Patent Law Blog (Patently-O)

Preissuance Submissions: A Description of the Relevance to Examination but Not an Explanation

by Dennis Crouch

The USPTO is struggling somewhat with how to implement preissuance submissions. 

Required Concise Description: The new provision created by the America Invents Act (AIA) opens the door for any third party to submit “any … printed publication potential relevance to the examination of the application” if submitted within the proper window following application publication.  35 U.S.C. 122(e)(1).  The preissuance submission must also include a “concise description of the asserted relevance of each submitted document.” 35 U.S.C. 122(e)(2)(A).

The senior managers at USPTO learned patent law in the days when patent prosecution was extremely ex parte. Before 2001, pending applications were not published and were instead kept in complete confidence within the USPTO.  File wrappers were only reviewed in paper copy form and patent law was not generally thought of as much of a public concern.  Those days are gone, but fragments of that history remain.

In 1999 the omnibus appropriations bill included American Inventors Protection Act of 1999.  The AIPA implemented a new program of publishing pending patent applications 18–months after filing.  Applicants still have the option of keeping their applications secret while pending. However, that option requires that the applicant forego non-US patent rights. As the chart shows below, the vast majority of applications are published prior to issuance.  Further, about half of the non-published applications are ones that issued within 18 months of filing.

The new publication system raised a concern that third parties would begin challenging patents before issuance. As part of the legislative compromise, the 1999 AIPA legislation also included a special provision that blocks preissuance protests and oppositions. The provision authorizes the USPTO Director to establish procedures to ensure that no pre-issuance opposition is initiated following publication.

Protest and Pre-Issuance Opposition.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.

35 U.S.C. 122(c). The USPTO recognizes that the new preissuance submission system is in tension with the rule against allowing pre-issuance oppositions. In its implementation regulations the USPTO attempts to provide some limitation on the submissions in order to avoid the conflict. In the explanation of the final rules, the USPTO writes:

The third party should present the concise description in a format that would best explain to the examiner the relevance of the accompanying document, such as in a narrative description or a claim chart. The statutory requirement for a concise description of relevance should not be interpreted as permitting a third party to participate in the prosecution of an application, as 35 U.S.C. 122(c) prohibits the initiation of a protest or other form of pre-issuance opposition for published applications without the consent of the applicant. Therefore, while a concise description of relevance may include claim charts (i.e., mapping various portions of a submitted document to different claim elements), the concise description of relevance is not an invitation to a third party to propose rejections of the claims or set forth arguments relating to an Office action in the application or to an applicant’s reply to an Office action in the application.

PreIssuance Final Rules (July 2012). In its discussion of the new rules, the USPTO also suggested that the concise description is “limited to a description of a document’s relevance” cannot include “arguments against patentability.”

Unlike the concise description of relevance required by 35 U.S.C. 122(e) for a preissuance submission, which is limited to a description of a document’s relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability.

Clearly there is a limit here to the scope of the description that can be filed. However, the USPTO’s distinction between a description and explanation is not entirely clear. 

The USPTO’s approach here makes some sense but is somewhat misguided.  In my mind, the statutory mandated description of relevance seems to requires at least some indication the statutory hook.  This is especially true because the preissuance submissions are not limited to 102/103 related prior art submissions. Rather, the submissions merely need to be potentially relevant to examination.  The best interpretation of the statute is that the discription of relevance is a description of how the submitted document is relevant to the examination.  In my mind, this sets up a three way network and the required description should discuss how (1) the submitted document changes how we think about (2) the patent application based upon some (3) law or other element of patent examination.  In the context of a claim construction chart, the link to 102/103 will likely be implicitly understandable without discussing the statutory elements.  Explanations regarding claim construction, subject matter eligibility, indefiniteness, or other examination issues likely will not make sense unless at least those particular labels are provided in the explnation of how the document is relevant to the examination.

Alleged Copyright Infringement by Patent Prosecutors

By Dennis Crouch

American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg (D.Minn)

Publishers John Wiley & Sons and American Institute of Physics have asked the Minnesota District Court for leave to amend and narrow their complaint against the Schwegman law firm. The amendment would drop any allegation that submitting copies of copyright works to the USPTO constitute copyright infringement. The plaintiffs write that the amended complaint

does not allege that this unauthorized copying includes (i) making such copies of a copyrighted work for submission to the PTO as may be required by the rules and regulations of the PTO, (ii) transmitting such copies to the PTO, or (iii) making an archival copy of that work transmitted to the PTO for Defendants' internal file to document what has been transmitted.

To be clear, however, the plaintiffs have not dropped their case, but continue to allege that other copies and transmission do constitute copyright infringement. Further, because Wiley does not have any proof of those other activities, it argues that the now unchallenged submission to the PTO serves as "evidence of broader use and circulation" sufficient to permit the complaint to move forward.

The newly amended complaint thus recites no factual basis other than the fact that Schwegman is a law firm that prosecutes patents and that, because Schwegman submitted copies of certain articles to the USPTO that it must have also made unauthorized copies. The complaint:

14. Upon information and belief, Defendants have engaged in Unauthorized Copying with respect to the copyrighted articles from Plaintiffs' journals, including but limited to the articles identified on Schedule A.

15. Plaintiffs cannot know the full extent of Defendants' Unauthorized Copying without discovery.

The amended complaint also adds a further list of obscure scientific articles that were submitted to the PTO by Schwegman and were allegedly copied internally in an unauthorized manner. The plaintiffs have not yet filed any proposed amendments in the MBHB case.

The USPTO intervened in these cases supporting the law firms. It appears that this amendment is meant to appease the USPTO so that it will fall out of the case – making the defendants look much less sympathetic.

Notes:

• Despite its high-sounding name, the American Institute of Physics (AIP) is basically a publishing house struggling to survive.
• Open Access: Depending upon pricing structure, access to a journal such as the Journal of Applied Physics costs as much as $15k per year.  Academic authors generally receive no compensation for publication and there is a growing movement amongst academia toward open access journals.  Almost all law reviews make their works freely available online.  This enforcement project may push the sciences in that direction as well.
• See also:
• Copyright: Lawfirms Sued for Submitting Prior Art to the USPTO;
• Copyright Lawsuit Against Patent Firms Continues: Firms Claim Fair Use and Copyright Misuse;
• Supreme Court to Hear International Copyright Exhaustion Case.
• Read the Brief: File Attachment: mnd-1190merged.pdf (794 KB)

The Impact of Patent Reform on Filing Strategy (I)

The new law defining prior art would become effective 18–months from the date of enactment of H.R. 1249.  Patent applications filed after that date would be bound by the new first-to-file rules. The major exception is that old invention-date rules will also apply to any application having a claim having a proper priority filing date of prior to the change-over. 

That date will likely be a filing bonanza, much like the what occurred in the lead-up to the June 8, 1995 change in patent term as shown in the chart below.

Applicants who beat the 1995 deadline were granted given either a patent term of 17 years from issuance or else 20 years from filing, whichever was longer as calculated at issuance. In that scenario, there were very good reasons to file before the deadline.

When the new deadline comes, I suspect that the current regime will look more favorable than the new because of the new limits on swearing-behind prior art based upon a prior invention date and claiming a grace period for third-party disclosures. One reason an applicant might delay is because of the new “micro-entity” status that offers lower fees, but even then the best course of action would be to file a provisional application early followed by non-provisional at the lower fee.

Are there reasons why a patent applicant would choose to delay filing an application until after the new deadline?

A Modest Proposal?: Identifying the Invention within the Patent Application

Well known patent attorney Hal Milton recently published a new article in John Marshall’s Review of Intellectual Property Law (RIPL) that argues for the presentation of a “new result” within every patent application.  The majority of newly drafted patent applications do not follow Milton’s approach and instead seem to obscure the innovative elements of the claimed invention and fail to identify the problem being solved by the invention.  Milton writes:

Fifty years of examining, drafting, and prosecuting patents, including the patent at issue in KSR International Co. v. Teleflex, Inc., coupled with the KSR opinion and the lessons therefrom, led the author herein to the objective standard of a new result.  Inventors should be counseled that a new result should be sought out to justify the exclusive right of a patent.

Milton’s approach builds upon Paul Cole’s 2008 post-KSR article also published in RIPL. In that article, Cole reiterated that that evidence showing a new result is “necessary” under the European Patent Convention (EPC).

Milton’s approach also complements Ron Slusky’s approach to claim drafting that focuses a claim drafter’s attention first on the problem being solved by the invention. A major difference, however, is that Slusky does not explicitly advocate identifying the new result as part of the application itself.

Milton again:

In addition to identifying the new result or function to justify the exclusive right
of a patent, … that new result [should be] systematically recited throughout all sections of a patent application.  Because a court may interpret a patent based upon the intrinsic patent alone, without regard to extrinsic evidence presented in advocacy outside the patent document, extreme care should be exercised in preparing the original patent application with consistency throughout.  It is important to realize that patent offices, for the most part, grant patents based upon claims whereas the courts enforce patents based upon the entire patent.

Patent Term: Comparing 17-years-from-issue to 20-years-from-filing

One of the most important attributes of a patent is its term or duration of enforceability.  In 1995, the US patent system began calculating patent term based on the priority filing date of an application rather than a patent's issue date. Under the prior rule, a patent would remain in force for 17 years from the date of issue. Under the “new” system, the term is 20–years from the priority filing date. The three extra years were intended to account for a typical prosecution delay of three years. In addition, Congress added a patent-term-adjustment (PTA) provision to lengthen the patent term in instances where the USPTO unduly delayed in issuing a patent.

Study: For this study, I wanted to consider how the change has actually impacted patent term. To do this, I created a database of 50,000 recently issued patents and calculated the term under both the old and new system.  For the calculation under the new system, I added 20–years to the earliest priority date (excluding provisional and original foreign filing dates) and then added any patent-term-adjustment.  To calculate the term under the old system, I added 17–years to the issue date unless the patent had a family member (e.g., continuation application) with an earlier issue date. In that case, I added 17–years to the issue date of the family member based on an assumption that a terminal disclaimer would have been filed in the case. Because of some potential data discrepancies, I excluded the extreme 1% of results and also patents on applications filed proir to the 1995 change-over. 

Results: Most patents (64%) have a longer term under the new system than they would have been entitled under the older system. Under the new system, the median patent has a term of about 8–months longer than if the term had been calculated under the old system. For 43% of the patent, the terms are are within 1–year of what would have been calculated in the old system; and 89% are within 2–years. Of course, there are some extremes. As you might imagine, patents that benefit most under the new system are those that have the greatest patent term adjustment (PTA).  Patents in TC 1600 (Biochemistry and Organic Chemistry) comparatively fared the worst.  Those patents on average lose 11–months of patent term in the new system as compared to the old system.

Supreme Court to Decide Microsoft Patent Case that Could Make it Easier to Invalidate Patents

By Dennis Crouch

Microsoft Corp. v. i4i Ltd. (Supreme Court 2010)

The Supreme Court has granted Microsoft's petition for a writ of certiorari and will consider whether patent law requires clear and convincing evidence of invalidity in order to invalidate an issued patent. Microsoft asks that the standard be lowered – at least for the situation where the evidence of invalidity was not considered by the patent office before the patent issued. The Supreme Court has not directly ruled on the issue. However, in KSR v. Teleflex, the Supreme Court did note that the "the rationale underlying the presumption — that the PTO, in its expertise, has approved the claim — seems much diminished" in cases where the patentee "fail[ed] to disclose" the key prior art to the PTO.

I expect that the court will agree that the statutory presumption of validity does not require a clear and convincing standard and that the standard should be lowered when a court is presented with evidence that is substantially different from that considered by the USPTO. Without explanation, Chief Justice Roberts has recused himself from this case – leaving eight justices to decide. At this point, I expect that all members of the court will agree that the standard should be lowered with some disagreement on the exact rule.

