October 2008

Patent Law: Written Description

One of the most important aspects of the written description is to provide a clear description of ‘for what” patent protection is being claimed, which may consist of several elements, or claims. The claims define the boundaries of what is to be protected by a patent, and, in a patent infringement action, the analysis of whether a patent has been infringed will begin with a construction of the claim language to determine whether an aspect of an invention is protected at all. In addition, the written description of the invention serves the main objective of patent law by placing into the realm of public knowledge the new ideas embodied by the invention.

Under the Patent Act’s application requirements, the manner and process of making and using the invention to be patented must be described in sufficiently full, clear, concise, and exact terms to enable a person of ordinary skill in the field in which the invention is classified (the “art”) to make and use the invention. This requirement ensures that the invention is described and communicated to the public in a meaningful way so that the invention contributes to public knowledge; accordingly, a patent claim may be ruled invalid if it is not supported by an enabling description.

The best mode requirement ensures that an inventor discloses the best way he or she knows of making and using the invention. This prevents an inventor from providing public knowledge of a functional yet inferior invention while keeping for his or her own benefit a better invention. Failure to disclose the best mode of making and using an invention may lead to the invalidation of a patent. Determination of whether the best mode has been disclosed is largely a subjective process. An inventor is not required to disclose as the best mode the use of a material in the invention that would render the invention commercially impractical even though use of that material would enhance the performance of the invention. In addition, if certain aspects of an invention perform equally well with several alternatives, the best mode requirement does not require an inventor to choose among the alternatives.


Analyzing Patent Claims

Patent claim interpretation is the process of giving proper meaning to the claim language. Claim language defines claim scope. Therefore, the language of the claim frames, and ultimately resolves, all issues of claim interpretation. In determining the meaning of disputed claim terms, however, a construing court considers the written description, the drawings, the prosecution history, and extrinsic evidence. These additional sources provide a context to illuminate the meaning of claim terms. Nonetheless, throughout the interpretation process, the focus must and does remain on the meaning of claim language itself. The construction of all of the disputed terms of the claim will govern the court’s validity and infringement analysis at all stages of the case, including trial.

Two-Step Process Used to Analyze Patent Infringement Claims

A two-step process is used to analyze patent infringement claims. First, the asserted claims must be properly construed to determine their meaning and scope, and second, there must be a determination as to whether the claims, as construed, encompass the accused product or process.

Claim Construction

The first step, claim construction, is within the province of the court. The language of the claim or claims in the specification of a patent is the measure of the exclusive rights conferred by that patent. Thus, infringement involves construction and interpretation of the language of the claim and a determination as to whether the claim so construed ”reads on” the accused product or process. In construing the claim, the courts consider not only the literal meaning of its terms but also the prior art and the prosecution history of the patent in the United States Patent and Trademark Office (USPTO).

Objective Test

The focus in construing disputed terms of a patent claim is on an objective test of what one of ordinary skill in the art at the time of the invention would have understood the terms to mean.

Giving Terms a Meaning Different from their Ordinary and Customary Meaning

Terms in a claim are generally given their ordinary and customary meaning. However, a patentee may give terms a different meaning, so long as the meaning is stated clearly in the patent specification or file history. The court may also refer to other claims in the same patent to ascertain the intended meaning of a disputed term in a claim, but may not read limitations from other claims into an independent claim. The concept of claim differentiation provides that each claim of a patent constitutes a separate invention and gives rise to separate rights. Claims should also be read in light of the patent’s prosecution history and the patent specification. The specification contains a written description of the invention and includes a best mode or preferred embodiment of the invention.

Prior Art

Prior art may be defined very broadly as the entire body of knowledge from the beginning of time to the present. A person is not entitled to a patent if the invention was known or used by others in this country, or was patented or described in a printed publication in this or a foreign country before the date of invention by the applicant for the patent.

Prosecution History

Prosecution history encompasses the negotiations between the patent applicant and examiner at the USPTO during which the scope of the patent is clarified.

Application of Claim as Construed to Accused Product or Process

After the meaning of the claims in issue is determined by a study of all relevant patent documents, the claims must be compared to the accused structures. What is crucial is that the structures must do the same work, in substantially the same way, and accomplish substantially the same result to constitute infringement. This is the general approach used to determine the infringement of all the patent claims.

Doctrine of Equivalents and Doctrine of File Wrapper

In determining infringement, the courts enlist the assistance of two traditional doctrines. Under the doctrine of equivalents, an accused product or process will infringe, though outside the literal terms of the claim, if it does the same work in substantially the same way to accomplish substantially the same result as the patented product or process.

