December 26, 2014
Prosecutorial nitwittery went unchecked by the district court, but a CAFC panel checked it by siding with the USPTO in refusing to withdraw a terminal disclaimer. 6,194,187 issued. Its owner, the Japanese Foundation for Cancer Research, then filed a terminal disclaimer, which the PTO accepted. The patent office later refused to withdraw the disclaimer, and so was sued for it. Defending the PTO via deference, the CAFC found "that the PTO did not act arbitrarily, act capriciously, or abuse its discretion in declining to use any inherent authority that it might have in withdrawing the terminal disclaimer."
Posted by Patent Hawk at 1:41 PM | Prosecution
March 20, 2014
A vexatious corruption haunts the USPTO: examiners that repeatedly pull applications out of appeal with a new rejection. Freda Nelson plagued this inventor for years with her fresh witless rejections after my filing for appeal. In the recent patent board appeal - ex parte Sheklam (2012/009,005) - the offending unnamed examiner is caught out. Other experienced prosecutors report that examiners gaming the system in this way is not especially unusual. PTO management continues to largely turn a blind eye to this practice.
Posted by Patent Hawk at 2:19 AM | Prosecution
February 3, 2014
An irascible PTO patent board insisted that "a receiver adapted to receiving" invoked the means-plus-function interpretation of §112 ¶6. This in an application for an automatic light switch. The CAFC reversed, finding sufficient structure to understand the bounds of the invention. (Enocean v. Face International CAFC 2012-1645)
Posted by Patent Hawk at 3:19 PM | Prosecution
January 22, 2014
An untold number of patent applications languish at the USPTO, which refuses to grant or even examine them, either because they are considered too valuable to be granted to a non-corporate entity, or out of sheer spite. Gilbert P. Hyatt, prolific inventor with over 70 issued patents, can't get the patent office off its duff. So he (once again) went to Federal court "to compel the PTO to decide two appealed patent applications, each of which has been pending before the PTO since the early 1970s - over 40 years ago." The U.S. patent system is broken, but in none of the ways that so-called patent reformers, who represent corporate interests, care to address. Instead, well-heeled efforts focus on rigging the game further against inventors like Mr. Hyatt (e.g., the Goodlatte "abusive litigation" legislation currently making its way through Congress). [Hyatt's complaint]
Posted by Patent Hawk at 6:28 PM | Prosecution
October 22, 2013
Screwed to the Bone
In re Biedermann is exemplary of the USPTO's arrogant disregard for the law, and even decency to patent applicants. Lutz Biedermann and Jurgen Harms tried to patent a bone screw. The patent board concocted a new rejection, but refused to give applicants the proper opportunity to argue against it. On appeal, the CAFC vacated and remanded (CAFC 2013-1080), reminding the curmudgeons at the patent office to show the passing semblance of fairness.
Posted by Patent Hawk at 3:03 PM | Prosecution
July 12, 2013
Limelight Networks v. Akamai sits before the Supreme Court, awaiting a decision as to certiorari. At issue is whether an accused infringer "may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under §271(a)." The root problem was incompetent prosecution, in drafting claims that neglected to render a single party culpable.