Clear and Convincing Evidence: Felony criminal cases require that prosecutors prove their case beyond a reasonable doubt. Most civil cases only require a preponderance of the evidence – often referred to as "more likely than not." Thus, in patent infringement cases, the patentee need only prove that it is more likely than not that the defendant infringed. However, the Federal Circuit has long required that invalidity defenses be proven with clear and convincing evidence. The clear and convincing standard is somewhere between a preponderance of the evidence and beyond a reasonable doubt and is sometimes referred to as "substantially more likely than not." Microsoft has not directly challenged the CAFC's rule of corroborative evidence that a single person's testimony is never sufficient to invalidate a patent.

i4i's case: In 2009, an Eastern District of Texas jury awarded $200 million + interest to i4i after finding that Microsoft willfully infringed the Canadian company's patent. Judge Davis subsequently added-on $40 million for willful infringement. The judge also issued an injunction ordering Microsoft to stop selling Word Products with the capability of using "custom XML." That injunction was stayed by the Federal Circuit pending appeal. On appeal, the Federal Circuit affirmed the lower court's findings of validity, willful infringement, enhanced damages, and permanent injunctive relief. In the meantime, the USPTO has concluded its reexamination of the i4i patent — confirming that the claims at issue are patentable. Microsoft filed a second reexamination request in August 2010 (shortly after it filed its petition to the Supreme Court). However, on November 24, 2010, the USPTO denied the request to begin a new reexamination – finding that the newly asserted prior art failed to raise a substantial new question of patentability (SNQ) as required by statute. Microsoft will likely appeal that denial. In addition, Microsoft apparently patched its software to prevent someone from using custom XML in Word in an effort to avoid the injunction and any further damages.

Microsoft has now moved-on to the Supreme Court — asking the high court to reject the "clear and convincing" evidence standard for proving a patent invalid. As Microsoft wrote in its petition for writ of certiorari, the question is "Whether the court of appeals erred in holding that Microsoft's invalidity defense must be proved by clear and convincing evidence" when the prior-art was not considered by the USPTO. This is essentially the same question that Microsoft raised in its 2008 petition in z4. That petition was withdrawn after the parties settled.

The Patent: i4i's asserted patent (U.S. Patent No. 5,787,449) covers a system for editing the metacodes of an HTML or XML document. The system uses a metacode map that is stored separately from the XML document and provides a menu of potential metacodes. The patent application was filed in 1994 and should remain in-force until 2015.

Microsoft's Invalidity Argument: Microsoft was not able to uncover any prior publication or patent that would invalidate the invention. However, the software giant argued at trial that i4i had sold an embodiment of the invention in the US more than one year prior to the 1994 patent application date. In particular, Microsoft argues that the invention was "embedded in a system called S4 - that the inventors of the ′449 Patent developed and sold to SEMI, a client of i4i's predecessor, over a year before applying for the ′449 Patent." That sale was not disclosed to the USPTO during the original prosecution and could not be presented during reexamination because reexaminations are limited to a review of prior art patents and publications. At the trial, the inventors (Vulpe and Owens) testified that the S4 system did not include a metacode map or separate the map from the marked-up document – two key features of their invention. Because the source-code for the 1993 custom software was no longer available, Microsoft primarily relied on testimony from a former i4i employee and upon written statements that Vulpe had made to investors and to the Canadian Government suggesting that the S4 software did separate metacode information.

The jury form asked "Did Microsoft prove by clear and convincing evidence that any of the listed claims of the '449 patent are invalid?" The jury answered "no." On appeal, the Federal Circuit held that the jury had sufficient evidence to rule that the patent was not anticipated by S4.

Importance of the Rule: A recent study conducted by Etan Chatlynne and published on Patently-O looked at all 119 Federal Circuit decisions on patent validity for the past several years. The study found that lowering the burden of proof would not have made any difference for 74% of those cases but might have made a difference in 26% of the cases. None of the decisions expressly stated that the result would be different if the standard had been reduced.

The clear and convincing standard probably has an important psychological impact in jury (and judicial) deliberations where the defendant's high burden for proving invalidity is contrasted with the plaintiff's lower burden for proving infringement.

How Effective are Pre-Appeal Brief Conferences?

As part of its appeal rules package, the USPTO has released further information on the role of pre-appeal brief conferences in the prosecution process. As its name suggests, the pre-appeal brief conference program involves a meeting that occurs before an applicant files the formal appeal brief. The "conference" is an internal meeting between examiners and does not actually include the patent applicant or its representative. Rather, the applicant submits a short (5-page) memo that is reviewed at the conference. The program was introduced in FY2005 as a mechanism for helping to avoid unnecessary appeals.

The table below shows that the number of pre-appeal brief conference requests has been steadily rising since being introduced. The results have stayed relatively steady. During the five-year reported period. 56% of the pre-appeal brief conferences resulted in a decision by the conference members that the examiner's rejection was proper and that the case should proceed to the BPAI. 38% of the conferences resulted in the examiner withdrawing one or more rejections and then re-opening prosecution. 4% of the conferences resulted in a decision that all claims were patentable. And, 2% of the conferences rejected the pre-appeal brief conference request as defective.

FY	Number of Pre-Appeal Brief Conference Requests	Percent of Appeals	Proceed to Board	Reopen Prosecution	Withdraw Rejections	Defective Request
2006	6,525	24%	55%	37%	5%	3%
2007	7,240	25%	56%	38%	4%	2%
2008	8,255	27%	59%	37%	2%	2%
2009	9,967	30%	56%	39%	3%	2%
2010	12,019	34%	56%	38%	5%	1%

Prior to the pre-appeal brief conference program, a majority of appeals cases never reached the Board because the rejections were withdrawn after the applicant filed its formal brief. The pre-appeal brief conference program appears to have shifted that decisionmaking process forward. Now, examiners are much less likely than before to withdraw their rejections after an applicant files its formal appeal brief. That decision is made at a separate conference termed the appeal brief conference. In FY2010, the appeal brief conference resulted in a decision to file an examiner answer in 59% of cases. That is up from 39% in FY2005. Thus, the pre-appeal brief conference program does not seem to actually reduce patent examiner workload. However, it does help speed prosecution and allows a substantial number of applicants to avoid filing the formal appeal brief.

In an e-mail, Foley partner Stephen Maebius focused on the relative rates of re-opening prosecution. Pre-appeal brief conferences are relatively more likely to determine that prosecution should be re-opened (and presumably a new rejection issued). As compared with the pre-appeal brief conference results, appeal brief conferences are much more likely to determine that all rejections should be withdrawn. Maebius writes that "re-opening prosecution may increase the chance of lengthening a patent term adjustment, depending on the dates associated with earlier periods of the prosecution history. This may be an advantage where immediate issuance is not an objective and patent life is more valuable at the end of the patent term as in the case of pharmaceuticals. . . . On the other hand . . . filing a full appeal may be a better strategy when gaining immediate allowance is the objective."

PDF of Rules with Data: http://edocket.access.gpo.gov/2010/pdf/2010-28493.pdf

Discussion: Patent Prosecution Rates

A Patently-O Reader e-mailed with the hope of starting a discussion on the topic of patent attorney and agent fees for patent prosecution. 

He writes “large clients have … pushed down their rates, some in 2009 and some in 2010. In at least two cases, these are clients flush with incredible amounts of cash. Thus, this is not a problem of client-liquidity.” His clients have created rules that would block both a partner and an associate from billing on the same response. “To some clients, this appears to be two attorneys doing work that can be finished by a single attorney.” In addition, his clients are “unwilling to allow their prosecution to be used as a type of training exercise. They want the work done quickly, at the lowest cost. Being part of a training exercise does not achieve this purpose.”  In the background is the reality that there are “many unemployed or underemployed patent attorneys willing to do this work and do it effectively, at [under 2007] rates.”

Cancer Research Technology v. Barr Laboratories: Prosecution Laches and Inequitable Conduct

By Jason Rantanen

Cancer Research Technology Ltd. v. Barr Laboratories, Inc. (Fed. Cir. 2010)
Panel: Newman, Lourie (author), Prost (dissenting)

Although overshadowed by the en banc Federal Circuit arguments in TheraSense v. Becton Dickinson this morning, Cancer Research Technology v. Barr Laboratories may provide a preview of what the opinions in TheraSense could look like - although it doesn't necessarily indicate which view of inequitable conduct will ultimately prevail.  In Cancer Research, Judges Lourie and Newman reversed a district court finding of prosecution laches and inequitable conduct, while dissenting Judge Prost would have reached the opposite result.

The patent at issue (the '291 patent) involved a set of thirteen tetrazine derivatives that the original 1982 specification identified as possessing anticancer activities based on animal studies.  During the first nine years of prosecution, the examiner repeatedly rejected the claims due to lack of utility; rather than file a response to the office actions, the applicant instead filed continuation after continuation.  In 1991, Cancer Research obtained ownership of the patent application and shortly thereafter responded to the examiner's arguments.  The patent issued in 1993 and expires in 2014. 

Following Cancer Research's clinical testing, the FDA approved one of the compounds covered by the '291 patent (marketed as TEMODAR) for the treatment of one type of cancer in 1999 and a second in 2005.  In 2007, Barr Laboratories filed an Abbreviated New Drug Application ("ANDA") for a generic form of TEMODAR.  Cancer Research sued Barr for infringement four months later.  During the district court proceedings, the parties stipulated to validity and infringement and, after a bench trial, the court found that the patent was unenforceable due to prosecution laches and inequitable conduct. 

Prosecution Laches
Given the nearly ten-year delay before any meaningful response to the examiner's rejection was filed, Barr contended that the patent was unenforceable due to prosecution laches.  The district agreed, concluding that the delay in prosecution was unreasonable and unexplained.

On appeal, the majority reversed the finding of prosecution laches, holding that the doctrine requires not just unreasonable delay, but also a showing of prejudice.  The majority further held that "to establish prejudice, an accused infringer must show evidence of intervening rights, i.e., that either the accused infringer or others invested in, worked on, or used the claimed technology during the period of delay."  (Slip Op. at 9).  Here, there was no evidence of intervening rights during the prosecution period, such as evidence showing that someone other than the patent holder attempted to develop the claimed compounds.  Even Barr itself waited until 2007 - four years later than required - before filing its ANDA.  The majority also noted that there was no public harm: in the absence of the patent, Cancer Research likely would not have been incentivized to develop TEMODAR at all. 

Writing in dissent, Judge Prost rejected the notion that prosecution laches requires prejudice, let alone intervening rights; rather, under her reading of the precedent such a requirement is not part of the laches determination.  Furthermore, in her opinion, both Barr and the public were harmed by Barr's inability to market a generic version of TEMODOR.

Comment: I'm unconvinced by Judge Prost's argument on this point.  If she is correct, then the '291 patent was never enforceable - be it in 2007, when Barr filed its ANDA, or 1993, when it issued.  Yet without an enforceable patent, Cancer Research would never have developed TEMODOR, let alone engaged in the expensive Phase III clinical studies necessary to demonstrate its safety and efficacy.  Thus, the "harm" to the public would been greater in the absence of the '291 patent, not less.

Inequitable Conduct
The majority also rejected the district court's finding of inequitable conduct, while the dissent reached the opposite conclusion.  Both opinions focused on the subject of intent to deceive. 

The inequitable conduct issue in this case revolved around an extensive series of articles by an inventor on the '291 patent that presented data from post-application clinical trials of the claimed compounds.  These articles included conclusions indicating that some of the claimed compounds demonstrated high toxicity and low anticancer activity, which the district court found to be highly material to the patent claims because it directly contradicted statements in the '291 patent regarding the compounds' utility in treating cancers, as well as the patentability of a broadly written claim.

The majority, following the "intent cannot be inferred from materiality" line of thought, concluded that the district court's only basis for finding intent was its determination that the withheld articles were highly material.  "Because the district court did not rely on any other evidence to support its finding of deceptive intent beyond that used to find the withheld data material, the court in effect relied solely on its materiality finding to infer intent to deceive."  Slip Op. at 17.  The majority also concluded that the inference of deceptive drawn by the district court about the inventor's publication of data was not the only reasonable inference; rather, the broad publication of this data in multiple articles is inconsistent with an inference of intent to deceive.  Thus, an equally reasonable inference is that the inventor did not appreciate the potential importance of the published data to the patentability of the patent claims.

