August 25, 2010
On A String
From
reading his newsletter, one gathers the decided impression that Greg Aharonian
has the emotional stature of an infant. [I know I'll get comments from readers
who will swear their infants are more mature than Greg. Point taken.] In his
ranting newsletter, where screaming ALL CAPS and !!!!!!!! are the norm,
Aharonian boiled over newly minted patent
7,779,753, which claims a tea ball on a serving string. Congratulations to
Ms. Winnie Yu for securing intellectual property protection for her creative
endeavor. Perhaps Ms. Yu would be so gracious as to invite Mr. Aharonian over
for tea. Or, upon thoughtful consideration, perhaps not.
Continue reading "On A String"
Posted by Patent Hawk at 5:17 PM | Prosecution | Comments (62)
July 28, 2010
Terminal
Eli
Lilly markets cancer drug
Gemzar®, the active ingredient of which is gemcitabine.
4,808,614 claims gemcitabine, and a method for treating viral infections
using gemcitabine.
5,464,826 claims using gemcitabine to treat cancer. Both patents, in the
same family, are owned by Lilly. Lilly did not file a terminal disclaimer for
'826. That would become a terminal mistake.
Posted by Patent Hawk at 4:04 PM | Case Law | Comments (0)
July 27, 2010
Lightening Up
The USPTO today issued
revised interim §101 guidelines in light of the SCOTUS Bilski decision. "The machine-or-transformation test remains an investigative tool and is a useful
starting point." Other stated criteria include: applying laws of nature (versus
the laws themselves), and more than "a mere statement of general concepts," for
which examples are given (e.g., mental activity). Examiners "should avoid
focusing on issues of patent-eligibility under 35 U.S.C. §101 to the detriment
of considering" other avenues of rejection (§§ 102, 103, and 112).
Posted by Patent Hawk at 1:14 PM | Prosecution | Comments (3)
July 8, 2010
Behind the Times
In
the interest of less-than-compact prosecution, the USPTO is, for the time being,
adhering to the ancient military supply rule: "smoke 'em if you got 'em." The
day Bilski rolled out of the Supreme Court, Robert Bahr, Poobah for
Patent Examination Policy, pooted forth
a letter on the ruling, directing examiners to stick to the old standby
machine-or-transformation test, whereupon giving "the applicant" "the
opportunity to explain why the claimed method is not drawn to an abstract idea."
Posted by Patent Hawk at 8:10 PM | § 101 | Comments (36)
July 1, 2010
BPAI Ballroom
The
BPAI and Obzilla are regular dance partners. So far this year, they've held two
public balls: two precedential opinions in 2010, both ostensibly about
obviousness, but as much about Board review procedure and scope. The most recent
decision,
Ex
parte Magnus Quist was from an appeal rehearing request. Quist's claimed
invention had been found obvious. Rehearing request denied. The upshot of how
the BPAI works: "the Board panel must consider anew all the relevant evidence of
obviousness, both for and against, in view of the argument on the issue."
Continue reading "BPAI Ballroom"
Posted by Patent Hawk at 12:24 PM | Prosecution | Comments (1)
June 18, 2010
Broken Chain
7,051,018
&
7,082,437, owned by Encyclopaedia Britannica, "relate to a multimedia
database search system for retrieving textual and graphical information." The
patents "claim priority back to October 26, 1989 through a chain of patents and
patent applications." That priority chain was broken by a prosecution mistake in
an intervening application, 08/113,955. As a result, "Britannica's foreign
patent application, WO91/06916, published on May 16, 1991, was found to
anticipate under 35 U.S.C. § 102(b)."
Continue reading "Broken Chain"
Posted by Patent Hawk at 5:55 PM | Prosecution | Comments (8)
May 27, 2010
Alternative Programming
On
a typical day, Adam Albrett, aka Muhannad Almahmoudi, prosecutes patents in
Fairfax Virginia. Also an inventor, Mr. Albrett was granted
7,610,011, titled "Providing alternative programming on a radio in response
to user input." On May 14, Mr. Albrett allegedly went in for some alternative
programming himself, sending a nastygram through the White House web site.
Continue reading "Alternative Programming"
Posted by Patent Hawk at 9:36 PM | Prosecution | Comments (5)
May 19, 2010
Misguided Missile
Another
patent applicant groans like Tom Jones: "Stop Breaking My Heart." Does this
lyric sound familiar? "The applicant argues that these rejections were based on a
misunderstanding of the [prior art] references, and lacked sufficient findings
by the Board. The applicant states that the Board misinterpreted claims [],
leading the Board to conclude erroneously that the additional limitations in
these claims were taught by [the prior art]. The applicant complains that
neither the examiner nor the Board made sufficient findings or adequately
explained their reasoning. The PTO, through the Solicitor on this appeal, now
seeks to substitute new reasoning for that supplied by the Board concerning how
the asserted references should be interpreted." Business as usual at the PTO.
But, like Tom Jones hammering home "Sixteen Tons," the CAFC lambasts the PTO for
randy rejection.
Continue reading "Misguided Missile"
Posted by Patent Hawk at 4:18 PM | Prior Art | Comments (39)
May 12, 2010
Mule Kick Trick
Interferences
are the mule kick of the shambolic first-to-invent patent regime that
only the U.S. clings to. In this episode, Jos Timmermans provoked an
interference by copying claims into 11/085,744 from Jones J. Robertson's LED
lighting patent
6,860,628. Timmermans had priority going back to a provisional of the parent
application, and so was senior to Robertson. Robertson argued that the copied
claims were invalid in light of § 112 ¶ 1, lack of written description. The
patent Board ended up canceling Robertson's patent claims. The CAFC vacated and
remanded because "the Board erred in construing Timmermans's claims in view of
Timmermans's disclosure rather than Robertson's disclosure."
Continue reading "Mule Kick Trick"
Posted by Patent Hawk at 11:16 PM | Prosecution | Comments (0)
May 10, 2010
Prosecutor Grift
We
see it all the time. Inventors who paid tens of thousands of dollars to
respectable law firms who took their money and either got them worthless
patents, or strung them out with useless applications that even the patent
office wouldn't grant. They come to
Platinum Patents with a prosecution mess, or tantalized by infringement of
their invalid patent, knock on Patent
Hawk's door looking for a hookup to contingency. Too late for us to prevent
grief and loss. Prosecutors who don't work the beat on the enforcement side of
the street know but a fraction of what they need to know. That's most
prosecutors. They jostle with the crowd who don't even bother performing
adequate prior art searches, and draft claims that defy comprehension.
Dime-store prosecutors on the grift are a dime a dozen. It still saddens me to
witness every time.
Posted by Patent Hawk at 5:16 PM | Prosecution | Comments (12)
May 8, 2010
On the Mat
David
T. Pelz tried to patent a golf training mat (11/066,554). Non-final rejection
purely on anticipation prompted Pelz to amend the preamble. The language in the claims: "consisting
essentially of," and "include," speak volumes to a deft prosecutor of the claims
being in the weeds. The patent Board putted along with the examiner. Pelz
appealed to the CAFC, who held the flag.
Posted by Patent Hawk at 3:39 PM | Prior Art | Comments (3)
April 20, 2010
Short Straw
09/310,880
(Harari) traced its priority date linage back to June 8, 1988.
5,828,601 (Hollmer) was filed December 1, 1993, with no antecedent. So how
do these two get into an interference, and Harari's claim to invention draws the
short straw? USPTO incompetence!
Continue reading "Short Straw"
Posted by Patent Hawk at 12:03 PM | Prosecution | Comments (2)
March 20, 2010
Debunking In Re Keller
Thanks in large part to KSR, it has become harder to obtain a patent
grant in recent years. It is one
thing when an Examiner makes a ruling based on sound logic and reasoning to
reject an applicant's claims; that is their burden and their duty. But it is
quite another when a rejection is based on nothing more than a poor
misapplication of the law, under the pretense of the MPEP. Of increasing related
consequence is the misapplication of In re Keller 642 F.2d 413 USPQ 871 (CCPA
1981). - A guest post by John M. DeBoer.
Continue reading "Debunking In Re Keller"
Posted by Patent Hawk at 12:41 PM | Prosecution | Comments (20)
February 24, 2010
Fragments
Andrew
Chapman and David King had a patent idea "directed to divalent antibody
fragments comprising two antibody heavy chains and at least one polymer molecule
attached to the heavy chains in a site-specific manner on each chain...
Chapman's invention involves joining together two fragments with an interchain
bridge containing a polymer, thus achieving a circulating half-life that is
intermediate between that of an individual fragment and a whole antibody."
Posted by Patent Hawk at 6:34 PM | Prior Art | Comments (1)
February 18, 2010
Relatively Stiff
Yousef
Daneshvar filed a patent application claiming : "an apparatus for dressing a
wound. The invention features a 'relatively stiff support' that is secured over
the wound using one or more 'relatively stretchable straps.'" The BPAI rejected
Daneshvar's claims as anticipated and obvious over
5,779,657. Daneshvar had to go to the CAFC to get PTO incompetence
overturned.
Continue reading "Relatively Stiff"
Posted by Patent Hawk at 10:42 AM | Prosecution | Comments (33)
January 26, 2010
Restricted Reply
37
CFR § 41.37, on appeal briefs, fully covers regulation of arguments made on
appeal: "Any arguments or authorities not included in the brief or a reply brief
filed pursuant to § 41.41 will be refused consideration by the Board, unless
good cause is shown."
37
CFR § 41.41, on reply briefs: "A reply brief shall not include any new or
non-admitted amendment, or any new or non-admitted affidavit or other evidence."
In a January 7, 2010 expanded-panel BPAI ruling
ex
parte Borden, denying a rehearing of an appeal, the Board ruled much
more restrictively on reply briefs: "The reply brief is not an opportunity to
make arguments that could have been made during prosecution, but were not. Nor
is the reply brief an opportunity to make arguments that could have been made in
the principal brief on appeal to rebut the Examiner's rejections, but were not."
Continue reading "Restricted Reply"
Posted by Patent Hawk at 12:40 AM | Prosecution | Comments (0)
January 5, 2010
Interference
The noxiousness of the faux first-to-invent regime that the U.S. alone clings
to is seldom exposed to the harsh daylight of the appeals court. Philips got its pulse up over a patent it inherited
when it drew the short straw in a BPAI interference against Cardiac Science.
Philips sued in Washington district court, where the judge sua sponte ditched
the case with prejudice, provoking appeal. The CAFC reminded of the intricate
rules that the PTO ignored, and the district court failed to heed.
Continue reading "Interference"
Posted by Patent Hawk at 11:44 PM | Prosecution | Comments (8)
August 19, 2009
Disclaimed
RFID
Tracker sued Wal-Mart and others for infringing
6,967,563, claiming an RFID reader. The district court judge construed the
claim to exclude the RFID reader from also being a transmitter, owing to
prosecution disclaimer. Hence, the defendants could not be tagged for
infringement, because their reader included a transmitter. RFID Tracker trekked
to appeal.
Posted by Patent Hawk at 12:45 PM | Prosecution | Comments (0)
June 23, 2009
Unappealing
More
than ever, patent prosecution is a gambler's game. As Admiral Adama in
Battlestar Galactica
observes: "sometimes you have to roll the hard six." In prosecution, facing an
objectionable rejection, appeal. Professor Dennis D. Crouch has taken a
cold-eyed look at
rejection
rates for BPAI appeals. Not a savory prospect. The hard six is a very hard
roll, particularly when playing against Obzilla.
