New Proposed Rules: Maiming Markush Claims

A new set of proposed rules were published in the Federal Register on August 10, 2007. The new anti-Markush rules would close down a potential loophole in the soon-to-be-finalized claim limitation rules. 

Highlights:

• An intra-claim restriction is proper unless all species share a feature that is substantial and essential for common unity.
• A claim may not incorporate part of the specification by reference unless absolutely necessary.
• Markush alternatives must be substitutable; may not encompass other alternatives; may not be a set of further alternatives; and must not make the claim difficult to construe.

Documents:

• File Attachment: Markush Rules.pdf (96 KB)

Other upcoming finalized rules:

• Rules limiting continuations are expected to be finally implemented within the next few weeks.
• Rules limiting the number of claims being examined are expected to be finally implemented within the next few weeks.
• Rules requiring more extensive IDS submissions are being reviewed by White House staff and are expected to be finally implemented in early 2008.

 

A Dangerous Prosecution Trap

By Paul F. Morgan

I recently retired from a position in which I was also providing legal advice to patent application prosecution attorneys and others.  I had noted the following relatively frequent source of legal confusion in current law for some patent examiners, with the result that some patent prosecutors were being dangerously misled by incomplete examiner rejections. Hence, this warning note.   

A prior U.S. PTO published patent application can qualify as prior art under multiple portions of 35 U.S.C. §102 – resulting in varying effective dates, and requiring different attorney or agent responses. Often, the multiple effective dates are not reflected in examiner rejections.  However, getting a patent application allowed incorrectly can be fatal to the patent’s validity or even lead to inequitable conduct accusations.  Legal misunderstandings of the patent examiner during ex parte prosecution do not create a valid legal excuse for prosecuting attorney legal errors.

A published US patent application has a §102(e) prior art date as of that application's filing date, and also a §102(a) or §102(b) prior art date as of its publication date. The office action rejection should discuss both dates if the publication date was prior to the rejected application.  But, even if the examiner's rejection was legally incomplete, the applicant's attorney must still overcome both, correctly.

If the published application was commonly owned at the time of its invention, a §102(e)/103 rejection can be overcome by asserting common ownership under §103(c).    The protections of §103(c) do not apply to 102(a) or 102(b) prior publications.  Rather, that section only applies to 102(e),(f) and/or (g)!  Furthermore, §103(c) only applies to obviousness issues, not anticipation. Nor does §103(c) eliminate what should have been an alternative rejection for double patenting.  

Obviously, a §102(b)/103 reference from an application publication date more than a year before the subject application date cannot be eliminated, only argued over.   While a §102(a)/103 rejection might be overcome by presenting evidence of an earlier invention date, that avenue is considerably more difficult and dangerous.  In particular, patents obtained via 37 CFR 1.131 declarations of alleged prior invention have a poor litigation record. Where appropriate, 102(a) prior art may be overcome by perfecting a valid priority claim to an earlier application. 

One final related danger that arises from the fact that most U.S. applications are now  published within 18 months of their first filing date.  Even self-publications qualify as 102(b) prior art.  That means that patent applications on improvement inventions from the same client, especially with different or partially different inventors, need to be filed ASAP to avoid prior-filed basic applications from becoming prior art under §102(a) or (b) against the improvement applications [which cannot be avoided by §103(c).]

The above, of course, is oversimplified, and other commentators may wish to “chip-in.” with practical advice.

Notes:

• Paul Morgan recently retired, as the Assistant General Patent Counsel
  for a major U.S. Corporation, after 44 total years of patent practice.

Evidence Based Prosecution I: Sensitivity to Claim Fee Variation

Including Claims in Provisional Patent Applications?

An ongoing debate amongst some patent attorneys is whether to include claims in provisional applications.  According to the rules of practice, claims are not required in the provisional application. (MPEP 601).  However, there are a few good reasons for including claims in the application.

In the wake of Phillips v. AWH, it has become even more important to ensure that a patent’s specification accurately describes the meaning of the associated claim terms.  This task is all but impossible in the absence of any claim terms to describe.   Thus, it is important to draft at least a few model claims with the provisional application.  Some practitioners, such as Russ Krajec, have advocated drafting the claims but then deleting them from the application before filing.  Russ argues that claims in the provisional can only hurt the applicant.