Judge Prost, again writing in dissent, would have affirmed the district court's determinations.  In contrast to the majority, which required independent evidence of intent, her view of inequitable conduct is that it does not require separate evidentiary bases for materiality and intent; rather it is appropriate to cite to the same evidence for materiality and intent.  Furthermore, here there was additional evidence of intent in the form of the district court's credibility findings, "which are virtually unreviewable by this court."  Thus, under her approach to intent in inequitable conduct, "[w]e should not draw inference that the district court has already excluded based on its own credibility findings."

Comment: The majority and dissent's views on intent can be partially reconciled under the position that, although an intent to deceive may be partially based on evidence of materiality, materiality cannot be the sole basis for the finding of intent to deceive.  Here, in the majority's opinion, the finding of materiality was the sole basis for the intent to deceive determination, because the only additional factor - the credibility determination - was based on an erroneous inference.  On the other hand, in the dissent's view credibility determinations are unreviewable and are sufficient to provide the "beyond the materiality" support for an intent to deceive finding.

USPTO's Data Visualization Center and Patent Dashboard

The USPTO has publicly released its data visualization center and patent dashboard. The site does an excellent job of providing a visual overview of the current USPTO state-of-affairs in terms of patent backlog, pendency, and allowance rate. The site also breaks-down those numbers in various ways that may be useful for advising your clients.  Data-downloads on the site provide unprecedented public access to PTO numbers that were previously either uncalculated or largely kept secret.

PTO Director Dave Kappos additionally sees the dashboard as providing patent office accountability and publicly facing the challenge of reducing patent pendency. Kappos writes on his blog:

An important part of the effort to reduce pendency is better understanding the numerous factors that contribute to examination delays and measuring their impact in a way that makes the USPTO more transparent to the public.  By looking at the whole picture, we can more effectively develop ways to increase the efficiency of the examination process.  While we know we have to hire more examiners to reduce the backlog, we also know that we must re-engineer the way we do business at the USPTO and have already implemented a series of initiatives designed to improve efficiencies.  These process changes will empower our workforce to be more effective and have already begun to yield important gains.

. . . [The Dashboard] will help the entire IP community to better understand our processes, and enable applicants to make more informed decisions about their applications, especially as we develop more opportunities for applicants to control the timing at which their applications are examined.  The new dashboard, which will be updated monthly, will also be used internally by the USPTO to analyze and improve our examination process and to track the effectiveness of our improvement efforts.  We intend to further refine the dashboard and welcome your input about ways we can improve it.  A dedicated mailbox [feedback@uspto.gov] has been set up for your comments and we intend to monitor your feedback carefully. 
 
The dashboard introduces six new measures of pendency designed to give a better overall picture of the contributions of different parts of the examination process to application pendency.  For example, the traditional total pendency measure stops the clock with the filing of an RCE, which may not provide an accurate measure of the total time it takes to complete the examination of an application through request for continued examination (RCE) practice.  A new measure, called "Traditional Total Pendency Including RCEs," looks at pendency of applications from filing of the original application to ultimate disposal of that same application, including any additional time attributable to RCE filings in those applications where RCE filings are made.  Similar measures are provided relative to divisional applications and other types of continuation practice.  We also provide information about pendency for applications in appeal practice.

Links:

• Data visualization center and patent dashboard
• Kappos Blog
• [It appears that the site has a few kinks to work-out as the data downloads are not working properly]

USPTO Guidelines for Determining Obviousness

The USPTO has released a set of updated examination guidelines on the core patentability issue of obviousness. The 18–page guidelines do not have the force of law, but will impact how examiners judge obviousness in practice. The updates primarily focus on Federal Circuit opinions that interpret and implement the holdings of KSR v. Teleflex, 550 U.S 398 (2007). I have copied the following tables from the Federal Register. [http://edocket.access.gpo.gov/2010/pdf/2010-21646.pdf].

 

Combining Prior Art Elements
In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008).	Even where a general method that could have been applied to make the claimed product was known and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown.
Crocs, Inc. v. U.S. Int'l Trade Comm'n., 598 F.3d 1294 (Fed. Cir. 2010).	A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results.
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008).	A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined.
Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (Fed. Cir. 2009).	A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so.
Wyers v. Master Lock Co., No. 2009–1412, —F.3d—, 2010 WL 2901839 (Fed. Cir. July 22, 2010).	The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009).	Predictability as discussed in KSR encompasses the expectation that prior art elements are capable of being combined, as well as the expectation that the combination would have worked for its intended purpose. An inference that a claimed combination would not have been obvious is especially strong where the prior art's teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.
Substituting One Known Element for Another
In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007).	When determining whether a reference in a different field of endeavor may be used to support a case of obviousness (i.e., is analogous), it is necessary to consider the problem to be solved.
Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008).	Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant's purpose.
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008).	Because Internet and Web browser technologies had become commonplace for communicating and displaying information, it would have been obvious to adapt existing processes to incorporate them for those functions.
Aventis Pharma Deutschland v. Lupin, Ltd., 499 F.3d 1293 (Fed. Cir. 2007).	A chemical compound would have been obvious over a mixture containing that compound as well as other compounds where it was known or the skilled artisan had reason to believe that some desirable property of the mixture was derived in whole or in part from the claimed compound, and separating the claimed compound from the mixture was routine in the art.
Eisai Co. Ltd. v. Dr. Reddy's Labs., Ltd., 533 F.3d 1353 (Fed. Cir. 2008).	A claimed compound would not have been obvious where there was no reason to modify the closest prior art lead compound to obtain the claimed compound and the prior art taught that modifying the lead compound would destroy its advantageous property. Any known compound may serve as a lead compound when there is some reason for starting with that lead compound and modifying it to obtain the claimed compound.
Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989 (Fed. Cir. 2009).	It is not necessary to select a single compound as a ''lead compound'' in order to support an obviousness rejection. However, where there was reason to select and modify the lead compound to obtain the claimed compound, but no reasonable expectation of success, the claimed compound would not have been obvious.
Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999 (Fed. Cir. 2009).	Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify a prior art lead compound in a particular way to produce the claimed compound. It is not necessary for the reasoning to be explicitly found in the prior art of record, nor is it necessary for the prior art to point to only a single lead compound.
The Obvious To Try Rationale
In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009).	A claimed polynucleotide would have been obvious over the known protein that it encodes where the skilled artisan would have had a reasonable expectation of success in deriving the claimed polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason to try to isolate the claimed polynucleotide. KSR applies to all technologies, rather than just the ''predictable'' arts.
Takeda Chem. Indus. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007).	A claimed compound would not have been obvious where it was not obvious to try to obtain it from a broad range of compounds, any one of which could have been selected as the lead compound for further investigation, and the prior art taught away from using a particular lead compound, and there was no predictability or reasonable expectation of success in making the particular modifications necessary to transform the lead compound into the claimed compound.
Ortho-McNeil Pharmaceutical, Inc. v. Mylan Labs, Inc., 520 F.3d 1358 (Fed. Cir. 2008).	Where the claimed anti-convulsant drug had been discovered somewhat serendipitously in the course of research aimed at finding a new anti-diabetic drug, it would not have been obvious to try to obtain a claimed compound where the prior art did not present a finite and easily traversed number of potential starting compounds, and there was no apparent reason for selecting a particular starting compound from among a number of unpredictable alternatives.
Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009).	A claimed compound would have been obvious where it was obvious to try to obtain it from a finite and easily traversed number of options that was narrowed down from a larger set of possibilities by the prior art, and the outcome of obtaining the claimed compound was reasonably predictable.
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008).	A claimed isolated stereoisomer would not have been obvious where the claimed stereoisomer exhibits unexpectedly strong therapeutic advantages over the prior art racemic mixture without the correspondingly expected toxicity, and the resulting properties of the enantiomers separated from the racemic mixture were unpredictable.
Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010).	An obvious to try rationale may be proper when the possible options for solving a problem were known and finite. However, if the possible options were not either known or finite, then an obvious to try rationale cannot be used to support a conclusion of obviousness.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009).	Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.
Consideration of Evidence
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342 (Fed. Cir. 2007).	Even though all evidence must be considered in an obviousness analysis, evidence of nonobviousness may be outweighed by contradictory evidence in the record or by what is in the specification. Although a reasonable expectation of success is needed to support a case of obviousness, absolute predictability is not required.
In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007).	All evidence, including evidence rebutting a prima facie case of obviousness, must be considered when properly presented.
Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010).	Evidence that has been properly presented in a timely manner must be considered on the record. Evidence of commercial success is pertinent where a nexus between the success of the product and the claimed invention has been demonstrated.
Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008).	Evidence of secondary considerations of obviousness such as commercial success and long-felt need may be insufficient to overcome a prima facie case of obviousness if the prima facie case is strong. An argument for nonobviousness based on commercial success or long-felt need is undermined when there is a failure to link the commercial success or long-felt need to a claimed feature that distinguishes over the prior art.

Interim Guidelines on Examining Statutory Subject Matter

The USPTO has issued a set of interim examination guidelines for determining whether a claim is properly directed to patentable subject matter under 35 U.S.C. � 101, relevant Supreme Court precedent, and Bilski. The instructions begin with a realization that the area is in flux and that more permanent guidelines will be established once the Supreme Court rules on Bilski v. Kappos. In addition, these are guidelines rather than rules or laws. Thus, an examiner's failure to follow the guidelines is "neither appealable nor petitionable."

Download 101 Memo to Directors | Download 101 Examiner Instructions 8 24 09 | Download FLOWCHARTMORT 8 24 09 | Download FLOWCHARTPROD 8 24 09

The guidelines appear to do a good job of synthesizing the highly confusing area of law into a straightforward algorithm. The problem is that next spring the Supreme Court is almost sure to reject the Federal Circuit's Machine-or-Transformation test. At that point, all of the examiner time and applicant money focusing on this "threshold issue" will have been wasted. I understand that the business of the PTO must continue even in the face of potential policy shifts. However, I would have suggested that examination of Section 101 eligibility be put on a back-burner - especially in light of the fact that most questionable subject matter cases will also fail the tests of obviousness, enablement, and indefiniteness.

The guidelines bear the signature of Drew Hirshfeld, Acting Deputy Commissioner for Patent Examination Policy. The PTO recently posted a notice looking to permanently fill this extremely important position.

Estimated Workload of Preparing and Filing Reexaminations

As part of the Paperwork Reduction Act of 1995 (44 U.S.C. 3506(c)(2)(A)), the USPTO is required to evaluate its methods of collecting information from the public. In a recent Paperwork Act notice & publication, the Office offered the following estimates for reexamination practice.

Response	Estimated Time Response (hours)	Estimated Number of Annual Responses	Total Hours
Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)	18 minutes	845	254
Request for Ex Parte Reexamination	40 hours	845	33,800
Request for Inter Partes Reexamination Transmittal Form (PTO/SB/58)	18 minutes	380	114
Request for Inter Partes Reexamination	90 hours	380	34,200
Petition to Review Refusal to Grant Ex Parte Reexamination	15 hours	25	375
Petition to Review Refusal to Grant Inter Partes Reexamination	25 hours	9	225
Patent Owner's 37 CFR 1.530 Statement	7 hours	105	735
Third Party Requester's 37 CFR 1.535 Reply	7 hours	60	420
Amendment in Ex Parte or Inter Partes Reexamination	20 hours	1,165	23,300
Third Party Requester's 37 CFR 1.947  Comments in Inter Partes  Reexamination	25 hours	300	7,500
Response to Final Rejection in Ex  Parte Reexamination	15 hours	320	4,800
Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination	25 hours	120	3,000
Third Party Requester's 37 CFR 1.951 Comments in Inter Partes  Reexamination	25 hours	95	2,375
Petition to Request Extension of  Time in Ex Parte or Inter Partes  Reexamination	30 minutes	475	238
Total		5,124	111,336

 

Are these estimates in the ball park? How many hours are spent preparing a request for ex parte reexamination? Perhaps most importantly - what is missing here from the time spent in reexamination practice? Comments may be submitted to Susan.Fawcett@uspto.gov (Subject: A0651-00XX Patent Reexaminations comment). Notice at 74 FR 39916.

Assuming that the total -- 111,336 hours -- represent the entire amount of attorney time spent on reexaminations. Those hours are the equivalent of about 60 full time patent attorneys.