Continue reading "Unappealing"
Posted by Patent Hawk at 3:25 PM | Prosecution | Comments (52)
May 19, 2009
AE = Accelerated Excuses
Start with a well-designed,
seemingly effective program; add bureaucratic tanglese; top it off with the
ubiquitous "we are always right, as we are the government" mentality, and, what
do you get? The USPTO Accelerated Examination (AE) program in actuality. In a
non-surprising move, the USPTO has rejected numerous otherwise valid requests
for AE on the slightest technicalities. Apparently the easiest way to meet the
goal of disposal within one year is to dispose of many without examination, and
with no regard to fairness.
Continue reading "AE = Accelerated Excuses"
Posted by Mr. Platinum at 5:36 PM | Prosecution | Comments (28)
May 9, 2009
Gumped
Louis
Stumberg and James Fulton invented a safety device for firefighters:
automatically sounding an alarm if a firefighter didn't move for some time
(presumably incapacitated). In 1989, the inventors hired
Akin Gump to file a series of patents.
Upon later enforcing the patents, they wound up getting settlements totaling $9
million. John
Raley of Cooper & Scully, one of
the firms representing the inventors: "When these actions were settled, they
were settled much more cheaply than they should have been settled for. The
royalty that should have been awarded to these plaintiffs was far less than if
Akin Gump had done their job properly in handling the patent applications." The
apparent problem: the prosecutor had failed to disclose information material to
the patent, and, according to Raley, did so with intent to deceive the PTO.
Posted by Patent Hawk at 12:28 AM | Prosecution | Comments (1)
May 6, 2009
Doubled Over
Dr.
Frits Jacobus Fallaux stumbled into a continuation dilemma. The fifth in a family
series ran into a double patenting rejection. Earlier patents in the family only
one shared inventor in the family, and the earlier patents were owned by a
different assignee at the time of rejection. The examiner applied the normal
one-way test for obviousness-type, i.e., non-statutory double patenting on some
claims. Unable to file a terminal disclaimer to eliminate the issue, because of
the earlier patents being assigned away, Fallaux countered that the more rarely applied two-way test
was appropriate.
Continue reading "Doubled Over"
Posted by Patent Hawk at 11:42 PM | Prosecution | Comments (18)
April 12, 2009
Double Patenting Dilemma
Takeda
Pharmaceutical filed a patent application for cephem
antibiotic compounds, and the process for making those compounds, in Japan, in
December 1974. Takeda in 1975 filed corresponding applications in the UK and US.
The US family started with
4,098,888 &
4,298,606.
In 1990, Takeda filed for what became
5,583,216, which covered a process for making the compounds
claimed in '888 and '606. Anonymous requests for reexamination of '216 led to a
double patenting dilemma, which the appeals court resolved badly, not thinking
through the implications of its ruling.
Continue reading "Double Patenting Dilemma"
Posted by Patent Hawk at 9:32 AM | Prosecution | Comments (1)
March 22, 2009
Dissolved
Last
week's CAFC showdown over inventorship highlights the foolery of
first-to-invent, an anachronism indulged in only by the U.S. All other countries
in the world use a first-to-file priority system. The next-to-last to abandon
first-to-invent was the Philippines. In this episode, Henkel battled
Procter & Gamble over a dishwater detergent fizzie.
Posted by Patent Hawk at 11:59 PM | Prosecution | Comments (10)
March 16, 2009
Black Kettle, Says Pot
The patent office is barking about its brethren offices worldwide. John Doll, acting alpha dog, announced that "the USPTO has noticed a significant number of international applications filed in the United States Receiving Office (RO/US) under the Patent Cooperation Treaty (PCT) where the applicant has chosen an International Searching Authority (ISA) which is not competent for the subject matter of the claimed invention" ... not to mention the countless US applications received where applicant didn't even have a choice.
Continue reading "Black Kettle, Says Pot"
Posted by Mr. Platinum at 12:26 PM | Prosecution | Comments (1)
March 8, 2009
Reexamination
The validity of a granted patent may be challenged before the USPTO at any time during a patent's life. There are two types of
reexamination: ex
parte and inter partes. Both start by petition to the Office,
with the petitioner citing "a substantial new question" of patentability in the
form of prior art. The older ex parte form comprises a one-shot injection
of prior art. Inter partes reexamination, introduced in 1999, affords the
petitioner continued kibitzing. At a cost.
Continue reading "Reexamination"
Posted by Patent Hawk at 10:47 PM | Prosecution | Comments (2)
February 19, 2009
First to Fail
The
great anachronism of the U.S. patent system arises with interferences, a natural
outgrowth of making priority a mystery by having a first-to-invent regime,
rather than the tidier first-to-file, adopted worldwide, everywhere but this
backwater too proudly called "the good ole US of A." Herein, a priority date squabble over collapsible pet carriers
that aren't patentable anyway, as KSR kicks them out of the doghouse and
buries them in the graveyard.
Continue reading "First to Fail"
Posted by Patent Hawk at 5:14 PM | Prosecution | Comments (0)
February 8, 2009
Prosecution for Enforcement
It's
relatively easy to get a novel invention examined and granted. That statement is
enough to make many a seasoned prosecutor choke. That's because most seasoned
prosecutors don't litigate. The high art form of prosecution is prosecuting for
litigation. The right anticipation is in both what you say, and what you don't.
Continue reading "Prosecution for Enforcement"
Posted by Patent Hawk at 7:31 PM | Prosecution | Comments (9)
January 25, 2009
Intellectually Amish
Patent
examiners are embracing §101 rejection for
process claims, reinvigorated
by Bilski.
Oddly, the rejections often skirt citing Bilski directly, instead relying
upon earlier precedent, such as Benson. The Bilski ruling
favorably cited 1982 Abele for discrimination between overreaching claims
and more "narrowly-claimed process patent-eligible."
Abele provides an escape route from rejection, by analogy: data that
represents "physical and tangible objects."
Continue reading "Intellectually Amish"
Posted by Patent Hawk at 3:12 PM | § 101 | Comments (12)
January 23, 2009
Non-Obvious Claiming; Obvious?
Arguably the
best-known bit of patent law: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C §101. Also, lamentably, commonly ignored during claims drafting.
Continue reading "Non-Obvious Claiming; Obvious?"
Posted by Mr. Platinum at 5:20 PM | Prosecution | Comments (2)
January 17, 2009
Compact Prosecution
On the seventh office action of a competitive pricing patent application,
yet another non-final, a new rejection appears, besides the continual
findings of prior art pieces that never survive reply, owing to their
inadequacy in rendering the claims anticipated or obvious. A "computer-implemented method"
of changing price is not patentable in light of
§101.
Continue reading "Compact Prosecution"
Posted by Patent Hawk at 1:30 PM | § 101 | Comments (5)
November 15, 2008
Process Flavor de Jure
The
techno-Neanderthal CAFC
having roiled process claims with its bilious Bilski ruling, the question remains how to best draft software method claims.
The economical "computer-implemented method" preamble may not fly now.
Another charade exists. Post-Bilski, the BPAI still let Beauregard software
claims pass §101 muster.
Continue reading "Process Flavor de Jure"
Posted by Patent Hawk at 12:16 AM | § 101 | Comments (4)
November 13, 2008
Bad Brew on Good Chemistry
6,365,687
claimed a chemical process used in plastic packaging, first disclosed in 1958.
Oddly, '687 underwent Director-ordered reexamination, and was found unpatentable
by prior art and double patenting. A 2-1 appeal decision damned a patent for
which inventors Dr. Giulio Natta and Dr. Karl Ziegler won the Nobel Prize in
chemistry in 1963.
Continue reading "Bad Brew on Good Chemistry"
Posted by Patent Hawk at 6:40 PM | Prosecution | Comments (0)
November 12, 2008
Discipline
Patent practitioners take note. As of September 15, committing any crime,
including those of immodest moral turpitude, such as being caught for commercial
engagement of prosecution in your pants, can result in revoking your
"privilege" to prosecute before the USPTO. Even a driving violation conviction must
be reported to the PTO.
Posted by Patent Hawk at 2:36 PM | The Patent Office | Comments (2)
November 9, 2008
Getting Physical
Non-final office action,
received post-Bilski, directed to claims with the
preamble: "A computer-implemented method comprising:", followed by steps of
computer file selection, storage, and network transfer/copy. Examiner rejection as
follows:
The claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101.They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.
Continue reading "Getting Physical"
Posted by Patent Hawk at 4:29 PM | Prosecution | Comments (35)
October 23, 2008
Staying Alive
As
Wall Street floats on an ocean of dumb money, so invention floats on an ocean of
dumb patents. Frequently, patent holders solicit
Patent Hawk services with "lame duck"
patents - a solitaire patent, often with weak claims, without any continuation.
Are prosecution firms, many well-known nameplates, so inept as to not advise
their clients to grow a portfolio, so as to improve claim scope coverage? So
inept to not have a clue as to how patents are enforced, even as many of those
firms work both prosecution and litigation? Repeated anecdotal evidence over the years answers a bit too emphatically "yes."
Continue reading "Staying Alive"
Posted by Patent Hawk at 2:09 PM | Prosecution | Comments (37)
September 23, 2008
No Petty Bone
Electronic
game machine maker Aristocrat sued International Game for
infringing
7,056,215, a blemished patent. The blemish was to
futz reviving the
patent application after abandonment during prosecution. The district court turned the blemish to cancer,
killing the patent. The appeals court was more patient.
Continue reading "No Petty Bone"
Posted by Patent Hawk at 10:19 PM | Case Law | Comments (0)
September 20, 2008
Accel Excels
Having
recently completed an
Accelerated Examination filing, I am convinced that this is the way to go,
especially under ideal circumstances. Accelerated Examination (AE) has taken
quite a lashing on this blog, with one muffin-head
professing: "Forget accelerated examination. Accelerated examination is an
act of desperation for both the patent office and applicant." Personally, I am left rather
touchy-feely about its prospects.
Continue reading "Accel Excels"
Posted by Mr. Platinum at 1:27 PM | Prosecution | Comments (4)
September 13, 2008
Going Down the 112 Way
Following up on his
§101 ramble,
USPTO policy maven John
Love put out the hard word in a memo duet on §112: ¶2 indefiniteness for numeric
imprecision, and for means claims, which nominally fall under ¶6.
Continue reading "Going Down the 112 Way"
Posted by Patent Hawk at 10:28 PM | Prosecution | Comments (1)
September 4, 2008
Old Art Never Dies
A
common patent litigation strategy has been to seek reexamination after losing in
court, as in the case herein. Defendant counsel has more rhetorical power before
the court, as contrasted to a single injection to the PTO for reexam, after
which the patentee tries to hold granted ground while an infringer watches from
the sidelines. And a post-verdict reexam is as much for spite as anything, as it
doesn't necessarily turn back the clock.
Today's CAFC ruling should flip the litigation-first/reexam-last-ditch strategy on its head: scorching prior art search to reexam first, pleading a stay of litigation pending reexam outcome. That's because court validation is not subject to reconsideration from PTO invalidation, but a PTO kill terminally damns. Further, previously cited art can be rehashed in reexam.
Laying yet another brick of fortification against junk patents, the CAFC clarifies the power of reexamination as a "quality check."
Continue reading "Old Art Never Dies"
Posted by Patent Hawk at 8:44 PM | Prosecution | Comments (1)
August 24, 2008
By the Book
Responding
to definitions of terms in a reexamination Examiner's Answer, an Appellant filed
a reply that included dictionary definitions, to rebut the examiner's
construction. The reply brief was refused entry, on the ground that the
dictionary definitions constituted "new evidence." A petition to overturn was
denied.