I disagree.  The claims can be helpful in ensuring adequate disclosure and enablement — this is especially true in cases where the provisional is rushed through on a very short deadline and/or low budget.  The claims, as part of the specification, can easily tie together loose ends that may have been created in the rush.  As Todd Mayover aptly points-out, including claims in the provisional creates a clear record associating those claims with the earliest filing date or priority date.  It is also unlikely that patent attorneys would seriously stick to the practice of initially drafting claims that will eventually be deleted — this is especially true in the fast-paced area of provisional applications.  One newfound fear is that including claims in the provisional leaves the patentee open to Festo-type prosecution history estoppel.  However, we have no evidence that presenting new claims in a subsequent nonprovisional would create any such estoppel — especially since the nonprovisional is newly-filed rather than simply an amended version. 

An astute Patently-O reader provided the following comment:

I include at least one extremely broad, never likely obtainable claim in a provisional.  First under US law, it is true that a provisional need not include one in order to be considered valid.  But foreign courts can say otherwise and render the US provisional (if serving as a priority document) invalid in a foreign court. Not including a provisional claim is only useful if you are absolutely certain that you won't go foreign.

I hear the arguments related to the effect of narrowing by amendment as creating PHE.  In the post-Festo world, you can at least explain the amendment so as to overcome the presumption of PHE.  Let's face it, if you are relying on the DOE to win your case anyway and the case rests on whether you started broad and narrowed by amendment, you are fighting a likely unwinnable battle.  In the last 10 years or so, how many DOE cases has the Fed. Circuit actually upheld? Not too many.

No U.S. practitioner has been able to cite a case, rule, regulation, expanded Board of Appeals decision, etc. from a foreign court that has categorically said, "A U.S. provisional application serving as a priority document [to this foreign application] that does not include at least one claim is nonetheless considered a permissible priority document."  Why take the chance of not including a claim in a provisional if there is a likelihood that the foreign counterpart could get knocked out.

Another reason to the include at least a broad claim is that most foreign laws have strict adherence to the rule that the broadest initially presented claim will set the claim scope for the application.  So if you present a very broad claim initially, you can amend narrower.  But if you present a narrower claim first then realize that you can go broader, you cannot amend to go broader.  It is for this reason you can include a "claim" that says something like, "I claim, the product comprising any feature described, either individually or in combination with any feature, in any configuration." or a "process to [...] comprising any process described, in any order, using any modality, ..."

Anonymous

Please leave your own comment below.

Patent Drafting In the Wake of Phillips v. AWH -- Initial Thoughts

In a few months, we will know more about how the en banc Phillips v. AWH decision will be used precedentially.  However, there are a few key points to take-home today. 

1) The game is no longer about careful claim drafting — now, you must carefully draft the entire patent document.* 

2) Be absolutely consistent between the claims and the specification.  A stray modifier of a claim term in the specification can easily lead to unintended consequences.

3) Every word in the claims will be read in the context of the specification.  Therefore the desired scope of every claim term must be fully supported in the specification.

4) Your initial reaction may be to make the ensure that the specification contains no limiting features. — That approach may not be the best.  Your patent will be worthless if it attempts to cover the entire world of technology.  Focused patents that stay within their bounds can be extremely powerful.

5) Give the courts 6–months to sort out some details. — But, set-up a docket reminder for January 15, 2006 for a review of all pending applications to (i) ensure that current claim terms are properly defined within the specification and (ii) whether any preemptive amendments are be in order.

Notes:

• * Of course, you were doing this already.
• University of Pennsylvania law professor Polk Wagner has been writing extensively about claim construction for the past several years.  His thoughtful comments and criticism of my tips are available here.
• Profs Wagner and Joe Miller (Lewis & Clark) have proposed that patent drafters should “leave nothing to chance” and present a glossary of claim terms in the specification.  This “clear thinking” approach would be helpful down the road when you are trying to spot infringers as well. Comment?

 

Patent Tips for a Small Business with Grand Ideas

Many small business owners have thought of becoming more aggressive in protecting their intellectual property rights.  Although attorney's fees are always expensive, patent rights have become more important with each passing year. For many companies, a patent portfolio serves as a type of insurance that has small chance of having a great potential upside. 