Posted by Patent Hawk at 3:31 PM | Prosecution
April 7, 2013
Steve Morsa filed a patent claiming benefits processing. The PTO rejected over prior art, first arguing anticipation; then, when that deficiency was pointed out, hand-waving obviousness. Morsa made cogent, reasonably undeniable arguments, based on evidence, that the prior art used was not in fact prior art - that it was published nearly two years later. Morsa argued that the supposed prior art wasn't enabling, nor a solid basis for obviousness. The PTO didn't care a whit for any of it. The Board granted a rehearing only to pile on new grounds of rejection, without allowing Morsa any opportunity whatsoever to refute the rejections. On appeal, a CAFC panel didn't bother to examine the facts, nor follow the law. Largely ignorning Morsa's arguments, the CAFC rubber-stamped the PTO. The only issue that caught the CAFC's attention was the examiner dismissing Morsa's prior art enablement argument by saying the he had failed to file any expert declartion or affidavit in support. That odious requirement went too far. "We see no reason to require such submissions in all cases," the CAFC panel opined. "Here, Morsa identified specific, concrete reasons why he believed the short press release at issue was not enabling, and the Board and the examiner failed to address these arguments." For this a partial remand, though to moot point - only to clean a smudge on the claims' death warrant. The claims were damned over an unsupported conjecture of obviousness. One more chip on the pile exposing the fundamentally lawless process of caprice by the U.S. patent office and at the CAFC. (CAFC 2012-1609)
Posted by Patent Hawk at 12:11 AM | Prosecution
February 17, 2013
Ignoring the Preamble
Eric Jasinski tried to get a patent for testing computer memory via "verifying the accuracy of logical-to-physical mapping software designed for testing memory devices." In finding anticipation, the USPTO Board ignored the preamble limitation, which was also called out in the body of the claim. In a rare reversal by the CAFC (2012-1482) of patent office rejection, a panel rightly observed: "it also provides the criteria by which the previously-recited comparing limitation is analyzed. We thus conclude that the 'to verify/verifying' language is limiting." If there's a practical lesson here (aside from the capricious irrascibility of the PTO), it's to not rely on the preamble as limiting.
Posted by Patent Hawk at 12:56 AM | Prosecution
January 24, 2013
Rexnord Industries got an inter partes reexam on 6,523,680, which claims a radius conveyor belt system, after patent holder Habasit accused Rexnord of infringement. The examiner crucified the patent on the alter of prior art, but the PTO Board resurrected it, holding the patent valid. Rexnord appealed to the CAFC.
Posted by Patent Hawk at 12:26 PM | Prosecution
September 30, 2012
Out of Whack
The USPTO's curmudgeonly incompetence was on display at the CAFC last week. Abbott Diabetes Care had its patents put under reexamination by a third party. The PTO denied the patent it had once granted; a failure of initial examination. In the reexam, the construction of "electrochemical sensor" was disputed. The CAFC found that "the Board's construction of 'electrochemical sensor' is unreasonable and inconsistent with the language of the claims and the specification." The patent appeals board also reversed itself before the CAFC on having agreed with the examiner on rejecting new claims based upon "official notice," which is shorthand for "no evidence." (CAFC 2011-1516).
Posted by Patent Hawk at 10:22 AM | Prosecution
August 23, 2012
Xicor got a patent (5,977,585) for an incremental improvement relating to EEPROMs (static computer memory chips). Xicor sought a reissue, to recapture subject matter previously surrendered during prosecution, because the original claims were too broad. The USPTO, with negligent incompetence, allowed the recapture (RE38,370). Greenliant Systems and Silicon Storage Technology had to pursue a DJ to get rid of the patent. The CAFC, always happy to put a patent in the public domain, affirmed (CAFC 2011-1514).
Posted by Patent Hawk at 12:42 PM | Prosecution
July 30, 2012
The CAFC has added proving a negative to the burdens a patentee must bear. Any reference cited is "presumptively enabling." An applicant has to "rebut the presumption of the operability of [the prior art patent] by a preponderance of the evidence." In other words, an applicant must prove by evidence that presumed evidence lacks evidence.
Posted by Patent Hawk at 11:36 AM | Prosecution
June 10, 2012
Cite Not Right
Two sets of inventors at interference odds before the PTO got the CAFC to rule that patent prosecutors have to write legibly, at least as far as citing antecedent applications when filing continuations. In Harari v. Hollmer (CAFC 2011-1276), overruling PTO willingness to let the slop slide, careless prosecutor citation downed the continuation.