Continue reading "By the Book"
Posted by Patent Hawk at 6:02 PM | Prosecution | Comments (1)
Pulp Non-Fiction
Any
competent statistician will tell you that sample size is telling. So why do Andrew S.
Baluch and
Stephen B. Maebius just
look at
the first 30 of 308 inter partes reexaminations since late 1999, when the
practice began? From the smattering, the two
Foley & Lardner attorneys find reexamed claims downed a whopping 73% of the
time. 43% of the time, the patent holder didn't even bother to reply. The
authors term it "surprising efficacy." A sense of perspective would call it
numbers that tell you nothing noteworthy.
Continue reading "Pulp Non-Fiction"
Posted by Patent Hawk at 10:28 AM | Prosecution | Comments (2)
August 20, 2008
MPEP E8r7
PDFs
of Revision 7 of the Eight Edition of
MPEP are now
available. These are July 2008 changes from the September 2007 r6. The HTML
version, this prosecutor's preference, is pending. Wish they provided a specific
change list.
Posted by Patent Hawk at 8:36 AM | Prosecution | Comments (1)
August 2, 2008
Inequitable Conduct
Proving inequitable conduct
requires jumping "a high bar." There are two prongs to inequitable
conduct: the materiality of omission (failing to disclose relevant information to the
patent office), and intent to deceive. The Eisai
CAFC ruling last week elucidated the current standard, with the contentious Aventis ruling
in May shedding heat and light. For prosecutors, here's a checklist to guard
against a patent going rancid.
Continue reading "Inequitable Conduct"
Posted by Patent Hawk at 11:34 AM | Inequitable Conduct | Comments (0)
July 23, 2008
Illegal
The
USPTO posted
a
warning in the Federal Register about using foreign patent prosecution
companies. Under
15 CFR 730-744, technology exports are subject to government approval by the
Bureau of Industry and Security (BIS) at
the Department of Commerce. If caught sending your software patent application
to a cut-rate prosecution shop in Bangalore, you will be spanked and your patent
yanked.
Posted by Patent Hawk at 2:40 PM | Prosecution | Comments (0)
July 16, 2008
Try Triway
The USPTO, EPO, and JPO are joining forces once again to combat pendency and quality issues. With all their powers combined, they are Triway, planetary patent force. The one-year Triway pilot will launch July 28th, and will accept up to 100 participating applications. Triway will complement the existing Patent Prosecution Highway Program, and attempt to further promote worksharing between patent offices.
Posted by Mr. Platinum at 9:15 PM | Prosecution | Comments (0)
July 8, 2008
Dogging An Application
While
there is no formal channel for an external party to submit potentially
invalidating prior art to the USPTO to derail a patent application, there are
ways. But a bark that doesn't bite can bite back later.
Continue reading "Dogging An Application"
Posted by Patent Hawk at 1:59 AM | Prosecution | Comments (4)
June 10, 2008
Compact Appeal
Facing
an onslaught of appeals because of abysmal examination, the USPTO has new rules
to streamline the appeal process. Appeals in a single round. Gone: examiner
response to an appeal brief, and the ability to raise new grounds of rejection
in examiners' answers.
From the
announcement:
Briefing requirements that were not necessary for the appeal - such as the "summary of the claimed subject matter" - are no longer required. The facts and arguments required in the brief are focused on distilling the issues of the dispute and establishing where the examiner erred in the rejection. Finally, page limit requirements ensure concise and clear arguments.
Continue reading "Compact Appeal"
Posted by Patent Hawk at 1:53 PM | Prosecution | Comments (4)
June 5, 2008
Reexamination
It has become a common tactic for a patent infringement defendant to request
a reexamination. Courts have no obligation to acknowledge such, but many will
stay proceedings pending reexam outcome if it occurs early enough in the
lawsuit. Courts also have no obligation to heed the results of a reexam. Once a
lawsuit is initiated, the court has jurisdiction to decide as it sees fit.
Continue reading "Reexamination"
Posted by Patent Hawk at 11:57 AM | Prosecution | Comments (0)
Interview First
The
USPTO has a pilot program for select art units, offering applicants the
opportunity for an interview prior to first office action. Of course, a
prosecutor could always voluntarily do the same. While pre-action interview may
be "in the interest of compact prosecution," under the current USPTO regime, it
is more a formula for vexation.
Continue reading "Interview First"
Posted by Patent Hawk at 12:53 AM | Prosecution | Comments (1)
May 30, 2008
Tarnished
Landmark
Screens had
Thomas D. Kohler file a patent application in 2002 for an electronic
billboard. Allegedly, after a restriction requirement, Kohler dropped claims and
supposedly filed a divisional. But, according to Landmark, Kohler screwed up,
lost continuity, thus losing the original priority date, making the parent and
its own billboard prior art. It seems that the so-called divisional omitted the
specification - nothing but a sheet of paper indicating that a divisional was
being filed. Landmark sued for malpractice last week.
Posted by Patent Hawk at 2:38 PM | Prosecution | Comments (0)
May 24, 2008
Whining
Hal
Wegner has his knickers in a twist:
Beyond the anonymous attack launched against the PTO by an "Institute for Progress", Professor Dennis Crouch in his highly reliable blog, Patently O, has now exposed a patent attorney or agent who has launched an anonymous website, "USPTOExaminers.com", as a way for practitioners to anonymously post criticisms of individual Examiners. Both examples of anonymous criticism are unacceptable, but the latter is far worse as it posts attacks against individual Examiners who have no way to defend themselves.
Posted by Patent Hawk at 2:32 PM | Prosecution | Comments (2)
May 23, 2008
Enablers
There appears to be a rampant addiction to poor claims drafting, injecting claims with vague language, unnecessary legalese, and unbounded scope. This addiction spirals downward into a vat of confusion during prosecution, and eventually hits rock bottom during litigation as judges try desperately to resuscitate claim meaning. Examiners refuse to help, acting as enablers to this dangerous obsession.
Posted by Mr. Platinum at 9:50 AM | Prosecution | Comments (16)
May 19, 2008
No Comprende el Postulado
Squalls of claim construction confusion
howl in the halls of patent courts. The problem originates with incompetent prosecutors
fond of squirrely claim language, and inventors failing to appreciate that precise language
is essential to breathing life into their inventions.
Continue reading "No Comprende el Postulado"
Posted by Mr. Platinum at 11:40 PM | Prosecution | Comments (9)
May 10, 2008
Nadir
The
phrase "with all due respect" is common to arguments traversing claim rejection.
But how much respect is due for utter breakdown of "examination on the merits"?
This is not a rhetorical question.
Posted by Patent Hawk at 9:35 PM | Prosecution | Comments (3)
May 2, 2008
Patent Prosecution Highway - Bridge Two
After recent finalization of the Patent Prosecution Highway across the Pacific, construction will soon begin on a route spanning the Atlantic. The USPTO and EPO have announced a cooperative program to "leverage fast-track patent examination procedures already available in both offices to allow applicants to obtain corresponding patents faster and more efficiently", adding another bridge to the developing global patent prosecution highway network.
Continue reading "Patent Prosecution Highway - Bridge Two"
Posted by Mr. Platinum at 12:08 PM | Prosecution | Comments (0)
May 1, 2008
Appeal Brief Summary
In the past few years, patent examiners increasingly nitpick, sticklers for
the rules and beyond. Appeals are burgeoning, as are non-compliance notices for
appeal briefs under MPEP
1205.03. A common area for complaint is the summary: either too little or
too much. A good answer is to give both.
Continue reading "Appeal Brief Summary"
Posted by Patent Hawk at 8:16 PM | Prosecution | Comments (4)
April 16, 2008
Sauce for the Goose
The USPTO electronic filing system (EFS) requires that
all submitted pdf
documents have embedded fonts. EFS provides acknowledgment receipts for all EFS
customer submissions. The receipts are not compliant with EFS standards, as they
don't have the requisite Arial font embedded.
Posted by Patent Hawk at 3:21 AM | Prosecution | Comments (1)
April 15, 2008
First Action Interview Pilot
The USPTO is launching a new pilot program granting examiner interviews prior to a first office action on the merits. The PTO claims the program will "reduce pendency and improve patent quality" by "enhancing information exchange between applicant and examiner and promoting early resolution of outstanding issues". Increasing communication between applicant and examiner is finally a step in the right direction, but it remains to be seen if this early interview process will effectuate any real change, or if the already present "reject, reject, reject" mentality will cause the interview process to be as difficult as selling ice to Eskimos.
Continue reading "First Action Interview Pilot"
Posted by Mr. Platinum at 3:54 PM | Prosecution | Comments (4)
Complex Work Unit Pilot
The
USPTO has a new pilot
program, guaranteed to become standard practice, to facilitate electronic
document submission for what it calls "complex work units:" chemical structure
drawings, mathematical formulae, three-dimensional protein crystalline structure
data, and table data. The program lets applicants submit such data
electronically in a variety of file formats. The thrust is facilitating prior
art searching by giving examiners ready access to the data, as opposed to
fiddling with conversion of paper submissions, as has been done in the past.
Posted by Patent Hawk at 3:40 PM | Prosecution | Comments (1)
April 14, 2008
Color Within the Guidelines
The USPTO recently published updated Written Description Training Materials, as a revision to training materials from 1999, to reflect changes in case law and technology.
Continue reading "Color Within the Guidelines"
Posted by Mr. Platinum at 1:26 PM | Prosecution | Comments (0)
April 13, 2008
Platinum Patents
Patent
Hawk is delighted to announce
Platinum Patents, the prosecution branch of Patent Hawk. The same folk who
have been wreaking havoc on patents for years for litigation defense,
facilitating monetizing patents for patent holders, and providing patent
intelligence to gain an unfair competitive edge, now offer prosecution services
for inventors. The same excellence our existing clientele experience is now
honed to providing superior patent protection.
Continue reading "Platinum Patents"
Posted by Patent Hawk at 7:05 PM | Prosecution | Comments (0)
April 11, 2008
Profit From Loss
Hoping
to reap a windfall from another 9/11, a
patent application was filed in 2006 to patent response to chaos, claiming a
method and computer program for "optimizing the skills and the resources" "for a
chaotic event." Perhaps the applicant anticipated passage of pending patent
legislation. The assignee is IBM.
Posted by Patent Hawk at 1:58 AM | Prosecution | Comments (0)
March 29, 2008
Mixed Claim Types
Both the USPTO and the courts proscribe
claims mixing statutory claim classes
as both unpatentable subject matter under
§101 and indefinite under
§112 ¶2.
But, as is often the case with claim construction, the line may seem fuzzy.
Herein a guide.
Continue reading "Mixed Claim Types"
Posted by Patent Hawk at 12:11 AM | Claim Construction | Comments (3)
March 27, 2008
She Lit a Candle and Showed Me the Way
Patent examiners act as gatekeepers between inventors and the pearly entrance to patent glory. With the patent office hell-bent on rejection, achieving salvation can come down to knowing thy gatekeeper. Enter USPTO Examiners, a spanking new website, offering deliverance while boasting "We Examine the Examiners."
Continue reading "She Lit a Candle and Showed Me the Way"
Posted by Mr. Platinum at 2:22 PM | Prosecution | Comments (4)
March 20, 2008
Don't Feel So Restricted
From MPEP 802.02: Restriction practice is designed to require applicants to "elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application."
