In a Federal Register Notice published January, 13, 2013, the USPTO asks the public to consider potential best practices aimed at improving patent application quality ”in order to facilitate examination and bring more certainty to the scope of issued patents.” These practices are separate but related to initiatives being pursued via the USPTO’s partnership with the software community to enhance the quality of software-related patents. The USPTO will consider written comments received by March 15, 2013. Continue reading this entry
In In re Antor Media Corp., the Federal Circuit held that a prior art reference cited by a USPTO Examiner is presumptively enabled, even when the reference at issue is a printed publication. Although Antor had submitted a declaration regarding the non-enabling quality of the prior art at issue, the court found that it was inadequate to overcome the presumption. While I understand the premise of the presumption, I am not comfortable with the court’s second-guessing of the expert declaration, and fear that it may invite violations of the court’s own rule against relying on conjecture over evidence.Continue reading this entry
The USPTO has announced that it is launching its pilot program “to incentivize the distribution of patented technologies to address humanitarian needs.” As explained in the Federal Register Notice, “the pilot program will be run as an awards competition.” The program will be open to owners of granted patents and pending patent applications in four technology areas: Medical Technology, Food & Nutrition, Clean Technology, and Information Technology. Selected applicants will receive “a certificate redeemable to accelerate select matters before the USPTO” as well as public recognition, “including an award ceremony at the USPTO.” Program applications will be accepted from March 1, 2012, through August 31, 2012, or until 1,000 program applications are accepted. Up to 50 winners will be accepted.Continue reading this entry
Despite statistics on the USPTO’s Patents Dashboard indicating that the average time from a Request for Continued Examination (RCE) to the next Office Action is 3.8 months, I continue to experience much more significant delays of 9-12 months or longer. When I telephone examiners to check on the status of my applicaitons, they are sympathetic but note that they have a long “special new” docket and are focusing on even older applications under the USPTO’s COPA (Clearing Oldest Patent Applications) program. For a few extreme cases I have used the USPTO Ombudsman program to see if the Ombudsmen have any ideas.
The Australian Patent Office (IP Australia) recently implemented changes to its examination procedures for divisional applications that are designed to promote “prompt resolution” of their status, “particularly where the claimed subject matter of the divisional application is the same as its parent.” While resolving uncertainty is an important goal, the new procedures add a new layer of complexity that may hit non-Australian applicants particularly hard.
The First Action Interview Pilot Program permits an applicant to conduct an interview with the examiner before the first Action on the merits is issued. Previous pilot programs were limited to applications with certain filing dates assigned to certain technology centers, but the USPTO now has opened the program to include all utility applications in all technology areas, regardless of filing date. As set forth in the recent press release, the expanded pilot program will run through May 16, 2012.
On April 4, 2011, the USPTO issued a Notice in the Federal Register announcing the implementation of fee-based prioritized examination, also known as “Track I” of its three tracks of examination options proposed in June of 2010. Track I will be available for non-reissue applications filed on or after May 4, 2011. While this program may be attractive to applicants seeking prompt examination, some of the details warrant a closer look.
On Monday, November 8, 2010, the Federal Circuit issued its decision in the en banc re-hearing of Hyatt v. Kappos. The en banc court departed from the August 11, 2009 panel decision, and held that there are virtually no limits on the new evidence that a patent applicant can introduce against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”). This decision will be welcomed by patent applicants who have received negative USPTO decisions on patentability, and reflects the realities—and difficulties—of marshaling evidence during patent prosecution.
Last week the USPTO announced a new peer-to-patent pilot program that will include patent applications in the fields of biotechnology, bioinformatics, telecommunications, and speech recognition, in addition to the software and business methods applications that were included in the original pilot program. The USPTO touts the promise of a stronger patent and offers the incentive of prioritized examination, but applicants should understand the program details before volunteering their own applications for “peer review.”
When Director Kappos wrote on his blog about international worksharing programs, he also provided a summary of current options for prioritized U.S. examination. While most are well-known, it is good to keep all options in mind when prompt examination is important, such as when a commercial product is on the market (or will be within the average 3-5 year pendency time) or infringement is suspected.
On September 20, 2010, the USPTO issued a “Request for Comments on Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System.” The proposal under consideration would offer a “fast-track ex parte reexamination voucher” designed to incentivize technologies “that address humanitarian needs.” At times like these I wish I had more “inside” information so I could understand the forces behind this proposal, but perhaps some of my readers can enlighten me.
In "Ten Tips for Streamlining Patent Prosecution," Director Kappos outlines ten steps that he would like practitioners to take in order to promote compact prosecution. While I agree with most of these steps in principle, often the realities of patent prosecution, business decisions and innovation itself get in the way. Here I discuss items 6-9 of his list.
