This article has been written by Ayush Tiwari, a student of Symbiosis Law School, NOIDA. This article elaborates on what is the Third Amendment to the US Constitution, how it originated and the judicial history attached to it. 

It has been published by Rachit Garg.

Introduction

When it comes to the Bill of Rights, the Third Amendment is regarded as an ostrich’s wings: an antique relic and a relic of ancestry with little significance today. The additional amendments to the Bill of Rights in the United States Constitution stimulate public admiration and volumes of legal investigation. Meanwhile, the Third Amendment languishes in a state of relative insignificance. The minimal attention it does receive tends to be insufficient to serve it properly.

To their credit, a few academics have acknowledged the Third Amendment and its predecessors’ significant and dramatic importance in British and American history. However, even these explanations leave out important portions of the Third Amendment’s history. A lack of significant and persistent legal examination has undermined the Third Amendment in particular. However, these points of view indicate a very restrictive approach to constitutional interpretation: courts and scholars see the Constitution, and especially the Bill of Rights, as “broken up into discrete blocks of text, with each segment examined in isolation.” This approach is flawed.” A closer examination of the Bill of Rights shows structural principles that are intricately linked. By studying all of the amendments in a collective or holistic manner, one can have a better understanding of each one. 

The United States Supreme Court has never had cause to apply or interpret the Third Amendment, and only a handful of times have the federal courts explicitly considered a Third Amendment challenge on the merits.

The restriction on quartering contained in the Third Amendment recalls the colonists’ and antiquity’s fear of a standing army imposing military power on the people or citizens. The framers, through this amendment, wanted to prevent the extension of military authority into the residence of common people during peacetime by forbidding quartering in order to safeguard both property and privacy.

Since the United States military has a vast network of facilities and ships across the world to house its soldiers, the requirement to physically quarter troops in private residences is mostly obsolete. Modern technology, on the other hand, allows the military to watch civilian life and enforce regulations, which raises a concern about privacy that is virtually similar to actual troop quartering.

But the Third Amendment is a powerful form of protection for American citizens, one that has been enshrined in our Constitution since 1791. In this blog post, we’ll take a look at what the Third Amendment is, the origins of the Third Amendment, its practical application, and some important court cases that have dealt with the Third Amendment.

What is the Third Amendment

The Third Amendment of the United States Constitution reads as follows: “No soldier shall, in time of peace be quartered in any house, without the consent of the owner, nor in time of war, but in a manner to be prescribed by law.” This Amendment was added to the Bill of Rights in 1791 and has been a part of the Constitution ever since.

Essentially, the Third Amendment is a protection for citizens against the government quartering soldiers in their homes without their permission. This was a common practice in Europe at the time and one which the American colonists were keen to avoid. The Third Amendment is a recognition of the right to privacy of the citizens and protection from the government.

The Bill of Rights Primer

The Bill of Rights is a set of ten amendments to the United States Constitution which were added in 1791. These amendments are meant to provide citizens with protection from the government and to ensure that the government does not overstep its bounds.

The First Amendment guarantees freedom of speech, press, and of religion; the Fourth Amendment forbids arbitrary search and seizure; the Fifth Amendment guarantees citizens due process; the Eighth Amendment forbids cruel and unusual punishment; and the Tenth Amendment reserves powers not delegated to the federal government nor prohibited to the states for the states or the people. These all are included in the Bill of Rights.

The Third Amendment is an important part of the Bill of Rights, as it provides citizens with protection from the government’s power to step into and reside in their household premises. In other words, this Amendment ensures that the government cannot force citizens to quarter soldiers in their homes and provides citizens with an important form of protection from the government.

What does the Third Amendment prohibit

The Third Amendment prohibits the government from quartering soldiers in any house without the consent of the owner. This means that the government cannot force citizens to house soldiers in their homes, either in times of peace or in times of war.

The Third Amendment also prohibits the government from making laws that would force citizens to quarter soldiers in their homes. In other words, the government cannot pass laws that would require citizens to provide housing for soldiers.

Origins of the Third Amendment (European Origins, American Origins)

The Third Amendment has its roots in European practices. In Europe, it was common for governments to quarter soldiers in private homes in times of war. This was a way to save money, as the government would not have to pay for housing and would also be able to keep a closer eye on the civilian population.

When the American colonists arrived in the New World, they were keen to avoid this practice. The Third Amendment was a way to ensure that the government could not force citizens to quarter soldiers in their homes, something which was seen as a violation of their rights as citizens.

The Third Amendment was first introduced as part of the Bill of Rights in 1791. It was a way to ensure that the government could not impose such a practice on the citizens and to provide them with protection against the government’s power.

English Origin

Throughout the Middle Ages, it was common for English military chiefs to house and feed their men by quartering them in civilian houses. This approach was despised by English people, unsurprisingly. As a result, anti-quartering rules were regularly incorporated in city charters in England. Henry I’s London Charter of 1130, for example, stated that “no one be billeted within the walls of the city, either of my household, or by force of anyone else.” A lot of rules came in Henry II’s London Charter of 1155 and John’s Ipswich Charter of 1200, which were similar to the Charter of 1130, both of which clearly banned troops being quartered in private dwellings without their permission. While such legal restrictions on involuntary quartering were only applicable in their respective jurisdictions, popular opposition to quartering ultimately led to the Magna Carta of 1215, which essentially included the anti-quartering clauses from the city charters for all of England by reaffirming “the ‘ancient liberties and free customs’ of England’s cities, towns, and boroughs.”

Despite such explicit resistance to the practice of quartering, the English government repeatedly disregarded the legal restrictions against it. This was due to the fact that as armies got larger and more modernized, the expense of housing and feeding soldiers rose as well. As a result, the House of Commons struggled to “provide the revenue required to pay for adequate barracks or billet soldiers in inns.”

With insufficient funding from the government for accommodation, soldiers in the field sometimes had “no choice but to seek quarters in private homes.” Quartering grievances were so common that they were identified as one of the reasons for the English Civil War. By the early seventeenth century, the monarch no longer safeguarded people from quartering but rather caused the problem. It was left to Parliament to fix the legal gap and safeguard citizens against quartering. The outrage over quartering reached a boiling point in 1628, when Parliament presented Charles I with the Petition of Right. The “Petition of Rights” outlined a detailed list of freedoms that they considered the monarch and his troops could not violate. The English specifically “identified ‘the problem of quartered troops as a grievance with a legal identity of its own.’”

When the English army continued to quarter its soldiers in private homes despite such a popular declaration of liberty, Parliament issued the Anti-Quartering Act in 1679. The Anti-Quartering Act outright barred the quartering of soldiers in private residences during both war and peace.

Despite this, the English monarch, James II, continued to quarter his soldiers among the citizens. This monarchical disregard for the public sparked outrage, which contributed to James II’s removal in 1689, known as the “Glorious Revolution.” Soon after, Parliament established the English Bill of Rights, which outlined the people’s rights under the new monarch. The English Bill of Rights expressly stated that quartering troops was “contrary to law.” Soon after, Parliament passed the Mutiny Act, which prohibited soldiers from quartering in private residences without the approval of the owners. However, the Mutiny Act did not apply to dwellings in English colonies. While the misery of the English people was coming to an end, it was only starting for their colonial American subjects.

Europe

The first and most interesting of these French charters was granted to Rouen by Henry II in 1151 or 1152. It had numerous clauses that are similar to those found in previous English charters. The Rouen charter, in particular, exempts the city from any billeting except that directed by the marshal of Rouen. This is a weakened form of Henry I’s 1131 exemption from billeting (which forbade any forced billeting, whether commanded by London’s marshal or not). Based on these and other coincidences, Ballard concluded that the Rouen charter, which came twenty years after the London charter of 1131, was heavily influenced by it. Following French charters, they addressed forced billeting as well. According to charters issued around the end of the twelfth century, “the burgesses of Bourges and Dun-le-Roi were exempted from the exactio culcitrarum, which appears to have been a right on the part of the lord to obtain a loan of his tenant’s bedding on his visit to the town.” The charter of Laon in 1128 went the opposite way, requiring the town’s burgesses to furnish the King with either three nights’ food and lodging or twenty livres. However, the burgesses avoided this responsibility under their 1189 charter by purchasing the King’s right for 200 livres.

Were the protections against billeting provisions of the charters of Bourges, Dun-le-Roi, and Laon inspired by Rouen’s charter? We can only speculate that they emerged following Rouen’s billeting provision and that Rouen’s charter was widely copied. Even if English precedents did not inspire the billeting prohibitions that emerged in the charters of Bourges, Dun-le-Roi, and Laon via Rouen, we might be certain that the chain of causation did not go the other way. The Third Amendment did not emerge on French soil. It appears that outside of Britain, protections against forced quartering were scarce and inadequate and were either attributed to that country’s ameliorative effect or destined to bloom and wither in isolation.

Colonial America

The military demands of Colonial America were similar to those of Saxon England: geographic isolation and the lack of a desire to deploy military force made a militia system suitable for defense. The most pressing military concern at the time was war with Native Americans, to which the militia system was adapted. Furthermore, the dominant political thought of English Whigs and Classical Republicans held that a militia system was essential to a free society. During King Phillip’s War in 1675, the American colonists had their first encounter with British troops quartered in their dwellings. Unsurprisingly, the colonists, like the Englishmen of their ancestors, were outraged by the practice and went on to outlaw it through their own regional enactments. “In 1683, the New York Assembly passed a ‘Charter of Liberties and Privileges’ providing that a ‘freeman’ could not be compelled against his will to quarter a soldier in his residence in peacetime.” Despite these efforts, quartering continued through the seventeenth century and became a serious concern for colonists in the second part of the 1700s, and the issue resurfaced whenever the British military presence in the new world increased.

During the French and Indian War (1754-1763), which sent thousands of British regulars to North America, soldier quartering became a serious issue for the colonists. General Edward Braddock’s pleas for rooms and food were frequently rebuffed by American colonists. In 1756, his successor, John Campbell, Earl of Londoun, claimed that Americans used the expression “Rights and Privileges” to oppose his attempts at practically every step. Even the most ardent protests, however, were unable to prevent the British from imposing troops on residents. Colonial governments sought to prohibit the practice once more, but their efforts were disregarded and resisted, often flagrantly. For example, the Pennsylvania Assembly passed a resolution in 1755 declaring its colonists’ “undoubted right not to be burdened with the sojourning of soldiers against their will,” but British General Edward Braddock quartered his troops in private homes anyway, boasting “that he would ‘take care to burden those colonies the most, that show the least loyalty to his Majesty.” 

Following the conclusion of Pontiac’s War in 1763 and despite its victory, the French and Indian War placed England in such debt that it nearly bankrupted the empire. England wanted the colonists to pay for the war and the expenses of maintaining the vast border. Though British soldiers were allegedly stationed in North America to defend colonists from Native Americans on the border, English commanders wanted to prevent further westward advancement. They feared that colonial encroachment would jeopardize the lucrative fur trade with Native Americans. The colonists opposed the stifling of the westward movement, considering the stationing of the permanent army a means of control rather than protection. The Quartering Act, approved by Parliament in 1765, required colonists to provide supplies for the soldiers stationed in the colonies and even the barracks for stationing them. If these barracks were insufficient, the Act required troops to be quartered in inns, livery stables, and ale houses. If this also falls short, the troops could end up being accommodated in other private buildings. This last option allowed for limitless abuse and developed significant resentment among the colonies. 

To make the situation worse, Parliament implemented the Stamp Act of 1765 in order to extract the income necessary to meet the Quartering Act’s demands from the colonies. “As a result, the issues surrounding soldier quartering became entwined with the volatile political issue of ‘taxation without representation.’” The costs of quartering British troops rose and extended over North America. When New York failed to completely implement the Quartering Act’s conditions, Parliament suspended its Assembly until that body chose to support the royal troops stationed in New York. The governor of Massachusetts quartered troops at the statehouse in October 1768 when the people of Boston refused to furnish them with suitable lodgings. Parliament approved five statutes in reaction to the Boston Tea Party on December 16, 1773. A new Quartering Act, adopted in June 1774, was one of them. It allowed troops to be quartered in private residences (rather than private buildings), colonists considered this Quartering Act to be even more objectionable than its 1765 predecessor, and it was dubbed as one of the “Intolerable Acts.”

The response of Parliament to the Boston Tea Party sparked a series of political pronouncements addressing the quartering problem, culminating in the Declaration of Independence in 1776. According to Paragraph 15 of the Declaration of Independence, George III had “united with others to bind us to a jurisdiction foreign to our constitution and not recognized by our laws; giving his Assent to these acts of pretended legislation: For quartering huge numbers of armed troops among us,” which was the justification given for severing the “political bands” that had held the colonists to England. Even after the long struggle for independence and oppressive British rule was over, several states took care to include anti-quartering provisions in their own legislation. “Between 1776 and 1787,” when states were still loosely federated under the Articles of Confederation, Delaware, Maryland, New Hampshire, and New York all declared the right to be free “from forced peacetime quartering and arbitrary wartime quartering” as one of the fundamental rights enjoyed by their citizens. Similarly, “Massachusetts and Pennsylvania put anti-quartering provisions in their state constitutions.” When the Articles of Confederation were judged too weak, the states sent delegates to the Constitutional Convention in Philadelphia to construct a new national government under the U.S. Constitution; many had particular concerns regarding soldier quartering.

Path towards ratification

While the Constitution clearly authorized Congress the right “to raise and support Armies,” there was no Bill of Rights and no provision for anti-quartering at the time. Therefore, quartering was technically allowed. This angered the anti-quartering AntiFederalists, who refused to endorse any draft of the Constitution that did not include an anti-quartering provision. The “Federal Farmer,” an Anti-Federalist writing under a pseudonym, publicly approached the states not to ratify the Constitution for the reason that “there was no provision to prevent the quartering of soldiers.”

Similar sentiments emanated from the states’ ratifying conventions. The states ratified the Constitution, regardless of the concerns of Anti-federalists. However, the Anti-Federalists’ clamor for a Bill of Rights never subsided. Eight states conducted conferences to suggest provisions for a Bill of Rights between the adoption of the original Constitution and the insertion of the Bill of Rights. The anti-quartering legislation was supported by five of the eight states.

Amendment to quartering

In delivering the Bill of Rights to the First Congress, James Madison took the lead. He distilled his Bill of Rights proposal from the best and most popular amendments proposed by state conventions. He knew that deviating from their criteria would put the project at risk: “Two or three contentious additions would even now prostrate the entire project.” His quartering amendment, however, varied from the states’ plans. Even though Madison drew influence from outside sources, he gave quartering a special touch. There was nothing like it in state constitutions, political remarks, or English laws. Madison proposed a quartering amendment in his address to the house, which said, “No soldiers shall be quartered in any house in time of peace without the consent of the owner; nor at any time, but in a manner warranted by law.” Contrary to Madison’s proposal, the states also provided two alternative proposals. The first version prohibited quartering without consent during times of peace but was silent at other times. This version was included in Maryland’s and New Hampshire’s proposals. The second version also prohibited forced quartering during peacetime but also subjected wartime quartering to legal restrictions. This version was included in the Virginia, New York, and North Carolina proposals. This second version was finally incorporated into the Third Amendment.

The First proposed draft

The first draft of the states’ suggested amendments mentioned nothing about dealing with quartering when the country is no longer at peace. To identify the constitutional constraints on quartering at such times, one would have to turn elsewhere, most likely to the other amendments in the Bill of Rights and to Articles I and II of the Constitution. Subsection B discussed similar constitutional interpretation issues in relation to the second version of the states’ proposed quartering amendments. For the time being, it is fair to ask why Maryland and New Hampshire, the states submitting the first draft, made no mention of quartering outside of times of peace. This is especially puzzling considering that their own constitutions allow the legislature’s authority over wartime quartering (the same strategy followed by the states proposing the second version).

The answer to this enigma may be found in the current political atmosphere. Maryland and New Hampshire approved their separate constitutions in 1776 and 1784. Their suggested amendments were published in 1788, some years later. In the meantime, the Anti-Federalists emerged on the political landscape. Perhaps a schism developed between those who liked the quartering laws in state constitutions and those who desired stricter prohibitions on quartering. Such political differences may have prevented the Maryland and New Hampshire conventions from agreeing on a more detailed quartering amendment.

The Second draft

The second version of the states’ proposed quartering reforms, like the first, forbade the compulsory quartering of troops during peacetime. In contrast to the previous version, the second version went on to state that during times of war, troops should be quartered “only as the laws direct.” This new provision reduces the burden of constitutional interpretation. There appears to be little question that it was intended to give Congress control of wartime quartering. Nonetheless, the second version of the states’ proposed quartering modifications poses an interpretive problem. While it adequately addresses the issues of quartering in times of peace and war, it fails to expressly address the gray region between these two extremes. This is a wide category of unrest, which includes rebellion, low-level conflicts, and the period between the emergence of a danger to national security and the formal declaration of war.

The only way to avoid the challenges of interpreting within this discrepancy is to squeeze “unrest” into either “peace” or “war.” But could the founders have overlooked a unique state of unrest? One would not expect lawyers and philosophers to speak in such casual terms, but the founders were essentially statesmen. In creating the Bill of Rights, they may have sometimes prioritized flair over clarity. In any event, limiting oneself to “peace” and “war” does not completely contradict conventional use. If the founders had limited themselves to “peace” or “war,” where would they have placed unrest? The founders would have officially identified unrest as a form of peace. The Constitution treats war in a restricted and technical manner, rendering it less vulnerable to broad interpretation. “Peace” refers to any period in which no official declaration of war is in force. Such an approach may have appealed to the founders. It broadens homeowners’ peacetime rights to instances of unrest, maximizing protection from quartering. It also pushes Congress to think carefully before declaring war since it adds quartering to the list of potential consequences.

But didn’t the founders consider unrest separate from peace and war? There are compelling reasons to assume they did. The drafters of the states’ proposed quartering amendments included war, revolt, insurgency, and invasion in documents they sent to Congress, but only in specified contexts. This suggests that they considered these words to be legal terms with distinct meanings and that they did not exchange them casually. The Constitution employs these terms carefully as well, granting Congress the authority to declare war at one place and the authority to “call forth the Militia to execute the Laws of the Union, suppress Insurrections, and repel Invasions” at another. The usage of this specific terminology to describe conditions of unrest halfway between peace and war appears to be congruent with the mode of thought attributed to the founders by military historians. 

The differences also corresponded to the military policies of the time. The founders were well acquainted with civil unrest short of war. They had not only used it to cause trouble for Britain, but they had also seen it threaten their own nation’s cohesiveness. As a result, Alexander Hamilton complained about “the revolt of a part of the State of North Carolina, the late menacing disturbances in Pennsylvania, and the actual insurrections and rebellions in Massachusetts.” Backcountry unrest remained a continuous issue for the new country, as seen by the Whiskey Rebellion of 1791-1794, following separatist movements and low-level Indian conflicts that plagued the boundaries on a regular basis. In each of these cases, the government used direct military action to contain the uprising rather than formally declaring war.

If the creators of the second quartering amendment proposal acknowledged a state of unrest distinct from peace and war, why didn’t they directly address it? There are a few possible explanations. It’s possible that they simply drafted the amendment hastily or carelessly. Alternatively, political conflicts may have forced them to keep the wording vague, just as it may have influenced the first version. Another possibility is that the drafters wanted to leave room for the executive branch to control quartering during periods of unrest, as discussed in the rejection of Madison’s proposed amendment.

Assuming that the recognition of a distinct state of unrest existed, what rights would homeowners have had under the second version of the proposed quartering amendments by the states? Homeowners would likely argue that the government’s power to quarter troops during wartime should not undermine their retained right to refuse quartering during times of unrest. The states proposing the second version of the quartering amendments seemed to invite such claims, as each one asked Congress to protect retained rights similar to those eventually safeguarded in the Ninth Amendment. However, there is a compelling objection to this argument: something that has never existed cannot be retained. Most state constitutions during that period had not yet prohibited forced quartering during peacetime, let alone explicitly extended the right to times of unrest. Homeowners had not enjoyed a de facto right to be free from quartering during periods of unrest, which explains their demand for the protection of a quartering amendment.

The founders would have had several reasons to oppose homeowners’ attempts to retain their peacetime rights during periods of unrest. Quartering would likely be most necessary during such times. Unrest often emerges unexpectedly, far from centers of power where barracks might not be readily available. Once war is declared, the need for forced billeting diminishes because there is more time to prepare military housing, and public support for the war effort increases. Modern experience has shown that civilians willingly consent to quartering when faced with a common enemy. However, residents in a rebellious area are much less likely to welcome troops into their homes, necessitating the State to impose quartering upon them. This also serves the purpose of monitoring and suppressing further rebellion. These strong policy arguments are likely to outweigh homeowners’ claims for extending their peacetime rights to times of unrest. In that case, which branch of government should have control over quartering during unrest—the Executive or the Legislature?

Advocates of executive control could argue that during times of unrest, the Executive must have the freedom to act swiftly and decisively without waiting for Congressional approval. Early American responses to unrest support this claim. They could further contend that the second version of the proposed quartering amendments grants power over wartime quartering to lawmakers because that is the only time when the legislature can effectively direct quartering. At all other times, the power to quarter troops must be wielded by the Commander in Chief to be carried out effectively. However, despite these policy arguments, those who supported executive control over quartering during times of unrest would have found it challenging to defend their position in constitutional terms. On the one hand, they could rely on the clause granting executive powers to the president. For instance, Hamilton argued that this power was subject only to the exceptions and qualifications explicitly expressed in the Constitution. Less controversially, they could point to the executive’s designation as commander in chief. However, neither of these arguments convinced the Youngstown court that the Executive possesses broad “inherent” powers.

Constitutional arguments favoring legislative control over quartering during unrest carry more weight. The Constitution acknowledges the authority of Congress to act during times of unrest by granting it the power to call forth the militia to enforce federal laws, suppress insurrections, and repel invasions. Congress also possesses the power to raise and support armies, establish rules for the government, and regulate land and naval forces. These powers are fully applicable during times of unrest and appear broad enough to encompass the quartering of troops. The Constitution’s allocation of authority to Congress in these areas also reflects a long-standing fear of the Executive’s military strength. This makes it unclear if the second draft of the proposed quartering amendments’ drafters really meant to give the Executive the power to set the parameters of quartering amid disturbances or unrest.

Madison’s draft

Madison proposed a quartering amendment that differed from the versions put forth by the states. While all versions prohibited forced billeting during times of peace, Madison’s amendment went further by forbidding quartering “at any time, but in a manner warranted by law.” This departure from the state proposals explicitly granted Congress the power to regulate quartering whenever the nation was not at peace. Madison likely revised the state proposals to address the potential interpretative issues caused by their failure to address the gap between peace and war. By extending legislative control to “any time” outside of peace, Madison avoided these problems, eliminating the possibility of the Executive asserting power over quartering. In this framework, the homeowner has control during peacetime, and Congress has jurisdiction during all other times.

Despite the perceived superiority of Madison’s quartering amendment, the select committee that reviewed his proposed amendments rejected it in favor of an alternative that closely resembled the second version proposed by the states and the final version of the Third Amendment. However, it would be hasty to conclude that Madison’s plans were thwarted by the committee. It is possible that he anticipated counterproposals that would give the Executive unqualified control over quartering during times of unrest or deny citizens the right to refuse troops altogether. In light of the possibility of weaker amendments, Madison may have strategically proposed his amendment as a middle ground that would survive the committee’s compromises. While Madison’s reaction is unknown, the committee’s decision raises questions. Why did they reject Madison’s well-crafted amendment in favor of an alternative that seemed to disregard quartering during times of unrest? Unfortunately, there is no record of the committee’s discussions. However, considering the intentions behind the second version of the state proposals provides three potential reasons for rejecting Madison’s amendment: failure to recognize an intermediary state between war and peace, negligence, or intentional silence.

Based on the founders’ views on war, peace, and unrest discussed earlier, it seems unlikely that the committee failed to recognize the intermediate state. It is also improbable that the committee negligently overlooked the unique aspects of Madison’s amendment, especially considering Madison’s presence on the committee to explain and defend his proposal. Could it be that the committee rejected Madison’s amendment to maintain silence on the issue of who should control quartering during times of unrest? There are a lot of reasons why it may have been done. The committee may have been unable or unwilling to resolve the issue, or perhaps they preferred the status quo, fearing that revised quartering amendments would be rejected by the states. However, the most intriguing possibility is that the committee intended to grant the Executive power over quartering during times of unrest, or at the very least, not to eliminate that option. This explanation finds support in policy considerations, political dynamics, and historical practice.

Due to policy reasons discussed earlier, the committee may have believed that the Executive was best suited to oversee quartering during border conflicts, invasions, and rebellions. However, explicitly granting the Executive such authority would have sparked political controversy. Instead of a Bill of Powers, the states requested a Bill of Rights. The Third Amendment, as written, was a perfect option if the committee wanted to discreetly allow the Executive to take control of quartering during times of unrest. If that was the committee’s intent, they would have likely been satisfied with the actual practice of quartering during the Civil War, as we will explore in the next section.

The Third Amendment in Practice and Theory

The Third Amendment has been an important part of American law since its inception. In practice, the Amendment has been used to protect citizens from the government’s power. This was the case in Engblom v. Carey (1982), where the Supreme Court found that the government had violated the Third Amendment by quartering National Guard troops in a private home without the owner’s consent.

In theory, the Third Amendment has also been used as a justification for a wide range of rights. For example, the Supreme Court has cited the Third Amendment in cases involving the right to privacy, the right to be free from government intrusion, and the right to be free from unreasonable searches and seizures.

Case Laws

Engblom v. Carey

Engblom v. Carey was a 1982 Supreme Court case that involved the Third Amendment. In this case, the Supreme Court found that the National Guard had violated the Third Amendment by quartering troops in a private home without the owner’s consent. The Supreme Court held that the National Guard had violated the owner’s right to be free from the government’s power and that the Third Amendment provided the owner with protection from such government intrusion.

The case was important for several reasons. It was the first time that the Supreme Court had interpreted the Third Amendment on its own merits, and it established the principle that the government cannot quarter troops in private homes without the owner’s consent. This case has also been cited in subsequent cases involving the right to privacy and the right to be free from government intrusion.

Engblom v. Carey marked the first instance where the Third Amendment’s limitations on quartering were subjected to judicial interpretation. The case revolved around the question of whether New York State violated the Third Amendment by quartering National Guard troops in the residential quarters of striking correctional officers. The Second Circuit Court of Appeals determined that there were factual uncertainties regarding the officers’ possessory interests in their residences, which raised the issue of potential infringement of their Third Amendment rights. While the court’s findings significantly impacted the extent of liability under the Third Amendment, the defendants ultimately emerged victorious, and thus the court did not establish a remedy for Third Amendment violations.

The residences in question were dorm-style accommodations owned by the State of New York and situated within the grounds of the Mid-Orange Correctional Facility for the use of its employees at their discretion. The relevant documents governing the use of these residences explicitly outline a standard landlord-tenant relationship between the state and the occupying officers. During a statewide strike organized by the AFL-CIO on April 18, 1979, the correctional officers at Mid-Orange participated, prompting Governor Hugh L. Carey to activate the National Guard. As a result, the superintendent of Mid-Orange barred the plaintiff officers from accessing the facility grounds, consequently denying them access to their on-site residences. The state then housed National Guard troops in the officers’ rooms for the duration of the strike. Upon the officers’ return, they alleged that their rooms had been vandalized and personal property destroyed or missing.

These factors led the plaintiffs to claim that the State of New York had violated their rights under the Third Amendment by quartering troops in their houses during times of peace. The plaintiffs lacked a substantial possessory interest in their homes, the district court said, excluding them from Third Amendment protections. The suit was dismissed through summary judgment. The Court of Appeals overturned this choice and remanded the matter for additional consideration. In doing so, the Engblom court made three significant findings that would have significant, albeit unexplored, implications for future litigation involving the Third Amendment.

Two of these findings held particular significance in terms of the states’ handling of quartering issues. Firstly, the court of appeals agreed with the trial court’s assertion that National Guard troops qualified as “soldiers” within the meaning of the Third Amendment. Secondly, the Engblom court explicitly extended the application of the Third Amendment to the states by incorporating it into the Fourteenth Amendment. The court’s third finding pertaining to the Third Amendment had broader implications. The Engblom court stated that, in reference to the Third Amendment’s usage by the Supreme Court in Griswold, “The Third Amendment was drafted in order to guarantee the fundamental right to privacy.” The Supreme Court dismissed rigid definitions of “ownership” in a manner akin to the safeguards provided by the Fourth Amendment against unnecessary and unreasonable search and seizure. In the case of Engblom, this analysis was applied to the Third Amendment, concluding that “property-based privacy interests protected by the Third Amendment… encompass those recognized and permitted by society, based on lawful occupation or possession with a legal right to exclude others.” Consequently, after Engblom, the Third Amendment applied not only to fee simple owners but also to leasehold owners.

Griswold v. Connecticut

Griswold v. Connecticut was a 1965 Supreme Court case that involved the Third Amendment. In 1879, Connecticut enacted a law that prohibited the use of contraceptives and imposed penalties on those involved in providing contraception. The enforcement of this law intensified as the government sought to uphold Protestant moral values, with many religious leaders opposing abortion and birth control. Anyone found guilty of violating the Connecticut law could face fines or imprisonment for up to a year.

Connecticut and Massachusetts were the only states that completely banned the use of birth control. Planned Parenthood, an organization advocating for reproductive freedom, led the opposition against these restrictions. Led by white middle-class women, Planned Parenthood aimed to challenge the law’s constitutionality. Estelle Griswold, the Executive Director of Planned Parenthood Connecticut, knowingly violated the Connecticut law by providing medical advice and prescribing contraceptives to married women. She believed that the law unjustly criminalized women and their doctors. Although her clinic operated for only ten days in 1961, Griswold was arrested and charged with aiding and abetting contraceptive use. The trial court found her guilty and imposed a fine of one hundred dollars, equivalent to $797.56 in 2018.

In her appeal, Griswold was assisted by civil rights lawyer Catherine Roraback. Roraback claimed that the law went against the equal protection and substantive due process clauses of the Fourteenth Amendment. According to the Fourteenth Amendment, no one may be deprived of their life, liberty, or property without undergoing due process, and everyone is entitled to equal protection under the law. Roraback contended that laws against contraception disproportionately affected poorer women’s access to healthcare, making equal protection a crucial aspect of her argument. The state of Connecticut defended the ban, claiming that it discouraged illicit sexual relationships and upheld the belief that the purpose of sex was procreation. The case aimed to determine the constitutionality of birth control. By the time Griswold v. Connecticut reached the Supreme Court in 1965, over one million American women were using some form of birth control.

In this case, the Court utilized the due process clause of the Fourteenth Amendment to apply the protections of the Bill of Rights to the states. As a result, it deemed the Connecticut law unconstitutional because it violated the right to privacy within marriage, which is a right explicitly listed in the Constitution but one upon which various other rights, such as expression and association, depend. The Court argued that the right to privacy was implicit in the First, Third, Fourth, Fifth, and Ninth Amendments. The Bill of Rights established “zones of privacy” that the government could not intrude upon. According to the Court, the First Amendment has a penumbra where privacy is safeguarded against governmental encroachment. Despite being specifically mentioned in the First Amendment, its existence is required for the stated guarantees to have their intended effect. The Third Amendment’s ban on quartering soldiers without the owner’s permission, the Fourth Amendment’s defense against arbitrary searches and seizures, the Fifth Amendment’s ban on self-incrimination, and the Ninth Amendment’s safeguarding of unenumerated rights were also highlighted by the Court. Ultimately, the Court concluded that privacy within marriage constituted a personal zone off-limits to government interference.

The case was important for several reasons. It established the principle that the Third Amendment provides citizens with a right to privacy and that this right can be violated by the government. This case has since been cited in numerous cases involving the right to privacy and the right to be free from government intrusion. It established the right to privacy, which was later applied in Roe v. Wade (1973), which secured a woman’s right to an abortion after proper consultation with a doctor. Lawrence v. Texas (2003), which extended the constitutional right to participate in same-sex relationships, also emphasized the right to privacy. 

The case was also a watershed moment for reproductive liberty. However, Griswold only established the constitutionality of married couples’ access to contraception. Eisenstadt v. Baird (1972) overturned laws prohibiting unmarried people from using contraception, granting them the same rights as married people. 

Conclusion

The Third Amendment is an important part of the Bill of Rights, as it provides citizens with protection from the government’s power. This Amendment prohibits the government from quartering soldiers in any house without the consent of the owner and provides citizens with an important form of protection from the government. However, the Third Amendment should not be dismissed as a quaint remnant from a more dangerous period. If one takes the time to listen, it may speak volumes. The deep roots of the Third Amendment in English law indicate the foundations of our legal history. Its lifeline runs through early American history, describing the causes of the Revolution and culminating in the fight to decide the ultimate substance of the Constitution’s Bill of Rights. Although the Third Amendment has seldom been contested, it nonetheless poses important theoretical problems regarding the authority of states under federalism, property and privacy rights, and the interaction of multiple constitutional protections.

The Third Amendment has been the subject of several important court cases, including Engblom v. Carey and Griswold v. Connecticut. These cases have established the principle that the Third Amendment provides citizens with a right to privacy and that this right cannot be violated by the government.

If you’re looking for protection from the government’s power, the Third Amendment is an important part of the Bill of Rights to consider. It provides citizens with an important form of protection from the government and has been used to justify a wide range of rights. So if you’re looking for protection from the government, make sure to consider the Third Amendment.

References

• https://scholarlycommons.law.case.edu/cgi/viewcontent.cgi?article=4689&context=caselrev 
• https://scholarship.law.wm.edu/cgi/viewcontent.cgi?article=1624&context=wmborj 
• https://verdict.justia.com/2023/02/03/do-we-really-need-the-third-amendment-or-what-can-and-should-we-do-about-constitutional-vestiges 
• https://www.history.com/news/third-amendment-constitution-james-madison 
• https://www.tennessean.com/story/opinion/contributors/2023/04/06/why-founding-fathers-passed-the-third-amendment-to-the-constitution/70082368007/ 
• https://www.americanacorner.com/blog/bill-of-rights-third-amendment 
• https://www.lawforseniors.org/how-government-works/327-is-the-third-amendment-to-the-u-s-constitution-relevant-today 
• https://law.okcu.edu/wp-content/uploads/2020/07/2-43-1-Coon.pdf 
• https://www.houstonpublicmedia.org/articles/shows/briefcase/2022/11/08/437006/the-bill-of-rights-the-third-amendment/ 

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This article has been written by Mahesh P Sudhakaran. This article gives a brief overview of key aspects pertaining to patent linkage in the US, covering legal as well as historical aspects of the same.

It has been published by Rachit Garg.

Introduction

The concept of patent linkage in the United States can be perceived as a system that interlinks the approval of generic drugs(similar drugs/similar in contents and purpose) to the patent status of the original drug that is branded. In easier terms, it means that before a generic drug can be approved for sale by the authorities, it needs to address and cross-check with any existing patents held by the original drug. 

However, this system potentially creates a conflict between two important forms of rights which are human rights and intellectual property rights. Intellectual property rights aim to provide incentives to pharmaceutical companies to encourage them to invest in the research and development of new drugs. On the contrary, human rights, such as the right to health prioritize ensuring affordable access to essential medicines for all. A strict application or enforcement of the patent linkage system may cause considerable delays in the availability of cheaper generic drugs. Finding the right balance between protecting intellectual property rights and promoting public health is a complex task. It requires careful consideration from governments, policymakers, and stakeholders to ensure that the patent linkage system does not unduly restrict access to affordable healthcare, especially for vulnerable populations. In the following sections, we will discuss the patent linkage system in the United States which includes discussing its main features, potential benefits, challenges, and the ongoing debates surrounding its impact on human rights and intellectual property rights.

The United States today has the most prominent patent linkage system creating a premise for this debate while also extending its dimensions. With the rampant growth of the global pharmaceutical industry, the need for protection of intellectual property has also grown exponentially. In the past couple of years, the Trade  Related Aspects of Intellectual Property Rights (TRIPS) have played a pivotal role when it comes to this debate with regard to Patent Linkage. The TRIPS agreement mandates member countries to establish minimum standards for protecting patents. This perspective of the extensive protection of IP has led to a significant delay in the approval of generic drugs which is in a way the need of the hour. We shall critically examine the patent linkage system in the U.S taking into account the entire process and the laws regarding the same.

Meaning of Patent Linkage

Patent linkage is the system of linking the marketing approval or regulatory approval of generic drugs with the patent status of the original drug. This means that a generic drug cannot be marketed until the patent on the original drug has expired, or until the generic drug manufacturer has obtained a license from the patent holder. This system is adopted to incentivize pharmaceutical innovation and to avoid early patent disputes and infringement claims prior to the marketing of the actual drug. It involves communication carried out between the patent office and regulatory authorities who are entrusted by law with the marketing approval of drugs. Countries that have adopted this system regulatory authorities are mandated to ascertain whether a generic drug infringes an existing patent held by a manufacturer before granting marketing approval to such a drug. This system is said to play a pivotal role in upholding the very essence of intellectual property protection.

History of Patent Linkage in the US

Evolution of patent linkage

The Hatch-Waxman Act was enacted in 1984. This was a response to policymakers’ dissatisfaction with the regulation of prescription drugs. The form of regulation that existed earlier hindered the ability of generic manufacturers to market low-cost copies of brand-name drugs. The Act was a combination of two separate pieces of legislation aimed at bolstering both the brand-name and generic drug industries while maintaining incentives for innovation. Before this Act was enacted, the primary and only federal legislation that governed the pharmaceutical market was the 1962 Kefauver-Harris Amendments to the Food, Drug, and Cosmetic Act (FDCA). These amendments empowered the FDA to mandate the pharmaceutical manufacturers to establish or demonstrate the safety and effectiveness of their respective drugs through pre-approval clinical trials before they could be sold. Clinical trials that were conducted had three phases which were Phase 1, Phase 2, and Phase 3. These phases were concerned with providing data on dosage range, efficacy, and safety.

The Kefauver-Harris Amendments mandated the submission of a New Drug Application (NDA) as the final step for FDA approval. It also included reports of clinical trials and other relevant data. However, the costs pertaining to the development of new drugs and completing the required clinical trials were substantial for both brand-name and generic manufacturers. Generic manufacturers faced additional challenges as they had to conduct their own clinical trials even for drugs whose underlying active ingredient patents had expired. Furthermore, the case of Roche v. Bolar Pharmaceutical Co. case in the late 1970s complicated matters. The Court of Appeals for the Federal Circuit ruled that generic companies conducting testing on patented products solely for seeking FDA approval infringed on the patent holders’ rights. This decision effectively extended product exclusivity periods and threatened the market for generic products.

The lack of available generic drugs and the high cost of brand-name drugs posed problems for patients and public health outcomes. Patients would benefit from affordable generic alternatives once brand-name drug patents expired. The high cost of brand-name drugs could lead to reduced patient adherence and adverse outcomes due to excessive healthcare spending. In this environment, the Hatch-Waxman Act was enacted to address these issues. It created an abbreviated FDA approval pathway, known as the Abbreviated New Drug Application (ANDA) process, specifically for generic drugs that were proven to be pharmaceutically equivalent and bioequivalent to their brand-name counterparts. This streamlined the approval process for generic drugs, allowing them to enter the market more efficiently.

The Act also established a system to adjudicate challenges by generic manufacturers against brand-name drug manufacturers’ market exclusivity. It aimed to strike a balance between the interests of both industries while ensuring competition and access to affordable medications. Moreover, the Hatch-Waxman Act included provisions to provide competition-free periods for innovative drug approvals and extensions of brand-name market exclusivity to incentivize research and development efforts.

Overall, this Act aimed to make low-cost generic drugs more widely accessible, maintain incentives for innovation, and promote competition in the pharmaceutical market. Before the Hatch-Waxman amendments, the application process regarding the approval of generic drugs was based on other factors. These were called “paper” new drug applications(NDA). Initially, these parameters were set forth by the US Food and Drug Administration which scrutinized applications taking into note the merit of each application on a product-by-product basis. This subjective inspection of each application was based on information that is publicly available. This initial process before the amendment did not contain any provisions relating to exclusivity or pre-existing patents and was not able to protect the rights of patent holders. 

Drawbacks of the older system

The need for a new system arose when the efficiency of the older system was in question considering the distortions it suffered from in terms of the patent term. There were two major drawbacks or distortions in this regard:

• Distortion at the beginning of the patent term

When a patent was granted for a particular drug, the lengthy FDA approval process would cause significant delays in bringing the product to market. Unlike other patented inventions in the market, new drug products required permission from the FDA before they could be sold. This involved carrying out clinical trials, submitting data, and waiting for regulatory review. As a result, the patented drug couldn’t be sold for a certain period of time, causing delays in sale. Ultimately this waiting period cut into the actual patent term and limited the economic advantage the patent holder could gain from their temporary monopoly.

• Distortion at the end of the patent term 

Normally, when a patent of any invention expires, competitors can enter the market and offer alternative products which leads to price reduction. However, this isn’t the case in the drug industry and generic drug companies faced an additional hurdle. Before they could introduce competing products, they had to undergo rigorous scrutiny and procedure by the FDA. Since manufacturing and conducting studies on competing products during the patent term would cause patent infringement, they had to wait until the patent term expired to initiate the FDA regulatory review procedure. This meant that even after the drug patents had expired, there was an additional period of time when competing products would get trapped in the FDA review process and were unable to enter the market. This artificially extended the period of exclusivity for brand-name drugs beyond the patent expiration date.

In summary, the distortion at the beginning of the patent term caused a delay to the commercialization of patented drugs, and the distortion at the end of the patent term delayed the entry of generic competitors into the market even after the patent has expired. These distortions created a prolonged period of exclusivity for brand-name drugs and limited competition thereby potentially affecting consumer access and affordability.

Hatch Waxman Act

Overview of the Act

The Hatch Waxman Act was enacted with the aim to rectify and deal with the issues stated above. The following titles of the acts concerned with the patent linkage system:

Title I: Abbreviated New Drug Applications:

• It amended the Food, Drug, and Cosmetic Act (FDCA), specifically Section 355.
• This aimed to tackle the distortion of patent term which was the result of the delayed entry of generic drugs into the market due to the tedious FDA review.
• It introduced certain provisions for abbreviated new drug applications (ANDAs), which streamlined and simplified the entire approval process for generic drugs.
• It also enabled generic manufacturers to rely on the safety and efficacy data of the branded drugs which avoided the need to repeat extensive clinical trials.

Title II, Part I: Patent Extension:

• Amended the U.S. Patent Code and specifically amended Section 271(e) within the same code.
• Addressed the distortion of patent term caused by the extension of market exclusivity resulting from the delayed entry of generics due to FDA review.
• Provided a mechanism that enabled brand name drug companies to extend their patents by compensating for the time they lost during the FDA review process.

Title II, Part II: Patent Extension:

• Further amended the U.S. Patent Code(specifically Section 156)
• Aimed to address the distortion of patent terms caused by the loss of assertable market exclusivity time due to the FDA review procedure.
• Introduced provisions allowing patent term extensions for brand name drugs to compensate for the time spent on obtaining FDA approval.

In summary, the Hatch-Waxman Act consisted of two titles that deal with the patent linkage system. Title I focused on streamlining the approval process for generic drugs, while Title II addressed the extension of patent terms to account for the time lost during FDA review. These measures aimed to balance the interests of brand-name drug companies and generic manufacturers, promoting competition, affordability, and timely access to generic drugs for consumers.

Contrast with NDA

Post the enactment of the Hatch Waxman Amendment the process of application was referred to as Abbreviated New Drug Application (“ANDA”). The Hatch Waxman Act laid down the legal framework for today’s generic pharmaceutical industry. To draw a contrast between the NDA and ANDA processes let’s examine the requirements of both. The NDA consisted of two adequate and controlled clinical trials, statistical planning and analysis, pharmacodynamic studies, absorption and excretion studies, non-clinical safety pharmacology, and a full description of manufacturing and controls. ANDA significantly departs from the NDA as it also includes a pharmacokinetic comparison of the Bernie drug with the innovator or branded drug or any other drugs that depict bioequivalence.

Certifications

As per the Hatch-Waxman Act, a generic drug applicant is mandatorily required to provide one of the following four certifications for each patent listed in the Orange Book for the innovator drug:

• Paragraph I: The applicant certifies that there are no patents listed in the Orange Book for the drug. This means that there are no relevant patents that could potentially block the generic drug from entering the market.
• Paragraph II: The applicant certifies that the relevant patents listed in the Orange Book have expired. This indicates that the patent protection for the innovator drug has already ended and allows the generic manufacturer to produce and market their version of the drug without infringing on any existing patent rights.
• Paragraph III: The applicant certifies that they will not seek approval of the abbreviated new drug application (ANDA) until after the expiration of the pre-existing patent. This certification acknowledges the existence of a valid existing patent for a particular innovator drug but also ensures that the generic manufacturer will wait until the patent’s expiration before pursuing approval.
• Paragraph IV: The applicant certifies that a relevant patent listed in the Orange Book is either invalid or will not be infringed upon by the manufacture, use, or sale of the new generic drug for which the ANDA is submitted. This certification signifies that the generic manufacturer believes the patent is either not valid or not enforceable and that their generic version will not infringe upon any existing patent rights.

These four certifications provide a legal framework for the generic drug applicant to navigate patent-related issues while seeking approval for their generic version of an innovator drug. It permits them to address patent barriers like expired patents or potential patent infringement claims or patents which might impact the market entry of their generic product.

Approval Process

In simpler terms, the application does not necessarily have to carry out preclinical and clinical safety tests as long as it can be established that the generic drug functions similarly to the innovator or branded drug. Another important aspect is that the branded drug is listed in the Orange Book. 

The FDA lists all patented pharmaceutical products and medicinal products in the Orange Book. When a company that manufactures generic drugs submits an ANDA, such a company must establish one of the following

• The drug isn’t protected by a pre-existing patent.
• The original patent has already expired.
• The new generic drug won’t won’t be released in the market till the expiry of the originator’s patent.
• The existing patent is invalid or the drug is dissimilar and no patent is violated.

Let’s look at this process in a detailed fashion:

1. Pre-ANDA Meeting: The generic drug manufacturer carries out a meeting with the FDA to deliberate upon the development and submission of an abbreviated new drug application (ANDA).
2. ANDA Development and Submission: The generic drug manufacturer develops and submits an ANDA to the FDA and the ANDA must establish that the generic drug is bioequivalent to the brand-name drug in question. It has to be proved that such a drug contains the same active ingredients and is similar in terms of strength, dosage form, and route of administration.
3. Review by FDA: The FDA carries out a review of the ANDA to conclude if the generic drug is safe and effective in nature. The review also needs to derive that it meets the requirements for approval.
4. Patent Certification: The generic drug manufacturer has to certify and establish with the FDA that the generic drug does not infringe on any existing patents held by the brand-name manufacturer or that the patents will be invalid or they will expire before the generic drug is marketed. When a Paragraph IV certification is filed by the generic drug manufacturer, stating  that the brand-name drug patents are invalid or not infringed, this may potentially trigger the patent infringement lawsuit which is commonly also called the “patent dance.”
5. Approval: The FDA grants final approval for marketing provided it determines that the generic drug is safe and it meets all other criteria for approval.
6. Market Entry: Post the approval the generic drug can enter the market at a price lower than the brand name drug.

An additional step is added by the patent linkage mechanism in the US that requires the FDA to inform the brand-name manufacturer of any ANDA submissions, giving the brand-name manufacturer an opportunity to challenge the approval of generic drugs in the court of law.

What is the Orange book?

• The “Orange Book” is a commonly used terminology for the FDA’s publication which is called “Approved Drug Products with Therapeutic Equivalence Evaluations.” It is a list that is comprehensive in nature consisting of all FDA-approved drugs for usage in the United States. It includes both brand-name drugs and their generic equivalents.

• The Orange Book is relevant in terms of patent linkage and generic drug approval because it consists of information pertaining to patents that are associated with brand-name drugs. It also is inclusive of information regarding the therapeutic equivalence of generic drugs. The Orange Book provides insight to generic drug manufacturers and the FDA in ascertaining whether a generic drug can be approved for sale or not.
• In terms of patent linkage, the Orange Book consists of a list of patents related to each brand-name drug. This enables generic drug manufacturers to ascertain which patents may be potentially infringed by their generic drug and helps them in certifying to the FDA that their generic drug doesn’t infringe on any of the listed patents. It is also a  resource for the FDA that is used to determine whether a Paragraph IV certification is appropriate for a generic drug.
• In terms of generic drug approval, the Orange Book provides information about the therapeutic equivalence of generic drugs to their brand-name counterparts. The FDA uses this information to determine whether a generic drug can be approved for sale. If the FDA determines that a generic drug is therapeutically equivalent to its brand-name counterpart, such a drug can be approved for sale without the need for additional clinical testing.
• The Orange Book is a paramount resource for both generic drug manufacturers and the FDA due to its relevance in the approval process for generic drugs. 

Legal Framework and key provisions 

The legal framework pertaining to patent linkage in the United States is established through the Hatch-Waxman Act which provides a comprehensive system that aims to balance the rights of patent holders and generic drug market entry. By breaking down the key provisions of the Act which include the ANDA process, patent litigation framework, PTR, and exclusivity periods, we gain an understanding into the nuances of the patent linkage system prevalent in the United States. The act contains several provisions related to patent linkage. 

ANDA Procedure: 

The Act established the ANDA procedure. This procedure allows generic drug manufacturers to seek approval for their versions of existing drugs that have already been approved by the FDA. This procedure has been described in detail above. 

Section 101

• As per Section 101 of the Act, an ANDA can be filed for a new drug provided such an applicant can establish that it has the same active ingredients, route of administration, dosage form, and strength as a previously approved drug.
• The ANDA is subject to automatic approval within 180 days of submission if it meets all the necessary criteria outlined in Section 101.

Bioequivalence

To qualify for an ANDA, the applicant doesn’t need to conduct extensive clinical trials. Instead, they need to demonstrate that their drug is bioequivalent to the original drug by showing similar levels of absorption and efficacy.

Rehearing Option

If the ANDA is not initially approved, the applicant has a thirty-day window to request an expedited rehearing. This rehearing occurs within ninety days and the Secretary of Health and Human Services makes a decision on the same within ninety days after the conclusion of the rehearing.

Paragraph IV certification: 

• As mentioned above under the Hatch-Waxman Act, the fourth certification route for generic drug manufacturers is called “Paragraph IV” certification. This route is adopted when the generic manufacturer contends that the patent covering the brand-name drug is invalid or that their generic product does not infringe the patent. By filing an Abbreviated New Drug Application (ANDA) with a Paragraph IV certification, the generic manufacturer is considered to be engaging in an act of patent infringement under Section 35 U.S.C. §271, which satisfies the requirement for filing an infringement suit.
• Whenever an ANDA contains a Paragraph IV certification, the applicant is required to notify the FDA and the patent holders of the same. This notification should consist of a detailed statement of the factual and legal basis for their assertion with regard to the patent invalidity or non-infringement. If the patent holder initiates a patent infringement lawsuit within 45 days of receiving this particular notice then the FDA automatically suspends the approval of the ANDA for thirty months.
• During this 30-month stay, the FDA cannot issue an approval of the generic drug in question unless one of the following occurs:

1. The court rules that the patent for the brand-name drug is invalid or not infringed.
2. The court ascertains that the patent for the brand-name drug will be infringed and the patent expires.
3.  Subject to modification the court ascertains that 30 months have passed since the patent owner received notice of the Paragraph IV certification.

• The objective the Congress sought to fulfil through the 30-month stay is to provide sufficient time for the parties to resolve their patent-related dispute before the generic product is introduced to the market. It serves as an automatic preliminary injunction against the generic drug company, granted by statute, without requiring the brand-name company to make the usual showings required for a preliminary injunction.
• It is important to note that the filing of an ANDA with a Paragraph IV certification is considered a “somewhat artificial” act of patent infringement under 35 U.S.C. §271(e)(2). At this stage, the generic manufacturer has only requested FDA approval to market the drug, and the charge of infringement is technical in nature. If the patentee successfully proves infringement, it may prevent the marketing of the generic drug until the expiration of the patent.
• The term “somewhat artificial” in this context here refers to the fact that the act of filing an ANDA with a Paragraph IV certification is considered a technical or procedural infringement rather than an actual, real-world infringement of the patent through unauthorized usage or any other medium.

Patent extension 

• Title II of the Hatch-Waxman Act introduced provisions concerned with extending the term of patents for pharmaceutical products that undergo regulatory review before commercial marketing. In the normal scenario, patents last for 20 years from the date of the patent application. However, the Hatch-Waxman Act departs from this and allows for the extension of a pharmaceutical patent to compensate for the time lost during clinical testing.
• To be eligible for a term extension, the patent holder must choose a single patent if multiple patents cover the same drug. The patent holder has the right to have one-half of the time between the submission of the Investigational New Drug (IND) application and the submission of a New Drug Application (NDA), plus the entire period spent by the FDA in approving the NDA, restored to the patent term. There are certain limitations in terms of the length of the term restoration as the total restored patent term cannot exceed five years. It is also important to note that the remaining term following FDA approval cannot exceed 14 years.
• The patentee has to act diligently in order to obtain patent term restoration from the United States Patent and Trademark Office (USPTO). The lack of diligence can offset the augmented patent term. For example, in case four years have passed between the IND and NDA filings, and an additional two years have also passed between the NDA filing and its approval, then in such a scenario the extension period would be four years [(4 ÷ 2) + 2].
• It is important to note that patent term extension under the Hatch-Waxman Act is not automatic. The patent owner here must file an application with the USPTO within 60 days of obtaining FDA marketing approval to request a term extension.
• The extension procedure kicks off with the submission of an application to the Director of the USPTO within 60 days of receiving such regulatory approval. The application should include information about the product, the patent, and other necessary details. The Secretary of Health and Human Services then decides the appropriate scope and term of the patent extension based on the application information. Once this determination is made as prescribed, a certificate of extension is issued by the Director of the USPTO. This is appended to the original patent.
• The Hatch-Waxman Act’s patent extension provisions have influenced the brand name drug industry by providing a predictable period of exclusivity after the initial patent term expires. This allows them to ensure specific patent rights and block potential generic competitors directly. While they may lose some potential longer market exclusivity, they ultimately gain greater certainty and clarity with regard to their rights.
• In summary, the Hatch-Waxman Act’s patent term extension provisions for pharmaceuticals offer a mode or a system to compensate for the time lost during clinical testing. Patent holders can request an extension, subject to certain limitations, and must diligently pursue the extension through the USPTO. This provides them with a predictable period of exclusivity after the initial patent term, during which they can protect their rights against generic competitors.

Exclusivities under the Act

Under the Hatch-Waxman Act, several forms of regulatory exclusivity are provided to encourage the development of pharmaceuticals and incentivize generic drug manufacturers to challenge patents. Here is a summary of the different exclusivities allowed:

1. New Chemical Entity (NCE) Exclusivity:

• A five-year exclusivity period is granted to drugs that qualify as a new chemical entity.
• NCE exclusivity applies when the FDA approves a drug with an active ingredient that has not been previously approved.
• During this particular period, the FDA cannot accept an Abbreviated New Drug Application (ANDA) or a 505(b)(2) application for a drug product containing the same protected active ingredient.

2. New Clinical Study Exclusivity:

• A three-year exclusivity period is awarded for new clinical study data submitted in support of a New Drug Application (NDA) or a supplemental NDA.
• This exclusivity only applies to the specific use of the product that was supported by the new clinical study.

3. Orphan Drug Exclusivity:

• The Orphan Drug Act, enacted before the Hatch-Waxman Act, established a seven-year market exclusivity period for drugs developed to treat rare diseases or conditions.
• Orphan drug exclusivity prevents the FDA from approving another marketing application for the same drug and indication within that seven-year period.

4. 180-Day Generic Drug Exclusivity:

• Generic drug manufacturers are rewarded for challenging the patents associated with approved pharmaceuticals.
• The first generic applicant to file a paragraph IV certification, asserting that a listed patent is invalid or not infringed, is granted a 180-day exclusivity period.
• During this period, other generic applicants cannot receive FDA approval for the same generic version of the drug.

