By Marshall J. Brown, Foley & Lardner LLP
This article is part of our Winter 2009 edition of Legal News: China Quarterly Newsletter, Eye on China.
As Chinese companies become increasingly active in obtaining patent protection in the United States, it is important for these companies to consider many aspects of the U.S. patent laws that are unique to the United States. Some of these idiosyncrasies place particular burdens on inventors and attorneys, while others can provide unique opportunities to sophisticated patentees in various situations.
The following are a number of unique aspects of U.S. patent laws that should be considered by foreign companies when pursuing patent protection in the United States.
Absolute Novelty Is Not Required
Unlike most countries, the
The United States Is a “First to Invent” Country
The United States is the only country that is based on a “first to invent” rather than a “first to file” system. Under this system, if two parties file U.S. patent applications describing the same invention, the second party to file an application may be awarded a patent over the first party, if the second can establish that it invented the claimed subject matter first. Additionally, an applicant can “swear behind” some types of prior art if it can establish an earlier date of invention.
Determining a date of first invention can be very difficult, and documentary evidence is very important in making such a determination. It is therefore important for inventors and companies to keep thorough records of their research and development activities, as this information may be critical in proving an earlier date of invention than another party or reference.
The Duty of Disclosure Requirement
Everyone associated with the filing and prosecution of a
Precise Support for Claim Language Is Not Required
In many countries, an applicant is not permitted to use language in a claim that does not also appear in the specification. The United States does not have such a stringent requirement, instead requiring only that claim language have express, implicit, or inherent support in the application as originally filed. This can provide an applicant with added flexibility when drafting claims. For example, an applicant can claim a feature that was not originally described in the specification but was shown in the original figures.
“Means-Plus-Function” Language Is Narrowly Construed
Although U.S. law permits applicants to describe structural limitations in a claim as a “means” for performing a function recited in the claim, this language will be narrowly construed during subsequent enforcement actions. Under U.S. law, this language will be limited to cover only the corresponding structure that is described in the specification as well as equivalents thereof. Additionally, if a court finds that corresponding structure is not sufficiently described in the specification, the entire claim can be found invalid. It is therefore sometimes advisable to include at least some claims that do not use any “means-plus-function” language, and if such language is used, it is important to ensure that corresponding structure is clearly discussed and identified in the specification.
Unlimited Continuation Applications Are Permitted
Applicants may file an unlimited number of continuation applications within the USPTO, so long as each continuation application is filed during the pendency of a related application. This can be helpful if a competitor is attempting to design around your patent claims. By filing a continuation application, you can continue to attempt to obtain broad patent claims, including claims that may cover competitors’ later-developed designs.
It Is Possible to Broaden Claims Post-Issuance
Even after a patent has granted, and no continuation application is filed, one can enlarge the scope of the patent’s claims in some circumstances. A patent owner can file a “reissue” application in order to correct an error or mistake in a granted patent. Importantly, such mistakes can include drafting patent claims too narrowly, and if a reissue application is filed within two years of the patent’s issuance, the patent owner is permitted to broaden the scope of the claims. A reissue application can therefore be a valuable tool if a competitor has designed around the claims of an issued patent, as it can provide the patent holder with another opportunity to obtain claims that are infringed.
As detailed above, there are both dangers and opportunities associated with many unique aspects of the