Posted by Patent Hawk at 11:46 AM | Prosecution
May 18, 2012
In re Baxter (CAFC 2011-1073), a majority allow the USPTO to overturn in reexamination a decision of law made by the court. Only Judge Newman is perturbed. "The Patent and Trademark Office's Board of Patent Appeals and Interferences, on reexamination of a patent that had previously been litigated to final judgment in the district court and on appeal to the Federal Circuit, states that "the agency is not bound by the court's determination." My colleagues appear unperturbed by the agency's nullification of this court's final decision. Instead, the court itself ignores our own prior final decision, although it is the law of this case. Thus the court violates not only the constitutional plan, but also violates the rules of litigation repose as well as the rules of estoppel and preclusion - for the issue of validity, the evidence, and the parties in interest are the same in this agency reexamination as in the finally resolved litigation." Rule of law in the U.S. is nothing more than a random act.
Posted by Patent Hawk at 10:37 AM | Prosecution
May 12, 2012
Sheldon Breiner tried to get a patent on networked data collation from far-flung places. With Obzilla riding shotgun, the examiner combined three far-flung references, supplying motivation to combine as "obvious to one of ordinary skill in the art." Rejection affirmed at the BPAI. Breiner took it to the CAFC, which reminded of the now high bar to overturning the PTO: "this court will not overturn the Board's decision if a reasonable mind might accept the evidence as adequate to support a conclusion." (CAFC 2011-1387).
Posted by Patent Hawk at 4:53 PM | Prosecution
March 5, 2012
USPTO honcho David Kappos is showing his chops as a political hack. In announcing 506,000 patent applications in FY 2011, Kappos crowed before Congress: "These figures confirm that innovation is alive and well and will help speed our nation's economic recovery." But only 270,000 new applications were filed. The rest were RCEs, the signature of either bumbling or desperation.
Posted by Patent Hawk at 12:08 PM | The Patent Office
December 25, 2011
The Art of the Patent
A patent disclosure often describes the drawings, which are required "where necessary for the understanding of the subject matter sought to be patented." 35 U.S.C. 113. Kevin Price celebrates the art form in The Art of the Patent. The book is a nicely done picture book, and well thought out, though slight. The text is juvenille, written for junior high school level, both in content and gee-whiz attitude. The opportunity to explain the craft of patent illustration is foregone. This would have been a much better book with more maturity, and truer appreciation of skill by exposition, rather than mere illustration. That might have made the book a reference worth returning to, rather than something consumed in a sitting or two, and then left on the shelf. That said, it is the perfect book for the lobby coffee table of a patent prosecution firm. Perhaps that was the target audience all along.
Posted by Patent Hawk at 11:43 AM | Prosecution
December 18, 2011
The patent office's failure to deliver renders the post office an amateur shambles, leaving the PTO pros at incompetence. Then there are the courts, which use case law as a subterfuge, rather than the creation of a body of consistent case law, as the legal profession naturally expects. In understated outrage, Hal Wegner considers a recent case of chemical obviousness before the patent board (BPAI).
Posted by Patent Hawk at 1:06 PM | Prosecution
November 23, 2011
While the old saw of "practice makes perfect" has teeth, it's a mistake to equate experience with quality. But some old farts will have none of that sharp discrimination. Hal Wegner joins a lament over the green young bucks: "A knowledgeable senior partner in a southwestern United States firm commented: 'It is a tragedy that we license practitioners with no real practice or knowledge beyond what can be learned in a two-day course - particularly because most clients have no way to distinguish between those that have experience and those that don't.'"
Posted by Patent Hawk at 12:42 PM | Prosecution
October 6, 2011
Old Mule on Old Ground
Rule of law and adherence to procedure are a shell game at the USPTO, just as competent examination on the merits is a chimera. Less than three weeks ago the CAFC kicked the BPAI for making up a new rejection when the examiner's wasn't up to snuff, then not allowing the applicant to address it. Another of the same ilk came to the CAFC: In re Steppan (CAFC 2010-1261), and the CAFC kicked it back for a makeover. The patent office, led by former IBMer David Kappos, plays dirty with pipsqueak inventors. This sort of problem never crops up with an application assigned to a major corporation.
