Monday, March 25, 2013

More First-to-File traps

After reviewing the article Welcome to First-to-File below, consider these additional fact patterns.

1.  You disclose your invention under a non-disclosure agreement to a potential investor.  Less than one year later, that investor writes an article describing something like your invention but adding more features.  You file a patent application after that article and within a year of your first disclosure.  As to the article published by the investor, it is not clear whether it falls under an exception to the prior art.  To fall within the exceptions, it has to be a disclosure by another who obtained the subject matter disclosed from a joint inventor.  In this case, there are elements in the article that were not obtained from the inventor.  There is an open issue as to whether this article falls within the exception to prior art, partially falls within the exception, or is outside the exception.  Expect to see litigation on this topic in the next few years.  In the meantime, file your patent applications promptly.

2.  Less than one year before you file your patent application, your co-inventor publicly discloses your invention as a poor man's provisional, to try to get a one year grace period before needing to file a patent application.  A competitor sees the publication and, before you file your patent application, sells a product embodying your invention.  The public disclosure by your co-inventor is an exception to the prior art under 35 U.S.C. 102(b)(1)(B).  But whether the sale by the competitor qualifies as a disclosure is unclear.  This is another issue for which litigation will be required before we know whether the activity by another, that is not under your control, will forever bar you from being able to obtain a patent.

Tuesday, March 19, 2013

Why AIA is a mistake

This is a good article discussing the history of patent law in the U.S. and discussing why the lobbyist-generated AIA legislation is bad for the country: http://www.hoover.org/publications/defining-ideas/article/142741

Saturday, March 16, 2013

Welcome to First-to-File

The new first-to-file system takes effect for patent applications filed today and thereafter.  If claiming priority to an application filed before today, take care not to add any new matter or you will be in the new system.

Applicants have been rushing to file under the old system that was more favorable to applicants.  I've had some rushes myself.  I suspect that the companies that spent small fortunes lobbying for these changes were some of the companies that were rushing to file under the old system.

The definition of prior art is expanded under the new system and can even include oral disclosures, as well as a lot more foreign prior art.  Here is the new 35 U.S.C. 102:

(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions.—
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

The definition of prior art has been changed to be measured from the effective filing date versus from the invention date.  The longer an applicant waits to file, the more potential prior art there will be.

In addition, things that were in public use or on sale in foreign countries have been added to the pool of prior art. Anything otherwise available to the public anywhere in the world is also added to the pool of prior art. This could include oral disclosures.

It will take the courts years to more clearly define some of these terms.  For example, it is unclear whether a secret sale would be considered to be prior art.   If a third party publishes something similar to but different from an inventor's publication, an expensive derivation proceeding may be required to prove the prior art disclosure was derived from the applicant’s claimed invention.

A U.S. patent or published U.S. or PCT application becomes available as prior art on date that the U.S. patent or published application is “effectively filed.”  The date that a U.S. patent or U.S. or PCT published application is “effectively filed” is the earlier of: (i) the actual filing date of the U.S. patent or U.S. or PCT published application; or (ii) the filing date of the earliest application to which the U.S. patent or U.S. or PCT published application is entitled to claim a right of foreign priority or domestic benefit which describes the subject matter.

A Japanese patent application publication has a prior art effect under AIA 35 U.S.C. 102(a)(1) as of its publication date. Prior art under 35 U.S.C. 102(a)(2), which becomes available as the basis for a rejection as of the date that it was “effectively filed,” is limited to U.S. patents, U.S patent application publications, and published PCT applications which designate the United States.

Interferences will no longer be required with the first-to-file system, but instead there will be "derivation proceedings."

A derivation proceeding requires that an applicant for patent file a petition to institute the proceeding.  The petition must set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner.  The petition must be made under oath and supported by substantial evidence.  The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.

It is best not rely on the supposed one year exception or grace period of part (b) and instead to maintain absolute novelty until after a patent application is filed.

Consider this fact pattern:  You make a new invention and start selling a product that embodies that invention.  Relying on the grace period, almost a year after you started selling, you ask your patent attorney to prepare and file a patent application for you.  The application is filed almost a year after your first sale.  However, 6 months after you starting selling your product, a competitor filed a patent application covering it.  You correctly suspect that they copied your idea.  However, their application gets cited against your application during prosecution.  What can you do when you receive this rejection?  Derivation proceeding you say?  The requirements for initiating a derivation proceeding include demonstrating that an invention was derived from an inventor named in the petitioner’s application and, without authorization, the earliest application claiming such invention was filed; and submission of substantial evidence, including at least one affidavit addressing communication of the derived invention and lack of authorization that, if unrebutted, would support a determination of derivation. The showing of communication must be corroborated.  What evidence do you have?   True, they are not an inventor and should not be able to obtain a valid patent, but will you be able to obtain a patent?

This is why I recommend not relying on the one year limited grace period.

Thursday, August 16, 2012

Office Patent Trial Practice Guide

On August 14, 2012, the Office Patent Trial Practice Guide was published by the U.S. Patent and Trademark Office. The Leahy-Smith America Invents Act (AIA) establishes several new trial proceedings to be conducted by the Patent Trial and Appeal Board (Board) including inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.

The guide can be found here:
http://www.uspto.gov/aia_implementation/trial_practice_guide.pdf

The practice guide applies to inter partes review, post-grant review, and covered business method patent review proceedings commencing on or after September 16, 2012, as well as derivation proceedings commencing on or after March 16, 2013

Rules are provided for motions to seal, procedures for filing supplemental information, standards and procedures for discovery, sanctions for improper use of the proceeding, entry of protective orders, and oral hearings.

Wednesday, August 15, 2012

Transitional Program for Covered Business Method Patents - Definitions of Covered Business Method Patent and Technological Invention

On August 14, 2012, changes to implement the Transitional Program for Covered Business Method Patents - Definitions of Covered Business Method Patent and Technological Invention provisions of the America Invents Act were published by the U.S. Patent and Trademark Office.

The rules can be found here:
http://www.uspto.gov/aia_implementation/covered_business_method_definition.pdf

The changes in this final rule take effect on September 16, 2012. The AIA provides that this provision and any regulations issued under the provision will be repealed on September 16, 2020, with respect to any new petitions under the transitional program.

This final rule sets forth the definitions of the terms “covered business method patent” and “technological invention” that the Office will use in conducting transitional covered business method patent review proceedings.

Section 42.301(a) adopts the definition for covered business method patents provided in section 18(d)(1) of the AIA. Specifically, the definition provides that a covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

Section 42.301(b) sets forth the definition for technological invention for covered business method patent review proceedings. The definition of technological invention provides that in determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods, the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution. The Office recognizes that, in prescribing a regulation to define technological invention, the Office must consider the efficient administration of the proceedings by the Office, and its ability to complete them timely, consistent with 35 U.S.C. 326(b).

Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions

On August 14, 2012, changes to implement the Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions provisions of the America Invents Act were published by the U.S. Patent and Trademark Office.

The rules can be found here:
http://www.uspto.gov/aia_implementation/general_trial_rules.pdf

The changes in this final rule take effect on September 16, 2012.

The final rule provides a consolidated set of rules relating to Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This final rule also provides a consolidated set of rules to implement the provisions of the AIA related to seeking judicial review of Board decisions. 

The final rule sets forth (1) the evidentiary standards, procedure, and default times for conducting trial proceedings; (2) the fees for requesting reviews; (3) the procedure for petition and motion practice; (4) the page limits for petitions, motions, oppositions, and replies; (5) the standards and procedures for discovery of relevant evidence, including the procedure for taking and compelling testimony; (6) the sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding; (7) the procedure for requesting oral hearings; (8) the procedure for requesting rehearing of decisions and filing appeals; (9) the procedure for requesting joinder; and (10) the procedure to make file records available to the public that include the procedures for motions to seal, protective orders for confidential information, and requests to treat settlement as business confidential information.

Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act

On August 14, 2012, changes to implement the supplemental examination provisions of the America Invents Act were published by the U.S. Patent and Trademark Office.