Patent Application Pendency: Percent of Applications Still Pending

The large backlog of cases at the PTO has added greatly to the problem of long patent application pendency. There are other contributors to the problem – such as applicants and examiners unwilling to reach a compromise solution (often based on the demands of superiors).

To provide some measure of pendency, I created a database of 20,000+ randomly selected patent applications and issued patents filed 2000 - 2007. For each of case, I tallied the final status as of mid-July 2009. (Status is either patented, abandoned, or pending). Using that data, I created a chart of the percent of utility applications still pending as of July 2009. This data can be helpful for someone considering whether their still-pending application is an anomaly. Over 84% of the applications filed in 2007 are still pending (+/– 2% at 95% CI) , while less than 1% of applications filed in 2000 are still pending (+/– 1% at 95% CI).

The second chart standardizes the same data according to the amount of time in prosecution.

Notes:

• This data only includes applications that were either (1) published or (2) patented. I do not know the percentage of cases unpublished cases that are still-pending versus those that are abandoned.
• The data presented here does not distinguish between technology centers, continuations, etc. The still-pending rates varies considerably within those different categories.
• The pendency rate for applications filed Q4 2004 appears unexpectedly high and the rate for Q1 2005 appears unexpectedly low.. That is at least partially explained by a data collection artifact. My data sample includes a relatively large number of applications filed in late December 2004 and early January 2005 rather than being more evenly distributed throughout the respective three months.

Office Actions

Although not necessarily any indication of quality, the length of non-final office actions has been increasing over time – shifting from an average of 7.5 pages in 2003 to 10.7 pages in 2009. The chart below – shows that the increase has been relatively steady over the past six years based on a sample of 8400 non-final office actions from patent applications filed 2001–2007. (Page count includes cover page and summary).

What is the cause of this rise?

BPAI Shuts Down Dissent in Favor of Efficiency

The Board of Patent Appeals (BPAI or Board) is very much a quasi-judicial body. The emphasis for today is on quasi. 35 USC §6 calls for each appeal to be heard by at least a three judge panel. Yet, the Board appears to be taking steps to limit the effectiveness of those panels. These changes are apparently motivated by a need for efficiency in the face of budget shortfalls and increased appeals.

Like examiners, BPAI judges have a count system. BPAI Judges are expected to sit on about 300 panels per year and draft about 100 opinions. In the past, judges would receive credit for drafting full dissents and concurring opinions. That has changed. In an internal email, BPAI Vice-Chief Jay Moore has indicated that these extraneous opinions will no longer ordinarily garner any credit. According to Vice-Chief Judge Moore, "[c]oncurrences, dissents, and remands are not normally efficient mechanisms for securing the 'just, speedy, and inexpensive' resolution of an appeal before the Board." The e-mail is reproduced below:

====

From: Moore, James T
Sent: Thursday, May 07, 2009 9:57 AM

To: All BPAI Judges
Cc: MacDonald, Allen; Fleming, Michael R.; Santiago, Amalia

Subject: Policy Clarification on Dissents, Concurrences and Remands

Importance: High

Colleagues:

Please note that, effective immediately, if you would like a dissent, concurrence, or remand to be considered towards your productivity totals, you must submit a request. The form is attached, and may be used retroactively for cases prior to this date. For cases after this date, it must be submitted to your Vice Chief Judge within one week of mailing of the dissent, concurrence, or remand in order to be considered.

Concurrences, dissents, and remands are not normally efficient mechanisms for securing the “just, speedy, and inexpensive” resolution of an appeal before the Board. (Bd. R. 1). As indicated in the PAPs, a productivity credit is not automatically earned for a concurring opinion, dissenting opinion, or remand. Accordingly, justification is required to explain the need to undertake the extra work and occasion the extra delay in order to ensure efficient and proper utilization of our resources. Further, any credit given for a concurring opinion, dissenting opinion, or remand will be commensurate in scope with the justification provided and the scope of the extra work.

Please see Al or Jay if you have any questions.

Thanks,

Jay Moore
Allen MacDonald

====

The push for efficiency at the BPAI is also seen in the non-judge "patent attorney" program. Many of the BPAI opinions are now ghost written by newly minted patent attorneys and then signed by the BPAI judges. The real problem with this program is that when the patent attorneys are used, the BPAI judge is given a much higher throughput quota.

According to an anonymous observer - "the time constraints [under the Patent Attorney program] are so serious that for many cases, not a single one of the judges signing off on a decision will have read the underlying papers detailing the facts of the case." This observer asked to remain anonymous based on "the intolerance of dissent at the Board."

This need for efficiency is also the driver behind the still-pending BPAI appeal rule changes.

Percentage of Patents that were Initially Rejected

This relates to my statements regarding the percentage of applications that receive at least an initial rejection. The graph below shows the percentage of patents issued (2000-2006) that were initially rejected by the PTO broken up into groups of art-units. Thus AU 1630 group actually includes AU 1630 - 1639. Close to 95% of the patents issued through the AU 1630 group during that period were initially rejected before being eventually allowed.

As with the design patent discussion yesterday, the rejection rate above is for applications that eventually issue as patents. For any given application, the effective rejection rate was likely higher because abandoned applications are probably more likely to have been rejected.

This data is now getting a bit old - but it is what it is. This data came from public PAIR before researchers were blocked from accessing it in any substantial way. Since 2006, applicants have complained of increased rejections. My perception that this change is not a shift toward more first office action rejections, but rather a shift toward sustaining more of those rejections in the second and subsequent office actions.

Design Patents: Sailing Through the PTO

Over eighty percent of utility patent applications are initially rejected during prosecution. Some areas of technology – such as semiconductors – have a lower rejection rate while others – such as electronic commerce methods – have an even higher rejection rate.

I wanted to compare the result for utility patents with design patents. I pulled up information on 1000 of the most recently issued design patents (all issued in March, 2009) and parsed through the file histories to see how design patent prosecution compares. As the graph below shows, in my sample, only 25.6% of the recently issued patents received an initial rejection during prosecution. To be clear, this 25% rejection rate is for applications that eventually issue as patents. To get an overall picture of design patent rejections, we need to also consider the applications that are abandoned and never issue as patents. Recent PTO statistics show that a bit under 20% of design patent applications are abandoned. Because design patent file histories are kept secret unless a patent issues, we cannot know why any individual case is abandoned – However, the two most likely situations are that the applicant (a) failed to respond to a rejection or (b) failed to pay the issue fee. Even if we assume that 100% of the abandoned cases are initially rejected, that only pushes the initial rejection rate to about 40%.

As the graph below shows, of the 1000 issued design patents in my sample, only 4.1% received a final rejection during prosecution; and only 0.2% cases (2 out of 1000) included a notice of appeal. None of the 1000 cases included an appeal brief.

The design patents in the study had an average pendency of 15.3 months calculated by finding the number of months between the filing date and the issue date. As may be expected, applications that included at least one rejection took considerably longer to issue (21.5 months) as compared to those that were never rejected (13.2 months). (These means are different at 99.9 CI).

Most design patents (58%) in my sample have only one inventor. However, 69% of the inventors are listed as joint inventors. A number of the muliti-inventor patents included trans-national inventorship with inventors originating from two or more separate countries. About 1% of the applications listed at least one inventor from the US & Great Britain. Another 1% listed at least one inventor from both the US and China.

Tuesdays with Aaron

12:01 am on Tuesday morning is a special time for patent attorneys. That is when the USPTO releases the newest batch of issued patents. Usually, over 3,000 issue each week.

Patent Attorney Aaron Feigelson (Leydig Voit firm) has started a great new blog: 1201tuesday.com covering PTO events. Aaron writes with an eye toward patent prosecution and does a good job of finding examples from recently issued patents that raise important practice issues. He has also been closely following the aftermath of Bilski. Aaron describes his project as follows:

I started regular weekly monitoring of issued patents a few years ago for some particular client-related matters, but my intrigue grew after stumbling upon certain patents, unrelated to client matters, with stories that were too interesting to keep to myself. Like U.S. Patent No. 6,097,812 and its 67-year prosecution history (thanks to a very long lasting secrecy order). Or U.S. Patent No. 7,472,070 for a seemingly innocuous grain aeration system -- but granted to Microsoft, that well-known player in agricultural technology. Or trends, like the trickling-off of issuances to applications filed the first week of June 1995 (when there was a pre-GATT filing surge). Or Jerome Lemelson being granted U.S. Patent No. 7,343,660 more than a decade after his death, with priority going back over fifty years to 1954.

Lately, my attention has turned to the fallout from the Federal Circuit's recent decision of In re Bilski and its effect on patentable subject matter under Section 101. In particular, I was curious (to aid my own practice) to see what sorts of claims had been allowed pre- and post-Bilski, and what techniques applicants had used to address or circumvent the machine-or-transformation test. I began sending my weekly findings internally to a few attorneys in my firm. Then to a few more. Then to a few more..

After a few months of these "Bilski Watch" emails, this blog was created.

I enjoyed Aaron's recent post regarding patents issuing from applications filed in early June 1995 - just before the patent term reference was switched from the issue date to the filing date.

Notes

• For those of you who don't know, the IP blogging community is rather inter-connected. For instance, Aaron Feigelson was a 2L at UChicago Law when I started there as a 1L. He was also a summer clerk at the MBHB firm. I started at MBHB soon after Aaron left and actually took over his desk and sat next door to his classmate Aaron Barkoff of the Orange Book Blog. Also at the MBHB firm are the PhD's who blog at Patent Docs (both Aarons hold PhD's as well). I interviewed at Matt Buchanan's (Promote The Progress) former Chicago firm, which is just across the Chicago River from Feigelson's office. Matt has participated in several business ventures with Steve Nipper (Invent Blog) and Doug Sorocco (PHOSITA). Matt and I are also working on a project for this fall. My old firm also paid for my patent bar review course with PLI partially taught by Gene Quinn (IPWatchdog). I could continue...

Independent Inventors: Five Ways to Reduce the Cost of Patenting and Get a Better Patent Application

Patent Attorney Mark Bergner provided the following five points that may help independent inventors control the cost of their patent application.   

Many small inventors contact me for preparing a patent application and asking that costs be kept to an absolute minimum. Recognizing that most such inventors do not have a great deal of money, I usually offer the following advice:

1) Provide me with the best write-up that you can up front with some illustrative (even hand-sketched) diagrams, along with any design documents you may have.

Often, inventors will provide a one-page summary or a sales brochure of their invention that leaves out a significant amount of detail. It is going to drive up costs if I have to drag each and every relevant aspect of the invention out. Additionally, there may be ample design documents that are provided to me after a significant amount of work has already been done. It will take much more effort for me to integrate this newly added information with a nearly complete draft specification than it would have taken if all information had been provided up front.

2) Try to do as much of the work as you can yourself.

I tell clients that I am knowledgeable in patent prosecution, but generally not knowledgeable about the subject matter of the invention. It will cost considerably more if I am required to do extensive research in the field of the invention in order to fill in a sparse invention disclosure. I will often point inventors to a patent in their general field and suggest that the detailed description and figures shown in the patent provide roughly the level of detail needed for their patent application. While I am not expecting draftsman-quality drawings and use of the words "wherein" and "said" in their description, I am expecting something more than a 3-block single figure illustrating a complex client-server architecture.

Also, there are many inventors who are wonderful technical people, but simply cannot communicate well in writing (that's why they majored in physics and not journalism). It might be a good idea for such an inventor to work with someone (under a confidentiality agreement) who can write well to prepare an initial description. I had an inventor who enlisted the support of a graduate student at a significantly lower hourly rate than I charge. Although I can get all of the relevant information by talking with the inventor in person and over the telephone, if that is the sole means that I have of obtaining descriptive information, it is going to cost more. If the inventor has difficulty in communicating ideas and concepts both in writing and orally, it is going to be a very expensive patent application--no two ways about it.

3) Provide me with a nearly completed concept of the invention.

Nothing drives up costs more than to have the inventor continue to invent as the application is being drafted. One common issue: if a patent attorney does a good job with the subject matter, the draft of the patent application may be the first time the inventor has ever seen his idea expressed in such a clear and organized manner. This may spawn the inventor to come up with alternate embodiments or to provide other features that might prevent a design-around. While I generally expect some minor refinement of an inventive concept during the course of preparing the application, the addition of completely new or different embodiments will substantially increase costs.

