individuals have a duty to disclose to the USPTO information known to them to be material to patentability.

Information is material to patentability when the information is not cumulative to information already of record or being made of record in the application, and (a) it establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (b) it refutes, or is inconsistent with, a position the applicant takes in (i) opposing an argument of unpatentability relied on by the USPTO; or (ii) in asserting an argument of patentability.

A prima facie case of unpatentability is established when the information compels a conclusion that the claim is unpatentable (a) under the preponderance of the evidence burden of proof standard, (b) giving each term in the claim its broadest reasonable construction consistent with the specification, and (c) before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

Any pertinent prior art information of which the above individuals are aware should be brought to our attention. Such information may include, for example, U.S. or foreign patents or publications, public uses, sales, offers for sale, or other public disclosures concerning the invention. When bringing any such information to our attention, please provide copies of any documents and any brief comments you wish to make concerning the relevance of such information. We will file such information with the USPTO by way of a document called an information disclosure statement. Please note that information already disclosed in the application need not be called to the attention of the USPTO; however, if such information is contained within or constitutes a prior art document, a copy of such document should be supplied to the USPTO.

The USPTO has imposed certain time limits for submitting information for consideration by the USPTO. Accordingly, material information should be brought to our attention as soon as possible. Also, the duty of candor is an on-going duty. That is, material information which is first learned after the filing of the application must still be promptly called to the attention of the USPTO.

Please note that the requirement to submit copies of cited documents applies to documents cited in a PCT application. The prior art cited in the International Search Report will not be automatically made of record when the U.S. national phase is commenced. Instead, an information disclosure statement must be filed and copies of the cited art submitted to ensure consideration by the examiner and compliance with the duty of candor.

Regarding non-English language documents that are being submitted for consideration by the examiner, please provide a concise explanation of the document's relevance as understood by the person among the above designated individuals who is most knowledgeable about its content, unless its relevance is indicated in a search report being supplied with the document.

United States patent law defines a Small Entity classification of applicants for Letters Patents entitled to reduced government fees for various Patent Office filings. A small entity is an independent inventor, a small business concern or a nonprofit organization.

An independent inventor is any inventor who (1) has not assigned, granted, conveyed, or licensed, and (2) is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person who could not likewise be classified as an independent inventor if that person had made the invention, or to any concern which would not qualify as a small business concern or a nonprofit organization.

A small business concern is a business concern (1) whose number of employees, including those of its affiliates, does not exceed 500 persons and (2) which has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey or license, any rights in the invention to any person who could not be classified as an independent inventor if that person had made the invention, or to any concern which would not qualify as a small business concern or a nonprofit organization. Concerns are affiliates of each other when either, directly or indirectly, one concern controls or has the power to control the other, or a third party or parties controls or has the power to control both. The number of employees of the business concern is the average over the fiscal year of the persons employed during each of the pay periods of the fiscal year. Employees are those persons employed on a full-time, part-time or temporary basis during the previous fiscal year of the concern.

A nonprofit organization is (1) a university or other institution of higher education located in any country; (2) an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a); (3) any nonprofit scientific or educational organization qualified under a nonprofit organization statue of a state of the United States (35 U.S. C. 201(I)); or (4) any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under items (2) or (3) of this section if it were located in this country.

Certain licenses to the United States do not preclude entitlement to small entity status.

Any party having rights in the invention so far as concerns the United States must qualify as a small entity in order to claim small entity status in the application.

An applicant claiming a micro entity status is entitled to a 75% reduction in most government fees (compared to a 60% reduction under small entity status). In addition to meeting the requirements to claim small entity status, without resorting to the government use license exception, the following criteria must also be met in order to claim micro entity status:

Neither the applicant nor the inventor nor any joint inventor has been named as the inventor on more than four previously filed patent applications. Note that the following applications do not count toward the four application limit: applications filed in another country; provisional applications; international applications for which the National Stage fee was not paid; and applications resulting from prior employment, if the applicant has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s previous employment.

Neither the applicant nor the inventor nor any joint inventor had, in the calendar year preceding the calendar year in which the applicable fee is being paid, a gross income (as defined by the IRS) exceeding three times the median household income for that preceding calendar year (this value is currently $241,830).

Neither the applicant nor the inventor nor any joint inventor has assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that would not meet the above requirements.

According to §112 of the Patent Act, an application must set forth the best mode contemplated by the inventor or inventors of carrying out the invention. In addition, the courts have previously required that the best mode disclosed in the application must be that contemplated by the inventor(s) at the time the application is filed or, if foreign priority is claimed, at the time the priority application is filed. If this application does not set forth the best mode as discussed above, the Inventor's Declaration should not be executed and such deficiency should be brought to our attention for appropriate action. We further note that failure to meet the best mode requirement can no longer be used to establish the invalidity of a U.S. patent in patent infringement suits commenced on or after September 16, 2011.

Once Track One status is obtained for an application, that Track One status continues until one of several events happens that results in the loss of Track One status. The main events that cause loss of Track One status are the issuance of a Final Office Action or a Notice of Allowance, using an extension of time to respond to an Office Action, or filing of a Notice of Appeal.

