Posts Tagged: "patent prosecution"

Typically the Patent Office allows patent owners and third parties to sort out whether a reexamination is necessary. The thought process is that there is no need to waste precious examining resources to reexamine a patent that no one cares about or is enforcing. Thus, something out of the ordinary happened here, although what exactly is impossible to tell. Perhaps the Patent Office was taking some heat on Capitol Hill for these types of patents or perhaps someone just stumbled on something that made them scratch their heads and wonder. It is all just a matter of speculation.

It takes time to prepare a detailed written disclosure that will support any number of claims, and there is just no way to rush it. Inventors and entrepreneurs intuitively know this, but they get lured into believing that what they get for $1,400 is just as good as what they would get if they paid $8,000, which is unrealistic of course. You cannot fall for what you want to hear when you deep down know it makes no sense. If you aren’t convinced ask yourself this: when you were in school and you had to write a paper for a grade, was the resulting paper better if you spent more time or less time working on the project? The reality is the more time you have to spend the better the work product.

Have you ever heard of a design patent application that remained pending for nearly 11 years? The design patent application was originally filed on January 4, 2000, and the design patent was issued earlier today as U.S. Design Patent No. D629,412. The long and tortured path to obtain the design patent on a drop down menu took 10 years and 50 weeks! Almost unbelievable. Getting this one patent application off the books should meaningfully help the averages, which is a sad commentary in and of itself.

Godici told me that those who are not familiar with Three Track will soon need to familiarize themselves because this is going to happen. “This time next year we will be operating in some kind of a Three Track system,” Godici predicted. He went on to say: “These rules are pretty significant from a practitioner standpoint,” because there will be “layers of questions” and opportunities to strategize with respect to the application process.

In order to have a patentable business method it is necessary for the invention to accomplish some practical application. In other words, in order for a business method to be patentable it must produce a “useful, concrete and tangible result.” Although the United States Supreme Court did away with that test when it issued its decision in Bilski v. Kappos, it is still nevertheless illustrative and the best test that is out there. If you really understand what Judge Rich meant by “useful, concrete and tangible result” you come to the inescapable conclusion that it is the appropriate test and if you really target the description of the invention to satisfy the test you will have something that is patentable under the Supreme Court Bilski v. Kappos test and the USPTO guidelines that have followed.

This strategy is tried and true, and any company with a serious patent portfolio and an eye toward enforcing that portfolio through licensing or litigation has followed this strategy. What you do is look at what your competitors are doing, or what that big target prospective licensee is doing, and you write a claim that exactly covers what they are doing. Then you add that specific claim to your continuation. As long as your original disclosure supports that claim you are entitled to add the claim. So if you are a serious inventor, a would-be patent troll or a business of any size with designs on licensing or litigating, you absolutely cannot cut corners at the time of filing the first, foundational patent application. You want the kitchen sink in that first patent application because if the path proves commercially viable you will want to milk the disclosure for many patents, and you will want to be able to argue convincingly that whatever claims you add later are actually covered by your initial patent application.

I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art. Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art. Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.

The initial Peer To Patent pilot program, which began in 2007, opened the patent examination process to public participation in the belief that such participation would accelerate the examination process and improve the quality of patents. Yesterday the United States Patent and Trademark Office announced a sequel to the initial pilot program and will begin a second Peer To Patent pilot program, again in coordination with New York Law School’s Center for Patent Innovations (CPI). This new Peer To Patent program will run for a one year term and will commence on October 25, 2010. This second Peer To Patent pilot program will expand on scope of the previous pilot program. You may recall that the first Peer To Patent pilot was limited to software and business methods applications, but this new pilot program will also include applications in the fields of biotechnology, bioinformatics, telecommunications and speech recognition.

Hopefully the seemingly modest successes of team Kappos in fiscal 2010 will be viewed for what they are, which is rather extraordinary, by our leaders in Washington, DC. With all the odds against them, having to fight daily for adequate funding, fewer patent examiners and a Congress that STILL siphons money paid by innovators away from the Patent Office, team Kappos was still able to increase allowances by 5.3% and dent the backlog. Can you imagine what they could do with adequate funding?

The new procedures measure seven diverse aspects of the examination process to form a more comprehensive composite quality metric. The composite quality metric is designed to reveal the presence of quality issues arising during examination, and to aid in identification of their sources so that problems may be remediated by training, and so that the presence of outstanding quality procedures may be identified and encouraged. The procedures will be implemented for fiscal year 2011.

Claim #1, the broadest claim in this patent, says that this “animal toy” has a solid main section, at least one protrusion and is adapted for floating in the water. While not every stick would infringe claim 1 of this patent, I would venture that there are many which would. No need to worry, however. This patent fell into the public domain on March 26, 2010, for failure to make the first maintenance fee payment. The lesson here, however, is not that the Patent Office occasionally makes a mistake (true though that may be). The fact that a patent can be obtained or has been obtained does not mean that a valuable asset has been obtained, and this “invention” is a wonderfully vibrant example of that.

The trouble with explaining what prior art is stems from the fact that everyone already thinks they know what it is. Conceptually we do not want to issue patents for inventions that are not considered new, which seems fair enough. The trouble is defining what is “new.” For now, let’s just say that prior art must be a reference of some type (i.e., a patent or a printed publication) or some type of knowledge or event (i.e., public knowledge, public use or a sale of a product) that demonstrates that the invention in question is not new.

Now comes the curve ball you have probably been expecting. Not all references, knowledge or events that can demonstrate that an invention is “old” or already known can be used by examiners or during litigation against an invention.

Abandons per action can be interpreted as a level of speculation in applications. Applications that have high abandon rates are highly speculative. Most of the inventions described in these applications ultimately have little value and the applications are abandoned quickly. If a portfolio of speculative applications as a whole, however, has value, then that value is concentrated in a few “breakthrough” applications. For some investors, this is a very desirable characteristic and they may wish to seek out portfolios with high abandon ratios.

On Monday, September 22, 2010, the United States Patent and Trademark Office announced via Federal Register Notice that the Office is considering pro-business strategies for incentivizing the development and widespread distribution of technologies that address humanitarian needs. One proposal being considered is a fast-track ex parte reexamination voucher pilot program to create incentives for technologies and licensing behavior that address humanitarian needs. Under the proposed pilot program, patent holders who make their technology available for humanitarian purposes would be eligible for a voucher entitling them to an accelerated re-examination of a patent. Given that patents under reexamination are often the most commercially significant patents, it is believed that a fast-track reexamination, which would allow patent owners to more readily and less expensively affirm the validity of their patents, could provide a valuable incentive for entities to pursue humanitarian technologies or licensing.

The United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure. The effective date of the these new Guidelines is September 1, 2010, but members of the public are invited to provide comments on the 2010 KSR Guidelines Update. The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.