The rules can be found here:
http://www.uspto.gov/aia_implementation/Supp_Exam_Rules.pdf

The changes in this final rule take effect on September 16, 2012.

The supplemental examination provisions permit a patent owner to request supplemental examination of a patent.

A request for supplemental examination must contain: (1) a list of each item of information that is requested to be considered, reconsidered, or corrected; (2) an identification of each claim of the patent for which supplemental examination is requested; (3) a separate explanation of the relevance and manner of applying each item of information to each claim of the patent for which it was identified; and (4) a summary of the relevant portions of any submitted document, other than the request, that is over fifty pages in length.

The cost for filing a supplemental examination is $5,140 for the initial request plus $16,120 for the ex-parte re-examination fee. Both the initial request fee and the ex-parte re-examination fee must be paid at the time of initial request.  The $16,120 ex-parte re-examination fee will be refunded if no re-examination is ordered. The rules also finalize the increase in the fee for filing a request for ex-parte reexamination at $17,750, a much higher amount than before.

Changes to Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act

On August 14, 2012, changes to implement the inventor's oath or declaration provisions of the America Invents Act were published by the U.S. Patent and Trademark Office.

The rules can be found here:
http://www.uspto.gov/aia_implementation/InventorOath_Rules.pdf

The changes in this final rule take effect on September 16, 2012.

The changes provide a mechanism for assignees to file and prosecute a patent application as the applicant on behalf of the inventor.  In addition, juristic entities are required to use a registered patent agent or attorney to take action in a patent application.

35 U.S.C. 115(d)(2) provides that an applicant may provide a substitute statement where an inventor is unable to file  the oath or declaration where an individual is under an obligation to assign the invention but has refused to make the oath or declaration required.  Therefore, while an assignee may make an application for patent, an oath or declaration (or an assignment containing the required statements) by each inventor is still generally required.

Tuesday, July 31, 2012

End of the One Year Grace Period

Under current law, applicants are given a year to try to sell or commercialize their invention before they have to get a patent application on file. This is particularly of benefit to small inventors and startups who may want to see if there is any demand for their invention before they commit funds to the patent process.

Under the America Invents Act, strongly supported by Microsoft and IBM, the one year grace period will be much more limited. Inventors will have a one year grace period for their own disclosures, or disclosures of joint inventors. But what happens if someone else publishes something similar the next day? There is no grace period for that and patentability is barred. By the time the inventor learns about the publication, it is too late to file a patent application. Thus, inventors who file under the new system should assume that there is no grace period. They should file something before seeking venture capital or disclosing their invention.

The U.S. Patent and Trademark Office has published proposed rules relating to the new first-to-file system. Under the new rules, third party disclosures and patent applications are not prior art if the subject matter disclosed had previously been disclosed by the inventor.

In the proposed rules, only exactly identical third-party disclosures are precluded by the prior inventor disclosure exemption.

Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.

Thus, if an inventor discloses an invention and subsequently a third party independently discloses a trivial variation on January 2, the third party’s disclosure is not excluded from prior art. This renders the invention unpatentable as obvious.

Patent reform is likely to benefit larger multinational companies that have monopoly or near-monopoly positions, who don't need patents and are often accused of stealing other people's ideas, and will hurt the start-ups that create the jobs in this country. Patents have been the one tool to help Davids battle the Goliaths, but there are endless efforts underway to weaken the patent system.

The first-to-file rules should become effective March 16, 2013.

Wednesday, July 25, 2012

Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act

In the Federal Register of July 17, 2012, changes to implement the preissuance submissions by third party provisions of the America Invents Act were published by the U.S. Patent and Trademark Office.

The notice can be found here:
http://www.uspto.gov/aia_implementation/120707-preissuance_submission_fr.pdf

The changes in this final rule take effect on September 16, 2012. The final rule implements 35 U.S.C. 122(e) in a new rule 37 CFR 1.290. The provisions of 35 U.S.C. 122(e) and 37 CFR 1.290 apply to any patent application filed any date, even to applications filed before the provisions take effect.

The changes provide a mechanism for third parties to submit to the Office printed publications of potential relevance to the examination of a patent application.

A third-party preissuance submission must be filed in writing within a certain statutorily specified time period and include:
(1) a list identifying the items being submitted;
(2) a concise description of the relevance of each item listed;
(3) a legible copy of each non-U.S. patent document listed;
(4) an English language translation of any non-English language item listed:
(5) a statement by the party making the submission that the submission complies with the statute and the rule; and
(6) the required fee.

Any third-party submission must be filed prior to the earlier of:
(1) the date a Notice of Allowance under 37 CFR 1.311 is given or mailed in the application; or
(2) the later of:
(i) six months after the date on which the application is first published, or
(ii) the date the first rejection of any claim by the examiner is given or mailed.

This will mean that, in many cases, the third-party submission cannot be filed until a first office action is issued.

Information on prior public use may continue to be submitted by third parties via a protest under 37 CFR 1.291.

A web-based interface has been developed to permit third party submissions under new 37 CFR 1.290 to be filed electronically.

Friday, September 16, 2011

First to File Patent Reform Act Signed September 16, 2011

Today, September 16, 2011, President Obama signed the "America Invents" Act into law. Among other things, this will change the United States from a "first to invent" patent system to a "first to file" patent system.

Changes to the definition of prior art and new post-grant review proceedings will not take effect for 18 months (March 16, 2011). The first-to-file provisions and changes to the grace period go into effect then. The one year grace period has been substantially eliminated except that certain disclosures made by the inventor will not be considered to be prior art if they were made a year or less before the patent application filing date. Of course, such disclosures may well result in a loss of ability to file valid foreign applications so inventors should plan to maintain secrecy until a patent application is filed, and should not rely on having a one year grace period in which to attempt to market their invention.

Some other changes take effect immediately. Other changes take effect in a year. Others take effect at other times.

A section-by-section summary is as follows:

Under Section 4, a person to whom an inventor has assigned (or is under an obligation to assign) an invention can make an application for patent. Assignees will now be able to sign Declarations where inventors refuse to sign, are deceased, or cannot be found. These provisions take effect in one year.

Section 5 changes the prior commercial use defense for business method patents. Section 5 is effective now, on the date of enactment.

Section 6 provides a variety of post-grant review procedures including inter-partes review and post-grant review petitions. A petition for a post-grant review may not be filed more than 9 months after the date of the grant of the patent or of the issuance of a reissue patent. A petition for inter partes review must be filed after the later of either--(1) the date that is 9 months after the grant of a patent or issuance of a reissue of a patent; or (2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review. These provisions take effect in one year.

Section 7 sets for the composition and duties of the Patent Trial and Appeal Board.

Section 8 allows any third party to submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before a certain deadline. These provisions take effect in one year.

Section 10 authorizes the Director, for a seven-year period and subject to conditions, to set or adjust fees charged by the USPTO under specified federal patent and trademark laws. Section 10 also specifies that fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents shall be reduced by 50 percent with respect to small entities, and shall be reduced by 75 percent with respect to any "micro entity."

A micro entity is defined as an applicant who makes a certification that the applicant--
(1) qualifies as a small entity, as defined in regulations issued by the Director;
(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid;
(3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
(4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
Section 10 also requires an additional fee of $400 for each application for an original patent, except for a design, plant, or provisional application, that is not filed by electronic means. Section 10 takes effect on enactment.

Section 11 sets forth new government fees. Section 11 also establishes a fee of $4800 for prioritized examination, and establishes a 15% surcharge for specified fees to be credited to the U.S. Patent and Trademark Appropriation Account, remain available until expended, and used only for specified expenses relating to patent applications. Section 11 takes effect on enactment (September 16, 2011).

Section 12 provides for supplemental examination. A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability. Section 12 takes effect in one year.

Section 13 decreases the percentage of certain invention-related royalties and income that must be paid to the federal government and increases the percentage that must be given to small business firms when a nonprofit organization has a funding agreement with the government for the operation of a government-owned, contractor-operated facility. Section 13 takes effect on enactment.