Here are a few tips for those getting their feet wet.

1. If someone at your company has an idea that may be patentable, act quickly. You can lose rights by disclosing the idea publicly or by offering it for sale before filing for a patent application.  This type of disclosure can even occur before you make any engineering drawings or working models.

2. Try to keep records that help establish the novelty of the invention and the date of conception.  This evidence may be important at a later date -- especially if there is any delay in filing for patent protection.

3. Before you hire a patent attorney, bone up on the subject -- Read the book “Patents and How to Get One.” It is very short and is a great book to read on your next business trip.

4. Retain a patent attorney to discuss your issues, to help you decide whether to file any patent applications, and then to help with the preparation and prosecution of the patent applications.  Even if you are only filing a single patent application, the relationship with your patent attorney will likely last many years.  Thus, it is important to find a patent attorney and law firm that you can trust and that are comfortable with.  Get references.

5. When thinking about your potential inventions, remember that you can obtain patents on devices as well as methods.  Methods, for example, may include methods of manufacturing an item, methods of doing business, methods of using a device, and process flow methods that describe the flow of data in a piece of software.  (Merely a few examples.)

These tips are valid for almost any company that is starting down the road of patenting.  However, every case is different.  You should raise any concerns with your attorney. 

Once you have applied for several patents, you will then begin to think about patent portfolio management, licensing and other forms of patent enforcement. However, that discussion is for another day.

Patent Drafting Tip: Focusing on the problem

One role of the patent attorney is to help the inventor think more broadly.  One way to accomplish this is by thinking about an "objective" of the invention -- what problem is being solved by the invention?

These days, many practitioners believe that explicitly stating the objectives of the invention is taboo.  However, even if you do not write about the objectives, they should be at the heart of your thinking during the patent drafting process.  Russ Krajec, a Colorado based patent agent has written about his methodology:

I try to focus on the problem being solved by the invention and to include every possible embodiment that could be used to solve the problems of the brand new field. . . . In a crowded field, the problem may be pretty narrow. For example, if the invention was a lower cost version of a common item, the problem solved is cost reduction. By looking at the invention from a ‘problem solved’ standpoint, I can more easily identify other solutions to the lower cost solution. These other solutions give the patent much more commercial value, since it cuts a much wider swatch to protect the basic concept, which is cost reduction.

Krajec notes that his problem-centric approach also helps overcome the potential for easy work-arounds and results in a stronger, more valuable patent. 

USPTO releases notes on restriction practice

A patent generally covers a single invention.  Often, however, a patent application will be filed that arguably covers multiple inventions.  The Patent Office uses Restriction Requirements as discretionary tools to limit the examination of a patent to only one invention.  In order to issue a restriction requirement, the Patent Examiner must find that two independent or distinct inventions have been claimed and that there would be a serious burden on the Examiner to examine the application as filed.

In the chemical practice (TC1600), the patent office has recently taken the initiative to to improve the quality and consistency of restriction practices.  The PTO's 5-step action plan is available online.  Recently, the PTO made the Examiner training materials available on the Web in PDF format.  (Thanks to Steve Hird for the links).

The training materials note that the strongest reasons for restriction involve either (i) separate technology classification; (ii) separate status in the art; or (iii) divergent field of search.

Tip: Reviewing the training materials may be a useful way to avoid or overcome restrictions.  For example, by arguing that claims are "linked," an applicant may be able to persuade the Examiner to remove a Restriction requirement.

Steve Nipper also pointed me to another great resource for responding to restriction requirements: “Amendment and Response in the Mechanical Arts [pdf]” by Brian I. Marcus.

Patent Lawyer: Tips for overcoming 35 USC 102 novelty rejections

The Patent Lawyer is published by the APLF and has released Issue 2.  In an article on patent amendment practice, Stephen Favakeh provides some simple advice for overcoming novelty rejections.  Generally, a novelty rejection is easier to overcome than an obviousness rejection because novelty is determined by more objective standards.  However, when responding to an Office Action, you should not set your client up for an obviousness rejection.