Continue reading "Don't Feel So Restricted"
Posted by Mr. Platinum at 6:15 AM | Prosecution | Comments (10)
March 11, 2008
Cells Unstemed
WARF
is a patent holding company for the University of Wisconsin scientific
community. Three WARF stem cell patents that had validity aspersions cast by
"public interest" busybody Dan Ravicher of
PUBPAT have survived USPTO reexamination, albeit with some amendment.
Continue reading "Cells Unstemed"
Posted by Patent Hawk at 7:50 PM | Prosecution | Comments (2)
Appeallusion - Part II
As previously reported, the current affirmance rate of the USPTO Board of Patent Appeals and Interferences (BPAI) yields the illusion of high-quality examination at the PTO. Let's glance at rates that better demonstrate the unfortunate reality.
Continue reading "Appeallusion - Part II"
Posted by Mr. Platinum at 8:51 AM | Prosecution | Comments (1)
March 8, 2008
Gold Standard
A patent discloses an invention that is useful, valuable, and innovative; a patent that protects invention with the broadest possible claims, but still novel and non-obvious over the prior art;
claims applicable under the doctrine of equivalents, untainted by prosecution
estoppel; a patent that cites the most relevant prior art. This is the gold-standard patent that prosecutors strive toward.
Continue reading "Gold Standard"
Posted by Mr. Platinum at 12:33 PM | Prosecution | Comments (0)
March 7, 2008
CIP Not A Divisional
Teva's
ANDA for a generic version of Pfizer's
Celebrex, an arthritis
treatment, predictably met with infringement assertion:
5,466,823;
5,563,165; and
5,760,068. Teva lost, and appealed, whereupon the CAFC found double
patenting in the '068. Safe harbor for divisionals under
35 U.S.C. § 121 applies only to divisionals, not CIPs, which '068 was.
Continue reading "CIP Not A Divisional"
Posted by Patent Hawk at 2:56 PM | Prior Art | Comments (0)
March 5, 2008
Appeallusion
The current affirmance rate of the
USPTO Board of Patent Appeals and Interferences (BPAI)
yields the illusion that examiners deserve a pat on the back for a job well
done, but behind every illusion lies reality. Let's peek at the man behind the curtain.
Continue reading "Appeallusion"
Posted by Mr. Platinum at 7:37 PM | Prosecution | Comments (10)
Punted
The
power of patents to stock punters was apparent on Tuesday as
Tessera Technologies shares were battered in the wake of a non-final office action
in a patent reexamination; the price
ravaged 39%, losing $8.99, closing at $14.07. Like a kindergarten "time out," share trading was halted mid-day after a
free-fall of 52%; trading in massive volume. Tessera's patent gravy train has
reaped $250 million in licenses so far.
Posted by Patent Hawk at 12:08 AM | Prosecution | Comments (6)
March 1, 2008
Narrow Escape
WARF,
son of Mogh, has again evaded death at the hands of Romulans: this episode, one
posing as a USPTO patent examiner.
7,029,913, claiming in vitro culturing of Klingon stem cells, passed
reexamination.
Continue reading "Narrow Escape"
Posted by Patent Hawk at 8:59 PM | Prosecution | Comments (0)
February 26, 2008
On-Line Chat for Independent Inventors
Every couple of months the USPTO hosts an on-line chat, allowing independent inventors to ask questions regarding the patent process. The next chat: Thursday, February 28th, from 2 to 3 PM (EST).
Continue reading "On-Line Chat for Independent Inventors"
Posted by Mr. Platinum at 10:02 AM | Prosecution | Comments (3)
February 24, 2008
Exam Plan
USPTO
registration exam questions have remained very similar throughout the years,
some word-for-word identical, but the overall focus of the 100-question exam has
shifted drastically. Is this merely the necessary result of a shift in exam
format, or is it an indication of a change in focus at the PTO? Regardless, for
those currently preparing for the Patent Bar, modify your study plan
accordingly.
Posted by Mr. Platinum at 1:27 PM | Prosecution | Comments (3)
February 3, 2008
Obviousness Training
USPTO
examiner training in obviousness rejections has been ongoing. In review, what shines as sunlit crystal is the legacy of KSR: how
disparate technologies may be combined as basis for rejection, beyond what prior
art disclosed.
Continue reading "Obviousness Training"
Posted by Patent Hawk at 12:59 PM | Prosecution | Comments (3)
January 23, 2008
At the Bar with a Girl Named Wiki
Patent Agent Alex Nix recently created Patent Bar Questions, a Wiki, inspired by a thread at Intellectual Property Forums, geared toward poor souls preparing for that test that separates the savvy from the savant. The relatively simple site is bifurcated: Key Things to Know for the Patent Bar Exam, a chapter by chapter walkthrough of the MPEP that highlights key sections; and Questions reportedly asked in the Patent Bar Exam, a listing of questions reported by those who have recently taken the exam. Since reported strictly from memory, the questions are not comprehensive, instead reading more like concept areas. The Wiki is currently a wee sparse; hence, better treated as a supplemental source of information, rather than a primary. For those wanting in-depth Patent Bar study materials, one of the many commercial-test-prep companies is still the way to go. Yet, like any good Wiki, Patent Bar Questions is community supported, and so the amount of available insight will inevitably grow.
Posted by Mr. Platinum at 4:52 PM | Prosecution | Comments (0)
Swear It
The
patent office will be refusing defective oaths for patent applications as of
June. Shape up and swear like you mean it when you file.
Posted by Patent Hawk at 12:23 PM | Prosecution | Comments (2)
January 22, 2008
Swan Song
KSR
obviousness claims another victim. Sang Su Lee, one of the longest running ex
parte appeals, at 14 years (the first BPAI opinion was 1994), was knocked out in
the second round by the CAFC in a simple Rule 36 order (a per curiam affirmance
without an opinion: CAFC
2007-1191).
Round one vacated the BPAI decision for failing to specify a motivation for a
combination obviousness finding. Motivation became passé as KSR sucked the
oxygen out of the CAFC's longstanding teaching-suggestion-motivation (TSM) test.
Posted by Patent Hawk at 12:39 PM | Prior Art | Comments (2)
January 14, 2008
The Perils of Prosecution
With
proclivity to despotic rule-making, USPTO management has issued edict to trash examination to the lowest common denominator.
Playing the numbers to demonstrate its toughness, top management determination was to sink
the allowance rate. Many moons ago, anticipating outcry at examination
injustice, the agency geared up for a ramp in appeals. Outrageous incompetence
is in full flower at the PTO. The governmental agency representing the
sanctity of invention has been so corrupted as to soil itself in disgrace; in doing so, pointing out the woeful
neglect of its overseers.
Continue reading "The Perils of Prosecution"
Posted by Patent Hawk at 1:50 PM | Prosecution | Comments (25)
December 21, 2007
Rule-Crack
USPTO
management is pushing rule-crack on examiners, who are smoking it. Rule-crack:
crystallized infractions homeopathically processed so that they don't even exist
in CFR form. Before rampant rule-crack ingestion, the majority of examiners were
randomly competent at best. Engendering curmudgeonly denial of due process,
rule-crack is spawning egregious intellectual property theft.
Posted by Patent Hawk at 1:10 AM | Prosecution | Comments (7)
December 18, 2007
Citing Prior Art
In
many instances, the proposed IDS rules will create a prior art search dilemma
for patent prosecutors. The new rules require extensive analysis of cited art,
reportage that characterizes the claims and thus invites prosecution estoppel,
hence hampering enforcement potential, particularly applying the doctrine of
equivalents. In a field crowded with art, to minimize cost while maximizing
patentability under the new IDS rules, a crafty prior art strategy is
imperative.
Continue reading "Citing Prior Art"
Posted by Patent Hawk at 12:21 AM | Prosecution | Comments (2)
December 5, 2007
Swearing Back
In
a losing battle for priority, Harold Garner showed the USPTO as a curmudgeonly
weasel that doesn't abide by its own rules. Constructively, what today's appeals
court decision reminds is that swearing back requires independent corroborating evidence showing
prior reduction to practice, convincingly demonstrating that
the claimed invention "worked for its intended purpose" at the claimed
pre-filing priority date.
Continue reading "Swearing Back"
Posted by Patent Hawk at 5:26 PM | Prosecution | Comments (0)
November 16, 2007
The Hanging Tree
Patent malpractice accusations are becoming more frequent as the value of
patents has generally increased. With that, the costs associated with
malpractice are also going up. Back in 1985, IP attorneys were but a shade
over one-half percent of malpractice claims. The rate as of 1999 had breached
the 1% mark. With USPTO prosecution proceedings becoming positively squirrelly,
and thus more demanding upon prosecutors, a specter looms that the patent
malpractice problem may worsen.
Continue reading "The Hanging Tree"
Posted by Patent Hawk at 12:45 PM | Prosecution | Comments (1)
November 13, 2007
101 Crumble
The
September
Comiskey (mental processes) and
Nuijten
(signals) CAFC
§101
decisions rocked the patent world. In unctuous spirit of thrashing patentable
subject matter, the USPTO Patent Board of Appeals and Interferences (BPAI) has joined the
agency's crusade of wanton illegality, wreaking havoc with in its recent
decisions. One wag, through gritted teeth: "Judges Barret and MacDonald seem to
be the bad apples; almost always on the panel when the Board issues a real
stinker decision. How do you get the idea of incompetent legal analysis across
to the official to whom the Board reports -
James Toupin[,
patent office general counsel]? The blind leading the blind."
Continue reading "101 Crumble"
Posted by Patent Hawk at 10:51 PM | Prosecution | Comments (0)
October 23, 2007
Wasuri Mono
Chrishan Samuel hired
Townsend and Townsend to prosecute his
patent. On
May 20, 2005, Townsend employee Mr. R took the BART train to go to the post
office to file Samuel's application; he promptly fell asleep on the train, but
awoke just before his stop. Groggy, he left his bag with the application on the train. Samuel found out the next
day, and the papers were filed on May 21. Samuel petitioned the USPTO to waive
37 CFR §1.10,
to get the filing date wound back a day.
Continue reading "Wasuri Mono"
Posted by Patent Hawk at 5:36 PM | Prosecution | Comments (4)
October 22, 2007
MPEP E8r6
The
Manual of Patent Examining Procedure (MPEP), eight edition, revision six (E8r6)
is now available
in PDF format. The more convenient HTML format is not quite ready yet; stay
tuned for updates. That is all; carry on, fine prosecutors everywhere.
Posted by Patent Hawk at 10:00 PM | Prosecution | Comments (0)
October 20, 2007
Thinning the Patent Thicket
Thanks
to KSR,
the bar of
§103(a)
is set obscenely high for patent prosecution. Examiner rejections
on obviousness, regularly combining three and four references to cover all the
claim limitations, reek of hindsight, and are pasted with the thinnest of glue:
e.g. "it would have been obvious to one of ordinary skill in the art at the
time of invention to combine four patentably distinct references of unrelated
subject matter because it would have been advantageous, as the applicant
claimed."
Posted by Patent Hawk at 3:25 PM | Prosecution | Comments (1)
October 19, 2007
Stopping Limiting Continuations Continued
Inventor
Dr. Tafas was first
to the courthouse to sue Jon Dudas for the new examination limits,
specifically, limiting continuations.
GlaxoSmithKline followed suit.
Steven J. Moore
at Kelley Drye & Warren, Tafas
counsel, informs that "the Glaxo case has been consolidated into the Tafas
case." Tafas has filed an
amended complaint. And Hal Wegner analyzes the justifications, and pitfalls,
of late-stage continuation filings.
