Posts Tagged: "patent prosecution"

Patent applications as a whole over the past 10 years have had an average allowance to rejection ratio of about 0.3. We arrived at this ratio by generating a list of 300 randomly selected application serial numbers in the 10/, 11/, and 12/ series, and individually reviewing the transaction histories for each serial number. An allowance to rejection ratio of 0.3 corresponds to about one allowance for every three rejections. First office actions have a somewhat lower allowance ratio than the average. This is consistent with the common knowledge that applicants will take a more aggressive position with the claims that they file relative to the amended claims they present after a rejection. The allowance to rejection ratio for second and higher rejections remains relatively constant. This has the somewhat disturbing implication that practitioners and examiners are not getting any better at understanding each other as prosecution progresses. If practitioners and examiners were learning from each rejection – response interchange, then the allowance ratio would increase for each succeeding office action.

I am frequently asked if it is a good idea for inventors to file their own patent applications, and every time I am asked that question I suspect the person doing the asking already knows the answer, but is hoping that they might find someone who will tell them what they want to hear. You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife. The guy asks: “shouldn’t you be doing this?” Well, writing your own patent application is a little like taking out your own appendix.

Earlier this week Apple, Inc. had three patent application publish on what most would consider strange, overbroad and/or dubious inventions. The patents largely follow the same formula, the drawings are remarkably similar, and all relate back to provisional patents filed at the end of January 2009. Many will ridicule these patent applications, and given that obviousness is now about common sense thanks to the Supreme Court’s decision in KSR v. Teleflex I think rightly so. I find it hard to believe that there would not be prior art located that dates back to before January 2009 that will present massive difficulties for Apple.

This morning the United States Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Interim Bilski Guidance is effective July 27, 2010, and applies to all applications filed before, on or after the effective date. Most noteworthy is that the Patent Office is encouraging examiners to issue 101 rejection in only “extreme cases” and allow patentability to be decided by sections 102, 103 and 112.

Who knows what goes through the minds of anyone, let alone a cloistered Justice of the United States Supreme Court. What we do know, however, is that 5 Justices, namely Justices Kennedy, Roberts, Thomas, Alito and Scalia all agreed that business methods are patentable subject matter. All 9 Justices agreed that the Federal Circuit misread previous Supreme Court decisions when they mandated that the machine or transformation test be the only test for determining whether a process is patentable subject matter. All 9 Justices agreed that the Bilski application was properly rejected, with the majority agreeing that it was properly rejected because it was an abstract idea, and the concurring minority simply wanting to say that business methods are not patent eligible unless tied to an otherwise patentable invention (see Stevens footnote 40).

Who knows what will happen, but this early announcement form the USPTO seems helpful. They recognize that business methods are patentable unless they represent abstract ideas, as Bilski was determined to encompass. It is also recognized that satisfying the machine-or-transformation test is heavy evidence of satisfying the requirements of 101, and an interim process is put in place whereby the burden will be shifted to the applicant to demonstrate that the claimed invention is not simply drawn to an abstract idea if a machine-or-transformation rejection is given.

The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, and that the Federal Circuit erred when it ruled that it was the singular test to determine whether an invention is patentable subject matter. Delivering the opinion for the Court was Justice Kennedy. There were no dissents, only concurring opinions, which is in and of itself a little surprising. In any event, Kennedy explained that the Federal Circuit decision ignored well established rules of statutory interpretation, and further explained that there is no ordinary, contemporary common meaning of the word “process” that would require it to be tied to a machine or the transformation of an article. Nevertheless, the machine or transformation test may be useful as an investigative tool, but it cannot be the sole test.

It is truly sad that massive anti-patent hysteria can be whipped up simply based on a single sentence in the Abstract of a patent. For crying out loud people, the Abstract is hardly considered to be a part of the patent application and has absolutely nothing to do with the exclusive rights granted. The claims are what defines the exclusive right, nothing else! But we will never get the anti-patent types to ever read a claim because there are just too difficult to understand and there are way too many details in the claim. WAKE UP! That is the point! The more details in the claim the more narrow the rights!

Management at the United States Patent and Trademark Office has been working with representatives of the patent examiners union, the Patent Office Professional Association (POPA), to better align the performance standards for patent examiners with the USPTO’s goals for increasing quality in patent examination and reducing the backlog of pending patent applications, Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos announced today. If adopted, the joint task force’s changes would be the first major revision to the patent examiners’ performance appraisal plan (PAP) since 1986.

By far, most inventions are improvements upon other known devices or solutions. In fact, whenever I teach patent law courses I tell students that in their career as a patent attorney they are unlikely to ever come across a pioneering invention (i.e., first of its kind, revolutionary invention). Even the great Thomas Edison, the most prolific inventor in US history, rarely came up with pioneering inventions. What Edison really had a knack for was taking something that someone else had come up with and making it extraordinarily better. So the first lesson here is that inventors can and most frequently are those who improve upon the work of others. The second lesson is that those inventors who focus on improvements can be quite successful indeed!

Cumulative statistics released by the USPTO demonstrate steady growth in the number of requests for reexamination being filed generally (particularly inter partes) since the advent of third-party participation in 1999. Between January 1, 1999 and December 31, 2009 the USPTO Official Gazette noticed 5,594 requests for reexamination. Of these, 97 or 1.7% were requests for reexamination of design patents. Of these 97 reexaminations, 85 or 88% were ex parte and 12 or 12% were inter partes.

On Friday, May 28, 2010, USPTO Director David Kappos gave five suggestions for practitioners on the Director’s Forum (i.e., the Kappos blog). It would be wonderful if such things could occur in the prosecution of every case, but unfortunately the Federal Circuit has effectively prevented that from happening and forced upon the USPTO and the practicing patent bar a game of hide the ball, which benefits no one. With Congress not stepping up to the plate any time soon to do anything useful for the patent system there may be only one hope left; namely to get the CAFC judges to examine patent applications, sitting by designation, so they can better understand the mess they have created.

This unique initiative seeks to reduce the backlog of patent applications by getting rid of those that are no longer important to applicants or are of marginal value. In exchange for giving up on certain applications and abandoning them another application will be advanced out of order to the front of the examination queue. Over and over again the message directly from Kappos and his top Lieutenants is that the backlog is costing America high paying jobs. This initiative picks up on the recently released PTO study that concluded that high-tech jobs are high paying jobs, innovators rely on patents and an overwhelming majority of Venture Capitalists say that they want to see issued patents before they invest in start-up companies. The expanded Exchange Program is yet another attempt to help give the Patent Office the tools necessary to unleash commercially viable innovation into the marketplace so that funding can be obtained, jobs created and innovation can play its role in economic recovery.

IFW Insight is a web-based application for searching, sharing and collaborating on US Patent Image File Wrapper (IFW) documents, which are also commonly referred to as “File History” documents. The IFW Insight search interface includes powerful search features including support for both proximity and Boolean search operations. The IFW Insight database currently includes over 1,000 IFW documents. IFWs are created by the USPTO as image-based documents, and are thus not searchable. Notwithstanding, by applying proprietary optical character recognition (OCR) algorithms The Patent Box is able to expose text data embedded within these image-based documents, thereby making them fully searchable.

Yesterday I had the honor of spending 30 minutes interviewing Francis Gurry, the Director General of the World Intellectual Property Organization (WIPO). The Director General spoke substantively about issues facing the Patent Offices of the world, as well as some possible solutions. Gurry also discusses harmonization attempts, work-sharing agreements and the crushing worldwide backlog of patent applications that could lead to irrelevance of the system. As you read the interview you will also see that he thinks it is possible that the rest of the world will adopt a US-like grace period.