6) ADVANCE AMENDMENTS/ARGUMENTS EARLY: File arguments and amendments at the earliest stage of prosecution, and prior to a final rejection if at all possible. Amendments submitted after final are more difficult to deal with procedurally, are not automatically entered, and extend prosecution.
- I agree that arguments should be presented early, but there may be many different arguments against a rejection, and an applicant may decide to focus on the strongest arguments for maximum impact and/or to minimize prosecution history estoppel. Often, once an argument is made, the examiner will refine the rejection, so that the real issue is not crystallized until a subsequent Office Action. At that point, a different argument may be more responsive to the examiner’s concerns.
- I do not agree that claim amendments should be presented early, particularly when an applicant has a good faith belief that the rejections are not sound. The costs of amending claims—loss of literal claim scope, possible loss of doctrine of equivalents, and creation of prosecution history estoppel—are too high to make claim amendments that the applicant does not believe are legally necessary.
7) COORDINATE US/FOREIGN APPLICATIONS: Draft or amend your U.S. application in view of the prosecution in a corresponding foreign or international application. Success of the Patent Prosecution Highway (PPH) shows that applications drafted or amended in response to search reports and patentability opinions in corresponding foreign or international applications have a much higher allowance rate and shorter prosecution.
- I approach this suggestion with caution. An applicant legitimately would resist amending U.S. claims in view of foreign prosecution if the reasons for making the foreign claim amendments do not apply under U.S. law. While the concepts of novelty may be largely universal (assuming the reference at issue qualifies as prior art in all countries), standards for obviousness/inventive step, enablement, and written description vary across countries. In the biotech and pharmaceutical fields, where patentability often turns on obviousness or enablement issues, and where different claim formats are permitted in different countries, coordinating claim language may not serve the applicant’s best interests.
- If an application qualifies for a PPH, amending U.S. claims to conform to allowed foreign claims may be a good strategy. Of course, if the applicant believes that the allowed foreign claims are not as broad as it is entitled to obtain in the U.S., the applicant may file a continuing application to pursue broader claims.
8) DRAFT CLAIMS TOWARD THE INVENTION: Know what you want to protect before you file the application and draft the claims toward the invention. If the claim set is not initially drafted to capture the protection needed or desired by the applicant, the examiner will have difficulty doing a comprehensive search on first action. Furthermore, the examiner will have difficulty anticipating what might be claimed in the future, if the initial claim set is misdirected or overly broad. All of this extends prosecution at everyone’s expense.
- This suggestion is one with which the realities of innovation and business development may interfere. In the biotech and pharmaceutical fields, where patent applications may be filed long before any commercial product is finalized, it can be difficult to draft original claims that encompass the eventual commercial embodiments. In pioneering inventions, the "protection needed or desired" can change between the filing date and the first Office Action. If the original claims do not encompass these embodiments, or do not recite them as clearly as the applicant would like, the applicant needs flexibility to amend the claims or pursue new claims.
- This suggestion carries risks if an applicant waits too long to file its application. Other researchers working in the same field may file their own patent applications or publish their work. Because a reference can invalidate a claim even if it would not adequately enable it for patent purposes, applicants have to walk a fine line when deciding whether to file an application or wait until the invention is further developed.
9) KEEP INFORMATION DISCLOSURE STATEMENTS MATERIAL: Submit a focused Information Disclosure Statement (IDS). Include in an IDS only those references material to patentability. The citation of references that are not material to patentability does not promote a focused examination. Also, be careful to avoid the repeated citation of the same reference.
- If it were only this easy! If I had more confidence in determining whether a reference is "material" my IDS submissions would be much smaller. The Federal Circuit told us in McKesson that a reference that does not teach any new elements beyond references already of record may nonetheless be material because of the specific combination of elements it discloses or because of the specific context of the disclosure. McKesson also emphasized the duty to disclose specific rejections made in copending applications, which promoted the practice of including Office Actions in IDSs. Then, the Federal Circuit told us in Larson that an examiner’s misinterpretation of a reference was material for the few months until he realized his error and withdrew the rejection, so that the Office Action should have been submitted in an IDS in a copending application. Decisions like these have made the process of identifying "references that are not material to patentability" difficult and risky.
- I know that many practitioners have thrown up their hands and adopted a "disclose everything" policy. I know that this creates a burden on examiners. I know that this kills too many trees. (I have proposed three specific USPTO solutions to some aspects of the McKesson problem.) But, with the penalty of inequitable conduct, patent unenforceability and loss of professional reputation at stake, practitioners are only being rational when they err on the side of over-disclosure.
