NEWS

Updated IDS fees

January 21, 2025

The USPTO has changed how fees for Information Disclosure Statements (IDS) work, this change was implemented 2025-01-19.

A brief overview of the changes are as follows:

There are now fees for when the cumulative number of references that the applicant supplies exceed the following thresholds: 50, 100, 200. These fees are not insignificant and do not scale by entity size.

Between 51 and 100 references = $200
Between 101 and 200 references = $500
Over 200 references = $800

However, do note you reduce the larger fee by the smaller. So if you had cited over 50 citations and then cited over 100, but you already paid the $200 fee earlier, you would pay $300 for the second fee instead of $500. This applies to the over $200 fee as well.
These fees apply to applications filed before these changes.

These new fees do not replace the standard IDS filing fee. This is now called the “IDS timing fee” and these new fees are “IDS size fees”.

These numbers do not include references that were filed by the examiner or a “third party”. Duplicate items are counted.

Divided Infringement

January 13, 2025

Understanding System and Method Claims

System claims describe the overall arrangement and interaction of different components within a system. They protect the “what” and “how they work together” of an invention.

Method claims focus on the specific steps to achieve a result, essentially protecting the “how” of an invention.

System claims define the components and their interactions within a system, while method claims detail the steps or actions taken to perform a function.

Example:

Method claim: “A method for cleaning a surface, comprising the steps of applying a cleaning solution, scrubbing with a brush, and rinsing with water.”
System claim: “A cleaning system including a spray nozzle, a brush attachment, and a water reservoir, wherein the nozzle delivers cleaning solution to the brush.”

Enforcing Method vs. System Claims

Typically, method claims are easier to obtain but more difficult to enforce. To prove infringement, all steps must be performed by a single entity.

System claims, by contrast, can be infringed by creating a system with the described components.

However, questions arise when different agents control different components of a system. Who is responsible for infringement in such cases?

Legal Precedent on System Use

Courts have held that to “use” a system, a party must “control the system as a whole and obtain benefit from it.”

For example, in Centillion Data Systems, LLC v. Qwest Communications International, Inc., backend components were operated by the service provider (Qwest), and front-end components by customers.

The court ruled that customers, not Qwest, were using the system. Qwest was therefore not liable for infringement.

Case Study: CloudofChange LLC v. NCR Corporation

A recent case involved a Point-of-Sale (PoS) system called NCR Silver. CloudofChange’s patents claimed a system requiring vendor-operated webservers and subscriber-operated PoS terminals. NCR controlled the backend, while merchants controlled the frontend.

CloudofChange alleged direct infringement, arguing that NCR controlled and benefitted from each component. The district court sided with CloudofChange, noting that the merchant agreement required merchants to maintain internet access. The court held this demonstrated that NCR was directing the merchants and thus using the patented system.

Federal Circuit Reversal

The Federal Circuit reversed the decision based on the Centillion framework. The court emphasized that NCR’s merchants, not NCR, used the system. Simply requiring merchants to maintain internet access does not constitute directing or controlling the system’s use as a whole.

The court also highlighted the difference in liability analysis between method and system claims:

Method claims: A party must control each step of the method. If steps are divided among multiple parties, no single party can be said to perform the complete method.
System claims: Liability depends on control over the entire system, not individual components. The focus is whether someone puts the complete system into service and benefits from it.

Key Takeaways on Divided Infringement

For method claims, divided actions among parties may result in no infringement unless one party directs all steps.
For system claims, control over the system as a whole is the key factor.
Dividing the action among multiple parties can avoid liability in both cases, but the analysis differs depending on claim type.

New FishFAQ Trademark video: What is a Trademark?

December 18, 2024

We have started uploading a new series of FishFAQ videos directed towards Trademarks. This first video starts with the most basic question: What is a Trademark?
It covers the purpose of trademarks, who they are meant to protect, and why the government is interested in doing so; the basic things that can be protected under trademark rights, and the historical beginning of the modern trademark system.

The USPTO’s New Fee Structure for Large Information Disclosure Statement Filings.

December 11, 2024

The Old Prior Art Wisdom: When in Doubt, Cite It.

“When in doubt, cite it” is the wisdom handed down regarding prior art on the edges of relevance. After all, it didn’t cost much to cite such art by filing an Information Disclosure Statement (IDS). But there was a big potential risk if the art wasn’t cited. That wisdom, however, may cost you now with the new USPTO fees for filing large IDS’s.

The New Prior Art Wisdom: Over Citing Will Cost You

The USPTO is contending that in many instances, these large IDS submissions contain clearly irrelevant, marginally irrelevant, or cumulative information. The PTO has upped the fees to cover the extra time examiners must put in to check so many references. It should also incentivize practitioners to think harder about what information needs to be included. The breakdown is:
$200 for 51-100 items
$500 for 101-200 items
$800 for 201+ items

The PTO says about 5% of applications contain 51-100 items; 4% of applications have 101-200 items; and 4% have over 200 items. This should translate to only about 1 in 8 applications being affected.

How Will It Play Out?

It will be interesting to see how this affects filing. Historically, the choice has been clear. Patent filers have been able to avoid both the extra effort and inherent liability in identifying the most relevant references, by simply citing everything that is even marginally relevant. Are the new fees high enough to discourage that strategy? And seen from a more cynical viewpoint, are the new fees high enough to offset the fees that would otherwise be charged to clients from filing large IDSs. Are they high enough to discourage filers from trying to hide the most relevant references within a mountain of less relevant references?

New FishFAQ video: The Patent Process Overview

September 23, 2024

We have recently added another video to our FishFAQ video series on patents. This one covers a basic overview of the U.S. patent process.

You can find the entire FishFAQ video playlist at our Youtube channel: https://www.youtube.com/@fishiplaw

New FishFAQ video: The History of Patents

September 16, 2024

We have recently added another video to our FishFAQ video series on patents. This one covers a brief history and development of patents.