Posted by Patent Hawk at 10:08 PM | Prosecution
September 26, 2011
Back of the Bus
Sage plutocrat Hal Wegner proposes that patent agents be proscribed from practicing before the new Patent Trial and Appeal Board, blaming the current appeal backlog on patent agents having "no formal legal training." "The far too frequent presentation of ill-considered appeal briefs at the Board must be minimized." Hal wants slicker reptilian obfuscation from higher-priced lawyers. Next up on Hal's hit list - those lame pro se prosecutors that are creating a backlog with their dime-store applications. After all, the only "people" deserving patent protection are corporations.
Posted by Patent Hawk at 2:22 PM | Prosecution
September 20, 2011
Rebuffed on Fluff
Phyllis Leithem et al had an idea for a better diaper - fluff pulp with superior absorbency. The PTO examiner rejected the claims as obvious, using a combination of references. On appeal, Leithem argued that the prior art did not fluff the pulp. The BPAI fluffed the piss-poor prior art. Leithem petitioned for a rehearing, contending that the Board "relied on a new ground of rejection." Typical of the curmudgeonly bureaucrats at the patent office, Leithem's petition was denied, so Leithem appealed to the CAFC.
Posted by Patent Hawk at 2:27 PM | Prosecution
September 18, 2011
The boys at Catalina Marketing thought they had a hot idea, so they hired a rum prosecutor. 09/401,939 claims "distributing purchasing incentives to consumers from a main computer to a 'personal computer' over a computer network." This old idea got panned by the PTO, who resorted to an everyday dictionary to define "personal computer," as the '939 prosecutor hadn't bothered to nail down this critical claim term. Not that it would have mattered much.
Posted by Patent Hawk at 1:37 PM | Prosecution
August 29, 2011
Mitsui Bussan Logistics tried to get a patent on product distribution chain management (10/798,505). The examiner at the PTO was typically feeble in examination, as was the patent board. At the CAFC, Judges Linn and Gajarsa illicitly ran over the claims. In dissent, Judge Newman was the only competent party in the chain of adjudication. One more chip on the plentiful pile of evidence that the U.S. patent system is dysfunctional and corrupted.
Posted by Patent Hawk at 1:00 PM | § 112
August 1, 2011
The USPTO still grants patents, but the valuable ones are more likely than not to be taken away upon reexamination, if not by the courts beforehand. The courts often deal patently death with lawyerly cunning, giving a patent some legal grace with one hand while stabbing it to death with the other. Five years ago NTP managed to scrap $612+ million from Research in Motion for patents that now prove invalid on reexam. Patent extortion is like comedy - timing is everything.
Posted by Patent Hawk at 7:30 PM | Prosecution
July 23, 2011
Jeff Lovin et al filed a patent application for friction welding (10/924,633). The application prosecutor was Richard B. Lazarus of Barnes & Thornburg. Mr. Lazarus is a former USPTO examiner, SPE, instructor and manager at the PTO academy. His prosecution arguments were by the book - concise but sufficient, an understandable economy for someone so well steeped in PTO ways. The BPAI waived it all away, like Lazarus was a lummox: "the Appellants have not indicated reversible error." Arguing against a combination by pointing out how the references failed to teach certain limitations was summarily rejected by the Board with "that argument is not well taken because the Appellants are attacking the references individually when the rejection is based on a combination of references." The Court of Errors added insult to injury, in another display of corruption, this time disguised as deference.
Posted by Patent Hawk at 3:29 PM | Prosecution
April 16, 2011
Best practice for patents that have not had all potential value squeezed is to file continuations and divisionals. Keep the patent alive to mine untapped potential. The only remedy to modify extant claims is reissue. For two years from issuance, claim scope may be enlarged. After that, reissue claims may only be narrowed. This is typically done as a hedge against invalidity. Yasuhito Tanaka sought to do just that, after failing to do more. The sledding was much tougher than it should have been.