Section 14 deems tax strategies to be within the prior art (unpatentable). Any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. Section 14 takes effect on enactment (September 16, 2011).

Section 15 prohibits using a failure to disclose the best mode as a basis to invalidate patent claims. Section 15 takes effect on enactment (September 16, 2011).

Section 17 prevents using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced.

Section 18 requires the Director to establish an eight-year transitional post-grant review proceeding for reviewing the validity of covered business-method patents not later than one year after enactment.

Section 19 amends federal judicial code to state that no State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. Section 19 grants the Federal Circuit exclusive jurisdiction of appeals relating to patents or plant variety protection. Section 19 applies to any civil action commenced on or after the date of the enactment of this Act (September 16, 2011).

Section 20 makes various minor technical amendments.

Section 21 authorizes the U.S. Patent and Trademark Office to pay subsistence and travel-related expenses of persons attending certain USPTO-conducted intellectual property programs who are not federal employees. It also authorizes the Director to fix a basic pay rate below a certain level for administrative patent and trademark judges. Section 21 is effective October 1, 2011.

Section 22 establishes in the Treasury a Patent and Trademark Fee Reserve Fund. If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund. The amendments made by this section shall take effect on October 1, 2011.

Section 23 states that the Director shall, not later than three years after enactment, establish at least three U.S. satellite offices for the U.S. Patent and Trademark Office.

Section 24 states that the satellite office of the United States Patent and Trademark Office to be located in Detroit, Michigan, shall be known and designated as the ‘Elijah J. McCoy United States Patent and Trademark Office’

Section 25 Authorizes the USPTO to establish regulations providing, at the request of the applicant, prioritized examination of applications for products, processes, or technologies important to the economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.

Section 26 requires the Director to make a study on the manner in which this Act and the amendments made by this Act are being implemented by the Office, and to make a report to Congress within four years after enactment.

Section 27 requires the Director to conduct a study on effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist.

Section 28 requires the Director to establish and maintain in the Office a Patent Ombudsman Program. The duties of the Program’s staff shall include providing support and services relating to patent filings to small business concerns and independent inventors.

Section 29 requires the Director sto, not later than the end of the 6-month period beginning on the date of the enactment of this Act, establish methods for studying the diversity of patent applicants, including those applicants who are minorities, women, or veterans. The Director shall not use the results of such study to provide any preferential treatment to patent applicants.

Section 30 states that it is the sense of Congress that the patent system should promote industries to continue to develop new technologies that spur growth and create jobs across the country which includes protecting the rights of small businesses and inventors from predatory behavior that could result in the cutting off of innovation. Apparently, lobbying by large companies to push through patent reform is not considered predatory behavior.

Section 31 requires the Director to, in consultation with the Secretary of Commerce and the Administrator of the Small Business Administration, carry out a study
to determine how the Office, in coordination with other Federal departments and agencies, can best help small businesses with international patent protection.

Section 32 requires the Director to work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.

Section 33 states that notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

Section 34 directs the Comptroller General to conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims.

Section 35 states that except as otherwise provided in this Act, the provisions of this Act shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued on or after that effective date.

Section 37 sets forth a provision concerning calculation of the filing period for patent extension applications related to drug products and certain other items subject to regulation under the Federal Food, Drug, and Cosmetic Act.

Many changes will be subject to implementation rules drafted by the U.S. Patent and Trademark Office. These rules have not yet been written.

Friday, December 24, 2010

Pilot Program to Extend Provisional Patent Applications One Year

There is a new pilot program by the U.S. Patent and Trademark Office that is being described as a way to extend provisional patent applications for a year, to allow extra time for marketing and commercialization.

This pilot missing parts program described in the Federal Register on December 8, 2010:

http://edocket.access.gpo.gov/2010/pdf/2010-30822.pdf


I strongly recommend that any applicant considering this method use caution. The applicant will have to file a non-provisional application in condition for publication and including at least one claim, a declaration, and basic filing fee. The applicant will still have to make foreign filing decisions within a year of filing of the first provisional application.

To avoid a risk of invalidity and unenforceability, this non-provisional, "missing parts," application should be written by an attorney.

If an applicant files a do-it-yourself application as part of this program, and later decide to pay the rest of the fees (search and publication fees), there is a strong risk of having problems with the application. The problems will be part of the file history and may result in invalidity of any resulting patent (i.e., may be impossible to fix).

Of course I always recommend that any provisional application be drafted as if it were a regular application to reduce risks of invalidity and unenforceability.

Monday, June 28, 2010

Bilski Supreme Court Decision

The Bilski Supreme Court Decision is out. The invalidity of claims to a method of hedging were affirmed. The Supreme Court declined to generally invalidate software patents and instead held that the Federal Circuit's Machine-or-Transformation test is not the exclusive test to determining if a method is statutory.

Tuesday, July 7, 2009

July 2009 Rule on Amending PCT Applications Revised

In a Federal Register notice on July 1, 2009, the U.S. Patent and Trademark Office announced a revision to PCT procedures to conform U.S. patent rules to changes in PCT practice.

Under the PCT, applicants are required to submit replacement pages for only those pages which contain changes. The revision of PCT rules requires applicants to submit a complete set of the claims when amending any of the claims. 37 CFR §1.485 is amended as well to conform to the PCT changes. The changes to 37 CFR 1.485 are effective on July 1, 2009, and apply to any amendment filed in an international application on or after that date regardless of the filing date of the international application.

The Federal Register Notice can be found here:
http://edocket.access.gpo.gov/2009/pdf/E9-15303.pdf

Saturday, December 6, 2008

2008 Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals

On June 10, 2008, the USPTO issued new Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals.

The notice can be found here:
http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf
The effective date of these rules was to be December 10, 2008, however:

The effective date for the final rule published at 73 FR 32938, June 10, 2008, is delayed, pending completion of OMB review of the proposed information collection under the PRA. The Office will issue a subsequent notice identifying a revised effective date on which the final rule shall apply.

The final rules recognize that the Board is experiencing a rapid increase in ex parte appeals. This is no surprise considering that allowance rates are at record lows.

Assuming that the new rules eventually do go into effect, practitioners contemplating filing appeals under the new rules should consider the increased estoppel risk, which will become apparent after reviewing the summary below.

The amended rules make clear that the Board is not a tribunal for de novo examination. A stated objective of the amended rules is to avoid unnecessary returns to examiners by the Appeals Center and the Board.

A 30 page limit to appeal briefs is being imposed. The amended rules also require a `statement of facts' section where the appellant is required to set out the material facts relevant to the rejections on appeal.

The amended rules require an `argument' section where an appellant shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees and must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner.

The rules also allow for sanctions which may be imposed against an appellant for failure to comply with an applicable rule.

A detailed discussion follows. Skip to the discussion of 41.37, below, if you are only interested in how to prepare an appeal brief.

Bd.R 41.31(a) provides that the following language would be acceptable to take an appeal: 'An appeal is taken from the decision of the examiner mailed [specify date appealed rejection was mailed].' Papers filed in connection with an appeal, including the notice of appeal, need to be signed.

An applicant or patent owner dissatisfied with a decision of an examiner on a non-appealable issue is required to seek review by petition before an appeal is considered on the merits.
Bd.R. 41.31(e) defines a `non-appealable issue' as an issue that is not subject to an appeal under 35 U.S.C. 134. Non-appealable issues are issues (1) over which the Board does not exercise authority in appeal proceedings and (2) which are handled by a petition. Non-appealable issues include such matters as an examiner's refusal to (1) enter a response to a final rejection, (2) enter evidence presented after a final rejection, (3) enter an appeal brief or a reply brief, or (4) withdraw a restriction requirement. The rules contemplate that some petitions relating to non-appealable issues are to be decided by the Chief Administrative Patent Judge. Some of those non-appealable issues include: (1) A petition to exceed the page limit and (2) a petition to extend the time for filing a paper in the appeal after the filing of the appeal brief. Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered. For example, Rule 1.181(f) provides that any petition under Rule 181 not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely. The Office intends to strictly enforce the waiver provisions of Bd.R. 41.31(e). While the Office will retain discretion to excuse a failure to timely settle non-appealable issues, it is expected that exercise of that discretion will be reserved for truly unusual circumstances.