4) Answer any questions provided in a draft clearly and completely.

Often I will prepare a draft application with a number of questions or comments, requesting clarification or additional detail. Some questions are intended to solicit lengthy responses, but only a bare minimum is provided or, worse, the information provided is completely non-responsive. Example: "You indicated that a series of messages flow between the client and server in order to implement the invention, but you have not provided any description as to what these messages are or what they contain. Can you please provide me with a detailed description of these, possibly with a table or diagram?" The entire reply received back: "The messages contain information that allows the server to act on client requests." Very often I have an inventor who promises to do most of the work themselves, only to put forth a minimal effort when asked to provide additional information.

5) The costs of obtaining a patent, even a relatively complex one, pale in comparison to the costs you will encounter in trying to commercialize your product.

I know I'm in trouble with an inventor if I throw out a fair cost estimate for preparing an application and the inventor breaks out in a cold sweat and starts suggesting a cost that is 50% of the estimate. It's one thing for an experienced business professional to haggle for lower costs, but in most situations involving the individual inventor, there is a significant lack of appreciation for what it will cost to do prototyping or pilot production runs, legal costs associated with non-disclosure agreements, trademarks, production and supply agreements, Underwriters Laboratories certification, FDA approval, etc. In the vast majority of cases, it is very expensive to bring an inventive idea to the marketplace, and the patent costs are typically a minimal part of those costs. If the inventor is not prepared for the entire undertaking, he is probably not going to willingly and cheerfully pay the bills, regardless of the quality and efficiency of the work done.

Tafas v. Doll: Continuation Limits Invalid; Limits on Claims and RCEs are OK

Tafas v. Doll (Fed. Cir. 2009)

The PTO has attempted to implement new rules that limit both the number of continuation applications that may be filed and the number of claims that may be included within each application. The district court issued a summary judgment ruling that blocked implementation of the rules. On appeal, the Federal Circuit has vacated-in-part – finding that some of the limitations on continuations improperly conflict with 35 U.S.C. § 120, but that the remaining limits are "within the scope of the USPTO's rulemaking authority." The case is not finally decided. Rather, the lower court must now decided whether any of the rules are "arbitrary and capricious;" conflict with the Patent Act in ways not already addressed; violated proper rulemaking procedure; are impermissibly vague; or impermissibly retroactive.

Final Rule 78 (Continuations): The PTO's Final Rule 78 would have required that any applicant wanting to pursue more than two continuation applications file a petition "showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application." According to the court, that rule is in conflict with Section 120 of the Patent Act, which entitles the application to the filing date of a prior-filed application. In a concurring opinion, Judge Bryson noted that the conflict arises only because the limit is on the "number of continuations co-pending with the first-filed application."

Final Rule 114 (RCEs): The PTO's Final Rule 114 operated in the same way as Rule 78 except that it applied to Requests for Continued Examination (RCEs) rather than continuation applications. Because RCEs are not implicated by Section 120, the Federal Circuit found no conflict there.

Final Rules 75 and 265 (Claims): These rules would require an examination support document (ESD) for any application that includes more than five independent claims or twenty-five total claims. The ESD includes a preexamination prior art search, a list of the most relevant references and limitations disclosed by each reference, an explanation of how each independent claim is patentable over the submitted references, and an analysis of how each limitation of the claims is disclosed and enabled by the specification. The Federal Circuit found that the lower court was wrong in finding that the PTO exceeded its authority in implementing these rules.

Rulemaking Authority: The initial focus of the court's analysis is on the Rulemaking Authority of the USPTO. 35 U.S.C. § 2(b) gives the PTO authority to "establish regulations, not inconsistent with the law, which . . . (A) shall govern the conduct of proceedings in the office; . . . (C) shall facilitate and expedite the processing of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically . . . (D) may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office . . . ." The PTO is also required – under Section 132(b) – to "prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant." Although, these rules do not provide any "general substantive rulemaking power" to the PTO, the court will still grant Chevron deference to the PTO's interpretation of "statutory provisions that relate to the exercise of delegated authority."

Substantive v. Procedural: Without substantive rulemaking authority, the case turns on whether the limits are procedural or substantive. This is a difficult question to answer, and the Federal Circuit chose to follow the 1994 JEM case decided by the DC Circuit. In that case, the court found new rules procedural because they did not "foreclose effective opportunity to make one's case on the merits." With that rule as the framework, the conclusion is somewhat easy. The new rules do not "foreclose effective opportunity" – they only require justification for additional continuations and an ESD filing for additional claims.

"[A]pplicants who diligently present all of their amendments, arguments, and evidence as soon as possible during prosecution will be granted as many RCEs as they require. Thus, applications that are submitted in compliance with these timing requirements will be fully examined and given all of the benefits provided by the Patent Act. We do not believe that requiring applicants to raise all then-available amendments, arguments, and evidence by the second continuation application or the first RCE is so significant a burden that applicants will be effectively foreclosed from obtaining the patent rights to which they are entitled."

The Federal Circuit admits that the rules puts a large amount of authority in the hands of the PTO – to grant or reject petitions. However, the court took a wait and see approach: "[The courts] will be free to entertain challenges to the USPTO's application of the Final Rules." Oddly, the Court refused to hold the PTO to any of its official or unofficial public statements regarding how it will interpret the rules. "[T]hese comments do not bind the USPTO."

No Inequitable Conduct Problem: Relying on Kingsdown, the Federal Circuit noted that the ESD requirement is unlikely to cause any inequitable conduct problem for applicants. "[D]oubt about the judiciary's ability to apply its own doctrine in a way that yields fair results and discourages frivolous allegations should not preclude the USPTO from promulgating rules that are within its statutory authority."

Dissent by Rader: Judge Rader would have affirmed "[b]ecause the Final Rules drastically change the existing law and alter an inventor's rights and obligations under the Patent Act, they are substantive and the PTO exceeded its statutory rulemaking authority under 35 U.S.C. § 2(b)(2)."

Notes:

• This case was formerly captioned Tafas v. Dudas.
• In response to the decision, the PTO released the following statement: "The United States Patent and Trademark Office is pleased that the United States Court of Appeals for the Federal Circuit confirmed that the Final Rules are within the agency's rulemaking authority and that the rules regarding requests for continued examination, claims, and examination support documents are consistent with the law. We are further considering other aspects of the opinion, including the Federal Circuit's conclusion that the rule regarding continuations conflicts with the Patent Act."

  

Reinstating Patents After Failure to Pay Maintenance Fee

In a prior post, I discussed payment of maintenance fees. Ordinarily, three post-issuance maintenance fees must be paid in order to keep the patent in force for its entire term. A large entity pays $980 3.5 years after issuance; $2,480 7.5 years after issuance; and $4,110 11.5 after issuance. If the fee is not paid then the patent will expire at the next 4, 8, or 12 year mark. In that 6-month interim (e.g., between the 3.5 year due date and the 4 year expiration date), the fee can still be paid with a $130 surcharge. Once the patent expires, it can still be reinstated if the fee is paid along with an additional surcharge for either unavoidable failure to pay the fee ($700) or unintentional failure to pay the fee ($1,640). In addition, the Patent Office (PTO) must accept your explanation for the delay. Under 35 U.S.C. 41(c), revival for unintentional expiry is only available within two years of the expiration date. Later revival requires proof that the failure to pay the fee was unavoidable - a difficult standard to meet.

The PTO publishes reinstated patents each week in the Official Gazette. Using those publications, I compiled the following table showing the number of patents being reinstated each year. As the chart show, the number of reinstated patents has risen over time. The absolute number of issued patents is also rising, but at a slower rate. Thinking about this as an applicant's 'error rate' - for the past decade, about 2.5 percent of patents that expire due to non-payment of maintenance fees are later reinstated. This is an incredibly high error rate for a purely ministerial function of paying a fee.

I pulled Patent No. 6,798,824 from the list of reinstated patents that was published in the February 24, 2009 Official Gazette. That patent originally was assigned to InterDigital and is directed to a particular type of spread spectrum communications device. The patent issued on September 28, 2004 and expired four yeas later due to failure to pay the maintenance fees. Realizing its problem, the patent holder filed a petition to accept late payment of maintenance fees on December 19, 2008 and the petition was granted on January 30, 2009. (Note - the petition is not available in PAIR).

Note:

• Cite, Dennis Crouch, Reinstating Patents After Failure to Pay Maintenance Fee, Patently-O, http://www.patentlyo.com/patent/2009/02/reinstating-pat.html (Feb. 26, 2009). See also, Dennis Crouch, USPTO Maintenance Fees, Patently-O, http://www.patentlyo.com/patent/2009/02/uspto-maintenance-fees.html (Feb. 23, 2009); Dennis Crouch, Formalism at the Federal Circuit: Equitable Plea for Revival is Rejected, Patently-O, http://www.patentlyo.com/patent/2008/06/formalism-at-th.html (June 10, 2008) (discussing the Federal Circuit's decision in Burandt v. Dudas); Dennis Crouch, Unavoidable Delay: Ignorance as an Excuse?, Patently-O, http://www.patentlyo.com/patent/2007/08/unavoidable-del.html (Aug. 15, 2007) (discussing the FemSpec case where the DC district court refused to revive a patent - holding that the unavoidable delay standard has a due care element).

Congress Looks to Review Patent Examiner Goals

The current pending omnibus appropriations bill would provide $2.01 billion to the PTO so long as all of that money is obtained by the PTO through fees. [LINK]. As Greg Aharonian noted in his PATNEWS, none of the $800 billion bailout money is being directed toward improving the patent system.

The bill includes a statement that Congress will hold back $5 million until the PTO completes "a comprehensive review of the assumptions behind the patent examiner expectancy goals and adopt[s] a revised set of expectancy goals for patent examination."

Today, many examiners operate well over their expectancy goals — earning overtime bonus for extra work. If the time allowed is increased without increasing demands on the examiners, the result may simply be that Examiner #6 operates at 140% of his expected goal rather than 120%. I.e., more pay for the examiner without changing the examiner behavior at all. Now, I’m not opposed to increasing the examiner payscale, but if we are hoping to improve the system, any review of expectancy goals need to be coupled with a review of examination standards.

Patently-O Bits and Bytes No. 92

• New Commerce Secretary: Gary Locke. Former Washington State Governor, Partner at Davis Wright Tremaine. Gov. Locke is Chinese American and co-chairs the firm's China practice. He is also an Eagle Scout, a Yalie, and a Terrier.
• 
  USPTO Deferred Examination Comments Due February 26:
  
  
  • http://www.uspto.gov/main/homepagenews/2009feb09.htm
  • https://uspto.connectsolutions.com/p91717658/ (Watch the Roundtable discussion)
  
  
  
  
• 
  Cert Denied: The Supreme Court has denied certiorari in the following patent related cases.
  
  
  • Singleton v. Volkswagen (E.D. Texas Venue Case where 5^th Circuit ordered transfer).
  • Forest Labs v. Caraco (Declaratory Judgment standing).
  • FTC v. Rambus (Duties of a patent holder in standard setting negotiations).
  • Burandt v. Dudas (When is a failure to pay "unavoidable").
  • Apotex v. Roche (reverse doctrine of equivalents).
  