Posted by Patent Hawk at 4:19 PM | Prosecution
March 28, 2011
Edward K.Y. Jung and Lowell L. Wood, Jr. tried to get a patent for a photo-detector array system. The examiner shot it down for validity. Jung amended independent claims to incorporate a controller, arguing lamely that a prior art controller was "different," without explanation until appeal. The patent board rejected Jung's arguments, though it also smacked the examiner for not sufficiently providing a basis for rejection.
Posted by Patent Hawk at 1:54 PM | Prosecution
February 28, 2011
Cancer Research Technology v. Barr was a bad call by panel Judges Newman and Lourie, limiting prosecution laches with a rigid rule. That case is now teed up for Supreme Court review, by a CAFC 5-5 decision not to rehear en banc. Rehearing requires a majority. The dissents in the CAFC refusal were strongly put.
Posted by Patent Hawk at 11:22 AM | Prosecution
February 21, 2011
Cecil D. Quillen Jr. has an obsession about patent continuations and RCEs. Junior Q penned a paper on the topic back in 2002. Hal Wegner favorably reports on today's letter by Junior Q to the New York Times. Quillen: "Continuing applications claim inventions that are described in earlier filed parent applications, and thus, to a considerable extent, represent "rework" for the USPTO, since the inventions of the continuing applications were, or could have been, examined in the earlier parent applications."
Posted by Patent Hawk at 7:36 PM | The Patent System
February 15, 2011
Joe Root has penned a meaty tome. "Rules of Patent Drafting: Guidelines from Federal Circuit Case Law addresses a major development in patent law over the last two decades - the Disclosure Revolution." The approach taken is a fresh perspective for prosecutors, and a necessary one. That makes this book an instant classic.
Posted by Patent Hawk at 3:22 PM | Prosecution
February 9, 2011
Getting Definite at the USPTO
The patent office has issued supplementary guidelines for examining claims in patent applications for compliance with 35 U.S.C. §112 ¶2. The PTO thinks "it is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter." The guidelines are effective as of today. Written comments are accepted until April 11, 2011. "No public hearing will be held."
January 2, 2011
Don't File a Patent
John D. Smith is a one-man patent sales prevention department: "A patent is really just an expensive and worthless piece of paper. Attorneys are like a bottomless cup that you keep pouring money into. The Patent Office wants your money, not your invention. The Patent Office uses repeated Patent Examiner Office Action rejections to discourage inventors. Lawsuits are very expensive and the only one that will make money in a patent infringement lawsuit will be your attorney. Judgments are worthless, as they are impossible to collect." Bad attitude, or is it simply that the truth hurts?
November 9, 2010
The application that led to 5,260,291 took 13 years to allowance. Prosecutors twiddled by ignoring office actions and filing continuations. Nine years into it, ownership changed hands, where, for the first time, the prosecutor argued against examiner's rejection on lack of utility, relying upon animal tests for the claimed cancer treatment. '291 issued in November 1993. From there the cancer spread.
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.
July 28, 2010
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
July 27, 2010
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).
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."
July 1, 2010
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."
June 18, 2010
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)."
May 27, 2010
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.
May 19, 2010
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.
May 10, 2010
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.
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.
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.
February 24, 2010
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."
February 18, 2010
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.
January 26, 2010
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."
Posted by Patent Hawk at 12:40 AM | Prosecution
January 5, 2010
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.
August 19, 2009
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
June 23, 2009
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.
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.
May 9, 2009
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.
May 6, 2009
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.
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.
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.
March 8, 2009
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.
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.
January 25, 2009
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."
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.
January 17, 2009
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.
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.
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.
Posted by Patent Hawk at 6:40 PM | Prosecution
November 12, 2008
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.
November 9, 2008
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.
October 23, 2008
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."
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.
Posted by Patent Hawk at 10:19 PM | Case Law
September 20, 2008
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.
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.
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."
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.
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.
August 20, 2008
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.
August 2, 2008
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.
Posted by Patent Hawk at 11:34 AM | Inequitable Conduct
July 23, 2008
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
July 16, 2008
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
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.
June 10, 2008
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.