Continue reading "Stopping Limiting Continuations Continued"
Posted by Patent Hawk at 12:51 PM | Prosecution | Comments (1)
October 15, 2007
Patent Malpractice
The
appeals court ruled in two patent malpractice cases today:
AMT v. Akin Gump
and Immuocept v.
Fulbright & Jaworski. Patent malpractice is found a federal issue under
28 U.S.C. § 1338.
Continue reading "Patent Malpractice"
Posted by Patent Hawk at 9:51 PM | Litigation | Comments (2)
October 10, 2007
The Obvious Guide
The
USPTO
published its examination guidelines for determining obviousness in light of
the SCOTUS KSR v. Teleflex ruling.
From the patent office announcement:
“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.”
Continue reading "The Obvious Guide"
Posted by Patent Hawk at 12:33 PM | Prior Art | Comments (5)
October 9, 2007
Anti-Submarine
Attention
Inventors - the Peer-to-Patent
people want you to expose yourself. You'll need a waiver to wag it, because the
whole thing is barely legal. The USPTO-sponsored pilot program to let nerds with
too much time on their hands play whack-a-mole with your patent application is
promoting itself. Given that the program is limited to 250 applications, and has
been going for months, with name-plating from major corporations, who apparently
are not participating very actively, this smacks of desperation.
Continue reading "Anti-Submarine"
Posted by Patent Hawk at 5:33 PM | Prosecution | Comments (4)
Examination Limits Briefing
Examiners
have just been briefed on the examination limits. The USPTO PowerPoint
presentation, available
here, serves as an excellent walk-through of the impending rules, with,
naturally, occasional agency spin.
Continue reading "Examination Limits Briefing"
Posted by Patent Hawk at 4:53 PM | The Patent Office | Comments (0)
October 2, 2007
Amateur Hour Open Season
Chris
Wong, project manager of the
Peer to Patent pilot program, where select voluntary patent applications are
rousted by amateur-found prior art, wants the law changed to allow third-party
prior art submission for all patent applications.
Continue reading "Amateur Hour Open Season"
Posted by Patent Hawk at 11:40 PM | Prosecution | Comments (2)
September 27, 2007
Fiction Writers
Reeking
of nasty anti-patent bias, evidence of high-level incompetence at the USPTO
trickles in. Today, the appeals court caught the patent appeals board (BPAI)
equating "flexible" with "rigid."
Continue reading "Fiction Writers"
Posted by Patent Hawk at 1:03 PM | Prosecution | Comments (4)
September 24, 2007
ReExam Reverb
KSR
has created a favorable forum: inter partes
reexamination requests, i.e., someone other than the patent holder butting in, were
once shunned for the risk of bullet-proofing a patent, but now are soaring as a low-cost bet to smother patents in the
cradle, before they walk into the courtroom. The recent kill rate is 88%.
Continue reading "ReExam Reverb"
Posted by Patent Hawk at 1:22 AM | Prosecution | Comments (0)
September 14, 2007
Examination Failure
Accelerated examinations, where an applicant provides
rigorous self-examination of a patent application, is largely replicated in the
Examination Support Document (ESD) that allows exceeding the "5/25"
examination claims limits being imposed by the USPTO. The experiment of
accelerated examinations is proving an abysmal failure for those involved. Hal Wegner mouths off about USPTO management "shortcomings" and abrogation of
law by fiat.
Continue reading "Examination Failure"
Posted by Patent Hawk at 9:47 PM | Prosecution | Comments (0)
September 12, 2007
Self-Examination
The
USPTO has released its
Examination Support Document (ESD) Guidelines, prerequisite under the new
examination regime for any applicant daring to "present more than five
independent claims or more than twenty-five total claims in an application."
It's shocking to think anyone would need so many claims; they must be inventing
something.
Continue reading "Self-Examination"
Posted by Patent Hawk at 10:38 PM | Prosecution | Comments (2)
September 11, 2007
Twisted in the Wind
Raymond Jenski, prosecuting an HP patent application (09/938,465) by inventor
John Milton, had a phone interview with USPTO examiner Jean Corrielus over an
outstanding final office action. The examiner told Jenski that he would issue a new
office action, rendering moot any reply Jenski might make. So Jenski waited. But
no new action was issued. As a result, in due time, the patent office deemed the
patent abandoned, and refused to revive the application.
Continue reading "Twisted in the Wind"
Posted by Patent Hawk at 10:47 PM | Prosecution | Comments (0)
August 29, 2007
Snakebit
The
USPTO has become venomously anti-patent. John Sullivan and Findlay Russell
discovered a rattlesnake antivenom. The patent office appeals board turned a
deaf ear to declarations of novelty. On appeal in court, the CAFC struck back.
Posted by Patent Hawk at 11:02 AM | Prosecution | Comments (0)
August 25, 2007
Clear As Mud
Courtenay
Brinckerhoff of Foley & Lardner:
"The USPTO believes that the new rules [limiting examination] will improve the
patent examination process and relieve the overwhelming backlog of pending
patent applications, but may have underestimated the substantive impact the
rules will have on patent Applicants. While the USPTO promotes the rules as
promoting “certainty and clarity” in the examination process, the rules
themselves and the effects of their interrelationships are clear as mud."
Continue reading "Clear As Mud"
Posted by Patent Hawk at 11:24 AM | Prosecution | Comments (0)
August 23, 2007
No Problemo
Mark
Lemley, professor at Stanford Law School, "widely recognized as a preeminent
scholar of intellectual property law," toots of the new rules for examination
limits: "The idea that this would be any sort of significant restriction on
patent owners is ludicrous to me. It will affect 10 applications a year, maybe
50, out of 450,000."
Continue reading "No Problemo"
Posted by Patent Hawk at 12:57 PM | Prosecution | Comments (12)
August 22, 2007
Reduction to Priority
The Patent Board of Appeals and Interferences (BPAI) refused to acknowledge
an Australian patent for priority date, even though the PCT filing was correct.
The error by the BPAI was misplaced focus on conception, not reduction
to practice.
Continue reading "Reduction to Priority"
Posted by Patent Hawk at 12:13 PM | Prosecution | Comments (0)
Broadest Reasonable Interpretation
Trans
Texas futilely appealed BPAI reexamination rulings finding investment management
business method patents
5,832,461 and
6,052,673 obvious under
35 U.S.C. § 103(a).
Continue reading "Broadest Reasonable Interpretation"
Posted by Patent Hawk at 11:52 AM | Prosecution | Comments (0)
August 21, 2007
Promoting the Progress of Science
United
States Constitution, Article 1, Section 8, on "Powers of Congress": "To promote
the Progress of Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective Writings and
Discoveries"
Today, the Federal Register announces a significant step in the opposite direction: limiting inventors the exclusive right to their discoveries. At least the USPTO feels it is conveniencing itself. After all, what could be more important than a government agency making life easy for itself by limiting its services (fully paid services, no less)?!
Posted by Patent Hawk at 10:59 AM | Prosecution | Comments (0)
August 20, 2007
New PTO Rules Webcast
The
U.S. Patent and Trademark Office (USPTO) will hold a special webcast on
Thursday, August 23, 2007, at 1:00 p.m. Eastern/10:00 a.m. Pacific on new claims
and continuations rules that will allow the agency to continue to make the
patent examination process more effective and efficient by encouraging
applicants to use greater clarity and precision in describing the scope of their
inventions. The new rules will be published in the Federal Register August 21,
available at www.uspto.gov after 12:00 PM on August 21, 2007 and will be
effective on November 1, 2007.
Continue reading "New PTO Rules Webcast"
Posted by Patent Hawk at 2:46 PM | Prosecution | Comments (2)
To Be Continued
"
I wanted to share the good news with you that the final rules on claims and
continuations are expected to be published in the Federal
Register tomorrow (Tuesday, August 21, 2007). These rules are part
of USPTO's overarching goal to improve patent quality and the effectiveness of
the patent examination process." - John Doll
Continue reading "To Be Continued"
Posted by Patent Hawk at 11:34 AM | Prosecution | Comments (3)
August 16, 2007
e-Office Action
The
patent office is running a pilot program of sending electronic office actions,
using Private PAIR, with notification by email, replacing the paper version. The
USPTO is letting a limited number of new participants into the program beginning
August 31. This initiative looks a winner in terms of convenience for all
involved, and is likely to be an option for all prosecutors in the not too
distant future, when the pilot successfully concludes.
Continue reading "e-Office Action"
Posted by Patent Hawk at 6:21 PM | Prosecution | Comments (0)
August 10, 2007
Markushed
Eugene
Markush (shown) appealed his rejected chemical claims. In a landmark 1924
decision, the Commissioner of Patents approved the type of claim that would take
the Markush namesake.
Markush claims recite groups of workable alternatives. As such, relative to other claim types, Markush claims are intrinsically complex. Markush claims easily mushroom into a plethora of possible permutations. Hence, Markush claims present a considerable examination challenge: namely, searching prior art for the possible alternatives. To attempt to rein in the inherently unruly, the USPTO is proposing new rules governing Markush claims.
Posted by Patent Hawk at 5:25 PM | Prosecution | Comments (0)
August 8, 2007
On Behalf
The
appeals court settles a three-way squall for inventorship, inadvertently
highlighting the senseless Byzantine complexity of the first-to-invent scheme
that only the United States clings to, the entire rest of the world long
ago having seen the folly of, and gone to the simple first-to-file system. In
this episode, we learn that you can swear your
invention date back to something you didn't invent, but not if it wasn't done
for you.
Posted by Patent Hawk at 12:24 PM | Prosecution | Comments (1)
August 5, 2007
USTPO Obviousness Guidelines
Hal
Wegner thinks he snagged an unofficial copy of the summary of the PTO examiner guidelines
for determining obviousness. It may not be the train, but it sure looks to be
where the tracks are being laid. Here it is.
Continue reading "USTPO Obviousness Guidelines"
Posted by Patent Hawk at 10:32 PM | Prosecution | Comments (2)
July 30, 2007
Appeal Boarding
The
USPTO today published an extensive revision of the rules governing ex parte
patent appeals, where an applicant's patent
has been invalidated by the new, "leave no patent alive" obviousness regime
imposed by the
Supreme
Court's KSR decision. Given that the majority of potential pre-KSR
high-value patents may be no longer be enforceable, the patent office is
expecting a crush from those trying to hold on to what they no longer have got.
Continue reading "Appeal Boarding"
Posted by Patent Hawk at 4:16 PM | The Patent Office | Comments (1)
July 28, 2007
KSR Strikes IBM
IBM appealed one of its patent applications for displaying cached web pages (2003/0101234). The appeals board (BPAI) decision, handed down yesterday, is illustrative of the power of hindsight in combining prior art references, and blithely filling uncovered gaps, as allowed by KSR.
Continue reading "KSR Strikes IBM"
Posted by Patent Hawk at 4:14 PM | Prosecution | Comments (1)
July 24, 2007
Dealing with KSR
The talk at
the recent annual convention of the National
Association of Patent Practitioners (NAPP) was about arguing past
prosecution obviousness rejections in light of KSR.
Continue reading "Dealing with KSR"
Posted by Patent Hawk at 12:39 PM | Prosecution | Comments (0)
July 18, 2007
Chilling Invention at the PTO
A trilogy of recent precedential decisions by the USPTO Board of Appeals and
Interferences (BPAI) demonstrates the extent to the which the Supreme Court
KSR
obviousness decision raised the bar to patentability, providing patent
examiners ready harpoons to puncture claimed inventions with aplomb.