These various forms of exclusivity aim to balance the interests of innovator pharmaceutical companies and generic drug manufacturers. They provide periods of protection and incentives to encourage innovation, research, and competition in the pharmaceutical industry.

Bolar Amendment 

• The Statutory Experimental Use Exception, also known as the Bolar Amendment, was introduced as part of the Drug Price Competition and Patent Term Restoration Act of 1984. It is commonly referred to as the Hatch-Waxman Act. The Bolar amendment is codified within 35 U.S.C. §271(e)(1) and provides an exemption from certain claims of patent infringement.

• The Bolar Amendment overturned the decision in the case of Roche v. Bolar Pharmaceutical Co., where it was laid down that the experimental use doctrine did not protect the limited use of a patented drug for testing and investigation related to FDA drug approval requirements. The decision in Roche v. Bolar Pharmaceutical Co. allowed originator manufacturers to retain market exclusivity for their products beyond the duration of the patent terms because generic manufacturers could not start developing and seeking approval for competing generic products until after the originator patent expired.
• To address this issue, the Bolar Amendment was enacted, allowing generic manufacturers to make, use, offer to sell, or sell within the United States a patented invention solely for uses reasonably related to the development and submission of information under a federal law that regulates the manufacture, use, or sale of drugs or veterinary biological products. This provision allows granting permission to generic manufacturers to commence work on a generic version of an approved drug at any time during the life of the patent provided the work is for the purpose of complying with FDA regulations.
• The Bolar Amendment has been instrumental in facilitating the development and timely market entry of generic drugs by providing an exception to patent infringement for activities necessary for obtaining regulatory approval. However, there have been concerns about the potential misuse and abuse of this exception by generic and brand-name drug companies in collusive arrangements that may undermine the intended purposes of the Hatch-Waxman Act.

Subsequent legislation  

The Generic Animal Drug and Patent Term Restoration Act, 1988

The Generic Animal Drug and Patent Term Restoration Act (GADPTRA) is a law that came into effect on November 16, 1988. This act amended the Federal Food, Drug, and Cosmetic Act (FD&C Act) in order to allow the approval of generic copies of new animal drug products. Here are some key points about the act:

1. Abbreviated New Animal Drug Application (ANADA): In order to legally market a generic new animal drug product, the generic sponsor must have an approved ANADA. This application includes information like the reference-listed new animal drug product (RLNAD) being copied, patent information, labeling, ingredients, bioequivalence, human food safety, manufacturing methods, facilities, controls, environmental impact, and an FOI Summary.
2. Eligibility for Generic Copying: All new animal drugs that were approved for safety and effectiveness on or after November 16, 1988, and are not protected by patent or exclusivity can be copied as generics unless they have been withdrawn from the market for safety or effectiveness reasons.
3. Marketing Exclusivity: The FD&C Act provides for a period of marketing exclusivity during which generic copies of the RLNAD cannot be approved. This period is typically five years for a new animal drug product that has not been previously approved, with some exceptions and qualifications for pioneer sponsors who may qualify for three years of exclusivity for a newly approved use of an RLNAD.
4. Waiver from In Vivo Bioequivalence Studies: Certain new animal drug products may be eligible for a waiver from in vivo bioequivalence studies. Typically, true solutions intended for oral or parenteral use may be granted a waiver, while more complex dosage forms or medicated feeds, or feed premixes may not be granted a waiver.
5. Performing Bioequivalence Studies: The generic sponsor should seek FDA’s concurrence on a protocol for a bioequivalence study before conducting the study. The study must comply with FDA’s Good Laboratory Practices (GLP) regulations.
6. Suitability Petition: A Suitability Petition is a request to affirm that a proposed generic new animal drug product is sufficiently similar to the RLNAD to permit the submission of an ANADA. The petition can be submitted if the proposed product differs from the RLNAD in terms of dosage form, strength, route of administration, or in certain combinations of active ingredients in animal feed products.
7. Approval Timeline: The statutory limit for approval of an ANADA is 180 days. However, the actual approval time depends on the quality and completeness of the application and any subsequent amendments.

Note: The Generic Animal Drug and Patent Term Restoration Act (GADPTRA) aimed to extend the benefits of term restoration provisions to veterinary drugs and biological products. However, animal drug products primarily derived from recombinant DNA technology are specifically excluded from receiving the benefit of patent term restoration.

The FDA Modernization Act, 1997

The Better Pharmaceuticals for Children Act falls under the ambit of  Section 111 of the Food and Drug Administration Modernization Act of 1997. This Act aims to increase the availability of pharmaceuticals for children. It introduced a provision called “pediatric exclusivity” to incentivize drug manufacturers to conduct research on the effectiveness of their drugs in pediatric populations. Here are some key points about this act:

• Purpose: The act aimed to encourage drug manufacturers to conduct studies on the safety and effectiveness of their drugs specifically in children. It recognized the importance of developing appropriate pediatric dosing, formulations and labeling to ensure the well-being of children.
• Pediatric Exclusivity: The act introduced a six-month exclusivity period, known as pediatric exclusivity, which could be added to the term of any existing patent or regulatory exclusivity for a drug. This exclusivity applied to children’s drug products that had the same “active moiety” as a previously approved drug.
• Extended Exclusivity Term: Pediatric exclusivity effectively added six months to the duration of patent or regulatory exclusivity for a drug. For example, if a drug had New Chemical Entity (NCE) exclusivity, its term would be extended to five years and six months with the addition of pediatric exclusivity.
• Timing of Pediatric Exclusivity: As per this Act drug manufacturers had to conduct studies on a pediatric population to be eligible for pediatric exclusivity as requested by the Secretary of Health and Human Services. 
• Impact of Exclusivity: Pediatric exclusivity incentivizes drug manufacturers to invest in pediatric research and contribute effectively to the availability of safe and effective drugs for children. It aims to address the historical lack of data and appropriate labeling for pediatric use.
• Permanence: Initially subject to a sunset provision, Congress made pediatric exclusivity a permanent provision in 2012 with the FDA Safety and Innovation Act. This ensured that the incentives for conducting pediatric research would continue to exist in the long term.

Note: The Better Pharmaceuticals for Children Act and its provision for pediatric exclusivity aimed to promote pediatric research and the availability of safe and effective drugs for children. It provided an additional six-month exclusivity period to drug manufacturers, encouraging them to conduct studies on their drugs in pediatric populations.

The Medicare Prescription Drug, Improvement, and Modernization Act of 2003

The Medicare Prescription Drug, Improvement, and Modernization Act of 2003 (MMA) introduced various key changes to the original Hatch-Waxman Act regarding the approval process for generic drugs in the United States. Here are some key points regarding the MMA and its effect on the Hatch-Waxman Act:

• Limitation on 30-Month Stays: Under the MMA, only one 30-month stay is permitted on the approval of a generic drug when patents are listed in the Orange Book (the FDA’s publication of approved drug products with patent information). This provision aims to prevent strategic delays in the availability of generic drugs.
• Declaratory Judgment: If a patent holder fails to file an infringement action within 45 days of notification of a paragraph IV Abbreviated New Drug Application (ANDA), the generic applicant can request a district court to issue a declaratory judgment on the patent’s validity. This provision encourages the timely resolution of patent disputes.
• Counterclaim for Orange Book Modification: In cases where a brand-name drug company initiates a patent infringement suit against an ANDA applicant, the generic firm can file a counterclaim requesting the modification or deletion of patent information listed in the Orange Book. Monetary damages are not awarded in such suits under the MMA.
• Commencement of 180-Day Generic Exclusivity: The MMA specifies that the 180-day generic exclusivity period begins with the first commercial marketing of the generic drug. This exclusivity can be forfeited under certain circumstances, such as failure to meet specific time constraints or obtaining FDA marketing approval.
• Filing of Agreements: The MMA requires that agreements between brand-name and generic companies regarding the production, sale, or marketing of a pharmaceutical or a 180-day market exclusivity must be filed with the Federal Trade Commission (FTC) and the Department of Justice. This measure helps monitor potential antitrust violations and “pay-for-delay” settlements.

Note: The MMA aimed to expedite the availability of generic drugs by addressing potential barriers and encouraging timely resolution of patent disputes. These provisions introduced changes to patent linkage and the Hatch-Waxman Act, enhancing competition and affordability in the pharmaceutical market.

The Food and Drug Administration Amendments Act of 2007 

The Food and Drug Administration Amendments Act (FDAAA) of 2007 introduced significant changes to prescription drug policy in the United States. One of the key provisions of the FDAAA was related to the grant of New Chemical Entity (NCE) exclusivity to enantiomers of previously approved racemates. This provision had implications for patent linkage and the Hatch-Waxman Act. Here are the key points regarding how this law affected patent linkage and the Hatch-Waxman Act:

• NCE Exclusivity for Enantiomers: The FDAAA allowed the FDA to grant exclusivity to a non-racemic drug if it was approved for a different use than the previously approved racemic version. This meant that a single enantiomer of a previously approved racemate could be considered a new chemical entity, qualifying for exclusivity.
• Impact on Patent Linkage: Patent linkage refers to the practice of linking the approval of generic drugs to the status of patents held by brand-name drug manufacturers. The provision in the FDAAA regarding NCE exclusivity for enantiomers added complexity to patent linkage. If a brand-name drug consisted of a racemic mixture and a generic manufacturer developed and sought approval for the single enantiomer, the FDAAA allowed for the possibility of granting exclusivity to the enantiomer under certain conditions. This affected the timing of generic entry and the resolution of patent disputes between brand-name and generic manufacturers.
• Influence on the Hatch-Waxman Act: The Hatch-Waxman Act, enacted in 1984, established the framework for the approval of generic drugs and provided provisions for resolving patent disputes between brand-name and generic drug manufacturers. The FDAAA’s provision on NCE exclusivity for enantiomers added complexity to the Hatch-Waxman Act. It introduced new considerations and criteria for determining exclusivity and the resolution of patent disputes in cases involving racemic mixtures and single enantiomers.

In conclusion, the FDAAA of 2007, with its provision on NCE exclusivity for enantiomers, had significant implications for patent linkage and the Hatch-Waxman Act. It introduced complexities in the approval process for generic drugs and the resolution of patent disputes, particularly in cases involving racemic mixtures and single enantiomers.

The Biologics Price Competition and Innovation Act of 2009

The Biologics Price Competition and Innovation Act of 2009 (BPCIA) brought certain changes in terms of the regulation of biological products within the United States. This act strictly compelled the marketing applications for “biological products” to be submitted as biologics license applications (BLAs) under the Public Health Service Act (PHS Act), with certain exceptions during a 10-year transition period. Key points regarding the BPCIA and its effects on patent linkage and the Hatch-Waxman Act are as follows:

• The Transition from FD&C Act to PHS Act: The BPCIA mandated that approved marketing applications for biological products under section 505 of the FD&C Act would be deemed to be licenses for those products under section 351 of the PHS Act as of March 23, 2020. This transition allowed sponsors of affected biological products time to prepare for the regulatory shift, while also ensuring a seamless transition between the regulatory pathways.
• Impact on Patent Linkage: Patent linkage refers to the connection between generic drug approval and the status of patents held by brand-name manufacturers. The BPCIA’s introduction of a new regulatory pathway for biosimilars and interchangeable biologics affected the patent linkage framework. It established procedures for identifying and resolving patent disputes specifically related to follow-on biologics. This provided a framework for resolving intellectual property issues and balancing incentives for innovation and competition.
• Effect on Hatch-Waxman Act: The BPCIA addressed the unique characteristics of biologics by establishing a separate regulatory pathway for biosimilars and interchangeable biologics. This was necessary because biologics are structurally complex and differ from small-molecule drugs covered by the Hatch-Waxman Act. The BPCIA created an expedited regulatory pathway for biosimilars and interchangeable and defined exclusivities available to both brand-name and follow-on firms. These provisions aimed to promote competition while ensuring patient safety and efficacy standards were met.

In conclusion, the BPCIA of 2009 introduced a new regulatory framework for biological products, including biosimilars and interchangeable biologics. This act had implications for patent linkage by establishing procedures for resolving patent disputes related to follow-on biologics. It also recognized the unique characteristics of biologics compared to small-molecule drugs covered by the Hatch-Waxman Act and provided a separate pathway for regulatory approval, encouraging competition while maintaining appropriate safety and efficacy standards.

The GAIN Act of 2012

The Generating Antibiotic Incentives Now (GAIN) Act, enacted as part of the FDA Safety and Innovation Act, addresses the critical issue of antibiotic resistance and aims to incentivize the development of new antibiotics. The act provides several provisions to support the development, review, and market exclusivity of qualified infectious disease products (QIDPs) targeting serious or life-threatening infections.

Key points regarding the GAIN Act and its effects on patent linkage and the Hatch-Waxman Act are as follows:

• Incentivizing Development: The GAIN Act acknowledges the declining pipeline of new antibiotics and the lack of commercial value associated with their development. To encourage innovation, the act extends the term of market exclusivity granted by the FDA for QIDPs. This additional five years of exclusivity is in addition to existing exclusivity periods provided by the Hatch-Waxman Act, such as new chemical entity exclusivity, orphan drug exclusivity, or pediatric exclusivity. The extended exclusivity aims to enhance the commercial value of antibiotics and incentivize manufacturers to invest in their development.
• Expedited Review and Development: Drugs designated as QIDPs under the GAIN Act receive expedited regulatory processes. These drugs are granted fast-track and priority review status, accelerating their development and review by the FDA. The act also requires the FDA to issue new guidance on the development of pathogen-focused antibiotics, providing clear development pathways for drug makers targeting specific bacteria. The act emphasizes the importance of updated clinical trial guidance to ensure that antibiotic development aligns with scientific and regulatory standards.
• Pathogen Listing and Threat Assessment: The GAIN Act mandates the FDA to compile a list of “qualifying pathogens” that pose a serious threat to public health. This list is periodically updated and created in consultation with relevant stakeholders, including the CDC, medical care professionals, and clinical researchers. By identifying and prioritizing pathogens, the act helps guide the development of antibiotics to address the most pressing public health needs.
• Impact on Patent Linkage and Hatch-Waxman: The GAIN Act does not directly impact patent linkage or the specific provisions of the Hatch-Waxman Act. However, by extending the exclusivity period for QIDPs, it provides an additional period of market protection for innovative antibiotics. This extended exclusivity may indirectly affect patent linkage by allowing manufacturers to maintain market exclusivity for a longer duration, potentially deterring generic competition during the exclusivity period.

In conclusion, the GAIN Act was enacted to address the growing threat of antibiotic resistance and stimulate the development of new antibiotics. By providing extended market exclusivity, expediting regulatory processes, and offering clear guidance for antibiotic development, the act aims to incentivize innovation in this critical area of medicine. While the act does not directly impact patent linkage, the extended exclusivity for QIDPs may indirectly influence the competitive landscape by providing manufacturers with a longer period of market protection.

Patent Protection v generic entry

The patent linkage system in the US is a legal framework that is concerned with the regulation and the approval system of generic drugs by the FDA taking into account potential infringement of existing patents. This system herein mandates the FDA to notify patent holders in case an application for a generic drug is submitted, giving the patent holder the opportunity to challenge such an application and work on extending their patent protection.

Firstly, patent protection encourages pharmaceutical companies with a strong motive to invest in research and development for bringing new innovative drugs into the market. It also enables these companies to attempt to reclaim certain significant costs related to developing and testing new drugs. However, this also creates the possibility of limiting access to affordable medications, as patented drugs are mostly way more expensive than their generic counterparts.

Furthermore, the generic entry is pivotal for increasing access to affordable medicines, particularly in countries with relatively lower incomes. Generic drug manufacturers can reduce the cost of healthcare as a whole by competing toe to toe with branded drugs which would in turn be beneficial for patients, governments, and insurers. This will in turn increase the possibility of persons being ready to take treatment and hamper the growth of chronic diseases to a substantial extent. 

The patent linkage system strives to strike a balance between these conflicting interests. While it provides patent holders with a framework to protect their intellectual property rights, it also aims to ensure timely access to affordable generic drugs. As it allows the FDA to consider patent infringement issues during the drug approval process, there is a high chance that it helps to prevent patent abuse and delay of generic entry.

Criticism

The patent linkage system, implemented in the United States, was enacted with an objective to facilitate pharmaceutical innovation and promote competition. This system aimed to achieve this goal by granting 180 days of marketing exclusivity to the first generic drug manufacturer that successfully challenged a patent. However, this system has several drawbacks that have attracted criticism:

• Misuse of 180-day marketing exclusivity: The patent linkage system in the United States grants the first successful filer of a paragraph IV certification 180 days of marketing exclusivity. However, this provision can be misused. In some cases, it may be more profitable for generic manufacturers to accept payments from brand name companies to delay entering the market, rather than launching their generic products. This can lead to collusive agreements that restrict competition and keep drug prices high.
• Possibility of collusion: The 180-day exclusivity period provides an opportunity for collusion between brand-name and generic drug manufacturers. If the potential loss of profit margin for the brand name drug company exceeds the potential profit margin for the generic drug, they may engage in collusive agreements to delay market entry. Such agreements artificially inflate drug prices violating antitrust laws. This ultimately leads to consumers being at disadvantage as their interests are compromised. 
• Misuse of stay period: The patent linkage system includes provisions for a stay of approval following the filing of an infringement action. Originally intended to account for the expected duration of litigation, this stay can be misused. Brand-name drug companies may list additional patents in the Orange Book after a generic’s abbreviated new drug application (ANDA) filing, forcing the ANDA applicant to recertify their application and triggering a new stay. This strategic control of patent issuance allows brand-name drug companies to prolong their monopolies indefinitely, even if subsequent patents are found invalid or not infringed.
• Delayed entry of generic drugs: The patent linkage system, which requires generic drug marketing approval to be withheld until relevant patents expire, causes significant delays in the entry of generic drugs into the market. Regulatory authorities typically take several years to approve generic drugs, resulting in a four-year delay on average. This delay extends the market monopoly of innovator products beyond the expiration of their patents and hampers access to affordable generic medicines.
• Lack of encouragement for innovation: Contrary to the intended purpose of the patent system, the patent linkage system does not necessarily encourage innovation. Pharmaceutical companies often file follow-on patents derived from a single original patent to extend their monopolies. These follow-on patents are listed in patent registers to delay generic entry under the patent linkage system. As a result, access to affordable generic medicines is further delayed, hindering competition and innovation in the pharmaceutical industry.
• Abuse of low-quality patents: The negative impact of the patent linkage system on access to generic medicines is particularly evident in countries where patent offices grant low-quality patents. In the United States, pharmaceutical companies may file additional low-quality patents with the Food and Drug Administration (FDA) to be registered in the Orange Book. This practice grants a 30-month stay, extending the originator’s monopoly. Such abuse further limits competition and increases the cost of generics indirectly, potentially burdening consumers with higher drug prices.

Judicial pronouncements 

The Roche v. Bolar (1984)

The Roche v. Bolar decision is very commonly accredited for the congressional enactment of the Drug Price Competition and Patent Term Restoration Act of 1984. This judgment holds monumental importance in terms of laying down the foundation to the patent linkage system in the U.S today.

Facts:

Roche Products, Inc. held a patent for flurazepam hydrochloride, the active ingredient in their brand-name prescription sleeping pill “Dalmane.” The patent expired on January 17, 1984. Bolar Pharmaceutical Inc., a generic drug manufacturer, aimed to market a generic version of Dalmane after the patent expired. In order to obtain marketing approval from the FDA, Bolar needed to conduct tests and gather data, which could take more than two years. To expedite the process, Bolar obtained 5 kilograms of the patented active ingredient for testing purposes before the patent’s expiration. Roche filed a complaint against Bolar, alleging patent infringement. The United States District Court for the Eastern District of New York initially ruled in favor of Bolar, stating that their use of the patented ingredient for testing was de minimis and experimental. Roche appealed the decision to the Court of Appeals for the Federal Circuit (CAFC).

Issues:

The main issue was whether Bolar’s limited use of the patented drug for testing purposes, specifically related to FDA drug approval requirements during the final six months of the patent term, constituted patent infringement. Bolar argued for two exceptions: the experimental use exception and the creation of a new exception based on public policy favoring generic drugs.

Ratio laid down:

The CAFC ruled that the experimental use exception in US patent law is narrow. While experiments conducted for scientific curiosity or amusement do not antagonize the interests of the patentee, if the products of the experiment are sold or used for the experimenter’s convenience or business adaptation, they constitute patent infringement. Bolar’s intended use of the patented active ingredient for testing purposes did not fall within the traditional limits of the experimental use exception, and it was solely driven by business reasons. Therefore, Bolar’s use was considered an infringement of the patent. Regarding the public policy justification for a new exception, the CAFC stated that courts should not pick and choose among congressional enactments. Congress had already addressed these issues through legislation, including the Drug Price Competition and Patent Term Restoration Act (Hatch-Waxman Act). The court’s role was to interpret and apply existing legislation, rather than debating policy arguments.

Aftermath:

The CAFC reversed the district court’s decision and remanded the case to determine an appropriate remedy, potentially including an injunction, as requested by Roche. In 1984, Congress enacted the Hatch-Waxman Act, which introduced a new exception to patent rights, commonly known as the “Bolar” exception or the regulatory review exception. This exception allows the limited use of patented inventions for purposes related to the development and submission of information required by federal laws regulating drugs. The Act also provided additional provisions such as patent term extensions and patent linkage requirements.

Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk (2012)

• In this case, the issue was regarding the use code for Novo Nordisk’s drug named, Prandin.
• Caraco had filed an ANDA seeking approval for producing a generic version of the same drug. 
• Novo Nordisk further changed the use code of the same drug thereby undermining any contention raised by Caracin.
• The Supreme Court while ruling in favor of Caracin stated that the Counterclaim provision in the Hatch Waxman Act allowed any challenges to unpatented use of a drug. 
• This decision set forth the rights of a generic drug marketer and provided them with a mechanism to challenge use codes. (Use codes here mean the codes that describe the approved methods of using a particular drug)

Merck KGaA v. Integra Lifesciences I, Ltd (2005)

• In the instant case, Integra Lifesciences sued Merck for supplying a particular patented compound to other drug companies for the purpose of preclinical research. 
• Merck stated that the federal law allowed the same as if the invention was used only for the development and submission of information under a federal drug law, the same does not constitute patent infringement.
• The Supreme Court here in its unanimous opinion observed that federal law permitted the use of patented compounds in preclinical studies, as long as there was a reasonable basis to believe the compound could be the subject of an FDA submission. 
• This decision clearly clarified that research activities that are “reasonably related” to the development of information for FDA approval are exempt from patent Infringement.

Sanofi-Aventis U.S. LLC v. Watson Laboratories, Inc. (2013)

In this case, the Federal Circuit stated that a generic drug manufacturer could be liable for induced infringement of a method-of-use patent if it carries out marketing of its generic drug for infringing use. The Court also observed that the patent owner must establish that the generic manufacturer had prior knowledge of the patent and intentionally induced infringement.

FTC v. Bristol Myers Squibb (2003)

This case is one of the prime examples of the misuse of the patent linkage system. In this case, the Federal Trade Commission (FTC) debt forth that the Bristol-Myers Squibb company has been engaged in a series of anticompetitive practices to forcefully prevent or to delay the entry of low-price generic products: two anti-cancer drugs, namely, Taxol and Platinol, and Buspar the anti-anxiety product. Bristol-Myers filed several patents for the three drugs that did not meet the criteria for listing in the orange book.

Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc. et al., Dr. Reddy’s(2013)

In the case of Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc. et al., Dr. Reddy’s Laboratories sought FDA approval for a generic version of the sleep medication Lunesta®.

• The patent listed in the Orange Book claimed a specific form of the active ingredient in Lunesta®.
• The patent stated that the active ingredient should be “essentially free” of a particular compound isomer, meaning less than 0.25% of the isomer.
• Dr. Reddy’s ANDA specified a limit of “no more than 0.6%” for the isomer content.
• The ANDA specification overlapped with the range covered by the patent claim.
• To avoid infringement, Dr. Reddy’s submitted a certification to the court.
• The certification stated that they would manufacture their generic drug with the isomer quantity falling between 0.3% and 0.6% of the active ingredient.

The district court allowed Dr. Reddy’s motion for summary judgment with regard to non-infringement based on the certification.

• On appeal, the Federal Circuit disagreed and ruled that Dr. Reddy’s had infringed the patent.
• The Federal Circuit stated that if a product falls within the scope of an issued patent and is being sought for FDA approval, infringement is inevitable.
• The court disregarded Dr. Reddy’s certification as an unconventional and unenforceable “guarantee.”
• Allowing Dr. Reddy to avoid infringement based on the certification would contradict the fundamental principles of patent law.

Therefore, in the Sunovion Pharm. case:

• The Federal Circuit determined that the drug substance specification provided in the ANDA controlled the analysis of infringement.
• Dr. Reddy’s separate promise to manufacture the drug in a non-infringing manner was deemed irrelevant.
• The specifications included in the ANDA or paper NDA serve as the focal point for the direct infringement analysis.

However, the applicant’s specifications may not be conclusive in the infringement analysis if there is evidence suggesting potential changes in the drug’s chemical or physical properties over time or under certain conditions.

Eli Lilly v. Medtronic(1990)

The Supreme Court case of Eli Lilly v. Medtronic involved a dispute over patent infringement related to the development and marketing of an implantable cardiac defibrillator. Eli Lilly claimed that Medtronic’s activities infringed its patents, while Medtronic argued that its actions were protected under the regulatory review exemption.

• Eli Lilly filed a lawsuit against Medtronic, alleging infringement of their patents for an implantable cardiac defibrillator.
• Medtronic argued that their activities were “reasonably related to the development and submission of information” required under the Federal Food, Drug, and Cosmetic Act (FDCA).
• The District Court ruled in favor of Eli Lilly, stating that the exemption did not apply to medical devices, and thus Medtronic’s actions constituted infringement.
• The Court of Appeals reversed the decision, stating that Medtronic’s activities could be exempted if they were undertaken to develop the information necessary for regulatory approval under the FDCA.
• The Supreme Court agreed to hear the case to determine whether the regulatory review exemption covered medical devices or was limited to drugs.

The Supreme Court’s analysis focused on the interpretation of the statutory phrase “a Federal law which regulates the manufacture, use, or sale of drugs” in the regulatory review exemption. They concluded that the phrase referred to a comprehensive regulatory scheme rather than a specific provision of law.

• The Court highlighted that the Drug Price Competition and Patent Term Restoration Act of 1984 aimed to address distortions caused by premarket regulatory approval requirements.
• The Act provided a patent-term extension for certain products and introduced the regulatory review exemption to allow competitors to engage in activities necessary for obtaining regulatory approval.
• Eli Lilly’s argument that the exemption only applied to drugs was deemed implausible, as Congress was aware of the distortions caused by regulatory approval requirements for both drugs and devices.
• The Court also noted that the Act excluded new animal drugs and veterinary biological products from the patent term extension and regulatory review exemption.

The Court addressed the argument that the existence of abbreviated new drug applications (ANDAs) suggested that the exemption applied only to drugs. However, they clarified that the ANDA provisions were specific to drug products and did not limit the broader scope of the regulatory review exemption.

• ANDAs required certifications regarding patents named in the pioneer drug application, but these provisions only applied to drug-related applications.
• The purpose of creating an act of infringement in the ANDA proceedings was to enable judicial adjudication upon which the ANDA schemes depended.
• Therefore, the Court affirmed that the regulatory review exemption applied to a broader range of products, including medical devices, based on a comprehensive regulatory framework.

This decision, combined with the earlier ruling in Merck KGaA v. Integra Lifesciences I, expanded the application of the regulatory review exemption to include pre-clinical trials reasonably related to the development and submission of data required under federal laws.

Warner-Lambert v. Apotex(2003)

• In this case, the issue revolved around the use of the drug gabapentin and its off-label application. Warner-Lambert had initially obtained FDA approval for gabapentin as a treatment for epilepsy. However, they later discovered that the drug had therapeutic uses for certain neurodegenerative diseases and secured a method-of-use patent specifically covering those uses.
• Despite the lack of FDA approval for gabapentin’s use in neurodegenerative diseases, physicians started prescribing the drug off-label for that purpose. In fact, a significant portion of gabapentin sales, estimated at 89%, was attributed to the treatment of neurodegenerative diseases.

• Apotex, a pharmaceutical company, sought FDA approval for their generic version of gabapentin but solely for the FDA-approved use in epilepsy treatment. Warner-Lambert filed a lawsuit against Apotex, arguing that the sale of generic gabapentin by Apotex would induce infringement of Warner-Lambert’s method-of-use patent for the treatment of neurodegenerative diseases. Warner-Lambert presented evidence indicating that Apotex was aware or should have been aware that a substantial portion of its generic gabapentin sales would be used for infringing purposes.
• However, the court disagreed with Warner-Lambert’s argument. They ruled that unless there was clear evidence demonstrating that Apotex actively instructed, promoted, or engaged in activities to encourage doctors to prescribe gabapentin for neurodegenerative diseases, Apotex’s mere knowledge of the drug’s likely off-label use was irrelevant. The evidence showed that Apotex would sell gabapentin with a product label stating it was approved for epilepsy treatment. As a result, Apotex could not be held liable for inducing direct infringement by doctors and their patients.
• In summary, the court’s decision in Warner-Lambert v. Apotex clarified that for a party to be held liable for inducing infringement, there must be explicit proof of activities encouraging infringing uses beyond mere knowledge of likely off-label usage in the market.

Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc.(2020)

• In this case, the issue at hand was the proper venue for ANDA litigation in Hatch-Waxman cases under 35 U.S.C. § 271(e)(2). The Federal Circuit had not previously established a clear precedent on this matter due to the impact of the Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, which disrupted previous interpretations of venue and personal jurisdiction. However, in this case, the Federal Circuit provided guidance on where the proper venue does not lie in ANDA litigation.
• Valeant Pharmaceuticals filed a lawsuit against several Mylan entities in the District of New Jersey. The defendants included Mylan Pharmaceuticals, Inc. (MPI), a West Virginia corporation with its principal place of business in Morgantown, West Virginia; Mylan Laboratories Ltd. (MLL), an Indian corporation with its principal place of business in Hyderabad, India; and Mylan Inc., a Pennsylvania corporation with its principal place of business in Canonsburg, Pennsylvania. The litigation centered around Dow Pharmaceutical Sciences’ anti-fungal drug Jublia® (efinaconazole), which was protected by nine Orange Book-listed patents.
• Valeant argued that the venue was proper in New Jersey based on several allegations, including Mylan’s business activities in the district and its intention to sell the generic version of efinaconazole there. The Mylan defendants moved to dismiss the case for improper venue, asserting that none of them resided, were incorporated, or had established places of business in New Jersey, and no act of infringement occurred there.

• The District Court granted Mylan’s motion to dismiss on the grounds of improper venue, relying on Federal Circuit precedent from In re Cray and In re ZTE. The Federal Circuit, in its opinion authored by Judge O’Malley and joined by Judges Newman and Taranto, affirmed in part, reversed in part, and remanded the decision.
• The Federal Circuit addressed the question of proper venue in the Hatch-Waxman litigation as a “case of first impression” after the TC Heartland decision. The court analyzed the status of the proper venue by examining where the infringing act occurred, which is a requirement explicitly stated in the venue statute. The issue at hand was the nature of the infringing act under § 271(e)(2), which defines the act of infringement as the submission of an ANDA for a drug protected by an Orange Book-listed patent.
• The court acknowledged that prior to TC Heartland, the venue had been considered proper if personal jurisdiction was established, based on Federal Circuit cases such as Acorda Therapeutics Inc. v. Mylan Pharmaceuticals Inc. and VE Holding Corp. v. Johnson Gas Appliance Co. However, TC Heartland overturned these precedents. The court also noted that cases like Bristol-Myers Squibb Co. v. Mylan Pharmaceuticals Inc. had recognized that the statute was directed towards future acts of infringement, rather than the administrative act of filing the ANDA.
• Based on statutory construction principles and the plain language of the venue statute, the court concluded that the venue was not proper in all judicial districts where a generic product specified in an ANDA is likely to be distributed. It was only proper in districts where acts occurred that could categorize the defendants as a “submitter” under § 271(e). The court emphasized that the act of submitting the ANDA itself constituted the infringing act under the statute, rejecting arguments to the contrary.
• Regarding the MLL defendant, who was a foreign entity, the Federal Circuit reversed the District Court’s decision. It determined that a foreign defendant can be sued in any judicial district and remanded the case for the District Court to evaluate whether this defendant’s involvement warranted overcoming the motion to dismiss under Rule 12(b)(6).
• It should be noted that the court did not address the suggestion by the District Court that an act of infringement may have occurred in the District of Maryland, where the FDA received the ANDA. The precise contours of relevant acts involved in the preparation and submission of an ANDA were left for future cases.
• Overall, this decision provided guidance on the proper venue in ANDA litigation under the Hatch-Waxman Act and clarified that the act of submitting an ANDA itself is the infringing act under § 271(e)(2).

Bayer AG v. Housey Pharmaceuticals(2002)

• In this case, Bayer AG and Bayer Corporation appealed a Delaware district court decision that dismissed Housey Pharmaceuticals’ claims of patent infringement.
• Housey held patents on a method of screening for protein inhibitors and activators, which were used in determining the potential of compounds for pharmaceutical development.
• Housey sought to enforce its patents through reach-through licensing arrangements, including reach-through royalties and lump sum payments based on the licensee’s research and development budget.
• The court found that reach-through royalties were agreed upon by two licensees, Eli Lilly, and SCIOS, Inc., while a lump sum payment arrangement was agreed upon by Takeda Chemical Industries, Ltd.
• The court determined that Housey had not exerted undue influence over its clients in the pharmaceutical industry and that the reach-through royalty provisions were agreed upon for efficient valuation of the patent license.
• The court’s decision upheld the reach-through licensing arrangement, providing support for the research tools industry and resolving conflicting legal doctrines.
• The case establishes that patents on research and discovery methods, even if they do not directly cover drug products, can have significant use and value in the pharmaceutical development process.
• The decision clarifies that importing information obtained through a patented method or importing drugs discovered using information derived from the patented method are not considered acts of infringement under U.S. law.
• The ruling has implications for owners of U.S. patents on research and discovery methods, highlighting the limitations of patent protection for information and products derived from overseas research facilities.
• Companies relying on proprietary research or discovery methods should assess how the case may affect their drug discovery strategies and business plans.

Note: This case demonstrates the court’s acceptance of reach-through licensing arrangements for research tools and emphasizes the distinction between information and physical products in terms of patent protection.

Conclusion 

To conclude, the patent linkage system in the US has been on the receiving end of many debates as it has been contended that it values the interests of pharmaceutical companies over affordable medicines. While this particular system of patent linkage has its edge over incentivizing innovation and preventing any early patent-related issues or disputes, it causes substantial delays with regard to the approval of generic drugs. This would indeed result in making medicines more costly and limiting access to medication as well. It is important for policymakers to ensure that they ultimately strike some form of balance between protecting intellectual property and ensuring that medicines are affordable and accessible.

References

• https://dash.harvard.edu/handle/1/10015297 
• https://www.wto.org/english/tratop_e/trips_e/colloquium_papers_e/2018_african/chapter_10_2018_african_edition_e.pdf
• https://law.stanford.edu/publications/earning-exclusivity-generic-drug-incentives-and-the-hatch-waxman-act/ 
• https://www.lexology.com/commentary/healthcare-life-sciences/usa/baker-mckenzie/patent-linkage-in-the-united-states-key-considerations-for-drug-manufacturers#
• https://www.everycrsreport.com/reports/R44643.html
• https://www.copperpodip.com/post/hatch-waxman-act-us-laws-litigations-and-benefits
• https://www.lexology.com/library/detail.aspx?g=70fef3cd-846d-42b0-a963-89dfdffe554e
• https://journals.sagepub.com/doi/10.1177/1741134321992396
• https://www.fda.gov/animal-veterinary/guidance-regulations/generic-animal-drug-and-patent-term-restoration-act-gadptra#:~:text=The%20law%2C%20known%20as%20GADPTRA,according%20to%20their%20approved%20labeling.   
• https://link.springer.com/chapter/10.1007/978-3-030-83114-1_12     
• https://openyls.law.yale.edu/bitstream/handle/20.500.13051/5929/Kesselheim_2.pdf?sequence=2&isAllowed=y 
• https://www.neifeld.com/pubs/2005_reviewfdalaw.pdf 

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This article is written by Nishka Kamath, a graduate of Nalanda Law College, University of Mumbai. This article explains the concept of squatters’ rights in the United States (adverse possession), along with the concept of squatters, a brief history of the concept, the existence of squatters’ rights, and the reason behind their existence. Further, it also talks about the legal requirements of squatters in the US, the circumstances under which a squatter can claim such rights, and the applicability of such rights.  Furthermore, an attempt has been made to enlighten readers, especially landowners in the US, on the subject matter of avoiding squatters and the proper procedure and legal remedies to evict a squatter. 

It has been published by Rachit Garg.

Introduction 

Just think about this scenario. You are all excited to visit your home that you haven’t visited for a long time, only to be dejected by the fact that someone is already residing there without obtaining any prior consent. To add to your misery, you cannot ask them to empty the place, for they have already gained the legal ownership rights to reside on that very property. This is not an uncommon scene in the United States, and such occurrences take place due to a term called ‘squatter’s rights’ or ‘adverse possession’. 

Yes, this is indeed a real thing; however, there is a certain criterion to be qualified as a squatter in the first place, and what sort of rights exactly can a squatter be entitled to? Let us dive deep into squatter’s rights in the USA and everything property owners must know about such rights authorized by the U.S. Government and the nitty-gritty of such rights.

Please note: The terms ‘squatter’ and ‘adverse possession’ are used interchangeably at places, as they carry the same meaning.

Squatters rights in the United States (adverse possession) : an overview

It is not a fact unknown that every American family cares about their family, environment, and property and would always try to keep problems at bay and safeguard the family with weapons or massive all-round security. Despite all such measures, if no one resides on or keeps a check on the property, there are high chances that such properties attract individuals (usually known as squatters), who do not have a place of their own and shift to reside on someone else’s property to live for a long time unless they are evicted lawfully from the said property. Which is why it is crucial that we learn about the basics and the rights of landlords to bar squatters from accessing and scouring such unchecked properties.

To understand this topic better, let us start with the basics. The very first question that would arise after looking at the topic would be, ‘who exactly is a squatter?’ and then you might wonder, ‘what are the rights for such squatters and why are they entitled to have them?’ and so on and so forth. Well, let us have a look at all the fundamentals of squatters and their rights!

Who is a squatter

A squatter is defined as any individual who occupies a piece of property or any land without having the actual legal right to do so. Further, they do not have tenant status and live on such properties without paying any rent, and such properties are not rented directly from the owner (where the law relating to landlord-tenant will come into play). They demand a right to such properties without providing any actual documentation or obtaining any prior permission; however, there are some instances where the squatter is not at all aware of the fact that they have no right to reside in such a residence but is made to believe the opposite because of a fake lease agreement.

Insight: Squatters can not only get possession of a residential area, but also, move into commercial properties, for instance, secluded or abandoned office buildings, schools, restaurants and hotels, hospitals, etc. 

Further, the facts of how a person happens to become a squatter may not be the same in all cases; however, some of the most common instances are as follows:

Trespasser

At times, a trespasser can break into an empty house and start living there, rent-free! However, if the trespasser continues to reside there for a longer time, he may be considered a squatter. So, trespassing is not the same as squatting, but trespassers may turn into squatters. 

Please note: Usually, the states in the USA consider squatting to be a civic crime and treat it differently from trespassing because trespassers enter the property with the intention of occupying it, as opposed to squatters’ intentions.  

Unauthorized tenant

Further, there can also be unauthorized tenants who reside on a particular property without obtaining any legal permission or following any procedure to obtain a lease, and they may also deny paying any rent.

Individual belief

Moreover, there are occurrences where an individual may strongly believe that he/she has the right to reside in the property but it may not be so. For example, if an individual is made to sign a fake lease agreement by a fake con agent.

Insight: A squatter is also, at times, referred to as an adverse possessor. This term is generally used in the legal world.

As a layman, one might think it would be a cakewalk to evict a squatter or adverse possessor, especially, when there is no lease agreement signed between the two; however, this is not the case. An adverse possessor or squatter, too, has some rights, and there is a proper procedure to be followed while going through the process of eviction. Moreover, the rightful owner of the property has to take action within a certain time period (discussed below in detail), and if that is not the case, the adverse possession law in that particular state may provide the squatter with the legal title to take possession of the said property. If timely actions are not taken, the landowner may lose his property, and possession may be handed over into the hands of the squatter. 

Well, it does sound like an investor’s worst nightmare, but it is a perfect instance of why investors must not completely trust real estate to be a complete passive source of income. Further, investors must always keep timely checks on their vacant properties and ensure no other individual claims to have valid and legal rights over such a property.

Example of a squatter

Let us assume a woman named Louis bought a nice three-bedroom house in Arizona in 2010 as an investment and leased it for two years straight. However, she decided to stop giving it for rent and put it on the market because she faced some financial difficulties. The house sat empty for years. She later discovered a taxi driver, Peter, had occupied the apartment for months. Louis, on hearing about this incident, called the police, narrated the incident, and reported a complaint for trespassing. The police took action on this matter and kicked Peter out of the apartment, thus constituting an illegitimate eviction. After this, Louis called Chris, the locksmith, and got all the locks in the apartment replaced with new ones. However, Peter, being aware of the 3 years period to be declared a squatter in the city, approached the housing court of Arizona, and the judge gave him permission to enter the property in a span of a few days.

Thus, in order to get rid of any squatter, there is a certain procedure to be followed, which is discussed in detail in the upcoming passages.

Insights: A claim of adverse possession by a squatter can be approved by some states if the squatter furnishes some kind of document or even a phony deed, thus claiming he is the righteous owner of the piece of land or property. 

History of squatting and squatters’ rights

In the days of the Wild West, there were ranch owners who would chase squatters off their lands; however, there are several changes now, and almost every state in the USA has a law relating to squatters’ rights that has special provisions for squatters, like that a squatter cannot be forcefully evicted from a property; instead, the landowner must follow a proper procedure like reporting the action, filing proper paperwork, and working through legitimate channels to vacate the occupied land.

Further, the idea of squatting dates back as far as medieval England and its common law. The king’s courts would then pass verdicts in favor of people who settled at a property without prior permission, the reason being that the owner did not take any action against such an occupancy within the set time period. 

During that period, squatters’ conflict was a usual sight, wherein peasants trying to escape from the burden of taxes on their current residents would shift to another country and build a house there, thus acquiring the land by assumption. This was quite a common practice during that period. 

Moreover, in ancient Welsh, the folk tradition stated that if an individual successfully constructed a house within a one-night span, it would belong to them free and clear. Another variation of this belief is that a squatter would need to burn fire in the hearth by morning, where the boundaries of their newly occupied property could be extended by throwing an ax as far as the squatter possibly came from all four corners of the house. 

Fortunately, such practices have ceased to exist in the USA, and state legislatures have created a definite set of rules in matters relating to squatting. If an individual obtains possession of a property for a specific time period (as mentioned in the state), he can establish a concrete claim to that property over the real owner, even if the property was occupied illegitimately. Even though it sounds odd, squatting is quite common and a popular tool used by ill-intentioned individuals to acquire abandoned properties.

Homestead laws after 1862

The Homestead Act of 1862 was signed by President Abraham Lincoln with the main object of reallocating the ‘unsettled’ lands in the West. This law was applicable to everyone, US citizens and non-US citizens alike, thus making no distinction between them. The provisions of the Act distinguished it from squatting because, as per the Act, homesteaders were provided with a legitimate method to occupy any ‘unclaimed land’, the continuous period for them to occupy such a land being five years, amongst other requirements. After meeting the requisite conditions and finishing the paperwork “valid claims were granted patent free and clear“.

What are squatters’ rights

Now that we are aware of who a squatter is, you might wonder what sort of rights such an individual would have. So, let us learn about the rights of squatters in brief.

Squatters rights, or adverse possession, can be defined as a set of legalities created when homesteading was popular. The U.S. Government enacted the Homestead Act of 1862 to support colonists who moved onto lands they inferred to be vacant and built their houses, raised their livestock, or grew crops there. This was one of the methods by which such individuals had the opportunity to expand the amount of land under the authority of the U.S. government back then. Further, even though there might be a time and place for such laws to be exercised, such laws continue to remain on the books to date, and the idea to move into an empty house or land and declare it as one’s own still prevails, thus protecting the rights of squatters.

The most important point to note about squatters’ rights is that they can reside on your land until the owner reports any such activity, provided it is reported within a specific time period. Also, the owner might not be aware of the squatters residing in vacant homes for years, but if they are paying taxes (if any) and other requisite fees for the said property, then they do have the legitimate right to stay on the said property.

In simple words, squatter’s rights, also known as adverse possession, give the squatter the right to continue residing on a piece of land or property, provided no action is taken by the landlord or the owner within a specified time period. 

Why do squatters rights exist

While reading about what squatters’ rights exactly are, one might wonder why do such rights even exist, especially when the person occupying the property does not have the legal right to own the property. Well, the main object of enacting such a right is to ensure that no piece of land goes to waste and that no landlord uses vigilante justice to acquire possession of the property. If such rights did not exist, any landlord would wake up one fine day and threaten the individuals staying on the land to evict the place, even when the individuals settled in and took care of the property the whole time or for years at a stretch. Squatters’ rights ensure there is ‘justice for all’.

Furthermore, living in the U.S. burns a hole in one’s pocket, so acquiring possessions from abandoned homes and properties can become more pocket friendly. Also, it must be noted that squatters are not necessarily homeless people, they can be law-abiding citizens that have a decent annual income, which enables them to pay taxes and other requisite fees required to sustain or maintain the property. 

Additionally, if squatters do not cause any harm to the property or steal from its assets, they cannot be arrested for living on it. If the owner does not rightfully send an eviction notice to such unwanted guests, their right to possess the property will persist. 

Please note: Any legislation relating to landlord-tenants will not be applicable to squatters. 

Squatters’ have claimed properties since the medieval period. During this period, if a person successfully builds a house in one night, the squatter would gain adverse possession of the property, considering the concept of squatters’ rights. However, this nightmare scenario does not exist now in any part of the USA, and there are policies and legislation to help with issues on such matters. 

Such rights protect both squatters and landowners. Further, such rights ensure that no landowner or property owner takes the law into their hands and forcefully evicts a person from a piece of land he/she has been residing on for a while. Had these rights not existed, landlords could justify the maltreatment of tenants, and vigilante justice would spill into other parts of society.

Relation between a squatter and property owner

The relations between a squatter and landowners are different from the relations between a tenant and a landowner/owner. While renting a house, apartment, or property requires documentation, for instance, a basic lease agreement or a contract that helps in settling any landlord-tenant dispute, squatters act on their own and may at times also show that they have the relevant legal documents that “confirm” their legal right to reside there; however, such documents do not actually ensure such laws are in their favor.

Nonetheless, a squatter’s home cannot be vacated without an official notice of eviction. Moreover, the owner cannot file a lawsuit against the squatter or use force or violence against the squatter, either. The biggest parody here is that the squatter can file a lawsuit against the owner if violence is used against him or an official eviction notice isn’t sent; additionally, the court may consider the owner’s statements about protecting the property as invalid.

Squatting v. trespassing

Oftentimes, trespassing and squatting are used interchangeably, however, there are a few key differences amongst these terms that one must know. Let us read about such distinctions.  

Trespassing is regarded as a criminal offense, and the trespasser can be arrested if he trespasses on land. Whereas squatting is regarded as a civil matter, and the squatters can be arrested if they-

1. Never paid any utility bills,
2. Ignoring the eviction notices sent by the landlord,
3. Caused a nuisance. 

The major difference between trespassing and squatting is that, in legal terms, a trespasser enters a property to gain access, so they break in, whereas, usually, a squatter uses an unlocked door, an open sliding glass door, or an already broken window to enter the premises/property. 

Tabular representation of squatting v. trespassing 

Grounds	Squatting	Trespassing
Meaning	Squatting takes place when a person gains access to property belonging to another person for a long period of time and may claim it as his own over that period.	Trespassing takes place when a person illegally gains access to another person’s property or land for a brief period of time.
Terms referred to	The act of squatting can be said to have been committed by ‘squatters’.	The act of trespassing can be said to have been committed by a ‘trespasser’.
Intention	A squatter does not have any intention of leaving the property.	A trespasser does not have any intention of residing on the property and leaves after a brief period of time.
Ownership	Squatters establish residency for claiming the title of ownership.	Trespassers do not claim the title of ownership.
Eviction	The eviction process is similar to that of a tenant.	The eviction can be done through self-help remedies or court orders.
Nature of offense	The nature of the offense of squatting attracts a civil remedy/suit.	The nature of the offense of squatting attracts a criminal remedy/suit.

Legal requirements of squatters in the United States

While it usually begins with trespassing, squatters can demand ownership of the property after residing there for a specified period of time, as required by each state in the USA. Squatting laws term this act as ‘adverse possession’. Additionally, a squatter can claim the right to get possession of a property if he can show actual, open, notorious, exclusive, hostile, 

and continuous use of the property. Let us take a look at each term in detail. Continuous use

To declare a property their own, squatters must have continuous possession of the land or property. The squatter has to occupy the house for a longer, uninterrupted period; the duration differs from state to state as all the states in the USA have different legislation relating to squatting. A point must be noted that if an individual visits a property occasionally, that would not be considered continuous possession. So, continuous use does not literally mean the continuous usage of a property, but no third party, including the actual owner of the property, has interrupted the claimant’s right to possess the property. The same was mentioned in the case of Ray v. Beacon Hudson Mountain. Corp., 88 N.Y.2d 154 (1996).

Further, in the case of Lewes Trust Co. v. Grindle, 170 A.2d 280, 282 (Del. 1961), it was stated that there is no definition of the term  “constant” or “continuation” per se, but the continuous use criterion is fulfilled when the claimant (the squatter) is not stopped or interrupted at any time while using the property. In the case of Gunby v. Quinn, 142 A. 910, 913 (Md. 1928), continuous use was awarded for seasonal usage of a land where a hunter was able to claim marshland as adverse possession. In Northrop v. Opperman, No. 2009 AP 1559, a similar approach was followed where two neighbors thought a property line was different for nearly a hundred years; however, after a new property line was discovered, the Court stated that the property was used without any interruptions throughout the statutory period and thus adverse possession had successfully occurred. 

Further, in Steller v. David, 257 A.2d 391 (Del. Super. Ct. 1969), the defendant filed a lawsuit in the Delaware Superior Court claiming adverse possession over a marshland that the defendants had seasonally hunted, trapped, sharecropped, and paid taxes on an annual basis for over a period of forty years. The Court stated that using the land for the purposes of hunting, trapping, and farming was uninterrupted and thus sufficient for continuous use. Then, in yet another case, Apperson v. White, 950 So. 2d 1113, 2005 CA 1516 (Miss. Ct. App. 2007), it was found that the adverse possessors’ actions of constructing a fence, growing crops, and continuously harvesting timber for over a period of forty years satisfied the continuous use element.

Hostile use

The occupation of the property has to be hostile to the owner’s rights. The term ‘hostile’ here does not necessarily  mean belligerent or aggressive, rather, it implies the occupation being without the approval of the owner or against the rights an owner of the property generally has. There are times when an owner has no idea about his property being invaded, but it needs to be totally against the owner’s rights; only then will it be considered hostile possession.

In the case of Kimball v. Anderson, 125 Ohio St. 241, 181 N.E. 17 (Ohio, 1932), a lawsuit was filed where a party claimed adverse possession over a driveway between two portions of land. The pernicious party originally possessed both pieces of land; however, he sold one part of the land to the defendant, but there was no explicit mention of the use of a driveway. The party claimed that the usage of the driveway was not hostile as the previous owner did not raise any objection to such usage. Nonetheless, the Supreme Court of Ohio had a dissenting opinion and held that any usage of land that is not consistent with the rights of the true owner is termed hostile and that even though there was no hostility when the previous owner owned the property, once it was sold and was against the rights of the owner, it can be regarded as adverse possession. Simply put, even though the previous owner had no issues with the usage of the driveway, once the property was sold and the act was carried out and the owner had objections to the act, the use would obviously be deemed to be against the rights of the true owner. 

In yet another case, Stellar v. David (mentioned above), the plaintiff began to set traps on the land, but the defendant would always have them removed. Here, the Court stated that the defendant’s act of paying taxes and removing the plaintiffs’ traps was that of ownership adverse to the true owner.

Further, it must be noted that hostile use is defined in either of the following three ways, depending on the state where the piece of land is situated: 

1. Bad faith, 
2. Good faith, 
3. Objective. 

Let’s have a look at each of the factors briefly. 

Bad faith

Here, it must be expressed that the individual claiming adverse possession was completely aware of the fact that he was not the righteous owner of the property and was operating in bad faith. For those states in the USA that have a bad faith requirement, say, South Carolina, it must be proved that the property was operated in bad faith when it comes to claiming adverse possession. This decision was inferred in the case of  Jones v. Leagan, 384 S.C. 1, 681 S.E.2d 6 (S.C. Ct. App. 2009). 

Good faith

Good faith means the individual or squatter claiming adverse possession truly believed that he owned the property and that the property was not possessed, believing it was owned by someone else. As per N.Y. Real Prop. Acts. § 501, the claimant has to necessarily provide proof that he had a justifiable reason to believe he was the owner of the property. Further, in the case of Wilcox v. Estate of Hines, 849 N.W.2d 280, 2014 WI 60, 355 Wis. 2d 1 (Wis. 2014), the Supreme Court of Wisconsin held that if at any time it is discovered that the claimant was aware that the property he claimed to be his own was not his per se, the property would be returned to the righteous owner.

Objective 

Most of the states in the USA have an ‘objective‘ view of hostile use, meaning the claimant has no good or bad faith reason to claim adverse possession. The Michigan Court of Appeals in the case of Gorte v. Trans Dep’t, 202 Mich. App. 161, 507 N.W.2d 797 (Mich. Ct. App. 1993) said that courts in objective states do not want the legislation to award the thieves while penalizing the individual who erred by mistake. Further, in the case of MacDonough-Webster Lodge No. 26 v. Wells, 175 Vt. 382, 2003 Vt. 70, 834 A.2d 25 (Vt. 2003), the Supreme Court of Vermont held that the claimant must act as if they owned the land even if they were actively aware of the fact that the ownership of the land belonged to them. 

An instance of an objective use could be that of Kimball v. Anderson (mentioned above), where the property owner in Ohio sold two houses to different owners. For some reason, one of the houses had a driveway that was actually located on land belonging to the neighbors. Now, considering that the driveway was used for several years by the previous owners, adverse possession was claimed. Here, the claimant proved objective and hostile use through the statutory period. 

Open and notorious use

In Appalachian Reg. Healthcare v. Royal Crown, 824 S.W.2d 878 (Ky. 1992), open and notorious use was defined as a use so apparent or obvious that it puts the real owner of the property on notice of the adverse claim. Moreover, in the case of Grace v. Koch, 81 Ohio St. 3d 577 (Ohio 1998), the Supreme Court of Ohio held that in order to constitute use, the possessor “must unfurl his flag on the land, and keep it flying so that the owner may see, if he will, that an enemy has invaded his dominions and planted his standard of conquest.” Moreover, in the case of Ottavia v. Savarese, 338 Mass. 330, 155 N.E.2d 432 (Mass. 1959), that use must be such that a vigilant owner would be aware that their land is occupied and that the owner has a just opportunity to take measures to absolve his rights through legal actions. 

Further, in the case of Kaufman v. Giesken Enter., Case Number 12-02-04 (Ohio Ct. App. Mar. 7, 2003), the Court of Appeals of Ohio, Third District, Putnam County, found that using land for the purpose of recreation, planting and pruning trees, cultivating asparagus, parking cars, piling debris and other activities that kept the property attractive as per the standards of the neighborhood was a justifiable reason to put a reasonable person on notice of possessor’s claim. Additionally, in Apperson v. White (discussed above), the Court of Appeals of Mississippi stated that constructing a fence and planting corn on a piece of land were clear and visible indicators of occupation that should have put a generally vigilant person on notice of said occupation. 