  
  
  
• 
  Judge Linn recently gave a Keynote address to the PTO examiner's corps. [Read it here]. Judge Linn started as a patent examiner in 1965. The following are some quotes from the full speech:
  
  
  • "Your job is much harder now than it was for me all those years ago. The technology of today's inventions is immensely more complex than ever before. The length and breadth of applications is greater. The volume of prior art is much larger. The legal issues are more intricate and harder to comprehend. And the law is in a continual state of change. Compounding all of this is the perception among some individuals that the work of the PTO in general, and the examiners in particular, is somehow of secondary importance and questionable quality. It is commonly said that the real action in patents is in private or corporate practice."
  • "Your job is to grant patents—valid patents. And that takes a combination of skills, reasoning and informed judgment. The Examiner's task is to assess the patentable merits of each invention, as presented, and to grant patents where patents are due. No applicant wants an invalid patent. Similarly, no examiner wants to grant an invalid patent. Thus, both the applicant and the examiner play parallel and complementary—not contradictory— roles in seeing to it that valid patents are issued."
  • "[R]eading legal decisions, particularly those of the Board and the Federal Circuit, is not only the best way to learn how to make the tough decisions you are regularly called upon to make, but also the best way to make your job easier and more enjoyable. You might ask, "why should I bother to read decisions of the Board and the Federal Circuit? After all, I have all the guidance I need in the MPEP, and I don't have time to spend reading other cases that have nothing to do with me." The answer is that the cases bring to life the statutes and rules you are required to apply and give you real world examples of how those statutes and rules apply in similar cases. The MPEP has some guidelines, but they are just a sampling and cannot possibly reflect the full range of claims and circumstances you face every day. Keeping up with the law by reading decisions of the Board and the Federal Circuit will allow you to master your craft and will result in your standing out from your peers."
  • "The last point I want to make is to not forget about §112. … [I]t is not correct to trivialize or ignore these kinds of Informalities [such as claims that are vague and indefinite or lacking in support in the written description]. Indeed, these kinds of problems affect not only the applicant but the public as well in a significant way. … In case after case before my court, the central debate revolves around the meaning of claims terms that, for example, were added during prosecution and do not appear anywhere in the written description. For those cases, the meaning of the claim limitation has to be inferred from other words, leaving the issue open to unnecessary dispute and leading frequently to protracted and costly litigation. You have the authority and the responsibility to not let that happen and to insist that applicants use words in the claims that find unambiguous and full support in the written description."
  
  
  
  

References Cited

I compiled a list of the over five hundred thousand reference citations in the almost eighteen thousand utility patents issued in the past two months. (Jan 1, 2009 – Feb 18, 2009, excluding reissues and reexaminations). In this sample, the average patent issued with 31 cited references. This is a skewed average – the median patent only cites 15 references. The vast majority of references (77%) are introduced by the applicant during prosecution while less than a quarter (23%) are cited by the examiner.

Patent documents (including US & foreign issued patents and published applications) represent 82% of the cited documents while non-patent literature represents 18% of the total. As was noted in the comments regarding PTO search tools, PTO searches are overwhelmingly focused on patent documents. Thus, 95% of references cited by PTO examiners are patent documents. (See pie chart aside).

Although – on average – applicants submit most of the prior art, Applicants submitted absolutely no references (zero) 15% of the patents in my study, and the median number of references cited by the applicant is only 7. Applicants cite over 200 references in only 2% of cases. The PTO's stalled IDS rules give the applicant 20 'free' references that can be cited without payment of a fee or further description. About 23% of the issued patents in my sample include more than 20 references cited by the applicant. The chart below is a histogram of applicant submitted references. About 12% of patents are "off the chart." In those cases the applicant cited more than 40 references.

Take-away: First, the data shows that applicant submitted references are substantially different from those cited by examiners. Non-patent literature is an important category of prior art that is largely missed by examiners, and the current information disclosure system does a pretty good job of getting more of that type of art in front of the examiner than he or she would otherwise see. A second point is that most of the time, examiners are not being swamped by reference submissions. It is surprising that 15% of patented cases include absolutely no applicant cited references. On the other hand, folks who submit over 200 references are deliberately choosing to do so. Generally, the very large reference volume comes in cases where the applicant knows that the innovation is important and is looking for more assured protection. In those cases, I don't see the harm in making the applicant somehow pay for the additional resources required to review those references. [Of course, in that case, the PTO should allow more examination time as well]

The next graph shows the average number of applicant-cited references for various top-patenting companies. The size of the blue bar reflects the number of applicant cited reference on average, for that assignee's Jan-Feb 2009 patents. (Scale at bottom). The graph is sorted so that companies with the greatest average number of cites are shown at the top. Although this is not strictly true, the difference between companies is largely a difference in areas of technology. Thus, companies patenting electronics generally cite less prior art than others. You may also notice in this list that US based companies tend to cite more prior art. The final chart in the series shows that – on average, US assignees submit over three times as many prior art references as do their foreign counterparts or patents without an assignee.

Percent of Patents Discussing “Microsoft,” part II

In an earlier post, I introduced some data relating to patents that discuss Microsoft somewhere in the patent document. That post showed that almost 5% of newly issued patents refer to the software giant in some way. That data also showed a strong upward trend over time. The post received a few interesting comments as well as a few suggestions. [LINK] In response, I have added some additional data to the graphs. The first graph below shows the percent of patents that discuss Microsoft (in blue) and now also includes the percent of patents that are assigned to Microsoft (in red). Several years ago, Microsoft publicized their intention to obtain a large number of patents. That intention is becoming a reality, and Microsoft recently obtained its 10,000^th patent. However, only about 20% of patents that discuss Microsoft are actually assigned to the company.

The next graph compares the patents discussing "Microsoft" with other products/companies. Here, I include patents that discuss "Microsoft" (blue), "UNIX" (green), "LINUX" (red), and "Apple" (tan). UNIX has seen some growth, but not much since the mid 1990's. In the past couple of years, the number of LINUX patents have grown dramatically, but still pale in comparison to Microsoft patents. Although the absolute numbers for LINUX related patents are still small, they are surprisingly high based on the anti-patent lore of LINUX developers. Apple has remained steady over the years. Of course, my results for Apple should be tempered by the false positive results that actually refer to the fruit rather than the computer company or its products.

An issue in all these graphs is time lag. The time lag of issued patents may be easily seen by searching for patents that discuss "Google." – The result is only 1342 patents but 4682 published applications.

No No Words: What Words do you Avoid in Patent Applications

I'm planning to do a quick study of "no no words" in patent applications and how their use has changed over time. Examples include "objects of the invention," the "present invention," "must," "prior art," "limitation," ...

Are there other phrases or words that I should include in the study?

Ron Slusky: Five Prescriptions for Broader Claims

Ron Slusky is back with more insight from his 2007 book Invention Analysis and Claiming: A Patent Lawyer's Guide (ABA). This fall, Slusky will be hosting a series of two-day claim drafting seminars. See www.sluskyseminars.com. The following are five of Slusky's "Prescriptions for Drafting Broader Claims."

1. Define, Don't Explain

Patent attorneys love to explain things. This is a valuable trait when writing the specification. But it can get in the way when drafting claims. It is hard to resist the urge to liven up a claim's dull litany of elements by explaining that the claimed subject matter is an automobile floor mat; or an optical system with improved output efficiency...That urge to explain must be resisted nonetheless.

A claim's function is to define the boundaries of the parcel of intellectual property being sought—not to explain or to help readers to understand something. An explanatory-type limitation may seem harmless enough, but every extra word in a claim is a potential loophole for infringers to exploit.

Limitations should be suspected of explaining rather than defining if they recite:

• The advantage of the invention or what it is "good for;"
• How the recited combination can integrate with the external environment;
• Motivations (e.g., for doing a particular step or including a particular element);
• How to carry out a recited function where the recitation of the function itself imbues the claim with patentability;
• How inputs get generated;
• The source of something that the claimed method or apparatus works on.

A limitation that meets any of these criteria should be scrutinized as a candidate for deletion. If the claim distinguishes over the prior art without the limitation, the claim is probably well rid of it.

2. Scrutinize Every Modifier

Beware the insidious modifier, particularly adjectives. Most of them are unnecessary in a broad claim, serving to explain rather than to define. Each modifier in a claim should be scrutinized to see if the claim will support patentability without it.

Here are some examples: automobile floor mat; very-large-scale integration; high-resolution filter; decoding a transmitted video signal by…; rapidly removable label; block copolymer. (As to the latter, see Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866 (Fed. Cir. 1998) (affirmed summary judgment of non-infringement).)

Another potential problem with certain modifiers is their potential for being declared indefinite. The terms "very-large-scale," "high-resolution" and "rapidly" in the above examples are problematic in this sense.

3. Assume That Input Signals and Data/Parameter Values Are Already In Hand—Don't Generate Them in the Claim

A method or apparatus often operates on input signals and/or may use data values, parameters or counts of things. When claiming the broad invention, it is usually desirable to treat such things as already existing rather than explicitly generating them within the claim.

For example, suppose the invention is the idea of adjusting the output rate of a widget-manufacturing process once the number of widgets produced within the previous hour reaches a certain limit. The invention could be defined in two steps—a counting step and an adjusting step:

1. A method for use in a machine that manufactures widgets, the method comprising counting the number of widgets manufactured in an hour's time, and adjusting the output rate of said machine when the count reaches a predefined limit.

However, it is irrelevant to the inventive concept how the number of widgets manufactured in an hour is determined. Indeed, the potential infringer might use the cumulative weight of an hour's output to determine how many widgets were produced and, in so doing, avoid a literal infringement of this claim

By assuming that the widget count is already known—handed to us by a genie, perhaps—and available to the adjusting step, the entire counting step can be eliminated:

2. A method for use in a machine that manufactures widgets, the method comprising adjusting the output rate of said machine when the number of widgets manufactured within an hour's time reaches a predefined limit.

4. Write the Claim Out of Your Head, Not Off the Drawing

Looking at the drawings is useful when intermediate- or narrow-scope claims are being drafted since such claims intentionally incorporate certain embodiment details.

However, the drawings may interfere with the conceptual thinking that is so desirable when reaching for breadth. It is all too easy for the drawings to draw our attention away from the abstract, exposing us to the siren song of the embodiment and its tangible details—details that can unduly narrow a claim.

It is much harder to be attracted to embodiment details when they are not staring up at us from the drawing. Thus the broadest claims should be written directly out of the claim drafter's head. The mind's eye should be able to so clearly see those few functionalities and interrelationships that define the broad invention as to make it unnecessary to look at the drawings.

If we find ourselves unable to write the claim with the drawings put away, it may be time to stop and re-engage the invention conceptually, returning to the claim drafting only when a crystal-clear answer to the question What is the Invention? is fully in hand.

5. Strive for Simplicity

Simplicity is a key to clarity. Convoluted interrelationships or claim language that is difficult to read through can signal that the invention has not been captured at its essence. Often buried in such a claim are ambiguities or unduly limiting recitations that aren't necessary to the invention.

The architectural philosophy of form follows function applies here. A claim whose form is clean and simple is more likely to serve the function of defining the invention cleanly and simply (read "broadly"). The hallmark of a well written claim is one that an inventor can understand without a lot of attorney explanation.

Once it becomes apparent that a claim-in-progress is evolving into an awkward mess, it is best to stop and rethink the approach. Often the culprit is that the limitations are introduced in a less-than-optimal order. Indeed, limitations that had seemed so necessary may fall away completely once the claim elements are rearranged. Or certain limitations in the preamble might be better put into the body of the claim or vice versa.

There is little point in fighting a recalcitrant claim. Better to look for some underlying assumption about the claim structure that is getting in the way and to start over. It can be hard to put on the brakes and abandon a claim in which a lot of time has already been invested. It's good, then, to stay alert to the possibility that things are beginning to deteriorate and to regroup sooner rather than later.

Copyright © 2007-2008 American Bar Association. All rights reserved. Adapted with permission.

 

Evidence Based Prosecution: More Claims Filed Equates with Longer Time in Prosecution

I am looking generally at how the contents of a patent application may impact the prosecution process. In this study, I looked at a sample of 50,000 original patent applications (excluding continuations) that have issued as patents in the past few years. This first graph shows the average time in prosecution (filing to issue) as a function of the total number of claims in the original patent application. The result is that the claim count positively correlates with time in prosecution. This correlation is strongest when the claim count is less than 30. As an example, patent applications with 30 claims took about 33% longer to issue than those with only 2 claims. The correlation makes sense: more claims would generally mean more work for the PTO to reject each claim, and more work for the applicant to respond in kind.

The second graph shows a similar pattern for independent claims.