Continue reading "Chilling Invention at the PTO"
Posted by Patent Hawk at 10:45 PM | Prosecution | Comments (1)
July 17, 2007
Cut Out
Self-taught,
life-long diamond maven Joseph Mardkha got the idea to cut diamonds like colored
gemstones. "While diamonds are typically cut to maximize their brilliance and
sparkle, gemstones such as rubies and emeralds are cut to emphasize their depth
and clarity." Mardkha had his brother-in-law, Yoram Finkelstein, cut diamonds
based on the concepts he had. Mardkha went on to get patents (7,146,827
&
D467,833) and make a small fortune. Finkelstein wanted his cut.
Posted by Patent Hawk at 4:51 PM | Patents In Business | Comments (0)
June 26, 2007
USPTO Rules
Hal
Wegner reports: The notorious proposed PTO rules that have generated truly
unprecedented negative responses from the patent community remain in limbo but
with a substantial chance that the new rules will be implemented. Despite
serious discussions with personal interviews with OMB by at least five different
groups, there has been no indication given that the OMB will block the PTO's
rulemaking efforts.
Continue reading "USPTO Rules"
Posted by Patent Hawk at 6:22 PM | Prosecution | Comments (0)
June 25, 2007
Strategic Misdecision
MicroStrategy
sued Business Objects for infringing three patents related to decision support
software. In an affirmation of what Hal Wegner called "an unforgiving trend of finding
against a patent owner’s sloppy use of the English language," summary judgment
of noninfringement and invalidity were upheld (CAFC
06-1320).
Continue reading "Strategic Misdecision"
Posted by Patent Hawk at 4:57 PM | § 112 | Comments (0)
June 15, 2007
Problem Solved
KSR
turned traditional patent application drafting into suicide. Backgrounds
logically provided a historical context for one or more problems to be solved,
the inventive solution being the basis for the claims. Post-KSR, problem-solving
storytelling now provides a roadmap to apply hindsight in invalidating a
patent as obvious.
Continue reading "Problem Solved"
Posted by Patent Hawk at 10:17 AM | Prosecution | Comments (4)
June 13, 2007
CAFC Chief Judge Plays Patent Examiner
Hal
Wegner reports: In In re Comiskey, Fed. Cir. App. No. 2006-1286
(Michel, C.J., Dyk, Prost, JJ.), the overworked court is now looking for
additional work beyond its statutory mandate, pondering whether to affirm the
PTO in an ex parte appeal on the basis of a ground of rejection that is not
before the court, viz., a patent-eligibility determination under 35 USC § 101.
Continue reading "CAFC Chief Judge Plays Patent Examiner"
Posted by Patent Hawk at 3:40 PM | Prosecution | Comments (0)
June 7, 2007
Turkey Vulture
The
USPTO proudly
announces it Peer Review Pilot program, beginning June 15, letting
a limited number of applicants volunteer their computer technology patent applications for
target practice by the prior art packing public.
Continue reading "Turkey Vulture"
Posted by Patent Hawk at 1:10 PM | The Patent Office | Comments (0)
May 17, 2007
Self-Destructive Examination
The
USPTO's accelerated examination program has
inherent drawbacks. Experience has shown it to be execrable, requiring
excruciating planning.
Continue reading "Self-Destructive Examination"
Posted by Patent Hawk at 12:00 AM | Prosecution | Comments (1)
May 14, 2007
Patent Board of Arrogance and Interferences
The
USPTO Patent Board of Appeals and Interferences (BPAI) displayed its arrogance
in an interference between two contestants for a patent relating to "methods of
cutting veneer from logs of wood," namely, between Thomas Miller and Robert
Brand. Not even bothering with developing a written record, BPAI just used its
own judgment. Not the way business should be done, the appeals court said (CAFC
06-1419).
Continue reading "Patent Board of Arrogance and Interferences"
Posted by Patent Hawk at 5:37 PM | Prosecution | Comments (0)
May 11, 2007
Soap Opera
In
battling Proctor & Gamble for a patent for dishwashing detergent tablets,
Düsseldorf-based
Henkel
appealed an anachronism of U.S. patent law - an interference, an area of patent
law so obscure that even the Patent Board of Appeals and Interfernces (BPAI)
can't get it right. This little soap opera only stops when the U.S. adopts the
more rational first-to-file regime - if you want a patent, file for one; whoever
files first has priority.
Posted by Patent Hawk at 11:50 AM | Prosecution | Comments (0)
May 10, 2007
Continuation Rules Update
Hal
Wegner reports from the Boston AIPLA meeting details of the pending USPTO
continuation rules: limits to the number of continuations and RCEs.
Continue reading "Continuation Rules Update"
Posted by Patent Hawk at 10:58 AM | Prosecution | Comments (0)
May 3, 2007
USPTO KSR Memo
Margaret
Focarino, USPTO Deputy Commissioner for Patent Operations, issued a
memo of the salient points of the Supreme Court's KSR v. Teleflex ruling. As guidance
for examination, the hazy Graham four-factor test predominates, while the CAFC's
more structured TSM test is demoted to "a helpful insight." Examiners are
advised to state their reasoning for an obviousness rejection.
Continue reading "USPTO KSR Memo"
Posted by Patent Hawk at 5:55 PM | Prosecution | Comments (0)
April 28, 2007
Continuation Limits
Let
me not reinvent the wheel here: Dennis Crouch at Patently-O reports on Hal
Wegner getting the lowdown that the USPTO has laid the track to limit
continuations, sensibility & legality be damned.
Read on
in Patently-O.
Posted by Patent Hawk at 8:23 PM | Prosecution | Comments (0)
April 25, 2007
Junk Patents
The nadir of the USPTO allowing lousy patents was
over a decade ago. Now,
political climate changed, the continual stench of patent reform in the air, as often as not, agency rejections border on the
absurd in stringency without efficacy. Conversations with other prosecutors
confirm the observation that examination without spurious noise has become the
exception.
Continue reading "Junk Patents"
Posted by Patent Hawk at 8:06 PM | Prosecution | Comments (0)
April 12, 2007
Continuation Funk
A
ruckus erupts from a report by patent attorney
Charles Van Horn
that the USPTO plans to go ahead in imposing limits on the number of
continuations, as well as the number of claims examined per patent. Speculation
is that the rules will be published toward the end of summer, with, essentially,
30 days notice for prosecutors to file continuations out the wazoo. After
hearing the rumor, Patent Hawk, tracked to the corner bar, slamming whiskey shots
like a jackhammer, was heard to slur, "This kind of talk stinks up the joint."
Continue reading "Continuation Funk"
Posted by Patent Hawk at 12:03 PM | Prosecution | Comments (0)
March 29, 2007
Hatch-Waxman Extension
Merck
sued Hi-Tech Pharmacal for patent infringement. Hi-Tech replied: patent expired.
Merck said it had an extension, and the district court agreed. So Hi-Tech
appealed (CAFC 2006-1401).
The CAFC ruled:
[As to] whether a patent term extension under the Hatch-Waxman Act, 35 U.S.C. § 156, may be applied to a patent subject to a terminal disclaimer under 35 U.S.C. § 253, filed to overcome an obviousness-type double-patenting rejection[: b]ecause the language of § 156 is unambiguous and fulfills a purpose unrelated to and not in conflict with that of § 253, we hold that a Hatch-Waxman term extension may be so applied.
Posted by Patent Hawk at 11:23 AM | The Patent System | Comments (0)
March 15, 2007
Patent Speed
In
a press
release celebrating its prosecution con job, the USPTO wants your patent
application on virtual methamphetamine. Just like the self-destructive nature of
chemical speed on the human body, accelerated examination may feel like a rush
towards patent grant, while leaving the patent holder with open-ended liability.
Continue reading "Patent Speed"
Posted by Patent Hawk at 7:22 PM | Prosecution | Comments (0)
March 12, 2007
Nucleotide Limits
To
encourage technological development, in November 1996, the USPTO provided a
partial waiver of restriction requirements for claimed nucleotide sequences. In
an about face today, looking to cut pendancy, the agency
rescinds the waiver, effective immediately.
Continue reading "Nucleotide Limits"
Posted by Patent Hawk at 8:12 PM | Prosecution | Comments (0)
March 2, 2007
Continuation Limits Undead
A
couple of days ago, Hal Wegner reported USPTO
Under Secretary Jon Dudas putting nails in the coffin of earlier proposed
continuation restrictions. Now it appears continuation restrictions are undead.
Continue reading "Continuation Limits Undead"
Posted by Patent Hawk at 10:48 AM | Prosecution | Comments (0)
February 28, 2007
Continuation Limits Dead
Classic
gossip chain: Hal Wegner reports from "a highly reliable source" that USPTO
Under Secretary Jon Dudas, in a swing through Silicon Valley last week, assured
computer industry leaders that the
proposed limits on continuations are, "in the words of one observer" - "dead
as a doornail."
Continue reading "Continuation Limits Dead"
Posted by Patent Hawk at 4:50 PM | Prosecution | Comments (0)
February 12, 2007
PUBPAT Targets Opsware
Dan Ravicher's
PUBPAT has struck again,
targeting
Opsware's
7,124,289
with an ex-parte re-examination request to the USPTO. '289 "claims methods for
automatically configuring or installing software on a plurality of computing
devices having different respective sets of software and/or configurations of
operating parameters." PUBPAT hammers '289 with multiple prior art
references; Dan's brewed a harsh dose for '289. (press
release)
Posted by Patent Hawk at 5:21 PM | Prosecution | Comments (0)
February 7, 2007
Interference Cross-Examination
The
USPTO Board of Patent Appeals and Interferences (BPAI) last month laid out a rare
precedental ruling regulating direct testimony conduct during patent interference
cross-examinations. (Pevarello
v. Lan, Patent Interference 105,394)
Continue reading "Interference Cross-Examination"
Posted by Patent Hawk at 12:00 AM | Prosecution | Comments (0)
February 4, 2007
Patenting Points
In the February 5 BusinessWeek
article "To
Patent or Not to Patent?," Vivek Wadhwa sketches some patenting points. Did you
know that "intellectual property law is
notoriously confusing"?
Continue reading "Patenting Points"
Posted by Patent Hawk at 5:34 PM | Patents In Business | Comments (0)
January 26, 2007
Standardized Application
At
a meeting Wednesday of the Intellectual Property Forum of the Asia-Pacific
Economic Cooperation (APEC), Japan proposed standardizing patent application
forms and sharing examination results among member nations.
Continue reading "Standardized Application"
Posted by Patent Hawk at 12:31 PM | International | Comments (0)
January 19, 2007
Terminal Disclaimer & Extension
Merck
owns
4,797,413, a CIP of a CIP of a CIP, terminally disclaimed at the end of
June, 2004, but granted a three-and-a-half year extension by the USPTO because
it took the FDA almost six years to okay Merck's dorzolamide (trade name:
Trusopt), the drug for glaucoma treatment claimed by the patent. Merck
claims the extension rides on the tail of the terminal disclaimer, extending the
patent to the end of 2007. Hi-Tech Pharmaceutical wants to market a generic
version, and says there is no tail to a terminal disclaimer, at least in this
instance. A New Jersey district court ruling favored Merck; a ruling Hi-Tech
appealed. No appeals court decision yet, but the murky intersection between terminal
disclaimer and patent extension may be plowed clear as a result.