Actual use

In Bride v. Robwood Lodge, 713 A.2d 109 (Pa. Super. Ct. 1998), the Superior Court of Pennsylvania defined actual use as “having dominion over the property”, meaning a person must use a piece of land in the same way as another person would. Moreover, the Court of Appeals of Wisconsin in the case of Steuck Living Trust v. Easley, 325 Wis. 2d 455, 2010 WI App. 74, 785 N.W.2d 631 (Wis. Ct. App. 2010) stated that utilizing any property for the purpose of hunting or storage, for instance, will not constitute a residential area. Further, in Striefel v. C-K-L Partnership, 733 A.2d 984, 1999 Me. 111 (Me. 1999), the Supreme Judicial Court of Maine said that it is not necessary that every case be in black and white and that there are other factors like whether a claimant actually owned and utilized the land in question that will rely on several things, including:

1. The nature and location of the property,
2. The potential use of the property, and
3. The kind and degree of use and enjoyment to be expected of the average owner of such property.

Lastly, in the case of Phillips v. Akers, 103 S.W.3d 705 (Ky. Ct. App. 2003), the Court of Appeals of Kentucky held that the ownership of a property must be  “substantial and not sporadic”, i.e., the property must be the claimant’s main residence during the actual possession period.

Exclusive use

The term exclusive use is defined in Crown Credit Co. v. Bushman, 170 Ohio App. 3d 807, 2007 Ohio 1230 (Ohio Ct. App. 2007), by the Court of Appeals of Ohio, Third District, as “exclusive of the true owner entering onto the land and asserting his right to possession,” and by the Court of Appeals of Maryland in the case of Blanch v. Collison, 174 Md. 427, 199 A. 466 (Md. 1938) as acting and using the land in a manner that one would expect a rightful owner would. Further, in Marvel, et al. v. Barley Mill Road Homes, Inc., 34 Del. Ch. 417, 104 A.2d 908 (Del. Ch. 1954), the Court of Chancery of Delaware, New Castle, stated that if the property has a stream, well, or other natural resources that are used by any other individual(s), then such a use does not constitute exclusive use. Exclusive use additionally means “the possessor is not sharing the disputed property with the true owner or public at large,” as held in the case of Striefel v. C-K-L Partnership, 733 A.2d 984, 1999 Me. 111 (Me. 1999). 

When can a squatter claim his rights

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An individual can claim his squatters’ rights if he/she has openly taken residence on one’s property without obtaining prior permission but still has paid the necessary taxes and other fees required to maintain the property. All this will increase the chances of the squatter being declared the owner of the property. However, it must be noted that such rights are not applicable to those individuals who have rented and refused to leave or pay money after the lease is terminated. 

Moreover, squatters’ rights do not discriminate if the property was obtained on purpose or accidentally. For instance, if no objection was taken within the specified time limit when a neighbor constructed a fence and infringed over the property line of another, then the neighbor can claim the property for himself. One of the most notable aspects of squatters’ rights is that they must be given the right to go through the process of eviction; without this, the court may dismiss the lawsuit or the case, declaring that the proper procedure was not followed in ousting the squatter. 

When and where are squatters rights applicable

A point must be noted that adverse possession is a legal phrase that permits ownership of a property to one person without actually paying an actual price for the land, if:

1. The land is personal, not commercial;
2. The person(s) live on the land exclusively;
3. The person(s) stayed on the land for the duration as defined under that particular state of the USA; and that
4.  The rightful owner does not interrupt, try to vacate, or remove the person(s) within the stipulated time period. 

Further, it must be taken into consideration that the USA standards make no distinction between intentional and accidental possession. Also,  squatters’ rights are not governed by general tendency standards. For instance, say, your neighbor, Ms. Meg Griffin unintentionally constructs a fence around the backyard, however, that portion of land  actually belongs to you, and you do not object to it because you are not very certain of the actual boundaries. So, later, after surpassing the state-specific period, Ms. Griffin can actually become a law-abiding tenant and gain possession of what could have been a part of your property.  

How to claim squatters rights

A person may claim his right as a squatter if he/she is a roommate, tenant, or occupies property that has been abandoned for a long time or is not used. It must be noted that a squatter has the right to a property until they don’t, or at least until the owner finds out about this activity. Mentioned below are some of the most common rights a squatter in the United States has:

Roommates or family members

Say a squatter is a roommate or is living with his family, in that case, a legal notice to evict the squatter must be sent as per the state landlord-tenant laws. Such a notice most commonly requires that the landlord send a 30-day lease termination letter and that if the person still remains on the property, a suit for formal eviction be filed.

Tenants

Let us understand the point through an example. In this scenario, say there is a tenant, Glenn Quagmire, and a landowner, Cleveland. Now, Glenn Quagmire decides to hold onto the lease on the property. In such an instance, the landowner, Cleveland, can send him a notice to pay or quit, which usually ranges from 3 to 10 days. Once the notice to quit period has come to an end and Glenn Quagmire is still on the premises, Cleveland may start the process of eviction. 

Airbnb squatters

If an Airbnb tenant has overstayed their vacation, the owner can remove them without filing a suit or approaching the court. Additionally, if the tenant has stayed less than 28 days on the land, the landlord should bring this to the attention of Airbnb immediately for help. If even this procedure does not work, then the guest can be treated like a transient, instead of a tenant and can be evicted following the local laws; usually, this process involves calling the police to assist in watching them leave the premises. 

How to avoid squatters

A landowner must always ensure a squatter does not take residence in his house or property, and if it has happened, he must ensure the same incident does not occur again, which can only be done by securing the property. Squatting laws by state allow landowners to vacate squatters. A landowner can always contact the police if they find someone squatting on their property. Further, if adverse possessor refuses to leave and starts claiming squatting rights upfront, they can be evicted by taking the first step  of sending an eviction notice; however, it is crucial to note that  there is a certain time period during which such actions can be taken, commonly known as the statutory period, whose expiration may cause to transfer of title to your property to the squatter. 

Given the complex nature of evicting squatters and the numerous organizations that help adverse possessors, a landowner must take measures to safeguard the property right from the very beginning of buying it. An eviction process for squatters could be complex, as there are several cases where squatters have claimed their tenant rights as they had signed a fake lease agreement, even though they were not aware of the fact that the agreement was fake. At times, such individuals could also pay rent to a con man or make an oral agreement with the owner to modify the property instead of paying some money as rent, even if the owner was a fraud.

Steps for preventing squatters

Following are the measures one can take to prevent squatters’ invasion:

No trespassing

Proper signs like ‘No Trespassing’ or ‘Trespassers will be prosecuted’ will always come in handy in proving any trespass in the near future. Landowners can post such signs to avoid adverse possession. Further, such signs will show that the property is not abandoned by the landowners and that they frequently visit it.

Appoint property management agency

If you, as a landowner, cannot keep a check on your property, it is advisable that a property management agency be hired to do so. Such agencies keep monthly and weekly check-ups on the property to ensure its safety. 

Secure perimeter

As the rightful owner of any property, especially a vacant one, the landowner must ensure security around the perimeter of the property. A landowner would never want to deal with a fake lease agreement where a squatter allegedly paid rent or a hostile claim where they think they have the legitimate right to have possession of the property. Further, a landowner must equip their perimeter with lights and alarms that make a sound if any activity is noticed. Furthermore, if there are fences on your property, it should be ensured that all such fences and locks are sturdy enough to be in place and not fragile.

Alarms

As a landowner, one must consider installing alarms, especially those which come with inbuilt cameras that can send real-time information to your smartphone or electronic devices. With such equipment, you can take a note of any activity happening on your property and take immediate action, or call the police and give them the recording or footage of such an activity as evidence.

Secure windows and doors

Landowners have to ensure that all the windows and doors of vacant properties are well secured and that no stranger can easily enter the property and start residing there and calling it their home. 

Visits 

Landowners should regularly visit their properties or appoint an agent to do so, as the more often you do so or the agent visits the place, the sooner one can notice any traces of broken windows or doors from where squatters can enter. 

Home renovations

Additionally, it is important to stay up to date with home renovations, especially old doors and windows that must be kept in good condition, and landowners must ensure they have a proper lock-system. 

Tax payments

Moreover, it is important that landowners stay up to date on the tax payments on their property. Generally, cases where squatters were awarded the titles were primarily due to them paying taxes on the property for an extended period while  the owner either did not pay heed to tax payments or did not have the requisite proof for tax payments. 

Proper agreement

While allowing someone else to use your property, it is essential that the terms be formalized with a legitimate formal agreement that depicts ownership of your property and the background under which such a property can be used or occupied. It must be noted that casual use, like letting a neighbor cross your property for some time, can also be considered one of the grounds for a claim of adverse possession, hence, care must be taken to ensure that there are no such encroachments. 

Following the above measures will save you hundreds of dollars on the process of eviction if someone decides to call your property their home. 

Please note: It is not necessary that squatters will always be strangers; they could also be people you know. They try to disguise their plan of squatting by agreeing to exchange their work in return for a place to stay, this can obviously cause trouble. For instance, in California, if an individual can get oral or written proof of such an agreement, you, a.k.a., the landowner, could owe them tenant rights. 

Proper procedure to evict squatters

There is a proper procedure that needs to be followed to remove squatters;  however, it is noteworthy to mention that the eviction of squatters is not the same as the eviction of a tenant. Further, removal of a squatter is not possible if there is an agreement between the landlord and the tenant.

A squatter, as discussed above, in legal terms can be described as an unlawful or unauthorized possessor of property or a piece of land or someone who encroached on the property without obtaining prior permission from the owner of that particular land. Unfortunately, even those poor souls who were tricked into signing a fraudulent lease agreement would be subject to removal. 

Landowners can get ownership of the property by having the occupant arrested for housebreaking, changing the locking system, posting a notice of possession, and filing a statement with the court. When it comes to criminal arrest, the property owner can reclaim possession of his property by filing a civil suit.

Usually, squatters claim tenants’ rights by  contending that they have made timely payments of rent, have signed a lease agreement (typically fraudulent), or have made an oral agreement with the owner substituting rent payments for modifications on a piece of land. Such arguments delay the removal or eviction of property and complicate legal actions. In some instances, property owners resort to “cash for keys” to remove squatters.

Steps that can be taken to evict a squatter

The following steps could be taken to evict a squatter:

Contact the police

Calling and informing the police about such an activity. The quicker  the   step is taken, the better the outcome will be.

Send a formal notice for eviction 

Send a formal evidence notice once the first step is taken care of! A notice of unlawful detainer action must be filed to evict the squatter. Please note : Since the procedure varies from state to state, it is advisable to consult a lawyer to help resolve the issue in a just and legal way.  

Litigation

If the squatter is adamant on residing on the property even after the above measures, one can take action further, simply by filing a lawsuit. 

Remove any possession left behind

Once the squatters evict the property, their possession can be removed but a point must be noted that one can’t simply discard their possession or throw it in the trash. Some States in the US have a mandate that says landlords must send written notices to the squatter declaring a deadline to collect their belongings.  

Please note: These steps are just the usual steps one would take to evict a squatter. It is always advisable to speak to a lawyer or the local judicial office to ensure a proper procedure is being followed as they can help and advise you if any additional steps or measures need to be taken.

How to file for adverse possession

There is a five-step process to file for adverse possession, which is as follows:

Step 1 : Occupying the property

A claimant seeking adverse possession must occupy the property for a set period of time to get title. Such a property must either be abandoned or unused to assure that the claimant is not trespassing in the traditional sense. Generally, most adverse possession cases that are won are when the claimant occupies a property or a piece of land in good faith, meaning they believe the property belonged to them. 

Step 2 : Take possession

If a  claimant is taking possession of  a property, then a fence or something must be put up in order to have “dominion over the property”, meaning to act as if the property is truly owned by the claimant and is used for the intended purpose. For instance, if there is only a barren piece of land and one builds a structure on that land to make it their home. Further, the possession must take place on a “constant basis” for the set period of time.

Step 3 : Pay taxes on the property

To claim title to a property, it is important that the claimant do everything he/she would generally do if they were the actual owner of the property, including paying property taxes and other local utilities. To begin the process of paying property taxes, the claimant can get in touch with the local tax collector and find out if taxes are being paid. Additionally, if there are any liens, even they should be paid; although, if the claimant believes that he may not be granted the title to obtain the property, he may not want to pay such taxes and liens.

Step 4 : Find the owner

When the statutory period in that state to claim title is reached, the claimant should get in touch with the local tax assessor or registry of deeds to find out the name of the owner. This information will be of utmost importance when filing a suit against the owner to claim the property and its rights.

Step 5 : Filing a lawsuit

While filing a lawsuit, the claimant will be filing a “quiet title”, which is a filing in the local property court of that particular state to determine who is the rightful owner of a certain property. It is always advisable to consult an attorney and hire one to file the suit in the local court and also to prepare a complaint for the purpose of adverse possession.

Squatters rights in the United States : a state-wise perspective

To get ownership of a property, it is important that one actually show possession of that property for the requisite duration. This duration differs from state to state, with some states offering shortened periods of time under certain circumstances. Further, every state has different provisions for additional requirements to be imposed on the claimant, like payment of taxes or having a color of title. 

As we know, squatters rights, commonly known as adverse possession laws, exist in all 50 states of the USA; however, how and when these laws are enforceable will differ greatly from state to state. Let us look at each of the state requirements.

Tabular representation of squatters right

Please note the meaning of the following before you start reading about squatters’ rights in every state in the USA. 

Adverse possession

The term ‘adverse possession’ in context to squatters refers to those squatters who are making an attempt to live on the property by claiming ownership. They do this by proving they have resided on the property for a specific period of time. The time period, to be fulfilled, varies from state to state. 

Holdover tenants

The term ‘holdover tenants’ refers to those individuals who have remained on the property even after their lease or time on the property has come to an end. A notice to quit, vacate,or evict the property can be sent to the holdover tenant. Such a notice can be forwarded for non-payment of rent, as well. The holdover tenants are not squatters’ per se, but may turn into one provided they reside on the property after the expiration of the statutory period. The eviction process can proceed after the expiration of the statutory period. 

Unknown persons

The term ‘unknown persons’ can be defined as those who reside on the property without permission. Generally, such a person can be regarded as an ‘unwanted person’ who is residing on the premises he does not owe. This person can also be referred to as a squatter. Every state has different laws to evict each of the following persons. Let us dive deep into the details of each of the states in the USA. 

20 years or more

State	Adverse possession	Provision for holdover tenants	Provision for unknown persons	Additional comments, if any
Alabama	As stated in the case of Bradley v. Demos, 599 So. 2d 1148 (Ala. 1992), a squatter may claim adverse possession (for general possession) after residing on the property for at least 20 years.	Under § 35-9A-421(b), a 7 days notice must be sent to evict the property.	Under § 35-9A-441(b),  a 30 days notice must be sent to evict the property.	Under § 6-5-200, a squatter may claim adverse possession if he been living and paying taxes on a property for a period of 10 years
Delaware	Under Delaware Code Title 10 Sec. 7901 (Right of entry), a squatter may claim adverse possession after residing on the property for at least 20years.	Under Title 25 § 5502, a 5 days notice must be sent to evict the property.	Under Title 25 § 5106, a 60 days notice must be sent to evict the property.
Georgia	Under GA Code § 44-5-14, a squatter may claim exclusive possession after residing on the property for at least  20 years.	Under O.C.G.A. 44-7-50, an immediate notice must be sent to evict the property.	Under GA Code § 44-7-7, a 60 days notice must be sent to evict the property.
Hawaii	Under HI Rev Stat § 657-31.5, a squatter may claim adverse possession after residing on the property for at least 20 years.	Under HI Rev Stat § 521-68, a 5 days notice must be sent to evict the property.	Under HI Rev Stat § 521-71, a 45 days notice must be sent to evict the property.
Idaho	Under ID Code § 5-210, a squatter may claim adverse possession after residing on the property for at least 20 years.	Under  ID Code § 6-303(2), a 3 days notice must be sent to evict the property.	Under ID Code § 55-208, a 30 days notice must be sent to evict the property.	Here, along with residence, the payment of taxes and possession, i.e., protecting the land by enclosure or persistently modifying the land provision, also exist.
Illinois	Under 735 ILCS 5/13-101, a squatter may claim adverse possession after residing on the property for at least 20 years.	Under 735 ILCS 5/9-209, a 5 days notice must be sent to evict the property.	Under 735 ILCS 5/9-207, a  30 days notice must be sent to evict the property.
Maine	Under Me. Rev. Stat. tit. 14, § 801, a squatter may claim adverse possession after residing on the property for at least 20 years.	Under Title 14 § 6002, a 7 days notice must be sent to evict the property.	Under Title 14, § 6002, a 30 days notice must be sent to evict the property.
Maryland	Under MD Cts & Jud Pro Code § 5-103, a squatter may claim adverse possession after residing on the property for at least 20 years.	Under § 8-401, an immediate notice must be sent to evict the property.	Under MD Real Prop Code § 8-402 (b)(1)(i), a 30 days notice must be sent to evict the property.
Massachusetts	Under MA Gen L ch 260 § 21, a squatter may claim adverse possession after residing on the property for at least 20 years.	Under MA Gen L Ch. 186 § 11, a 14days notice must be sent to evict the property.	Under Chapter 186, Section 12, a 30 days notice must be sent to evict the property.
North Carolina	Under § 1-40, a squatter may claim adverse possession after residing on the property for at least 20 years.	Under § 42-3, a 10 days notice must be sent to evict the property.	Under § 42-14, a 7 days notice must be sent to evict the property.	Under § 1-38, a squatter may claim adverse possession after 7 years with color of title.
North Dakota	Under § 28-01-04, a squatter may claim adverse possession after residing on the property for at least 20 years.	Under § 47-32, a 3 days notice must be sent to evict the property.	Under § 47-16-15, a 30 days notice must be sent to evict the property.	Under § 47-06-03, a squatter may claim adverse possession after 7-10 years with color of title.
South Dakota	Under S.D. Codified Laws Ann. §§ 15-3-1, et seq., a squatter may claim adverse possession after residing on the property for at least 20 years.	Under SDCL 21-16-2(4), a 3 days notice must be sent to evict the property.	Under § 43-8-8, a 30days (or not less than a month) notice must be sent to evict the property.	Under § 15-3-15, a squatter may claim adverse possession after 10 years with color of title while paying taxes for 10 years to claim ownership.
Wisconsin	Under Wis. Stat. Ann. § § 893.25 to 893.27, a squatter may claim adverse possession after residing on the property for at least 20 years.	Under § 704.17(2), a 14 days notice must be sent to evict the property.	Under § 704.19(3), a 28 days notice must be sent to evict the property.	Under the same provision (Wis. Stat. Ann. § § 893.25 to 893.27), a squatter may also claim adverse possession if he/she has resided on the property with color of title for 10 years, or has lived on the property and paid taxes for 7 years.
Louisiana	Under CC 3486, a squatter may claim adverse possession after residing on the property for at least 30 years.	Under CCP 4701, a 5 days notice must be sent to evict the property.	Under La. Civ. Code Ann. art. 2728, a 10 days notice must be sent to evict the property.	Under LA Civ. Code 3475, a squatter may also claim adverse possession if he/she has resided on the property with color of title for 10 years.
New Jersey	Under § 2A:14-30, a squatter may claim adverse possession after residing on the property for at least a continuous period of 30 years.	Under § 2A:18-61.2, a notice must be sent to evict the property. The time or duration to send a notice to vacate is not specifiedhere.	Under § 2A:18-56, a 30 days notice must be sent to evict the property.
Ohio	Under Ohio Rev. Code Ann. § 2305.04, a squatter may claim adverse possession after residing on the property for at least 21 years.	Under § 1923.02 & § 1923.04, a 3 days notice must be sent to evict the property.	Under § 5321.17, a 30 days notice must be sent to evict the property.
Pennsylvania	Under 42 PA Cons Stat § 5530, a squatter may consider claiming adverse possession after residing on the property for at least 21 years.	Under § 250.501(b), a 10 days notice must be sent to evict the property.	Under 68 P.S. §§ 250.501(b), a 15 days notice must be sent to evict the property.

Below 20 years but above 10 years

State	Adverse possession	Provision for holdover tenants	Provision for unknown persons	Additional comments, if any
Colorado	Under Colo. Rev. Stat. § § 38-41-101 and 38-41-108, a squatter may claim adverse possession after residing on the property for at least 18 years.	Under Colo. Rev. Stat. § 13-40-104, a 10 days notice must be sent to evict the property.	Under the Colorado street law, the notice time differs depending on the occupation.	Under the same provision (Colo. Rev. Stat. § § 38-41-101, 38-41-108), a squatter may also claim adverse possession if he/she has resided on the property with color of title and has lived on the property and paid taxes for 7 years.
Connecticut	Under Conn. Gen. Stat. Ann. § 52-575, a squatter may claim adverse possession after residing on the property for at least 15 years.	Under § 47a-23, a 3 days notice must be sent to evict the property.	Under § 47a-23, a minimum of 3 days notice must be sent to evict the property.
Kansas	Under Kan. Stat. Ann. § 60-503, a squatter may claim adverse possession after residing on the property for at least 15 years.	Under § 58-2507, a 10 days notice must be sent to evict the property.	Under § 58-2570, a  30 days notice must be sent to evict the property.
Kentucky	Under Ky. Rev. Stat. § 413.010, a squatter may claim adverse possession after residing on the property for at least 15 years.	Under § 383.660(2), a 7 days notice must be sent to evict the property.	Under § 383.695, a 30 days notice must be sent to evict the property.	Under § 413.060, a squatter may also claim adverse possession of a property if he holds color of title while living on the property continuously for 7 years
Michigan	Under § 600.5801, a squatter may claim adverse possession after residing on the property for at least 15 years.	Under § 554.134, a 7 days notice must be sent to evict the property.	Under § 554.134, a 30 days notice must be sent to evict the property.	Here, under the same provision (§ 600.5801), a squatter must claim exclusive and uninterrupted usage.
Minnesota	Under § 541.02, a squatter may claim adverse possession after residing on the property for at least 15 years.	Under § 504B.135(b), a 14 days notice must be sent to evict the property.	Under Statute 504B.135, a 30 days notice must be sent to evict the property.	Here, it must be noted that the 15 years period includes the payment of taxes for the same duration, as well.
Nevada	Under NV Rev Stat § 40.090, a squatter may claim adverse possession after residing on the property for at least 15 years.	Under NRS 40.2512, a 5 days notice must be sent to evict the property.	Under NRS 40.251, a 30days notice must be sent to evict the property.	Under NRS 11.110, NRS 11.150, a squatter may also claim adverse possession if he/she has resided on the property for only 5 years with color of title and also paid taxes.
Oklahoma	Under 12 OK Stat § 12-93, a squatter may claim adverse possession after residing on the property for at least 15 years.	Under Title 41 §131, a 5 days notice must be sent to evict the property.	Under § 41-111, a 30 days notice must be sent to evict the property.
Vermont	Under Vt. Stat. Ann. tit. 12, § 501, a squatter may claim adverse possession after residing on the property for more than 15 years.	Under § 4467, a 14 days notice must be sent to evict the property.	Under § 4467(c)(1)(A), a  60 days notice must be sent to evict the property.	Here, under the same provision (Vt. Stat. Ann. tit. 12, § 501), if the squatter has resided for more than 15 years, this will serve as sufficient proof to claim title of the property under the doctrine of adverse possession.
Virginia	Under Va. Code Ann. § 8.01-236, a squatter may claim adverse possession after residing on the property for at least 15 years.	Under § 55.1-1245(F), a 14 days notice must be sent to evict the property.	Under § 55.1-1253(A), a 30days notice must be sent to evict the property.	Such a use has to be continuous.

10 years

State	Adverse possession	Provision for holdover tenants	Provision for unknown persons	Additional notes, if any
Alaska	Under AS 09.45.052, a squatter may claim adverse possession after residing on the property for at least 10 years.	Under AS 34.03.220, a 7 days notice must be sent to evict the property.	Under § 35-9A-441(b), a 30 days notice must be sent to evict the property.	Under the same provision (AS 09.45.052), a squatter may also claim adverse possession if he/she has resided on the property with color of title for 7years or more, or a continuous adverse possession of real property for 10 years. Additionally, the squatter can claim adverse possession under AS 09.10.030if he/she has lived on the property and paid taxes for 10 years.
Arizona	Under ARS § 12-526, a squatter may claim adverse possession after residing on the property for at least 10 years, uninterruptedly.	Under ARS § 33-1368(2b)a 5 days notice must be sent to evict the property.	Under ARS § 33-1375, a 30 days notice must be sent to evict the property.	Under ARS § 12-523, a squatter may claim adverse possession after residing on the property for at least 3 years provided the squatter has paid taxes for the property.
Indiana	Under § 32-21-7-1, § 34-11-1-2, a squatter may claim adverse possession after residing on the property for at least 10 years.	Under IC 32-31-1-6, a 10 days notice must be sent to evict the property.	Under IN Code § 32-31-1-1, a 30 days notice must be sent to evict the property.	Under the same provisions (§ 32-21-7-1, § 34-11-1-2), the squatter has to live for 10 years on the property while paying the taxes.
Iowa	Under Iowa Code Ann. § 614.17A, a squatter may claim adverse possession after residing on the property for at least 10 years.	Under Statute 562A.27, a 3 days notice must be sent to evict the property.	Under § 562A.34, a 30 days notice must be sent to evict the property.
Mississippi	Under § 15-1-13, a squatter may claim adverse possession after residing on the property for at least 10 years, uninterruptedly.	Under § 89-7-27, a 3 days notice must be sent to evict the property.	Under MS Code § 89-8-19,  a 30 days notice must be sent to evict the property.
Missouri	Under § 516.010, a squatter may claim adverse possession after residing on the property for at least 10 years.	Under § 535.060, a notice must be sent to evict the property. There is no mention of a time limit to send a notice per se.	Under Section 441.060, a 30 days notice must be sent to evict the property.
Nebraska	Under Neb. Rev. Stat. § 25-202, a squatter may claim adverse possession after residing on the property for at least 10 years.	Under § 76-1431(2), a 7 days notice must be sent to evict the property.	Under § 76-1437, a 30 days notice must be sent to evict the property.
New Mexico	Under NM Stat. Ann. § 37-1-22, a squatter may claim adverse possession after residing on the property for at least 10 years.	Under § 47-8-33, a 3 days notice must be sent to evict the property.	Under § 47-8-37, a 30 days notice must be sent to evict the property.	Under the same statute (NM Stat. Ann. § 37-1-22), a squatter has to have color of title to claim adverse possession.
New York	Under Article 5 § 501, 511, a squatter may claim adverse possession after residing on the property for at least 10 years,uninteruptedly.	Under § 711(2), a  14 days notice must be sent to evict the property.	Under the Real Prop. Law § 232-b, a 30 days notice must be sent to evict the property.
Oregan	Under ORS § 105.620,  a squatter may claim adverse possession after residing on the property for at least 10 years.	Under ORS  § 90.394 a 6 days notice must be sent to evict the property.	Under (§ 90.427(3), a 30 days notice must be sent to evict the property.
Rhode Island	Under RI Gen L § 34-7-1 a squatter may claim adverse possession after residing on the property for at least 10 years, continuously.	Under G.L. 1956 § 34-18-35, a 5 days notice must be sent to evict the property.	Under § 34-18-37(b)), a 30 days notice must be sent to evict the property.
South Carolina	Under SC Code § 15-67-210, a squatter may claim adverse possession after residing on the property for at least years.	Under § 27-40-710(B), a 5 days notice must be sent to evict the property.	Under § 27-40-770(b), a 30 days notice must be sent to evict the property.
Texas	Under Sec. 16.026, a squatter may claim adverse possession after residing on the property for at least 10 years.	Under § 24.005), a 3 days notice must be sent to evict the property.	Under Sec. 91.001, a 30 days notice must be sent to evict the property.	Under Sec. 16.025 and 16.030, a squatter may claim adverse possession after 5  years if he/she has continuously possessed the property for the duration along with paying taxes and holding color of title for the same property.
Washington	Under RCW 4.16.020, a squatter may claim adverse possession after residing on the property for at least 10 years.	Under § 59.12.030(3),  a 14 days notice must be sent to evict the property.	Under§ 59.18.200, a 20days notice must be sent to evict the property.	Under RCW 7.28.050, a squatter may claim adverse possession after 7 years if he/she has continuously possessed the property for that duration along with either paying taxes or holding color of title for the same property.
West Virginia	Under W. Va. Code § 55-2-1, a squatter may claim continuous possession after residing on the property for at least 10 years.	Under § 55-3A-1  an immediate notice must be sent to evict the property.	Under § 37-6-5, a 30 days notice must be sent to evict the property.
Wyoming	Under § 1-3-103, a squatter may claim adverse possession after residing on the property for at least 10 years.	Under §1-21-1003, a 3 days notice must be sent to evict the property.	There is no provision for sending a notice of eviction to unknown persons. However, it is recommended to send a 30 days notice in case such an activity is noticed.

Less than 10 years

State	Adverse possession	Provision for holdover tenants	Provision for unknown persons	Additional notes, if any
Arkansas	Under  AR § 18-11-106, a squatter may claim adverse possession after residing on the property for at least 7 years.	Under A.C.A  18-60-304(3), a 3 days notice must be sent to evict the property.	Under AR § 18-17-704, a days notice must be sent to evict the property.	Under, the same provision (AR § 18-11-106), if the squatter held the color of title and paid taxes on the property or on property contiguous to the property to which they are claiming adverse possession then they may claim adverse possession.
California	Under Cal. Civ. Proc. Code § 325, a squatter may claim adverse possession after residing on the property for at least 5 years.	Under CA Civ Pro Code § 1161 (2) a 3 days notice must be sent to evict the property.	Under CA Code 1946.1, a 30 days notice must be sent to evict the property.
Florida	Under Fla. Stat. Ann. § 95.16, a squatter may claim adverse possession after residing on the property for at least 7 years.	Under § 83.56(3), a 3 days notice must be sent to evict the property.	Under Fla. Stat. Ann. § 83.57, a 15 days notice must be sent to evict the property.	Under the same provision (Fla. Stat. Ann. § 95.16), a squatter may claim adverse possession after 7 years if he/she has continuously possessed the property for that duration along with either paying taxes or holding color of title for the same property.
Montana	Under Mont. Code Ann. § 70-19-411, a squatter may claim adverse possession after residing on the property for at least 5 years.	Under § 70-24-422, a 3 days notice must be sent to evict the property.	Under § 70-24-441, a 30 days notice must be sent to evict the property.	Under the same provision ((Mont. Code Ann. § 70-19-411), a squatter may claim adverse possession after 5 years if he/she has continuously possessed the property for the duration along with paying taxes for the same property.
Tennessee	Under § 28-2-101, a squatter may claim adverse possession after residing on the property for at least 7 years.	Under § 66-28-505(a)(2), a 14 days notice must be sent to evict the property.	Under (§ 66-28-512, a 30 days notice must be sent to evict the property.	Under the same provision (§ 28-2-101), a squatter may claim adverse possession after 7 years provided he is residing in that property for the same duration along with holding the color of title.
Utah	Under § 78B-2-208, a squatter may claim adverse possession after residing on the property for at least 7 years.	Under § 78B-6-802, a 3 days notice must be sent to evict the property.	Under § 78B-6-802 (1)(b) (i), a 15 days notice must be sent to evict the property.

Some noteworthy pointers on squatters rights and adverse possession

Unique state laws

The state of Connecticut under Connecticut General Statutes Title 52. Civil Actions § 52-575 which talks about entry upon land to be made within fifteen years, and Rhode Island under R.I. Gen. Laws § 34-7-1 which describes conclusive title by peaceful possession under claim of title, have statutory provisions that state that in the case of a person claiming to have possession of the title of the property, a notice of intent to dispute can be sent to him/her. Such notice will help serve in interrupting the tolling of the statutory period, which in turn will prevent the possessor from acquiring rights through adverse possession by continued use. 

Further, under the unique law of the state of Massachusetts, under Mass. Gen. Laws ch. 185, § 53, if land is registered, it cannot be possessed adversely by Squatters right.

Adverse possession described differently is also adverse possession

Even if there is no mention of the term ‘adverse possession’, but all the conditions of the doctrine are fulfilled, it will be regarded as adverse possession, and the rightful owner will definitely get title to the property. For instance, the courts in Indiana list the elements as control, intent, notice, and duration. In the case of Garriott v. Peters, 878 N.E.2d. 431, 438 n.6 (Ind. Ct. App. 2007), the petition was filed seeking possession of an undeveloped wooden tract where the tract was given on rent to farmers for the purpose of selling timber, hunting, picking berries, driving vehicles, etc. The claimant built a fence on the property, which he had been utilizing for over 20 years. The Indiana Court of Appeals found that the claimant’s use demonstrated sufficient use of control, which was one of the elements from the list of elements (control, intent, notice, and duration) the Indiana courts considered for adverse possession of a property. As the party showed evidence of more than 10 years of possession, as required by state law, the court declared all the elements of an adverse possession claim satisfied. The Court also stated that, as the claimant was paying property taxes, he had acquired rights by adverse possession. 

Additional common law elements

In some states of the US, like Connecticut, Georgia, Mississippi, North Carolina, and Pennsylvania, there is an additional law element for the title of property for adverse possessors. Every state has one distinct element, let us see each of them in brief.

Connecticut 

The courts in Connecticut refer to an ‘ouster requirement’ which necessitates the alleged possessor to oust the true owner from possession.

Mississippi and Georgia

Further, Mississippi and Georgia add that possession must be peaceful for the 

Mississippi and Georgia add that possession must be peaceful for the duration of the possession.

North Carolina

North Carolina needs that the adverse possession use be “under known and visible lines and boundaries”.

Pennsylvania

The state of Pennsylvania dictates that the use of adverse possession be “distinct”.  

Landowners and investments in landlord insurance : an important perspective for understanding squatters rights

Investment in landlord insurance

As a landlord, one must ensure that their assets, especially assets, are fully covered, as squatters obviously will not vacate a property that easily. Thus, it is important that landowners fully prepare themselves for damage or retaliation on their part, and additional coverage with landlord insurance would obviously come to their rescue in case such a situation arises. 

Now you might wonder, “What exactly is landlord insurance?” Let’s find out!

What is landlord insurance 

A landlord’s insurance can be defined as insurance for a property or home that is being considered for the purpose of renting. A landlord’s insurance covers the risks associated with a rental property, including protecting the rental income. However, it must be noted that landlord insurance is different from homeowners insurance, as homeowners insurance covers the property where one is residing and only damages related to personal property are covered, as opposed to landlord insurance, where only rental properties are covered. 

Are landlord insurance policies affordable

Well, it depends on the type of coverage plan one chooses. The sum of insurance cover is based on several grounds, like the location of the property, the property’s occupancy, and the damage type, inter alia.

Note of caution

While there is no mandate, landlord insurance can help prevent catastrophic or huge damages that can occur while managing a property; however, such a policy can give you the peace of mind that your property is insured in case any mishap happens. Such policies cover everything from fire insurance to water insurance to theft and storm damage. Further, these policies even offer coverage in case a lawsuit is filed, thus, such insurance can help protect a landowner’s property from all the problems even before they begin.

Key takeaways : a recap on  squatters’ rights

• Squatters’ rights, or adverse possession, can be defined as those rights that a squatter may gain if he/she/they occupy a piece of land, an apartment, or a property for a specific-time period (as mentioned in that state) without the owner taking any measures or legal actions against them. 
• Adverse possession can be defined as the right of a squatter to claim ownership of a piece of land if it is not challenged or objected to by the owner for a set period of time.
• In order to claim ownership of a piece of land, a squatter has to demonstrate the actual, open, notorious, exclusive, hostile, and continuous use of the land.
• A squatter may reside on a piece of land even  when he has no title, right, or lease on it.
• A landowner may lose his precious land if there is no inspection of the property for several years at a stretch. He could lose it to an individual who claims he has the right to possess a piece of land because he took care of the land for several years and used the land.
• The time range for establishing squatters’ rights varies from state to state in the USA and ranges anywhere between 7 to 20 years.
• Trespassing is not the same as squatting, but there is a possibility that trespassers may turn into squatters at some point in time. 
• Squatting could be regarded as a form of trespassing, but this act involves the intention of claiming ownership or permanent residency on that piece of land. 
• To evict  a squatter from a piece of land, it is crucial that property owners follow a proper eviction process, from calling  local enforcement to filing an unlawful detainer action. 
• In some instances, squatters may pay property taxes to make their adverse possession claim concrete, but landowners must continue to pay the property tax no matter what.
• To avoid any issues, it is important that property owners and landowners become familiar with squatters’ rights. Further, in case of any issues on such matters, it is advisable that owners consult an attorney to ensure the situation is handled properly.

Conclusion

As discussed above, every state in the USA has its own legislation on squatters’ rights and adverse possession. For instance, certain states require a continuous occupancy of seven years to obtain possession of any privately-owned property, in addition to other essentials. Also, state laws regarding squatters and adverse possession can be suppressed by local laws to some extent in some cases. 

For instance, in the states of California or Montana, adverse possession rights can be granted to squatters if they occupy a piece of land continuously for 5 years , thus, they would obtain the legal right to remain on the property even when there is no lease agreement signed between the squatter and the landowner. Further, there is a possibility that a trespasser barges into an unoccupied property and starts to live there. This case could be more common in investment properties that do not have tenants residing there. Additionally, if the trespasser is caught living there before the time passes (for instance, in the states of California or Montana, the time period to raise an objection is 5 years), the squatters can be removed by the police and an arrest can be made, too; however, squatters who go undetected and stay longer than the time period will need a legal eviction notice to be sent for vacating the premises. At times, considering the long and tiresome eviction proceedings, a property owner may by himself pay the squatters to get off the property, thus saving both time and money.

The adverse possession requirement varies from state to state, which is why landowners must be aware of such laws and lawyers dealing with real-estate property cases must ensure that they do not depend on a general black and white principle they learned in their law school in matters relating to adverse possession. Instead, they must pay close attention to the common law rules of the relevant jurisdiction.

The vague idea of someone snatching away your precious land, for which you put in all your savings and hard work, seems quite unfathomable, but think again! The rights granted to squatters are quite real, and there have been numerous instances in the history of the USA where squatters have exercised their rights, as we noticed in the context of all the case laws and landmark judgments discussed throughout the article. Additionally, while learning to be a landlord, ensure you are well-acquainted with the local laws on squatters in the state you have your property in and the tenants you have residing there. 

The main motive of writing this article was to inform you about all the laws and measures to be taken in case of such an unfortunate occurrence on your property and to seek legal assistance in case such an issue occurs! I hope it helps! 

Note of caution: Don’t wait until you are at the mercy of squatters! Act fast, act right! 

Some frequently asked questions (FAQs) on squatters rights in the United States

Who is a squatter?

Usually, a squatter is any individual who resides on a property in whole or in part when he has  no legal claim to do so. A squatter resides on the property without having any title, right, or lease and may even gain adverse possession of such a property through the process of involuntary transfer.

Can a property owner lose his land? 

A property owner may lose his precious land if there is no inspection of the property by him for several years at a stretch. He could lose it to an individual who claims he has the right to possess a piece of land for he took care of the land for several years and used the land. So, to answer the question, yes, a property owner can lose a piece of land; further, there have been several instances in the US where such incidents have occurred. 

Do squatters really have rights?

Yes. In brief, there are common cases when state laws protect squatters:

• If they pay property taxes and other essential home estate fees uninterruptedly;
• If they have not damaged any part of the property while entering it or living there for a specific period;
• If they have not received any letters of eviction from the property owners.

Why exactly do squatters have such rights?

The main object of enacting squatters rights in every state of the USA is to discourage the usage of ‘vigilante justice’. If landowners or owners of properties where squatters have started to reside were allowed to use violence or threaten such squatters to vacate the property, the situation would become quite unpleasant and would create an atmosphere of vigilante justice that could spread in other areas of life, thus narrowing the safety an otherwise resident would expect at his/her place of residence. 

Simply put, squatters have such rights to ensure that ‘justice can be facilitated’ in a broader sense. Such rights have similarities with tenants rights at times, as tenants rights were enacted to protect a renter/tenant from the ill-treatment of landlords. Such laws help ensure the rights of each party involved are safeguarded to keep the real estate market stable and negotiations (mostly) peaceful.

What are the legal requirements to be met for a squatter to claim adverse possession?

For a squatter to claim adverse possession, there are some legal requirements that need to be met, some of them are as follows: 

1. The squatter must possess the property physically.
2. The squatter must make it apparent and obvious that they are residing on the property. 
3. The squatter must prove exclusivity in their possession. 
4. The squatter must not have the authorization of gaining access or occupying the land.
5. The squatter must reside on the property for a continuous time period (the duration varying from state to state, as discussed in the above passages). 

Do squatters pay property taxes?

Well, there is no straight-jacket answer to this; however, there have been some instances in the USA where property taxes were paid by squatters in order to solidify their claim of adverse possession of the property. A point must be noted that some states do not have the prerequisite of paying property taxes as part of the claim. 

Furthermore, even if a squatter is paying property taxes on any property of which you are the rightful owner, you must not skip paying the tax. This is advised to prevent squatters from claiming validity in any way over that property. 

Can the rights of a squatter be blocked? 

Squatters lose their legal rights to possess land or a home in the following cases:

• They have never paid any taxes for the property or any other essential home estate fees;
• They have ignored eviction notices from landlords and did not move out within the required time;
• They have significantly ruined the property or its parts.

Is a squatter actually a trespasser?

Squatters tend to get inside a property if it is left open, for instance, through an open or already broken window; whereas trespassers, usually, break into buildings and start living there or enter the property to serve their motives, whatever it may be.  

Why is it essential for a property owner to be well-acquainted with squatters rights?

The idea of someone illegitimately barging into your property and taking possession of it may seem impossible at first, but landowners have to beware because such instances do occur. Further, there are squatters’ rights specifically designed for such an activity, so owners have to be very  cautious of such activities.  

One might think a squatter is a homeless person with limited legal rights to acquire the property, it is advisable not to make such assumptions, but to verify instead! There could be numerous reasons why squatters’ rights come into play, like estate disputes or a holdover tenant from a previously rented property. Which is why, it is crucial that landowners be aware of such norms and legal rights and the process to be followed to evict tenants and squatters legitimately and in a proper and just manner. 

Is it advisable that landowners seek legal help if such a squatters’ rights situation arises?

Yes, yes, and yes! It is always a good idea to seek legal advice from an attorney should any questions regarding squatters and their rights arise.

References

• https://review42.com/resources/squatter-rights/ 
• https://lawrina.org/guides/real-estate/squatters-rights/
• https://andersonadvisors.com/squatters-rights/
• https://www.investopedia.com/terms/s/squatter.asp
• https://www.americanbar.org/groups/real_property_trust_estate/publications/probate-property-magazine/2016/january_february_2016/2016_aba_rpte_pp_v30_1_article_leitman_bailey_eichel_analyzing_adverse_possession_laws_cases_states_east_mississippi_river/ 
• Analyzing Adverse Possession Laws and Cases of the States East of the Mississippi River, Adam Leitman Bailey, Matthew Eichel

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The following article has been written by Ishani Samajpati, pursuing B.A. LL.B. (Hons) under the University of Calcutta. The article attempts to provide a meaningful insight into the patent policy of the US government. Further, it discusses how the US Government promotes policies to protect patent rights both nationally and internationally.

It has been published by Rachit Garg.

Introduction

“The very first official thing I did, in my administration—and it was on the very first day of it, too—was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab, and couldn’t travel any way but sideways or backways.”

The titular Yankee says the above in eminent American writer Mark Twain’s 1889 comic novel “A Connecticut Yankee in King Arthur’s Court”. While the quote is just a literary example, it perfectly illustrates the importance of a sound and comprehensive patent policy in any country. 

By a patent, the owner gets an exclusive right to manufacture, use, sell, and market any creation protected by it. It provides the inventor a temporary monopoly for a limited time to compensate the inventor financially to reimburse the costs spent during the invention. On the other hand, filing a patent requires disclosing the details of the invention in public domain. In this regard, the patent policy of the United States government has always acted as a crucial means to promote innovation, creativity and development. The United States patent system is probably the oldest element even enshrined in its Constitution. The policy is mainly driven by the quest for scientific and technological advancement along with economic development. As technology advances, the US government has established a number of initiatives that help to protect the rights of inventors while also encouraging innovation. These initiatives provide a comprehensive overview of the US government’s patent policy and are designed to ensure that inventors are adequately compensated for their work.

The article attempts to provide a comprehensive overview of all the issues regarding patent policy in the United States.

Statutes and regulations governing patent policy in the US

The US patent policy is an important policy matter of the US Government and is shaped by the US Congress. It is governed by various important patent law doctrines regarding various aspects of a patent, including the specifications and claims of the patent. There are also some legal doctrines on the matters of patentability, enforcement, and patent validity. Patent matters are governed by various federal statutes and regulations guided by the US Constitution.

The patent policy of the US government is governed by multiple federal statutes, codes, regulations and case laws. The origin of the right of the US government to grant patents is based on the US Constitution. Title 35 of the United States Code governs laws regarding patents in the US, while essential federal regulations are governed by Title 37 of the Code of Federal Regulations.

In addition to these, the services and procedures regarding patent applications are supervised and approved by the federal agency named United States Patent and Trademark Office (USPTO). Online services for patent application search are also provided by the USPTO. It is the main agency governing and advocating US government patent policies.

Constitution of the United States of America

As a constitutional federal democratic republic, the Constitution and federal laws serve as the “supreme law of the land,” as laid down under Article VI Clause 2, known as the Supremacy Clause.

Article I, Section 8, Clause 8 of the US Constitution provides Congress with the power to deal with matters regarding intellectual property. It bestows the Congress with the power to promote the “Progress of Science and useful Arts” and also grants the right to issue patents to writers and inventors through providing the exclusive right for the creation or invention for a particular limited time.

United States Code 

Title 35 of the United States Code governs all aspects of patent law in the US. It currently contains 37 Chapters and 376 Sections. It contains four parts, namely Part I, II, III and IV and deals with the working principles of USPTO, patentability of inventions and procedures regarding grant of patents, protection of rights and Patent Cooperation Treaty respectively.

United States Code of Federal Regulations

Title 37 is the set of rules and regulations on patents (as well as trademarks and copyrights) issued by federal agencies of the US. It is the 37th title comprising the United States Code of Federal Regulations and contains the codified version of the general and permanent rules established by the federal agencies. It contains four chapters and additionally, Chapter V is reserved. For the purpose of patents, Chapter I deals with USPTO and Department of Commerce. Subchapter A under Chapter I contains information regarding patents.

Leahy-Smith America Invents Act (AIA) of 2011

The Leahy-Smith America Invents Act (AIA) of 2011 is the most important US federal statute on supervising patent issues. It was brought into law in 2011, signed by the then US President Barack Obama. The Act of 2011 contains some important provisions which have helped to modernize the US patent policy. It sought to create a cost-effective and inventor-friendly patent system that enables the USPTO to act on granting patent rights with more resources, combined with the harmonization of the US patent system with the international patent systems. Some of the important provisions of the Act governing the US patent policy are as follows:

First-to-file and effective filing date

The Act amended Section 100 of the Title 35 of the United States Code which deals with patentability of inventions and grant of patents. Earlier, the US patent law used to grant patent rights following the system of “first-to-invent.” Under the concept of “first-to-invent”, the patent right was granted to the individual who was the first inventor. In case more than one inventor used to claim as the inventor of the same invention, the USPTO used to conduct an interference proceeding under the pre-AIA 35 U.S.C. 135(a) to determine the person to grant patent rights.

It was a complicated process as well as time-consuming and expensive. Thus, the Act replaced it with the system of “first-to-file.” Under the “first-to-file” system, the patent right is granted to the person who files the patent application first. 

The effective filing date, under this Act, is considered to be the actual filing date of the patent application. The person filing the patent application at the earliest is entitled to a right of priority. 

For reissuing of patents of a claimed invention, the effective filing date is determined by deeming the claim to the invention in the patent for which reissue has been sought, as mentioned in Section 3(2) of the Act. 

The “first-to-file” system is applicable to all patent applications filed on or after March 16, 2013.

Grace period

The law established a one year grace period for disclosure of inventions. It means that the inventors have a period of one year from the date of public disclosure of their invention to file a patent application. The application can also be filed by the person who obtained the invention from the inventor. This is an exception to the concept of prior art, i.e., the novelty and non-obvious subject matter which acts as criteria for patent subject matter eligibility.

Derivation proceedings and  Patent Trial and Appeal Board 

The Act replaced the previous interference proceeding with derivation proceeding and Board of Patent Appeals and Interferences (BPAI) with the Patent Trial and Appeal Board, commonly known as “the Board.”

As mentioned earlier, in case of multiple patent applications filed for a single invention, the interference proceeding used to determine which patent application was filed by the first inventor by the BPAI which was an expensive and time-consuming procedure. Hence, it was replaced by the derivation proceeding governed by the Patent Trial and Appeal Board.

The derivation proceeding is conducted by the Board to determine the followings:

• Whether the claimed invention was derived by an inventor named in any earlier patent application from the one named in the petitioner’s application?
• Whether the earlier said application was filed without authorization?

Under first-to-file provisions, the petition to institute a derivation proceeding should be filed within 12 months of the publication of the claimed invention which is the same as the earlier application filed. The petition should be supported by substantial evidence. Applicants filing patent applications on or after March 16, 2013 are eligible to file a petition for the proceeding.

Definition of prior art

The Act broadened the definition of “prior art.” It refers to evidence which shows that the claimed invention is already known. It does not necessarily require the invention available to the public or available commercially, but the evidence that the same technology has been used to make or describe something similar to the invention earlier. 

Under 35 U.S. Code § 102, as amended by the Act, prior art includes:

1. The availability of the claimed invention to the public before the effective filing date of the claimed invention; or,
2. The claimed invention was either described in a patent issued or in a patent application filed before the effective filing date, named another person as inventor.

However, Sections 102(b)(1) and 102(b)(2) deal with certain exceptions to prior art with regard to disclosures made one year or less before the effective filing date and disclosure that the subject matter was obtained from the inventor or joint-inventor, directly or indirectly and has been disclosed by the third party who obtained it.

Validity of granted patents

Another significant inclusion by this Act was the introduction of two new procedures namely Post-Grant Review and Inter Partes Review to challenge the validity of the patent by a third party. 

A third-party may file a petition for a Post-Grant Review seeking review of the granted patent within 9 months from the date of the grant of patent. The petition of Post-Grant Review will be granted if the patent contains one or more claims considered to be ineligible for patentability on any ground under § 282(b)(2) or (3). If the Post-Grant Review proceeding is not dismissed, the Board shall determine the issue within 1 year, which can be extended maximum to 6 months more for “good cause.” 

On the other hand, Inter Partes Review can be instituted challenging the patentability under § 102 or 103, and on the basis of prior art by a third party.

The proceeding of Inter Partes Review begins 9 months after the grant of the patent is over and if the Post-Grant Review has been terminated. Similar to  Post-Grant Review proceeding, the Board shall determine the issue within 1 year, which can be extended maximum to 6 months more for “good cause.”

Both the proceedings of Post-Grant Review and Inter Partes Review can be instituted for any patent issued before, on, or after September 16, 2012.

Bayh–Dole Act of 1980

The Bayh–Dole Act of 1980, also known as the University and Small Business Patent Procedures Act of 1980, is another important piece of federal law that governs the US government patent policy on funding, ownership and commercialization of patents by institutions. In other words, it enables institutions such as universities, non-profit research organizations, small businesses etc. to own, apply for patents or commercialize the inventions whose research has been funded by the federal government under their institution. 

The intention behind the enactment of the Act was to create a uniform patent policy for government-sponsored research and development. It encouraged the commercialization of invented technology and also to patent the same. Patent ownerships help in generating additional funds required for the necessary investment for bringing the new technology into market, since the research funding alone in such cases may not be enough. Hence, the Act focused on commercialization and ownership of the patent of the outcome of federally funded research.

However, there are some confusions and controversies regarding the ownership of the patent under this Act, particularly in regard to the “march-in” rights. The concept of march-in rights allows the government or federally-funded agencies access to use the research they funded in the institutions for meeting agency missions, such as lowering the prices of a life-saving drug. This creates controversy in regards to depriving the original inventor of the commercial benefits.

The US Supreme Court, in the case of Stanford Junior University v. Roche Molecular Systems, Inc. (2011), clarified that the original ownership of the patent always vests with the inventor and that the employers of the inventors, for example, the federal government can only own the patent when the inventors themselves assign the patent explicitly. The Court also held that the Bayh-Dole Act did not change the Intellectual Property Clause of the Constitution namely Article I, Section 8, Clause 8.

Overview of US Government Patent Policy

The US government’s patent policies regarding domestic and international patents are led by the federal agency named the United States Patent and Trademark Office (USPTO). The agency also seeks to protect intellectual property rights relating to US patents, both national and international. This agency is responsible for examining patent applications and granting patent rights. As such, it is important for inventors to understand the US government’s patent policies in order to protect their inventions.

USPTO also represents the US government during the signing of bilateral and multilateral treaties regarding intellectual property rights. Over the years, it has also successfully negotiated and some important international patent related treaties. Some of the treaties include  Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995, the Patent Cooperation Treaty (PCT), 1970 and the Patent Law Treaty (PLT), 2000. It also continues to monitor the proper enforcement of all these treaties. Apart from this, the US government has been a member of WIPO since 1971 and is an active participant in the organization’s activities. In addition, the US is a member of the Intellectual Property 5 (IP5) agreement, which is a cooperation between the US, Europe, Japan, China, and South Korea to improve patent quality and efficiency.

The patent policies of the US government can be mainly classified into domestic and international patent policies. According to the USPTO, based on the geographical areas, the US government patent policy can be classified into the followings:

• Government patent policies;
• Patent-related international treaty negotiations and its enforcement;
• Implementation of international patent related treaty obligations in the US;
• Providing technical assistance to US and foreign officials on patent-related matters.

In addition, the US government has established several initiatives to help inventors protect their inventions. These initiatives include the International Union for the Protection of New Varieties of Plants (UPOV), the Intellectual Property 5 (IP5), and the Digital and new technology designs. The UPOV is an international body that works to protect the rights of plant breeders, while the IP5 and Digital and new technology designs are designed to protect the rights of inventors in the digital age.

WIPO, IP5, ID5, and the International Union for the Protection of New Varieties of Plants (UPOV)

The World Intellectual Property Organization (WIPO) is an international organization that works to promote intellectual property rights around the world. WIPO is responsible for administering the Patent Cooperation Treaty (PCT), which is an international agreement that simplifies the process of filing for a patent in different countries. WIPO also works to promote the protection of intellectual property through international treaties and agreements.

The US is also a member of the Intellectual Property 5 (IP5) agreement, which is a cooperation between the US, Europe, Japan, China, and South Korea to improve patent quality and efficiency. The IP5 is responsible for developing and maintaining a common set of standards for patent applications, which helps to ensure that patent applications are examined in a consistent and efficient manner.

In addition, the US is a member of the International Union for the Protection of New Varieties of Plants (UPOV). UPOV is an international organization that works to protect the rights of plant breeders by granting them exclusive rights to their inventions. UPOV also works to ensure that plant breeders are adequately compensated for their work.

Types of patents under the patent policies of the US Government

Besides offering protection for the invention, the grant of patent provides the inventor with certain rights namely, “the right to exclude others from making, using, offering for sale, or selling.” An invention eligible for patentability should be legal, novel, useful to humanity and non-obvious. 

The US government has different types of policies for each type of patent. Before discussing the patent policies of the US government, let’s take a look at the types of patents available in the US. The three types of patents are utility, design and plant. 

Utility patents

Based on the usefulness of a product, utility patents are granted. These are granted for a new invention of any useful items. In other words, utility patents grant protection to the usefulness or the functional aspects of an invention. Utility patents are the most frequently referenced type of patents in the US. It is valid for 20 years from the date on which the patent application is filed with maintenance fees. However, the patent term can be extended or adjusted under specific circumstances.