Under the doctrine of ”file wrapper” or ”prosecution history” estoppel, a patent owner may not expand the claim through the doctrine of equivalents so as to recapture subject matter deliberately surrendered during the course of the proceedings in the Patent and Trademark Office to obtain the patent. The burden of proof on factual issues relevant to infringement usually rests on the patent owner.


Personal Names, Descriptive Terms, and Generic Words

The weakest and least-protected marks are personal names, descriptive terms, and generic words. Distinctive business names usually receive protection under federal and state trademark law. Common or ordinary names usually do not receive protection under federal and state trademark law.

Fundamental Requirements of a Trademark

Under the Lanham Act, a trademark must meet three fundamental requirements:

It must consist of a word, name, symbol, device or any combination thereof, or any other kind of designation which the courts or the Patent and Trademark Office have found to qualify as a valid trademark

  1. It must be adopted and used by a manufacturer or merchant or qualify for intent to use treatment.
  2. It must identify the manufacturer’s or merchant’s goods and distinguish them from those manufactured or sold by others.

Personal Names

Personal names are names that consumers commonly associate as the name of an individual, such as Smith’s Store. The use of ”name” in the Lanham Act does not mean that all names are considered valid, registrable trademarks. For example, personal names, surnames, and generic names are frequently unprotectible, and are not considered trademarks subject to registration under the Act. There is no paramount right to use a surname in business where it is likely to be confused with a name that has already acquired source indicating significance. When a surname has become strongly connected in the public mind with a certain product and a latecomer bearing the surname attempts to use the name in selling a competing product, the courts will sometimes allow the latecomer use of the name so long as it is accompanied by a prefix, suffix or disclaimer designed to allow the public to distinguish between sources. As with descriptive marks, a surname is registrable and protectable if secondary meaning is shown so that it is no longer primarily merely a surname. A trademark is “primarily a surname” if the public would recognize it first as a surname, or if it consists of a surname and other material that is not registrable. Once a personal name is registrable and protectable, others cannot use the mark on confusingly similar goods, even if they have the same name.

Descriptive Terms

These are words that simply describe the qualities, characteristics, functions or geographic origin of a good or service, such as Car Repair Shop. No trademark rights are granted to merely descriptive marks. However, it is possible for descriptive marks to become distinctive by achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved a second meaning then a protectable trademark is developed. Secondary meaning can be achieved through long term use or large amounts of advertising and publicity.

Generic Words

Generic words are words that are associated with a good or service in general, without identification of any particular source of the product or service, such as aspirin. Generic words receive no trademark protection. Generic “marks” are devices which actually name a product and are incapable of functioning as a trademark. Unlike descriptive marks, generic devices will not become a trademark even if they are advertised so heavily that secondary meaning can be proven in the mind of consumers. The rationale for creating the category of generic marks is that no manufacturer or service provider should be given exclusive right to use words that generically identify a product. A valid trademark can become generic if the consuming public misuses the mark causing the mark to become the generic name for the product.


Trademark Fair Use

A party is entitled to use a trademark in such as way as to describe the qualities that a mark represents as long as the manner of use of the mark is not as a trademark but only used in a descriptive sense. Fair use of a trademark occurs when a defendant uses a descriptive trademark of another party to describe the defendant’s own product. This is the fair use defense set forth in the Lanham Act that provides: the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark…of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.

While a trademark will protect a word which is used by a manufacturer or merchant to identify goods and distinguish them from others, trademark law will not prevent the use of such a word in good faith where the primary purpose is to describe a product or service, not to infringe the trademark resembled by it. The statutory fair use defense provided in the Lanham Act prevents a trademark owner from monopolizing or appropriating a descriptive word or phrase. It allows non-owners of the trademark to accurately describe their goods. Therefore, the defense is only available when the mark at issue is descriptive, and then only where the descriptive term is used descriptively.

Judge-Made Categories of Fair Use

Although the Lanham Act contains the statutory fair use provision mentioned above, there are three additional judge-made categories where use of the trademark of another may be considered non-infringing. They are (1) nominative fair use, (2) comparative advertising as fair use, and (3) parody as fair use.

Nominative fair use involves the descriptive use of another’s mark to describe or identify the plaintiff’s goods or services, not the defendant’s. Comparative advertising involves a situation where the trademark of a competitor is used to refer to the competitor’s goods. Parody is a humorous form of social commentary and literary criticism.