Continue reading "Terminal Disclaimer & Extension"
Posted by Patent Hawk at 12:04 AM | Case Law | Comments (0)
December 21, 2006
E-Office Action
Lessening
the post office load, the USPTO has initiated a pilot program of office action
(OA) email notification, letting an applicant know that the action may be viewed
via Private PAIR.
Continue reading "E-Office Action"
Posted by Patent Hawk at 11:10 PM | Prosecution | Comments (0)
November 12, 2006
Overcoming Obviousness
§103(a) has
become a scourge of prosecution (some would say it has been for years). With the CAFC pretzel preening
in anticipation of the Supreme Court going bananas with KSR v. Teleflex,
examiners feel even more emboldened to sling obviousness rejections with aplomb.
Continue reading "Overcoming Obviousness"
Posted by Patent Hawk at 5:48 PM | Prosecution | Comments (0)
November 6, 2006
Proofreading
This claim has been making the rounds. A wily prosecutor snuck one in to see if the inventor bothered to read the claims. Apparently not.
Continue reading "Proofreading"
Posted by Patent Hawk at 11:55 PM | Prosecution | Comments (0)
November 2, 2006
Accelerated Examination Hell
Having
just attended the USPTO webinar on
accelerated examination
(AE), my impression is that the program is an admission of failure by the
agency, poorly thought through, expensive, and fraught with risk for the
applicant. AE use should be circumscribed to business necessity, such as to
secure additional funding. And AE should only be employed where a backup
continuation or divisional exists, but that only partly mitigates the risks.
Continue reading "Accelerated Examination Hell"
Posted by Patent Hawk at 1:27 PM | Prosecution | Comments (0)
November 1, 2006
EFS Pendency
Patent
pendency isn't just for examination any longer. The spirit of Soviet Union
bureaucracy, already embraced by USPTO management, has infected their online web
service, EFS. At least the agency is sending out emails acknowledging a problem.
Continue reading "EFS Pendency"
Posted by Patent Hawk at 8:22 PM | Prosecution | Comments (0)
October 18, 2006
Hush Hush Patenting
Under the
Invention Secrecy Act of 1951, the government may impose a secrecy
order on patent applications whenever the disclosure "might be detrimental to
the national security." Secrecy can be imposed even when the application is
filed by an individual or company without government sponsorship or support. In
such instances, the patent grant can be withheld.
Continue reading "Hush Hush Patenting"
Posted by Patent Hawk at 12:00 AM | Prosecution | Comments (0)
October 9, 2006
ReExam Limited
Feeling
emboldened to publicly state that it slacks off whenever it wants, owing to a
recent East Virginia district court victory in
Sony
v. Dudas, the patent office announces that reexamination will be limited to
whatever the examiner feels like reexamining. Nothing has changed.
Continue reading "ReExam Limited"
Posted by Patent Hawk at 11:07 AM | Prosecution | Comments (0)
October 4, 2006
Wacky Ideas
Some patented levity: the San Jose Mercury News yesterday published "Wacky ideas get respect at the U.S. Patent Office."
Continue reading "Wacky Ideas"
Posted by Patent Hawk at 8:45 PM | Prosecution | Comments (0)
September 17, 2006
MPEP 8r5
The
USPTO has released the 8th edition, Revision 5 of its Manual of Patent Examining
Procedure (MPEP),
the patent bible. But 8r5 is released in pdf format only; no hyperlinked web
(html) version.
Posted by Patent Hawk at 11:05 AM | Prosecution | Comments (1)
Dependent Claim Koan
What is the value of a dependent claim whose limitations are anticipated by the prior art? Considering the current obviousness standard, most recently enunciated in Alza v. Mylan, is there good reason to assert, or even draft, such dependent claims? After all, if the independent claim is done in by prior art during litigation, the dependent claim practically falls as well. Comments welcome.
Posted by Patent Hawk at 12:02 AM | Prosecution | Comments (3)
July 10, 2006
IDS Revision
The patent office, singing the John Doll theme song to applicants of "do some work for us," is proposing changes to information disclosure statement (IDS) requirements, according the Monday's Federal Register.
Continue reading "IDS Revision"
Posted by Patent Hawk at 6:17 PM | Prosecution | Comments (3)
June 27, 2006
Fast Track Patenting
On
Monday, the USPTO announced an
"accelerated
examination" program to go from application to grant (or denial) within one year, appeal notwithstanding. The catches are that the applicant bears the
examination burden of searching & explaining the prior art, and elucidating
enablement & definiteness, as well as limiting the claims under examination.
Continue reading "Fast Track Patenting"
Posted by Patent Hawk at 2:19 PM | Prosecution | Comments (0)
June 20, 2006
Divisionals
There'll be a barrel full of howling prosecutor monkeys if the U.S. patent
office tries to trim its examination sails by
limiting continuations
and claims. For multi-faceted applications, declare your own divisions.
Continue reading "Divisionals"
Posted by Patent Hawk at 4:47 PM | Prosecution | Comments (0)
June 18, 2006
Continuation Amok
Hal Wegner reports: "The PTO appears to be moving doggedly ahead with its
proposed continuation rules to limit the number of continuation applications by
rulemaking without statutory reform. This promises to subject the agency
to unprecedented criticism from the practicing bar and key industry segments,
particularly biotechnology."
Continue reading "Continuation Amok"
Posted by Patent Hawk at 10:06 PM | Prosecution | Comments (2)
May 26, 2006
JPEG Compressed
As expected in the normal course of such affairs, the patent office issued a non-final rejection of the 19 broadest claims (of 46) in its reexamination of 4,698,672, the notorious JPEG patent; a reexam prompted by the self-appointed guardian of the patent public interest: PUBPAT.
Continue reading "JPEG Compressed"
Posted by Patent Hawk at 2:15 PM | Prosecution | Comments (0)
Interference Inoculation
An
interference occurred between
5,770,212 (Falkner) and 08/459,040 (Inglis), both with claims going to
preparing a vaccine against poxvirus. The Patent Board of Appeals &
Interferences (PBAI) ruled that Inglis was senior party; that is, Inglis
deserved the earlier priority date. Falkner appealed (CAFC
05-1324).
Continue reading "Interference Inoculation"
Posted by Patent Hawk at 12:37 PM | Prosecution | Comments (0)
May 25, 2006
Patent Prosecution Highway
Aiming at an international pendency problem, the U.S. and Japan's patent
agencies are joining in a
patent prosecution cluster farce, together building a so-called
Patent Prosecution
Highway, hoping applicants filing for patents in
both Japan and the U.S. will jump through hoops to get granted claims on either
side of the puddle fast-tracked on the other side, whatever that amounts to.
Prosecutors: start your engines, and prepare to sit in traffic.
Continue reading "Patent Prosecution Highway"
Posted by Patent Hawk at 12:27 AM | Prosecution | Comments (0)
April 24, 2006
PTO Democracy At Work
The
patent office put out a
media advisory
Friday about a "town
hall" meeting on Tuesday at agency headquarters "to educate the public on
USPTO's plans to streamline the application review process." Short notice, and
with good reason.
Continue reading "PTO Democracy At Work"
Posted by Patent Hawk at 1:10 PM | Prosecution | Comments (0)
April 21, 2006
Dance Class
John
Quincy St. Clair wants a patent [US20060014125;
pdf] for a training method to learn to walk through walls. Specifically, it will
help you "acquire sufficient hyperspace energy in order to pull the body out of
dimension." Personally, I go to my spiritual chiropractor when that happens.
Continue reading "Dance Class"
Posted by Patent Hawk at 5:51 PM | Prosecution | Comments (0)
April 6, 2006
University Patents
The patent office
released its collation of the top ten U.S. universities
receiving patents in 2005. The University of California topped the list for the
12th straight year.
Continue reading "University Patents"
Posted by Patent Hawk at 5:43 PM | Prosecution | Comments (0)
March 22, 2006
Obviousness
Leonard
Kahn, trying to patent a reading machine for the blind, appealed his §103
rejection by the patent appeals board (PBAI) to the appeals court. The CAFC (04-1616)
in this case further clarified the ground rules for obviousness rejection.
Continue reading "Obviousness"
Posted by Patent Hawk at 12:01 PM | Prior Art | Comments (0)
March 17, 2006
Computer Automation Not Patentable
An aspersion often cast towards business method patents is that such patents simply claim a known process that's been computerized. A common misconception is that automating a known process using a computer is per se patentable. It's not.
Continue reading "Computer Automation Not Patentable"
Posted by Patent Hawk at 12:03 AM | Prosecution | Comments (0)
March 13, 2006
Generating Claim Construction
Michael Scroggie et al filed 09/401,198, and have had a hell of a time with prosecution, so bad they had to take it all the way to the court of appeals (CAFC 05-1370). The '198 claims go to generating a web page. Given that, what do you suppose the limitation "generating page data" means? The patent office examiner and appeals board couldn't get a clue.
Continue reading "Generating Claim Construction"
Posted by Patent Hawk at 3:04 PM | Prosecution | Comments (1)
February 2, 2006
PubPat Clogs the Patent Office
In what promises to be another public flogging, the patent office is going to reexamine Forgent Network's JPEG patent (4,698,672), which has less than a year of life left in it, and has yielded over a $105 million in licenses from over 40 companies, with another 44 currently on the docket for infringement, all of whom have had a chance to douse the patent with invalidity assertion before the courts. Officious PubPat, which specializes in rubbing patents' noses in reexam, instigated, and the patent office, feeling the need nowadays to be ever so politically correct, bit.
Continue reading "PubPat Clogs the Patent Office"
Posted by Patent Hawk at 6:09 PM | Prosecution | Comments (0)
First to Invent
The
bizarre patent interference case of Brown v. Barbacid, going on now for over 10
years, with miles to go, vividly illustrates the difficulty with this country's
first-to-invent rule. The brouhaha is over who invented an enzyme assay first,
arguing over the adequacy of lab notebooks. Is this any way to decide date of
invention? Only the U.S. thinks so. What's wrong with a simple patent filing
date? Nothing, says the rest of the world.
Continue reading "First to Invent"
Posted by Patent Hawk at 1:36 PM | Prosecution | Comments (0)
January 18, 2006
The Patent Office's Oops Program
The
USPTO is extending indefinitely its
pilot program of mini-appeals, which is estimated to save applicants wrongly
rejected at least $30 million annually. The program's success points out the
patent office's failure. As John Doll, commissioner for patent resources and
planning, confessed, "The success of this program shows the patent office was
making rejections that should not have been made."
Continue reading "The Patent Office's Oops Program"
Posted by Patent Hawk at 12:00 AM | Prosecution | Comments (0)
January 14, 2006
Patent Quality
Doubtlessly
fishing for business, patent proofreading firm
Intellevate crowed that 98% of issued
patents contain human error. Absolutely fishing for business,
Patent Hawk cut loose that over 40% of
the litigated patents investigated by the firm are lousy for big reason #1:
they're invalid.
Continue reading "Patent Quality"
Posted by Patent Hawk at 10:31 AM | Prosecution | Comments (0)
January 11, 2006
Top Prosecutors
Fifteen years running, Oblon Spivak has topped the list of law firms in getting U.S. utility patents granted, and, based on published application numbers, expects the streak to continue at least a few years longer.
Continue reading "Top Prosecutors"
Posted by Patent Hawk at 11:35 AM | Prosecution | Comments (1)
January 7, 2006
Backlash to USPTO Cracking the Whip
Patent prosecutors across the country are
echoing Patent Hawk in crying foul
at the patent office for unfairly shifting the burden of examination onto
prosecutors, limiting examinations, and hurting the prospects for deserved
patent protection.