Design patents 

Design patents provide protection to industrial designs, i.e., the ornamental designing elements in a product. These patents serve no purpose in invention other than protecting the design element. Apart from design patents, industrial designs can also be protected by trademarks or copyrights in the US. Design patents are valid for a term of 15 years in the US. For design patents, no maintenance fee is required.

Plant patents

Plant patents offer protection to new types of flowering plants that can be produced or bred asexually. Asexual reproduction means that the plant should be produced without using fertilized seeds or pollen grains. The asexual breeding technique includes rooting cuttings, layering, budding, grafting or genetically engineering plants. In such a case, the newly produced plant variety is protected by a plant patent. The plant can also be protected by utility patents and plant variety protection. USPTO provides plant patents for newly produced asexual plants and utility patents for genes in cases of genetically modified plants, traits and plant parts etc. 

New varieties of seeds, tubers, sexually and asexually reproduced plants are also provided intellectual property protections by the U.S. Department of Agriculture (USDA) through its Plant Variety Protection Office (PVPO). 

The USPTO, in collaboration with the PVPO and other federal governmental and international organizations, coordinates US patent policies and their development. The patent policies for each of the patents are discussed below in more detail.

US Government patent policies on utility patents

Utility patent policies of the US government are dictated by international treaties on patents. The treaties include Patent Cooperation Treaty (1970) and Patent Law Treaty (2000).

The USPTO has single handedly taken multiple patent policies and also collaborated with several international organizations regarding policies on utility patents. 

Patent Cooperation Treaty (PCT)

Concluded in 1970, Patent Cooperation Treaty (PCT) is an international treaty on patent-related intellectual rights administered by  World Intellectual Property Organization (WIPO), which made seeking international patent application easier. If an inventor needs a patent protection internationally or across multiple nations in the world, he or she can achieve it by filing a single “international” patent application. Unlike the Paris Convention, which required the applicant to file patent applications in all the countries of the applicant’s interest within 12 months from the date of filing patent application in the home country, PCT provides a consolidated procedure with multinational legal effects. PCT makes it possible for the inventor to file a single international patent application, which, if not rejected, will enable patent protection simultaneously in multiple nations or at an international level.

The main procedure for patent application under the PCT is to file only one patent application in the home country of the applicant. The application would then be searched by at least one International search authority (ISA). Next, the patent application would be examined by the selected  International Preliminary Examining Authority (IPEA) who would provide their written opinion.

Currently, PCT has 157 member countries. The single patent application has the same effect in all the 157 member countries as filing separate patent applications in all the participating member countries. PCT enables the applicant to postpone the national fees for patent applications charged by the USPTO during the examination of the patent application. PCT also allows the inventor to know the likelihood of getting the patent. The procedures of filing a patent application under PCT includes the following:

• After filing the PCT application, the applicant is informed about the potential patentability of the invention from WIPO.
• The WIPO publishes the PCT application informing the general public and potential investors about the invention.
• National filing, translation of the patent application and fees are due 30 months from the filing of the first patent application in the home country.
• The national patent offices in the PCT member countries where the applicant wants to get patent protection decide whether or not to grant a patent protection for the invention, based on the potential patentability information.

The United States of America is a signatory of the PCT from 24 January 1978 with the declarations provided under Articles 64(3)(a) and 64(4)(a). For the US, the patent protection provided by PCT extends to all areas where the US is internationally responsible.

Patent Law Treaty (PLT)

Patent Law Treaty (PLT) is also a treaty on international patent protections, adopted in 2000 with the aim to make the procedures of patent applications easier and more user-friendly. According to the WIPO, the purpose of PLT is to “to harmonize and streamline formal procedures in respect of national and regional patent applications and patents.” 

Currently, there are 43 member states. The treaty is open to any member states of the WIPO or states which are signatories to the Paris Convention, which means they can be signatories to PLT if they want. Certain intergovernmental organizations are also allowed to be signatories.

The US signed the treaty in 2000. However, the ratifications were done 13 years later. In order to implement the provisions of the PLT into the US patent laws and practices, the Congress passed the Patent Law Treaties Implementation Act of 2012. Then, the PLT was finally ratified in 2013 with reservation under Article 23(1) of the PLT.

Collaborations by the USPTO

Apart from the two treaties, the USPTO has collaborated with the WIPO and other nations. They are as follows:

Standing Committee on the Law of Patents (SCP)

In order to create a developed and well-balanced effective eco-system for patents and related intellectual property rights globally, the Standing Committee on the Law of Patents (SCP) was formed in 1998. It serves as a forum to “discuss issues, facilitate coordination and provide guidance” on patent law and its development internationally. All the member states of WIPO signatories of the Paris Convention are part of this committee. Member states of the UN who are not members of WIPO and non-signatories to the Paris Convention can also participate in SCP as observers. Accredited intergovernmental and non-governmental organizations are also allowed to participate in the SCP as observers. The SCP regularly conducts meetings and sessions between member countries. SCP conducted a draft of the Substantive Patent Law Treaty but was put on hold in 2006 due to lack of consensus between its members.

The USPTO played a huge role in the SCP in helping to harmonize the laws and procedures regarding patents and its application internationally. In addition to this, the USPTO took additional collaborative initiatives such as IP5 and Trilateral Offices to enhance the quality and benefit the patent users.

Five IP offices (IP5)

IP5 was formed to make the patent examination process efficient on an international level. IP5 is a forum containing five countries with the largest intellectual property offices and strong intellectual property laws. The five members in this forum are the US, Europe, Japan, Korea and China. Along with the USPTO, the four other patent offices which are part of this collaboration are the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KPO), and the National Intellectual Property Administration in China (CNIPA). 

It was launched in 2007 to exchange knowledge, to improve patent qualities, reduce workload and develop the international patent system as a whole. USPTO, in collaboration with IP5, works to make patent services easier and accessible to all.

For the first 10 years of its establishment, the main focus of IP5 was to improve patent examination quality and efficiency, reduce duplicate workloads and guarantee the rights bestowed by patent.

From 2017 onwards, IP5 focused more on harmonizing the procedures regarding patents along with providing a cost-effective and user-friendly patent service. In 2019, it also started paying special attention to new emerging technologies (NET) and artificial intelligence (AI).

In order to achieve the goals, IP5 has set three working groups namely WG1, WG2 and WG3. WG1 works to harmonize traditional patent classification systems, such as Cooperative Patent Classification (CPC) and FI (File Indexing) schemes. It is also working to harmonize the regional patent classification systems with the International Patent Classification (IPC) scheme. The USPTO significantly contributes to the improvement of the classification system by coordinating with CPC.

To improve efficiency and provide user-friendly services, the WG2 works on creating a global dossier through its  Global Dossier Task Force (GDTF) founded in 2012. It has envisioned five priorities on which each of the members is working to improve. The five priorities set up by the IP5 are:

• Improving alerting features through email and RSS feeds for the IP5 members for  any file wrapper changes.
• Managing patent related documents by both users and patent offices through the  promotion of XML format.
• Standardization of a global mapping table which includes applicants’ details in the respective languages to maintain uniformity and prevent mistakes.
• Promotion of the inquiry of legal status by the users and public in general. 

The above four priorities are led by EPO (alert), JPO (Promotion of XML format), KIPO (Standardizing applicants’ information) and CNIPA (promotion of inquiry of legal status by users and public).

The final priority is to enable inter-office document sharing for any official requirements. USPTO is actively leading this to make it possible.

Apart from this, in 2013, the USPTO was a key initiator in formulating the  Patent Information Policy which aspires in making a system to lower barriers from obtaining patent related information from the IP5 office.

In order to eliminate unnecessary workload and duplication of systems, the WG3 is working on improving the quality of search and examination results of patents. It also includes reducing time through work-sharing. Needless to say, the USPTO acts as an important contributor to this initiative.

Trilateral Offices

The Trilateral Offices is an international cooperation to improve the processing of filed patent offices worldwide. It also sought to reduce workload and also focused on paperless administration and increased attention to electronic means for filing patent applications. It particularly focused on international patent applications based on PCT. 

The initiative of Trilateral Offices is the result of trilateral cooperation between three patent offices, namely, United States Patent and Trademark Office, the European Patent Office, and the Japan Patent Office since 1983. The three patent offices exchange technical know-how and incorporate advancement of information technology through the establishment of an international standard by developing patent search tools and sharing the practices of patent examination.

As a part of the Trilateral Offices, the USPTO undertook several pilot projects for utilizing the PCT work products in the Patent Prosecution Highway (PPH) framework which speeds up the examination process for patent applications. The USPTO conducted two separate PPH pilot programs with the JPO and EPO. 

Trilateral Offices also perform multiple comparative study reports on patent features such as novelty, disclosure, claims and non-obviousness.

WIPO Group B Activities

WIPO Group B is the core group of WIPO which takes decisions on key matters regarding patent policies and often propose topics to develop the patent system internationally. It consists of highly industrialized countries in the world where a large number of patents are filed regularly.

After the 22nd Trilateral Conference in 2004, the USPTO took a step ahead and invited all the member states of the European Patent Convention, the European Commission, the European Patent Office, Japan, Australia and Canada for a separate meeting hosted by USPTO on substantive harmonization of international patent law. The meeting resulted in a Statement of Intent re: Patent Law Harmonization. As a part of this process, two working groups were formed. The first group works to reduce workload and improve harmonization and the second group focuses on development of intellectual property rights. Together with the Trilateral working group, it also focuses on overall development of patent policies of the US and internationally,

USPTO patent worksharing

The efforts of patent worksharing were first led by IP5, consisting of five members. Soon, with time, other nations in the world also started filing a significant number of patent applications as they continued to occupy a global place as an innovation hub. This led to two options: either to increase the member intake capacity of IP5 or to create a new forum for the budding innovation hub countries. In order to solve the issue, USPTO took a key step here by creating some unique gateways for reducing the inefficiencies of the intellectual property offices due to a lack of resources.

The USPTO patent worksharing strives for an inter-office collaboration which reduces the burden of extra patent filing, reduces time and improves the quality of the patent procedures. USPTO creates arrangements of patent worksharing. It enables all the patent offices for a collaboration regarding examinations of similarly or commonly filed patents. The patent worksharing initiative of USPTO is based upon the principles of foreign priority under the Paris Convention or  Patent Cooperation Treaty.

The patent worksharing arrangement by USPTO are as follows:

• Patent Prosecution Highway (PPH)  enables patent worksharing between two or more than two IP offices. Suppose an applicant wants to get a patent from two separate locations and has received an opinion in his or her favor from one patent office, he or she is able to request first-track examination to the second IP office. USPTO provides services of first-track examination  and accelerated examinations of patent applications and is a party to multiple PPH arrangements including IP5 PPH arrangements  and Global PPH.
• U.S. patents grant the users to obtain patents abroad based on the US patent. Accelerated Patent Grant (APG) and Parallel Patent Grant (PPG) are the two arrangements which enable them. APG is an arrangement between USPTO and its partner IP offices, which allows a recipient of a US patent to request a patent in the partner country based on the US patent without subsequent examination. PPG allows granting a foreign patent application which has been filed for a similar and approved patent application filed in USPTO.
• Other patent worksharing arrangements by the USPTO include the pilot programs like PCT Collaborative Search and Examination Pilot (CS&E) and Expanded Collaborative Search Pilot (CSP) to improve patent search.

Advancement of green technology by patent worksharing

The USPTO has also initiated steps to encourage the advancement of green technology by using the patent worksharing arrangements. USPTO has formed a collaboration together with the National Oceanic and Atmospheric Administration (NOAA) for a worksharing program that focuses on both intellectual property rights and climate and environmental technologies. Through the collaboration, the USPTO will share its knowledge for research and technology to NOAA. On the other hand, NOAA has decided to help the USPTO in proceeding for examination of patent applications regarding climate and environmental technologies. 

USPTO is also a partner to the WIPO initiative promoting green technology, WIPO GREEN. The NOAA has decided to advise the USPTO on green energy initiatives, too.

US Government patent policies on industrial designs

Industrial design refers to the visual design and orientation of a product. It helps in increasing the attractiveness of a product, thus, helping to increase marketability and commercial value. Industrial designs are protected by intellectual property rights. While industrial designs can be protected by trademarks and copyrights, another way to protect it is design patent. Offered for a term of 15 years, it requires no maintenance fees.

The US government has taken certain noteworthy policies to protect the intellectual property rights on industrial designs through design patents by means of becoming signatories to certain international treaties and through collaboration. 

Industrial Design Forum (ID5)

Similarly to IP5, a collaboration by five of the leading patent offices in the world to focus, improve and harmonize international patent laws and related procedures, ID5 is the collaboration of five of the largest industrial design offices in the world. The five offices collaborating on ID5 are the China National IP Office (CNIPA), the European Union IP Office (EUIPO), the Japan Patent Office (JPO), the Korea Intellectual Property Office (KIPO) and the USPTO. According to USPTO, the five industrial design offices together as ID5,  represent approximately 90% of application fillings on industrial design applications annually.

As a member of the ID5, the USPTO works on to increase effectiveness and consistency of industrial design protection, improving practices and policies on the examination procedures of design registration applications and identifying and creating solutions for ongoing challenges and problems. It also takes initiatives to promote sustainable development.

Recently, in April 2023, as an ID5 member, the USPTO has announced Trademarks for Humanity awards to provide recognition to brand-owners who are working to solve humanitarian challenges, especially in regards to climate and environmental issues. 

Geneva Act of the Hague Agreement 

The Geneva Act (1999) of the Hague Agreement, also known as the Hague Agreement, provides the same intellectual property rights to design patents as the Patent Cooperation Treaty (PCT) provides to utility patents and the Madrid Protocol for trademarks. It deals with the international registration of industrial designs. It enables the applicant to file a single design patent application and that application, if approved, will grant the applicant design protection rights to all the member states of the Hague Agreement. The agreement was adopted in 1925 to govern the international registration of any design with minimal formalities by increasing efficiency and reducing workload through a cost-effective system.

The design registration under the Hague Agreement can only be obtained by a natural person through filing an application for registering the design with WIPO. The registration can be renewed or modified by a single step. The all-inclusive facility of an international filing of registration for industrial designs saves the applicant both time and money. Additionally, it offers protection for industrial designs not only in the home country but internationally. 

The US joined the Hague Agreement in 2015. In 2012, the Patent Law Treaties Implementation Act of 2012 (PLTIA) was passed by the US Congress. Title I of the PLTIA provided provisions to implement the Hague Agreement in the US. The provisions enabled USPTO to allow US applicants to file international design applications as an office of indirect filing by using Form DM/1 and appropriate fees. It also allows the applicant to designate the US for offering design protection while filing international design registration applications.

Hague Working Group

Under the Hague System for the International Registration of Designs, it has multiple working groups to monitor and further develop the processes of registration by modernization. The Hague Working Group also focuses on improving operational efficiencies regarding the registration processes.

The US government is one of the active participants of the Working group and forward their opinions and suggestions at the annual WIPO meetings. It particularly focuses on improving efficiencies of the processes to ensure user-friendly service.

Standing Committee for the Law of Trademarks, Industrial Design, and Geographical Indications (SCT)

The Standing Committee for the Law of Trademarks, Industrial Design, and Geographical Indications (SCT) is an initiative by the WIPO, formed in 1998, with an intention to provide its members a platform for discussion of ideas and suggestions for the development of international law on intellectual property rights, particularly on laws on areas like trademarks, industrial designs and geographical indication. All member states of WIPO and Paris Union for the Protection of Industrial Property can be a member of this committee. Member states of the United Nations, designated WIPO observers (these include certain intergovernmental organizations, non-governmental organizations, industry groups and other stakeholders) are also allowed to join the committee as observers. The SCT holds regular sessions and annual meetings to discuss relevant issues on trademarks, industrial designs and geographical indications and find solutions.

The US government and USPTO, as members of the committee, take relevant steps to make the missions of the committee successful.

US Government patent policies on plant and plant variety protection

New plant varieties are protected under intellectual property rights in the US. The Plant Variety Protection Office (PVPO) works closely with USPTO to ensure patent protections to new breeds or species of plants. The history of plant patents in the US goes back to the enactment of the Plant Patent Act of 1930. The US government is also a signatory to key international treaties governing the plant patents.

International Union for the Protection of New Varieties of Plants (UPOV)

The International Union for the Protection of New Varieties of Plants (UPOV) is an international organization established by the International Convention of Protection of New Varieties of Plants, also known as UPOV Convention in 1961. The Convention was subsequently revised in 1972, 1978 and 1991. It is an intergovernmental organization with its headquarters in Geneva, Switzerland. The mission of the UPOV is to promote and develop effective practices and procedures of plant variety procedures, including the steps of patent examination. It encourages development of new varieties of plants and plant breeding with benefits to the society at large through providing them intellectual property rights, known as breeder’s rights. UPOV adopts a sui generis system of plant protection that suits the individual needs of plant breeders.

As of September 18, 2022, UPOV has a total of 78 members. 17 states are bound by the 1978 Act of the UPOV Convention.  59 States and 2 organizations are bound by the 1991 Act. 19 states and one intergovernmental organization named African Regional Intellectual Property Organization (ARIPO), consisting of 20 member states of the African continent, have initiated the procedure to accede to the UPOV Convention.

The main objectives of the UPOV are as follows:

• To provide and develop legal, administrative and technical guidance for protection of new plant varieties;
• Assisting states and organizations to develop their own effective legislations regarding plant variety protections and subsequently to implement those;
• Creating public awareness of the UPOV system of plant variety protection.

The UPOV system has provided increased access to new foreign plant varieties and to develop domestic breeding programs. Through enhanced plant breeding protection, UPOV has also helped to diversify the areas of research and technologies in the plant breeding fields.

US became a signatory through the 1991 Act of the UPOV Convention and became a member of UPOV. USPTO, as a federal agency, guides the US government at UPOV meetings. Additionally, USPTO organizes educational programs for UPOV members.

International Treaty on Plant Genetic Resources for Food and Agriculture

The International Treaty on Plant Genetic Resources for Food and Agriculture is a treaty on plant genetic resources. It is known as the ITGRFA or Seed Treaty. Administered by the Food and Agriculture Organization of the United Nations, it was adopted in 2001 in an intergovernmental conference and entered into force in 2004.

The objective of the treaty is to conserve and promote sustainable use of all plant genetic resources for agricultural purposes and foods. It encourages “fair and equitable sharing” of the benefits of using plant genetic resources for food security in harmony with the Convention on Biological Diversity.

The main objectives of the treaty are as follows:

• To promote conservation and sustainable use of all plant genetic resources for sustainable agriculture as well as to increase food security across the world by means of standard material transfer agreement (SMTA).
• It promotes free exchange of plant genetic resources multilaterally and conservation of plant genetic resources. Hence, it contains a multilateral system of access and sharing of benefits.
• It highlights the contribution and efforts of various indigenous farming groups and their traditions that help to conserve plant genetic resources. It also empowers the farmers and indigenous communities with certain rights, known as the farmer’s rights.
• The treaty provides the right to save, use, exchange and sell farm-generated seeds and other propagating materials.

The said treaty was ratified by the US Senate in December, 2016 and the US became a member in 2017. In this regard, USPTO helps to formulate policies on farmer’s rights and supervises and protects intellectual property related matters on standard material transfer agreement (SMTA). 

Collaborations by the USPTO with international organizations

The USPTO regularly collaborates with multiple international organizations, other governments, and intergovernmental organizations for the promotion of a sound patent policy and protection of patent rights. The USPTO Office of Policy and International Affairs performs the duty of regularly engaging with the said organizations. Some of these are as follows:

World Intellectual Property Organization (WIPO)

WIPO is an international self-funded organization under the United Nations that promotes the protection of intellectual property worldwide. It was established in 1967 and currently has a member of 193 states. The WIPO Convention governs the mandate, establishment and procedures and is termed as the “constituent instrument” of WIPO. The USPTO and WIPO regularly collaborate to formulate policies on various intellectual property matters, such as partnering for standard essential patents (SEP) related dispute resolutions matters. Standard essential patents are high-value patents for any organization and act as a standard means to protect an industrial standard. The owners of the patents agree to license those patents on “fair, reasonable, and nondiscriminatory terms”, also known as FRAND terms. These patents outline the typical output characteristics of a product and other patents are tested and compared with SEPs to test whether they meet the standard set by authorities. Some of the SEPs in the United States are USB, Wifi, JPEG etc. The disputes on SEPs are a complex matter and the USPTO partners with WIPO for resolving those.

Another important collaboration by USPTO is to partner with WIPO on matters on WIPO Green. It supports the exchange of technologies to combat climate issues, such as climate change and encourages innovation of green technologies as laid down in Chapter 34 of Agenda 21 of the United Nations Program of Action from Rio, 1992.

There are several other patent related matters on which the USPTO collaborates with WIPO to improve the patent policies and address disputes and also to encourage innovation. 

Apart from WIPO, the USPTO has also collaborated with World Trade Organization (WTO) and International Trade Centre (ITC) to protect intellectual property rights in trade and commerce.

USPTO also works closely with the Organization for Economic Development (OECD) to help them with statistics, data and other resources as necessary.

Regional organizations

During international trade and commerce activities, to ensure that the US companies do not face any problems abroad, USPTO closely works with representatives to address patent policies. 

US companies particularly face many challenges in China and to tackle the issue, they have a dedicated China team that closely monitors and works with the issues US companies face there. The team also voices to reform IP policies in China.

Apart from this, the USPTO regularly holds an IP Attache Program that focuses on improving IP systems internationally. It also assists US stakeholders to protect their IP rights internationally in fields like entering in a new foreign market, obtaining and protecting patent rights in foreign jurisdiction and other legal challenges the US stakeholders may face. The regional organization USPTO engages for the program are: Asian-Pacific Economic Cooperation (APEC), Association of Southeast Asian Nations (ASEAN), UN Economic Commission for Europe (UNECE), UN Economic Commission for Latin America & the Caribbean (ECLAC), UN Economic Commission for Africa (UNECA) and UN Economic and Social Commission for Western Asia (ESCWA).

Other international treaties on patent-related intellectual property protection 

International treaties on patents and related IP rights serve as the backbone for the international IP systems. The US, as a nation, is a member of various multilateral treaties, both administered by WIPO and non-WIPO. The two other treaties are as follows:

Budapest Treaty 

It is a treaty administered by WIPO.  The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure, known as the Budapest Treaty, was adopted in 1977 and came into force in 1980. The treaty required all member states to recognize a microorganism deposited for patent.   

When an invention is related to microorganisms, the applicant is required to deposit a biological sample containing the microorganism at the patent office where the application is being filed. If the applicant wants to file a patent application in multiple countries, submitting it to all the offices is not required as per the terms of the treaty. The rest offices will recognize the submission irrespective of the location of the office where the sample was initially submitted.

The US signed the treaty in 1977 and it came into force in 1980.

Non-WIPO administered treaty: TRIPS

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is administered by the World Trade Organization and came into force in 1995. It is one of the most comprehensive multilateral agreements on intellectual property which includes patents, trademarks, copyrights, geographical indication, exclusionary rights on new varieties of plants and others. It sets down the standards for regulating intellectual properties internationally and is applicable for all WTO members.

Other patent policy initiatives by USPTO

In order to increase expertise on the issues regarding protection of patents, both nationally and internationally, the USPTO has taken certain initiatives. The initiatives were opened to public comments and opinions. Based on public opinion, some of these initiatives were stopped. The initiatives are as follows:

Attributable ownership

In 2013, the US government took notice of high-tech patent issues and created a taskforce to make a fact sheet regarding those issues. One of the principal issues found by the taskforce group was regarding the ownership of patents. In response to this, the USPTO formulated a notice regarding the owners and applicants to update ownership information regularly. However in 2014, the initiative and rulemaking were completely stopped based on public opinion.

Digital and New Technology Designs

The US government has established a number of initiatives to protect the rights of inventors in the digital age. The Digital Millennium Copyright Act (DMCA) is a US copyright law that is designed to protect the rights of copyright holders. The DMCA makes it illegal to circumvent technological measures that are designed to protect copyrighted works. The US government also established the Copyright Office, which is responsible for registering and protecting copyrighted works.

In addition, the US government has established the Digital and new technology designs initiative. This initiative is designed to protect the rights of inventors in the digital age. The initiative is focused on protecting the rights of inventors who are developing new technologies and designs. This initiative covers a wide range of intellectual property, including software, databases, digital publications, and other designs.

Patents 4 Partnerships

The US government has established the Patents 4 Partnerships initiative to encourage collaboration between inventors and businesses. The initiative is designed to help inventors secure the resources they need to develop their inventions while also helping businesses to find new opportunities to license and commercialize new inventions. The initiative provides resources to help inventors develop their inventions, including funding, resources, and mentorship.

In addition, the initiative provides resources to help businesses find new inventions to license and commercialize by helping businesses identify new technologies and products that are suitable for commercialization.

Patents for Humanity

The US government has established the Patents for Humanity initiative to recognize inventors who are working to solve humanitarian challenges. The initiative recognizes inventors who are working to develop products or technologies that are designed to improve the lives of people around the world. The initiative provides resources to help inventors develop their inventions and make them available to the public.

Additional Patent Policy Initiatives

In addition to the initiatives mentioned above, the US government has established a number of additional patent policy initiatives. These initiatives are designed to promote innovation and protect the rights of inventors.

The US government has established the Technology Transfer initiative to encourage collaboration between universities, government agencies, and private industry. The initiative is focused on promoting the transfer of technology from research institutions to private industry in order to facilitate the development of new products and technologies.

The US government has also established the International Patent Cooperation initiative to encourage collaboration between countries in order to protect the rights of inventors. The initiative is focused on promoting international cooperation in order to protect the rights of inventors. The initiative also works to ensure that inventors receive adequate compensation for their work.

To improve policies and protect patent rights internationally, the USPTO established the Office of International Patent Cooperation (OIPC) in 2014. It primarily focused on global patent harmonization and improving the processes of international patent acquisition policies, mainly  for helping US business grow abroad.

It strives to increase certainty for intellectual property rights internationally and also to reduce costs for international stakeholders. The USPTO already had several similar initiatives, such as:

• Global Dossier refers to those business services through which intellectual property rights stakeholders, such as individuals, organizations, groups and even governments can access dossier information of all applications filed in the related IP offices, namely those in IP5. 
• Cooperative Patent Classification (CPC) helps to classify the patent information based on a specific subject matter. The classification system commonly used in the US was the United States Patent Classification (USPC) system. From 2013 onwards, USPTO started using CPC to classify US patents. The Cooperative Patent Classification (CPC) was jointly developed together with the European Patent Office (EPO) and has emerged to be one of the most used patent classification systems  in the world.
• Collaborative Search Pilot Program (CSP), as the name suggests, deals with patent searches. This collaborative program by USPTO helps to share and exchange search and evaluation results to select the best invention. There are two such pilot programs run in collaboration with the Japan Patent Office (JPO) or the Korean Intellectual Property Office (KIPO).
• Patent Prosecution Highway (PPH) program of the USPTO enables other patent offices to promote worksharing between patent offices as well as to speed up the examination processes of patent application in the related patent offices. The USPTO has collaborated with Global PPH by WIPO and IP PPH. In addition to that, it has also collaborated with some of the national patent offices in the countries such as Brazil, France, Mexico, Malaysia, Morocco etc.
• Electronic Priority Document Exchange (PDX): It is a procedure which facilitates exchanging patent related documents electronically with other foreign intellectual property offices. Initially in 2007, the USPTO started to implement PDX with the European Patent Office (EPO) beginning,  Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO). Later in 2008, USPTO expanded the program in collaboration with WIPO for patent offices listed in the WIPO Digital Access Service (WIPO DAS)
• International Authority Files allow for assessing the stage of completion of the patent application. It is classified in two types: Pre-Grant (Patent application publications) and Patent Grant (patents which have already been granted) Authority Files.

In addition to all the abovementioned efforts, the establishment of the OIPC is intended to implement the international patent cooperation efforts effectively.

Judicial views regarding US Government patent policy

In addition to the US Government patent policy, the US Courts, particularly the US Supreme Court, also takes an important step to formulate the patent policies as well as to supervise them, from the patent subject matter eligibility to patent infringement. In the form of landmark rulings to patent cases dated back to the early 19th century to the recently decided, the trend continues till date. This is not an exhaustive discussion but simply an attempt to elaborate the importance of US Courts in shaping the patent policy.

For example, in the case of O’Reilly v. Morse (1853), the US Supreme Court held that a patent claim not involving any practical application and to ask for an exclusive right for something not invented yet is too broad to be patented. In another case of Schillinger v. United States (1894), the Supreme Court held that the federal government cannot be sued for patent infringement. Subsequently, the US Congress passed 28 U.S.C. § 1498, which permits the patent owners to sue the United States if their inventions have been “used or manufactured by or for the United States without license of the owner.” The same decision was used for argument while deciding the case of Zoltek Corporation v. United States Of America (2007) to decide whether the Court of Federal Claims possesses jurisdiction to decide over claims for compensation by patent owners whose inventions have been “used or manufactured by or for the United States without license of the owner.”

The question of whether a living organism can be patented was thoroughly dealt in the case of Diamond v. Chakrabarty (1980), where the Supreme Court confirmed the decision of granting patent for a bacterium namely Pseudomonas putida capable of breaking down crude oil, which helped to advance scientific research and development.

On the other hand, in the Mayo Collaborative Services v. Prometheus Laboratories (2012), the US Supreme Court held that processes that help physicians to determine proper dosage levels of drugs for patients are not patentable under 35 U.S.C.S. § 101. The U.S. Supreme Court unanimously held that the subject matter of the patent are not patent-eligible.

The landmark Supreme Court decision in the case of Alice Corp. v. CLS Bank International (2014) gave rise to a comparatively newer kind of patent, known as business method patents and the case focussed on discussing the eligibility of the same. The USPTO defines the business method patents as a type of “utility patent that protects a method of doing business.”

In recent times, the cases of Mayo Collaborative Services v. Prometheus Laboratories (2012) and Alice Corp. v. CLS Bank International (2014) significantly changed the US policy views of patent subject matter eligibility, as stated by the USPTO.

In recent years, cases like University of California v. the Broad Institute Inc. (2018), where the US Supreme Court determined the rules of obviousness and non-obviousness for patent-eligibility regarding the use of CRISPR-Cas9 system to cut DNA system. Again the case of Apple Inc. v. California Institute of Technology (2022) reasonably limited the opportunities for challenging patent validity by a third party and also has been a source of strain between the holistic relationship between government and the judiciary.

The unanimous decision by the Supreme Court in the recent case regarding patent enablement dispute under 35 USC § 112 namely Amgen inc. v. Sanofi (2023) opened a path for discussion whether it became more difficult for life science companies to obtain broad patents for the claim for an entire genus of antibodies performing a specified function. 

Conclusion

The patent rights not only provide an inventor with the sole ownership of the invention but also provides an economic incentive to the inventor. Hence, a sound patent policy should cater to the needs of both. The US government patent policy is designed in such a way that not only encourages innovation but also seeks to protect the patent rights of the inventor, as perfectly asserted by the great American President Abraham Lincoln that the US patent system adds “the fuel of interest to the fire of genius.”

The US government has long been a leader in the field of patent policy. The US government has established a number of initiatives to protect the rights of inventors and encourage innovation. These initiatives provide a comprehensive overview of the US government’s patent policy and are designed to ensure that inventors are adequately compensated for their work. The US government also has initiatives to promote collaboration between inventors and businesses, such as the Patents 4 Partnerships and the Patents for Humanity initiatives. Finally, the US government has established initiatives to promote international patent cooperation, such as the Technology Transfer and the International Patent Cooperation initiatives.

Overall, the US government has established a comprehensive set of initiatives to protect the rights of inventors and encourage innovation. This comprehensive set of initiatives provides an overview of the US government’s patent policy and is designed to ensure that inventors are adequately compensated for their work.

References 

• https://guides.loc.gov/patent-law/statutes-regulations 
•  https://www.ers.usda.gov/webdocs/publications/45080/17596_err15a_1_.pdf?v=0 
• https://www.gao.gov/products/t-rced-87-26 
• https://www.uspto.gov/ip-policy/patent-policy#:~:text=The%20United%20States%20Patent%20and,intellectual%20property%20(IP)%20rights. 
• https://www.energy.gov/gc/patent-waivers-overview 
• https://guides.loc.gov/patent-law/statutes-regulations 
• https://www.wipo.int/wipolex/en/info/outline/US 
• https://www.nber.org/system/files/working_papers/w7280/w7280.pdf 
• https://unece.org/fileadmin/DAM/ceci/ppt_presentations/2010/eed/lamm.pdf 
• https://www.uspto.gov/sites/default/files/inventors/edu-inf/BasicPatentGuide.pdf 
• https://www.wipo.int/edocs/mdocs/sme/en/wipo_exp_ip_smes_ge_19/wipo_exp_ip_smes_ge_19_uspto.pdf 
• https://www.ftc.gov/sites/default/files/documents/reports/promote-innovation-proper-balance-competition-and-patent-law-and-policy/innovationrpt.pdf 
• https://sgp.fas.org/crs/misc/RL32076.pdf 
• https://sgp.fas.org/crs/misc/R47267.pdf 
• https://sgp.fas.org/crs/misc/R46525.pdf
• https://obamawhitehouse.archives.gov/sites/default/files/docs/patent_report.pdf 
• https://papers.ssrn.com/sol3/papers.cfm?abstract_id=963136 

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This article has been written by Ayush Tiwari, a student of Symbiosis Law School, NOIDA. This article elaborates on what a patent is, its types, and will help in offering a basic understanding of how a patent can be obtained and the crucial steps involved in the patenting process.

It has been published by Rachit Garg.

Introduction

Are you looking to protect your invention with a patent? If you have an invention that you believe is unique or revolutionary, then you should consider filing for a patent. Obtaining a patent in the United States is a key step in protecting your invention or innovation from unauthorized usage or exploitation if you are an inventor or innovator. A patent is a legal document that grants exclusive rights to an invention. It gives the inventor the right to prevent others from manufacturing, using, or selling the invention without the inventor’s permission.

In the US, the US Patent and Trademark Office (USPTO) is responsible for issuing patents. In this article, we’ll discuss the process of getting a patent, the steps involved, and what you should know before filing, although the procedure can be complicated and time-consuming. This article will help in offering a basic understanding of how a patent can be obtained in the United States as well as the crucial steps involved in the patenting process. An individual may protect their invention and acquire the exclusive rights they need to grow in the marketplace by taking a few simple actions and taking the required measures.

What is a patent

A patent is a form of intellectual property protection that grants the inventor exclusive rights over an invention for a limited period of time. If an individual has an invention, such as a new and technical solution to a problem, a novel product, or an innovative method of achieving greater outcomes with some advancement in technology, having a patent on their name for the invention provides them with the ability to exploit their invention for a certain period commercially, giving the inventor an advantage over the invention for a certain period, and also provides them with the right to decide whether or not the invention can be used by others and under what conditions. 

Article I, Section 8 of the U.S. Constitution states that “Congress shall have power… to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” So, it can be said that since the passage of the United States Constitution, the significance of granting monopolies for novel innovations has been acknowledged.

Having a patent in the United States for one’s innovation gives one the right to prevent anyone from using, selling, or importing the invention in the United States for a limited period of time. Patents are typically granted for a period of 20 years from the filing date of the application. The key to obtaining a patent is that the invention must be novel, useful, and non-obvious. As it is a right to exclude others, that is, one can prevent people from utilizing the invention without permission, which is patent infringement. It can also be referred to as a negative right. 

In continuation of the provision given in the Constitution, the Patent Act (35 U.S. Code), which established the United States Patent and Trademark Office (the USPTO), governs and oversees the issuance of patents in the United States. In order to obtain a patent, an inventor must submit a patent application to the USPTO. The patent application must include a detailed description of the invention as well as any drawings or diagrams that are necessary to understand the invention. Once the patent application is submitted, the USPTO will review it and determine whether or not the invention meets the required criteria. If the invention is deemed patentable, the USPTO will grant a patent.

Types of patents

In the US, there are three types of patents that can be granted: utility patents, design patents, and plant patents.

Utility patents

A utility patent is the most common type of patent and is granted for any new and useful process, machine, article of manufacture, or composition of matter. Utility patents also cover new and useful improvements to existing inventions. Utility patents, usually referred to as “patents for invention,” are the most prevalent type of patent. They are issued in connection with innovative and useful procedures, machinery, manufacturing processes, substance compositions, or improvements. Utility patents protect inventions such as computer software, investment strategies, medical equipment, tools, chemical compositions, genetically altered life forms, and improvements.

Utility patent holders have the right to prevent others from creating, using, or selling their innovation for a period of 20 years from the day the patent application is submitted. This sort of patent requires maintenance costs, making it more expensive than a design patent.

Although utility patents provide comprehensive protection against potentially competing inventions, obtaining them can take two to three years. The subject matter of a utility patent application must be useful in order to be granted a patent. Traditionally, this meant operability, practicality, and usefulness. In terms of operability, even if a great innovation has both practical and beneficial uses, it will not be given a utility patent. The term “practical use” refers to actual usage or real-world application. This element is easily established for many sorts of innovations, but it can be more difficult to establish for chemical compounds, which are sometimes developed before their practical use is determined. The beneficial use requirement of the utility patent, which prohibited immoral or deceiving innovations. Utility patents can be obtained in the following categories:

1. Machines or apparatuses- Devices in which components interact, such as automotive gearboxes, machine tools, appliances, and so on.
2. Processes- Methods or techniques utilized in the production of a device or product, as well as computer software used to achieve some tangible result.
3. Articles of manufacture- Articles having no moving components, such as soap dishes, water-spray nozzles, and bottles.
4. Compositions of matter- Compounds such as plastics, medicinal compounds, and metal alloys are examples of matter compositions. This category also includes specific types of living forms, such as single-cell and multicellular creatures, as well as vertebrate animals.
5. Computer software- This subject matter was formerly said to be unpatentable due to Supreme Court rulings that caused uncertainty about whether software constituted an invention, a formula, or an algorithm. In deciding whether the whole process or technique is patentable, more recent Supreme Court opinions have focused on the patent claims as a whole rather than whether they contain a mathematical formula, and since then, in many cases, patents have been granted to software.

Design patents

A design patent is granted for any new, original, and ornamental design for an article of manufacture. Design patents, as opposed to utility patents, which protect the function or functioning of a machine or device, protect the physical and aesthetic appearance, or, in an easier way, the look of the product. This look might take the form of a shape, color, ornamentation on the surface, or a combination of them. A design patent enables the owner to prohibit anyone from creating, using, or selling the patented design for 15 years after the patent is awarded. This type of patent doesn’t require any maintenance fees. Design patents are becoming more popular, as since 2006, around 23,000 have been granted each year. Samsung, Sony, Nike, Procter & Gamble, Goodyear, and Microsoft are among the companies that frequently seek design patent protection. Design patents are often less expensive to obtain than utility patents and are issued significantly sooner. However, the extent of protection varies and is often more limited.

There is no necessity that the design be creative or visually appealing; merely that it be primarily decorative in nature. If the overall look of the design is governed by performance, then the design is practical or functional and hence not patentable. However, certain products, such as automobile wheels and cell phone housings, are a mix of both functional and ornamental components, and the design features are thus patentable.

Inappropriate Subject Matter for Design Patent

A design for an item of manufacture that is principally determined by the function of the article lacks ornamentality and is not adequate statutory subject matter under 35 U.S.C. 171. Specifically, if it was neither a unique or distinctive shape nor the appearance of the object at the time the design was made that wasn’t demanded by the function that it serves, the design lacks ornamentality and is not adequate subject matter. One such case is Best Lock Corp. v. Ilco Unican Corp. (1996), which displayed a key blank design. In an infringement proceeding, the Federal Circuit Court of Appeals ruled that the form of the blank key blade was governed by function, and therefore the design was not aesthetically pleasing or ornamental. However, some goods, like automotive wheels and cell phone housings, combine both functional and aesthetically pleasing components, making the design aspects patentable.

Furthermore, 35 U.S.C. 171 requires that a patented design be “original.” A design that is clearly based on a well-known or naturally occurring product or person is clearly not original, as required by the law. Lastly, design patent applications should not include subject matter that might be regarded as objectionable to any race, religion, sex, ethnic group, or nationality. 

Plant patents

A plant patent is granted for any new and distinct, asexually reproduced plant variety that has been cultivated, propagated, and reproduced asexually. Plant patenting is not permitted in many nations, however, the United States Plant Patent Act of 1930 granted patent rights to individuals who developed new kinds of various asexually propagated plants. Apple trees and rose bushes derived from removing parts of the stem rather than sprouting seeds are commonly patented examples. Tuber-propagated plants, such as potatoes, were excluded both then and now. This is due to the fact that the plant portion required for propagation is also food. Ex Parte Hibberd, a 1985 judicial ruling, stated that utility patents, which had been accessible to inventors since 1790, would be extended to plants. This may include hybrids, seedlings, mutants, and cultivations other than plants found in an uncultivated state or varieties such as potatoes or edible tuber propagated plants.

But what exactly is asexual production? The multiplication of a plant without the use of fertilized seeds to ensure a perfect genetic duplicate of the plant being replicated is known as asexual reproduction. Any known asexual reproduction process that produces a genuine genetic duplicate of the plant may be used. The goal of asexual reproduction is to maintain the plant’s uniformity and stability. This second step of the invention must be completed with enough time before applying for patent rights to allow for a thorough evaluation of propagules or clones of the claimed plant for stability, ensuring that such specimens retain the same distinguishing characteristics as the original plant. This covers any cultigen, mutant species, hybrid species, and freshly discovered seedlings that are not generated from a tuber-produced plant or a plant discovered in the wild. Plants grown from tubers, as well as wild or uncultivated plants, are not patentable.  “Tuber” refers to a short, thickened underground stem or rhizome.

A plant patent holder can prevent others from creating, using, or selling the plant for up to 20 years from the day the patent application is filed. A plant patent application must be filed within one year of the variety being made available or known to the public anywhere in the world. Even if a new type is detailed in any publication or on the Internet, the one-year grace period is presumed to have commenced. Plant patents, like design patents, do not need maintenance fee payments.

Patent processing

Once a patent application has been submitted to the USPTO, it undergoes a rigorous examination process. During the examination process, the USPTO will review the application to ensure that all of the requirements have been met, like unity of invention, subject-matter restrictions, etc., and that the invention is novel, useful, and non-obvious. The USPTO may also request additional information or make amendments to the patent application.

How long does it take to get a patent

The US Patent and Trademark Office can often take a long time to evaluate and eventually approve a patent application. However, even before one gets to the government agency, the work required to be completed prior to filing the application can be time-consuming and laborious. From the time one begins working with their patent attorney, expect it to take several months to get their patent application filed.  The amount of time it takes to obtain a patent varies depending on the complexity of the invention as well as the backlog of applications at the USPTO. Typically, it takes between 18 months and 3 years to obtain a patent. These are averages, and the time between filing and issuing is greatly determined by the decisions one makes throughout the filing and prosecution stages of the process for applying for a patent. It is nevertheless possible to devise a method to expedite the patent application process and obtain a granted patent in less than a year. It is also feasible to move slowly and spread out patenting fees over time, in which case obtaining a patent might take three or more years. Ultimately, the best patent prosecution approach is determined by the patent applicant’s priorities, goals, and resources.

In order to speed up the patent process, you can submit a request for expedited examination. This request can be made after the patent application has been submitted and will allow the USPTO to prioritize your application. Accelerated review and prioritized examination are the two techniques used in the United States to expedite the patent application process. The Accelerated Review procedure assists applicants in receiving a patent within a year. Furthermore, the Track One system is an expedited method that allows newly filed utility and plant patent applications to receive their final patent application requirements within twelve months by paying a fee of $4200. It is not even necessary to have a pre-search examination report to begin the examination procedure.

How to file for a patent

Before you can file for a patent, you need to make sure that your invention is eligible for patent protection. To do this, you should conduct a patent search to determine if the invention or a substantially similar invention has already been patented or is currently in the process of being patented.

Once you have determined that the invention is eligible for patent protection, you can begin the process of filing for a patent. The first step is to submit a patent application to the USPTO. The patent application must include a detailed description of the invention as well as any drawings or diagrams that are necessary to understand the invention.

It is important to note that the patent application must include all of the required elements, including disclosure, description, specification, claims, best mode, enablement, drawings, and model. Failure to include any of these elements in the patent application can result in the application being denied.

But before we get to the stages of getting a patent, it’s important to understand that there are two ways to file for a patent:

• By doing it yourself, or
• through a registered patent attorney. 

Since patenting an invention is complicated, the USPTO strongly recommends hiring a patent attorney. In most cases, a patent attorney is recommended because the patent attorney’s job is to present the invention in a manner in which it more closely brings out the fundamental uniqueness of the invention, which is likely to be patentable to distinguish it from other inventions; this often costs twice as much as the entire patenting procedure. A patent attorney who has experience and has received particular training in patent drafting understands industrial property rights. They help individual inventors or businesses through the process of obtaining a patent and subsequently enforcing their rights in the event of patent infringement.

However, the USPTO has made provisions for inventors and small business owners with limited resources. The USPTO offers free assistance to independent innovators and small business owners. When filing for a patent, a person can either hire a registered patent attorney or do it on their own, also known as “pro se.”

Checking eligibility

Processes, machinery, items of manufacturing, and matter compositions are patentable, according to Section 101 of the Patent Act (35 U.S.C.). On its face, it appears that the patent office accepts each and every patent application made to it. This is, to a considerable extent, correct. The United States has one of the world’s broadest requirements for what constitutes patentable subject matter under this legislation. Physical device inventors often do not need to worry about whether their innovations are non-statutory. Certain inventions, however, are more likely to be challenged as to whether they fall under Section 101, such as software inventions and inventions relating to specific types of medical tests and diagnostics. Inventions that fail to meet the Section 101 requirements are deemed to fail the “subject matter eligibility” requirement for patent protection and are not eligible for a valid US patent regardless of whether they meet the other requirements for patentability (i.e., the invention is new, useful, and non-obvious). 

The text of Section 101 defines four sorts of patentable inventions: methods, machines, products of manufacturing, and matter compositions. If an innovation does not fall into one of these four categories, it cannot be patented. Data structures, for example, that are not claimed in conjunction with a computer or any sort of computer-readable medium plainly fall outside of these four categories. Non-functional descriptive content, such as music, literary works, and data compilations or arrangements, is also prohibited. It is therefore obvious that electromagnetic waves or signals do not fall into any of these categories and are hence not patentable. Lastly, a claim to “software” that does not relate to a process or a physical machine (such as a computer or mobile device) would fall outside of the four statutory categories and would thus be unpatentable. To circumvent this dilemma, most experienced patent attorneys never claim software in the abstract but rather solely in the context of a computing machine or a process. 

If an invention is to be deemed patentable, it must fit under one of these statutory categories and avoid a judicially determined “exception” to patentable subject matter.

Mayo Collaborative Services, et al. v. Prometheus Laboratories, Inc. (2012)

Natural laws, natural events, abstract concepts, and mathematical formulae may not be specifically excluded from patentable subject matter under patent laws. In the United States, the test used to exclude certain subject matter from patentability is whether the subjects are basic tools of scientific and technological work, and monopolization of those tools through the grant of a patent may impede rather than promote innovation. The case further highlights the distinction between patent eligibility (i.e., the term “invention”), patentability requirements (novelty, nonobviousness, and industrial utility of an invention), and written description requirements. The patentability requirements and the written description requirement apply only to patent eligible subject matter. According to the Supreme Court, determining a subject’s eligibility for patent protection gives more legal certainty than depending on patentability requirements. This is due to the fact that laws of nature that are not disclosed in the prior art may not eliminate originality and non-obviousness.

Together with the Association for Molecular Pathology et al. v. Myriad Genetics ruling involving naturally occurring compounds, the decision of natural processes/phenomena had a considerable impact on later US Patent and Trademark Office (USPTO) processes. The USPTO swiftly responded to the Court’s decision by issuing new subject matter eligibility guidelines.

Diamond v. Diehr (1981)

Facts

In this case, the respondents applied for a patent claiming the invention of a technology for molding raw, uncured synthetic rubber into cured precision items. Whereas the procedure could previously be calculated using well-known time, temperature, and cure relationships to determine when to open the press, the respondents claimed that their invention enabled them to precisely measure the temperature inside the mold, which was previously an uncontrollable variable in the process. This breakthrough would allow the industry to achieve previously unattainable uniformly exact cures by continuously detecting the temperature inside the mold and transmitting the data into a computer, which would then utilize an existing equation to calculate the most effective cure time.

The claims of the respondent were rejected by the patent examiner because they were drawn to nonpatentable subject matter under 35 U.S.C. 101. The Board of Appeals of the Patent and Trademark Office also agreed with the examiner.

The Court of Customs and Patent Appeals reversed, saying that a claim drawn to generally patentable subject matter does not become non-patentable because a computer is involved.

Judgment

The Supreme Court had to evaluate whether the respondent’s claims qualified as potentially patentable subject matter.

First, it had to interpret the term “process” as it appears in 35 U.S.C. 101. It confirmed the definition of a “process” established in Cochrane v. Deener (1876), which states that “a process is a mode of treating certain materials to produce a given result.” If it is novel and beneficial, it is as patentable as a piece of machinery.” Furthermore, the Court noted the addition to the above definition established in Gottschalk v. Benson (1972): “Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that doesn’t include particular machines.” Such processes are patentable.

Second, the Court considered the patentability of methods that include features that are prohibited from patentable subject matter. It confirmed that a process “is not unpatentable because it contains a law of nature or a mathematical algorithm” and went on to state that when determining whether a claim or an invention at hand represents patentable subject matter, they must be regarded as a whole rather than being dissected into their various elements. The essential criterion in evaluating the patentability of a method under 101 is whether it performs a function that the patent laws were meant to protect, such as changing or reducing a thing to an entirely different state or thing.

The “novelty” or “non-obviousness” requirements are pointless in assessing a subject matter’s general patentability. The Court concluded that the respondents were not attempting to patent a mathematical formula but rather a method of curing synthetic rubber that included a formula. As a result, the claims include patentable subject matter.

Patent requirements

In order to obtain a patent, the patent application must include all of the required elements. The elements include checking eligibility, novelty, utility requirements, and a requirement of non-obviousness.

Requirement for novelty (newness)

In order for an invention to be patentable, it must be considered unique or new. According to this condition, an invention cannot be patented if significant disclosures of the invention have been made. The laws that define whether a public disclosure has occurred are intricate and frequently necessitate a thorough examination of the facts and the law. However, the most important rule is that an invention will not normally be patentable if:

• The public was aware of the innovation before the applicant sought patent protection;
• Before the applicant filed for patent protection, the invention was described in a printed publication; or
• Before the applicant filed for patent protection, the invention was described in a published patent application or issued patent.

These restrictions are waived for disclosures made by the inventor within one year of filing the patent application. This implies that a patent application must be filed within one year after an inventor’s initial public disclosure or offer for sale of an invention. This “statutory bar” is very rigid, which means that an inventor who fails to file for patent protection on her new invention within the one-year grace period would forfeit all rights to patent protection on the innovation.

Dewey & Almy Chemical Co. v. Mimex Co., Inc.,

In this case, it was held that: 

1. A novel innovation is one that was not anticipated by prior art. In general, “prior art” refers to all information that existed before to the relevant filing or priority date of a patent application, including oral disclosure in some countries.
2. Anticipation requires an “enabling disclosure” in which the prior art permits a person proficient in the field to execute the claimed invention effectively. In the matter at hand, the Court stated, among other things, that:

1. A result in the uncertain prior art, combined with a lack of invention of the result in the art, would not preclude the issuance of a patent claim for lack of originality or novelty. 
2. Anticipation is based only on whether there is any difference between what is claimed and what is revealed in the prior art, not on “considerable differences.” As a result, there can be no “hit or miss” in anticipation; only striking the “target” that the art “aimed” at will harm the originality of a future invention.
3. Prior teachings contribute to “the store of common knowledge” as a requirement for anticipation under patent law. 
4. The term “new” is not defined under the TRIPS Agreement or the Paris Convention. Furthermore, TRIPS Agreement Article 1.1 stipulates that “members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.”

1. As a consequence of this, there is no prescribed method for Members to define that whether innovations are “new” within their domestic system.
2. A member may specify the scope of prior art that defeats an invention’s originality.

Useful requirement

According to patent law, the subject matter must be “useful.” This implies that the invention must serve a purpose. In the context of computer and electrical technology, the utility criteria are easily achieved in most circumstances. When seeking to patent a pharmaceutical or chemical compound, the condition is particularly important since it is vital to establish a practical or specific application for the new product.

Nonobviousness requirement

If an innovation is not identical to past items or methods (referred to as “prior art”), it is deemed new. However, in order for an invention to be patentable, it must also be a non-obvious improvement over the prior art. This evaluation is established by determining whether the desired patentable innovation would have been evident “to a person having ordinary skill in the art to which the claimed invention pertains.” In other words, the invention is compared to the prior art, and whether the changes in the new invention would have been obvious to a person of ordinary ability in the sort of technology employed in the invention is determined. The Act requires that the innovation be evident prior to the filing of the application.

The United States Supreme Court ruled in Swofford v. B & W, Inc. (1966) and Graver Tank & Mfg. Co. v. Linde Air Prod. Co. (1950) that utility and novelty are factual concerns. However, it is unclear if non-obviousness is a question of fact, law, or both. The answer to this question is significant because it impacts the division of responsibilities between the court and the jury as well as the extent of judicial review in patent litigation. So, who decides whether an invention is patentable, the factfinder or the judge? A judge versed in all statutory legislation can make wider policy decisions, or a fact finder familiar with the facts of the specific case can hear the witnesses and assess their credibility. In this regard, there are two points of view: the technical approach, which regards non-obviousness as a matter of fact, and the contextual view, which treats non-obviousness as a matter of law. Prior to the United States Patent Act of 1952, the issue of invention was handled as a fact. However, in Tights Inc. v. Acme McCrary Corp. (1976), the Fourth Circuit Court of Appeals concluded that obviousness is a mixed matter of law and fact, implying that the issue might be brought to the jury if properly informed on the legal standards. 

As one might expect, determining whether a certain modification or improvement is “obvious” is one of the most difficult decisions in patent law. To make such a decision, a patent examiner would often research earlier patent documents to identify patents and published patent applications that are the most similar to the invention for which a patent is sought. Suppose all of the invention’s characteristics can be found in a single patent. In that case, the patent office will reject the patent as lacking novelty (it is precisely the same as what was previously known and hence is not new). If no patent has all of the characteristics, the examiner will try to combine two or more prior patents to see if a combination of those prior patents contains all of the features. If the examiner finds such a combination, the invention is likely to be rejected as an obvious combination of components recognized in the prior art. Rejections based on the combination of prior art references are quite prevalent in patent applications. To effectively utilize a combination of references to reject a patent application as apparent, the patent examiner must explain some basis for combining the references. Previously, patent attorneys could successfully argue against rejection by demonstrating that the inventors of the prior art references would not have considered combining their invention with the other invention(s).

Graham v. John Deere Co. of Kansas City (1966)

Facts

The petitioner in this case, William T. Graham, filed a patent application for a mechanical device designed to mitigate shock from plow shanks on rocky terrain. The clamp installed kept the plow from being damaged. He was granted a patent in 1950. In the following years, he refined his design by moving the hinge plate to reduce the outward motion of the shank away from the plate. In 1953, he received another US patent for this modification.

The latter patent was in question in the present case. The United States Court of Appeals had previously affirmed the petitioner’s patent for the Fifth Circuit, but it was later declared invalid by the United States Court of Appeals for the Eighth Circuit. Finally, the Supreme Court granted certiorari and listened to the case.

Judgment

1. In this case, the U.S. Supreme Court established the subject matter’s obviousness or non-obviousness will be determined in

1. considering the scope and complexity of prior art,
2. the distinctions between the prior art and the claims in question, and
3. the degree of ordinary skills in the pertinent art.
4. secondary considerations may include commercial success, long-felt but unresolved needs, or others’ failure to find a solution.