Bd.R. 41.33(d) provides that evidence filed after a notice of appeal is filed and before an appeal brief is filed may be admitted if (1) the examiner determines that the evidence overcomes at least one rejection under appeal and (2) appellant shows good cause why the evidence was not earlier presented.

Bd.R. 41.35(a) provides that the Board acquires jurisdiction when the Board mails a docket notice. By delaying the transfer of jurisdiction until the appeal is fully briefed and the position of the appellant is fully presented for consideration by the examiner and the Office reviewers (appeal conferees), the possibility exists that the examiner will find some or all of the appealed claims patentable without the necessity of proceeding with the appeal and invoking the jurisdiction of the Board. For this reason, jurisdiction transfers to the Board only after (1) the appellant has filed an appeal brief, (2) the examiner's answer has been mailed, and (3) the appellant has filed a reply brief or the time for filing a reply brief has expired.

Bd.R. 41.35(b) provides that the jurisdiction of the Board ends when (1)the Board mails a remand order, (2) the Board mails a final decision (see § 41.50(a) and judicial review is sought or the time for seeking judicial review has expired, (3) an express abandonment is filed, or (4)a request for continued examination is filed. The Board knows when it mails a remand order and when it mails a final decision. The Board does not know if an express abandonment or a request for continued examination is filed. One problem the Board has had in the past is that an appellant does not notify the Board that it has filed an express abandonment or a request for continued examination and the Board continues to work on the appeal. Accordingly, an appellant should notify the Board immediately if an express abandonment or a request for continued examination is filed.

Bd.R. 41.35(c) continues current practice and provides that the Director could sua sponte order an appeal to be remanded to an examiner before entry of a Board decision has been mailed.

Bd.R. 41.37 provides for filing an appeal brief to perfect an appeal and sets out the requirements for appeal briefs.

Bd.R. 41.37(e) provides that an appeal brief must contain, under appropriate headings and in the order indicated, the following items: (1) Statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) [reserved], (7) status of amendments, (8) grounds of rejection to be reviewed, (9) statement of facts, (10) argument, and (11) an appendix containing (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section. The items are otherwise defined in other subsections of Bd.R. 41.37 and, where applicable, would apply to appeal briefs and reply briefs (Bd.R. 41.41).

Bd.R. 41.37(f) requires a `statement of real party in interest' which would include an identification of the name of the real party in interest. Since a real party in interest can change during the pendency of an appeal, there is a continuing obligation to update the real party in interest during the pendency of the appeal. If an appeal brief does not contain a statement of real party in interest, the Office will assume that the named inventors are the real party in interest.

Bd.R. 41.37(g) requires an appeal brief to include a `statement of related cases.' The statement of related cases identifies related cases by (1) application number, patent number, appeal number or interference number or (2) court docket number. The statement encompasses all prior or pending appeals, interferences or judicial proceedings known to any inventors, any attorneys or agents who prepared or prosecuted the application on appeal and any other person who was substantively involved in the preparation or prosecution of the application on appeal. A related case is one which would directly affect, or would be directly affected by or have a
bearing on the Board's decision in the appeal. A copy of any final or significant interlocutory decision rendered by the Board or a court in any proceeding identified under this paragraph shall be included in the related cases section in the appendix. A related case includes any continuing application of the application on appeal. If an appellant fails to advise the Board that it has filed a continuing application or a request for continued examination, or that it has filed an express abandonment of the application on appeal and the Board mails a decision on appeal in the application on appeal, the appellant should expect that the decision will not be removed from the file. The time to update a statement of related cases, or notify the Board that an application on appeal has been abandoned, is when the continuing application, request for continued examination, or express abandonment is filed. Appellant would be under a continuing obligation to update a statement of related cases during the pendency of the appeal. If an appeal brief does not contain a statement of related cases, the Office will assume that there are no related cases.

Bd.R. 41.37(h) requires an appeal brief to contain a `jurisdictional statement'. The jurisdictional statement is to include a statement of (1) the statute under which the appeal is taken, (2) the date of the decision from which the appeal is taken, (3) the date the notice of appeal was filed, and (4) the date the appeal brief is being filed. If a notice of appeal or an appeal brief is filed after the time specified in the rules, the appellant also would have to indicate (1) the date an extension of time was requested, and (2) if known, the date the request was granted. A jurisdictional statement will minimize the chance that the Board will consider an appeal when the application on appeal is abandoned or a reexamination proceeding on appeal has terminated.

An example of a jurisdictional statement is: `The Board has jurisdiction under 35 U.S.C. 134(a). The Examiner mailed a final rejection on August 1, 2006, setting a three-month shortened statutory period for response. The time for responding to the final rejection expired on November 1, 2006. Rule 134. A notice of appeal and a request for a one-month extension of time under Rule 136(a) was filed on November 15, 2006. The time for filing an appeal brief is two months after the filing of a notice of appeal. Bd.R. 41.37(c). The time for filing an appeal brief expired on January 16, 2007 (Monday, January 15, 2007, being a Federal holiday). The appeal brief is being filed on January 16, 2007.'

Bd.R. 41.37(i) requires an appeal brief to contain a `table of contents' identifying the items listed in Bd.R. 41.37(e) along with a page reference where each item begins. In the case of a reply brief, the table of contents will identify the items required by the reply brief rule (Bd.R. 41.41(d)).

Bd.R. 41.37(j) requires an appeal brief to contain a `table of authorities.' This item would list (1) court and administrative decisions (alphabetically arranged), (2) statutes, and (3) other authorities, along with a reference to the pages of the appeal brief where each authority is cited. A similar requirement applies to a reply brief.

Bd.R. 41.37(l) requires an appeal brief to indicate the `status of amendments' for all amendments filed after final rejection (e.g., entered or not entered). Examples of a status of amendments might read as follows: (1) `No amendment was filed after final rejection.' (2) `An amendment filed October 31, 2006, was not entered by the examiner.' (3) `An amendment filed November 1, 2006, was entered by the examiner.' (4) `An amendment filed October 31, 2006, was not entered by the examiner, but an amendment filed November 1, 2006, was entered by the examiner.'

Bd.R. 41.37(m) requires an appeal brief to set out the grounds of rejection to be reviewed, including the claims subject to each rejection. Examples might read as follows: (1) `Rejection of claim 2 as being anticipated under 35 U.S.C. 102(b) over Johnson.' (2) `Rejection of claims 2­3 as being unpatentable under 35 U.S.C. 103(a) over Johnson and Young.' (3) `Rejection of claim 2 as failing to comply with the written description requirement of the first paragraph of 35 U.S.C. 112.' (4) `Rejection of claim 2 as failing to comply with the enablement requirement of the first paragraph of 35 U.S.C. 112.' (5) `Rejection of claim 3 under 35 U.S.C. 251 based on recapture.'

Bd.R. 41.37(n) requires a `statement of facts.' Appellant will set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal, preferably in numbered paragraphs. A clear, concise and complete statement of relevant facts will clarify the position of an appellant on dispositive issues and assist the examiner in reconsidering the patentability of the rejected claims. A significant requirement of Bd.R. 41.37(n) is that a fact is to be supported by a reference to the page number of the Record. Where appropriate, the citation should also be to a specific line or paragraph and to a drawing figure and element number of the Record (see Bd.R. 41.37(t)). Statements of facts should be set out in short declarative sentences, and each sentence should address a single fact.

For example, `In rejecting claims 1­5, the examiner cites Jones (col. 4, lines 1­-4).' `Jones describes a widget (col. 5,lines 56­-61 and Figure 1, elements 12 and 13).' A compound statement of fact is not proper, e.g., `Jones describes a widget (col. 8, lines 3-­4) and Smith does not describe a widget.'

A statement of facts has to be non-argumentative. In the case of a rejection for obviousness under section 103, the facts should address at least the scope and content of the prior art, any differences between the claim on appeal and the prior art, and the level of skill in the art.