As the USPTO develops programs to promote compact prosecution, it must not lose sight of the realities that drive applicant conduct. While compact prosecution is a goal that most applicants share in principle, the circumstances of a given application may warrant prosecution strategies that are focused on overriding goals, such as achieving an appropriate scope of patent protection and complying with the duty of disclosure.
I’d like to respond to Director Kappos’ blog posts on "Five Tips for Practitioners" and "Ten Tips for Streamlining Patent Prosecution." First, I want to emphasize that I believe that patent prosecution should be a cooperative process, with practitioners and examiners sharing the same goal of issuing the broadest valid patent to which the applicant is entitled. I also want to acknowledge that applicants sometimes pursue strategies that complicate and prolong prosecution. Still, I believe that there are at least a few things that examiners can do to promote compact prosecution.
In an August 11, 2009 panel decision, the Federal Circuit limited the evidence that a patent applicant can introduce against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”). The court subsequently agreed to rehear the case en banc, and oral arguments in the en banc proceeding were held July 8, 2010 (the audio recording of the en banc oral arguments is available on the court’s website). This case raises important, complicated legal issues that should be decided with a perspective that looks beyond this specific case, lest the bad facts here make bad law that denies future applicants their day in court.
The court issued its en banc decision November 8, 2010.
Checking the status of a U.S. patent application after you’ve filed a Request for Continued Examination (RCE) can be confusing and disheartening. Even if you’ve filed several responses and conducted an examiner interview, the USPTO’s Patent Application Information Retrieval (PAIR) system will show the status of your application as “Docketed New Case—Ready for Examination.” A telephone call to the examiner is not likely to be more helpful. The examiner probably will remind you that he no longer has a set time period for acting on an application after an RCE is filed, but will promise to get to it “soon.” Since I have several applications languishing in post-RCE purgatory, I asked Andrew Mitchell, our Director of IP Technical Support, if he could pull a report on the RCEs that we have filed since the new RCE docketing procedures took effect, and how long it took for the USPTO to issue the next action.
One hallmark of the USPTO under Director Kappos is the practice of announcing proposed changes at a preliminary stage and soliciting public feedback early in the process. Instead of rolling out near-final rules packages that are published for comment before taking effect, the USPTO has issued several "Request for Comment . . . " notices that outline a general proposal and solicit comments on both general and specific issues. This practice may reflect the magnitude of the problems facing the USPTO (quantified most dramatically by the backlog of over 700,000 unexamined applications) and the Director’s understanding that buy-in from stakeholders in the patent community will be essential to solving these problems.
In order to capitalize on these opportunities to improve U.S. patent examination and strengthen the U.S. patent system, stakeholders will have to study the USPTO proposals and participate in the process by attending public meetings and submitting comments. If we don’t take action to be part of the solution, we may find ourselves paralyzed by the problems.
The USPTO’s proposed changes to the application queuing system will derail foreign-based applications in order to promote the USPTO’s worksharing goals. While domestic applicants will be able to opt into one of three examination tracks (“prioritized,” “traditional,” and “delayed”) applications that claim priority to a foreign application will have their brakes set until the foreign patent office issues a substantive examination report. The USPTO has not explained the legality of this second-class treatment of foreigners, and has not shown that temporarily taking foreign-based applications off track will benefit the U.S. examination system in the long run.
Applications “based on a prior foreign-filed application” will not be placed in the examination queue until substantive examination in the foreign application begins. In order to obtain U.S. examination, the applicant will have to file in the U.S. application a copy of any search report and the first office action from the foreign application, as well as “an appropriate reply to the foreign office action” as it may apply to the U.S. application. Once this requirement is met, foreign-based applications will be queued up for traditional examination unless a request and fee are submitted for prioritized examination.
The USPTO is proposing significant changes to the application queuing system to give applicants greater control over the examination process and promote the USPTO’s worksharing goals. The new system would offer three examination tracks: “prioritized,” “traditional,” and “delayed.” While domestic applicants could opt into any of these tracks, applications that claim priority to a foreign application would be completely derailed until the foreign patent office issues a substantive examination report. I understand that the Patent Office has to do something to address the examination backlog, but the kinks in the tracks make this proposal a train wreck waiting to happen.
The Promise of a High-Speed Prioritized Examination Train . . .
The USPTO lures us on to this high-speed train with the promise of prioritized examination without the burdens associated with accelerated examination or the strict requirements of the patent prosecution highway (PPH). Prioritized applications would receive a first office action within four months and a “final disposition” within twelve months. To get on board this high-speed train, applicants will have to pay a “cost recovery fee” to cover the costs of providing the necessary “resources” to meet these goals without further delaying examination of non-prioritized applications.
. . . at What Price?