2. The non-obviousness tests, as specified in Section 103 of the Patent Act of 1952, must be capable of adapting through case-by-case development. 
3. An invention must be interpreted not only in light of the claims but also in light of the prosecution history at the Patent Office.
4. Long-felt needs for and the inability of others to discover a solution, as well as the financial success of an invention, are subtests for patentability and are more vulnerable to judicial treatment than technical facts commonly addressed in patent litigation. They have the potential to “tilt the patentability scales.”
5. In terms of patent infringement, the Court determined that the scope of a patent, if restricted to fulfill the requirements of the patent examiner, cannot thereafter be understood to embrace that which was previously excluded from the patent.

KSR International Co. v. Teleflex Inc. (2007)

This case involved the need for non-obviousness for patentability. The Supreme Court of the United States (hereinafter: the Court) strengthened the objective analytical technique for interpreting 35 U.S.C. 103 as established in Graham v. John Deere with important factors to consider. Despite the absence of a clear teaching, suggestion, or desire to integrate numerous prior art references, a claimed invention may be obvious.

The value of published research and express prior art should not be emphasized by the patent examiner. The artist is not to be regarded as a technical dumbbell with little initiative of its own but rather as a person capable of applying common sense and taking into account the particularities of the distinctive scenario.

This case determined that the Court of Appeals for the Federal Circuit erred by strictly applying the narrow teaching, suggestion, and motivation test 

1. for obviousness under 35 U.S.C. 103, 
2. for the narrow understanding of the use of hindsight, and 
3. for failing to consider whether the invention was obvious to try. 

They considered the preceding to be in contrast with Graham’s wider notion of obviousness.

Step-by-step guide on how to get a patent in the US

Now that you know the basics of patenting an invention, here is a step-by-step guide on how to get a patent.

Step 1: Conduct a patent search

The first step is to conduct a patent search to make sure that the invention is eligible for patent protection. The drafting of a patent application is the first step in acquiring a US patent. In general, it is preferable to do a patent search before preparing an application. This search attempts to locate issued patents and other published works relating to the invention.

After an examination of the prior art, the application may be filed if the invention looks patentable. It should be noted that there is no necessity to do a patent search prior to submitting a patent application. In many circumstances, innovators are well aware of the activities of their rivals and the market in their field. They are convinced that they are aware of the most relevant prior art since they have this information.

Step 2: Prepare a patent application

Once you have determined that the invention is eligible for patent protection, you can begin preparing the patent application. The patent application must include a detailed description of the invention as well as any drawings or diagrams that are necessary to understand the invention. An inventor can prepare, file, and prosecute a patent application on his or her own, a process known as “pro se.” The USPTO, on the other hand, advises applicants to seek the aid of a patent agent or patent attorney who is registered to practice before the USPTO.

The application consists of a written “specification” that is normally divided into the following components for both non-provisional and provisional utility patent applications:

• The title of the invention;
• Cross-reference to related applications, which lists any earlier U.S. patent applications, whether provisional or non-provisional, from which the applicant’s claims may benefit.
• Background of the invention, which explains the invention’s “technical field” and gives information such as known technology, issues solved by the invention, and, possibly, failures of the previous art to notice or appropriately address these challenges.
• Summary of the invention, which offers a quick summary or brief explanation of the invention and often highlights the merits of the invention and how it addresses a problem or design issue.
• Brief drawing description, which explains the subject matter depicted in one or more accompanying figures.
• A detailed description of the invention, including cross-references to any drawings supplied, specifies the best mode of executing the invention and gives a sufficiently comprehensive disclosure to enable those knowledgeable in the art to copy and practice the invention.
• Claims that attempt to explain the scope of the invention to be protected. A non-provisional patent application must contain at least one claim; by statute, a provisional patent application must not include any claims. This is the most important component of the patent application since it establishes the legal scope of protection sought. These claims are similar to a legal description of real land.
• The abstract of the disclosure highlights the disclosed embodiments of the invention to aid in the search for relevant prior art.
• Drawings that represent examples mentioned in the detailed description section.
• Oath or declaration, in which each designated inventor affirms that he or she is an inventor of the subject matter stated in the preceding claims and is making or approving the patent application.

Once 18 months have passed from the applicant’s claimed effective filing date, the non-provisional application for a patent is typically published for public viewing. Once the application is published, any publications relating to the application, including an associated U.S. patent application, are open to public scrutiny.

In some cases, where international patent filing is not desired, the applicant may request that the application not be published. Unlike utility patent applications, design patent applications in the United States are not subject to disclosure after 18 months. Instead, design patent applications are only published when they are granted as patents.

Step 3: Submit the patent application

Once the patent application is ready, you can submit it to the USPTO. The USPTO will review the application and determine whether or not the invention meets the required criteria mentioned above. If it meets the standard, then the USPTO will accept the patent and publish it.

Step 4: Examination process

Once the patent application has been submitted, it will undergo an examination process. During this process, the USPTO will review the application to ensure that all of the requirements have been met and that the invention is novel, useful, and non-obvious. The examiner assesses the application in light of the prior art and ensures that it complies with different formal criteria. According to 35 U.S.C. 131, “examination of applications,” the director shall examine the application and the purported novel invention, and if it appears from the examination that the applicant qualifies to receive a patent under the law, the director shall grant a patent accordingly.

The application will be allocated for inspection after it has been acknowledged as complete. The person reviewing the application will go through the application’s contents to see if it meets the requirements of 35 U.S.C. 111(a). The following are the primary requirements for granting a patent to an applicant:

• Patentable inventions i.e., subject matter of patentability (35 U.S.C. 101).
• Conditions for patentability; novelty (35 U.S.C. 102).
• Conditions for patentability; non-obvious subject matter (35 U.S.C. 103).
• Specification (35 U.S.C. 112)

A non-provisional application for a patent is assigned to a patent examiner when the patent application is submitted, and the USPTO assigns an application number and filing date. This examiner performs an independent patent search of the invention through prior art materials made available to the examiner, including any prior art furnished by the applicant.

The regulations specifically provide that the applicant and the patent attorney/agent executing the application must submit to the patent examiner all information “material to the patentability” of an invention asserted in a non-provisional application.

This includes information obtained while the patent application is pending with the USPTO. An Information Disclosure Statement (IDS) can be used to disclose information to the patent examiner. Then the examiner assesses the application in light of the prior art and ensures that the various formal conditions that are mentioned above have been met.

The claims in a patent application are initially “rejected” in communication with the applicant from the USPTO, known as an “office action.” One has the option to offer corrections or refute the concerns voiced. The applicant will have a defined window of time in which to respond to the objections; if they are not addressed within that window, the patent application will be canceled.

An interview with the examiner is available to applicants in the ‘First Action Interview Pilot Program’ after the applicant has reviewed the examiner’s search results and any objections. This gives the applicant the chance to speak with the examiner directly, which cuts down on the amount of repeated communication needed to resolve issues and may accelerate the process of issuance of a patent for their invention.

Step 5: Amendment and response to the objection raised

The applicant’s patent attorney will create a response document in response to the first office action that highlights the purported errors in the office action. In order to further describe the invention and, in certain situations, to restrict the claims in order to circumvent the prior art stated in the office action, this response document usually includes an amendment to the claims. The response will also provide justifications for why the present claims are still patentable in spite of any references to prior art or objections raised.

The patent attorney must be careful not to introduce “new information” to the application while making amendments. Amendments to the written description, drawings, or claims of an invention must be in line with the original application in order to be valid under the Patent Act. Any issue involving an amendment or growth of the initial disclosure will be disregarded as new information. In order to prevent new inventions from being “piggy-backed” into old patent applications, certain kinds of additions are not permitted.

Most of the time, applicants have three months from the time the first office action is delivered to respond. This deadline may be extended for a maximum of three more months. Although the fees and extension requests do not need to be submitted until the office action response is submitted, each one-month extension requires the payment of an additional fee. The application is regarded as canceled if a response to the office action is not submitted before the six-month period has passed. The Commissioner may, however, reinstate the application if it can be demonstrated that the failure to pursue the application was unavoidable or unintentional. The applicant must submit a petition and pay a petition fee in order to reopen an abandoned application. If a proper response to the office action has not already been filed, it must be included with the petition.

Step 6: Final rejection/acceptance

If all goes according to the applicant’s expectations, the patent office will approve the application once the applicant files the answer. 

The applicant’s response may not always persuade the patent office. Instead, the patent examiner either keeps rejecting the application for the same reasons outlined in the first office action or comes up with new justifications for why the application continues to fall short of the legal requirements for patentability. A second office action informs the applicant of this repeated refusal. This second office action will often be deemed “final.” The applicant’s ability to respond is therefore constrained after an office action is final. The applicant typically has the following options:

• decide to withdraw the application;
• request a review and convince the examiner to accept the application;
• appeal the final decision to reject; or
• file a request for continued examination (or “RCE”), which will allow the examination to continue.

The applicant must keep in mind that only the application will be allocated for inspection after it has been acknowledged as complete.

A non-provisional application for a patent is assigned to a patent examiner when the patent application is submitted, and the USPTO assigns an application number and filing date. This examiner performs an independent patent search of the invention through prior art materials made available to the examiner, including any prior art furnished by the applicant.

The regulations specifically provide that the applicant and the patent attorney/agent executing the application must submit to the patent examiner all information “material to the patentability” of an invention asserted in a non-provisional application.

This includes information obtained while the patent application is pending with the USPTO. An Information Disclosure Statement (IDS) can be used to disclose information to the patent examiner. Then the examiner assesses the application in light of the prior art and ensures that the various formal conditions that are mentioned above have been met.

The claims in a patent application are frequently initially “rejected” in communication with the applicant from the USPTO, known as an “office action.” One has the option to offer corrections or refute the concerns voiced. The applicant will have a defined window of time in which to respond to the objections; if they are not addressed within that window, the patent application will be canceled.

An interview with the examiner is available to applicants in the ‘First Action Interview Pilot Program’ after the applicant has reviewed the examiner’s search results and any objections. This gives the applicant the chance to speak with the examiner directly, which cuts down on the amount of repeated communication needed to resolve issues and may accelerate the process of issuance of a patent for their invention.

Step 5: Amendment and response to the objection raised

The applicant’s patent attorney will create a response document in response to the first office action that highlights the purported errors in the office action. In order to further describe the invention and, in certain situations, to restrict the claims in order to circumvent the prior art stated in the office action, this response document usually includes an amendment to the claims. The response will also provide justifications for why the present claims are still patentable in spite of any references to prior art or objections raised.

The patent attorney must be careful not to introduce “new information” to the application while making amendments. Amendments to the written description, drawings, or claims of an invention must be in line with the original application in order to be valid under the Patent Act. Any issue involving an amendment or growth of the initial disclosure will be disregarded as new information. In order to prevent new inventions from being “piggy-backed” into old patent applications, certain kinds of additions are not permitted.

Most of the time, applicants have three months from the time the first office action is delivered to respond. This deadline may be extended for a maximum of three more months. Although the fees and extension requests do not need to be submitted until the office action response is submitted, each one-month extension requires the payment of an additional fee. The application is regarded as canceled if a response to the office action is not submitted before the six-month period has passed. The Commissioner may, however, reinstate the application if it can be demonstrated that the failure to pursue the application was unavoidable or unintentional. The applicant must submit a petition and pay a petition fee in order to reopen an abandoned application. If a proper response to the office action has not already been filed, it must be included with the petition.

Step 6: Final rejection/acceptance

If all goes according to the applicant’s expectations, the patent office will approve the application once the applicant files the answer. 

The applicant’s response may not always persuade the patent office. Instead, the patent examiner either keeps rejecting the application for the same reasons outlined in the first office action or comes up with new justifications for why the application continues to fall short of the legal requirements for patentability. A second office action informs the applicant of this repeated refusal. This second office action will often be deemed “final.” The applicant’s ability to respond is therefore constrained after an office action is final. The applicant typically has the following options:

In the first office action, a deadline of six months will be imposed when replying to the final office action. The application should be withdrawn if the applicant, after consulting with an attorney, thinks the invention is not patentable. Alternatively, the applicant may ask the examiner to reconsider their decision, but this request must be made as soon as possible and include any reasons or changes that would make the application more likely to be approved. The applicant then has to wait for a response to the reconsideration request.

The applicant has the option to file an appeal with the Patent Trial and Appeal Board (the “PTAB”) against the examiner’s refusal. A notice of appeal and an appeal fee must be filed in order to appeal. Additionally, the applicant must submit a brief in support of their claim. The appeal may be subject to an oral hearing. It often takes many years from the moment a Notice of Appeal is filed until a ruling is rendered by the PTAB. If the PTAB rules against the applicant, they may appeal to the Court of Appeals for the Federal Circuit or initiate a civil action against the Commissioner in the District of Columbia’s federal district court. 

The Federal Circuit Court of Appeals will analyze the office’s record and can either uphold or overturn the office’s decision. The applicant may present testimony in court during a civil proceeding, and the judge will then make a judgment.

The applicant may choose to proceed with the prosecution of the patent application in front of the patent examiner as an alternative to filing an appeal. In order to do this, a request for continued examination and a reply to the final office action are sent. Once this patent application has been reviewed, the patent office will decide whether to grant it or issue yet another office action. A single patent application could face five or more office actions owing to the submission of several RCEs before being approved and becoming an issued patent.

Step 7: Publication of the patent

In general, non-provisional patent applications are published 18 months from the earliest filing date; however, the director may publish the application earlier if the applicant requests it. A U.S. patent application’s file history and ability to download the application itself are made public when it is published.

It is essential to publish the patent for the following reasons:

• If the applicant is also submitting a patent outside of the US, it is required by US patent law.
• Examiners and competitors attempting to submit comparable applications will find them through prior art searches.
• It will let competitors know that someone has applied for a patent for this subject matter.
• Having a website-published patent will help the applicant gain recognition.

The application is often still being processed at this time, but after the application is published, the inventor may be able to collect royalties from any company that copies the concept. They would have to present evidence that they were eventually given a patent for the invention, as well as evidence that the defendant was aware of the patent’s publication.

Step 8: Grant of patent

The United States Patent and Trademark Office (USPTO) examines the patentability features of the invention and, if deemed patentable, provides the applicant with a Notice of Allowance. This means that the applicant is qualified to obtain a patent. The notice of allowance could include conditions for the applicant to meet before the patent is awarded.  This will include the issuance fee as well as the publication fee. In response to the notice of allowance, the applicant completes the necessary procedures and pays the appropriate issue fee.  To avoid application abandonment, this amount must be received by the USPTO within three months of the date of mailing of the Notice of Allowance. Unlike many other deadlines, this three-month term cannot be extended. 

Once the USPTO receives the issue fee, the patent is issued in the name of the United States under the seal of the United States Patent and Trademark Office. It is either signed by the Director of the USPTO or electronically written on and attested by an official. The patent will include the claims and drawings that have been approved by the USPTO, and then they will be attached to the patent and become part of it. 

Cost of filing for a patent

Estimating the cost of a US patent is challenging since so much depends on the technologies involved. Inventors generally like to believe that their creations are not too complicated and that they can be communicated easily. As a result, people are led to assume that the entire procedure should just take a few hours, implying that the cost should be relatively low. The cost of filing for a patent can vary depending on the complexity of the invention and the type of patent sought. When you consider how simple or complicated inventions and inventions might be, you can see why patents have varying costs. Patenting more complicated innovations is more expensive than patenting simpler inventions. As a result, patent costs vary depending on a number of factors. Generally, it will cost between $3,000 and $15,000 to file for a patent. This cost includes the filing fee, the examination fee, and the attorney fees (if applicable).

The short-term expenses involved with drafting and filing a patent application, which provides the inventor with patent pending status for the invention, are factored into the cost calculation of a patent. Furthermore, the estimate considers the long-term costs of investigating the patent application in order to get the patent. This is just for the patent application and to show that the invention is currently patent pending. The cost of the examination is not covered. Long-term costs are associated with the investigation of the patent application, which happens when a USPTO examiner examines the merits of the invention and determines whether or not to reject or grant the patent application.

Even after the patent application is filed, there are still a lot of costs involved. These costs are incurred only after the patent has been considered by the USPTO, which usually takes around eighteen months from the day the patent application is filed. The Patent Office rejects the great majority of patent applications when they are initially assessed. The cost of responding to these rejections varies depending on the circumstances, but in most situations, the fee will be between $3,500 and $4,500. Typically, a patent application will have one to three rejections before being accepted by the Patent Office. Once approved, there is a requirement to pay an issue fee of around $800. 

Once the patent is granted, the possessor has the right to restrict anyone from making, using, selling, or importing the invention. The patent will expire around twenty years after the patent application is submitted. However, one has to pay maintenance fees for the entire period.

It is important to note that the cost of filing for a patent can vary depending on the jurisdiction. In some countries, the cost of filing for a patent is much higher than in the US.

Rights of the patent holder

The scope of the right to exclude

It is critical to understand that a patent does not give the patent holder the right to make their own invention. Instead, the patent grants the patent holder the exclusive right to prevent anyone from making, using, selling, or importing the invention. The right of the patent holder to create their own invention is contingent on the rights of others and any general laws that may apply. Another party may have a patent that prohibits the patentee from using her/his own invention. The patent holder is the only person who may create, use, or sell the invention since the core of the right provided by a patent is the ability to exclude others from the commercial exploitation of the invention. Others may only do so with the permission of the patent holder. A patent licensing agreement is typically used to grant such permission. In this sense, patent laws provide monopoly rights in the invention in the same manner that a monopoly is an exclusive right granted by the government for one party to conduct business in a particular area.

Infringement

During the life of the patent, infringement is defined as the illegal making, using, selling, or importing of the patented invention within the territory of the United States. The claims of the authorized patent govern the extent of these rights. A patent will typically include many claims. In order for the whole patent to be infringed, only one claim must be infringed. If a patent has been violated, the patent holder may sue in an appropriate federal court for treatment. The patent owners may seek an injunction to prohibit further infringement as well as monetary damages from the court. In such an infringement proceeding, the defendant may challenge the patent’s validity, which the court then adjudicates. The defendant may instead argue that its conduct is not infringing. Patent infringement suits follow the federal courts’ standards of procedure. If the US government infringes on a patent, the patent holder can seek monetary damages in the US Claims Court. Without the approval of the patent owners, the government may utilize any patented invention. The government could use any patented invention without the patent holder’s consent, but the patent holder is entitled to compensation for usage by or for the government.

Common mistakes to avoid when filing for a patent

When filing for a patent, it is important to avoid making any mistakes that could potentially delay or prevent the patent from being granted. Here are some of the most common mistakes to avoid when filing for a patent:

• Not conducting a patent search: Before you file for a patent, it is important to conduct a patent search to make sure that the invention is eligible for patent protection.
• Not including all of the required elements: The patent application must include all of the required elements, including disclosure, description, specification, claims, best mode, enablement, drawings, and model.
• Not preparing a detailed description: The patent application must include a detailed description of the invention, as well as any drawings or diagrams that are necessary to understand the invention.
• Not filing a request for expedited examination: In order to speed up the patent process, you can submit a request for expedited examination. This request can be made after the patent application has been submitted and will allow the USPTO to prioritize your application.

Conclusion

Getting a patent is a complex process that requires a thorough understanding of the process and the requirements for obtaining a patent. In this article, we’ve discussed how to get a patent in the US and the steps involved in the process. We’ve also discussed the types of patents, the cost of filing for a patent, and some common mistakes to avoid when filing for a patent.

Patent prosecution is a lengthy procedure with multiple stages. Some stages are simple, while others are more difficult for those who are new. Kindly keep in mind that patent prosecution in the United States (or anywhere else in the world, for that matter) might take a long time. Expect a lot of back-and-forth communication between the applicant and the patent office.

Thus, seeking a patent not only puts the invention to the test but also the patience of the applicant. Knowing what is going to happen next, how long a specific step may take, how much money the applicant may have to spend, what options are available, and so on can help relieve the anxiety that can arise while navigating such a complex system. Although the patent process is time-consuming, it is an important aspect of establishing an organization and monetizing its assets. Patents may provide considerable value to people and organizations, as well as a greater return on investment in the advancement of new technologies. Patents must be pursued with a wise approach that combines business interests with an array of alternatives for how, where, and when to file for patents.

References

• https://www.justia.com/intellectual-property/patents/types-of-patents/ 
• https://www.heerlaw.com/how-long-does-it-take-to-get-a-patent 
• https://www.justia.com/intellectual-property/patents/patentability-requirements/ 
• https://www.uspto.gov/patents/initiatives/accelerated-examination 
• https://www.goldsteinpatentlaw.com/the-patent-process/the-patent-application-process/ 
• https://www.legalzoom.com/articles/how-much-does-a-patent-cost 
• https://ipwatchdog.com/2015/04/04/the-cost-of-obtaining-a-patent-in-the-us/id=56485/ 
• https://www.sbir.gov/sites/all/themes/sbir/dawnbreaker/img/documents/Course16-Tutorial1.pdf 
• https://uslawpros.com/how-much-does-a-patent-cost/#:~:text=While%20the%20costs%20of%20an,with%20examination%20fees%20totaling%20%24170. 
• https://www.scirp.org/journal/paperinformation.aspx?paperid=70416 
• https://www.upcounsel.com/non-obvious 
• https://www.uspto.gov/web/offices/pac/mpep/s2116.html 

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This article is written by Nishka Kamath, a graduate of Nalanda Law College, University of Mumbai. This article explains the concept of judicial review in the United States, along with its elaborate history, objectives, importance, and power, amongst other things. It also talks about the grounds of judicial review in great detail, along with the process of conducting a judicial review. Further, the expansion, exclusion, limitations, and criticisms are talked about in brief. Furthermore, an attempt has been made to elucidate the concept of judicial review through landmark judgments and several other cases decided by the Supreme Court of the United States. 

It has been published by Rachit Garg.

Introduction

You might be aware that there are three branches of government, the legislative, the executive, and the judiciary. The functions of these three branches are as follows:

1. The legislative makes the laws,
2. The executive carries enforces or executes the laws, and
3. The judiciary interprets the law.

This is because of the concept of separation of powers. 

Now, to understand the subject of judicial review in the United States, let us assume these branches are superheroes. Let’s say, Dr. Strange is the legislative branch, Captain America is the executive branch, and the Hulk is the judicial branch. Now, since the judicial branch has the power of judicial review and is the main concept in understanding the judicial branch, we can say it is Hulk Smash power! Whaaack! Let us dive in and understand the topic better.

Fun fact: From 1960 to 2019, the Supreme Court held 483 acts unconstitutional in whole or in part. 

What is judicial review?

Judicial review is regarded as the power of the Supreme Court in the United States to examine and scrutinize legislation and actions by Congress and the President to ascertain whether they are constitutional or in accordance with the provisions of the U.S. Constitution or not. In other words, it is the power of the Supreme Court to establish whether an act of Congress or the executive branch of the government is valid or not. In case, the court presumes it to be invalid, it is entrusted with the authority to strike down such a law or executive action. This process is a crucial part of the checks and balances that are utilized by the three branches of the federal government to ensure no branch exceeds its powers and that the balance of power is maintained.

Interesting fact: The concept of judicial review first originated in the United States and was thereby adopted by other nations over a period of time. It was formerly used for the first time in the case of Marbury (discussed in detail below) by John Marshal, who subsequently became the Chief Justice of the American Supreme Court. 

Definition of judicial review

Redform defined judicial reviews as “Judicial review is the power of a court to enquire whether a law, executive order or other official action conflicts with a written constitution and if the court concludes that it does, declare it unconstitutional and void“.

Further, the basis of judicial review can be witnessed in the writings of Alexander Hamilton in the “Federalist”, where he said, “the interpretation of the laws is the proper and peculiar province of the courts. A constitution is in fact and must be regarded by the judges as a fundamental law. It, therefore, belongs to them to ascertain its meaning and meaning of an act passed by the legislature”. He also mentioned that when there is any conflict between the Constitution and the law, all the justices must choose the Constitution, as it is the supreme law of the nation. This became the basis for judicial review.

Examples of judicial review in context to landmark cases

Over the past few years, the Supreme Court has utilized its power of judicial review to overrule numerous cases decided by the lower courts. Mentioned below are some of the instances of such notable cases:

Roe v. Wade (1973)

In Roe v. Wade (1973), the Supreme Court affirmed that the state laws that forbade abortion were unconstitutional and that women had the right to get an abortion. This right fell within the right to privacy enshrined under the Fourteenth Amendment. This judgment of the Court affected all the 46 states in the U.S. Further, in a broader sense, this case ensured that the Supreme Court’s right to exercise judicial review extended to matters relating to women’s reproductive rights, like contraception. 

Loving v. Virginia (1967)

In this famous case of Loving v. Virginia (1967), the Supreme Court struck down state laws that forbade interracial marriage, claiming that any differences carried out in executing such laws were generally “odious to a free people” and were subject to “the most rigid scrutiny” under the equal protection clause mentioned in the Constitution. The Court also stated that the Virginia law in discussion served no other purpose than “invidious racial discrimination”.

Citizens United v. Federal Election Commission (2010)

In this controversial case that remains contentious to date, the Supreme Court ruled that the laws that forbid spending on election advertising or political campaigns by groups like corporations, labor unions, or other collective entities are against the First Amendment of the Constitution as imposing limitations constitutes a prior restraint on speech. The Court, with a 5-to-4 majority, reached a decision that, under the First Amendment, corporate funding of political advertisements in elections cannot be restricted or limited. 

Obergefell v. Hodges (2015)

In the case of Obergefell v. Hodges (2015), the Supreme Court, again trudging through controversy-swollen waters, declared state laws that considered same-sex marriage to be unconstitutional, a violation of the Fourteenth Amendment due process clause. By a majority 5-4 ruling, the Court remarked that the due process of law clause under the Fourteenth Amendment fends for the right to marry as a fundamental right and that the same provision is apolitical to all couples, including same-sex couples, in the same manner as that of opposite-sex couples. Additionally, the Court also commented that even though the First Amendment protects the rights of religious organizations to follow their principles, it does not permit them to refuse same-sex couples their right to be married on the same conditions as that of opposite-sex couples.

History of judicial review

The history of judicial review in the United States is quite elaborate; hence, for the better understanding of the readers, it has been divided into three parts based on the timeline, namely: 

1. Before the enactment of Constitution, 
2. Between the enactment of Constitution and the judgment in the Marbury case, and
3. After the judgment of the Marbury case.

Judicial review before the enactment of the Constitution

Even before the Constitutional Convention was enacted in 1787, the power of judicial review had been utilized by a number of states. From 1776 to 1787, the state courts in at least seven out of the thirteen states exercised the power of judicial review and declared several state statutes to be null and void as they violated the provisions or clauses of the state Constitution or other higher laws enacted during that period.

Further, the first American decision to recognize the principle of judicial review was Bayard v. Singleton 1 N.C. 5 (N.C. Super. 1787). This case was decided by the Supreme Court of North Carolina’s predecessor. The state of North Carolina and its equivalents in other states dealt with state constitutions as statements of governing law to be clarified, elucidated, and applied by the judges.

According to these courts, as the state constitution was the main law of the state, the state constitution must be applied rather than any other act or legislature that was not in accordance with the state laws. A point must be noted that these state court cases that exercised their power of judicial review were announced in the press and were open for public decision and comment. Some of the notable cases decided by the state courts that involved judicial review were as follows:

1. Commonwealth v. Calton 8 Va. 5, 4 Call 5 (1782),
2. Rutgers v. Waddington (New York, 1784),
3. Trevett v. Weeden (Rhode Island, 1786).

Larry Kramer, a scholar, approved Justice Iredell’s opinion that said any judge who applies any unconstitutional law has their hands joined in the unconstitutionality and that they also become lawbreakers. Further, the following delegates to the Constitutional Convention, inter alia, were familiar with the concept of judicial review as they were lawyers or judges by profession and had experienced the principle of judicial review themselves:

1. Alexander Hamilton,
2. John Blair Jr. George Wythe, and
3. Edmund Randolph.

Moreover, other delegates to the Constitutional Convention adverted to some of the court cases during the debates at the Constitutional Convention. Thus, the framers and the public of the U.S. were familiar with the concept of judicial review before the Constitutional Convention. Some historians claim that Dr. Bonham’s case played a major role in influencing the development of judicial review in the U.S. This has been quite a subject of contention among some historians.

Judicial review between the period of adoption of the Constitution and the judgment of the Supreme Court on the Marbury case

Judiciary Act of 1789

The Judiciary Act of 1789 was passed by the first Congress. This Act established the lower federal courts and prescribed all the requisite details involving federal court jurisdiction.

Under the Act, Section 25 stated that in any matter where the state court took a decision to deem a federal statute to be null and void or when the state court validated any statute that was otherwise objectionable or against the provisions of the Constitution, then the Supreme Court has to hear appeals from the state courts. This Section explicitly gives the Supreme Court the authority to examine and inspect the decisions inferred by the state court that involves the constitutionality of both federal and state statutes. Thus, with the advent of the Judiciary Act, the concept of judicial review was incorporated into the justice system.

Court decisions from 1788 to 1803

Before the ratification of the Constitution in 1788 and the landmark ruling in the Marbury case in 1803, the power of judicial review was exercised in the federal and state courts. In a comprehensive analysis by Professor William Treanor, it was found that about thirty one state or federal cases between the period of 1788 and 1803 were struck down and declared to be unconstitutional, whereas there were an additional seven cases where statutes were upheld, but there was at least one judge in these cases who dissented the decision and claimed them to be unconstitutional. Further, upon examining the above cases, Professor William Treanor concluded that “the sheer number of these decisions not only belies the notion that the institution of judicial review was created by Chief Justice Marshall in Marbury, it also reflects widespread acceptance and application of the doctrine.”

Before the landmark case of Marbury was decided, several other cases related to judicial review reached the Supreme Court. For instance, in Hayburn’s case, 2 U.S. (2 Dall.) 409 (1792), the federal circuit courts made history when it was held that an act of Congress was null and void for the first time. In this case, circuit courts reached a decision that Congress had contravened the provisions of the Constitution by enacting an Act that needed circuit court judges to determine matters involving pension applications. The circuit courts considered this decision to be against the functions of the judiciary under Article III. Thus, even though an appeal was made to the Supreme Court on these decisions, the appeals became insignificant when the statute was revoked by Congress during the pending appeals. 

Further, in yet another case, United States v. Yale Todd (1794), which was not officially reported and whose reference was made in the form of a note at the end of the decision of the Supreme Court in the case titled United States v. Ferreira, 54 U.S. (13 How.) 40 (1851), the Supreme Court overturned a pension that was awarded in context to Hayburn’s case. The Court in this case came to the inference that the Act giving judges the authority to decide pensions was unconstitutional as it was not their judicial function. However, it must be noted that since there was no official report published in regards to this case, it was not used as a precedent.

Further, Hylton v. United States, 3 U.S. (3 Dall.) 171 (1796), was another case in which the Supreme Court challenged the constitutionality of an act of Congress. In this case, it was contended that a federal tax on carriages overstepped the constitutional provision pertaining to “direct” taxes. The Court upheld the tax, claiming it to be constitutional. Even though the Court did not assert this provision to be invalid, it engaged in the process of judicial review by scrutinizing the validity of the same. This case received widespread publicity at that time, and the observers understood that the constitutionality of an act by Congress was being assessed by the Court. As the statute was declared to be valid, the Supreme Court did not explicitly mention that it had the authority to pronounce that a particular statute was unconstitutional.

Moreover, in the case of Ware v. Hylton, 3 U.S. (3 Dall.) 199 (1796), the Supreme Court invalidated a state statute for the first time. The Court scrutinized a Virginia law under the supremacy clause in context to the pre-revolutionary war debts and established that it was against the peace treaty between the United States and Great Britain, thus declaring it to be invalid.

Further, in the case of Hollingsworth v. Virginia, 3 U.S. (3 Dall.) 378 (1798), the Supreme Court ruled that it had no jurisdiction to hear the matter considering the limitations provided in the  Eleventh Amendment. This decision can be considered an implicit finding that the Judiciary Act of 1789, which empowers the court to take decisions, was partly unconstitutional. Besides, the Court did not justify its decision, nor did it comment that it found the statute to be unconstitutional.

Further in the case of Cooper v. Telfair, 4 U.S. (4 Dall.) 14 (1800), Justice Chase commented, “It is indeed a general opinion—it is expressly admitted by all this bar and some of the judges have, individually in the circuits, decided- that the Supreme Court can declare an act of Congress to be unconstitutional, and therefore invalid, but there is no adjudication of the Supreme Court itself upon the point.”

Judicial review after the judgment of Marbury

The Marbury case acted as a turning point for the Supreme Court, as it adopted a monitoring role over the activities of the government. After the Court wielded its power in the Marbury case, it refrained from overruling federal statutes for the next five decades. The Court did not take action in this regard until 1857 in the case of Dred Scott v. Sandford, 60 U.S. (19 How.) 393 (1857), but the Court did utilize its power of judicial review in other cases, especially in numerous state statutes that were against the provisions of the Constitution. In the case of Fletcher v. Peck, 10 U.S. (6 Cranch) 87 (1810), the Supreme Court struck down a state statute as unconstitutional. 

Further, in some cases, the state courts’ judgments were final and not subject to review by the Supreme Court. They contended that the Supreme Court has no power granted by the Constitution to analyze the decisions of the state court. Moreover, the state courts argued that the Judiciary Act of 1789, which granted the Supreme Court the power to hear appeals from state courts, was not valid or constitutional. Also, these state courts claimed that the principle of judicial review was not extendable to authorize federal review of state court decisions, but this would have given the states the freedom to adopt their own interpretations of the Constitution, thus the argument was rejected by the Supreme Court. 

In the case of Martin v. Hunter’s Lessee, 14 U.S. (1 Wheat.) 304 (1816), the Supreme Court ruled that according to Article III of the Constitution, the federal courts have jurisdiction to hear all cases arising from the Constitution and laws of the United States. It also held that the Supreme Court has appellate jurisdiction pertaining to all such cases, irrespective of whether they were filed in state or federal courts. The Court reiterated the decision in a criminal case titled Cohens v. Virginia, 19 U.S. (6 Wheat.) 264 (1821). Further, the fact that the Supreme Court has the power to examine decisions of state courts that involve federal law is now well established. Additionally, the Supreme Court in the case of Little v. Barreme, 6 U.S. (2 Cranch) 170 (1804), commonly known as the “Fish case,” has reexamined the actions of the federal executive branch, deciding whether actions were authorized by acts of Congress or exceeded the authority or power given to Congress. 

Besides, until September 2017, the Supreme Court had declared around 182 acts of the U.S. Congress to be unconstitutional, either in entirety or in parts. Some recent cases were taken in 2017 and 2019 in Matal v. Tam, 582 US (2017) and Iancu v. Brunetti, 139 S. Ct. 2294 (2019) respectively, where some portions of the Lanham Act of 1946 were struck down as they violated the freedom of speech clause.

Main objects of judicial review

The main objectives of judicial review in the U.S. are as follows:

1. To affirm that the laws are unconstitutional in case they are not in accordance with the provisions of the Constitution, which, by the way, is regarded as the supreme law of the country.
2. To stand up against rational laws that are challenged to be unconstitutional.
3. To safeguard and uphold the supremacy of the U.S. Constitution by interpreting its provisions.
4. To safeguard the legislative functions of the Congress from being cut in or encroached upon by other departments of the Government.
5. To keep a check on the activities of the Congress and the state legislature on delegation of essential legislative functions to the executives or to keep a check on the Congress on the delegation of legislative functions to the state legislature. 

Judicial review and the Constitution

The framers of the US Constitution, considering the doctrine of separation of power and limited government, did not initially provide the power of judicial review to the judiciary; however, considering the available records, it is found that a majority of individuals in the Philadelphia Convention favored the provisions of judicial review. Additionally, Alexander Hamilton, the founding father of the United States, opined that the branch of “independent judiciary” was the best blockade to constitutional encroachments committed by other branches of government and had the intention of entrusting the Supreme Court with the supreme authority to set aside legislation, thereby promoting the principle of check and balance. It should be noted that there is no explicit provision in the Constitution on the Supreme Court’s power of judicial review, but it is implied under Article III Section 2⁴ and Article VI Section 2.

Article III, Section 2, states that “the judicial power shall extend to all situations, in law and equity, arising under this Constitution, the United States’ laws, as well as the, and the treaties made or to be formed under this authority.” Whereas, Article VI, Section 2, states that “this constitution and the laws of the United States adopted in pursuance thereof, as well as any treaties formed under the authority of the United States, shall be the supreme law of the land.”

Human rights, being experimentally enforced in the United States, have paved the way for establishing the procedure of judicial review in the United States. The judiciary has been meticulously working on safeguarding the rights of individuals belonging to socio-economic strata and minority interests that are afflicted with inadequate representation in the decision-making process. 

Some of the noteworthy decisions are as follows:

Plessy v. Ferguson (1896)

In the case of Plessy v. Ferguson (1896), the Supreme Court of the United States referred to the doctrine of ‘separate but equal’;  as per this doctrine, laws mandating racial segregation were constitutionally valid. The US Supreme Court, by a seven-to-one majority, reached a decision that the laws mandating separate but equal doctrine were valid and that there can be separate but equal accommodation for African Americans and whites. The Court also opined that as the accommodations were seemingly equal and separate, it did not indicate legal inferiority and that such laws were not a violation of the Thirteenth Amendment that prohibited slavery, nor was it an infringement on the rights of legal equality of the black, which would be a violation of the Fourteenth Amendment that guaranteed equal protection of the laws to all. It further said the Fourteenth Amendment guarantees the right to ‘equal’ and not ‘same’ services or facilities. 

Significance of the case

This case was significantly important because it affirmed the constitutionality of racial segregation. As a matter of power, it precluded constitutional challenges to racial segregation for more than half a century until it was finally overturned in one case discussed in the coming passages.

Weeks v. United States (1914)

In the case of Weeks v. United States (1914), the U.S. Supreme Court, for the first time, applied a principle that was eventually known as the ‘exclusionary rule’. 

In this case, police visited the house of Fremont Weeks and confiscated some papers that were then used against him to convict him of transporting lottery tickets through the mail. The police seized these papers without a search warrant. Aggrieved by such an act, Week decided to take action against the police and filed a petition for the return of his private possessions. The main issue, in this case, was whether such an act by the police violated the Fourth Amendment rights granted to the citizens of the nation.

Verdict of the case

The Supreme Court reached a decision that the activity performed by the police officers in seizing the papers was a direct violation of the Fourth Amendment. Further, it also opined that the government’s refusal to submit his possession was also a violation of the Fourth Amendment. The Court said any evidence extracted by unjustifiable or illegitimate search and seizure is not admissible in court as evidence.

Significance of the case

As mentioned above, this was the first case where the principle of ‘exclusionary rule’ was mentioned. 

Brown v. Board (1954)

In the case of Brown v. Board, the US Supreme Court, by the power of judicial review, overturned the verdict of Plessy v. Ferguson (1896). The US Supreme Court, by a nine-to-zero majority, held that racial segregation in schools was against the Fourteenth Amendment of the Constitution. The Court inferred that providing separate educational facilities for whites and African Americans was quite unequal and that the ‘separate but equal‘ doctrine cited by the Supreme Court in the case of Plessy v. Ferguson was invalid in matters relating to public education.

Significance of the case

This case is regarded as one of the most important rulings of the Supreme Court, as it inspired the Civil Rights Movements in the late 1950s and 1960s.

Fun fact: The attorney who argued on behalf of the plaintiff – Thurgood Marshall, was the first African American to serve in the U.S. Supreme Court.

Other cases where the power of judicial review was executed by the U.S. Supreme Court are Virginia Board of Education v. Barnette (1943) and Tinker v. Des Moines Independent Community School District (1969), where the First Amendment Rights of children going to school were safeguarded. The Supreme Court took a stand against the suppression of ideas, opinions, and learning in the classroom. Moreover, in Miranda v. Arizona, 384 U.S. 436 (1966), the Supreme Court said that a suspect before being taken into custody for arrest or questioning must be informed about the reason; this is referred as ‘Miranda rights’ which is described as the right-

1. to be defended through an attorney,
2. to stay silent, and
3. the right against self-accusation for any evidence, statement or confession to be admissible.

Moreover, in the case of United States v. Nixon (1974), the Supreme Court upheld constitutional supremacy and maintained the principle of checks and balances, rejecting absolute executive privilege, i.e., unqualified presidential immunity from the judicial process.

Importance of judicial review

Judicial review is of utmost importance considering the following reasons:

1. It debars the executives from exercising their tyrannical power.
2. It protected the rights of the citizens.
3. It also plays a major role in keeping safe the independence of the judiciary.
4. It also helps stop the misuse of power, if any, by the branches of the government.

Power of judicial review

The power of judicial review entrusts the Supreme Court with the power to nullify any legislation or act by the other two branches of the government- the legislature or the executive- that contravenes the provisions of the Constitution. As mentioned numerous times, the U.S. Supreme Court usually has the authority to establish policies that have the power to affect the everyday lives of the individuals residing there. For instance, in 1954, the Supreme court overturned Plessy v. Ferguson in the case of Brown v. Board of Education; the decision of the Court led to the desegregation of public schools across the U.S.

Further, there is no explicit mention of the power of courts to carry out a judicial review; however, Alexander Hamilton, in one of his foundational documents, Federalist 78, spoke about the same. He mentioned that the courts must be entrusted with the authority to keep a check on the legislative branch by determining that no acts are against the provisions of the Constitution, which is the supreme law of the land. He said, “The interpretation of the laws is the proper and peculiar province of the courts. A constitution is, in fact, and must be regarded by the judges, as a fundamental law. It therefore belongs to them to ascertain its meaning, as well as the meaning of any particular act proceeding from the legislative body. If there should happen to be an irreconcilable variance between the two, that which has the superior obligation and validity ought, of course, to be preferred; or, in other words, the Constitution ought to be preferred to the statute, the intention of the people to the intention of their agents.”

Need of the power of judicial review

Even though the power of judicial review was utilized without any pre-planned objective, in this era the need for exercising such a power is due to the following matters:

1. To safeguard the Constitution. 
2. To interpret the Constitution.
3. To maintain a balance between the centre and states.
4. To safeguard the rights of the citizens of the United States.
5. To maintain a balance between the different organs of the government and to ensure no organ acts ultra vires. 

Who can do a judicial review in the United States

In the United States, the power of the courts is shown through the mechanism of judicial review. Judicial review is the superpower of the courts. Further, the power of judicial review is entrusted to the Supreme Court and is applicable to any actions by the federal, state, and local legislative and executive branches. Moreover, the federal and state courts have the authority to slash any legislation or activity by the executive branch they deem to be violating the provisions of the Constitution.

Grounds for judicial review

There are several grounds on which judicial review can be conducted by the authorized courts; some of them are as follows:

Illegality

This ground relies on determining the fact of whether the decision-maker had the legitimate power or authority to arrive at the decision thus inferred or whether the decision-maker acted ultra vires while discerning the case. In case the inference was reached without proper legal authority, it may be subjected to judicial review.

Irrationality

This ground states that if the inference thus made was totally irrational and that no reasonable decision-maker could have made it, then such a decision can be annulled by the court.

Failure to follow the proper procedure

If it is found that the decision-maker did not follow the correct, lawful procedure and gave undue advantage to any irrelevant fact(s), then such a decision can be subjected to judicial review. 

Proportionality

This ground says the decision must be in proportion to the objective it was trying to accomplish or reach, and if that is not the case, the decision may be subjected to judicial review. 

Legitimate expectation

This ground states that the decision-maker acts in accordance with the lawful expectations that the person or group seeking remedy had. In the event that the decision-maker does not meet legitimate expectations without providing any justifiable reason for the act, the decision may be subjected to judicial review.

Human rights

This ground ensures there is no decision or step taken that violates any individual’s fundamental human rights, like:

1. The right to a fair trial,
2. The right to freedom of speech, and
3. The right to privacy.  

If the decision or step is against any human right(s), it may be subjected to judicial review. 

Overall, the grounds for judicial review have the object of making sure that public bodies, officials, and public employees act within their legal powers, follow proper procedures, and make decisions that are rational and equitable.

Process of judicial review

There would hardly be any Americans who would argue that the process of judicial review in itself is controversial. As we all know, the judicial branch keeps a check on the legislature and the executive branch through the process of judicial review, as it is crucial to ensure that the structure of the government or the three distinct branches are in check with each other so that no branch acts ultra vires or becomes too powerful.

However, we can safely say that the process of judicial review is quite disputable as the process is subjected to distinct philosophies of constitutional interpretation, like judicial restraint and judicial activism. Let us have a look at what these philosophies exactly are!

Judicial self-restraint

On the one hand, there are supporters of the strict constructionist approach that highlights judicial restraint. These believers are of the belief that judges and judicial officers must not create policies but instead only judge and pass judgments, thus limiting themselves to applying rules stated clearly in the Constitution. This approach to reaching an inference limits policy making decisions by judges, thus depending on previous judgments, precedents, and the laws of the state.

Judicial activism

Whereas, on the other hand, there are believers who advocate for judicial activism, i.e., the Constitution is a living document, and the judges must have the liberty to enact policies, alleviate needs, and correct any acts of discrimination that are not paid attention to in the political process.

The basic limitation of judicial reviews rests with the concept of judicial activism. When the courts over-reach their power without any bona fide intentions, negative activism takes over, and within this concept lie all the limitations of judicial reviews. 

Expansion of judicial review

Over the last few decades, the Supreme Court has successfully made numerous rulings that have struck down laws and executive actions as unconstitutional. In fact, the Court has been able to expand its powers to include exercising judicial review. For instance, the Supreme Court, in the case of Cohens v. Virginia (1821), the power of judicial review was expanded to incorporate matters relating to state criminal courts. Further, in the case of Cooper v. Aaron (1958), the Supreme Court expanded the power of judicial review so as to declare any activity of any branch of the state government unconstitutional. The Court also announced that the states must obey and adhere to the decisions taken by the U.S. Supreme Court and that they cannot refuse to follow them.

Exclusion of judicial review

As per Section 2, Clause 1, of Article III of the U.S. Constitution, the power to exercise judicial review will be extended to all matters; the same is as follows:

1. To all cases in law and equity, that come into existence under this Constitution, the laws of the United States, and treaties enacted, or which shall be enacted, under their authority;
2. To all cases  that affect the ambassadors, other public ministers and consuls;
3. To all cases involving admiralty and maritime jurisdiction; 
4. To altercations to which the United States shall be a party;
5. To altercations amongst two or more states or a state and citizens of another state or among citizens of different states, among citizens of the same state claiming land under grants of different states, and among a state, or the citizens thereof, and foreign states, citizens or subjects.

Limitations of judicial review

There are certain limitations exercised by the court on the exercise of constitutional judicial review; they are as follows:

Doctrines limiting judicial review

Prudential considerations

In context with the case of Marbury v. Madison, it is quite implied that the court has the duty to make decisions that reach jurisdictional standards. 

As stated by Chief Justice Marshall in the case of Cohens v. Virginia, the court will take jurisdiction of the matter only if it has to. The judiciary cannot, like the legislation, bypass taking a step “because it approaches the confines of the Constitution” and that the case cannot be passed because the judiciary is skeptical about it. He further commented that if a case is brought before the judiciary, they are obliged to reach a decision. He also said the court has no more authority to refuse the exercise of jurisdiction that is given than to” usurp that which is not given. The one or the other would be treason to the constitution“. Thus, we can infer from the above comment that judicial review is exercised by the courts only when it is utmost necessary and to declare what the law actually says! Further, we can also deduce that judicial review is exercised by the courts only in those cases that are without will or discretion, and its exercise is surrounded by the inherent limitations of the judicial process. 

Further, the court has at times been more strict in some matters relating to discretionary rules or concepts of restraint for recruiting its power of judicial review, which is a contradiction of the aforementioned comment of Justice Marshall. Also, at times, the courts have been strict in following the prudential theorems to avoid taking any decisions where it felt “restraint” to be more desirable than “activism”.

The doctrine of strict necessity

The Court has time and again asserted that their power of judicial review will only be exercised to decide constitutional issues if strict necessity compels them to do so. Thus, the court will avoid taking decisions on constitutional issues unless it is of utmost necessity to do so.

The doctrine of clear mistake 

A statute or decision can only be declared invalid or illegitimate when those who have the privilege to enact the law have erred in reaching an inference, and the same is crystal clear so as to not open the door to rational questions. Thus, unless the statute is clearly unconstitutional beyond all reasonable doubts, it cannot come under the scrutiny of judicial review by the court. 

The other limitations are: 

1. Exclusion of extra-constitutional tests, 
2. Presumption of constitutionality, 
3. Disallowance by statutory interpretation, and 
4. Stare-decisis in constitutional law.

Laws limiting judicial review

Even though the Supreme Court persists in examining and scrutinizing the constitutionality or validity of statutes, there are some powers reserved for Congress and the states that have an impact on what sort of cases are addressed before the court. For instance, under the Constitution, Article III, Section 2, provides power to Congress to make exceptions to the appellate jurisdiction of the Supreme Court. Moreover, the Supreme Court has explicitly mentioned that Congress has the power to review decisions on appellate jurisdiction and that it may also have the authority to make some legislative or executive action unreviewable. This concept is generally termed “jurisdiction stripping”.

Further, Congress tried a different method to limit judicial review in January 1868. In this matter, a bill was proposed that needed the approval of at least two-thirds majority of the justices in the court to declare any Act of Congress to be unconstitutional or invalid. The bill, however, was approved by the house, but this method was not fruitful as there was no clear mention of how the bill’s own constitutionality would be decided in this matter, hence no decision was reached at.

Moreover, several bills were presented by Congress that would need the approval of a majority of the justices to exercise the principle of judicial review. Further, it must be noted that during the early years of the United States, an approval of a two-thirds majority was required for the Supreme Court to exercise its power of judicial review, the reason being that there were six justices in the Court to decide on any matter, and a simple majority and a two thirds majority, both, would need four votes. Presently, in order for the Supreme Court to exercise its power of judicial review, it is crucial that the Constitutions of two states receive the assent of the majority of Supreme Court justices, for instance, Nebraska (five out of seven justices) and North Dakota (four out of five justices).

Judicial review and the Marbury decision

Facts of the case

1. John Marshall, before taking the position of the Chief Justice of the Supreme Court served as John Adams secretary of state. 
2. On the last day of John Adams in his office, he asked his secretary of state to give commissions of appointments to 17 people, one of whom was William Marbury. William Marbury was to be appointed as the justice of the peace in Washington D.C. 
3. However, Marshall did not succeed in furnishing the commission and left the task to be completed by the new incoming secretary of state- James Madison. 
4. But, Madison expressed his denials to furnish the commission. 
5. Agitated by this action, Marbury sued Madison demanding that an order be issued by the Supreme Court to provide him his commission.
6. Marbury and three others stated that the Supreme Court had the original jurisdiction in the matter under the Judiciary Act of 1789.

Ruling in the case

1. We can say that the new Chief Justice was very much well-versed with the facts of the case, as he was right in the middle when the dispute occurred.
2. Not only was the decision pronounced in the favor of Marbury, but also the Court declared the Judiciary Act of 1789 to be unconstitutional.

Significance of the case

1. It was in this case, where the unanimous decision of Chief Justice John Marshall and his associate justices, the right of the Supreme Court to examine and determine the constitutionality of laws and acts of the executive, i.e., judicial review was born.
2. Since this decision, the Supreme Court has expanded its power of judicial review to quite an extent.

Let us have a look at some of the decisions of the Supreme Court after the landmark judgment of the Marbury case. 

Case laws on judicial review in the United States after Marbury decision

While some cases received widespread public attention, there were some cases that didn’t, yet they provided substantial insights on the principle of judicial review. Mentioned below is an amalgamation of cases from both categories. 

McCulloch v. Maryland (1819)

In the landmark case of McCulloch v. Maryland, 17 U.S. 316 (1819), the U.S. Supreme Court expounded the scope of the legislative power of the U.S. Congress and its relation to the powers of American state legislatures. The dispute in this matter was regarding the powers of federal and state laws. In simple words, this case was about the validity of the national bank and a tax that was imposed by the state of Maryland on the bank. The cashier of the Baltimore branch of the bank, McCulloch, declined to pay any such tax. The case was filed on the grounds that state law has the authority to impose a tax on the bank, which was established by federal law. 

The Supreme Court, in its verdict, stated that the “necessary and proper” clause of the U.S. Constitution entrusted the U.S. federal government with some implied powers that may not be specifically mentioned in the Constitution and that the American federal government is superior over the states, thus the state has limited ability to interfere with the federal government. So, the state law did not have the right to impose a tax on the union authority. As per this judgment, the doctrine of “immunity of instrumentalities” was formulated in this case.

Significance of the case

This case had two major effects on the meaning of federalism in the United States. Firstly, the federal government has some powers that are not explicitly mentioned in the Constitution; thus, with this judgment, the federal power of the federal government was reinforced and the scope of the federal government to achieve the duties and responsibilities provided to them in the Constitution was widened. Secondly, with this decision, it was established that the United States has a solid Central Government and that federal law has authority over state law. 

In a nutshell, this case made sure that the primary intention of the Constitution to build a strong Central Government was achieved. Further, the guarantee that these states cannot impede or meddle with the powers entrusted to the federal government was also attained. 

Gibbons v. Ogden (1824)

In the case of Gibbons v. Ogden, 22 U.S. 1 (1824), one of the landmark decisions taken by the Supreme Court of the United States was concluded by Justice Marshall. Here, it was held that the power granted by the “commerce clause” to Congress also included the power to regulate navigation. 

Significance of the case

This verdict has paved the way to provide the foundation for Congress’ regulation of railroads, freeways, and television and radio broadcasts.

Dred Scott v. Sandford (1857)

The 1857 case of Dred Scott v. Sandford, 60 U.S. 393, was a landmark decision of the U.S. Supreme Court and stated that former slaves or people of African descent did not have the right to approach the federal courts considering they had no American citizenship. Also, they could not enjoy the rights and privileges conferred by the U.S. Constitution considering the absence of citizenship; however, this decision was nullified by the incorporation of the Thirteenth and Fourteenth Amendments.

Significance of the case

This case played a major role in the arguments around the expansion of slavery; it further added fuel to the fire, thus resulting in the Civil War.

Schenck v. United States (1919)

In the case of Schenck v. United States, 249 U.S. 47 (1919), there was an issue of whether or not certain speeches that included sharing anti-war pamphlets drafted by men made in wartime were deemed to be contraventions of the Espionage Act of 1917, protected by the First Amendment right of free speech.  

Here, the Court held that even though it was okay for the defendant to provide his opinion during ordinary times, there are some instances, like this case, where the nation was at war, and thus it does not justify the usage of the right to free speech under the First Amendment.  The Court further stated that if the speech is said with the purpose of committing a crime, and that there is a crystal clear and present danger that such an act will surely result in the commission of a crime, then in such cases, the First Amendment does not safeguard the speaker from stringent actions taken by the government.

Significance of the case

The Schenck ruling became well-known for inventing the “clear and present danger” test, meaning that speech could be regulated if there is a clear and present danger. Further, this decision was the first to elucidate the metaphor of falsely yelling “Fire!” in a theater full of people. 

Interesting fact: This landmark case was overturned in the case of Brandenburg v. Ohio, 395 U.S. 444 (1969), where it was stated that a speech could be restricted if an imminent illegitimate action was provoked. 

Youngstown Sheet Tube Co. v. Sawyer (1952)

In Youngstown Sheet & Tube Co. v. Sawyer, 343 U.S. 579 (1952), another landmark case of the U.S. Supreme Court, an order was passed that instructed the seizure of steel to avert any issue by the then President- Truman. Here, he constructed a law on his own to seize steel from all the citizens. The Court declared that this activity where the executive branch encroached the powers of the legislative branch was purely unconstitutional and further made an observation that the President or military supervision or control is not entrusted with the power to legislate laws under the Constitution In short, the President has no right to seize any individual’s private property without prior permission from Congress or the Constitution. 

Significance of the case

This case, which was tried in the Court during the Korean war, helped curb the power of the executive branch significantly. The Court, with a 6-3 majority, declared the act of the President to be unconstitutional as it had not been authorized by Congress first. 

