Posts Tagged: "patent prosecution"

Examiners are not supposed to think about the nebulous areas of 101, 102, or 103, nor are they to interpret case law from judicial opinions. Instead, the USPTO has already determined how they intend to interpret these sources, and has distilled these decisions into memos for their examiners to follow. To the examiners, an attorney putting forth arguments on such grounds is arguing issues that have already been settled. There are appropriate periods in the pursuit of patent protect for attorneys to argue the grey areas of law, but the exchange with the examiner is not the time to do that advocacy to any great extent. Arguing those grey areas in prosecution wastes clients’ resources and everyone’s time.

Due to a bizarre jurisdictional “feature,” the Board does not actually get jurisdiction over a case until either a Reply Brief has been filed or the time to file a Reply Brief has run. See 37 CFR 41.35(a). What this means is the patent examiner, in order to frustrate the applicant’s ability to have the Board hear a case, can simply refuse to file an Examiner’s Answer and instead reopen prosecution. This happens all too frequently in some Art Units.

RUSS KRAJEC: Getting a patent is not the end goal. Using an issued patent is not the end goal. It’s the beginning for the startup. Think about how you are going to use this asset in your business, and then craft that asset to match that business goal. When you do that, you make much better use of your time and energy. So many people who are looking for a paper trophy or a plaque on the wall, and they don’t understand what they’re going do when this asset shows up, and if that’s the case, why bother doing it?

The Patent Office hopes that by giving the applicant the opportunity to provide an oral presentation to the panel during a conference with the examiners, as well as providing written explanation, issues can be resolved without need for an appeal. Indeed, the goal for this Post-Prosecution Pilot Program is to hopefully reduce the number of appeals take to the Patent Trial and Appeal Board (PTAB), or at the very least reduce the number of issues that are appealed. It is also believed that the program will impact the number of request for continued examination (RCE) filings as well.

The IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of the examination process for patents worldwide. The top five Patent Offices (IP5) have recognized this internationalization phenomenon and many directives have been introduced to facilitate cooperation between the patent offices… For example, the IP5’s Common Citation Document (CCD) application now allows access of up-to-date citation data of all five patent offices.

The PathWays system is designed to help applicants predict which art units an application is likely to be filed before the application is even filed. A unique semantic search algorithm compares user submitted text to weighted key words derived from an exhaustive collection of application documents clustered in each USPTO art unit.

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is used by the patent examiner when the substance of the patent claims being sought are deemed to be unallowable under 35 U.S.C. 101, 102, 103 and/or 112. If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. An example of a matter of form as to which objection is made is dependency of a claim on a previously rejected claim. You can also get an objection where claims have not been properly grouped together in violation of 37 CFR 75(g).

The First Action interview (FAI) program affords applicants a no-fee opportunity to speak with examiners early during prosecution, before the examiner has invested the time to prepare a complete Office Action. Yet, a free FAI request is filed in a mere 1 of 625 applications. Our analysis shows that the prosecution benefits of this program continue to be realized and that the program improves both the efficacy (allowance rate) and efficiency (office-action counts and time to issuance) of prosecution. We have seen, both in our professional experiences and through these statistics, such great benefit of this program that we have encouraged the USPTO to take this program one step further and establish a Pre-Search Interview Program that would allow the applicant to explain and potentially demonstrate an invention even prior to the examiner conducting a search.

If you get a patent that won’t make anyone any money, including yourself, the government seems perfectly willing to presume that your worthless patent is valid. However, if you get a commercially valuable patent covering an invention that becomes ubiquitous, the government will not presume your patent to be valid. What exactly was the point of the long, costly and arduous patent examination in the first place if the PTAB simply refuses to apply the presumption of validity? What good is an examination process that ends with a patent that isn’t presumed valid by the agency that granted it in the first place? If the Patent Office refuses to presume the work product of patent examiners is solid why should anyone else? What an incredible waste of time and money.

Pfizer argued that the original restriction requirement, because it was incomplete, created a delay by failing to provide Pfizer with adequate notice of the basis for rejecting its claims. The District Court ruled that the initial restriction requirement, while arguably incomplete, did in fact place Pfizer on notice of grounds for rejecting its claims, therefore satisfying § 132 and justifying denial of additional term adjustments. The Federal Circuit affirmed.

If Gene (the “genie”) were to grant me patent and IP wishes for 2016, I would ask for (in no particular order) the passage of trade secrets legislation, resolution of the current patent reform legislation stalemate in Congress, that the USPTO consider evidence of non-preemption during its initial determination of patent eligibility; and that the USPTO prioritize accuracy, completeness and accessibility of the public record as part of its Patent Quality Review.

Due to maintenance required on USPTO systems, access to Public PAIR, Private PAIR, EFS-Web and EFS-Web Contingency will be unavailable beginning 12:01 a.m. and ending at 11:59 p.m. Saturday, December 5th ET.

Looking at raw numbers, California was by far the most inventive state, with over 329,000 non-design patents filed, over 254,000 disposed, and over 180,000 allowed between 2000 and 2010. Texas, New York, Massachusetts, and Washington rounded out the top five, but together had fewer applications, disposed applications, and allowed applications than California alone. The states with the highest allowance rates were Vermont (84%), Idaho (77%), Kansas (74%), Washington (74%) and Iowa (73%).

The end goal of any patent application is to obtain a patent, which is true whether an applicant find themselves assigned to a patent examiner in an Art Unit that issues over 95% of applications received, or whether they find themselves assigned to a patent examiner in an Art Unit that issues less than 5% of applications received. Unless and until the Patent Office can address obstinate patent examiners and patent examiners who continually fail to meet quality expectations how can the Office truly address the problem? Frankly, talking about improving patent quality seems to be much ado about nothing, or perhaps akin to rearranging deck chairs on a sinking ship.

When measuring the overall success and efficiency of a law firm’s patent prosecution practice, there are several metrics available, including overall allowance rate, time to disposition, and average number of office actions. Allowance rate is one of the most common metrics, but allowance rate merely tells us how many applications received NOAs, and nothing of the quality of those applications. Besides merely getting an application allowed, clients are also concerned about the quality and scope of their claims. One way to determine this is by measuring how well a law firm preserves claims through prosecution. This article shows a ranking of the top 10 firms that lose the fewest independent claims in prosecution among IP Today’s top patent firms for 2015.