Efforts to patent 3D printing technology are frequently the subject of articles on this website. Preparing and filing a U.S. utility patent application, while a significant endeavor, is only the beginning of the process of securing U.S. patent rights in an invention. Filing a U.S. utility patent application with the U.S. Patent and Trademark Office (USPTO) does not guarantee a U.S. patent. For example, both the application for the 3D printing gun discussed here and the application for 3D printing mashed potatoes discussed here are waiting to be reviewed by the USPTO so they don’t provide any U.S. patent rights yet. A U.S. utility patent is “a grant to the patentee…of the right to exclude others from making, using, offering for sale, or selling throughout the United States, or importing the invention into the United States.” See 35 U.S.C. 154 (2012). To obtain U.S. utility patent, each patent claim must be novel and not obvious.
Generally, the novelty requirement means that a patent applicant can’t get exclusive rights to something already out there. In a patent application, the claims define the scope of protection the patent applicant is trying to obtain. According to 35 U.S.C. § 102, a patent application cannot issue as a patent if the claims recite subject matter that was “patented, described in a printed publication, or in public use, on sale or otherwise available to the public” before the filing date of the patent application. Similarly, a patent application cannot issue as a patent if the claims include subject matter described in a published patent application or issued patent filed by another inventor before the filing date of the patent application.
The patent discussed here, U.S. Patent No. 10,162,339B2 entitled “Automated Manufacturing Using Modular Structures and Real Time Feedback for High Precision Control“ and directed to high-precision automated manufacturing, included claims that the USPTO initially rejected as lacking novelty during examination. For example, the USPTO first asserted that some of the claims lacked novelty over this patent publication, referred to as O’Connell. In response, the patent applicant argued that the claims were different than what was disclosed in O’Connell. The USPTO agreed with the patent applicant’s argument, but then asserted that some of the claims lacked novelty over another, different patent publication, referred to as Stark. The patent applicant argued that the claims were different than what was disclosed in Stark, but the UPSTO did not agree. The patent applicant then amended, that is changed (provided the amendments include subject matter disclosed in the application as filed), the claims to convince the USPTO to allow the claims. The patent applicant and the USPTO had a telephone interview and tweaked the claims further. The USPTO then allowed the patent application to issue as a patent, giving the patent applicant U.S. patent rights as defined by the claims that were finally agreed upon.
Generally, the non-obviousness requirement means that a patent applicant can’t get exclusive rights to something that is obvious based on what is already in the public domain. According to 35 U.S.C. §103, a patent application cannot issue as a patent if “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”
The patent application discussed here, U.S. Patent Application No. 15/847,142 entitled “Methods and Systems for Implementing Distributed Ledger Manufacturing History“ and directed to the use of a distributed ledger system (such as blockchain) to verify and validate 3D printed objects in a supply chain, included claims the USPTO initially rejected for failing to meet the non-obviousness requirement. Some of the claims were rejected as being obvious over a combination of different patent publications. For example, the USPTO asserted that most of what was claimed by the first claim of the patent application was disclosed in this patent publication by Milazzo. In addition, the USPTO alleged that the claim features missing from Milazzo could be found in the three other patent publications, and, therefore, it would have been obvious to a person with skill in this technical area to combine the four references to arrive at all of the features of the first claim. In response to the obviousness rejections, the patent applicant amended the claims and had a telephone interview with the USPTO after which the claims were amended further. A Notice of Allowance was sent this December, meaning that this patent application will likely issue as a patent soon with the claims as finally agreed upon.
A Process, Not a Promise
A U.S. patent application is an important step toward protecting an invention, and having a U.S. patent application filed provides some perks. For example, a product covered by a filed U.S. patent application can be marked as “patent pending.” Additionally, if a competitor copies a product that they know is covered by a pending U.S. patent application, the competitor can be forced to pay monetary damages if the patent application issues as a patent even for the sales of the copied product made before the patent issued.
That said, as shown above, each U.S. utility patent application goes through a rigorous examination by the USPTO during which the patent application must meet various requirements, such as the novelty and non-obviousness requirements. Some U.S. utility patent applications are never able to meet these requirements and therefore never issue as patents. However, many other U.S. utility patent applications do meet the requirements, and the subject matter of some issued U.S. utility patents relating to 3D printing include support platens, printhead modules, brace structures, methods of producing orthopedic implants, and 3D printed shoes and splints, as discussed in articles found here and here.
When thinking about filing a U.S. utility patent application, or simply when reading about U.S. patent applications directed to 3D printing technology, remember that a U.S. patent application is not a U.S. patent. A U.S. patent application is not even the promise of an eventual patent. Instead, a U.S. patent application is the beginning of a process, one with various requirements that must be met in order for any U.S. patent rights to be obtained.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney. Views expressed are those of the author and are not to be attributed to Marshall, Gerstein & Borun LLP or any of its former, present or future clients.
About the author:
Kate Nuehring Su, Patent Attorney, Marshall, Gerstein & Borun LLP.
Kate Nuehring Su counsels clients in all phases of domestic and international patent preparation and prosecution. Ms. Nuehring Su has a background in engineering, including a degree in biomechanical engineering from Stanford University. Her extensive legal and technical knowledge enables her to devise successful strategies for clients across a range of industries.
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