Mapp v. Ohio (1961)

In the case of Mapp v. Ohio, 367 U.S. 643 (1961), the Court held that any evidence obtained through “unreasonable search and seizures” is not admissible in a court of law. Further, such an activity was also a violation of the Fourth Amendment of the U.S. Constitution. While passing the verdict, the Court said that the exclusionary rule that banned the usage of unconstitutionally obtained evidence in federal courts also extended to the states through the incorporation doctrine. This doctrine holds that most of the protections of the federal Bill of Rights are guaranteed against the states through the due process clause under the Fourteenth Amendment, which prevents states from denying life, liberty, or property without due process of law.

Must know fact: The aforementioned case was partly overturned in the case of Wolf v. Colorado, 338 U.S. 25 (1949).

Significance of the case

This case reinforced the Fourth Amendment’s protection, thus making it stronger against activities like illegitimate searches and seizures for any evidence obtained without a prior warrant to be used in a criminal trial or state court. 

Engel v. Vitale (1962)

In Engel v. Vitale, 370 U.S. 421 (1962), a challenge was made in the Supreme Court by a group of agitated parents when schools in New York motivated teachers to lead students in a “non-denominational” prayer every morning. The Court established that school-led prayer was against the First Amendment and that there is a need to separate government and religion.

Significance of the case

This case struck down “non-denominational” prayers in public schools and raised the issue of whether public schools had the right to give consent to classroom prayers, especially when the U.S.A. was highly pluralistic and secular.

Gideon v. Wainwright, 372 U.S. 335 (1963)

In Gideon v. Wainwright, 372 U.S. 335 (1963), an issue was raised as to whether the Constitution has any provision that guarantees any individual charged with the offense of felony but not having the means to afford a lawyer to get legal aid through legal counsel or not. The Court, with the support of a majority of judges, asserted that a criminal defendant who cannot afford to pay for legal assistance can have a state appointed attorney under the Fourteenth Amendment, which creates such a right. Also, the Court affirmed that lawyers in criminal court cases are necessities and not luxuries.

Significance of the case

Along with the right to have legal assistance in criminal cases, this case also led to the expansion of the public defender system throughout the nation. 

New York Times v. Sullivan (1964)

In New York Times Co. v. Sullivan, 376 U.S. 254 (1964), during the Civil Rights Movement, a newspaper titled, “New York Times” published an advertisement that had some minor faults in its facts. This ad requested that people contribute donations to defend Martin Luther King, Jr., who was charged with the offense of perjury. The city Public Safety Commissioner, L.B. Sullivan, took it personally, as he felt criticism of his subordinates would also reflect on his ability, even though his name was not mentioned anywhere; so he sent a notice to the New York Times to retract the information, but they denied taking any such action. Thus, he filed a lawsuit, and he was awarded $500,000 for the damages by the Alabama State Court. The same decision was affirmed by the State Supreme Court, with which the New York Times disagreed and thus requested a higher court to review the decision. 

Thus, the Supreme Court gave its judgment in a unanimous 9-0 majority and stated that in order for a claim of defamation or libel to be successful, it is necessary that the plaintiff provide proof that the defendant was aware of the statement being false or reckless when the information was published without scrutinizing the facts properly, as mentioned under the First Amendment. 

Significance of the case

This decision determined the essential principle of freedom of speech guaranteed by the First Amendment. This decision ensured that the press may at times publish potentially defamatory or libellous statements regarding a public figure to ensure proper discussions and open exchanges of viewpoints on government authorities and public figures. 

Miranda v. Arizona (1966) 

In this case, the main issue was whether the police officials were obliged to inform people of their rights, like the right to remain silent and have legal assistance, or not. The Supreme Court affirmed and stated that under the Fifth and Sixth Amendments, the police officials must enlighten the individuals in police custody about the right to remain silent and get legal aid, and if the police err in doing so, the judge of the criminal court has the power to deny admission of evidence in the form of a statement provided by the accused during trial. 

Significance of the case

This case led to the framing of Miranda rights and “Miranda warnings” that police officials are required to practice during arrests and interrogations.

Terry v. Ohio (1968)

In Terry v. Ohio, 392 U.S. 1 (1968), the Supreme Court ruled that, under the Fourth Amendment, the police have the right to stop a suspect and frisk that person without probable cause to arrest if there is reason to believe that the person has committed, is committing, or is about to commit a crime and that they have reasonable reason to believe he is armed with dangerous weapons.

Significance of the case

This case set a precedent allowing police officials to stop and frisk any suspect if need be, thus making it constitutional for police officers to “stop and frisk”. 

Tinker v. Des Moines (1969)

In this case, the most important issue raised was whether the authorities of public schools were entitled to disallow students from wearing a ‘black armband’ as a form of protest under the First Amendment of the U.S. Constitution. The Supreme Court of the US said that the armbands depicted the students’ right to free speech and expression. Further, these students cannot be deprived of these rights while they are on school premises. This inference was reached keeping in mind the right to free speech under the First Amendment. Additionally, the Court also remarked that school authorities could only put a ban on such activities when they interfered with or hindered the process of providing education to the students. 

Here, there was no proof of any such activity taking place, and the school’s action clearly was a consequence of a fear of possible disruption rather than any actual interference, which is a violation of the First Amendment.

Significance of the case

This case became the basis for challenging any school-based oppression that violated the First Amendment. 

United States v. Nixon (1974)

In this notable case of United States v. Nixon, 418 U.S. 683 (1974), the Supreme Court passed an order instructing Richard Nixon, who was the President then, to give evidence of tape recordings and other requisite documents that were related to the scandal to the federal district court. The judgment said the President cannot protect himself from furnishing evidence in a criminal prosecution case based on the doctrine of executive privilege, although the doctrine is reasonable in other instances.

Significance of the case

This case is one of the most well-known cases that limited the use of Presidential powers in the U.S.A. on the basis of the doctrine of executive privilege.

Goss v. Lopez (1975)

In Goss v. Lopez, 419 U.S. 565 (1975), an issue was raised as to whether or not the act of suspending students without any preliminary hearings violated the due process rights guaranteed to the students under the Fourteenth Amendment. 

Here, the Supreme Court held that a public school has to first hear the students before suspending them and that not following this process will lead to a violation of the due process clause under the Fourteenth Amendment of the Constitution.

Significance of the case

In a 5-4 majority, the Court, in this case, held that, as the right to education was extended to its citizens in the state of Ohio, the right cannot be withdrawn on grounds of any misconduct. In this case, it was imposed that students facing suspensions have the right to be heard and be given notice in accordance with the same under the Fourteenth Amendment. 

Regents of the University of California v. Bakke, (1978)

In the well-known case of Regents of the University of California v. Bakke, 438 U.S. 265 (1978), an issue was raised, that does an institution of higher learning have the authority to use race as a factor while admitting students or not? The Supreme Court reached a verdict that race, as a part of the admission procedure, be used by the universities until and unless there is no utilization of the process of a “fixed quota system“. Further, the Court also affirmed that, as the above case pertains to following the procedure of a fixed quota system, it is quite unnecessary. The Court declared this activity unconstitutional. 

Significance of the case

This decision was the basis for starting a line of cases where the Court upheld affirmative action programs. In 2003, this program was again challenged in two cases, namely:

1. Gratz v. Bollinger, and 
2. Grutter v. Bollinger.

In these cases, the Court elucidated that admission programs may include race as one of the factors in admitting students as long as they are narrowly tailored and do not create an automatic preference on the grounds of race. The Court also opined that a system that creates race-based preferences will be against the equal protection clause under the Fourteenth Amendment.

Texas v. Johnson (1989)

In Texas v. Johnson, 491 U.S. 397 (1989), a landmark Supreme Court case, a question was raised as to whether any activity related to the desecration of an American flag, by burning or otherwise, was safeguarded under First Amendment rights or not. Astonishingly, by a 5-4 majority, the Court held that the activity of burning an American flag was protected under the right to free speech under the First Amendment, as doing so counts as “symbolic speech and political speech”.

Significance of the case

This case established that the right to free speech under the First Amendment is more important than the American flag as a symbol of nationhood. 

Zelma v. Simmons-Harris (2002)

In Zelman v. Simmons-Harris, 536 U.S. 639 (2002), the main issue was whether Ohio’s school voucher program was a violation of the establishment clause under the First Amendment or not. The Supreme Court, by a 5-4 majority, held that a state can establish programs to provide parents with tuition vouchers that would eventually permit students to attend a private or religious school of their choice, as the vouchers were not limited to the promotion of religious schools only.

Significance of the case

In this case, the Court stated that publicly funded vouchers could be used to send children to religious schools, provided they are in accordance with all the constitutional conditions. 

Grutter v. Bollinger (2003)

In Grutter v. Bollinger, 539 U.S. 306 (2003), an issue was raised as to whether the action of the University of Michigan Law School to admit students based on racial preferences violated the equal protection clause under the Fourteenth Amendment or Title VI of the Civil Rights Act of 1964 or not. Here, it was concluded that using race as one of the factors in admitting students to a public educational institute is not against the equal protection clause of the Fourteenth Amendment if such a policy is “narrowly tailored” to serve the compelling interest of having a diversity of students on the law school premises and if a holistic procedure is followed to scrutinize every application as opposed to the quota system.

Significance of the case

This decision authorized the usage of racial preference in admitting candidates in order to promote diversity among students on the school premises. 

Roper v. Simmons (2005)

In the case of Roper v. Simmons, 543 U.S. 551 (2005), a question was raised as to whether or not providing a minor with the death penalty violated the prohibition of “cruel and unusual punishment” stated under the Eighth Amendment and applied to the states through the incorporation doctrine of the 14th Amendment. The Court stated that executing a minor for a crime committed when they were under 18 years of age is indeed a “cruel and unusual punishment” and is prohibited under the Eighth Amendment.

Significance of the case

This case finally led to the termination of the juvenile death penalty. 

Obergefell v. Hodges (2015)

In Obergefell v. Hodges, 576 U.S. (2015), fourteen same-sex couples along with two men whose partners passed away filed a suit in federal district courts in their home states under the grounds that their Fourteenth Amendment rights were violated and that they were deprived of their right to marry or to conduct marriages legally in another state, and they should be given full recognition. Here, every district court gave its verdict in favor of the petitioners, except the Sixth Circuit, which combined all these cases and reversed the judgment, so the petitioners approached the Supreme Court. The main issue raised here was whether the state violated the right of same-sex marriage couples t marry enshrined under the Fourteenth Amendment or not. The Supreme Court ruled that same-sex couples have the fundamental right to marry each other under the due process and equal protection clauses stated under the Fourteenth Amendment.  

Significance of the case

This case widened the scope of legitimate marriages for same-sex couples throughout the United States.

Reed v. Town of Gilbert (2015)

In Reed v. Town of Gilbert, 576 U.S. (2015), an issue was raised as to whether or not an ordinance restricting the “size, number, duration, and location of temporary directional signs” was against the free speech clause of the First Amendment or the equal protection clause of the Fourteenth Amendment. The Court, by a 9-0 majority, ruled that the limitations levied were subject to strict scrutiny under the First Amendment as they were content-based restrictions or those restrictions that were applied in a different manner depending on the message of the sign. 

Significance of the case

The decision taken with the agreement of the majority of judges reiterated that the signs, which were treated differently based on their content, were unconstitutional. This decision reconfirmed the principle of content discrimination as an animating principle of First Amendment law. 

Matal v. Tam (2017)

In Matal v. Tam, 582 U.S. (2017), the Supreme Court held that one’s right to register a trademark cannot be denied as the mark denigrates or brings into contempt any living or dead person or association of persons, and that restricting the registration is against the right of free speech under the First Amendment.

Significance of the case

This case, by a unanimous decision of an 8-0 majority claimed that speech may not be restricted on the basis that it conveys ideas that are offensive. This case struck down a portion of the Lanham Act of 1946 as it infringed on the right to free speech.

Iancu v. Brunetti  (2019)

In Iancu v. Brunetti, 588 U.S. (2019), an issue was raised as to whether Section 2(a) of the Lanham Act, which imposed restrictions on federal registrations of “immoral” or “scandalous” marks, was against the right of free speech under the First Amendment. Here, the Supreme Court gave its verdict in affirmation, and the judgment was pronounced by Justice Elena Kagan.

Significance of the case

This case struck down a portion of the Lanham Act of 1946 as it infringed on the right to free speech under the First Amendment.

The impact caused by judicial review : a timeline of landmark cases 

Even though it is not easy to not overemphasize the impact of the Marbury case on the legal American system, there are several cases that have been overruled and federal or state statutes that have been struck down after passing the judgment in the Marbury case. Below are some of the most widespread cases, which are of historical importance and will help us look at the impact caused by judicial review.

Brown v. Board of Education 347 U.S. 483 (1954)

In this case, the Supreme Court rescinded state laws that mentioned that different schools be established for black and white students. The judgment mentioned that such a  rationale is against the “equal protection” clause discussed in the Fourteenth Amendment. 

Gideon v. Wainwright 372 U.S. 335 (1963)

In this case, the Supreme Court made it compulsory for states to assign counsel to poverty-stricken defendants in criminal cases. This applied to all those defendants who were allegedly charged and tried for committing a felony but did not have the means, money, or resources to have their own counsel. 

Loving v. Virginia 388 U.S. 1 (1967)

In this case, the Supreme Court overruled a Virginia statute that prohibited interracial marriages on the grounds that these statutes were against the principles of due process of law and the equal protection clause stated under the Fourteenth Amendment. 

Brandenburg v. Ohio 395 U.S. 444 (1969)

Here, the Supreme Court asserted that the laws of the state on criminal activity that penalized citizens for incitement will not be applied unless the speech was spoken with the intention to and likely to cause people to get into an “imminent lawless action”.

Furman v. Georgia 408 U.S. 238 (1972)

In this case, the Supreme Court declared that the death penalty is a violation of the Eighth Amendment, which forbids cruel and unusual punishment when it is imposed in a manner that is arbitrary and capricious, thus causing discrimination. The Supreme Court temporarily halted the death penalty in the US for a while.

Roe v. Wade 410 U.S. 113 (1973)

In this famous case, the Supreme Court overruled state laws that declared abortion to be illegal. It stated that a person may have the right to abortion until a fetus becomes “viable”,  on the grounds of the right to privacy mentioned in the Due Process clause of the Fourteenth Amendment. Even though this case and several other subsequent cases have witnessed treading a tightrope in deciding how far the applicability of abortion goes, the fundamental concept of the right to have an abortion is safeguarded as a part of the right to privacy, thus keeping in mind the law of the land. 

Buckley v. Valeo 424 U.S. 1 (1976)

In the case of Buckley v. Valeo (1976), the Supreme Court, in one of the landmark decisions on campaign finance, annulled the spending limit set on individuals and groups on campaign expenditures, expenditures by a candidate from personal resources, or independent expenditures by groups supporting the campaign, as the Court correlated money with speech in this context, so the clause on the First Amendment is applicable here. The Court also stated that the government has the authority to set limitations on how much individuals can contribute to political campaigns but not on the personal spending they contribute for propaganda. 

Regents of the University of California v. Bakke 438 U.S. 265 (1978) 

In this case, the Supreme Court overruled some types of racial preferences in the state college admissions as they violated the equal protection clause.

Lawrence v. Texas 539 U.S. 558 (2003)

In this case, the Supreme Court declared sodomy to be illegitimate in fourteen states of the United States, thus making the sexual activity of same-sex couples legal in these states.

Citizens United v. Federal Election Commission 558 U.S. 310 (2010)

In this case, the Supreme Court overruled a federal election law that imposed limitations on spending on advertising of political parties during elections by corporate groups and other organizations. 

National Federation of Independent Business v. Sebelius (2012) 567 U.S. 519 (2012)

This case, commonly referred to as the “Obamacare” decision, was widespread for upholding most of the Patient Protection and Affordable Care Act. Moreover, it also overruled a provision of the law that posed a threat to withhold Medicaid funding from states that did not cooperate with the law, on the basis that this was an unconstitutional violation of states sovereignty. 

Even though some of the above landmark cases remain controversial, none of these decisions would have been reached had there been no power for the judiciary to exercise judicial review. In all the cases, including the one mentioned above, the court has exercised its power of judicial review to determine whether an act by a federal or state government was null and void as a violation of any constitutional provision. It is this power that truly makes the courts a co-equal branch of government with the other two branches, i.e., the executive and the legislature. Further, this power enables the judiciary to defend and safeguard the rights of the people against potential intrusions by other branches. 

Current scenario of judicial review in US

As mentioned above, the scope of judicial review in the United States widened only after the Marbury case. Further, in Reed v. Town of Gilbert (2015), which is discussed in detail above, an ordinance was passed regarding Gilbert Town that prohibited the display of some political signs, and the same was challenged by a church and its priest.

Justice Clarence Thomas, on behalf of the majority of the bench, affirmed that any such segregation drawn by the ordinance was not permissible. He further declared that all content-based laws will need the exact same form of judicial review and strict scrutiny. The Court further stated that content-based laws target speech on the grounds of its communicative content and that they are supposedly unconstitutional and may be defended only if the government proves that they are customized or shaped so as to serve the compelling interests of the state.

Judicial review during the COVID-19 era : a recap

During the COVID-19 period, the judiciary took several measures to safeguard the right to health of those participating in the processes of providing justice while simultaneously offering services to provide access to justice at the time of such a crisis. The announcement of an emergency and the development of crisis procedures across Latin America and the Caribbean as a reaction to the pandemic have had a huge impact on the actual functioning of the court.

Moreover, one of the most noteworthy impacts of the COVID-19 pandemic was oral arguments through teleconferences, which played a major role in encouraging people to form their opinions on several cases. 

These COVID-19 related cases are known to have covered a broad array of important privileges, rights, and freedoms, ranging from voting procedures to abortion rights to matters relating to immigration to pension conditions, and have forced the court to dive into the difficult health and safety issues faced by the citizens of the nations and reach an inference. It must be noted that, in some matters, the Court has successfully reached a conclusion, whereas in others they have either issued a brief order or provided written opinions, and in others they have passed no judgment or taken no action whatsoever. There were some cases that were decided unanimously by the majority of judges, and there were some judgments that divided the court.

Criticism of judicial review 

The concept of judicial review has received a lot of criticism in all nations, from the U.S.A. to the U.K. to India. Mentioned below are some of the criticisms.

1. It creates a conflict in separation of power. 
2. It, at times, does not give regard or pay heed to the opinion of the public.
3. It is occasionally known to have served its own interests.
4. It is always assumed that the judiciary is always right, but there are instances where a judge’s opinion could be incorrect, and there are no provisions for redressal in such matters. 

Conclusion

To sum up, we can say that the Constitution of the U.S.A., being the most rigid Constitution in the world, is succinct in nature, and the words and expressions are quite general in nature, but even then, it has played a major role in safeguarding the rights and freedom of the citizens of the U.S.A., one of them being the power to exercise judicial review.

Further, the twentieth century witnessed a lot of development in the judiciary department, especially, the principle of judicial review. Prior to the Marbury decision in 1890, there was hardly any concept of judicial review, and even if it were practiced it was quite unplanned and unsystematic. Only after the Marbury case did the concept of judicial review become concrete.

To conclude, we can say that judicial review in the United States of America, which is defined as the power of the courts to keep a check on the cavities of the legislative and executive branches of the government by scrutinizing whether these legislations or acts are in accordance with the clauses of the U.S. Constitution, is of utmost importance as the judicial branch is an independent branch of the government that keeps a check on other branches of the government through its powerful judicial practice of judicial review.

Frequently Asked Questions (FAQs) on judicial review

Does the Supreme Court of United States have the power to settle legal and moral issues through judicial review?

Yes, the Supreme Court of the United States has the power to strike down any legislation or action by the legislative or executive branches they deem unconstitutional or in violation of any provision of the U.S. Constitution. This power to exercise judicial review is applicable to all federal, state, and local legislative and executive actions; however, there is no explicit mention of the power of judicial review in the Constitution.

In which case was the concept of judicial review first introduced?

As mentioned numerous times above, the doctrine of judicial review was formulated for the first time by the Supreme Court of the United States in the landmark case of Marbury v. Madison in the year 1803. It must be noted that this case was ruled on by John Marshall, the then Chief Justice of the U.S. Supreme Court.

What role does the Supreme Court of the U.S.A. play in determining cases on judicial review?

The Supreme Court of the U.S.A. is entrusted with the power to claim that any legislative,  executive, or governmental activity is unconstitutional or a violation of the provisions of the Constitution and that it is void.

Are decisions taken by the Supreme Court of U.S.A. binding?

Yes, all the decisions taken by the Supreme Court of the U.S.A. are binding on all the federal courts and state courts, especially when they involve constitutional interpretation. 

Also, when the Supreme Court passes a judgment on any constitutional issue, that judgment is said to be final and can only be modified by a procedure of constitutional amendment or by passing a new ruling by the court; however, this process is rarely followed. 

Can all state courts cases be reviewed judicially by the U.S. Supreme Court? 

In the U.S.A., the Supreme Court can review a decision of the U.S. Court of Appeals, however, it is not obligatory for the Supreme Court to do so. Further, the Supreme Court is generally the final arbitrator when it comes to deciding federal constitutional questions. Only certain cases are eligible to be reviewed by the Supreme Court. 

As per the Supreme Court, what is the major difference between enumerated powers and implied powers?

Enumerated powers are those powers that are explicitly given to the federal government, on the other hand, implied powers are not explicitly mentioned anywhere but are important for carrying out enumerated powers. Further, enumerated powers are explicitly mentioned in the Constitution, whereas implied powers are those powers that are crucial for carrying out enumerated powers. For instance, Congress has the enumerated power to deliver the mail, and so it has the implied power to hire people to perform the activity.

References

• https://nationalparalegal.edu/JudicialReview.aspx#
• https://www.thoughtco.com/what-is-judicial-review-104785
• https://www.studysmarter.co.uk/explanations/politics/us-government-structure/judicial-review/
• https://ijcrt.org/papers/IJCRT2202375.pdf
• https://www.americanbar.org/groups/public_education/programs/constitution_day/landmark-cases/

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This article is written by Diksha Paliwal. It discusses in detail the laws pertaining to patent infringement in the US with the help of relevant US case laws. It also provides a basic understanding of the term patent and its origins in the US. 

It has been published by Rachit Garg.

Introduction

As an inventor, you’ve probably heard of patent infringement, but do you know what it is and how it affects you? Patent infringement is a serious issue that affects inventors, businesses, and the public. The article begins with an introduction to the meaning of the term “patent,” followed by a short discussion about the origin of the US Patent System and law and the need for patent infringement laws looking into the present scenario of rising global trade. It then discusses different types of patent infringement in the US, along with various US case laws and important judicial pronouncements in the field of patent infringement. 

Innovations deserve to be protected to retain the exclusivity of something to which the innovator has applied his time, efforts, and intellect. The first right of enjoyment and indispensable advantage must lie with the innovator, and at this very thought, the term ‘patent’ comes into the picture. These inventions of intellect come under the purview of intellectual property and, thus, can be protected by getting a patent for such an innovation or invention. When looked at from a broader perspective, the objective of patents is to protect the interests of the innovator and promote the progress of science and technology, art, and various other new inventions in diverse fields. With the increasing thirst for unending learning and gaining information, new ideas of growth and innovation flow, thus increasing the importance of the protection of these intellectual properties. 

Patent under US law

A patent is a kind of incorporeal property, i.e., jura in re propria (ownership of the intangible property). In layman’s language, a patent refers to an exclusive right that is granted to the innovator for his or her invention. The invention (Section 35 U.S.C. 100(a)) made by the innovator may be a product or a process that facilitates or lays out a new method of doing something. It comes under the purview of intellectual property and is related to or deals with inventions. It is a right that an inventor is bestowed with for the invention of various material or immaterial things like machines, art pieces, designs, techniques, etc. However, for the grant of patent rights, it is crucial that the invention be entirely new and not even slightly based on something that already exists. It must be non-obvious. The patent under US law is issued by the United States Patent and Trademark Office. 

As soon as a person receives a patent, he gets an exclusive right over that invention, and no other person without prior permission from the patent holder can make, import, or sell the patented invention. It is to be noted that a right that a person gets after the issuance of a patent for his or her discovery is negative in nature and not a positive privilege. It endows the patentee with a right to prevent the manufacture, sale, importation, etc. of his or her invention. 

Patents in the US are governed by the Patent Act (35 U.S. Code). This separate Act was enacted by Congress as per the powers conferred on it under Article I, Section 8, Clause 8 of the US Constitution. Congress is empowered to secure the interests of inventors by granting them exclusive rights to their discoveries for a limited period. The department that grants patents, i.e., the United States Patent and Trademark Office, was established under this Code. 

Contents of a patent

Clause (1) of Section 154(a) mentions that a patent is to contain a short title of the invention and a grant of the exclusive right to the patentee, his nominee, or heirs to protect the making, selling, or importing of his invention by a third person. Also, as per Clause (4) of Section 154, a patent must be annexed with the specification and drawing of the invention. 

Term of patent

35 U.S.C. 154(a)(2) talks about the term of the patent granted. It states that a patent is valid for twenty years. The period starts from the date on which the patent was issued and ends after 20 years from the date on which the patent application was filed in the United States. Apart from this, if the application for patent filed is in specific reference to an application that has been filed before this new application, or under Sections 120, 121, 365(c), or 386(c), then the term will be counted from the date of the earliest application. 

Types of patents 

As per the Patent Act (35 U.S. Code), the United States Patent and Trademark Office issued three different types of patents, namely, utility patents, design patents, and plant patents. Let’s have a brief overview of these three kinds of patents. 

Utility patent

Out of the three categories of patents, utility patents are the most common and preferred of all. It is also called “patents for invention.” It is a type of patent that covers how a product works or functions. The invention must be  non-obvious and useful. Software, computer machines, different strategies, tools, equipment, chemical treatments, improvements, etc. fall under the category of utility patents. For instance, a new method of putting on fake lashes can be patented under this category. After fulfilling the condition of paying the patent fees, the owner of the patent secures an exclusive right over the patented invention for 20 years, which begins from the date of filing of the said application. This category of patents covers a broad and much safer protection than the others. However, the hefty maintenance fees and the lengthy procedure and time make the issuance of this patent a cumbersome process.

It is important to note that to get a utility patent for an invention, the product or procedure must be useful, i.e., it must be of some utility. 

Design patent

Broadly speaking, this kind of patent covers how a product appears or looks. The look of the product has nothing to do with the usefulness of the procedure or the task for which it is made. A design patent is issued in reference to a new and authentic design or look that is contained within or applied to a product that is being manufactured. The provisions for design patents are enumerated under Chapter 16 of the 35 U.S.C.

As per Section 173 of the US Patents Act, the term of a design patent is 15 years, unlike that of a utility patent, which is twenty years. The term begins on the date of issuance of such a patent. Even though these are the most easily obtained patents, they are also the ones that are least sought. These patents are granted for the design or look of the patent. For instance, if a person has specifically invented a hair dryer that looks somewhat oval and has a particular design, he can seek a design patent for his hair dryer.  

Plant patent

These kinds of patents are the least popular ones and are granted in favour of an asexually reproducible plant. The provisions for plant patents are enumerated under Chapter 15 of the 35 U.S.C. These plant patents are covered under the purview of Section 161 of the 35 U.S. Code. If a person has discovered a new species of plant, he can get a plant patent for it to stop other companies or individuals from breeding that particular species. It is important to note that no maintenance fees are required to maintain a plant patent in force.

Patent infringement in the US : a general overview

A patent is considered personal property under US law. Any kind of violation of that property comes under the purview of infringement. The owner of the patent, in the event of an infringement of his property rights, has a civil remedy and, thus, can sue the person for such an infringement. Put simply, the term ‘patent infringement’ connotes unauthorized and illegal manufacturing, importing, selling, etc. of the patented invention. It is a violation of the exclusive rights of the patentee that he gets once he or she has patented a particular product or procedure. Patent infringement is considered a strict liability offense. It is a violation of the rights of a patent owner for a particular invention. A person is guilty of patent infringement if he or she, without the permission of the patentee, makes, uses, or imports the invention, provided it is done within the prescribed term period as provided under 35 U.S.C. Chapters 28 and 29 of the 35 U.S.C. deal with various provisions pertaining to patent infringements, their remedies, etc. 

As per Section 271(b) of the 35 U.S.C., a person who is actively involved in or induces infringement of a patent is termed an “infringer”, and a person who sells a product deliberately, even after knowing that the product is made or adapted by infringement of a patent, is called a “contributory infringer” (Section 271(c) of the 35 U.S.C.). Any individual who offers to sell, manufacture, or import a good that he knows is a patented product or invention will be held to be a contributory infringer. Even indulging in or facilitating such an act falls under the purview of infringement. 

It is important that the infringer have knowledge or notice of the patent, otherwise, the patentee cannot claim damages for infringement. Notice or knowledge pertaining to a patent can be brought upon either by way of marking the product or by sending a cease and desist letter to the infringer. It can also be done by filing an infringement action. Furnishing an actual notice to the infringer is essential to further proceeding against the accused for patent infringement. Generally, the awarded cost of patent infringement must not be less than a reasonable royalty combined with interest and cost as directed by the court.

In most cases, if the patent owner satisfies the court by proving the losses that he has suffered, then the amount fixed as monetary compensation is mostly the damages that he has suffered from the losses. However, if the losses cannot be measured or calculated, then a reasonable royalty is directed to be given to the patent owner as damages. The court can also award punitive damages to the patent owner and can even award damages three times the amount of actual damages suffered in cases of wilful or direct infringement.  

Section 271: a brief overview of infringement of patents

Section 271 of the 35 U.S. Code deals with the provisions pertaining to the infringement of patents. It deals with the scope and extent of the protection granted to the patentee and various conditions that will amount to infringement. 

The extent to which the patented invention can be used in whatever manner is always specifically mentioned in the granted patent claims. It expressly clarifies the scope and extent of protection granted to the patented invention. It is important to understand that patents are territorial in nature, and thus a person will be held guilty or liable for the offense of infringement if the violation is committed within the boundaries of the United States (35 U.S.C. 271(a)). 

As stated above, clauses (b) and (c) of Section 271 provide for the meaning of the terms “infringer” and “contributory infringer.”

Clause (d) of Section 271 of the U.S.C. lays down certain conditions that will be deemed to be infringement and other protections that the patentee has over his or her patented invention. Thus, no patent owner shall be held guilty of infringement or will be denied relief in the following situations;

• If a patentee owner derives revenue from his invention, he shall not be deemed guilty of any patent infringement. However, the same will amount to infringement if performed by another without the patentee’s consent.
• If the patentee licenses or authorizes another to perform acts in reference to the invention, it will not amount to infringement, but if the same is done without the consent of the patentee, it will amount to infringement.
• If he chooses to enforce his patent rights against the infringer or the contributory infringer, he shall not be denied such a remedy if the claim seems genuine.
• If any of the patent rights are licensed on certain conditions or the sale of the patented product in the event of the acquisition of a license in another patent. 

Clause (e) of the Section provides that using, selling, or importing a patented product in the US will not amount to patent infringement if the same is done only for the purpose or in relation to the development and submission of data or information under the law pertaining to the manufacture, use, or sale of drugs or veterinary biological products.

Clause (2) of the Section states that submission of an application for a patent under Section 505(j) of the Federal Food, Drug, and Cosmetic Act or described in Section 505(b)(2) of such Act, and an application under Section 512 of such Act or under the Act of March 4, 1913 (21 U.S.C. 151 – 158), will amount to patent infringement. 

Clause (4) provides for certain remedies that a Federal Court grants for any such acts as mentioned in Clause (2) of the Section. A patentee can be granted injunctive relief against the infringer until the suit attains finality. Also, monetary damages can be awarded to the patentee by the infringer, but only if there has been any selling, or manufacturing of any drugs, veterinary biological products, or biological products. 

Penalties

Once the court has found a person or company guilty of patent infringement, the infringer must pay the damages to the patent owner in the form of actual damages or a reasonable royalty. The term actual damages includes the lost profits that the patent holder has suffered while the term reasonable royalty depends upon various facts like the type of product, the left term of the patent, other royalty arrangements, etc. Along with the damages, the party is also entitled to costs, which include attorney’s fees, court filing fees, and all the other litigation expenses. The infringer is also restrained from further use, manufacture, sale, and importation of the infringing product. Put simply, the court orders a permanent injunction, once the accused is found guilty of a violation of the patent.

In certain cases, the patent holder can seek a temporary injunction at the initial level, especially when the chances are that it may take a long time to decide the lawsuit, and until then, if it is in the interest of justice and if such an injunction will cause no detriment to the public interest.

Types of patent infringement in the US

Patent infringement is the unauthorized use of an invention that is protected by a patent. It is a violation of the exclusive rights a patentee possesses over his patented invention. It is the right that allows the patent owner to exclude others from interfering with, using, selling, or importing his patent product. There are two types of patent infringement in the US: direct infringement and indirect infringement. In order to sue a person or company under these kinds of patents, it is crucial for the patent holder to show that a part of his patented product or an entire part of the patented claim is present in the accused These different kinds of patent infringement claims arise when a person or a company uses, manufactures, sells, or imports a patent product or its parts of any kind. 

Direct infringement

Direct infringement occurs when someone uses or makes a patented invention without the patent holder’s approval. The infringer does so without having or obtaining any license in pursuance of the patented invention. It is important that infringement be a wilful act and be done in the United States. This type of infringement is often referred to as literal infringement or wilful infringement. In literal infringement, the infringer literally uses the invention as described in the patent. Wilful infringement is when someone knowingly and deliberately infringes on a patent.

Under direct patent infringement, the infringer’s product is exactly similar to the original product, and its process, function, and outcome are entirely the same as those of the original product. Direct infringement is simply copying every element of the original patented product or invention. In cases of direct infringement, it becomes easy for the plaintiff to prove the guilt of the defendant since the onus of proof in such cases lies on the plaintiff. The courts in cases of direct infringement usually award much more damages than in  other classifications of infringement.

In the case of Warner Jenkinson Co. v. Hilton Davis Chem (1997), both parties, i.e., the plaintiff and defendant, manufactured methods of purifying dyes. In this case, the main issue before the court was whether the petitioner infringed any patent claims of the respondent  under the doctrine of equivalents. In the case, Hilton Davis sued Warner Jenkinson, thereby claiming a new method of purifying dye. The process of both the manufacture and purification of the dye was similar, except for the part about the pH scale. For this reason, it was clear that Warner’s process did not literally or directly infringe Hilton’s invention, and hence a plea under the doctrine of equivalence was made. The Supreme Court reversed the judgment of the Court of Appeals and stated that the doctrine is to be applied on an element-to-element basis and hence that the petitioner did not infringe the respondent’s patent claim. Apart from this, it was established in this case that direct patent infringement is a strict liability offense, even though the U.S.C. does not expressly mention the same. 

Indirect infringement

Indirect infringement occurs when someone aids, abets, or encourages another person to infringe on a patent. Put simply, it includes an infringement activity done by way of actively inducing such an act or something done by a contributory infringer. This type of infringement is often referred to as ‘contributory infringement’. Contributory infringement occurs when someone aids in making, selling, or offering a sale of a product that is used in an infringing manner. Since in indirect infringement, the elements of the patented product are the same only up to some extent, it becomes difficult for the plaintiff to prove the offense of indirect infringement. 

Indirect infringement occurs when the infringer partly tries to copy the patented product. It also amounts to indirect infringement when a party induces a third party to indulge in the offense of indirect infringement. Under US law, indirect infringement is classified under two heads, namely, contributory infringement and inducement infringement. A person or a company can be held liable for contributory infringement if the infringer sells a product that particularly does not have any substantial non-infringing use, even though the product’s elements are not entirely similar to those of the original product. A party may be held liable for infringement by inducement if it actively induces a third party in any manner that will result in the act of a third party directly infringing the patent holder’s right. In cases where it becomes difficult to establish guilt in direct infringement, especially when an infringement claim is against the parties that work in a supply chain, recourse by way of infringement by inducement is a much more suitable option for getting back the damages.

In the case of Warsaw Orthopedic, Inc. v. NuVasive, Inc. (2015), the Supreme Court of the United States held that to establish the guilt of induced infringement, the patentee must show to the court that the defendant had knowledge of the patent and also knew the fact that the alleged act was infringing. The Court stated that if the plaintiff satisfies the court that the defendant’s belief that the acts done by him are non-infringing is completely unreasonable. 

Doctrines related to patent infringement

There are broadly two doctrines related to patent infringement in the US: the Doctrine of Equivalents and the Doctrine of Colorable Variation.

Doctrine of Equivalents

The Doctrine of Equivalents states that someone can infringe a patent even if they do not literally use the invention as described in the patent. When the party does not directly or literally infringe the patented product, recourse to get damages from the infringer can be sought under the doctrine of equivalents. This doctrine is used to protect a patent holder from someone who makes minor changes to an invention that are not enough to make it a new invention.

In simple language, the doctrine of equivalence refers to a situation when something that is created works or functions in exactly the same way as that of an existing patented product and gives the same outcome or result. Such a doctrine is mostly relevant when the newly invented product is somewhat better than the original patented product; however, the working style and outcome are the same.

To determine whether the aforesaid doctrine is applicable or not, the court must inquire whether the role played by each element of the patented claim is equivalent or matches the function, way, and, result of the original product, or whether the role played by the infringed product is substantially different from that of the original product. In the case of Warner Jenkinson Co., Inc. v. Hilton Davis Chemical Co. (1997), the Supreme Court of the U.S. held that the doctrine of equivalents must be applied on an element-to-element basis. The Court further stated that to apply this doctrine, the court cannot apply the rule to the whole invention; rather, it must be applied on an element-to-element basis. To determine whether the substituted element is the equivalent of the element in the original product, analyzing the role of each element and then comparing is of utter importance. 

Doctrine of Colorable Variation

The Doctrine of Colorable Variation states that someone can infringe on a patent even if they use a similar invention. Under this doctrine, there is a slight modification done to the original patented invention, although the substituted invention and the original product both yield the same result. This doctrine is used to protect a patent holder from someone who makes minor changes to an invention that are enough to make it a new invention, but the changes are not substantial enough to make it non-infringing.

According to this doctrine, if the accused party makes slight changes or modifications to the original product or process but the essential features of the substituted product are the same as those of the original product, then the party shall be held liable for infringement under the doctrine of colorable variation. The essence of the doctrine is that a slight variation in the patented invention just to show modification while the essential features are the same won’t protect the infringer from liability for infringement.

In the case of Lektophone Corporation v. The Rola Company (1930), the original product of the patent holder was a sound-reproducing instrument for phonographs. As mentioned in the application submitted by the patent holder, the size and dimension of the sound-reproducing instrument were of significant importance. It was claimed by the plaintiff that a radio loudspeaker manufactured by the defendant infringed the patent holder’s rights. The substituted product (manufacturer’s device) had a similar central paper cone-like structure. However, the size of the cone was smaller than that of the patented product. The plaintiff contended that since the defendant slightly modified the original product, it would amount to a colorable variation. However, the court held that the alteration in the defendant’s product would not accomplish the object specified in the patent claims, and there was some other machinery difference too. Thus, it did not infringe the patent holder’s claims.

Patent infringement litigation

The remedy available to the plaintiff for a patent infringement is a civil remedy, i.e., he can claim damages in the form of actual damages and reasonable royalty, along with actual litigation costs. The court, when adjudicating a lawsuit for patent infringement, follows a two-step process. The first step involves a claim construction, i.e., a written description of the specification of the patent, the entire patent prosecution story, and all the evidence available. The next step follows the investigation by the court into whether there has been actual patent infringement or not by comparing each element of the patent’s claim with that of the infringing product.

There arise certain situations when it is found that, though there has been some infringement, it seems that only some minor aspects or elements of the original invention or the patented product are found in the accused or infringing product. Under such circumstances, the doctrine of equivalents will apply in order to determine whether it will amount to infringement or not.

The infringement can also be determined by whether the differences between the invention and the infringing product are insubstantial or not. The difference between the two is said to be insubstantial if it passes the triple identity test, i.e., if both the products perform entirely the same functions in the same way and finally yield the same outcome as specified in the patented claim.

US case laws related to patent infringement

With the changing dynamics of society, and the advent of technology and modernization, along with other branches of intellectual property rights, patent law has also become a very important field of law. The thirst of mankind to grow and learn has resulted in a number of new inventions and discoveries, and patent law has evolved to be of great use. The courts have time and again dealt with the scope of infringement cases and established precedents pertaining to this branch of law. There have been numerous US case laws related to patent infringement. Even the concepts of patent infringement have evolved largely with increasing technological advancement, and thus, looking into this fact, courts have minutely dealt with different aspects of patent infringement in different case laws. Some of the most notable cases include:

Diamond v. Chakrabarty (1980)

Brief facts of the case

In the Diamond case, the defendant, Anand M. Chakrabarty, a genetic engineer by profession, made a bacterium presently known as Pseudomonas putida, which is derived from the Pseudomonas genus. The bacteria metabolize the hydrocarbons that constitute crude oil. At the time of this development, there were no natural bacteria that were capable of performing such metabolization. This developed bacteria is used for the bioremediation or biodegradation of oil. The respondent applied for a patent claim under three categories, namely; process for producing the bacteria, inoculum composed of a carrier material floating on water and the new bacteria, and claim for bacteria. The patent office accepted the first and last claims; however, it rejected the second claim. 

The respondent herein applied for the patent claims of the said development, and the US Court of Customs and Patent Appeals allowed the aforesaid patent claim. The petitioner, herein, being aggrieved by the impugned judgment allowing the patent claim, appealed before the Supreme Court.

Issue before the Court

The issue before the Supreme Court was whether the aforesaid claim falls under the category of patented subject matter. 

Judgment of the Court

The Supreme Court of the United States held that the respondent’s patent claims fall under the category of patentable subject matter, i.e., microorganisms are patentable. Thus, the aforesaid falls under the category of manufacture or composition of matter, thereby, rejecting the contention of the petitioner that the respondent’s development cannot be patented.

Aronson v. Quick Point Pencil Co. (1979)

In the case of Aronson, the petitioner filed a patent application for a new form of the key holder. The application also requested a patent for the key holder’s design. In the year 1956, the petitioner herein entered into an agreement with the Quick Point Pencil Company, wherein Aronson agreed that the defendant would manufacture and sell the petitioner’s keyholders, and in return, Aronson would get 5% of the shares, meanwhile the Quick Point Pencil Company would retain the exclusive right of creation, manufacture, and sale of the keyholder. The agreement also contained a condition that, in the event that Aronson’s patent application is not accepted within a period of 5 years, the 5% will be reduced to 2.5%. The said application was not accepted within the specified period, receiving a final rejection in 1961. The defendant company reduced the royalty as per the terms of the agreement, owing to the rejection of the petitioner’s patent application. This payment was made to Aronson for a period of 14 years. After this, in 1975, the defendant company filed to obtain a declaratory judgment in the United States District Court for the Eastern District of Missouri, stating that the agreement entered into by the parties is no more enforceable owing to the rejection of the petitioner’s patent application. The company contended that the agreement becomes enforceable owing to the federal patent law. The District Court rejected the application of the company and held that the agreement has no relation to the patent law and is hence enforceable. The company then appealed before the United States Court of Appeals for the Eighth Circuit.

Issue before the Court

Whether the agreement entered into between the parties is still enforceable even after the rejection of the designer’s patent application. The question before the court was to decide whether the federal patent policy preempts the enforceability of the agreement. 

Judgment  of the Court 

The Court of Appeals reversed the judgment of the District Court and held that the federal patent law does preempt the enforceability of the agreement entered between the parties. Since the designer failed to get a patent for her design, the agreement stands no ground and is thus unenforceable. 

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (2002)

Brief facts of the case

In the present Festo Corporation case, the petitioning company had two patented claims for improved magnetic rodless cylinders. These patented claims were for a piston-driven device that used a magnet to move objects in a conveying system. The Festo Corporation amended its first patent application. The application was rejected on the ground that the exact method of the piston’s operation is unclear, followed by the finding that certain claims made by the corporation are in a very impermissible form. The petitioner also amended its second patent application during the process of re-examination of the proceedings. The amendment made in both applications, thereby adds a new limitation to the effect that the inventions of the corporations contain a pair of sealing rings. In the second patent,, a further limitation with respect to the composition of the outer shell, or “sleeve” of the device was added. After the sale of the inventions started, the respondent herein started selling similar manufactured products. The only difference was that the respondent’s device employed a single sealing ring, and its sleeve was made of a different material. The contention of the plaintiff was that even though the device manufactured by the defendant is not literally similar to the Corporation’s patented products, the devices are so similar that they fall under the doctrine of equivalents.

Festo Corporation filed a suit against the respondent manufacturer in the United States District Court for the District of Massachusetts. Before the final delivery of judgment, the court ordered a partial summary judgment stating that one of the infringements falls under the doctrine of equivalents. The remaining issues were dealt with by the jury, which also found the infringement and ordered damages to be paid. An appeal was filed against the judgment before the United States Court of Appeals for the Federal Circuit, wherein the decision of the lower court was affirmed. Against this, an appeal was filed before the Supreme Court.

Issues before the Court

Whether the principle of prosecution history estoppel barred Festo Corp. from claiming infringement under the doctrine of equivalents, especially when an amendment to the patent has been carried out?

Judgment of the Court

The Supreme Court held that such an amendment does not bar the petitioner from claiming infringement of its patent. However, the Court remanded the matter back to the lower court so as to determine whether the amendments carried out by the Festo surrendered the equivalents at issue or not. It is for the plaintiff to show that the amendments carried out in the patent application were carried out for a reason relating to patentability. 

Impression Products, Inc. v. Lexmark International, Inc. (2017)

In the case of Impresion Products, the Supreme Court of the United States held that the patent holder cannot sue a person for patent infringement if he has given consent for selling his product and, in such a case, it has been re-sold. As soon as the patent holder sells his product, his patent rights are relinquished, even if the item is being re-sold. In the present case, the respondent used to design, manufacture, and sell toner cartridges. In relation to this, the respondent company owns various patents in respect of different components of the cartridges. The company used to sell cartridges by way of two options, namely, buy toner cartridges at full price, thus, no restrictions, or buy the toner cartridge at a low price and enter into an agreement, thereby restraining the buyer from further transferring or reselling the cartridge. The cartridges, if bought in the second condition, could only be transferred to the respondent and nobody else. Thus, the issue before the Supreme Court was to decide whether the patentees could use a license to impose restrictions on the reselling of the product once it was sold by them.

Defenses available to the infringer or accused

The first and most common defense available to the infringer is challenging the validity of the patent, thereby contending that the patent is invalid. Some ways through which the accused can prove this is, by showing that the patentee submitted false and misleading information to the United States Patent and Trademark Office; if the patent is a result of some anti-competitive business activities; or if the accused can prove to the court that the patent did not meet the eligibility criteria as mentioned in the 35 U.S.C. like non-obviousness, usefulness, novelty, etc.

The burden of proof lies on the patent holder to show that any offense of patent infringement has occurred and that the accused is responsible for the same. The plaintiff requires a solid amount of proof to show that the defendant infringed the patent. However, once the defendant questions the validity of the patent by any means, the burden of proof shifts on him, and he must clearly show the court that any kind of fraud attempt has been made to secure the patent, or that in any way the patent lacks eligibility.

Ways to prevent patent infringement

The best way to prevent patent infringement is to protect your invention by filing for a patent. By filing for a patent, you are legally protecting your invention and giving yourself the right to sue anyone who infringes on your patent. It is important to check all the eligibility criteria mentioned in 35 U.S.C., like non-obviousness, usefulness, etc., before filing a patent application. The product that you want to get patented must be unique and should pass the test of usefulness, as discussed elaborately in the above paragraphs. It is also important that before filing the patent application, you are vigilant enough to check the existing patented products to ensure that none of the existing inventions will come your way. Once your patent application is approved, it is important that you timely pay the maintenance fees, be updated with the terms of your patents, and review your patent claims. 

In addition to filing for a patent, you should also consider other methods of protecting your invention. You can use trade secrets and copyrights to protect your invention from infringement. Getting trademarks and copyright for your invention after proper consultation with an IP attorney is important because he will acknowledge you with all the dos and don’ts of the process and will give you a better solution because of his experience in the field.  You can also use non-disclosure agreements to ensure that your invention is not disclosed to anyone without your permission. All these methods of protecting your product are important and must be assessed carefully because once you get stuck in patent infringement cases, it becomes a chaotic and costly struggle. 

Remedies for patent infringement

Chapter 29 of the 35 U.S.C. provides for provisions pertaining to remedies in cases of patent infringement. The affected party whose patented product or process has been infringed can seek remedy by way of actual damages, reasonable royalty, and/ or injunctions (permanent and temporary, as the case may be). Injunctions are court orders that prohibit an infringer from using or selling your invention. Damages are monetary awards that are designed to compensate the patent holder for any losses caused by the infringement. Attorneys’ fees are awards that are designed to reimburse the patent holder for the costs of bringing a lawsuit. The attorney’s fees (Section 285 of the Code) and all the other litigation expenses fall under the category of costs that the court directs the infringer to pay to the plaintiff once the lawsuit is decided in favor of the petitioner/plaintiff. 

Section 281 of the Code provides that the plaintiff shall have recourse to civil remedies in cases of patent infringement. The damages that are to be awarded are provided under Section 284 of the Code, and the provision for the injunction is enumerated under Section 283 of the Code. The time limit for filing a complaint or lawsuit against the alleged infringement is provided under Section 286 of the Code, which states that the complaint shall be filed within six years of the infringement act. 

What does not amount to patent infringement

Not all activities constitute patent infringement. Activities such as reverse engineering, independent creation, and experimentation are not considered patent infringement. Apart from this one, if the third party sells, imports, or manufactures any of the patented inventions as per the terms and conditions and with the consent of the patent holder, then it shall not amount to patent infringement. 

Reverse engineering is the process of taking apart a device to understand how it works. Independent creation is when someone creates an invention that is similar to a patented invention without any knowledge of the patented invention. As per the present US patent law, independent creation does not amount to patent infringement and, thus, is a good defense for the accused. Experimentation is the process of testing an invention to determine its effectiveness or reliability. Furthermore, selling or importing a patented product in the US will not amount to patent infringement if the same is done only for the purpose or in relation to the development and submission of data or information under the law pertaining to the manufacture, use, or sale of drugs or veterinary biological products.

Conclusion

In conclusion, patent infringement is a serious issue that affects inventors, businesses, and the public. The patented invention is the product of man’s intelligence and, thus, must be valued and protected. It is for this reason that the federal patent law was enacted under the power conferred upon Congress under Article I, Section 8, Clause 8 of the US Constitution. Patent infringement cases have witnessed a serious rise in the past few decades, and thus it becomes important for every inventor to understand these laws and thereby get their invention protected under these laws. Knowledge of these laws is not just for the attorney but for the common people too, for maintaining their product’s authenticity and protection. It is important to understand the types of patent infringement in the US and the related doctrines, US case laws, and remedies. If you are an inventor, it is important to protect your invention by filing for a patent and using other methods of protection. By doing so, you can ensure that your invention is not infringed upon and that you are able to seek remedies if it is.

Frequently Asked Questions (FAQs)

Does the concept of joint liability apply to direct patent infringement?

To prove direct infringement, it is not sufficient that various independent parties together perform the claimed process. The concept of joint liability similar to that applied in tort law is not applicable on direct patent infringement.

What are the essential requirements of proving contributory infringement?

The three essential requirements to prove contributory infringement are; knowledge to the infringer about the infringed patent, giving or inducing a third party to use any material of an infringed patented product, and the substituted product must have a component manufactured or adapted from the original patented product.

Does direct infringement require knowledge of the infringement to the accused?

In the case of Warner-Lambert v Actavis (2015), the Supreme Court of the United States held that knowledge or intent of infringement on the part of infringer is not essential for proving direct patent infringement. 

References

• https://www.justia.com/intellectual-property/patents/types-of-patents/
• Martin J. Adelman, Cases and Materials on Patent Law,  (3rd ed. 2009).
• https://www.bitlaw.com/source/35usc/index.html
• https://www.law.cornell.edu/wex/patent
• https://www.upcounsel.com/patent-infringement
• Mark P. McKenna & Christopher Jon Sprigman, What’s in and what’s out: How IP’s boundary rules shape innovation, 30 Harv. J. Law & Tec 491
• https://www.law.cornell.edu/uscode/text/35/271

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This article is written by Upasana Sarkar, a student at Jogesh Chandra Chaudhuri Law College. This article deals with the trademark laws of the United States. It provides a detailed understanding and analysis of the formalities related to trademark protection in the U.S.

It has been published by Rachit Garg.

‍Introduction

Trademarks are an important form of intellectual property, and their protection is governed by a variety of laws and regulations. A trademark is a set of legal rules and regulations that protect the trademark rights of a person. In the US, there are specific formalities that must be followed to ensure that trademarks are properly adopted and used, registered with the US Patent and Trademark Office (USPTO), and maintained over time. Understanding these formalities is key to successfully protecting a trademark in the US. If one follows all the formalities and registers, then his mark will be protected from any kind of infringement. In this blog post, we’ll be exploring these formalities and how to best navigate them.

A trademark is a type of intellectual property that is used to distinguish the source or origin of goods or services. In the US, trademarks are protected under both federal and state law, and the USPTO is responsible for registering trademarks and enforcing their protection. The inventor of that trademark will be given all the rights in relation to manufacture and usage of the products under that particular mark. 

Trademark protection in the US is based on the concept of “first to use,” which means that the first person to use a trademark in commerce in a particular geographic area has the exclusive right to use that trademark in that geographic area. The priority rights of these first-time trademark applicants are subjected to some restrictions that are discussed in this article. The USPTO does not examine applications for trademark registration to determine who was the first to use the trademark. Rather, the USPTO relies on the trademark owner to make this determination and to be able to prove it if necessary.

In order to protect a trademark in the US, the owner must adopt and use the trademark, register it with the USPTO, and maintain it over time. It can be renewed after its expiration. This blog post will explore these steps in more detail.

Adoption and use of TM

The first step in protecting a trademark in the US is to adopt and use the trademark. The trademark rights in the United States can be categorized into three levels, i.e., state, federal, and common law. This means that the owner must begin using the trademark in commerce in the US and must be able to prove that they were the first to use it in order to have priority over other potential users of the same or a similar trademark. 

In order for a trademark to be considered in use, it must be used in a “sufficiently public” manner. The owner of the trademark must keep in mind that his trademark is in continuous use so that the public is well aware of the mark. This means that the trademark must be used in a manner that would make it recognizable to the public. The trademark must also be affixed to the goods or services in some way. If it is not used in either place, then it would lead to abandonment of the trademark, and the holder of the trademark would initially lose all his trademark rights. Then he will be unable to safeguard his trademark from any kind of infringement by other parties.

Finally, the trademark must be used in a manner that does not violate the Eleventh Amendment of the US Constitution, which states that the federal government cannot regulate the internal affairs of a state. This means that the trademark must be used in a manner that does not interfere with state laws or court orders. The Eleventh Amendment places a restriction on the jurisdiction granted to federal courts.

Eleventh Amendment concerns

The Eleventh Amendment of the United States, which was passed in 1795, places a restriction on the jurisdiction granted to federal courts under Article III of the U.S. Constitution. This amendment restricts or prevents the federal courts from hearing those types of cases that are against the governments of the states. The Supreme Court of the United States interpreted that the state courts cannot hear any cases that are against state governments and involve federal law. It established the principle of state sovereign immunity. The states under this amendment are immune from lawsuits brought by other states or foreign countries. The limitation of state liability in federal courts incorporated in the amendments appears to be a plain and simple modification of the federal state structure brought about by jurisprudence, but knowing the implications of this incorporation continues to generate controversy and heated dispute.

In the case of Cohens v. Virginia (1821), the defendants were accused of selling lottery tickets, which violated the laws of the plaintiff’s state as it was prohibited in the state of Virginia. However, it was authorized by Congress in the District of Columbia, from where the lottery tickets were legally bought. Chief Justice Marshall was of the opinion that pursuing an erroneous judgment to reconsider a state court judgment that allegedly violates the U.S. laws or Constitution is not to initiate or pursue a lawsuit against the state, in spite of the fact that it was only a continuation of the state-initiated lawsuit. However, according to the Chief Justice, the adoption of the Eleventh Amendment is not to oppose state lawsuits as such, but to address a legitimate concern that creditors might seek payment in federal courts. He argued that the Eleventh Amendment does not bar proceedings against states with federal subject jurisdiction and does not, in any case, bar actions against states by their own citizens.