June 5, 2008
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.
Posted by Patent Hawk at 11:57 AM | Prosecution
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.
May 30, 2008
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
May 24, 2008
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.
May 23, 2008
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.
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.
May 10, 2008
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.
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.
Posted by Mr. Platinum at 12:08 PM | Prosecution
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.
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.
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.
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.
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.
Posted by Mr. Platinum at 1:26 PM | Prosecution
April 13, 2008
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.
Posted by Patent Hawk at 7:05 PM | Prosecution
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
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.
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."
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."
March 11, 2008
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.
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.
March 8, 2008
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.
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.
Posted by Patent Hawk at 2:56 PM | Prior Art
March 5, 2008
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.
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.
March 1, 2008
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.
Posted by Patent Hawk at 8:59 PM | Prosecution
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).
February 24, 2008
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.
February 3, 2008
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.
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
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.
January 22, 2008
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.
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.
December 21, 2007
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.
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.
December 5, 2007
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.
Posted by Patent Hawk at 5:26 PM | Prosecution
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.
November 13, 2007
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."
Posted by Patent Hawk at 10:51 PM | Prosecution
October 23, 2007
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.
October 22, 2007
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
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."
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.
October 15, 2007
October 10, 2007
The Obvious Guide
“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.”
October 9, 2007
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.
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.
Posted by Patent Hawk at 4:53 PM | The Patent Office
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.
September 27, 2007
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."
September 24, 2007
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%.
Posted by Patent Hawk at 1:22 AM | Prosecution
September 14, 2007
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.
Posted by Patent Hawk at 9:47 PM | Prosecution
September 12, 2007
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.
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.
Posted by Patent Hawk at 10:47 PM | Prosecution
August 29, 2007
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
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."
Posted by Patent Hawk at 11:24 AM | Prosecution
August 23, 2007
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."
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.
Posted by Patent Hawk at 12:13 PM | Prosecution
Broadest Reasonable Interpretation
Posted by Patent Hawk at 11:52 AM | Prosecution
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
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.
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
August 16, 2007
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.
Posted by Patent Hawk at 6:21 PM | Prosecution
August 10, 2007
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
August 8, 2007
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.
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.
July 30, 2007
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.
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.
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.
Posted by Patent Hawk at 12:39 PM | Prosecution
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.
July 17, 2007
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
June 26, 2007
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.
Posted by Patent Hawk at 6:22 PM | Prosecution
June 25, 2007
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).
Posted by Patent Hawk at 4:57 PM | § 112
June 15, 2007
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.
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.
Posted by Patent Hawk at 3:40 PM | Prosecution
June 7, 2007
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.
Posted by Patent Hawk at 1:10 PM | The Patent Office
May 17, 2007
The USPTO's accelerated examination program has inherent drawbacks. Experience has shown it to be execrable, requiring excruciating planning.
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.
Posted by Patent Hawk at 10:58 AM | Prosecution
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.
Posted by Patent Hawk at 5:55 PM | Prosecution
April 28, 2007
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
April 25, 2007
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.
Posted by Patent Hawk at 8:06 PM | Prosecution
April 12, 2007
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."
Posted by Patent Hawk at 12:03 PM | Prosecution
March 29, 2007
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
March 15, 2007
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.
Posted by Patent Hawk at 7:22 PM | Prosecution
March 12, 2007
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.
Posted by Patent Hawk at 8:12 PM | Prosecution
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.
Posted by Patent Hawk at 10:48 AM | Prosecution
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."
Posted by Patent Hawk at 4:50 PM | Prosecution
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
February 4, 2007
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"?
Posted by Patent Hawk at 5:34 PM | Patents In Business
January 26, 2007
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.
Posted by Patent Hawk at 12:31 PM | International
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.
Posted by Patent Hawk at 12:04 AM | Case Law
December 21, 2006
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.
Posted by Patent Hawk at 11:10 PM | Prosecution
November 12, 2006
§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.