Factors Considered in Determining Fair Use

Several different factors are considered by courts to determine whether a particular use is an infringing use or a fair use. Those factors are as follows:

  • the manner in which the word or mark is being used by the defendant is considered;
  • whether the defendant is using the word or mark in good faith is considered; and
  • whether the use of the word or mark is likely to confuse consumers is also considered.

The author’s use of the mark must accurately describe the trademark owner’s product or service, the author must use the mark in a non-trademark manner and not as a source identifier of the author’s work, and the author’s use must be in good faith in order for the fair use defense to be successful.


Copyright Piracy and The NET Act of 1997

Although United States copyright laws originally contained no criminal liability provisions, the 1897 revision to the Copyright Act made it a misdemeanor to unlawfully perform dramatic or musical works for profit. In later revisions, additional sections were added for the infringement of other types of copyrightable works. Although leaving unchanged the one-year imprisonment penalty established in 1897, the Copyright Act of 1976 increased the monetary penalty for copyright infringement from $1,000 to $10,000. Infringement of musical recording and motion pictures was subject to a penalty of $25,000, and repeat offenders could be fined $50,000.

Following the enactment of the 1976 Amendment, it became apparent that the criminal sanctions for copyright law were completely ineffective against large-scale piracy operations, in part this was attributed to the fact that the Justice Department admittedly was unwilling to expend its resources to obtain misdemeanor convictions of copyright infringers. Accordingly, the music recording and motion picture industries convinced Congress to provide felony liability for large-scale copyright infringement, specifically illegal copying of more than 1,000 copies of sound recordings or 65 copies of motion pictures over a 180-day period carries a penalty of up to five years in prison and a $250,000 fine. As in the past, to be criminally liable an infringer was required to act willfully and for commercial advantage or private financial gain.

With the advent of personal computing and the widespread distribution of computers, the copyright landscape continued to change in the 1980s and 1990s. Further facilitating the unauthorized distribution of copyrighted material was that virtually every type of copyrightable work could be digitized–translated into a series of 1’s and 0’s–and could thus be readily copied and transmitted over wire connections. When processed by a computer, these digitized versions resulted in a perfect copy of the original work. In addition, computer software became as desirable a target for piracy as were music and movies. In response to the concerns of the computer software industry, Congress enacted the Copyright Felony Act in 1992, which applied felony liability for large-scale infringement of sound recordings and motion pictures not only to computer software but to all copyrighted works. The Copyright Felony Act also increased felony sanctions and lowered the thresholds for determining what constituted infringement.

After Congress seemed to have covered all the bases regarding large-scale piracy of copyrighted works with the Copyright Felony Act, a student at the Massachusetts Institute of Technology (MIT), operating what might be regarded as a forerunner of Napster and similar music-sharing systems, invited licensees of software products to upload copies of their software onto his electronic bulletin board and invited others to download it. Because the student derived no profit whatever from this activity, he could not be prosecuted under the criminal provisions of the copyright law and, therefore, was prosecuted for wire fraud. A federal district court, however, ruled that the government could not prosecute the student for wire fraud because a copyright was not an ordinary form of property and, thus, interference with a copyright could not be classified as fraud. Moreover, although the conduct constituted a civil violation of copyright law, the court was unwilling to allow a criminal prosecution under the wire fraud statute when the conduct was not a criminal violation of the copyright law.

The aftermath of the MIT student case was the enactment of the No Electronic Theft Act (NET) of 1997, which according to at least one legislator was intended to “plug the loophole” in copyright law made evident by the case. NET modifies the definition of “financial gain” in the Copyright Act to include the receipt or expected receipt of other copyrighted works. In addition, “financial gain” is not a prerequisite to criminal liability, as long as the infringing conduct is willful and the threshold quantity of copying for criminal liability is reached or exceeded. NET also extends the statute of limitations for prosecuting a violation of the Copyright Act to five years, whereas the statute of limitations for civil actions remains at three years. NET also specifically allows victim impact statements to be presented at sentencing in which the scope of economic loss to the victim from the acts of copyright infringement can be described.

NET is understandably popular with the motion picture, music recording and computer software industries but has had its share of critics as well. Those critics point out that, while copyright owners have a legitimate right to protect their interests in their copyrighted works, the provision in the United States Constitution that provides the basis for copyright law states as its objective the promotion of the progress of science and the useful arts and not the rewarding of the labors of the creators of works. Concern has been expressed that, without the requirement of financial gain to find criminal liability, NET will criminalize fair use and other legitimate uses of copyrighted works that facilitate the educational process and the open exchange of information.

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