Lanham Act Registration

Once the trademark is adopted and used, the next step is to register it with the USPTO. The process of registering a trademark is governed by the Lanham Act, which is a federal law that outlines the requirements for registering a trademark. The USPTO acts as a federal agency that gives direction for the proper administration and regulation of trademarks under the Lanham Act in the federal trademark register.

The first step in the registration process is to file a trademark application with the USPTO. There are two types of applications: use applications and intent-to-use (ITU) applications. Use applications are for trademarks that are already in use, while ITU applications are for trademarks that the applicant intends to use in the future. Use-based applications should be made in good faith in the ordinary course of business and not solely to retain trademark rights. ITU is a kind of trademark application that allows the applicant to apply for trademark registration before its use begins.

The USPTO also offers a Supplemental Register for trademarks that cannot be registered on the Principal Register. This is typically used for trademarks that are descriptive or generic and which cannot be protected on the Principal Register. The Supplemental Register is mostly used for registering trademarks that are merely illustrative in nature and for which the applicant has failed to indicate a secondary meaning.

Use Applications

The ‘use-based’ applications depend on the actual or existing usage of the mark. Use-based applications claim actual use in commerce in relation to the goods and services listed in the application or of a mark associated with them. It should be made in good faith in the ordinary course of business and not just solely to retain the trademark rights. It must be used for legitimate purposes only. Under 37 C.F.R. § 2.34(b), the mark must be used for all goods and services listed in the application unless the applicant further asserts intended use as a basis for specific goods or services. They must indicate which basis applies to which goods and services.

ITU Applications

Under 15 U.S.C. § 1051(b), an intent-to-use (ITU) application is based on a bona fide intention to use the mark in relation to the goods or services listed in the application, even if actual use has not yet occurred. ITU is a kind of trademark application that allows the applicant to apply for trademark registration before its use begins, although the use must be in good faith. The ITU serves as a strategy for achieving filings earlier than competitors, which would act as an advantage in a dispute situation. The application must be accompanied by an affidavit of his bona fide intention to use the trademark and product samples, like samples or product images, to confirm the intention.

The USPTO considers and approves ITU applications in the same manner as applications for the mark that claims its prior actual use. After submitting the application, the applicant can show evidence of its use in commerce for three periods. The first period is when the application has yet to be accepted. The second period is six months after the USPTO issues the Notice of Acceptance. It is usually issued approximately twelve weeks after the trademark is published, indicating that the trademark can be registered. The third period has an extension option available by submitting a request for renewal and paying a fee to the USPTO. It helps the applicant use its trademark in commerce for an additional year. An additional four renewal requests may be made, each granting the applicant an additional six months to use the mark in commerce for a period of thirty-six months after receiving the notice of permission. For obtaining registration, the ITU applicant must submit an ‘Amendment to Alleged Use’ or a ‘Statement of Use’, accompanied by appropriate evidence of usage of the mark in commerce in relation to the listed goods and services of the application. If a ‘Statement of Use’ is not submitted within the deadline, the trademark application will be rejected. After that, the only option left is to restart the application with multiple fees and requests or start over with a new submission. 

Supplemental Register

The trademark applications are submitted by the applicant under 15 U.S.C. § 1057(b). For registering the trademark, the inventor of the mark files in the Principal Register of the USPTO to protect his trademark rights. When the owner gets the certificate of registration that was submitted on Principal Register, he shall be entitled to significant legal presumptions, such as that-

• The trademark is valid.
• The owner of the trademark is the holder himself.
• The owner has the exclusive right to use the trademark in commerce or in relation to the goods or services listed in the registration. 

Some terms or expressions might not be eligible for registration in the Principal Register. Those marks may qualify for registration in the Supplementary Register. These marks are generally only descriptive signs, the distinctiveness of which cannot yet be proven by the trademark owner. The registration on the Supplemental Register is most common for trademarks that are merely illustrative in nature when the applicant has failed to indicate a secondary meaning. The benefits of registration in the supplementary register are as follows-

• Federal Court Jurisdiction for Infringement and Related Unfair Competition Claims;
• the registration can be used by trademark examiners for subsequent similar trademark registration applications;
• inclusion in trademark search results that may prevent third parties from using similar trademarks; and
• right of use ® and other Federal Register notices.

Though it is permissible to submit the trademark application for registration in the Supplemental Register, in most cases, applicants applied for trademark registration in the Principal Register that was amended into the Supplemental Register when the USPTO refused registration on the basis of the descriptiveness of the mark. A trademark cannot be registered in the Supplemental Register unless it is in use in commerce or is based on a foreign registration. An application on the basis of intent to use cannot be submitted or converted to a supplemental registry until a Statement of Use or Amendment to Allege Use is submitted.

Maintenance of trademarks

Once a trademark is registered, it must be maintained in order to retain its protection. This means that the trademark must be used in commerce in the US, and the registration must be renewed on a periodic basis. The renewal of the trademark registration should be done to protect the trademark rights from any kind of infringement.

Trademark registrations are valid for 10 years from the date of registration and can be renewed for additional 10-year periods. The initial renewal is due within six months of the 10-year anniversary of the registration date, and subsequent renewals are due within six months of the 10-year anniversary of the last renewal date. The essential documents required for trademark registration renewal are discussed in detail in this article.

In order to renew a trademark registration, the owner must submit a continuing use affidavit, which is a sworn statement that the trademark is still being used in commerce in the US. This affidavit must be accompanied by a specimen of the trademark as it is being used in commerce. The owner has the responsibility to show proof that the trademark is currently in use in at least one product or service in each category specified in the registration.

Registration Duration, Initial Renewal, and Continuing Use Affidavits

In order to maintain the ongoing validity of their trademarks after registration, businesses or individual rights holders engage in trademark maintenance activities. The term of registration initially covers a period of ten years. The trademark owner needs to submit a continuation document before the sixth year of his initial registration period. The USPTO can cancel the registration of the trademark if it is not used sufficiently and continuously. It is the trademark owner’s duty to file registration maintenance documents on a regular basis. 

Affidavit under Section 8 (Between 5th & 6th Years)

Section 8 affidavit must be filed between the fifth and sixth year after the initial trademark registration date. This statement provides confirmation that the owner is still using the published trademark.

Declaration under Section 15

Under Section 15, the owner of a trademark registered in the Principal Register must also make a declaration of indisputable rights. In short, the Section 15 declaration of incontestability states that the registrant’s claim of ownership or right to register the mark has not been the subject of a final court ruling. It is far more challenging for third parties to revoke or otherwise challenge the trademark owner’s rights after filing a Section 15 declaration since it makes the registration incontestable. It is customary to file the Section 15 statement along with the Section 8 during the first maintenance deadline. A Section 15 statement can be filed only once. The basis for registration in the United States under the Madrid Protocol is the filing of a declaration statement within the time period under Section 71. Section 15, which is an uncontested application, can be submitted even after 5 years have passed from the date of registration.

In the case of Chutter, Inc. v. Great Management Group, LLC (2021), the Trademark Trial and Appeal Board (TTAB) canceled the registration of Great Concepts, LLC on the grounds of fraud. The petitioner filed a suit against them for registering the mark ‘DANTANNA’S’ in Class 43 for ‘steak and seafood restaurant’, as it was fraudulently made. The decision held by TTAB was that a false statement made by the attorney under Sections 8 and 15 containing a Declaration of Continued Use and Incontestability submitted to the U.S. Patent and Trademark Office (USPTO), together with a reckless disregard for the truth or falsity of a material statement made in the USPTO’s filing by the party, can be regarded as an intentional act to deceive, and therefore, it can be considered a fraud.

Affidavit under Section 9 (Between 9th and 10th Years)

Under Section 9, the trademark owner must submit a Section 8 declaration of use and a Section 9 affidavit, which is a renewal application, in order to renew the trademark registration between the ninth and tenth years following the registration date. This section extends a trademark registration in effect for an additional 10 years. The same deadline applies for registration in Madrid, except that a Section 71 declaration must be submitted in place of a combined Section 8 and 9 declaration.

Subsequent renewals (After every 10 years)

Each consecutive renewal deadline happens after the initial 10-year anniversary after the initial registration of the trademark is renewed. 

Essential documents for renewal of trademark registration 

The essential documents required for trademark registration renewal are as follows-

• Submission of identity proof, i.e., name, address, and signature of the applicant.
• Submission of a copy of the Certificate of Incorporation (COI) of the business or company.
• Submission of the description and details of the trademark.
• Identifying whether the mark has been used continuously after registration.
• Submission of the current specimens of use of at least one product or service from each class listed in the registration that can be submitted to the USPTO.
• Submission of a letter of power of attorney.
• Submission of the fees.

Removal of goods or services not in use from the registration

If the mark is no longer used in relation to the provision of particular goods or services, the unused goods or services must be explicitly removed from the registration when filing a Statement of Continued Use under Section 8. When a particular registry contains a large number of goods in a particular category, the risk of unused goods or services remaining in the registry increases.

Specimens of use

It is the duty of the owner to provide evidence that the trademark is currently in use in at least one product or service in each category specified in the registration. Multiple specimens must be submitted for each class if the USPTO deems a particular sample unacceptable. 

Excusable nonuse

There is an exception to the continued use rule, which can be stated as ‘excusable nonuse’. The applicant can make a declaration of excusable non-use if any special circumstances arise, like-

• Trade Embargo or Circumstances not under the owner’s control – If the trademark owner is willing and able to continue using the mark in commerce but is unable to do so due to the trade embargo, the lack of use may be excused.
• Sale of a company or business – In the case of the sale of a business, the nonuse of the mark for a temporary period of time can be excusable. 
• Retooling – If any production interruption takes place due to the retooling of the factory equipment and plants, the mark may be temporarily out of service, and production can be resumed only at the specified times. Nevertheless, nonuse due to retooling can only be justified if the owner demonstrates that the plant or equipment being converted is necessary for the production of the goods and that there is no other equipment available on the market that can replace it.
• Orders on Hand – Non-use can be considered excusable for products that cannot be manufactured quickly or in large quantities but where there are orders and activity to fulfill them.

Loss of Trademark Rights

Trademark rights can be lost if the trademark is abandoned, voluntarily terminated, or involuntarily terminated due to genericism.

A trademark is considered abandoned if the owner stops using it in commerce for an extended period of time. If a trademark is not used for three consecutive years, it is presumed to be abandoned and its registration will be canceled. The abandonment of a trademark also takes place when the applicant of the marks fails to respond to any of the actions of the trademark office in the case of a pre-registration trademark.

A trademark owner may also voluntarily terminate a trademark registration. This is done by submitting a request to the USPTO to cancel the registration. After that, the trademark rights to that mark are terminated that were granted under the Lanham Trademark Act. 

Finally, a trademark can be involuntarily terminated due to genericism. This happens when a trademark becomes so commonly used that it becomes generic and no longer serves to distinguish the goods or services of one source from those of another. There are some marks that become popular, and consumers start using them on a daily basis. They are no longer associated with any specific business entity. Rather, they are used to denote specific goods or services. Examples of trademarks that have become generic include “aspirin,” “escalator,” and “thermos.”

Abandonment

Abandonment of a trademark means that the owner of the mark has not used it for a prolonged period of time and does not show any interest in using it. The prolonged period of time here means that for three consecutive years, if the trademark is not in use, it acts as evidence of abandonment of the mark. Abandonment of a trademark may also take place due to certain acts or omissions of the trademark owner as it loses its importance as a mark. If a mark is abandoned by its owner, it will not be protected. This is used to prevent the owners of the marks from trademarking them and storing them for later use. When a trademark becomes too well known among the public, it becomes the generic name of that particular good or service. In such cases, it is also treated as abandonment of a trademark. It is up to the owner of the trademark to use it in the correct way while selling or advertising his products or services. His failure to prevent generic or infringing uses of his mark can make it a generic name for the products or services. 

The abandonment of a trademark also takes place when the applicant of the marks fails to respond to any of the actions of the trademark office in the case of a pre-registration trademark. When any of the office actions are drafted by the attorney in charge of them and sent to the applicant, it is his duty to respond to them within a period of six months from the time of their issuance. The content of it will mainly be a procedural or substantive objection to any fault in the application, and it will describe the remedies to fix it. The mark will be abandoned under 15 U.S.C. §1062(b) if the applicant fails to respond or satisfy the attorney in charge of it. 

In the case of Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd. (1993), the plaintiff filed an infringement suit against the defendant. The defendant opened a restaurant in Brooklyn named The Brooklyn Dodger Sports Bar and Restaurant and used a logo that was almost identical to that of the plaintiff. The defendant counterclaimed to cancel the registration of various trademarks of the plaintiff as they were not in use. The question raised was whether abandonment of a mark requires nonuse as well as intent-to-use. The district judge of Motley gave a positive response in this regard. It was held that failure to use as well as no intention to resume commercial use are both evidence of abandonment of the mark. 

Partial abandonment of a trademark application

When a trademark application is filed, the application may have more than one class of goods or services. It may happen that some classes of it are accepted and others are rejected. In the event of the applicant’s failure to respond to the likelihood of confusion issues raised in the office action, a partial trademark abandonment of some of the classes will take place, and other classes will get registered that do not contain any issues. In case his failure to respond to it was accidental, he will get the option to submit a petition to restart it within a period of two months of the USPTO’s issuing it and preferably reinstate the application under TMEP 718.02(a).

Express abandonment of a trademark application

The owner of the trademark may also expressly abandon a trademark by filing an application or a written request for its abandonment. He can do that by signing it himself or by having the attorney in charge file his request. The owner of the trademark can submit an application form for abandonment of the mark to the Trademark Electronic Application System (TEAS) through electronic means under Section 37 C.F.R. §2.135. 

Termination due to improper licensing or assignment

A trademark can also be terminated due to improper licensing or assignment. If the owner of the trademark does not supervise or check the quality of the product properly, the trademark can be cancelled. In the same way, if the trademark owner assigns the trademark rights to another party in whole without a sale consideration of its assets, termination of the trademark would occur.

In the case of Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc. (1959), the plaintiff filed an infringement suit against the defendant for using the mark ‘Dawn’ which the plaintiff had already registered under the Lanham Trademark Act. But the defendant was unaware of the plaintiff’s trademark, as he had not used it in that area for about thirty years. The defendant filed a counterclaim against the plaintiff, requesting the federal district court to cancel the plaintiff’s registration of ‘Dawn’ trademark for his inadequate control of licensees’ use of the mark. But the district court dismissed both of their complaints and counterclaims. Then they appealed to the U.S. Court of Appeals for the Second Circuit. They confirmed the decree of the district court’s verdict. The Court observed that the plaintiff had not abandoned its mark and registration rights, and so the plaintiff was not stopped by any laches from asserting its exclusive right to use its trademark in the defendant’s sphere of business. The court, on the other hand, also denied an injunction against the defendant.

Voluntary Termination

Voluntary termination means when the holder of a trademark himself submits an application for termination of his trademark registration by giving it to the USPTO for cancellation. The owner, while filling out the application, must put his signature on it, or it should be signed by any of his legal representatives or by the attorney in charge of it.

Involuntary Termination: Genericism

The owner of a trademark may involuntarily lose the trademark rights due to genericism. A trademark can be involuntarily terminated due to the use of generic trademarks. Those marks that become very well-known in daily usage by the public no longer remain associated with any specific business entity but rather presume the meaning of specific goods or services. Hence, with time, it loses its distinctiveness and becomes generic in nature. The registration that was granted to the trademark based on its distinctive character loses its importance due to genericism. Some of the generic trademarks are as follows-

• Aspirin
• Band-Aid
• Cellophane
• Velcro
• Thermos
• Xerox
• Elevator

These are a few of the trademarks that became generic in nature due to their common and extensive usage. These terms were so widely used by the public in day-to-day life that they lost their uniqueness and became the term for the products instead of being associated with the original brands. So in no case should any trademark be unused or overused.

In the case of Kellogg Co. v. National Biscuit Co. (1938), the plaintiff filed suit against the defendant, stating that the plaintiff was the first to introduce the trademark and the defendant infringed the trademark ‘Shredded Wheat’ by using it. A patent was issued for the process of making shredded wheat, which had already expired in 1912. The defendant then started to manufacture and market shredded wheat in 1922. The plaintiff sued the defendant as they started producing the same pillow-shaped product as the plaintiff, the inventor company. The decree went against the defendant, and he was asked to stop using the plaintiff’s trademark by the Circuit Court. An appeal petition was filed by the defendant in the Supreme Court of the United States. He requested a review of the judgment of the Circuit Court. The Supreme Court then reviewed the decree and passed its judgment. It was held that the term ‘Shredded Wheat’ cannot be exclusively used by the plaintiff, as it has become a generic word for the biscuits. The defendant, too, has the right to use it. As soon as their patent expired, the term became available in the public domain. The Supreme Court also observed that the color, size, and form of labeling of the defendant’s product were different from those of the plaintiff. So it revered the judgment of the Court of Appeals.

Common mistakes made in the trademark protection process

When it comes to trademark protection, there are a few common mistakes that people make. The first is failing to register the trademark with the USPTO. Without registration, the trademark owner will not have access to the full range of remedies available under the Lanham Act, and will not be able to protect their trademark from infringement. The trademark owner will be unable to protect his mark if it has not been previously registered. So to get the exclusive rights to manufacture, use, and sell his own invention, one must register his mark without failing. 

Another common mistake is failing to use the trademark in a “sufficiently public” manner. It is essential for the trademark owner to see that his trademark is used sufficiently and continuously. This means that the trademark must be used in a manner that is recognizable to the public, and must be affixed to the goods or services. A trademark must be physically attached to the products to satisfy the necessities of ‘affixation’. Some of the important clauses in trademark licensing are as follows-

• The preamble is used to indicate the parties to the agreement, i.e., the licensor and licensee. It also contains the location of the registered office.
• The grant clause grants the licensee the right to use the trademark of the licensor. It states the maximum extent of rights that are granted to the licensee.
• The rights and liabilities clause includes the various rights the licensor and the licensee will have as well as their respective obligations. It must also state their relationship to limit liability in relation to a third party.
• The quality control clause is another very important clause that is included in the license agreement to ensure that the licensor must keep a proper check on the quality of his product.
• The termination clause deals with the policies that state the conditions under which the license agreement can be terminated.
• The governing clause specifies the law under which their agreement will be governed. This clause plays an important role when the parties to the agreement are from different jurisdictions.
• The dispute resolution clause is also an important clause that regulates the mechanism for resolution of any kind of dispute that may take place between the parties.
• The insurance clause intends to safeguard the licensor from all kinds of third-party claims if any such case arises in the future.
• A confidentiality clause is a clause that prohibits either party to the agreement from sharing any kind of information that is confidential in nature with a third party. 

Finally, many people fail to renew their trademark registrations on time. This means that the trademark registration can be canceled, and the trademark owner will lose their exclusive right to use the trademark. So to prevent losing trademark rights and to avail remedies for any kind of infringement, an individual must not fail to renew his trademark after its expiration of registration.

Conclusion

The protection of trademarks is of vital importance in every country. Trademark protection in the US requires following a number of formalities, including adoption and use of the trademark, registration with the USPTO, and maintenance over time. Understanding these formalities is key to successfully protecting a trademark in the US. It will be helpful for them while protecting their trademark rights. If any kind of infringement ever happens, then the trademark owners can safeguard their mark, and no other businesses or companies could ever be able to misuse their mark that was once registered with the USPTO. 

Therefore, once a mark is registered, the holder of that trademark will get all the advantages and benefits that an inventor of a mark must get. He will be able to provide protection for his trademark. If you’d like to learn more about trademark protection in the US, contact a trademark attorney today. A trademark attorney can help you understand the formalities related to trademark protection and can provide advice and guidance on the best way to protect your trademarks. The attorney will guide you in various ways so that you can safeguard your trademark rights.

Frequently Asked Questions (FAQs)

What are the advantages of trademark registration?

The following advantages are available to trademark owners who have registered their trademarks –

• The ownership of a particular mark is given to him.
• He is given the exclusive right to use it.
• The mark is protected from registration of similar kinds of marks.
• It protects against any kind of infringement by other businesses or companies.
• The mark becomes ‘incontestable’ after a period of five years of continuous use.

What are the things that a registered trademark protects?

The registration of a trademark protects it from any other identical marks used by any particular brand. It also prevents other companies or businesses from taking advantage of consumers by representing themselves as brands that they are not.

Which marks are registrable as trademarks?

The marks that can be registered under the trademark laws of the U.S. include any-

• Word
• Name
• Symbol
• Device 

Most registered trademarks include words or logos. Sometimes, non-traditional marks can also be registered as trademarks if they have acquired a distinctive character.

Which marks cannot be registered as trademarks?

The marks that cannot be registered under the Lanham Act include the following-

• coat-of-arms, flag, emblem of a governmental agency, or symbol of foreign nations;
• a specific individual’s name, signature, or picture that identifies him without his written consent;
• a mark that is similar to any other trademark or a mark that was used in the U.S. earlier and is not being abandoned;
• a mark used in relation to the sale of goods or services, or it is likely to cause confusion or mistake, or it can deceive consumers;
• deceptively similar marks; and
• functional matter.

What are the basic requirements to obtain a registration?

The basic requirements to obtain registration are as follows-

• The applicant’s name.
• The address of the applicant is where the USPTO would send its correspondence.
• A clear picture of the mark that needs to be registered.
• The list of goods or services that will be sold or offered in relation to the mark.
• Submission of the fees for a minimum of one class of goods or services.

What are the additional requirements for its registration?

The additional requirements for its registration are as follows-

• All details about the applicant.
• Whether the applicant is taking the registration for his individual purpose or for any other legal entity.
• Its place of incorporation.
• The basis for filing.
• A clear description of the mark.
• The mark’s drawing.
• Submission of the unpaid fees for any other additional classes.
• The USPTO plays an important role in encouraging the foreign applicant to appoint a foreign representative to receive service of notices or proceedings by the USPTO.

What is the time frame for the maturation of the application for registration?

The usual time it takes to mature is between nine and twelve months for the issuance of registration if there are no substantive objections and no filing of oppositions. The application should be filed in electronic form. The duration can increase if any issue is raised by office actions, or opposed, or filed on paper.

References

• https://iclg.com/practice-areas/trade-marks-laws-and-regulations/usa
• https://www.upcounsel.com/trademark-law
• https://cyber.harvard.edu/metaschool/fisher/domain/tm.htm
• https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
• https://www.inta.org/fact-sheets/filing-a-trademark-application-in-the-united-states/
• https://swaritadvisors.com/blog/trademark-registration-in-usa/
• https://www.craftedlaw.com/building-your-brand-with-trademark-registrations/
• https://beckerlawllc.com/registering-a-trademark-with-an-intent-to-use-application/
• https://lawshelf.com/videocoursesmoduleview/registering-a-trademark-module-2-of-5
• https://www.cohnlg.com/trademark-abandonment-and-the-loss-of-trademark-rights/
• https://www.upcounsel.com/how-long-do-trademarks-last
• https://www.redpoints.com/blog/first-to-use-vs-first-to-file-trademark/
• https://www.mandourlaw.com/trademark-use-in-commerce/
• https://www.jdsupra.com/legalnews/fixated-on-affixation-navigating-the-us-2252011/
• https://www.law.cornell.edu/uscode/text/18/10
• https://law.justia.com/constitution/us/article-1/31-interstate-versus-foreign-commerce.html
• https://www.britannica.com/topic/Eleventh-Amendment
• https://constitution.findlaw.com/amendment11.html
• https://www.upcounsel.com/how-long-do-trademarks-last
• https://www.patenttrademarkblog.com/renew-trademark-registration/
• https://www.law.cornell.edu/cfr/text/37/2.161
• https://ssrana.in/articles/life-of-generic-trademarks/
• https://bwlegalworld.businessworld.in/amp/article/Important-Clauses-In-A-Trademark-Licensing-Agreement-/06-10-2021-407478

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This article has been written by Kishita Gupta, an advocate who is a graduate of the Unitedworld School of Law, Karnavati University in Gandhinagar. In this article, the primary trademark legislation of the United States of America, which is the Lanham (Trademark) Act, 1946, has been discussed in detail. The author has also tried to cover various aspects related to the Act in this article, such as the ‘use in commerce’, ‘fair use’, ‘the likelihood of confusion’, etc.

It has been published by Rachit Garg.

Introduction

Do you have any products that are exclusive, and do you want to protect their exclusivity? Then this article is the right place for you. In this article, we will be discussing the Lanham (Trademark) Act, 1946, which is the prime trademark legislation in the United States of America. The Lanham Act, formally known as the Trademark Act of 1946, provides for the registration and protection of trademarks and service marks in the United States. The Act has been amended several times since it was enacted on July 5, 1946.

The Lanham Act was established to provide a legal framework for the registration, maintenance, and protection of trademarks in the US. It states that a trademark is a distinctive mark, symbol, or device that is used to identify and distinguish the goods or services of one party from those of another. A common component of both infringement and unfair competition charges is the potential for consumer confusion. One of the purposes of the Lanham Act is to protect consumers from confusion as to the source of products and services.

The Lanham Act also provides remedies for trademark infringement, dilution, and unfair competition. It sets out the rules and regulations for registering trademarks as well as the procedure for canceling or invalidating an existing registration. It also outlines the requirements for the use of trademarks, including proper trademark usage, maintenance of a trademark, and enforcement of trademark rights.

Overview of the Lanham Act

The Lanham Act provides nationwide protection for trademarks and service marks that are used in interstate commerce. This means that a trademark that is registered with the US Patent and Trademark Office (USPTO) is protected throughout the US. The Act also provides for a system of registration and enforcement of trademarks, as well as the ability to obtain remedies for trademark infringement and dilution.

The Lanham Act is broken down into four subchapters. After the first three subchapters were approved in 1946, the fourth was added.

1. The first two of these four subchapters deal with the rules governing trademark registration. The principal register is covered in the first, while the supplemental register is covered in the second. The steps involved in registering a trademark and the requirements to do so are among the subjects covered.
2. The mark, for instance, needs to be special. The mark cannot be identical to an already-existing trademark, nor can it be so generic that it cannot be distinguished from other trademarks.
3. The third chapter discusses trademark infringement and the potential legal remedies in such situations.
4. The Madrid Protocol is covered in the fourth chapter, which deals with the international registration of marks.

The Lanham Act states that a trademark is a distinctive mark, symbol, or device that is used to identify and distinguish the goods or services of one party from those of another. The Act also provides for certain “evidentiary presumptions” that apply to trademark registrations. These presumptions include that a trademark is valid and has been used in commerce, that a trademark is owned by the registrant, and that a trademark is likely to remain distinctive.

The Lanham Act also provides for a warning function that discourages the use of trademarks by others without the authorization of the trademark owner. The Act states that any person who uses a trademark in commerce without the authorization of the trademark owner can be liable for damages. The Act also states that a trademark owner can seek relief in the form of injunctive relief, damages, and attorney’s fees.

Nationwide protection under the Lanham Act

Considering the fact that the Lanham Act is a federal law, it creates an impact all over the nation. Under the Lanham Act, a trademark that is registered with the USPTO is granted a number of rights. These include the exclusive right to use the trademark in connection with the goods or services for which it is registered, the right to seek relief for trademark infringement, the right to use the trademark in commerce, and the right to register the trademark in foreign countries.

In order to obtain nationwide protection under the Lanham Act, a trademark must be registered with the USPTO. This involves the submission of an application, which must include the name and address of the applicant, the name and description of the goods or services for which the trademark will be used, and a drawing of the trademark. The application must also include a “declaration of use in commerce,” which is a statement that the trademark is currently being used in commerce.

History of trademark law in the USA

Trademarks were not specifically discussed at the American Constitutional Convention, in contrast to patents and copyrights. But the idea of a trademark has been around for centuries, as evidenced by the discovery of marks on ancient pottery as well as the practice of guildsmen in the Middle Ages of adding distinctive marks to their products.

The common law rules protecting trademarks were imported from England’s common law into the American colonies and provided some state-level protection. Nine years after it was approved in 1870, the first federal trademark statute was declared invalid. Congress responded by passing a new trademark statute in 1881. The Lanham Act, which established the U.S. Patent and Trademark Office (USPTO), also established trademark registration procedures and specified the government protections provided to trademark owners, was passed by Congress in 1946 after that statute underwent a significant revision in 1905.

The Federal Trademark Dilution Act of 1995

Only 25 states had state anti-dilution laws in 1995, but since famous marks were typically used nationwide, Congress opted to enact a federal anti-dilution law. Only “famous” marks are protected under the Federal Trademark Dilution Act of 1995 (FTDA), which also offers criteria for determining whether a mark qualifies as “famous.” With the inclusion of Subsection (c) to Section 43 (15 U.S.C. § 1125) of the Act and the definition of dilution in Section 45 (15 U.S.C. § 1127) of the Act, the FTDA helped to broaden the Lanham Act. The amendment, according to the House of Representatives report, was created to shield well-known trademarks from later uses that would obscure or lessen their uniqueness, even in the absence of a probability of confusion.

If a trade name or mark is used commercially in commerce after it has gained notoriety and if this usage lessens the mark’s distinctiveness, the FTDA permits legal action. Instead of proving the possibility of dilution, the trademark owner must demonstrate actual dilution. The Patent and Trademark Office argued that famous marks needed protection regardless of whether the marks were registered in the nation where protection was sought, despite the fact that the bill’s original language required the mark to be registered in order to be protected. 

The FTDA only offers monetary compensation to successful claimants and injunctive relief if the defendant knowingly seeks to trade on the reputation of the owner or dilute the well-known mark. Additionally, the FTDA stipulates defenses against dilution claims, such as non-commercial use of the name, news reporting and commentary, fair use through comparative advertising, and federal trademark registration.

The “non-commercial use” defense of Section 43 of the Lanham Act sometimes includes freedom of speech as a dilution defense, even though a parody exception is not officially mentioned in the list of defenses for dilution.

Significance of the term: use in commerce

Trademark law has an old saying that goes, “Use it or lose it.” Although using a mark can seem like an easy concept to grasp, ‘use’ is a difficult term to define. The “use in commerce” criteria for obtaining and maintaining a federal registration necessitate a genuine ‘sale’ or ‘transportation’ of a good bearing the mark, as well as follow-up activity on the part of the mark owner that demonstrates a consistent attempt to employ the mark in the ordinary course of business. However, not all actions taken in relation to a mark are appropriate ‘uses’.

The challenge trademark owners encounter while trying to fulfill the use requirement is not a recent one. The repeated and recurrent challenges that certain trademark owners encounter when they try to convince a court that the necessary use has been made are illustrated by two recent rulings. 

The Trademark Trial and Appeal Board declined to identify a triable question of fact about whether sufficient use of the mark had been made in the 2013 decision, Clorox Company v. Hermilo Tamez Salazar, where the trademark owner had used the mark in pre-sale activities but had not yet sold a mark-bearing product. In Clorox, a 2013 precedent-setting Board decision, the applicant sought to register the term “Clorotec” and an associated design for specific electronic equipment connected to the production of various cleaning solutions. The opposer filed a motion for summary judgment, arguing that the Clorotec mark had not been used in a manner that was significant. After siding with the opposer and ruling that the applicant had not used its mark in commerce at the time of filing, the Board eventually decided against registering the mark.

Similar to this, despite the owner providing four verified sales of its trademarked goods, a court refused to determine that there were triable questions of fact sufficient to withstand a summary judgment request in the 2011 decision Gameologist Group, LLC v. Sci. Games Int’l, Inc. The rulings serve as a reminder of how vulnerable some trademarks are to the current use criterion, which appears universal on the surface but is applied unevenly.

The owner must “use” their brand “in commerce” in order to achieve registration under federal trademark law. Instead of the inventiveness or invention that may have preceded the formation of the trademark, the basis for rights under the federal trademark registration scheme is making enough public use of the mark in the marketplace. So it stands to reason that one need for acquiring and maintaining Lanham Act-protectable rights in a trademark is its use in commerce. If a trademark has not been used properly when a federal registration is granted, the registration is worthless from the start.

A single sale of eight pieces of luggage for $760 over the course of two years was deemed de minimis and insufficient to establish usage as a mark in Momentum Luggage Leisure Bags v. Jansport, Inc. (2001). The cases listed below show that attempts to prove the ‘use’ are beset with what seem to be insurmountable challenges since the purported use was deemed insufficient because it was minor, de minimis, or too intermittent. In the case of Paramount Pictures Corp. v. White (1994), it was determined that adding a mark to a game made up of three pieces of paper and dispersing it to advertise a musical group qualified as de minimis use. In WarnerVision Entm’t Inc. v. Empire of Carolina Inc. (1996), despite the fact that one of the plaintiff’s promotional efforts led to a sale to a significant retailer, the plaintiff’s efforts to demonstrate substantial use were unsuccessful since just a few presentations were made to industry buyers.

Filling of a trademark under the Lanham Act

The Lanham Act’s conditions must be met by a trademark applicant’s application in order to get a federally registered trademark. These conditions are mentioned in Section 1 (15 U.S.C. § 1051) of the Code. 

• To be eligible for protection, a mark must first be used or intended for use in commerce. A mark is used in commerce when it is applied in any way to goods, their containers display that goes with them, tags, or labels that are attached to them, and when those goods are sold or transported commercially. As per Section 45 (15 U.S.C. § 1127), a mark is also used in commerce when it is applied in any way to services, such as when it is used or displayed in the sale or advertising of services and those services are provided commercially.
• The second requirement is to adhere to Section 2  (15 U.S.C. § 1052) of the Lanham Act, which specifies the kinds of marks that can be registered. Among other requirements, Section 2(d) states that a mark is not registerable on the principal register if it consists of or contains a mark that is so similar to one that has been registered with the Patent and Trademark Office, or one that has been used in the United States by another party before and has not been abandoned, that it is likely to cause confusion when used on or in connection with the applicant’s goods. This clause is also known as the “likelihood of confusion.” 

Likelihood of confusion

Under Section 43(a)(1)(A) (15 U.S.C. § 1125(a)(1)(A)), a mark owner may file a lawsuit if there is a risk that her unregistered mark would be confused with another supposedly similar mark. For registered or unregistered marks, respectively, a mark owner may file a lawsuit for a probability of misunderstanding with her mark and an allegedly confusing mark under Sections 32(1) (15 U.S.C. § 1114) or 43(a)(1)(A). 

A trademark owner who successfully registered her mark and complied with all registration criteria is entitled to file a lawsuit under Section 32(1) for the possibility of confusion. In a Section 32 cause of action, the existence of a registered mark creates a presumption of validity for the mark. However, if a mark owner fails to submit an application or if the application is rejected during the trademark examination process described above, the mark owner only retains her common law rights in the mark if the applicant does not meet the statutory requirements of Section 2 and is unable to successfully register her mark.

A cause of action under Section 43(a)(1)(A) must be brought by the mark owner on the grounds of a possibility of confusion based on common law rights. Therefore, when an applicant or other unregistered mark owner wants to exercise her common law rights over another mark, a lawsuit may be brought under Section 43(a)(1)(A). No assumption of a mark’s validity exists in this situation.

The degree of distinctiveness of a trademark, which can be arbitrary, fanciful, suggestive, descriptive, or generic, determines its level of protection. Arbitrary marks are generally thought to be the most distinctive, whereas generic marks are thought to be the least distinctive. In the case of Abercrombie & Fitch Co. v. Hunting World, Inc. (1976), the principle of levels of distinctiveness of a trademark was outlined. It was stated that, arranged in an ascending order roughly reflecting their eligibility for trademark status and the degree of protection accorded, the categories of terms are generic, descriptive, suggestive, and arbitrary or fanciful, but the lines of demarcation are not always bright.

The infamous Polaroid factors

Several criteria derived from a 1961 decision, Polaroid Corp. v. Polarad Electronics. Corp., are used by courts to determine the likelihood of confusion. These elements, also referred to as the Polaroid factors, may differ slightly depending on which federal court is using them. Not all of the variables may be especially helpful in any specific scenario; they are only meant to be a guide.

In the case of Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. (1888), the Goodyear Rubber Company sued Goodyear’s India Rubber Glove Manufacturing Company in that lawsuit to prevent them from using the name “Goodyear’s Rubber Manufacturing Company.” The court ruled that the term “Goodyear Rubber Company” is not one that can be appropriated exclusively. “Goodyear Rubber” is a name used to describe a class of well-known products created via the method known as Goodyear’s Invention. Therefore, no one may claim exclusive ownership of names that describe a class of things. The word “Company” is simply included to denote the formation of an alliance or partnership by the parties to trade in such items, whether to produce or sell them.

Strength of the mark 

A mark is considered ‘weak’ if it is only descriptive and has not developed enough auxiliary meaning. A mark is considered ‘strong’ if it has taken on additional significance or if it is arbitrary, fantastical, or provocative. It will be challenging for the owner of a weak mark to demonstrate a likelihood of confusion. For instance, it was decided that the cleaning service logo “Maid in America” is descriptive. The owner was unable to provide enough evidence from sales or advertising to support secondary meaning. As a result, the trademark owner’s allegation of infringement against a mark that was identical was unsuccessful. A survey can be used to demonstrate secondary meaning in infringement cases when descriptiveness is a point of contention.

Similarity of the marks

Generally speaking, all aspects of a brand, including its appearance, sound, connotation, and commercial impression, must be compared. However, analyzing and contrasting each mark’s components may be necessary to determine whether the two marks are similar.

One instance involved a lawsuit between the owners of the trademarks “The Travel Planner” and “OAG Travel Planner.” The use of OAG in conjunction with “Travel Planner” produced an arbitrary mark, the court said, even though “Travel Planner” itself was weak and descriptive. The Court found that the marks were likely to cause consumer confusion because of their visual and aural similarity. In a similar vein, a Court determined that Little Dutchman and Dutch Masters cigars were identical due to the widespread use of the dominant term “Dutch.”

However, a claim of mark resemblance may still be made notwithstanding the addition of a prefix or suffix, letter changes, or clarifying information. For instance, it was discovered that the following marks were similar: Platinum Puff and Platinum Plus, Zirco and Cozirc, Magnavox and Multivox, Simoniz and Permanize, Maternally Yours and Your Maternity Shop.

The similarity in meaning between the marks may also be taken into account. For instance, it was determined that the marks Mr. Clean, Mr. Rust, and Mr. Stain, Thirty Forty Five and 60 40 20, and Pledge and Promise were comparable.

Similarity of the goods

The test for infringement is whether a typical, cautious buyer would be likely to buy one thing while thinking he was buying the other. For instance, when used on bleach, Chlorit can be mistaken for Clorox. In general, if a trademark owner uses a similar mark for wholly unrelated goods, it is acceptable. For instance, it was established that using the Lexus brand on automobiles would not cause confusion among users of the Lexis database services.

A trademark owner may receive protection for products that are connected to theirs. A trademark for canned salmon, for instance, might cover other canned fish as well. It’s possible to use a mark on electric lamps in addition to kerosene lamps. In these situations, the courts take into account whether consumers might reasonably anticipate that the products came from the same source. Customers are more inclined to anticipate an increase in the product base the more widely used and well-known the mark is. 

For instance, would customers confuse the McSleep trademark from Quality Inn for hotel services with the McDonald’s trademark for restaurants? Yes, a federal district court has ruled. The “Mc” prefix has been utilized by the McDonald’s Corporation so frequently that its growth into non-food areas is anticipated. The business has actually already entered the children’s clothing market with its McKids clothing line. The Coca-Cola trademark, which has been licensed for use on apparel, glassware, puzzles, watches, bags, and other non-food items, is the same. Unusual goods have also violated the Coca-Cola brand. (The trademark, for instance, has been applied to “can wraps,” which are labels designed to be placed around an alcoholic beverage to hide its contents.)

The courts also take the similarity of the distribution and advertising methods into account. Many courts consider each piece of evidence separately to decide whether consumers or distributors might be vulnerable to misinterpretation. A salami dispute might be avoided, for instance, if the plaintiff sells salami directly to customers while the defendant exclusively provides delicatessens with salami in bulk.

Degree of care exercised by the consumer

Depending on the purchase, the consumer’s level of concern changes. A buyer who spends a lot of money on a product is typically more selective and less likely to be readily misled by identical marks. The consumer purchases pricey products less frequently, which accounts for a higher level of care. The courts reason that these buyers will probably be more selective and source-conscious when making purchases of real estate services, insurance, or other “high ticket” goods. In these situations, the courts want a stronger demonstration of likeness to support a likelihood of confusion argument. The same is valid for products bought by “professional buyers.” A professional buyer is someone who comes to the point of purchase with expertise in the products (such as a pharmacist, doctor, architect, constructor, etc.). A knowledgeable buyer is less likely to be perplexed because they are more knowledgeable about making good purchases.

The most likely person to be confused by similar marks is a regular consumer, especially one who makes impulsive, low-cost purchases. For instance, this customer might swiftly scan an aisle at a grocery store and impulsively buy a box of trash bags without understanding that she was perplexed by the assortment of brands. A lower standard of care has been used in this case. 

Defendant’s intent

Although demonstrating infringement does not depend on the defendant’s intent, it is an important consideration. The Restatement of Trademarks states that it is fair to take the defendant’s intent into account because a party who intentionally seeks to create confusion would typically succeed in doing so. In most cases, the plaintiff must rely on circumstantial evidence, such as how the defendant’s mark was selected or whether the defendant continued to use the mark notwithstanding the plaintiff’s warning, to establish the defendant’s intent to deceive.

Actual confusion

It is not necessary to show that there was actual confusion when assessing trademark infringement. However, in a case of infringement, such proof might be convincing. Companies occasionally undertake polls to ascertain the level of actual uncertainty. These surveys are pricey, and if carried out incorrectly, they could undermine the plaintiff’s case.

Review of trademark applications under the Lanham Act by the USPTO

If an applicant complies with Section 2(d), the USPTO, and specifically a trademark examining attorney (examiner), makes the decision. The USPTO evaluates whether there is a possibility of confusion between the applicant’s mark and an already registered or pending mark in accordance with Section 2(d) of the Lanham Act. The goods or services employing the marks must be sufficiently related to one another for consumers to be likely to be perplexed as to the source of the goods or services. 

Marks do not have to be identical to create the possibility of confusion, as per USPTO Section 1207.01 of the Trademark Manual of Examining Procedure (TMEP). The question is whether there is a likelihood of confusion regarding the source or sponsorship of the goods or services due to the marks used therein, rather than whether the particular marks themselves or the goods or services offered under the marks are likely to cause confusion. “Similar in sound, appearance, or meaning,” goods or services “may be sufficient to support a finding of the likelihood of confusion.” Additionally, if two marks “convey a similar general meaning and produce the same mental reaction” in consumers or “create the same overall commercial impression,” an examiner may conclude that there is a likelihood of confusion.

Only when goods or services are “related in such a way that consumers are likely to assume (erroneously) that they come from a common source” can two similar marks result in the possibility of confusion.  For instance, because they are frequently offered in the same places, food and beverage items are closely related products. Therefore, a consumer might incorrectly believe that a food item and a beverage item with the same mark are coming from the same source, which would lead to uncertainty over the source. In contrast, the term ‘United’ designates both a provider of healthcare services and an airline. 

The markets for healthcare and air travel, however, are so unrelated that customers would not be misled into believing that “United Airlines” also offers healthcare or the opposite. The application will be rejected on the basis of the possibility of confusion if the examiner determines that there is a likelihood of confusion between the applicant’s mark and another mark under Section 2(d). An office action is used to convey this denial. The applicant must respond to the office’s action by making changes to their applications or presenting justifications for other changes and/or non-alterations. The back and forth between responses and office actions throughout this communication process between the examiner and applicant can last for years.  

The examiner may reject the application with a final office action if the applicant is unable to satisfy all of the examiner’s objections. The applicant may only appeal this final denial to the Trademark Trial and Appeal Board (TTAB) and only with regard to matters containing subject matter covered by Sections 2, 3, 4, 5, 6, or 23 of TMEP.

The mark will instead be published in the Official Gazette (OG) and Trademark Official Gazette (TMOG) after the examiner authorizes it, assuming there are no objections or the applicant successfully overrides all objections. A person who opposes the registration of the mark after publication has 30 days to file their opposition to registration. The TTAB conducts a proceeding following the filing of an opposition.

Anti-Disparagement Clause of the Lanham Act

The Lanham Act’s Anti-Disparagement Clause, included in 15 U.S. Code 1052(a), forbids the trademarking of entities. According to the clause, no one is allowed to trademark anything that contains immoral, dishonest, or scandalous material, as well as material that may disparage or falsely imply affiliation with living or deceased people, institutions, beliefs, or national symbols, or bring them into disrepute.

In Matal v. Tam (2017), this clause was contested. In this case, the Supreme Court unanimously determined that the freedom of speech under the First Amendment is violated by the Anti-Disparagement Clause. The clause, according to the Court, amounted to unlawful viewpoint discrimination. This decision allows for the trademarking of some items that were previously barred due to their violation of the Anti-Disparagement Clause.

How is the First Amendment significant to the Lanham Act

The Lanham Act establishes civil responsibility for unlawful uses of legitimate marks and trade dress that are likely to lead to consumer confusion in order to protect trademarks and trade dress. However, the First Amendment’s safeguards for free speech do not apply to speech covered under the Act.

The Supreme Court acknowledged that the First Amendment protects commercial speech in Virginia State Board of Pharmacy v. Virginia Citizens Consumer Council, Inc. (1976). According to the Supreme Court, until this 1976 ruling, the First Amendment did not cover commercial speech. Since the Virginia State Board of Pharmacy ruling, defendants have successfully argued for the First Amendment’s protection against the illegal use of trademarks in parodies that don’t mislead consumers.

The scope of First Amendment protection afforded to persons who utilize another’s trademark depends on the sort of speech. The Supreme Court established First Amendment protection for commercial speech in the Virginia State Board of Pharmacy ruling; the Court later limited this defense in Central Hudson Gas & Electric Corp. v. Public Service Commission of New York (1980). The Court restricted this First Amendment protection so that it does not apply to commercial speech that refers to illegal or deceptive activities.

In order to prevent the general public from reacting ‘irrationally’ to the facts, states can even outlaw factual, non-misleading commercial communication. Sometimes it is difficult to tell what language is being used. For instance, when fully protected speech and commercial speech are “inextricably intertwined,” the Supreme Court views the combined form as fully protected speech that is not intended for commercial gain. Courts may disagree when defining speech as commercial or noncommercial since advertising has both social and financial significance.

Defendants have successfully used the First Amendment’s protection in trademark infringement and dilution lawsuits by claiming that the plaintiff’s trademark was being used to make a significant social or commercial point to the public. The use of another person’s trademark in a parody frequently falls under the constitutional protection provided for non-commercial speech and is therefore only occasionally liable. 

A First Amendment argument is typically dismissed if the defendant utilizes another’s trademark in a business setting. For instance, the defendant in Mutual of Omaha Insurance Co. v. Novak (1986) promoted goods with the label “Mutant of Omaha” to send a message of protest against nuclear weapons. The Court rejected the defendant’s First Amendment defense since there were other non-commercial ways to convey the message without using the plaintiff’s brand.

The U.S. Supreme Court ruled on June 24, 2019, in Iancu v. Brunetti (2019), that Section 2(a) of the Lanham Act, which forbids trademark registration of those “consisting of or comprising immoral or scandalous matter,” violates the First Amendment. 

This judgment is consistent with the Court’s 2017 ruling in Matal v. Tam (2017), which held that the First Amendment is violated by the ban on the registration of ‘disparaging’ marks.

The disparagement clause violates the First Amendment in Tam, according to all eight Justices; the newly confirmed Justice Neil Gorsuch did not take part in the decision because it targets derogatory expression with the intention of discouraging its use while allowing registration of words and other marks that are positive or benign. Laws that discriminate against people or groups based on their opinions or beliefs cannot pass muster with the First Amendment unless they restrict government expression, because trademark registrations are “private, not government, speech.” The disparagement clause was an unlawful regulation of expression since it did not pass constitutional muster.

Tam‘s judgment opened the door for First Amendment challenges to other trademark law issues. For instance, the Lanham Act’s ban on the registration of scandalous or immoral brands is likely to pass constitutional scrutiny. Tam makes it explicit that trademark regulations need to pass muster with the First Amendment not just when they forbid or punish expression but also when they discourage the use of a protected expression, including commercial expression. Currently, trademark laws permit the registration of things like descriptive terms, well-known slogans, colors, product features, and other “nontraditional marks” that had intrinsic value in the market before they were used as trademarks. These things should arguably stay in the public domain for everyone to use. These laws may discourage the use of this phrase, and Tam may not have provided a strong enough constitutional basis for granting these kinds of exclusive trademark rights.

Evidentiary presumptions under the Lanham Act

The Lanham Act provides for certain “evidentiary presumptions” that apply to trademark registrations. The evidentiary presumptions under the Lanham Act provide trademark owners with strong legal protection. 

For example, a trademark owner can rely on the ‘presumption of validity’ to prove that the trademark is valid and has been used in commerce. Additionally, the ‘presumption of ownership’ allows the trademark owner to prove that they own the trademark. Finally, the ‘presumption of continued distinctiveness’ can be used to prove that the trademark is likely to remain distinctive.

The evidentiary presumptions under the Lanham Act are important because they provide trademark owners with legal protection against trademark infringement and dilution. By relying on these presumptions, a trademark owner can prove their rights to the trademark and seek relief in the form of injunctive relief, damages, and attorney’s fees.

Presumption of validity and ownership 

The validity of every issued U.S. trademark is assumed. However, because the USPTO is an administrative agency (i.e., a division of the executive department of government), the courts have the authority to review its rulings.

A person attempting to register their trademark does not need to provide evidence in court that the trademark is legitimate due to the presumption of validity and ownership. It is the responsibility of the alleged infringer to demonstrate through clear and compelling evidence that the USPTO erred in awarding the trademark registration.

Similar to the presumption that USPTO rulings have in the area of patents, the likelihood-of-confusion determination made by the USPTO should be given the benefit of the doubt. The USPTO is perfectly capable of making qualified determinations regarding a probability of confusion with the evidence in front of them, as evidenced by the trademark examiners continually exceeding quality requirements. The USPTO would be in line with other agencies in terms of the respect and deference accorded to administrative decisions if such a presumption were allowed. 

Additionally, courts assume the legitimacy of patent rulings rendered by the USPTO, the same government body that issued the contested marks. The vigorous trademark prosecution mechanism used by the USPTO should be treated with the same respect and deference as in patent law. As a result, there would be a distinct distinction between judicial law and administrative law, and there would be less conflict between the two. The presumption of validity prevents disputes between the court and agency and respects the USPTO’s vast skill and understanding of a likelihood-of-confusion analysis. 

It was noted in the cases of Maktab Tarighe Oveyssi Shah Maghsoudi v. Kianfar (1999) and Vuitton et Fils S.A. v. J. Young Enterprises, Inc. (1981) that the impact of a disputable registration is to transfer the burden of proof of ownership and validity from the plaintiff to the defendant.  By a preponderance of the evidence, the defendant must refute the plaintiff’s presumed exclusive right to use the trademark. 

Presumption of continued distinctiveness

Some trademarks are already distinctive by nature, while others are not. Generally, marks that are arbitrary (the meaning of the mark has no relation to goods/services), whimsical (a made-up word), or suggestive (the meaning of the mark suggests a trait of goods/services) are considered to be inherently unique marks. There will be barriers to the registration of marks that are descriptive of the products, such as an office action that denies registration on the Principal Register.

The option for registration on the Supplemental Register may be proposed in specific circumstances where the applied-for mark is not as descriptive, at least in the opinion of the USPTO trademark examining attorney. These descriptive marks need to have developed distinctiveness in order to be registered on the Principal Register.

To ‘acquire’ is to earn. Consequently, a brand that has developed distinctiveness has benefited – it is now more recognizable. This increase in distinctiveness normally takes time, usually over a number of years. Since a descriptive mark would not become recognizable overnight, transformation is a process that takes time and effort. “Acquired distinctiveness” is also referred to as “secondary meaning,” and it denotes that the mark has come to have an importance among consumers that is distinct from its dictionary definition.

If a mark is not already distinctive, it must demonstrate its distinctiveness in relation to the products or services of the trademark holder. Section 2(f) [15 USC 1052(f)] evidence is another name for this. According to 37 CFR 2.41, there are three basic categories of evidence that may be utilized to support a Section 2(f) claim:

1. Prior Principal Register registrations of the same mark for sufficiently related goods or services;
2. Actual proof demonstrating the length, scope, and type of use of a mark; and 
3. Five years of essentially exclusive and continuous use (also known as the Section 2(f) claim).

The particulars of each individual mark will determine the level of distinctiveness that is deemed sufficient for registration on the Principal Register. More evidence will be needed for highly descriptive marks than for less descriptive ones. If someone wants to register their mark on the Principal Register but it is already registered on the supplemental register, a fresh application must be submitted. Incorporating Section 2(f) evidence earlier in Principal Register application would be more effective. Careful thought should be given to the pieces of actual evidence that might help show a sufficient level of distinctiveness if the applicant lacks any earlier registrations or at least five years of usage.

Warning function of the Lanham Act

The Lanham Act also provides for a warning function that discourages the use of trademarks by others without the authorization of the trademark owner. The Act states that any person who uses a trademark in commerce without the authorization of the trademark owner can be liable for damages. Additionally, the Act states that a trademark owner can seek relief in the form of injunctive relief, damages, and attorney’s fees.

The warning function of the Lanham Act is an important tool for protecting trademarks from infringement. By requiring that any person who uses a trademark without authorization be liable for damages, the Act provides a strong incentive for people to respect the rights of the trademark owner. The warning function also serves to deter future infringement by making it clear that any person who uses a trademark without authorization will be held liable for damages.

Fair use exception

Intellectual property professionals are familiar with the fair use doctrine under copyright law. A similar idea can be found in trademark law, where it is acceptable to use another person’s mark in a ‘fair’ manner. Similar to copyright law, the usage is found to be “fair use,” where the perceived public benefit outweighs any purported harm to the trademark owner.

The Lanham Act’s Section 33(b)(4), 15 U.S.C. 1115(b)(4), contains a statutory fair use provision. Due to the statutory provision’s limited application, three additional, judicially created categories have emerged where using someone else’s trademark may not be judged to be infringing. 

One of the few defenses a defendant has against a charge of infringing an unassailable registration is this “fair use” defense, which is specifically listed. It is frequently used as a defense against any claim of trademark infringement, including a claim based on non-incontestable registrations and a claim based on a violation of Section 43(a). Alleged common law infringements have also been subject to the elements of the statutory fair use defense.

A trademark owner is generally prohibited from monopolizing or appropriating a descriptive word or phrase owing to the statutory fair use argument. The court observed that the defense is only available in cases involving descriptive terms and only when the term is used in its descriptive sense rather than its trademark use in Zatarains, Inc. v. Oak Grove Smokehouse, Inc. (1983), a landmark case on the subject. 

There was a division in the Courts of Appeals up until recently between those who held that a possibility of confusion precluded the statutory fair use argument and those who held that it did not. The U.S. Supreme Court ruled in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004), that a finding of likelihood of confusion does not necessarily preclude the use of the statutory fair use defense and that it is the plaintiff’s responsibility to establish such a likelihood of confusion rather than the defendant’s burden of proof when asserting the fair use defense.

Nominative fair use refers to the use of the plaintiff’s mark in a descriptive manner to identify or describe the plaintiff’s goods or services, in contrast to most statutory fair use cases. WCVB-TV v. Boston Athletic Association (1991), although decided before the Ninth Circuit articulated the defense and created the phrase, is more logically a nominative fair use case. In this instance, a television station used the registered brand “BOSTON MARATHON” in connection with its broadcast of the running competition. The words “Boston Marathon” were shown on the screen by WCVB-TV before, during, and after they covered the actual race. Given that the trademark was largely utilized for descriptive purposes, the First Circuit determined that the fair use defense had been adequately raised. There was little chance of misinterpretation because of the “timing, meaning, context, intent, and surrounding circumstances.” Without permitting anyone to use the word “Boston Marathon,” the Court reasoned, it would be nearly impossible to describe the Boston Marathon.