A statement of fact based on the specification would be proper if supported by a reference to page and line or paragraph (and where appropriate also to drawing figure and element number). A statement of fact based on a patent would be proper if it is supported by a reference to a column and line (and where appropriate also to a drawing figure and element number). A statement of fact based on an affidavit would be proper if supported by a reference to a page and line number or to a page and paragraph number of the affidavit and the affidavit would appear in the evidence section (Bd.R. 41.37(t)) in the appendix.

Bd.R. 41.37(o) requires that an appeal brief contain an argument comprising an analysis explaining, as to each rejection to be reviewed, why the appellant believes the examiner erred. The analysis has to address all points made by the examiner with which the appellant disagrees. Where an argument has previously been presented to the examiner, the analysis has to identify where any argument being made to the Board was made in the first instance to the examiner. Where an argument has not previously been made to the examiner, an appellant would be required to say so in the appeal brief so that the examiner would know that the argument is new. Bd.R. 41.37(o) also requires that each rejection for which review is sought shall be separately argued under a separate heading. Also, Bd.R. 41.37(o) provides that any finding made or conclusion reached by the examiner that is not challenged would be presumed to be correct.

Bd.R. 41.37(o)(1) provides that when a ground of rejection applies to two or more claims, the claims may be argued separately (claims are considered by appellant as separately patentable) or as a group (claims stand or fall together). When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together and decide the appeal on the basis of the selected claim alone with respect to the group of claims as to the ground of rejection. Any doubt as to whether an election has been made would be resolved against the appellant and the claims would be deemed to have been argued as a group. For each claim argued separately, a subheading identifying the claim by number is required. In the past, appellants have been confused about whether a statement of what a claim covers is sufficient to constitute an argument that the claim is separately patentable. It is not. A statement that a claim contains a limitation not present in another claim would not in and of itself be sufficient to satisfy the requirement of Bd.R. 41.37(o)(1) that a separate argument be made.

Unless an appellant plans to argue the separate patentability of a claim, the appellant should not discuss or refer to the claim in the argument section.

Bd.R. 41.37(o)(2) provides that the Board will only consider arguments that (1) are presented in the argument section of the appeal brief and (2) address claims set out in the claim support and drawing analysis section in the appendix. Appellant waives all arguments which could have been, but were not, addressed in the argument section of the appeal brief. A first example would be where Argument 1 and Argument 2 are presented in response to a final rejection, but only Argument 1 is presented in the appeal brief. Only Argument 1 would be considered. Argument 2 would be waived.

Bd.R. 41.37(o)(3) requires that when responding to points made in the final rejection, the appeal brief shall specifically (1) identify each point made by the examiner and (2) indicate where appellant previously responded to each point or state that appellant has not previously responded to the point. In supporting any argument, the appellant shall refer to a page and, where appropriate, a line or paragraph, of the Record.

Examples of argument formats that are acceptable under Bd.R. 41.37(o)(3) follow.

Example 1, where an argument had been previously presented to the examiner:
`The examiner states that Reference A teaches element B. Final Rejection mailed [insert date], page x, lines y-z. In response, appellant previously pointed out to the examiner why the examiner is believed to have erred. Amendment filed [enter date], pages 8­9. The response is [concisely state the response].'

Example 2, where an argument has not been previously made to the examiner:
`In response to the examiner's reliance on Reference C for the first time in the final rejection (page 4), appellant's response includes a new argument which has not been previously presented to the examiner. The response is [concisely state the response].'

Bd.R. 41.37(p) requires an appeal brief to contain a `claims section' in the appendix which consists of an accurate clean copy in numerical order of all claims pending in the application or reexamination proceeding on appeal. The claims section in the appendix would include all pending claims, not just those under rejection. The status of each claim would have to be indicated, (e.g., 1 (rejected), 2 (withdrawn), 3 (objected to), 4 (cancelled), and 5 (allowed)).

Bd.R. 41.37(r) requires an appeal brief to contain a `claim support and drawing analysis section.' The claim support section, for each independent claim involved in the appeal and each dependent claim argued separately would consist of an annotated copy of the claim indicating in bold face between braces ({ }) after each limitation where, by page and line or paragraph numbers, the limitation is described in the specification as filed. Braces ({ }) are used instead of brackets ([ ]) because brackets are used in reissue claim practice. Unlike the `claims section', only those independent claims and dependent claims being argued separately, need to appear in the `claim support and drawing analysis section.'

The `claims support and drawing analysis section' also requires for each independent claim on appeal and each dependent claim argued separately, that a drawing analysis consist of an annotated copy of the claim in numerical sequence, indicating in bold face between braces ({ }) after each limitation where, by reference or sequence residue number, each limitation is shown in the drawing or sequence.

Bd.R. 41.37(s) requires an appeal brief to contain a `means or step plus function analysis section.' The means or step plus function analysis section replaces the requirement of Rule 41.37(c)(1)(v) relating to identification of structure, material or acts for means or step plus function claim limitations contained in appealed claims. Under Bd.R. 41.37(s), the means or step plus function analysis section includes each independent claim and each dependent claim argued separately that contains a limitation that appellant regards as a means or step plus function limitation in the form permitted by the sixth paragraph of 35 U.S.C. 112. Further, for each such claim, a copy of the claim is to be reproduced indicating in bold face between braces ({ }) the specific portions of the specification and drawing that describe the structure material or acts corresponding to each claimed function.

Bd.R. 41.37(t) require an appeal brief to contain an `evidence section' in the appendix. The evidence section includes (1) table of contents, (2) affidavits and declarations upon which the appellant relied before the examiner, (3) other evidence upon which the appellant relied before the examiner, and (4) evidence relied upon by the appellant and admitted into the file pursuant to Bd.R. 41.33(d). Documents in the evidence appendix would not have to be reformatted to comply with format requirements of the appeal brief. However, the affidavits, declarations and evidence required by Bd.R 41.37(t) which is otherwise mentioned in the appeal brief, but which does not appear in the evidence section will not be considered.

Bd.R. 41.37(u) requires an appeal brief to contain a `related cases section' in the appendix. The related cases section consists of copies of orders and opinions required to be cited pursuant to Bd.R. 41.37(g).

Bd.R. 41.37(v) requires an appeal brief to be presented in a particular format. The appeal brief would have to comply with the format of Rule 52 as well as with other requirements set out in Bd.R. 41.37(v)(1), (2) and (4) through (6).

Bd.R. 41.37(v)(1) requires that the pages of an appeal brief, including all sections in the appendix, be consecutively numbered using Arabic numerals beginning with the first page of the appeal brief, which would be numbered page 1. If an appellant chooses to number the lines, line numbering may be within the left margin.

Bd.R. 41.37(v)(2) requires that text in an appeal brief be double spaced except in headings, tables of contents, tables of authorities, signature blocks and certificates of service. Block quotations would be indented, but could be presented in double spaced or space and a half format. Footnotes, which are discouraged, would be double spaced.

Bd.R. 41.37(v)(4) requires that the font size be 14 point, including the font for block quotations and footnotes.

Bd.R. 41.37(v)(5) provides that an appeal brief may not exceed 30 pages, excluding any (1) statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) status of amendments, (7) signature block and (8) appendix. To give meaning to the 30-page limitation, an appeal brief would not be permitted to incorporate by reference arguments from other papers in the evidence appendices
or from any other source.

A request to exceed the 30-page limit would be made by petition under Bd.R. 41.3 at least ten calendar days prior to the date an appeal brief is due. Bd.R. 41.37(v)(6) requires a signature block which would identify the appellant or appellant's representative, as appropriate, and a mailing address, telephone number, fax number and e-mail address.

Other new rules relate to Examiner's Answers, Reply Briefs, Examiner's Responses to Reply Briefs, Oral Hearings, and Decisions and other actions by the Board.

