Expert Witness Statements Useful Only When Submitted During Patent Prosecution

Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) became available on 16 September 2012. The IPR is a post-grant review procedure to challenge the patentability of issued claims of a patent based on prior art patents and publications. An IPR must be requested within one year of the issuance of the patent. A patent owner — often the inventors — can submit a response if a patent is challenged. The response is known as the Patent Owner Preliminary Response (POPR).

Under the rules, the patent owner cannot “present new testimony evidence beyond that already of record.” Accordingly, in order to make a strong case to defeat institution of the IPR, the patent owner should, in the POPR, rely on declarations from experts and inventors setting forth 35 U.S.C. §§ 103 and 112 positions. The declarations need to be “of record.” In order to get them in the record, patent attorneys need to plan ahead and submit affidavits and declarations during prosecution — long before an IPR is requested. I believe that this is the current best practice for patent prosecution, especially if an IPR is expected.

Two cases illustrating the use of declarations are Anova Food L.L.C. v. Leo Sandau and William R. Kowalski, IPR2013-00114 and Omron Oilfield & Marine Inc. v. MD/TOTCO, A Division of Varco L.P., IPR2013-00265.

Word Marks Can Use Any Font and Color

WordMarkThe Trademark Manual of Examining Procedure (TMEP) reminds us in section 1207.01(c)(iii) that if a mark of an application or registration is “presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007).

The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009). A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely “reasonable manners” of depicting the mark.

Accordingly, unless there is a compelling need to do otherwise, the broadest protection comes from submitting a word-based trademark application for registration with the U.S. Trademark Office.

Food Recipes Generally Are Not Patentable


One of the leading cases on whether food recipes are patentable is In re Levin, 178 F.2d 945 (CCPA 1949). The inventor claimed a soft, spreadable emulsion of oil-in-water and various ingredients. In rejecting the ten claims, no single reference showed or suggested all of the ingredients and steps set forth in the claims. There were composition and method claims.

The court states, with emphasis added:

“This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.”

Those are pretty harsh words! As can be seen, the U.S. Patent and Trademark Office (USPTO) is hostile to issuing patents on recipes for food. Chefs beware.

Spiderman Toy Not Granted Patent Royalties Beyond the Life of the Patent

On 22 June 2015, the Supreme Court of the United States (SCOTUS), in a 6-3 decision, left undisturbed the 51-year-old decision in Brulotte v. Thys Co. (1964). The rule has been and continues to be that patent royalty agreements cannot require payments after the expiration of a patent. Kimble v. Marvel Entertainment, LLC, Case No. 13-720.

In this case, Marvel agreed to purchase Kimble’s patent for a lump sum plus a 3% royalty on future sales. The contract gave no expiration on the royalty. Toward the end of the life of the patent, Marvel asked a trial court to confirm that Marvel was not obligated to pay the royalty beyond the expiration of U.S. Patent No. 5,072,856. The court agreed. According to long-standing public policy, any invention as claimed in a patent falls into the public domain and thus grants the public free use of the invention after the patent expires. SCOTUS confirmed this understanding. According to SCOTUS, there are many other ways ways to structure contracts that include payments and other benefits to avoid this rule.