In several of the nominative fair use instances ruled during the previous thirteen years, the facts were simple; the defendant used the plaintiff’s mark to refer solely to the plaintiff in these situations. In other instances, however, the defendant makes use of the plaintiff’s mark to designate a feature of its own products or services in addition to the plaintiff’s goods or services.

Playboy Enterprises, Inc. v. Terri Welles, Inc. (9th Cir. 2002), which involved a resume of sorts, is the most well-known of the “dual reference” nominative fair use cases. The proprietors of several Playboy trademarks sued Welles, a previous Playboy Playmate of the Year, on the grounds that her website and meta tags violated several Playboy trademarks. The district court determined that both nominal and statutory fair usage safeguarded: 

1. The title of the link page and the defendant’s website both utilize the phrase “Terri Welles – Playmate of the Year 1981”; 
2. using the repeated watermark “PMOY ’81”—an abbreviation for “Playmate of the Year”—on websites, 
3. utilizing the terms “playboy” and “playmate” in meta tags; and 
4. The defendant’s use of the terms PLAYBOY and PLAYMATE in banner advertisements on her website and other websites.

The Ninth Circuit’s decision expanded the nominative fair use argument to cases where the defendant utilized the plaintiff’s mark to refer to both the defendant and her qualifications as well as the plaintiff’s goods. The Court determined that Ms. Welles’ use of the terms “PLAYBOY PLAYMATE of the Year 1981,” “PLAYMATE of the Year 1981,” and “PMOY ’81” constituted a nominative fair use and served to identify herself.

Even though the defendant’s use of the in dispute phrases amounted to a “repetitious commercial theme,” the Court determined this use to be reasonable. The Court stated that the prominence of a descriptive phrase on a label, packaging, or advertisement does not necessarily show that the term is being used in a trademark sense. Nevertheless, the use of a challenged term as an “attention-getting symbol” can be used to demonstrate infringing usage.

Damages under the Lanham Act

The Lanham Act provides for a number of remedies for trademark infringement and dilution. These remedies include damages, injunctive relief, and attorney’s fees. Damages can be awarded in the form of actual damages, profits, or statutory damages. Actual damages are the actual monetary losses that the trademark owner has suffered as a result of the infringement. Profits are the profits that the infringer has earned as a result of the infringement. Statutory damages are a fixed amount of damages that can be awarded in lieu of actual damages or profits.

In order to obtain damages under the Lanham Act, a trademark owner must be able to prove that the infringement was willful and that the trademark owner has suffered some monetary loss. The amount of damages that can be awarded depends on the facts of the case, including the amount of monetary loss suffered by the trademark owner and the willfulness of the infringer.

Remedies for trademark infringement under the Lanham Act

Injunctive, affirmative, and monetary relief are the three main remedies for trademark infringement under the Lanham Act, and they offer both short-term and long-term solutions to stop the infringement and offer an equitable remedy.

Injunctive relief under the Lanham Act

The status quo in trademark infringement cases can be maintained by directing the immediate cessation of any further infringing conduct by the defendant, which is a power granted to federal courts for both preliminary and permanent injunctions.  When monetary relief is insufficient or damages may not be calculable until the case moves forward, injunctive relief is the most frequently requested remedy in trademark infringement proceedings.

While the criteria used by federal courts to decide whether to award a preliminary injunction may vary slightly, generally speaking, a plaintiff who files a motion for a preliminary injunction must demonstrate:

1. A chance of winning on the merits; 
2. A chance that the plaintiff would suffer irreparable harm without injunctive relief;
3. A balance of hardship favoring the plaintiff; and 
4. Issuing an injunction is best for the general public.

A plaintiff seeking a preliminary injunction must file their application promptly since even a few days’ worth of delay could lead to the rebuttal presumption that the plaintiff is not experiencing irreparable harm. 

Affirmative relief

Federal courts may order a defendant to take affirmative steps in addition to an injunction to stop any ongoing infringement in the market, such as ordering product recalls, corrective advertising campaigns, disclaimers, and the destruction of any infringing items.

The most frequent form of affirmative relief is forfeiture and destruction of the infringing articles under 15 U.S.C. 1118, which may include labels, signs, prints, packaging, advertisements, and wrappers bearing the registered mark or any copy, imitation, or counterfeit, including any molds, plates, or equipment used to produce the infringing good or render the infringing service. 

Monetary relief

The Lanham Act gives federal courts the option to award monetary damages for trademark infringement under 15 U.S.C. 1117(a), in addition to injunctive and affirmative remedies. The amount of a monetary award is, however, subject to considerable latitude by federal courts, and monetary relief is not always granted.

A successful party may get the following compensation if the court determines that monetary damages are appropriate in the circumstances where injunctive relief is sufficient to satisfy the case’s equities, such as attorneys’ fees and costs (only in unusual situations), the defendant’s financial gain, the plaintiff’s financial losses brought on by the defendant’s violation, as well as prejudgment interest.

Federal courts must balance the need to compensate the plaintiff with the need to prevent the defendant from obtaining unjust enrichment and future deterrence. Plaintiffs frequently ask for an award of the defendant’s profits, arguing that a sale gained by the infringing defendant is equivalent to a sale lost by the plaintiff.  According to the Lanham Act, a plaintiff simply needs to show evidence of the defendant’s illegal sales in order to establish damages; nevertheless, several federal courts are still divided about whether sales may be omitted from consideration or whether the defendant’s sales can be directly attributed to the plaintiff. 

Additionally, a plaintiff may establish damages by demonstrating actual losses (as opposed to just hypothetical losses) brought on by the defendant’s infringement.  Calculating actual damages necessitates a fair and reasonable evaluation. When determining an equitable judgment, federal courts will take into account elements including lost revenues, royalties, goodwill, and rebranding.

Damages in cases of counterfeit cases

Producing and selling things that are intended to be identical or nearly identical to the original products constitutes trademark infringement.  In addition to costing American businesses billions of dollars, these “knock offs” pose a severe risk to public health and safety since they unlawfully import goods, including fake food, medicines, and safety equipment. The counterfeit mark must be used on products or with services that are meant to appear roughly comparable to those for which the mark is registered in order for the Lanham Act to be applicable.

The Lanham Act was amended in 1984, granting trademark owners increased damages and adopting a considerably more severe stance in cases involving trademark infringement. Under 15 U.S.C. 1117(c), a plaintiff in a trademark counterfeiting lawsuit may choose between actual damages and statutory damages, providing a bigger possible recovery than in other Lanham Act cases.  When proving actual damages and profits is extremely hard, as it commonly is with counterfeit companies that frequently do not retain accurate sales records, a plaintiff would typically choose statutory damages. 

When determining damages under subsection (a) for any infringement of Section 1114(1)(a) of this title or Section 220506 of Title 36 involving the use of a counterfeit mark or designation, the court must enter judgment for a total of three times the profits or damages, whichever is greater, as well as a reasonable attorney’s fee, unless the court finds exceptions to this rule.

If statutory damages are chosen, the judge may award between $1,000 and $200,000 for each kind of commodity or service that was sold, disseminated, or made available for purchase. The court may award up to $2 million in damages if the plaintiff can further demonstrate willfulness.

The court may award treble damages (three times the estimated losses), in addition to attorney’s fees and prejudgment interest, when the plaintiff chooses actual damages and can prove willful counterfeiting of the mark.  Since the defendants are normally held jointly and severally accountable for the single statutory sum, a plaintiff ordinarily cannot win numerous statutory damages awards in circumstances involving many defendants.

Recovery of the attorney fees

The law that addresses compensation for trademark infringement is 15 U.S. Code 1117. The provision that deals with the recovery of attorney fees is 15 U.S. Code 1117(a). According to the law, the court may grant the party who prevails in a matter reasonable legal fees.

The definition of an “exceptional case” was clarified by the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014). An “exceptional case” is one that stands out for either one of two reasons, according to the Court. 

1. The first is the viability of a party’s legal contention; in evaluating this aspect, judges should consider the relevant facts of the case and the applicable legal standards.
2. Second, the unfair way the case was handled during the legal process Lower courts should evaluate each case individually and consider the totality of the circumstances to determine whether it qualifies as “exceptional.” 

In the Octane case, the Patent Act, 35 U.S. Code Chapter 29, Section 285, was expressly addressed. However, the language used by the Patent Act and the Lanham Act to determine whether it is appropriate to give a successful party in a patent or trademark infringement action attorney fees is the same: “The court may award reasonable attorney fees to the prevailing party in exceptional cases.” In addition, lower courts have applied the ‘Octane test’ in cases involving trademark infringement. 

The court acknowledged the same language as a sufficient justification to consider the Octane rule, even in a trademark infringement case, in Georgia-Pacific Consumer Products v. Von Drehle, (2015): “To be sure, the Octane Fitness Court did not interpret the attorneys’ fees provision of 1117(a). However, because the text of Sections 1117(a) and 285 is identical, we come to the conclusion that there is no justification for not using the Octane Fitness criterion when determining whether to provide attorneys’ fees under Section 1117(a)”. The Court went on to say that a district court may, in some circumstances, deem a case to be ‘exceptional,’ in which case it may grant attorneys’ fees to the party that prevails under Section 1117(a). First off, the viewpoints offered by the sides differ unusually in their merits, with the non-prevailing party’s position being either frivolous or objectively irrational. Second, the non-prevailing party litigated the matter in an unreasonable manner, or there is another reason to advance compensation and deterrent considerations in a given situation.

Significant amendments to the Lanham Act

Since its enactment in 1946, the Lanham Act has been amended several times. Some of the significant amendments include the Trademark Clarification Act of 1984, the Trademark Counterfeiting Act of 1984, the Trademark Revision Act of 1988, the Trademark Amendments Act of 1999, the Madrid Protocol Implementation Act of 2002, the Singapore Treaty, and the Anti-Counterfeiting Trade Agreement of 2011.

1. The Trademark Clarification Act of 1984 amended the Lanham Act to require that all trademark registrations include a declaration of use in commerce. The Act also provided for the cancellation of registrations that are not used in commerce. It also provides for enhanced criminal and civil penalties for trademark counterfeiting. It shifts the standard for determining whether a mark has become generic from buyer motivation to the mark’s primary significance to the relevant public. The Act prohibits evaluating whether a mark has been abandoned using the motivation of the customer.

In order to overturn the ruling in Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., (1979), Congress passed the Act. The Court had ruled that the primary factor in evaluating whether a trademark was generic was the buyer’s intent while making their purchase. Congress overturned the ruling and reinstated the standard criteria for trademark law. Genericity is established by the term’s principal meaning to the buying public, not by the motivation of the buyer.

2. The Trademark Revision Act of 1988 amended the Lanham Act to provide for the registration of collective trademarks and service marks. The Act also provided for the registration of certification marks, which are marks that indicate that goods or services meet certain standards. The Trademark Revision Act of 1988 was passed with the goals of modernizing trademark law to reflect contemporary business practices, enhancing the value of the federal trademark registration system for American businesses, eliminating the current preference for foreign companies seeking to register trademarks in the United States, and enhancing the law’s ability to protect the general public from forgery, confusion, and deception.
3. Further, the Trademark Amendments Act of 1999 amended the Lanham Act to provide for the registration of sound marks and color marks, as well as providing for the registration of marks that are used in international commerce. The Trademark Act of 1946 (Lanham Act) is amended by the 1999 Act, giving owners of well-known trademarks the power to contest or ask for the cancellation of a mark on both the principal and supplemental registers if it would dilute their marks. Additionally, it specifies the sole process for rejecting the registration of such a mark.
4. The Madrid Protocol Implementation Act of 2002 amended the Lanham Act to provide for the registration of marks under the Madrid Protocol, which is an international treaty that provides for the registration of marks in multiple countries. This amendment Act permits a U.S. national, a person residing in the United States, or a person who has a real and substantial industrial or commercial establishment in the United States to submit an international application to the U.S. Patent and Trademark Office. Additionally, it mandates that the Commissioner of Patents and Trademarks transmit the application to the International Bureau of the World Intellectual Property Organization after certifying that the data contained in the international application matches that in the basic application or registration.
5. The Singapore Treaty, which was adopted in 2006, amended the Lanham Act to provide for the registration of marks under the Singapore Treaty, which is an international treaty that provides for the registration of marks in multiple countries. The worldwide trademark system is modernized by the Singapore Treaty on the Law of Trademarks by extending the scope of what is protected to non-traditional marks like sensory marks, color, position, and movement marks, among others. Members may request that submissions be made online. Members are required to offer solutions to reactivate applications or registrations that were unintentionally canceled. The treaty also defines maximum standards for the recording, amending, or revocation of a license in order to protect the trademark application or registration. Countries may be parties to both the Singapore Treaty and the Trademark Law Treaty.
6. Finally, the Anti-Counterfeiting Trade Agreement of 2011 amended the Lanham Act to provide for enhanced remedies for trademark counterfeiting and piracy. The agreement calls for robust legal structures and also contains novel elements that increase global cooperation and support effective IPR (intellectual property rights) enforcement procedures.

Conclusion

Thus, we can conclude that the Lanham Act plays a very important role in safeguarding trademark law in the United States of America. The Act protects trademarks and service marks for goods and services in the United States by being the primary federal law governing trademarks, including how to obtain and maintain a trademark registration. As noted above, damages could be tripled if ill faith is demonstrated. However, in lawsuits for trademark dilution, damages are only recoverable if the defendant knowingly profited from the plaintiff’s goodwill in the use of the mark.

Frequently Asked Questions (FAQs)

How are trademark rights acquired in the United States?

You must fulfill the requirements outlined above in order to obtain trademark protection; your mark must either be intrinsically distinctive or have acquired secondary meaning. You must also demonstrate actual use of the mark or an intention to use it in commerce. While it is not necessary to register your trademark with the USPTO, failing to do so will only give you protection under the common law, which is often only enforceable in the region in which you conduct business.

What are the elements of good faith in trademark use?

An important factor in determining whether a use is fair is whether it is done in good faith. When there is no intention to profit from the goodwill and reputation built up by the trademark owner, the use is deemed to have been made in good faith. The mere knowledge that the phrase being used is in fact, a trademark does not, in and of itself, disprove good faith. 

The courts consider a number of considerations while deciding this. As an illustration, consider how different the packaging and labeling are, how different terminology can be used to describe the same products, and how confused buyers would likely be as a result of such continuous use.

What is protected by Lanham law in the United States?

Fundamentally, the goal of federal trademark law is to safeguard a company’s reputation by assisting customers in correctly identifying the source of the products or services they purchase. Symbols, words, phrases, images, sounds, and other representations that are utilized on products and services are protected by trademarks. A trademark cannot be applied for unless the goods or services are offered for sale.

What constitutes an infringement of a trademark in the USA?

Any claim of trademark infringement will always depend on what is known as the “likelihood of confusion.” The majority of the time, a mark only provides protection for a specific subset of goods or services, and the owner can only forbid the use of the mark in circumstances where it would negatively impact the owner’s market. Therefore, Apple Computers cannot forbid an apple juice company from using the name Apple to market apple juice through the use of trademark law.

References

1. https://blog.ipleaders.in/the-lanham-act-and-how-it-can-be-used-to-protect-trademarks-from-being-exploited-outside-of-the-united-states/ 
2. https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/Amendment-of-the-Lanham-Act-to-Include-a-Rebuttable-Presumption-of-Irreparable-Harm-05.20.2017.pdf 
3. Thomas S. Leatherbury, Explosion of Lanham Act Cases, 1 Best ABA Sec.: GEN. PRAC., Solo & Small FIRM Sec. 20 (1997).
4. Vrudhi Raimugia, Booking.com – A Pyrrhic Victory for Generic.com Trademarks?, 103 J. PAT. & TRADEMARK OFF. Soc’y 69 (2023).  

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This article is written by Ms. Sushree Surekha Choudhury, a law graduate from KIIT School of Law, Bhubaneswar. This article helps in understanding the basics of a trademark search, its classes, and categories in the US. The article discusses in detail how to conduct a trademark search in the US. ‍

It has been published by Rachit Garg.

Introduction

How often have you wondered about starting your business in the US? Or even simply having something unique to yourself, even if it is simply a name or a mark? Well, you can do this in reality too. Beginning a new venture calls for a number of things to be done. You need to create your brand identity, the one by which your product/service will be known. Similarly, when you want something to which you have your ownership, representation, and legal rights, among others, the answer is to get a ‘trademark.’ You can get your trademark registered in the US. A desired word or mark can be trademarked using the official registration route. The trademark registration process can be tricky. You always run the risk of getting into conflicts with other existing marks and the risk of refusal. To avoid these risks, a trademark search is conducted. A trademark search is typically done before filing an application for trademark registration. The United States Patent and Trademark Office (USPTO) is the primary body of the US government that deals with trademark registrations in the US. It also provides a platform for conducting a trademark search. 

In the US, several brands enter the market every day with their unique business ideas and entrepreneurial skills. When these new businesses enter the market, they primarily focus on building a brand for themselves. Brand building is necessary to build a profitable business because when people start recognizing you, they start buying your products or subscribing to your services. The very first step in building a brand is to create a unique identity that is true to your brand. This can be a logo or brand name by which your business will be known to people. This is when businesses feel the need to trademark their brand name and logo. Getting a trademark registered for your brand is necessary in order to prevent others from infringing upon your unique identity and using your goodwill to their advantage. US laws state that no two similar or deceptively identical trademarks can exist on the market. This is to ensure that no brand overlaps with the business acumen of another or infringes upon their intellectual property rights.

When it comes to protecting your business’s unique brand and logo, a USPTO trademark search is essential. A trademark search is a comprehensive review of the USPTO database of registered trademarks. This search will help you determine if the trademark you want to register is available and if there are any potential conflicts with existing registered trademarks. The USPTO is the primary source from the US Government, which helps in conducting a search and being updated on the existing registered marks in the US. The online database of the USPTO is a one-stop solution for all necessary processes related to trademarks and patents in the country.

Imagine you know nothing about the concept of trademarks, their search and registration procedures, etc. You start your business of selling garments and decide to name it M&H, say, as per the initials of your name. You are happy about your business venture and start putting up stores and running your business. One fine day, you get slammed by a legal notice at your store on charges of infringing upon and using another brand’s trademark and brand identity as your own. You have no idea what is going on, and suddenly you find yourself stuck with lawsuits and litigation. All of this could have been avoided if you were legally aware of the nuances of trademark registration and followed the steps. 

In this article, we will learn about trademark searches in the US and the things incidental thereto. 

What is a USPTO Trademark Search

The Trademark Electronic Search System (TESS) is the official database of the USPTO that helps in conducting a trademark search in the US. The TESS search is conducted not only before filing an application for registration but also to protect an existing mark from infringement. Protecting your trademark begins with conducting a trademark search using the available sources in the government database. It is by understanding the kinds of marks that exist in the US that one can begin to protect their own.

Trademarks, whether registered or unregistered, are protected by the provisions of the Lanham (Trademark) Act of 1946. Also known as the “Trademarks Act,” the Act determines and governs the use of trademarks in the US. In order to ensure that one does not violate the provisions of this Act and infringes upon the trademark of another brand, it is essential to conduct exhaustive due diligence before applying for trademark registration in the US. This due diligence involves a trademark search to ensure that the brand name or logo that one has created does not already exist or resemble an already existing trademark in the US. The USPTO assists in this process of due diligence. The USPTO trademark search is conducted by searching the USPTO’s database of registered trademarks. It is a data-enabled search system under the monitoring of the US Government. This search will help you identify any potential conflicts between the trademark you want to register and existing registered trademarks. The database contains records of all active and registered trademarks in the US. Although the Lanham Act protects against infringement of unregistered trademarks as well, these unregistered marks are unavailable in the USPTO database, hence making them vulnerable to getting legal protection and backing. The USPTO trademark search will also help you identify any potential issues that may arise with registering a trademark. The USPTO database is an exhaustive record system that contains all information about registered trademarks, copyrights, and patents in a sequential manner, along with serial numbers and application dates. 

Benefits of a USPTO Trademark Search

Protecting one’s business, brand name, and identity is the first step in producing a successful business. Hence, a trademark search is essential as well as beneficial. It helps to identify already existing marks and brands in the market and create a unique identity while registering a trademark. On the other hand, it also helps in protecting one’s business and already existing brand by ensuring that no other business has attempted to copy your brand identity. A USPTO trademark search has many benefits. The most important benefit is that it helps you determine if the trademark you want to register is available in your chosen class and if there are any potential conflicts with existing registered trademarks. The USPTO has divided the registered trademarks into different ‘classes’ as per their categorization into ‘goods’ or ‘services’ categories. If you have a well-known mark, there is a high possibility that you will get protection irrespective of your NICE class. The NICE classification, or NCL, is an international system of trademark classification. This classification has also been recognized by the USPTO, and trademarks registered under any of the 45 existing categories of the NCL are protected from infringement. Apart from helping in conducting an effective trademark search, the USPTO search also provides a platform for a plethora of other services. This search also helps you identify any potential issues that may arise with registering a trademark. It helps in the overall process of obtaining a registered trademark, right from making an exhaustive search to ensure originality and uniqueness to getting the trademark registered without any threats or failure.

A trademark infringement can occur under different circumstances. A USPTO trademark search can also help you identify any potential infringements or passing offs of your trademark. The potential threat of passing off exists in the context of a trademark, as unregistered trademarks may, at times, infringe upon the intellectual property of a registered trademark and use this name in their favor. This search will help you determine if there are any existing trademarks that may be similar to yours and if there are any potential conflicts with existing trademarks.

While dealing with trademark searches or protection, it is essential to ensure that your customers do not confuse your mark with any other brand. At times, two marks can be deceptively similar. Thus, even after registering your trademark, it is crucial to protect your mark from deception. A USPTO trademark search can also help you protect your brand and logo. This search will help you identify any potential infringements of your trademark and will help you protect your brand and logo from being copied by others. A trademark search does not end with a successful registration. It goes further in terms of protection. You can file for opposition or cancellation proceedings against potential infringers based on your trademark search.

Finally, a USPTO trademark search can help you save time and money. While there are solutions available when someone infringes on your intellectual property, years of litigation can be a tiring task. It drains one of their resources, time, energy, and money. Thus, it is always more useful to prevent the mishap than cure it. This search will help you identify any potential conflicts with existing registered trademarks and will help you avoid costly litigation.

Understanding USPTO trademark classification

In order to register a trademark, you must first understand the USPTO’s trademark classification system. Classifications are done into subcategories of two major categories – goods and services. The USPTO’s trademark classification system is divided into 45 different classes. Each class is assigned a specific code that is used to classify goods and services. Any business or person who attempts to get their trademark registered falls into either of these existing categories, and a trademark search is also conducted accordingly. The USPTO has 45 different classes of products and services. 

When applying for trademark registration, one can apply for more than one class of products, services, or a mixture of both, when their brand falls into more than one of these categories. An additional fee is paid for registration involving more than one class. When you are conducting a USPTO trademark search, it is important to understand the USPTO’s classification system and to search the USPTO’s trademark database using the correct class codes. This will help you identify any potential conflicts with existing registered trademarks. When registering a trademark in a particular class, or, as the case may be, in more than one class, a trademark search for conflicts and similarities is conducted in all those classes involved. Thus, it is essential to understand the ‘class’ categorization for conducting an effective trademark search. 

Out of the total 45 classes of trademark categories, 34 belong to different product types in the US market, and the rest are services available. Let us understand these classes:

Product classes

Class 1: Chemical products

This category includes all the businesses involved in the use of chemicals of some kind or the other, like industries, science, photography, agriculture, fire extinguishers, etc. 

Class 2: Paint products

This category involves businesses involved in paints and related products like printers, preservatives, colorants, etc.

Class 3: Cosmetic and cleaning products

The category includes all products used in the cosmetics industry or for cleaning purposes, like soaps, perfumes, essential oils, etc.

Class 4: Lubricant and fuel products

It involves products that are used as industrial chemicals, such as lubricants, grease, illuminants, etc.

Class 5: Pharmaceutical products

It involves all the products manufactured in the pharma industry and all the components that are involved in such manufacturing, like disinfectants, medical preservatives, chemicals, etc. 

Class 6: Metal products

It involves metals and other related substances like building materials, cable wires, etc. It includes all places where metals are used, like railway trams, hardware, metal safes, etc.

Class 7: Machinery products

It involves machines, tools used in machines, components of different machinery, egg incubators, etc.

Class 8: Hand tool 

Tools and products that are operated by hand are included in this category.

Class 9: Computer, software, electrical, and scientific products

This wide category involves all the components, products, and materials that are electrical or scientific in nature. It also involves those products used in computers, like software, data processing equipment, etc. It includes all kinds of tools, machines, and products that fit one or all of the characteristics of this category, like data carriers, operating discs, vending machines, calculating machines, etc.

Class 10 : Medical instruments

All products, apparatus, and instruments used in medical science and hospitals like surgical instruments, dental apparatus, tools used in surgery, orthopedics, etc., are included in this product class.

Class 11: Environment control instruments

This category includes different instruments used in lighting, cooking, heating, refrigerating, etc.

Class 12: Vehicles for locomotion by air, land, or water

This category includes all modes of movement, whether in the air, on land, or in water. 

Class 13: Firearms

Firearms, weapons, explosives, etc., that are licensed and registered in the US fall within this class of trademark.

Class 14: Jewelry and precious metals

All pieces of jewelry—precious metals, alloys, etc., that are used as jewelry are included in this category. It also includes tools used in their making, like horological instruments.

Class 15: Musical instruments

This category includes all musical instruments that are registered. 

Class 16: Paper goods

Paper goods and printed materials like cardboard, stationery, book-binding tools, adhesives, paint brushes, office tools, etc., all fall into this category. 

Class 17: Rubber products

All rubber products and those made of rubber products are involved in this category. For instance, gum, rubber pipes, and all such products that do not form part of any other category are included in this category. 

Class 18: Leather products

Leather and products made of leather or faux leather, like bags, umbrellas, sticks, etc., are included in this category.

Class 19: Building materials

All kinds of building materials that are essentially non-metallic are included in this category. It includes products like rigid pipes, asphalt, etc.

Class 20: Furniture 

Furniture and different products like mirrors, frames, etc., are categorized as furniture. It also includes materials used in the making of these furniture like wood, ivory, amber, etc.

Class 21: Household products

This category includes household appliances and kitchen utensils like containers, sponges, glassware, cleaning materials, etc.

Class 22: Ropes and textile products

Strings, nets, ropes, textiles, etc., not included in any other category, are all included in this category.

Class 23: Yarns and threads

This category includes yarns and threads that are used in the textile industry.

Class 24: Fabrics and textiles

Textile goods and other materials made out of textiles or fabrics are included in this category.

Class 25: Clothes 

This category includes the clothing industry and its byproducts like clothes, footwear, headgear, etc.

Class 26: Lace and embroidery 

Materials used in embroidery, like laces, buttons, ribbons, hooks, needles, etc., are included in this category.

Class 27: Carpets

Carpets, rugs, mats, etc., that are used in covering floors and walls are included in this category.

Class 28: Games and sports

Toys, games, video games, gym articles, sporting materials, etc., are included in this category of games and sports.

Class 29: Meat, fish, and poultry

Meat, fish, poultry, and other animal proteins and their byproducts are all included in this category.

Class 30: Food products

This category includes food items and products like coffee, flour, rice, and their byproducts, as well as associated food products like salt, bread, vinegar, spices, etc.

Class 31: Agricultural products

This category includes all the natural products that are used for agricultural purposes, like seeds, grains, plants, flowers, etc., as well as the end products like vegetables, fruits, etc.

Class 32: Beverages

This product category includes beers and beverages, like redundant, non-alcoholic drinks, fruit juices, mineral water, etc.

Class 33: Alcohol

This category includes all alcoholic drinks and wines, except beer, which is included in Class 32.

Class 34: Tobacco 

This category includes tobacco and different smoking products, smoking materials, and matches.

Service classes

Apart from the 34 product classes, the USPTO has listed 11 categories of services under which businesses can register their services for trademarks. These categories are:

Class 35: Advertising and business services

This category includes services in the advertising industry as well as business administration, business management, and other office functionalities. 

Class 36: Insurance and financial services

Insurance services, financial and other monetary services, and real estate services are included in this service category.

Class 37: Construction and repair services

This service category embodies services like building/construction, repair and installation of devices, etc.

Class 38: Telecommunication services

This category covers the services provided by the telecom sector in the US.

Class 39: Travel and shipping services

This category includes the series of services that are involved in the shipping of goods, like storage, packaging, transportation, and other travel necessities. 

Class 40: Material treatment services

This category includes the services rendered in the treatment of materials and other collateral services.

Class 41: Education and entertainment services

This category includes the services rendered in the education sector like training, teaching, etc., as well as the services rendered in the entertainment industry like shows, events, cultural arrangements, sports entertainment activities, etc.

Class 42: Science and technology related services

This category includes computer related services. It also includes tech-based services like software services, research, designing, etc. It also includes the design and development of software as well as hardware.

Class 43: Services in the food industry

All the services in the food industry, like providing food and drink in restaurants, lounging facilities in hotels, etc. are included in this category.

Class 44: Medical and vet services

This category includes medical services, services rendered by vets, beauty industry services for both humans and animals, hygiene related services, etc.

Class 45: Legal services

All essential legal services, services in providing security to people or property, social services, etc., are included within the ambit of this service category.

New trademarks get registered or applied for registration everyday. With new approvals and registrations, new brands get listed in the USPTO trademark database. Thus, it is essential to conduct trademark searches from time to time. It is also important to note that the USPTO’s trademark database is constantly updated. This is because of the newly added trademarks that were approved for registration. Therefore, you should do the trademark search periodically to ensure that your trademark rights are protected against potential infringers.

Categories of a trademark search in the USPTO

The USPTO TESS search is the typical database with different options to conduct a trademark search. While conducting a clearance search using the database, you can narrow down your search fields by focusing on specific requirements. In doing so, trademark or application searches can be conducted in different categories. The first thing that we learned is the categorization as per the classes (goods or services) of a trademark search. Similarly, a search can be narrowed down by refining the fields on the basis of the following parameters:

Live/dead marks or active/inactive marks

While conducting a trademark search, it is beneficial to first identify if an existing similar mark is live (active) or dead (inactive). Even when your mark is similar to another existing mark, you need to worry about conflicts only if that mark is active or live. A trademark is dead when it falls into the public domain because the owner of the mark did not renew it, lack of proper information, or any other reason caused its refusal by the USPTO. This categorization of live or dead marks applies to trademarks as well as copyrighted work.

Interesting trivia: Winnie-the-Pooh, our all-time favorite bear buddy, has become a part of the public domain due to non-renewal. Similarly, our childhood companion, Mickey Mouse, will fall into the public domain if it fails to renew by January 1, 2024. Sad! But such are the rules.

An inactive mark search can also give you insights into the possible reasons for which the mark was rejected by the USPTO. This will help you rectify or improve your own mark before applying for trademark registration. In addition, it decreases the chances of refusal due to similar reasons. 

Name search

The most basic thing in a trademark search is a name search. You must search for the name you wish to register for similarity. It can be the same name or a similar one that already exists. Your mark can be rejected even if it is not entirely but partially or in some form similar to any pre-existing mark. Therefore, a trademark search should be conducted with different search terms that sound or spell similar to your mark. This can be facilitated with the use of operators as well as signs.

International classes

The USPTO classes are referred to in the US. International standards use the Nice classification to categorize internationally registered marks. Therefore, it is important to conduct searches in both the US as well as the international domains. This classification helps in making an exhaustive search and ensures that all possible fields are covered. The USPTO recognized and incorporated the Nice classification in January 2023. Further, in the 45 recognized classes in the US, one should check multiple classes before finalizing their product or service. For instance, a brand logo in the clothing category should also make a search in certain other classes, like the retail services category, handbags, and others in similar lines.

Goods or services

This is the basic classification used in the USPTO databases. For trademarks, 45 different classes have been allotted to goods and services separately. Anyone conducting a TESS database search can conduct the search in either  the specific category or one of the classes therein. Similarly, the US classification also recognizes a threefold classification – Class A (for goods), Class B (for services), and Class 200 (for collective membership marks) in accordance with the Trademark Manual for Examining Procedure. 

How to conduct a USPTO Trademark Search

Now that we have understood the benefits and importance of a USPTO trademark search, let us understand how to run it. Running a successful and fruitful trademark search is of the essence in order to ensure that your proposed mark is free from any external hindrances and risks. Hence, a USPTO trademark search can be conducted through a series of step-by-step procedures. The first step in conducting a USPTO trademark search is to search the USPTO’s database of registered trademarks. This can be done by entering the trademark you want to register in the USPTO’s Trademark Electronic Search System (TESS) or by searching the USPTO’s Trademark Status and Document Retrieval (TSDR) database. TESS refers to the primary database of the USPTO, where all registered trademarks, patents, and copyrights are enlisted. 

The USPTO’s TESS allows you to search for registered trademarks by keyword, class, or registration number. The TESS database helps in identifying other trademarks, whether registered or applied, that could be similar to your trademark. It also helps in recognizing related products or services that are in use. You can also use TESS to perform a comprehensive search for any potential conflicts between the trademark you want to register and existing registered trademarks.

The TSDR database provides real-time online access to US registered trademarks. The USPTO’s TSDR database allows you to search for registered trademarks by serial number or registration number. It is an exhaustive database that contains real-time information on all registered trademarks and their status or stage of registration. For instance, the database says if an existing trademark is already registered or is in the process of approval (application stage). It also reflects information about whether a trademark has applied for an extension of protection (renewal of registration) or is going to soon fall into the public domain. It also contains information about the ongoing cases and their status, for instance, expungement or re-examination proceedings and petitions that may have been filed in the US courts or offices. This TSDR database search will help you identify any potential conflicts between the trademark you want to register and existing registered trademarks. The TSDR website also contains information regarding internationally registered trademarks. 

International trademark registration: NICE classification

The NICE classification for trademark registration is an international standard for the classification and registration of trademarks. Any trademark registered and recognized as per the Nice Agreement standards is recognized by the USPTO. The twelfth edition of the Nice Agreement is currently recognized by the USPTO. The Nice classification was set up by the Nice Union, which was a Committee of Experts set up to create international standards of classification for the registration of goods and services trademarks. The controlling and publishing body for trademarks registered under the NICE classification is the World Intellectual Property Organization (WIPO). The NICE classification recognizes 45 classes of goods and services, which are also recognized by the USPTO. However, a trademark will be recognized in the US only when it follows the USPTO standards of practice and guidelines. The USPTO also provides users with a Trademark ID Manual where applicants can understand the kinds of trademarks acceptable in the US.

The old US classification divides trademark classes into three distinctive categories – Class A, B, and 200. Class A is the category specific to goods. Class B belongs to trademarked services. Class 200 is designated for collective membership marks. These marks are recognized as per the provisions of §1304 and §1306 of the Trademark Manual of Examining Procedure (last updated on July 2022) of the USPTO. The NICE classification for trademark registration is recognized internationally by 90 countries, and it was adopted and included by the USPTO on January 1, 2023.

USPTO trademark search: steps to follow

The primary platform for conducting a trademark search in the US is the Trademark Electronic Search System (TESS) database of the USPTO. A TESS search is typically called a “clearance search.” This search is conducted before filing an application and provides the applicant with clearance to proceed with their trademark registration. A typical clearance search through the TESS database provides different options for conducting a search.

STEP 1

The user or applicant shall visit the USPTO official website, click, and enter the TESS search database. This will direct you to the official TESS database designed by the USPTO for the convenience of individuals and businesses. It is a user-friendly database, as it guides a user or applicant through the ways of navigating through the database and extracting desirable outputs. Information for a better user experience is available in the form of frequently asked questions (FAQs) and TESS TIPS. These answers and tips help in understanding the correct way to conduct a clearance search, gain knowledge of the database and its components, and even guide in interpreting test results for a particular search.

STEP 2

Once you have gained a basic understanding of the functioning of the database, you can proceed with conducting your search. The TESS database provides different options for conducting a search. You can choose from either or more than one of these methods of conducting a search. Available search options in the TESS database are:

• Basic word mark search (new user)

The basic word mark search is a suitable and user-friendly method for new users to conduct a trademark search, as it is easy and basic. A user should usually begin with a basic word mark search to get acquainted with the website and database. However, this method cannot be used to conduct a clearance search for design marks. Complex searches require complex methods and search options.

(Image source: USPTO website, TESS database)

The basic search is conducted in the manner shown above. You must check the boxes as per your search requirement from available fields like plural or singular and live or dead mark. You need to enter the search term and the field of search using the field code. You have to choose the required option from the ‘results must contain’ drop down dialogue box and finally submit the query. When the search is conducted and results are obtained, the user shall log out of the system database. 

• Word and/or design mark search (structured)

This method can be used to conduct a design mark search as well as word searches. Design mark searches are conducted using ‘design codes’ designated for each design category. These codes and categories can be better understood using a “Design Codes Manual” available on the USPTO website. 

For a structured search as shown above, you need to enter relevant information like the search term, search field, plural or singular form, and add operators (if any) before submitting the query. When the query is submitted, the results will be published for you. You need to collect the data and log out of the database. 

• Word and/or design mark search (free form)

Free form search is the most complex form of a trademark search. It is conducted for high-value marks or complex searches. This form of trademark search is usually conducted by experts. Therefore, businessmen or other individuals often reach out to law firms or independent experts and pay a fee to them in exchange for an exhaustive clearance search in the TESS free form search database. The free form search option uses Boolean logic to conduct its searches and also allows users to search in multiple fields at once. The Boolean search allows users to find results using boolean operators, the results are optimized by the use of this form of search. Just as with the structured word and/or design mark search, a free form word and/or design mark search needs to be complemented with the information from the Design Codes Manual in order to conduct an effective search. 

The free form search is the most advanced trademark search tool and uses complex data to publish results. We will learn about this in more detail in the next step.

• Dictionary browse

This method of conducting a TESS search involves browsing through different fields of the database. You can either stick to one specific field or conduct a search across multiple fields of registered marks. The search results appear in a chronological manner, like those in a dictionary.

This method allows you to make a dictionary search by entering relevant dictionary terms. 

• Official gazette search 

This method is used to check the official gazette for information related to the registration of any mark in the US. The publication date or registration date of any mark can be obtained using this method.

This method is used to filter the official gazette for relevant information after inputting the required data.

STEP 3

Usually, users and applicants choose any one of the three broad search options available in the database, as per their needs and requirements. When users bifurcate between categories and choose to use the basic word mark search, they have to enter basic fields like the ‘search term,’ ‘search field,’ and the ‘results must contain’ dialogue boxes. The database then conducts a basic search for similar words that are existing as registered trademarks in the US. This version cannot be used to search for designs using design codes.

Or, you can choose to use the word and/or design mark search (structured) option, which is a bit more advanced searching tool than the basic version. You can search for words as well as designs using the design codes in this method. You have to enter specific design codes in order to conduct a design search. This option is better for conducting a detailed search involving complex results.

The third and the most useful, as well as an advanced option, is the free form search for words or designs. The search data entered in this form of search is complex and advanced. It requires an expert’s involvement to conduct a free form search for words, designs, or both. 

Let us understand a USPTO TESS trademark search with the help of a free form search example. Typically, a trademark search involves the following steps:

STEP 3.1

After choosing the free form word and/or design search option, a window pops up showing the required fields to input information for conducting the search. 

Registered trademarks can be searched in specific fields to obtain specific outputs. Field codes are assigned to each trademark registered under the USPTO (as shown in the picture). Thus, when you search for similarity or likelihood of confusion, you first have to enter the field code in which you wish to conduct the search. 

For instance, field codes can be chosen for a word search. You can choose a basic index (English words) or a translation index (contains foreign words). Similarly, for a goods and services classification, you can choose between an international class or a coordinated class search. In the case of a design search, you have to enter the design code from the design codes manual to proceed with the search. You can also choose to look into the live/dead fields of trademark searches. A trademark in the dead field is no longer considered registered.

STEP 3.2

The next step is to enter your required information in the ‘search term’ box. After entering the search term, search field codes are entered in brackets. You can enter as many field codes as you wish to search, each divided by a comma.

To optimize the search output, you must enter the search term in different manners. This will help in identifying the words that sound similar to your search mark even though they are spelled differently. Special characters are used in search terms for obtaining relevant data on phonetically similar names and words. These special characters can be inserted as a replacement for letters or numbers to generate results. Question marks (?), dollar signs ($), and asterisks (*) replace letters in a technique called ‘truncation.’ Similarly, a technique called ‘pattern matching’ is used to obtain desired results using curly brackets as a replacement ({}).

STEP 3.3

Once you have added the aforementioned information, you can conduct your search and obtain your results. However, to increase effectiveness and search optimization, you can opt to enter additional information into the search. Search strings are combinations of fields and search terms. Better output can be achieved by adding or combining search strings. Search strings can be connected with operators (words like ‘or,’ ‘and,’ ‘not,’ etc.) for output optimization. 

STEP 3.4

The next step involves choosing between singular or plural results from your inputs. If you choose ‘yes’ in this drop down dialogue box, your results will contain both singular as well as plural outputs. On the other hand, choosing ‘no’ will show only singular words similar to your search term. 

STEP 3.5

Once all the data inputs are entered, you have to tap on the ‘submit query’ option. This will generate the results as per your input. Next to this option is an option to ‘clear query’ which can be used if you wish to reset the input and re-do the whole procedure.

You can also expand your search results from the ‘search history’ drop down dialogue box and select the option that you desire. Here, you can also use operators to expand the results.

STEP 3.6

Finally, view your results from the database records. You can check the details of each word that appears in your search results. If you find any similar existing marks, the next thing to do is to focus on minor details and determine if there is any similarity between the two words or marks or if they can exist distinctively. The search here is complete.

STEP 4

You might need to conduct multiple searches to ensure that no conflicts exist with your mark. The free form search for marks or designs allows users to conduct multiple searches at the same time. There is a time limit of 10 minutes for a search, after which the session expires. The search history is retained in the search results. Therefore, you must decide the manner in which you wish to obtain search results and proceed accordingly. In cases where the session expires, you can conduct a fresh search using relevant data.

Once the results are obtained and the search is complete, the user or applicant shall log out of the database system. 

Once you have conducted a USPTO trademark search and identified any potential conflicts, you can then proceed to the next step in the trademark registration process. If you find any similar trademarks in the databases, it is wise to modify your trademark to avoid the risk of rejection on grounds of similarity. You can either choose to continue with the same trademark by applying for its registration or modify the same to avoid conflicts with prior registered marks. After the search is conducted and you have made your decision, you can proceed to get your unique mark registered. 

When the search is complete and you have finalized the mark and word to be registered, the next step is to apply for trademark registration. An application must be submitted to the USPTO in the prescribed manner, along with the prescribed fee. The trademark application must include a description of the goods and services associated with the trademark and a drawing of the trademark. In addition, the application must include a statement of the owner’s basis for filing the trademark application and a statement of use.

Once the trademark application is submitted, the USPTO will review the application and determine if the trademark meets the USPTO’s requirements. The USPTO reserves the absolute right to grant an application for registration or reject it. If the trademark meets the USPTO’s requirements, the trademark will be registered, and a certificate of registration will be issued. If the USPTO is of the opinion that the applied mark is similar to any existing mark or that there exists a likelihood of confusion due to similarity and deception, the application will be rejected. 

Typical USPTO Trademark Search Fees

A trademark search directly from the USPTO’s official database is available to all free of charge. The USPTO does not charge any fees to deliver search results. It is only when a user applies for the registration of a mark that a fee is applicable. However, many times, it becomes essential to hire an expert to conduct a trademark search. When complex data and high value businesses are involved, it is best to conduct the clearance search through independent attorneys or law firms. These law firms and attorneys charge a fee depending on the type of search being conducted and other necessities. The cost of a USPTO trademark search varies depending on the complexity of the search and the type of search you are conducting. The cost of a basic trademark search can range from $100 to $200, while a comprehensive trademark search can cost up to $500.

A typical trademark search and the registration process require payment of certain fees or additional expenses at different stages, both on the official website and, more so, with hired attorneys or firms. The cost of a USPTO trademark search can also include the cost of filing the trademark application, the cost of any additional documentation required to prove that the trademark meets the USPTO’s requirements, and the cost of the certificate of registration. The USPTO fee schedule makes an exhaustive list of fees applicable at various stages of registering a trademark. These trademark related fees under the USPTO guidelines and fee structure can be classified into the following broad categories:

• Trademark application related fees – range from $100 to $500, depending on the requirements of the application.
• Petitions and/or protests filed against any action under trademark registration – range from $50 to $400, depending on the kind of petition or protest.
• Post registration fees (which usually include a variety of requirements) – range from $100 to $800, depending on the service undertaken.
• Fees included in Trademark Trial and Appeal Board charges (if any petition is submitted) – range from $0 to $600, depending on the kind of petition being handled. 
• International trademark related fees (paid to WIPO via the USPTO, or otherwise) – range from $100 to $500.
• Other related service fees, like printing, certification, etc., range from $3 to $200, depending on the kind of service.

The USPTO has provided ease of availing services by facilitating both electronic application filing as well as paper based. The fees charged by the USPTO slightly vary in both cases. Further, when private law firms or independent attorneys are hired for facilitating the services, they charge an additional fee along with the fee that is submitted to the USPTO office. Typically, law firms charge somewhere between $0 to $3000 after filing an application and before registration is done. Similarly, additional costs or add-on services can range somewhere between $550 to $3000, depending on the kind of service undertaken. Post registration fees are charged within $750, and renewal of trademarks (every 10 years) is done by payment of an additional fee of $925. 

The cost of a USPTO trademark search is typically a one-time fee and is not refundable. Only a database search fee is free of cost on the USPTO website. However, private firms and attorneys charge a fee for conducting a search. Additional charges and registration charges are applicable at different stages, both via firms and attorneys or directly using the official website. Therefore, it is important to ensure that you are conducting a comprehensive search and that you are filing a complete and accurate trademark application.

USPTO trademark database

The USPTO maintains a comprehensive database of registered trademarks. This database is known as TESS. The USPTO database provides a range of services when it comes to trademarks. It provides services like trademark search, registration, protection against scams and fraud, maintenance and renewal of trademarks, protection against infringement, and other additional services. It is also a platform to gain knowledge related to trademarks in the US, starting from the basics to the laws and regulations governing trademarks in the US. The TESS database is a search system available at the USPTO’s official website. The TESS database contains all registered trademarks in the United States. 

The USPTO’s TESS database is updated daily and contains all registered trademarks in the United States. You can use the TESS database to search for registered trademarks by keyword, class, or registration number. However, while conducting a trademark search for the purpose of registering a mark, it is important to keep in mind that, at times, existing trademarks are unregistered. These marks are not available in the TESS database. Therefore, it is essential to conduct an exhaustive trademark search beyond the TESS database before filing an application for trademark registration. You can also use the TESS database to perform a comprehensive search for any potential conflicts between the trademark you want to register and existing registered trademarks. In case of existing conflicts, petitions and complaints can be filed with the USPTO challenging infringement.

The TESS database is a valuable resource for anyone looking to register a trademark and should be used as part of a comprehensive USPTO trademark search. Along with a clearance search in the TESS database, users or applicants should also conduct detailed research before registering a trademark in order to avoid conflicts in the future.

Tips for conducting a successful trademark search

A trademark search can be tricky. One needs to be diligent and detail-oriented to conduct a successful trademark search. When conducting a USPTO trademark search, it is important to remember a few key tips. 

Conduct a comprehensive search

First, it is important to conduct a comprehensive search of the USPTO’s trademark database. This will help you identify any potential conflicts between the trademark you want to register and existing registered trademarks. So, keep changing the letters in your trademark and even translate them to major languages to widen your search. It is important to conduct the search using different permutations and combinations. A search must also be conducted with the use of operators and signs like asterisks, question marks, etc. Using different search terms helps in conducting an exhaustive search and protecting your mark better.

Exhaustive search using international classification

Second, it is important to understand the USPTO’s trademark classification system. Before registering a mark, an applicant should conduct a clearance search to proceed with their registration. This will help you identify any potential conflicts between the trademark you want to register in a particular class and existing registered trademarks. The trademark classification system, which also incorporates the international system using NICE classification, are together used in trademark registrations. It is essential to understand these classes and systems to better understand the trademark registration process as well as to conduct a proper TESS search. 

Move quick and smart

Third, it is important to register your trademark with the USPTO as early as possible. This will help you protect your brand and logo from being copied by others. As it is famously said in entrepreneurship, “the best time to innovate a product or service was ten years ago.” Similarly, the best time to get your mark registered for a trademark was yesterday. This is because of the high demands for marks and designs and the likelihood of similarity and repetition. Therefore, it is advised to get your mark registered as soon as the idea strikes. 

Be updated

Further, a trademark search does not end with filing an application. The USPTO’s TESS database is used to conduct a trademark search not only before applying for registration but also to help in protecting an existing mark. Once you get your trademark registered, you have to be mindful to protect it against any infringement. This is important to prevent your brand’s identity from being misused or misrepresented by anyone else.

The “likelihood of confusion” dilemma

Further, the USPTO website always makes a declaration about the “likelihood of confusion.” This refers to situations where a minor or deceptive similarity between two different marks can create a likelihood of confusion among the viewers or users. In these situations, the USPTO rejects trademark applications for such marks even though they might appear to be unique to you. Therefore, one must be careful while choosing their mark, and while conducting a search, one must look for not only similarity conflicts but also on this basis. The free form for word and/or design mark searches helps in obtaining optimized output in this case as it helps in conducting similarity searches.

Conduct an organized search

Further, it is wise to conduct a trademark search as per different categories and classes. First, a search should be conducted as per the search term or name. Thereafter, the users should classify their searches on the basis of active or inactive marks. Further, the search should be conducted as per the US classification or Nice classification (international standards) of the trademark search. Finally, one must look for classification into goods or service categories. Categorizing marks and then conducting the search helps in narrowing the fields and facilitate a focused search. Conducting a search as per classification and categorization is useful because it narrows down the search fields and thus makes it easier and faster to obtain results. 

Look beyond a TESS search

Trademark searches can be tricky. While you might be of the opinion that you have conducted your due diligence before proceeding, it may occur to your surprise that risks of conflict still exist and show up at a later stage. This can sometimes be due to the fact that not all marks are USPTO registered. However, those marks are recognized by common people and have thereby conducted a brand identity that users associate with the brand. In this situation, even though the USPTO database does not show the existence of this mark, it can challenge infringement against you or be a ground for refusal. Most often, it is advised to engage experts in conducting a trademark search. It is because of these existing complexities. Even though a trademark search is free of cost and easy to conduct on the official website, you can miss out on important details that an expert’s eyes will catch. However, hiring law firms or private attorneys can be a costly affair. Therefore, one must strike a balance and make the right choice depending upon the needs and interests, and involved complexities. 

Ensure covering all fields of search

Many times, it happens that people conduct a clearance search for only ‘words.’ This is an essential step in conducting a search while getting a brand name registered. However, this alone is not sufficient. When you attempt to trademark a name, you also associate it with a certain logo or design. It is also important that this associated design or logo is not pre-existing or conflicting with any pre-existing logo or design. A clearance search is also required for logos or designs when it comes to trademark registration to prevent infringement. Therefore, it is advisable that you conduct a thorough search for your entire brand, which includes marks, logos, designs, name/words, sounds, etc. For this purpose, a structured or free form search for words and/or design marks is suggested as the best method instead of a basic word search. Such searches shall be accompanied by the Design Codes Manual of the USPTO.

Know the law – never disappoints

While getting a trademark registered, it is important for an applicant to proceed in accordance with the existing laws, regulations, and guidelines in the US. The Trademarks Act provides the basic framework for regulating trademarks and related acts like registration, renewal, maintaining petitions, etc. The USPTO provides basic guidelines relating to trademark searches, applications, registrations, etc. An applicant must be mindful of these existing laws and regulations and follow the guidelines while conducting a search and for other related purposes. 

Combination play is necessary 

Further, you should aim to expand your search to the extent possible by using different tricks. You should conduct searches in different fields using the free form trademark search. Further, you can use operators like ‘and,’ ‘or,’ etc., to expand search fields and search terms. You must check for terms using different permutations and combinations. For instance, the word ‘Mira’ can be similar to ‘Meera’ even though the spellings of the two differ. Therefore, trying different combinations is essential to expanding results. For this purpose, you can use different signs in place of alphabets, like the dollar sign ($), the question mark (?), asterisks (*), etc. For instance, you can search for ‘M?ra’ to obtain results of all alphabets forming part between ‘M’ and ‘R’ in the word Mira, like ‘Mira,’ ‘Meera,’ ‘Meira,’ etc.

Conclusion

We started this article with an example, the business venture named M&H. After reading the article and understanding the nuances involved in getting a mark registered, let us look at the same example, this time with a refined outlook. Now imagine that you wish to start your own business of selling garments. You think of your initials, MH, to name it. You know that getting a mark registered comes with its own set of risks. Therefore, you decide to first conduct a trademark search before applying for the name and logo that you have thought of. You visit the USPTO’s TESS database to conduct a search. You tap and access the free form search for words and/or design marks. You fill in the required fields and conduct the search. The search results obtained show a similar name and mark exist and belong to an industry giant. You realize the risk of proceeding further with M&H and decide to change your name and logo before applying for registration. You finalize a different mark and logo and register it. Thus, you avoid the risk of getting your mark rejected. The official database helps you by making things easier with the clearance search. 

Trademark registrations are an essential part of any business or brand building process for a product, service, or otherwise. However, getting a mark registered involves the nitty-gritty of filing an application. The USPTO is the official website and department of the government that deals with filing applications and getting marks registered. The TESS database provides all the necessary information relating to a trademark search that is conducted in the US. Trademark searches help you find similar existing marks that might cause conflicts with your mark. A trademark search also helps protect your mark from infringement by others. A good way to conduct a trademark search is from the point of view of the trademark examiner. The USPTO has the right to accept or reject applications for registration. Therefore, it is useful to conduct a search keeping in mind the grounds that can result in the rejection of an application. 

Every registered trademark is available in the USPTO database. However, there are marks that are publicly recognized but remain unregistered. These marks cannot be infringed upon, even if they are unregistered. Therefore, an applicant needs to conduct an exhaustive trademark search before filing an application. The official database provides the platform for conducting a clearance search free of charge. However, businesses are advised to hire experts to conduct the search in a better manner and to ensure that no crucial information is left behind. The TESS database is the primary source for conducting a trademark search. A TESS search coupled with other sources proves to be beneficial for an applicant conducting due diligence for mark registration. 

Frequently asked questions (FAQs)

What does it mean by the term ‘likelihood of confusion’ in reference to a trademark registration?

Marks get rejected on grounds of the likelihood of confusion when two marks are not entirely similar but show some resemblance from a user’s perspective and might create confusion.

What is a trademark registration number?

A registration number is the one that is allotted to every registered trademark in the USPTO.

Where can one search for international trademarks?

The Global Brand Database available at the World Intellectual Property Organization (WIPO) is the right place to conduct an international trademark search.

What is a trademark fee in the US? 

A USPTO TESS database search does not involve any fee payments. It is only when a trademark is filed for registration that the USPTO charges a fee of $200 to $250 per filing. However, when law firms or private attorneys are hired to conduct a trademark search, they charge fees at different stages of the process. 

What are boolean operators in a TESS search?

The TESS database search can be conducted to optimize results by using boolean operators between search terms. Boolean operators are words like ‘and,’ ‘or,’ and ‘not,’ etc., that are used to combine two or more terms. This expands the search output and covers more fields than what is covered with a singular search term. 

References

• https://www.uspto.gov/trademarks/search 
• https://www.uspto.gov/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrc/resources 
• https://www.gerbenlaw.com/blog/how-to-conduct-a-trademark-search/ 
• https://www.uspto.gov/trademarks/trademark-fee-information 
• https://www.forbes.com/advisor/business/trademark-cost/ 
• https://www.bitlaw.com/source/15usc/index.html 
• https://www.uspto.gov/trademarks/search/design-search-codes 
• https://www.uspto.gov/trademarks/guides-and-manuals/manuals-guides-official-gazette

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