Posted by Patent Hawk at 5:48 PM | Prosecution
November 6, 2006
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.
Posted by Patent Hawk at 11:55 PM | Prosecution
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.
Posted by Patent Hawk at 1:27 PM | Prosecution
November 1, 2006
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.
Posted by Patent Hawk at 8:22 PM | Prosecution
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.
Posted by Patent Hawk at 12:00 AM | Prosecution
October 9, 2006
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.
Posted by Patent Hawk at 11:07 AM | Prosecution
October 4, 2006
Some patented levity: the San Jose Mercury News yesterday published "Wacky ideas get respect at the U.S. Patent Office."
Posted by Patent Hawk at 8:45 PM | Prosecution
September 17, 2006
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.
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.
July 10, 2006
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.
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.
Posted by Patent Hawk at 2:19 PM | Prosecution
June 20, 2006
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.
Posted by Patent Hawk at 4:47 PM | Prosecution
June 18, 2006
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."
May 26, 2006
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.
Posted by Patent Hawk at 2:15 PM | Prosecution
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.
Posted by Patent Hawk at 12:27 AM | Prosecution
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.
Posted by Patent Hawk at 1:10 PM | Prosecution
April 21, 2006
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.
Posted by Patent Hawk at 5:51 PM | Prosecution
April 6, 2006
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.
Posted by Patent Hawk at 5:43 PM | Prosecution
March 22, 2006
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.
Posted by Patent Hawk at 12:01 PM | Prior Art
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.
Posted by Patent Hawk at 12:03 AM | Prosecution
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.
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.
Posted by Patent Hawk at 6:09 PM | Prosecution
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."
Posted by Patent Hawk at 12:00 AM | Prosecution
January 14, 2006
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.
Posted by Patent Hawk at 10:31 AM | Prosecution
January 11, 2006
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.
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.
January 4, 2006
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.
Posted by Patent Hawk at 2:09 PM | Prosecution
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."
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.
November 28, 2005
PBAI Claim Mixup
Posted by Patent Hawk at 12:34 PM | Prosecution
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."
Posted by Patent Hawk at 2:17 PM | § 112
November 10, 2005
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.
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.
Posted by Patent Hawk at 6:03 PM | Prosecution
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?
Posted by Patent Hawk at 12:06 AM | Prosecution
October 1, 2005
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?!
Posted by Patent Hawk at 8:40 PM | Prosecution
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?
Posted by Patent Hawk at 2:20 PM | Prosecution
September 10, 2005
Posted by Patent Hawk at 10:12 AM | Prosecution
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:
Posted by Peter Haas at 7:35 AM | Prosecution
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?
Posted by Patent Hawk at 4:22 PM | Prosecution
August 5, 2005
Acting Commissioner for Patents and Trademarks, John Doll, reported on 19 July 2005 the status of the USPTO with regard to patent application filings.
Posted by Peter Haas at 12:18 PM | Prosecution
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.
July 18, 2005
Just a Patent Examiner (JAPE) is a self-deprecatingly titled weblog that is blowing my mind with candor.
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.
Posted by Patent Hawk at 10:10 AM | Prosecution
July 3, 2005
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.
Posted by Patent Hawk at 2:21 PM | Prosecution
June 26, 2005
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.
Posted by Patent Hawk at 11:53 AM | Prosecution
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.”
Posted by Peter Haas at 10:14 AM | Prosecution
May 14, 2005
Patenting Tips for Inventors
You have a great idea. Now all you need is to wrap it in patent paper.
Posted by Patent Hawk at 2:14 PM | Prosecution
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.
Posted by Patent Hawk at 12:53 AM | Prior Art
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.
Posted by Patent Hawk at 12:01 AM | Prosecution
April 5, 2005
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.
Posted by Patent Hawk at 12:07 AM | Prosecution
April 4, 2005
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?
Posted by Patent Hawk at 12:02 AM | Prosecution
March 30, 2005
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.
Posted by Patent Hawk at 3:58 AM | Prosecution
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.