Once Track One status is lost, it is possible to obtain Track One status again by making a request for Track One status in conjunction with filing a Request for Continued Examination (RCE). An RCE can only be filed after prosecution on the merits has been closed (such as by issuance of a Final Office Action or a Notice of Allowance, or if the rejections have been appealed). The request for renewed Track One status must be filed at the same time as the RCE, and fees are required for prioritized examination (37 CFR 1.17(c)) and for prioritized examination processing (37 CFR 1.17(i)(1)), even if these fees were paid previously in connection with an earlier request for Track One status.

Note that for a given application only one request for Track One status in conjunction with an RCE is allowed. If Track One status is obtained in conjunction with an RCE, then in that application no further requests for Track One status may be filed with subsequent RCEs.

The deadline for responding to a Final Office Action is three months from the date that the Final Office Action is issued. This deadline may be extended for up to three months in one-month increments, by payment of additional fees when and if action is taken in response to the Final Office Action.

Unlike a response to a Non-Final Office Action, filing a written response to a Final Office Action does not remove the three-month extendible deadline for appealing, for getting the application allowed, or for filing a Request for Continued Examination (RCE). It is therefore advisable to take action expeditiously in response to a Final Office Action, and to be prepared for the possibility that multiple actions may need to be taken.

There are limitations to claim amendments that may be made in responding to a Final Office Action, since an Examiner may refuse to enter claim amendments that raise significant new issues, unless the Examiner determines that the claim amendments put the application into condition for allowance, or puts the application into better condition for appeal. If the Examiner views the application as not in condition for allowance as a result of arguments filed in a response (with or without amendments), the Examiner will issue an Advisory Action, and further action (such as the filing of an appeal or an RCE) will be required to avoid abandonment of the application.

If a response (with or without amendments) is filed within two months of the issuance of the Final Office Action, the fees for an extension will be calculated from the later of 1) three months from the issuance of the Final Office Action (the original response deadline); or 2) the date of the issuance of the Advisory Action by the Examiner. However, this only affects the date from which extensions are calculated, and in no instance can action be taken more than six months after the issuance of the Final Office Action.

When a product sold by a patentee is covered by a United States patent, the patent owner is entitled to recover damages only for acts of infringement that occur after the infringer is placed “on notice” of infringement. Notice can be actual (e.g., a cease and desist letter) or constructive. By “marking” a product with a patent number, the patentee places the public on constructive notice of that patent’s relevance to the marked product. We recommend that you mark your patented products to preserve your right to recover damages for patent infringement.

Relevant law

Under Title 35 of the U.S. Code, Section 287, patent owners and any persons making, using, selling, offering for sale or within the US or importing any patented article into the US, may give notice to the public that the product is patented. (See 35 U.S.C. § 287.) This statute permits a patent owner to put the public on constructive notice that a product is patented via directly or “virtually” marking the product.

Exceptions

Patent marking generally does not apply if the article (e.g., a product or good) is not covered by a non-method claim. Products that are not covered by an apparatus claim, but perform a patented method, need not be marked.

How to mark

Notice may be provided either by fixing, on the patented product, a legible and conspicuous notice including the word “patent” or the abbreviation “pat.”, together with the number of the patent, or the word “patent” or the abbreviation “pat.” together with an internet URL, accessible to the public without charge, in which the patented article is associated with the patent. For example:

• “Patent 1,234,567”

• “pat. D123,456”

• “Patent www.COMPANY.com/patents” or “Pat. www.COMPANY.com/patents.” It is common for companies to include a first level web page named “patents.” You also could use a short URL. The URL may simply redirect the user to another location where patent information is provided, either on a web page or in static document, such as a PDF. This virtual marking allows companies to mark all products with the same patent notice, and eliminates the need to modify the product marking when a patent application issues.

Patent marking must be on the product itself—not the product’s packaging—unless marking of the product itself is not feasible, such as due to too small of size of a product or physical form (e.g., liquid, gas, other raw material). Inconvenience of marking the product often is not enough to justify marking the packaging.

Where a family of products is covered by one or more patents, all patents must be listed. Virtual marking can be particularly advantageous in such a scenario.

Marking must be “substantially consistent and continuous,” meaning that “substantially all” of the tangible articles (or related packaging) must be marked. This may include products sold by licensees.

Patent Pending

One may mark products as “patent pending,” “pat. pending,” or “pat. pend.” but such marking has no legal benefit to the patentee. Once a patent is issued, marking a patented product with “patent pending” or similar does not satisfy the marking requirement. If virtual marking is used for patent pending products, the online web site must clearly state that the related product is “patent pending” and not patented.

False Marking

False marking can apply to marking an unpatented product with a patent number, marking a product with a patent number that has been found invalid by a court, or using “patent pending” or similar where no patent is pending.

To avoid false marking, a patent owner should review its patent portfolio, including any pending patent applications, and its products to verify that any marked products are still covered by the language of the claims of the patents, that the identified patents (and pending applications) are still active and unexpired. Products should not be listed patented or as “patent pending” if the associated patents and patent applications have been abandoned or are no longer in force.

Please note that this summary does not cover all scenarios. It is for informational purposes only and should not be construed as professional legal advice. Should you have any questions regarding patent marking, please do not hesitate to contact us to discuss.