Continue reading "Backlash to USPTO Cracking the Whip"
Posted by Patent Hawk at 12:04 AM | Prosecution | Comments (1)
January 4, 2006
Limiting Continuations
The USPTO is aiming to cut its backlog by limiting continuations.
The patent office is burden shifting, at
the potential sacrifice of fertile inventors losing some of their patent rights.
Continue reading "Limiting Continuations"
Posted by Patent Hawk at 2:09 PM | Prosecution | Comments (0)
December 22, 2005
NTP on the ReExam Ropes
The
NY Times reported that the patent office, in a letter dated November 30,
sent along with a rejection of extension of time for reply, has already told
both NTP & RIM that a reexamination final rejection of NTP's patents is pending.
"The patent owner's arguments are deemed nonpersuasive... The next office action
is expected to be a final rejection of all current claims."
Continue reading "NTP on the ReExam Ropes"
Posted by Patent Hawk at 11:02 AM | Prosecution | Comments (1)
December 17, 2005
Patent Office Plays Politics
Defying
its own regulations, the patent office is only giving NTP 30 days, instead of
the customary 60 days, to reply to the non-final rejection of its patents in the
re-examination initiated by infringer Research in Motion (RIM). In case you just
dropped in from another planet, NTP sucessfully sued RIM for patent infringement, and RIM has been fighting that reality tooth and nail.
Continue reading "Patent Office Plays Politics"
Posted by Patent Hawk at 12:21 AM | Prosecution | Comments (4)
November 28, 2005
PBAI Claim Mixup
In a non-precedent case before the Patent Board of Appeals (PBAI 2005-0970), Xerox got a copy of the IPXL v. Amazon ruling: mixing claim types traverses 35 U.S.C. § 101 & § 112 ¶ 2.
Continue reading "PBAI Claim Mixup"
Posted by Patent Hawk at 12:34 PM | Prosecution | Comments (0)
November 21, 2005
Don't Mix Claim Types
IPXL
Holdings assertion of patent infringement against Amazon.com for its one-click
checkout didn't click with the courts. What especially missed the click track
was tacking a method onto a system claim.
MPEP § 2173.05(p)(II): "A single claim which claims both an apparatus and
the method steps of using the apparatus is indefinite under
35 U.S.C. 112, second paragraph."
Continue reading "Don't Mix Claim Types"
Posted by Patent Hawk at 2:17 PM | § 112 | Comments (0)
November 10, 2005
Space Oddity
You
can only wonder what Boris Volfson has got parked in his garage. What he has in
his file cabinet is USPN
6,960,975 (pdf).
If you want to sell your anti-gravity powered spaceship with hollow
superconductive shield, you better first take a patent license from Boris.
Either that, or go intergalactic to evade infringement. As to the patent office
granting this, it's a spacetime anomaly indeed.
Continue reading "Space Oddity"
Posted by Patent Hawk at 12:06 AM | Prosecution | Comments (1)
October 21, 2005
MPEP 8r3 Foobar
The Patent Office recently released a newly revised, but definitely defective, MPEP, the Manual of Patent Examining Procedure (8th ed., 3rd rev.), in web page format. Fortunately, there's a fix.
Continue reading "MPEP 8r3 Foobar"
Posted by Patent Hawk at 6:03 PM | Prosecution | Comments (0)
October 7, 2005
Research Tool Blog
In case you haven't noticed, Patent Prospector author Patent Hawk has this habit of rather extensively quoting case law findings, particularly from appeals court rulings. Is there a method to his story-telling madness?
Continue reading "Research Tool Blog"
Posted by Patent Hawk at 12:06 AM | Prosecution | Comments (0)
October 1, 2005
Examination Hell
Japanese high school students take standardized tests to qualify for college admission; that process is locally referred to "examination hell". This blog entry is just whining, but the regular off-base rejections I'm encountering from patent examiners brings examination hell to mind. As an open question to prosecutors, is it just me, or is the patent office examiner bus packed with bozos?!
Continue reading "Examination Hell"
Posted by Patent Hawk at 8:40 PM | Prosecution | Comments (0)
September 29, 2005
$1/2 Billion ReExam
5,838,906 was the lucky lotto number for Eolas to cash in a one-half billion dollar prize from Microsoft. It was seriously questioned whether the ticket was genuine. The Patent Office in re-exam affirmed it was. On what basis?
Continue reading "$1/2 Billion ReExam"
Posted by Patent Hawk at 2:20 PM | Prosecution | Comments (0)
September 10, 2005
Continuation Pornography
Jerome H. Lemelson (The Lemelson Foundation) excelled at playing the patent game. In Symbol v. Lemelson (04-1451), the game caught up with him.
Continue reading "Continuation Pornography"
Posted by Patent Hawk at 10:12 AM | Prosecution | Comments (0)
August 17, 2005
NDA - follow up
Thanks for the comments regarding NDAs. To further our discussion here is a sample clause designed to express which party maintains ownership of co-developed IP:
Continue reading "NDA - follow up"
Posted by Peter Haas at 7:35 AM | Prosecution | Comments (0)
August 15, 2005
Patent Board Inequity [& Tidbits on §103]
Sujeet Kumar and some buddies got together and finely ground some aluminum oxide. Then they filed a patent for it.
With product claims rejected, and appealed before the Patent Office Board, the Board ruled on new evidence, without affording appellant reply. What up with that?
Continue reading "Patent Board Inequity [& Tidbits on §103]"
Posted by Patent Hawk at 4:22 PM | Prosecution | Comments (0)
August 14, 2005
First to Invent In Play
Microsoft scooped Apple by five months in a patent application for music playlists related to Apple's current cash cow, iPOD. Here's the Washington Post on it.
Continue reading "First to Invent In Play"
Posted by Patent Hawk at 2:36 PM | Prosecution | Comments (0)
August 5, 2005
Patent Backlog
Acting Commissioner for Patents and Trademarks, John Doll, reported on 19 July 2005 the status of the USPTO with regard to patent application filings.
Continue reading "Patent Backlog"
Posted by Peter Haas at 12:18 PM | Prosecution | Comments (0)
July 25, 2005
Overcoming §112 ¶ 2 Rejection
35 U.S.C. §112 ¶ 2: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."
Process/method claim rejections may be off-base if the rejection complaint is that the claimed method is not enabling, or even that the claimed method is not self-sufficiently comprehensible.
Continue reading "Overcoming §112 ¶ 2 Rejection"
Posted by Patent Hawk at 12:05 AM | Prosecution | Comments (1)
July 18, 2005
Tighten Up
Just a Patent Examiner (JAPE) is a self-deprecatingly titled weblog that is blowing my mind with candor.
Posted by Patent Hawk at 12:00 AM | Prosecution | Comments (1)
July 8, 2005
U.S. News & Jackass Report
U.S. News & World Report is an exemplary case study in American news periodicals, particularly its descent from being one of America's few respected "hard" news journals in the 1960's into something else entirely: "People" for business people, by the end of the 1970's. Of course, circulation and popular taste dictate success; hence the change in "tone". Decades later, the slide continues; at least some things are predictable.
Continue reading "U.S. News & Jackass Report"
Posted by Patent Hawk at 10:10 AM | Prosecution | Comments (0)
July 3, 2005
Impermissible Hindsight
The issue pondered is to what degree patent examiners understand case law with regard to 35 U.S.C. 103(a), particularly combining prior art references as a basis to reject claims. Anecdotal personal experience is stacking up that examiners are willy-nilly silly when it comes to combinations - that is, impermissible hindsight comes easy.
Continue reading "Impermissible Hindsight"
Posted by Patent Hawk at 2:21 PM | Prosecution | Comments (0)
June 26, 2005
Incremental Patenting
Few patents cover something spanking new; the vast majority are incremental improvements. At what point does an incremental improvement merit patent protection? Patent law addresses this rather fundamental issue, as have the courts.
Continue reading "Incremental Patenting"
Posted by Patent Hawk at 11:53 AM | Prosecution | Comments (0)
June 7, 2005
When is an invention patentable?
Many inventors are disappointed to learn that their idea by itself cannot be patented. Typically, their idea could be patented if it were developed a bit further. This “I-got-a-great-idea” stage isn’t enough because U.S. patent law requires that the invention be both “conceived” and “reduced to practice.”
Continue reading "When is an invention patentable?"
Posted by Peter Haas at 10:14 AM | Prosecution | Comments (0)
May 14, 2005
Patenting Tips for Inventors
You have a great idea. Now all you need is to wrap it in patent paper.
Continue reading "Patenting Tips for Inventors"
Posted by Patent Hawk at 2:14 PM | Prosecution | Comments (0)
May 11, 2005
WSJ's Patenting Guidelines
There was a decent article about patenting in the Wall Street Journal: A Step-By-Step Guide To Getting a Patent.
Continue reading "WSJ's Patenting Guidelines"
Posted by Patent Hawk at 12:53 AM | Prior Art | Comments (0)
April 10, 2005
Seeds of Doubt Dispelled
Over the objections of Swiss biotech firm Syngenta AG and Greenpeace Deutschland, the European Patent Office confirmed Friday that Monsanto can patent herbicide-resistant seeds in Europe. Monsanto has over two dozen herbicide-resistant seed-related European patents. The patented seeds, applicable to corn, wheat, rice, soybean and flax, are doing a booming business. The genetic modification makes the seeds resistant to Roundup, the herbicide that makes Agent Orange seem like plant food.
Continue reading "Seeds of Doubt Dispelled"
Posted by Patent Hawk at 12:01 AM | Prosecution | Comments (0)
April 5, 2005
Willful Patenting
A company wanted a patentability search done, but didn't want patent prior art searched, only applications and periodicals. The concern was that a patent search could reveal patents which the company was infringing. To avoid willful infringement, the reasoning went, avoid searching patented prior art. That is not the way to go about patenting.
Continue reading "Willful Patenting"
Posted by Patent Hawk at 12:07 AM | Prosecution | Comments (0)
April 4, 2005
Submarine Launch
35 U.S.C. §122 covers publication of patent applications. Generally, patent applications are published after 18 months of filing, but an applicant my request earlier publication. Conversely, if the application is for a U.S. patent only, the applicant may launch a patent submarine, with no publication prior to issue. Why do such a thing?
Continue reading "Submarine Launch"
Posted by Patent Hawk at 12:02 AM | Prosecution | Comments (0)
March 30, 2005
Re-Examination Redemption
Patent litigation defendants, technology companies in particular, are increasingly turning to ex parte (external party) initiation of re-examination to dispose of patents which the courts have found them guilty of infringing. Eolas v. Microsoft and MercExchange v. Ebay are two widely watched patent cases where losing defendants have turned to the patent office in a desperate, last-ditch effort to dodge the infringement bullet.
Continue reading "Re-Examination Redemption"
Posted by Patent Hawk at 3:58 AM | Prosecution | Comments (0)
March 14, 2005
Handling §103 Rejections
It’s not unusual to receive a 35 U.S.C. §103(a) combination rejection applied with little more than the glib dab of glue: "it would have been obvious". Examiners often implicitly rely upon art class as a binder for justifying combination. Convenient selective quotations are applied for features that wouldn’t mesh if looking at the art holistically. Application out of context is a similar flaw: applying a prior art feature used in a specific way to a claimed invention using a similar feature differently.
Continue reading "Handling §103 Rejections"
Posted by Patent Hawk at 12:58 PM | Prior Art | Comments (1)
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