Tuesday, October 16, 2007

Examination Guidelines for Determining Obviousness in View of the Supreme Court's KSR v Teleflex Decision

In the October 10, 2007 Federal Register, the U.S. Patent and Trademark Office published a notice titled "Examination Guidelnes for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v Teleflex"

The notice can be found here:
http://www.uspto.gov/web/offices/com/sol/notices/72fr57526.pdf

“The Guidelines stress that the familiar factual inquiries announced by the Supreme Court in its much earlier decision, Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), remain the basis for every decision regarding obviousness,” noted Commissioner for Patents John Doll. “That is, patent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.”

The Guidelines also note that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground. The reasoning may still include the established Court of Appeals for the Federal Circuit standard that a claimed invention may be obvious if the examiner identifies a prior art teaching, suggestion, or motivation (TSM) to make it. However, in keeping with the KSR decision, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious.

To help patent examiners make obviousness rejections that are supported by appropriate facts and reasoning, the Guidelines identify a number of rationales suggested by the Supreme Court in the KSR decision. For each rationale, the Guidelines explain the underlying factual findings required, and provide guidance about how to reason from the facts to the legal conclusion of obviousness. The Guidelines emphasize, however, that the identified rationales are only examples, and that any explanation of facts and reasoning based on the Graham inquiries may be used to support a rejection for obviousness.

These rationales are:
(A) Combining prior art elements according to known methods to yield
predictable results;

(B) Simple substitution of one known element for another to obtain
predictable results;

(C) Use of known technique to improve similar devices (methods, or
products) in the same way;

(D) Applying a known technique to a known device (method, or product)
ready for improvement to yield predictable results;

(E) ``Obvious to try''--choosing from a finite number of identified, predictable
solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for
use in either the same field or a different one based on design incentives or other
market forces if the variations would have been predictable to one of ordinary
skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would
have led one of ordinary skill to modify the prior art reference or to combine
prior art reference teachings to arrive at the claimed invention.

Tuesday, August 21, 2007

Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims

In the August 21, 2007 Federal Register, the U.S. Patent and Trademark Office published Final rules titled "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications"

The changes in the claims and continuation rules were enjoined in Tafas v. Dudas, 350 F. Supp.2d 786 (E.D. Va. 2008). In the event that the injunction is lifted, applicants will only need to comply with the identification requirements of 37 CFR 1.78(f)(1) in applications having an actual filing date on or after a new effective date that would be published by the USPTO after the removal of the injunction. Likewise, applicants will only have to identify other commonly owned applications that satisfy the conditions set forth in 37 CFR 1.78(f)(1)(i) in applications that have a filing date on or after this new effective date. Similarly, the rebuttable presumption of 37 CFR 1.78(f)(s) will only apply to applications having an actual filing date on or after the effective date and will only exist with respect to an application that satisfies the conditions set forth in 37 CFR 1.78(f)(2)(i) and also has a filing date on or after this new effective date.

The changes can be found here: http://www.uspto.gov/web/offices/com/sol/notices/72fr46716.pdf

The Office revised the rules to require that any third or subsequent continuing application (continuation or continuation-in-part), and any second or subsequent request for continued application in an application family, be filed so as to obtain consideration of an amendment, argument, or evidence, and be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted.

In other words, only two continuations, and only one request for continued application (RCE) can be filed as a matter of right. This was changed from the proposed rule, in which each application was limited to one continuing application. The limitation of only one RCE, as a matter of right, in an entire application family could be a problem for applicants and practitioners in applications where examiners are not inclined to allow claims. An application family is defined as including the initial application and its continuations and CIPs. The office is understandably expecting a surge in Appeals and is proposing to amend the rules pertaining to appeals practice.

In addition, the Office revised the rules of practice to provide that an applicant must provide an "examination support document" (ESD) if the application contains more than five independent claims or more than twenty-five total claims. This was changed from the proposed rule where an application could be filed with any number of claims but the applicant was required to elect 10 representative claims for examination absent the filing of an ESD. An applicant may present up to fifteen independent claims and seventy-five total claims to a single patentably distinct invention via an initial application and two continuation or continuation-in-part applications that are filed and prosecuted serially without an examination support document or justification. 37 CFR 1.265 sets forth what an examination support document entails and is quite onerous. In determining whether an application exceeds the 5/25 claim threshold, withdrawn claims are not taken into account, unless they are reinstated or rejoined. For applications filed on or after November 1, 2007, a notice will set a two-month time period that is not extendable, if the 5/25 claim threshold is exceeded, requiring applicant to amend or file an ESD. For applications in which a First office action was not mailed before November 1, 2007, the notice will set a two-month time period that IS extendable up to a maximum of six months.

First actions in continuation applications may be made final as in current practice. Applicants may guard against first action final rejections in continuing applications by first seeking entry of the amendment, argument, or new evidence after final in the parent, under 37 CFR 1.116. Inclusion of a new double patenting rejection in a second or subsequent Office action will not preclude the Office action from being made final.

The Office also revised the rules of practice for divisional applications. Under these revisions, an applicant is permitted to file a divisional application only in response to a restriction requirement. Applicant cannot rely upon a restriction requirement to file a divisional application if applicant traverses the restriction requirement; or the restriction requirement is provisional, such as in a requirement for election of species. When a restriction requirement is withdrawn, any divisional application will not be proper, and the applicant may either delete the benefit claim or change the benefit claim to a continuation or CIP. The USPTO suggests that for an application that contains a generic claim, applicant should conclude prosecution of the generic claim in the initial application and its continuing applications, including any appeals, before filing a divisional application. Applicant also cannot rely upon the restriction requirement in these situations to avoid the requirement of an ESD. Applicant may file a suggested requirement for restriction (SRR). A suggested requirement for restriction must be accompanied by an election of an invention to no more than 5/25 claims, identifying the elected claims; and filed before the earlier of a First office action or restriction requirement. The divisional need not be filed during the pendency of the application subject to a requirement for restriction, as long as the copendency requirement of 35 U.S.C. 120 is met. In other words, an applicant may file the divisional application during the pendency of the application that was subject to a requirement for restriction or the pendency of any continuing application of such application. Divisionals may be filed in parallel or in series. Applicant may also file two continuation applications (but not CIPs) from a divisional application plus just one request for continued examination in the entire divisional application family without any justification. The divisional application family includes the divisional application as well as its continuation.

Applicants must now identify the claims in a CIP application that are supported by the prior-filed application. Any claims that are not identified will be subject to prior art based on the actual filing date of the CIP application.

The Office also revised the rules of practice with respect to multiple applications that have patentably indistinct claims and a common assignee by either requiring that all patentably indistinct claims in such applications be submitted in a single application or effectively treating the multiple applications as a single application. The applicant must submit the serial numbers of all other applications filed within two months having the same assignee and at least one inventor in common. Applicants must identify any other commonly owned application or patent that has an inventor in common with the application; and a claimed filing or priority date within two months of the claimed filing or priority date of the application. An appropriate form for identifying such commonly owned applications will be available on the USPTO web site. For commonly owned pending applications that contain at least one patentably indistinct claim, the USPTO will treat each application as having the total number of claims of all of the applications for considering whether the 5/25 claim threshold has been exceeded. For those applications that additionally have a common effective filing date and substantially overlapping disclosures, the rule creates a rebuttable presumption of obviousness-type double patenting between them.

37 CFR 1.265 provides:

§ 1.265 Examination support document.

(a) An examination support document as used in this part means a document that includes the following:

(1) A statement that a preexamination search in compliance with paragraph (b) of this section was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and, for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search;

(2) A listing of the reference or references deemed most closely related to the subject matter of each of the claims (whether in independent or dependent form) in compliance with paragraph (c) of this section;

(3) For each reference cited, an identification of all of the limitations of each of the claims (whether in independent or dependent form) that are disclosed by the reference;

(4) A detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references; and

(5) A showing of where each limitation of each of the claims (whether in independent or dependent form) finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of each of the claims finds support under the first paragraph of 35 U.S.C. 112 in each such priority or benefit application in which such support exists.