Patently-O Bits and Bytes

• Bilski is coming (OCTOBER LIKELY)
  • Chief Judge Michel is quoted: "One of the most important cases pending with the [Federal Circuit] today is In re Bilski…. 'It's a very interesting case and I thought all the judges worked very hard on it,' says [Chief Judge] Michel. He adds: 'I think it will be a very significant decision. It probably will have broader scope than either In re Comiskey or In re Nuijten"
• FEES: I'm looking for the PTO fee schedule (filing fees, exra claim fees, extension fees, appeal fees, etc.) for the past decade.
• PTO Allowance Rate – depends on whether the PTO counts an RCE as an abandoned application. (which it should not…). The chart below is from a presentation by the PTO's General Counsel James Toupin. Greg A posted a link to the whole file: www.bustpatents.com/toupin.pdf.

Examination Query: Parallel Examination

Lots of times, examiners look at cases in parallel – especially when two cases are filed around the same time by the same applicant and cover similar inventions. The two patents will often issue on the same date with consecutive patent numbers. Are there any special rules, procedures, or counts that apply to this type of parallel examination?

Evidence Based Prosecution: Why are Deadlines Driving Response Timing?

• I have compiled some data on the timing of initial non-final office action and the ensuing response for 400,000+ patents with patent numbers ranging from 5,800,000 – 7,100,000.  The graphs below show that office action responses are strongly deadline driven. About 60% of responses are filed by the initial three month deadline. However, 2/3 of those early responses are filed within only a couple days of the three month deadline. Similar "rushes" are seen to meet the four, five, and finally the six month date.

PTO Fees are the explanation for the deadline push. Missing the initial three month deadline requires payment of a  $120 fee – not a steep fine – but something that some clients are now refusing to pay. Subsequent monthly surcharges rise more dramatically: first $460 then $1050.  For clients on more of a fixed prosecution budget, attorneys would rather money go toward their fees rather than to the PTO.  Of course, the six month date has the significant legal ramification of abandonment.

The  immediacy of the deadlines hides an important fact in today's prosecution: Each day of by the practitioner results in one less day that the patent is in force.  The fact that very few responses come quickly (apart from the deadline) indicates a latent demand for delayed prosecution — It seems that most clients do not care whether the patent issues now or six-months from now. Why not eliminate these deadlines or push them back considerably? Applicants with important or easily patentable inventions would continue to respond quickly.  Those who could care less or who need time to build a patenability case could wait. 

Now, there are several reasons to strive for compact prosecution timing. Perhaps most importantly is the notion that both the applicant and examiner will work better and more efficiently if they have seen the case recently.  The tradeoff, however, is that applications sit much longer awaiting initial consideration.

A note about the data below: Responses that appear below to be just after a three, four, five, or six month deadline are typically 'on time.' My measurement is from the date the OA is entered in PAIR to the date the response is entered in PAIR (not the mailing dates). This typically adds an extra week or so.

Notes:

• Jeff Steck, a patent attorney at MBHB LLP, examined the small 'ripple' in the histogram and explains that it can be explained by the fact that (most) OA's are sent out on weekdays and responses are received on weekdays. This 'weekend effect' causes the ripple overlay. My original postulation that the ripple is caused by the PTO's bi-weekly counts is not sufficient since the ripple clearly has a one-week wavelength.

Outsourcing of Patent Preparation: PTO Says Beware

In a recent notice, the PTO has indicated that it may be illegal to outsource invention information to a foreign county for the purposes preparing a US patent application.

1. A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.
2. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.

LISTING OF COMMONLY OWNED APPLICATIONS AND PATENTS UNDER 37 CFR 1.78(f)

In November 2007, 37 CFR 1.78(f) will become effective (along with a host of other rules).

Recently, the PTO made public its draft form SB206 for complying with rule 78(f).

The instructions for completing the form are as follows:

Notes

Under 37 CFR 1.78(f)(1), applicant in a nonprovisional application that has not been allowed (37 CFR 1.311) must identify by application number (i.e., series code and serial number) and patent number (if applicable) each other pending or patented nonprovisional application, in a separate paper, for which the following conditions are met:

• (A) The nonprovisional application has a filing date that is the same as or within two months of the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
• (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application; and
• (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application.

Under 37 CFR 1.78(f)(2)(i), a rebuttable presumption shall exist that a nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in another pending or patented nonprovisional application if the following conditions are met:

• (A) The nonprovisional application has a filing date that is the same as the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
• (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application;
• (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application; and
• (D) The nonprovisional application and the other pending or patented nonprovisional application contain substantial overlapping disclosure. Substantial overlapping disclosure exists if the other pending or patented nonprovisional application has written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the nonprovisional application.

Instructions:

1. In the column on the right, list the numbers of the applications and patents that meet the conditions set forth in 37 CFR 1.78(f)(1)(i). For supplemental lists, please do not list previously submitted applications and patents.
2. In the first column on the left, place a check mark in the box if the cited application or patent also meets the conditions set forth in CFR 1.78(f)(2)(i) and applicant attached an explanation of how the application contains only claims that are patentably distinct from the claims in the cited application or patent.
3. Place a check mark in the box in the second column on the left, if the cited application or patent also meets the conditions set forth in CFR 1.78(f)(2)(i) and applicant attached a terminal disclaimer in accordance with 37 CFR 1.321(c).
4. Place a check mark in the box in the third column on the left, if applicant also attached an explanation why there are two or more pending nonprovisional applications containing patentably indistinct claims. See 37 CFR 1.78(f)(2)(ii)(B).

How long does a BPAI appeal take?

In the first two weeks of September 2007, the Board of Patent Appeals and Interferences released over one hundred opinions. I looked at the file wrapper histories of thirty of these recent BPAI decisions to get some picture of the timing of BPAI appeals.

On average it took just under 18 months (542 days) from the filing of the appeal brief until a decision was reached by the BPAI.  The mean hides a wide range of delay: From a minimum of 9 1/2 months to a maximum of 44 months. (Standard Deviation 255). 

Most of the time delay is not attributable directly to the BPAI. Rather, most of the delay occurs between the date that the appeal is filed and the date that the case is submitted to the BPAI.  On average, it took about 11 months (328 days) to ‘complete briefing.’ Typically, that time period involves the applicant’s brief; followed by an examiner’s answer; and finally a reply brief. Once the case is submitted to the BPAI, the average decision time was seven months (214 days).

If you win an appeal, the Examiner may reopen prosecution with an additional rejection, although the more common approach is to issue a notice of allowance.

Based on this information, you can advise clients that an appeal – pushed through to the end – takes an average of 18 months, but that there is a wide variance.  As I noted earlier in 2007, only fewer than of appeals are pushed-through to the end. [Link].  In many cases, Examiners withdraw rejections or applicants file RCE’s with new claims. These calculations also do not include time delays associated with BPAI rejections for improper appeal brief form. Instead, I only began counting once a ‘proper’ brief was filed. In an earlier study, I showed that approximately 25% of appeal briefs are rejected on procedural grounds as either defective or incomplete. [Link].

The prosecution history of a patent application typically includes at least two substantive rejections prior to the appeal brief. In this sample, the average application had been in process for over three years (39 months) before the appeal brief was filed. 

As with essentially every other area of patent law, we can expect that BPAI timing and results will vary by technology area.

Notes:

• Law Students: Work at the BPAI

USPTO Guidelines for Examination Support Documents (ESD)

New Rule 256 (37 CFR 1.256) allows patent applicants to submit more than five independent claims or twenty-five total claims in an application if supported by a proper examination support document (ESD) prior to the first Office Action. The USPTO has released a set of guidelines for ESD content. [LINK]

An ESD has five substantive sections:

• Preexam search statement;
• Listing of closest references;
• Identification of claim limitations found in references;
• Detailed explanation of patentability; and
• Showing where each limitation of each claim is supported in the specification.

The preexamination search statement must include searches directed to each limitation of each claim. Additionally, if the claims are amended to include further limitations, the search statement must then be updated. It is advisable to hire a professional searcher to conduct the search. (Before hiring ensure they understand that the search must be fully documented.)

The office only wants a listing of the most closely related references. The best closest reference is the one that discloses the most claimed limitations. Other closest references will disclose a claimed limitation not shown in any other listed reference. References that do not meet this criteria may not be cited i the ESD, but rather must be submitted in an IDS.  If the applicant later discovers an even better reference, the ESD must be updated.

Small entities will not be required to file the identification of claim limitations.

 

Examiner's Oral Promise Does Not Bind PTO

In re Milton (Patent Petition 2007, App. No. 09/938,465)

During a telephone conversation, the Patent Examiner stated that a replacement office action would be forthcoming. Relying on that statement, the applicant did not respond to the already pending office action. Unfortunately, the Examiner did not issue the new office action and the case went abandoned.

37 C.F.R. 1.2 makes clear that an applicant should not rely on any oral promise from a patent Examiner. Applying this rule, the director of petitions rejected Milton’s petition for revival.

The oral promise could have immediately been memorialized in an interview summary — something that was not done in this case until after the abandonment.

At the time of Petitioner's reliance, the understanding was a mere oral promise. This section of the C.F.R. expressly prohibits Petitioner's reliance on the oral understanding, and withdrawal of the holding of the abandonment based on an action which is in contravention to a regulation would be improper.

Petition denied.

Notes:

• Thanks to Hal Wegner for providing information on this case.
• The real party here is HP.

Extending Liebel-Flarsheim: "distinctly different" embodiment of claim elements must be enabled

Automotive Technologies International v. BMW, et al. (Fed. Cir. 2007).

ATI’s patent claims are directed to an automotive side impact crash sensor used to trigger an airbag and include the following means-plus-function limitation:

“means responsive to the motion of said mass upon acceleration of said housing in excess of a predetermined threshold value, for initiating an occupant protection apparatus”

Following ATI’s suggestion, the district court construed the means limitation to include both mechanical and electronic sensor structures. Then, based on this interpretation, the district court ruled the patent invalid for lack of enablement. (summary judgment).  

On appeal, the CAFC affirmed the ruling — finding that the specification did not enable the full scope of the claimed invention.

The specification describes the mechanical sensor in detail with multiple figures. The electronic sensor, however, is only shown in a sparse “conceptual” Figure 11 (see image at right) and described in broad terms as potentially operating “through variety of technologies using, for example, optics, resistance change, capacitance change or magnetic reluctance change.”

Enabling One Embodiment Is Insufficient: Following on the heels of Liebel-Flarsheim v. Medrad, this case reaffirms the principle that the full scope of a claim must be enabled. Enablement of a single embodiment is not sufficient. Thus, the patent’s enablement of one mode of practicing the invention (the mechanical sensor) was not sufficient to satisfy the enablement requirement.

Looking back, Liebel-Flarsheim discussed “full scope” enablement as being “at least reasonable enablement of the scope of the [claim] range.” Here, the CAFC further defines that principle by noting that electronic sensors must be particularly enabled because they are “distinctly different” from the enabled mechanical sensor.

Novel Aspects Must Be Enabled: ATI also argued that Figure 11 and its accompanying text were enabling — especially when coupled with the knowledge of one having ordinary skill in the art. This argument was rejected based on the CAFC’s combined measure of law and fact. As a matter of law, enablement of the novel aspects of an invention must be enabled by the specification even if implementation would have been within the PHOSITA’s skill level. As a matter of fact, the CAFC concluded that sensor mechanism must be a novel aspect based on statements in the specification that side impact sensing is a “new field” and that the only available side-impact switch was a crush sensor.

Notes:

• Its unclear how the enablement doctrine will work in conjunction with the doctrine of equivalents.
• The summary judgment was reviewed de novo for clear and convincing evidence of non-enablement sufficient to overcome the patent’s presumption of validity.
• Disclaimer: My former firm, McDonnell Boehnen Hulbert & Berghoff LLP, handled this appeal on behalf of the plaintiff. Although I have not worked on the case, MBHB took-over the case while I was of counsel last year.

CAFC: Patent Attorney Has No Right to Defend Himself Against Charges of Inequitable Conduct

Nisus Corp. v. Perma-Chink Sys. v. Michael Teschner (Fed. Cir. 2007).

Nisus Corp’s patent relates to a method of putting Boron in a tree to kill termites and prevent forest fires. After a bench trial, the patent was found unenforceable due to inequitable conduct.  Apparently, Nisus had failed to disclose material documents from a prior lawsuit involving closely related patents.  The court specifically mentioned Nisus’s former patent attorney, Michael Teschner, as one cause of the inequitable conduct.