It is usually not enough simply to list the limitations in the claim that are missing from the prior art reference, particularly when the differences are subtle.  Doing so may lead to a dismissal of the Section 102 rejection, but only at the cost of substituting a section 103 [obviousness] rejection. "Sure," the examiner may say, "the prior art doesn't exactly disclose the claimed invention, but it is obvious to fill in the gaps."  To avoid this, explain why the missing limitations are significant.

Deciding whether to appeal a patent rejection

The Patent Office has released a table of results of appeals to the Board of Patent Appeals and Interferences (BPAI) for FY 2004. As you can see, less than half of appeals that reach the BPAI are completely successful. However, this table misses a large number of cases that are appealed, but favorably resolved by the Examiner prior to disposition by the Board.

Disposition	% Decisions Fiscal Year to Date
AFFIRMED	36.0%
AFFIRMED-IN-PART	10.9%
REVERSED	38.0%
PANEL REMANDS	8.0%
ADMINISTRATIVE REMANDS	4.9%
DISMISSED	2.2%
TOTAL	100.0%

On Line Tips for Inventors

From the USPTO main site:

USPTO To Hold Live On-Line for Independent Inventors
Senior officials of the United States Patent and Trademark Office will be available live on line next Thursday, June 10 from 2 to 3 pm (EDT). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the on-line will be posted on the home page of the USPTO website at 10 am (EDT) next Thursday. Inventors can begin logging on for the on-line at 1:30 pm.

The independent inventor on line is part of the USPTO’s continuing effort to promote and protect America ’s independent inventor community. This effort includes educating inventor-entrepreneurs about the risks of working with invention development companies.

Structured Claim Drafting

Stephen Becker has a useful technique for improving the quality of your claims. (Article).

1. List the elements sought to be protected and their interrelationships.
2. Analyze each element asking:

a) Is the element necessary for preserving functionality?
b) Is the element needed to distinguish over the prior art?
c) Can the element be generalized in a way that retains claim novelty?
d) Can elements be combined in a way that retains claim novelty?

3. Review the entire claim, discarding any words not absolutely necessary for functionality or novelty.

According to Stephen:

Sanitizing the wordage, generalizing terminology and combining claim elements will improve the likelihood of literal infringement, because a competitor will find it more difficult to argue persuasively that a claim element is missing, from its competitive product or service.

Patent Litigation: preventive measures

The Douglas J. Kline has a nice article in the Technology Review that outlines a typical patent infringement suit. Kline also gives three tips for preparing for litigation well in advance:

1) Thoroughly and diligently prosecute your patents.
2) Learn about your competition and draft patents that cover competitor's technology.
3) Identify competitor's patents early in your product development and consider design-arounds.

See my earlier posts on claim drafting tips here and here.

Claim Drafting Tips - Patent Quality

One reason that corporations continue to obtain patents is that a strong patent portfolio can alter Wall Street’s outlook on the portfolio holder. During any merger or large acquisition, the associated patent portfolios should be given some review. In some instances, however, the review may simply take the form a Patent Quality Rating. PatentRatings is one company that calculates and sells such ratings. (U.S. patent 6,556,992).

The quality ratings are purely objective and can be based on a number of factors. Here are some tips to increase your rating:
1) Increase the number of claims.
2) Decrease the length of each claim.
3) Increase the length of the specification.
4) File patent as a continuation or CIPs.
5) Vary the type of claims.
6) Cite more references in your IDS.
7) Cite non-patent references or foreign patents.
8) Limit patent prosecution history.

FYI: U.S. Patent 5,583,591 has been identified with an A+ rating.

Claim Drafting Tips

George Wheeler has published an article (pdf) that should be read by anyone and everyone doing prosecution work. Unlike most law review articles, the prose is easy to read and the advice is practical.

Here are some of George’s tips:

1. Write claims that will be literally infringed.
2. Do not rely on means-plus-function claims.
3. Write the specification expansively.
4. Claim in a circle, not a chain.
5. The Examiner is never wrong.
6. Cite the MPEP, not case law.
7. Do not add unnecessary claim limitations.
8. Do not write your opponents’ trial exhibits.
9. Do not just obtain a patent, build a patent position.

Update (April 19, 2004) Read Judge Paul Michel's claim drafting tips or tips on drafting claims from About.com.