(b) The preexamination search referred to in paragraph (a)(1) of this section must involve U.S. patents and patent application publications, foreign patent documents, and non-patent literature, unless the applicant justifies with reasonable certainty that no references more pertinent than those already identified are likely to be found in the eliminated source and includes such a justification with the statement required by paragraph (a)(1) of this section. The preexamination search referred to in paragraph (a)(1) of this section must be directed to the claimed invention and encompass all of the limitations of each of the claims (whether in independent or dependent form), giving the claims the broadest reasonable interpretation.

(c) The listing of references required under paragraph (a)(2) of this section as part of an examination support document must include a list identifying each of the cited references in compliance with paragraphs (c)(1) and (c)(2) of this section, a copy of each reference if required by paragraph (c)(3) of this section, and each English language translation if required by paragraph (c)(4) of this section.

(1) The list of cited references must itemize U.S. patents and U.S. patent application publications (including international applications designating the U.S.) in a section separate from the list of other references. Each page of the list of the cited references must include:

(i) The application number, if known, of the application in which the examination support document is being filed;

(ii) A column that provides a space next to each cited reference for the examiner’s initials; and

(iii) A heading that clearly indicates that the list is part of an examination support document listing of references.

(2) The list of cited references must identify each cited reference as follows:

(i) Each U.S. patent must be identified by first named patentee, patent number, and issue date.

(ii) Each U.S. patent application publication must be identified by applicant, patent application publication number, and publication date.

(iii) Each U.S. application must be identified by the applicant, application number, and filing date.

(iv) Each foreign patent or published foreign patent application must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.

(v) Each publication must be identified by publisher (e.g., name of journal), author (if any), title, relevant pages of the publication, date, and place of publication.

(3) The listing of references required under paragraph (a)(2) of this section must also be accompanied by a legible copy of each cited reference, except for references that are U.S. patents or U.S. patent application publications.

(4) If a non-English language document is being cited in the listing of references required under paragraph (a)(2) of this section as part of an examination support document, any existing English language translation of the non-English language document must also be submitted if the translation is within the possession, custody, or control of, or is readily available to any individual identified in § 1.56(c).

(d) If an information disclosure statement is filed in an application in which an examination support document is required and has been filed, the applicant must also file a supplemental examination support document addressing the reference or references in the manner required under paragraphs (a)(3) and (a)(4) of this section unless the information disclosure statement cites only references that are less closely related to the subject matter of one or more claims (whether in independent or dependent form) than the references cited in the examination support document listing of references under paragraph (a)(2) of this section.

(e) If an examination support document is required, but the examination support document or preexamination search is deemed to be insufficient, or the claims have been amended such that the examination support document no longer covers each of the claims, applicant will be notified and given a two-month time period that is not extendable under § 1.136(a) within which, to avoid abandonment of the application, the applicant must:

(1) File a corrected or supplemental examination support document in compliance with this section that covers each of the claims (whether in independent or dependent form); or

(2) Amend the application such that it contains no more than five independent claims and no more than twenty-five total claims.

(f) An examination support document, or a corrected or supplemental examination support document, is not required to comply with the requirements set forth in paragraph (a)(3) of this section if the examination support document is accompanied by a certification that any rights in the application have not been assigned, granted, conveyed, or licensed, and there is no obligation under contract or law to assign, grant, convey, or license any rights in the application, other than a security interest that has not been defaulted upon, to any entity other than:

(1) A business or other concern:

(i) Whose number of employees, including affiliates, does not exceed 500 persons; and

(ii) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under paragraph (f)(1)(i) of this section.

(2) A not-for-profit enterprise which is independently owned and operated and is not dominant in its field; or

(3) A government of a city, county, town, township, village, school district, or special district, with a population of less than fifty thousand.

Most changes are effective on November 1, 2007 with some retroactivity. For example, rule changes to continuing application practice are applicable to applications filed on or after November 1, 2007; and applications entering the national stage on or after November 1, 2007. An applicant may file one more continuing application for applications filed before August 21, 2007 without a petition and showing, even if it exceeds the limits under the new rules. An applicant may file a second or subsequent RCE in an application family on or after November 1, 2007, with a petition and showing. The rule changes to examination of claims practice (5 independent, 25 total without an ESD) are applicable to applications filed on or after November 1, 2007; applications entering the national stage on or after November 1, 2007; and applications in which a First office action was not mailed before November 1, 2007. For example, applicant is required to file an ESD in an application that contains more than 5 independent or 25 total claims if a First office action was not mailed before November 1, 2007. An ESD will not be required in a reissue application if the reissue application does not seek to change the claims in the patent being reissued. A change in the claims in the patent being reissued is sought either by an amendment to a claim or addition of a claim; or an amendment to the specification which changes a claim. The rule changes relating to multiple applications containing patentably indistinct claims are applicable to applications pending on or after November 1, 2007. For applications filed before November 1, 2007, applicant much comply with the requirements within the time periods set forth in 37 C.F.R. 1.78(f)(1) and (f)(2); or by February 1, 2008, whichever is later.

Wednesday, April 18, 2007

Bill to introduce First-to-File system to U.S.

A bill has been unveiled to introduce a first-to-file system in the U.S.

Details of the bill can be found here:
http://leahy.senate.gov/press/200704/041807a.html

The bill would give priority to the first applicant to file a patent application regardless of the invention date. This is standard in most other countries in the world.

The bill also tries to limit forum shopping.

Friday, March 30, 2007

2007 Proposed Changes to Representation of Others Before the USPTO

In the February 28, 2007 Federal Register, the U.S. Patent and Trademark Office published proposed changes to rules governing disciplinary proceedings for attorneys and agents. This was a supplemental notice of proposed rule making. The USPTO had previously proposed amendments, in December 2003. One hundred and fifty seven written comments were received in response to the December 2003 proposal. In response to those comments, the USPTO revised several of the proposed rules and published the revised proposed rule changes.

The revised proposed rule changes can be found here:
http://www.patentsusa.com/20070228_Discipline.pdf

A comparison of the revised proposed rules and the December 2003 version is available at http://www.uspto.gov/web/offices/dcom/olia/oed/comparison_ab55.pdf

The revised proposed rule changes have not yet been adopted.

The December 2003 proposed rules introduced a part 11, to replace previous part 10, including rules governing the conduct of investigations and disciplinary proceedings. Other proposed rules were intended to introduce new disciplinary procedures for practitioners who were suspended or disbarred in other disciplinary jurisdictions for ethical or professional misconduct, practitioners convicted of serious crimes, and practitioners having disability issues. The December 2003 version also proposed changes to the ethics rules. Some provisions on enrollment were adopted in final form on July 26, 2004 (see 69 Federal Register 35428). Several proposed rules are directly or indirectly dependent on development of electronic systems to implement rules governing annual dues and continuing legal education. Such electronic systems have not yet been completed so the revised proposed rules do not refer to rules that depend on implementation of such electronic systems.

One interesting item added in the revised version is a statement that "Nothing in this section proscribes a practitioner from employing non-practitioner assistants under the supervision of the practitioner to assist the practitioner in preparation of said presentations." The stated reason for this is to assist practitioners in providing cost-efficient services to clients. Some large companies are imposing artificial limits on fees per patent application, sometimes without regard for complexity or number of revisions requested by inventors and often without regard to whether new disclosure materials were added by inventors after the original case was accepted by the attorney. These companies may not be as concerned with quality and validity of their patents because a potential licensee presented with a large number patents may be more likely to accept a license than to investigate the validity of a large volume of patents. A typical patent trial can cost 1.5 million dollars--saving a few dollars in the patent procurement procedure could jeopardize the validity of a patent and make it harder to risk gambling the 1.5 million dollars of potential litigation fees in an infringement action. Federal Circuit decisions make it increasingly important that patent applications be drafted and prosecuted with great care by practitioners who are familiar with the cases. Smaller companies cannot rely on the size of their portfolio to intimidate infringers and must make sure that their patents are carefully and properly drafted so that they can confidently begin litigation, if necessary. Companies that might be accused of monopolistic activities may be less likely to draw attention to themselves by asserting patents, so risk of invalidity in litigation may not be as big of a concern. Properly supervising someone else can easily take more time than drafting a patent application directly. In order to really reduce fees, the work of non-practitioners would have to be superficial or non-existent. The practitioner signing the papers would be on the hook for ethical violations.