Teschner sued to intervene in the case and clear his name, but the district court denied him the opportunity. On appeal, the CAFC likewise found Teschner without standing.

Appeal by Nonparty: Usually, a nonparty has no standing to appeal. However, an attorney that is formally reprimanded may appeal to the CAFC.  However, other (informal) “judicial criticisms of lawyers’ actions are not reviewable.”  The court’s comments regarding Teschner here do not rise to a formal reprimand, and thus offer no standing for appeal.

To allow appeals by attorneys, or others concerned about their professional or public reputations, merely because a court criticized them or characterized their conduct in an unfavorable way would invite an appeal by any nonparty who feels aggrieved by some critical statement made by the court in an opinion or from the bench. Treating such critical comments by a court as final decisions in collateral proceedings would not only stretch the concept of collateral proceedings into unrecognizable form, but would potentially result in a multiplicity of appeals from attorneys, witnesses, and others whose conduct may have been relevant to the court’s disposition of the case but who were not parties to the underlying dispute. Nor would it be appropriate to limit such appeals to attorneys, while forbidding others from appealing from critical court comments, as such a limitation would smack of special treatment for members of the bar and would be difficult to justify as a matter of principle.

Thus, a finding of inequitable conduct does not create any standing for an aggrieved prosecuting attorney to appeal.

Postscript: Mr. Teschner declined my offer for an interview, noting that the matter is still pending at the PTO. His lone statement is that he is “glad that the Federal Circuit found merit in [his] argument.”

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.

 

Accelerated Examination Success for Business Method Applicant

Although the procedure is expensive and full of potential pitfalls, applicants continue to use the PTO’s accelerated examination program. 

Some of the largest backlogs are found on the desks of examiners handling business method patent applications. Technology Center 3620 (e-commerce), for instance, is currently issuing first office actions on applications filed about four years ago.

Now, the first business method patent has issued under the accelerated examination program. U.S. Patent No. 7,251,621 – a “Method and apparatus for the home delivery of local retail e-commerce orders” – was filed on December 29, 2006 and issued July 31, 2007.  The applicant used a smart approach of first filing an original application; then filing a continuation application along with the request for accelerated examination.

According to reports that I have received, the PTO commonly rejects requests for accelerated examination based on deficient element-by-element analysis of the claims with reference to the cited prior art. (The original application has not yet been examined).

Many patent attorneys appear quite afraid of providing an element-by-element analysis of the submitted prior art. However, on examination of the ‘621 prosecution history, the analysis does not appear to significantly differ from what is commonly included in an office action response.

Notes & Documents

• Thanks to Aaron Feigelson for submitting this tidbit.
•  File Attachment: Accelerated Exam Petition (1MB) (Original) (corrected was also filed…)
• Find it on PAIR

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.

USPTO Issues Preliminary Obviousness Examination Instructions

In the wake of KSR v. Teleflec, Deputy Commissioner Peggy Focarino has submitted a memorandum to the technology center directors with preliminary examination guidance.  The memo includes marching orders requiring that examiners continue to provide "reasons" for combining prior art in an obviousness rejection.

[I]n formulating a rejection under 35 U.S.C. 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.

In submitting the memo, Deputy Commissioner Focarino noted that the Supreme Court's opinion requires explicit discussion:

To facilitate review, [the apparent reasons for combining prior art] should be made explicit.

In addition, the memo reminds us of the basics of Graham v. John Deere:

1. determining the scope and contents of the prior art;
2. ascertaining the differences between the prior art and the claims in issue;
3. resolving the level of ordinary skill in the pertinent art; and
4. evaluating evidence of secondary consideration.

• Download Focarino.pdf (Thanks to Hal Wegner and others for the memo).

Filing of Sequence Listings on EFS-Web Version 1.1

By Chris Singer, PhD

With the release of EFS-Web 1.1 on October 14, 2006, the USPTO has streamlined the filing of sequence listings for practitioners and patentees. The prior version of EFS-Web was limited because it allowed submission of files in .pdf format only and was not enabled to handle sequence listings, which are typically written as text files (.txt). The latest version of EFS-Web overcomes this limitation and allows practitioners to submit electronically files such as sequence listings, computer program listings, and mega tables. This eliminates the need to submit these types of files on supplemental electronic media (e.g., CD-R, 3.5" disk, etc.), which avoided fees relating to application size (currently $250 for large entities and $125 for small entities per 50 pages after the first 100).

According to sources at the USPTO Electronic Business Center, the requirements of Title 37 of the Code of Federal Regulations (37 C.F.R. §§ 1.52(e), 1.821-1.825) have been relaxed for sequence listings that are filed using EFS-Web 1.1. Specifically, filers need only submit a single .txt file containing the sequence listing and an amendment that incorporates the sequence listing into the specification. Practitioners no longer need to include the compliance statement under 37 C.F.R. § 1.821(f) or the paper copy of the sequence listing (or the duplicate copies of the sequence listing on CD-R in lieu of a paper copy) when filing sequence listings using EFS-Web. However, the USPTO recommends that filers include a statement that the content of the sequence listing does not extend beyond the original disclosure (i.e., does not contain new matter), either as a separate document, or as a part of the "Applicant arguments/remarks made in an Amendment" section of a response.

For the time being, the USPTO will also accept sequence listings filed through EFS-Web 1.1 in a .pdf format; however the practice is strongly discouraged, since the USPTO must convert such .pdf files to .txt files to accommodate the sequence listing in its database. As a result, filing sequence listings in .pdf format creates the possibility that conversion could introduce errors in the sequence that could compromise its capacity to be accurately processed and searched, and could even affect sufficiency of disclosure under 35 U.S.C. § 112.

NOTE: This USPTO News Update was written by Christopher Singer.  Chris has a PhD in bio-inorganic chemistry from Northwestern University and is a patent attorney at MBHB.

GO GO GO JOSEPH, Reject That Business Method

Professor Joshua Sarnoff of American University just directed me to a gem of a response by occasional Patently-O reader Dean Alderucci.  The Examiner rejected Walker Digital’s the pending claim 2 with the most ancient of references:

In Genesis, Chapter 41, we are told that Pharoah appointed Joseph to be his representative and instructed him to enter into contracts to purchase grain.  These contracts included an offer with an activity (supply grain) and a benefit (get paid for the grain). Payment was made upon delivery of the grain.  The story of Joseph is about 4,500 years old. . . . the principal/agent relationship is of immemorial antiquity.  It no doubt predates civilization itself. . . . Many of Applicant’s [other] claims could also be rejected using the same reference.

In response, Alderucci notes that the Examiner “has completely misinterpreted the most popular and analyzed book in all of human history. . . . [Nevertheless], the claims as pending have been carefully amended to steer clear of embracing of any of ancient practices of Joseph, the Pharoah, or the [ancient] Egyptians.” 

File Attachment: Bible Response.pdf (218 KB)

The application (10/212,636) is sitting on a response after final. Amended claim 2 reads as follows:

2. A method comprising:

  determining a recipient;
  determining an offer which includes an activity and a benefit;
  transmitting to a representative instructions to provide the offer to the recipient;
  determining whether the recipient has performed the activity; and
  providing the benefit to the recipient if the recipient has performed the activity, in which the recipient is a player at an electro-mechanical gaming device.

Evidence Based Prosecution: Non-Patent Prior Art Leads to Rejections

Quality patents depend upon our ability to find and examine prior art regardless of its form. Most prior art cited by the USPTO arrives in the form of patent-related references — most notably, issued U.S. patents, published patent applications, and foreign patent documents. We know, for instance, from Columbia Professor Bhaven Sampat that about 90% of cited non-patent prior-art references are provided by the applicant, and that only 10% are examiner references. Link.

In some technologies where patenting has a long and extensive tradition, the lack of non-patent prior art is not a serious problem.  In other areas such as software and biotechnology, non-patent references harbor most of the important prior art. 

Results: My new study of 100,000 recently issued patents reveals that patent that cited non-patent literature are significantly more likely to receive rejections from the PTO.  Specifically, patents citing at least one non-patent reference have a 39% greater chance of receiving a final rejection when compared with patents that issued without citing any non-patent references. Regarding non-final rejections, citing non-patent prior art increased the likelihood of receiving a rejection by 9%.

Accelerated Examination: PTO Training Session

The PTO has established an extensive set of new rules for accelerated examination and the associated petition to make special (PTMS).  The new rules require much more from the applicant, but also lead to “a final decision by the examiner within 12 months from the application filing date.”

On Thursday, November 2nd at 1:00 Chicago Time, the PTO will hold a one-hour live web-cast to provide information on the process and its “benefits.”

• Sign up for the webcast: here.
• More info on the new PTMS regime: here [patently-o] and here [USPTO].
• Russ Krajec will not be filing for accelerated examination: here.

USPTO Survey

The PTO is been conducting a quality survey of examination.  Here are some sample questions:

6. Consider all rejections you have received over the past 3 months. How often do you think the rejections made under the following statutes were reasonable in terms of being technically, legally, and logically sound with respect to:

35 U.S.C. 101 Rejections (Rarely - . . . - Always)
35 U.S.C. 102 Rejections (Rarely - . . . - Always)
35 U.S.C. 103 Rejections (Rarely - . . . - Always)
35 U.S.C.112 Rejections, P1 (Rarely - . . . - Always)
35 U.S.C. 112 Rejections, P2 (Rarely - . . . - Always)

7. In the past 3 months, how would you rate overall examination quality.

Very Poor    
Poor         
Fair         
Good         
Excellent 

10. What should the USPTO focus on to improve examination quality? Please be specific.

We will look forward to some interesting results. Since 103 is hot, lets do our own survey.

Create Free Polls

Evidence Based Prosecution IV: Business Method PAIR Entries

The entries of Public PAIR are riddled with errors and discrepancies. However, it is still true that more PAIR entries in a file usually indicates that there were more filings by the applicant and more resistance from the PTO.

The Data: The above graph compares data from a random sample of 7,000+ issued patents with patent numbers ranging from 6,000,000 to 6,999,999 (General Population) with issued patents from the same range that were examined within Art Unit 3600 (a sample of 954 patents). I counted the number of PAIR entries for each patent and used that data to calculate histogram information. Data-points represent range-buckets — e.g,. 0–4 PAIR entries, 5–9 PAIR entries, …

The Results: The prosecution histories of Business Method patents include significantly more entries.  [33.4 entries for average BM patents as opposed to 27.0 for average GP patents].

As I have discussed before, business method patents are slow to make it through the patent office.  One reason for the delay is a large queue in applications awaiting initial examination.  However, this data preliminarily confirms that another reason for delay in Business Method is that the PTO is putting up a relatively higher level of resistance. Anecdotally, this resistance is seen in the “second pair of eyes” review and harder fights on Section 101 issues. The PTO might counter that many business method patents are poorly drafted, thus making the process more difficult.

Notes:

• For the purposes of this study, Business Method Art Unit 3600 includes Art unit 3621–3629 and 3639.  [Pre-business method uses of 3600 were excluded].

Evidence Based Prosecution:

• Part I: Sensitivity to Claim Fee Structure;
• Part II: Counting Independent and Dependent Claims;
• Part III: Counting Published Applications;

CAFC Reverses Medrad Reissue Case

Medrad v. Tyco (Fed. Cir. 2006).

In October 2005, I discussed the district court case involving Medrad.  In that case, the district court held that a Section 251 Reissue can only be used to correct an error in the specification, drawings or claims and cannot be used to correct a procedural error that is not reflected in the patent grant itself. During prosecution, the patentee had filed a second reissue to correct a mistake made during the prosecution of the first reissue. (The patentee failed to file a supplemental reissue declaration in compliance with PTO Rule 1.175). The lower court found that correction of that mistake did not fall within the guidelines of Section 251.

On appeal the CAFC sided with the patentee by giving a broad meaning to the statutory phrase “[invalid] by reason of the patentee claiming more or less than he had a right to claim in the patent.” In particular, the unanimous appellate panel found that the phrase does not literally mean “claim more or less” but rather that the phrase “encompass[es] any error that causes a patentee to claim more or less than he had a right to claim.”  Thus, a reissue can apparently be filed based on any error that would result in invalid claims.

Notes:

• 35 USC 251 reads as follows:

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.