Thursday, March 29, 2007

2007 Guidelines for Accelerated Examination

In the June 26, 2006 Federal Register, the U.S. Patent and Trademark Office published changes to the practice for petitions in patent applications to make special and for accelerated examination.

The changes can be found here:
http://www.patentsusa.com/20060626_Accelerated.pdf

Guidelines supplementing the program requirements were published later, and can be found here:
http://www.patentsusa.com/20060626_Guidelines_Accelerated.doc

The rule changes were effective August 25, 2006.

New patent applications were normally taken up for examination in the order of their U.S. filing date. The U.S. Patent and Trademark Office revised its procedures for making certain applications special with a goal of completing examination within twelve months of filing. However, the price to be paid by applicants for this special treatment is high indeed.

To qualify for the new accelerated examination program, an applicant must submit a petition and fee, file the application and all follow-on communications electronically, file a complete application, include no more than three independent claims and no more than twenty independent claims, file for a single invention or agree to elect a single invention without traverse, agree to an interview with an examiner, conduct a pre-examination search, and provide an accelerated examination support document.

In other words, the U.S. Patent and Trademark Office will expedite prosecution if applicants perform most of the work that examiners would normally do.

There are many problems with this procedure. Twenty claims with three independent claims may be inadequate for all but the simplest inventions. Federal Circuit case law has severely weakened the doctrine of equivalents to the point that it may not be worth gambling on an infringement suit unless literal infringement can clearly be shown. With only three independent claims, alternative claiming strategies cannot be fully explored. The English language is imprecise and it is difficult to cover many alternatives of an invention with so few claims. Literal infringement of patent claims can sometimes be avoided with fairly minor changes to a product. Federal Circuit law has evolved to a point where a large number of independent claims is needed to adequately cover an invention. Additionally, file wrapper estoppel problems can arise from voluntarily characterizing the prior art without even knowing if an examiner will consider a reference to be relevant. In addition, there is a strong risk of being accused of inequitable conduct if relevant prior art is located that a patent applicant did not uncover and disclose to the USPTO--the applicant could be accused of not having searched properly.

The search that applicants are required to perform by this procedure is quite substantial. The USPTO requires a search submitted in support of a petition for accelerated examination to include a classified search of the US patents and published patent applications in the Class and subclass where the claimed invention is most likely to be classified; a text search of the US patents and published patent applications that covers the subject matter of the independent claims using terms recognized in the art given their broadest reasonable interpretation; a text search of foreign patent documents that includes the sources required under the PCT minimum documentation requirements, to the extent available (the PCT minimum documentation requirements can be found at http://www.wipo.int/standards/en/pdf/04-02-01.pdf);
a text search of the suggested non-patent literature (NPL) resources from the current USPTO search templates found at http://www.uspto.gov/web/patents/searchtemplates/searchtemplates.htm
; and a search employing any special tools (e.g., nucleic acid or protein sequence searching tools) as identified in the current USPTO search templates.

After doing all this work, the result may just be a quicker Final Rejection.

In the end, taking some applications out of order will just mean that it will take even longer for other patent cases to be processed. And if many companies begin to use the accelerated examination procedure, it will eventually get bogged down too, unless examiners rely strongly on the work done by applicants.

Some companies who have large portfolios may not be too concerned about the validity of any individual patent, but other applicants may highly value their patents. Some large companies may not be too concerned about quality because with a large portfolio, they can accuse a potential licensee of infringing a large number of patents, and it will be too burdensome for the potential licensee to evaluate such a large volume of patents. This rule change may benefit such companies at the expense of smaller companies who need more independent claims and stronger patents.

Tuesday, March 27, 2007

2007 Priority Document Exchange System

On March 13, 2007, the U.S. Patent and Trademark Office sent emails to patent attorneys announcing that a priority document exchange system was launched on January 16, 2007.

With the PDX system, applicants are able to request electronic retrieval of priority documents from the European Patent Office (EPO) for placement in their US application.

Requests may be made by filing the Form PTO/SB/38 entitled "Request to Retrieve Electronic Priority Application(s)" with the USPTO.

The PDX system also permits the EPO to request electronic retrieval of certified copies of US applications from the USPTO. However, the USPTO will only make such copies available if the application has already published or if the applicant has provided written authorization to do so.

Applicants may grant electronic access to their U.S. patent applications to the EPO by filing the Form PTO/SB/39 entitled "Authorization to Permit Access to Application by Participating Office" with the USPTO.

There is no fee for either retrieving a priority document from a participating Office or for transmitting a priority document to a participating Office.

Friday, March 23, 2007

2006 Proposed Changes To Information Disclosure Statement Requirements and Other Related Matters

In the July 10, 2006 Federal Register, the U.S. Patent and Trademark Office published proposed changes to information disclosure statement (IDS) requirements and other related matters.

The proposed changes can be found here:
http://www.patentsusa.com/20060710_Proposed_chg_IDS.pdf
Luckily, these rule changes have not been adopted. However, forms on the USPTO web site have been formatted assuming that these rule changes will be implemented.

The stated purpose of the proposed changes was to improve the quality and efficiency of the examination process. The notice indicated that although Rule 1.56 clearly imposes a duty to disclose material information, the rule neither authorizes nor requires anyone to file unreviewed or irrelevant documents with the Office. Such documents more likely, negatively impact the quality of resulting Office determinations, according to the USPTO.

The Office proposed that before a first Office Action on the merits, additional disclosure would be required for English language documents over twenty-five pages. Additional disclosure would also be required for any foreign language documents, and would be required if more than twenty documents are submitted. The required explanation must identify information in each document that is relevant to the claimed invention. Examples of the additional disclosure included an identification of a portion of a document that caused it to be cited, and an explanation of how the specific feature of the document correlates with language in one or more claims. However, documents submitted to the Office in reply to a requirement for information or resulting from a foreign search or foreign examination report would not count towards the twenty document limit. The rule changes would also permit the filing of an IDS after a first Office Action on the merits only if additional disclosure requirements were met. After a first Office Action, an applicant would be required to provide a non-cumulative description as well as an explanation for each document (or a copy of a foreign search or examination report).

Patent practitioners were opposed to this change because of the risk of being accused of inequitable conduct by the courts if not all potentially relevant information is disclosed, and resulting patent invalidity. Unsympathetic court decisions have led practitioners to be ultra-cautious. Correlating a reference to a claim could result in damaging file wrapper estoppel.

Comments by the public on these proposed rule changes can be found here:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/ab95/ids.htm

Wednesday, March 21, 2007

2006 Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Japan Patent Office

On May 22, 2006, the U.S. Patent and Trademark Office published information about a patent prosecution highway pilot program between the United States Patent and Trademark Office and the Japan Patent Office.

The information can be found here:
http://www.patentsusa.com/20060522_Japan_highway.pdf

The USPTO noted that since the beginning of 2003, the USPTO, the European Patent Office, and the Japan Patent Office participated in search exchange projects. The USPTO continued that the results of the prior projects show that there is a potential benefit in exploiting the search results of the office of first filing to reduce workload in the office of second filing.

The patent prosecution highway pilot program enables an applicant whose claims are determined to be allowable/patentable in the office of first filing to have the corresponding application filed in the office of second filing advanced out of turn for examination while at the same time allowing the office of second filing to exploit the search and examination results of the office of first filing.

Where the USPTO is the office of second (e.g., for applications originating in Japan) the corresponding application filed in Japan contains claims that are determined to be allowable, the applicant may request participation in the Patent Prosecution Highway Pilot Program in the USPTO and petition to make the U.S. application special.

Where the USPTO is the office of first filing and the U.S. application contains claims that are determined to be allowable, the U.S. applicant may request accelerated examination in Japan for the corresponding application filed in Japan. The procedures for filing a request for participation in the pilot program are available from the Japanese Patent Office website at http://www.jpo.go.jp/index.htm

The pilot program commenced on July 3, 2006 for a period of one year ending on July 3, 2007.