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Category: Patent

Submitting Prior Art in Another’s Patent Application

There are various mechanisms for submitting relevant prior art references in an attempt to defeat a competitor’s patent or patent application.  The America Invents Act changed and added these mechanisms.  For pending applications, a protest or third-party submission can be made.  For an issued patent, one can file an inter partes review or a post-grant review.  There are other niche mechanisms that can be used as well.

Today, I’ll review the protest as a method for submitting art in another applicant’s patent application.  A protest against a pending application can be filed by any member of the public.  A party obtaining knowledge of an application pending at the Office can file a protest against it and can call attention to any facts within their knowledge which, in their opinion, would make the grant of a patent on the application improper.

There are specific requirements for filing a protest, which include serving the protest upon the applicant to provide them with notice.  The protest must also include a number of disclosures, including a listing of relied-upon information such as patent and publication references, an explanation of the relevance of the references, copies of the references, and translations of the references if necessary.

Timing is critical for a protest.  A protest must be filed before the application is published or before a notice of allowance is issued in the case, whichever is earlier.  Practically, a protestor should submit the protest as soon as possible after becoming aware of the existence of a pending patent application, which will provide the Patent Office the best opportunity to review the protest completely.

Once a patent application is published, the filing of a protest can only be made with the express written consent of the applicant.  However, a protest can be submitted after a notice of allowance, but will likely not be entered.  If it sets forth references which clearly anticipate or render obvious at least one of the claims, it may be considered.  A protest will not be considered if it provides information which is merely cumulative.

The involvement of the entity filing the protest ends after filing the protest – they are not informed or updated regarding the ongoing status of the case.

Filing a protest should be carefully considered.  There are strategic consequences for filing a protest that may dissuade the protestor from filing.



Revival of a Patent Application under the Unintentional Delay Standard

A post I wrote about five years ago discussed how to revive an abandoned patent application. Revive PatentAt that time, there were two standards for reviving an application: it could be revived under an “unintentional delay” standard or under an “unavoidable delay” standard. An application could be revived for a fee of about $900 if the entire delay in responding was unintentional. This was an easy standard to meet and essentially required, as long as it was truthful, a check-the box style statement that the delay was unintentional. Alternatively, an application could also be revived under the unavoidable delay standard, if the applicant and attorney had essentially tried just about everything to prevent abandonment of the application. That included calendaring everything and placing redundant reminders on file. It was a tough standard to meet, and applicant often opted simply to pay the increased fee under the unintentional standard rather than risk the lower fee (about $300) and be refused under the unavoidable standard.

In 2013, patent reform did away with the unavoidable standard for revival. While the Patent Office has continued to review petitions to revive which were filed on the unavoidable basis before the change in law, petitions filed afterward would not be considered if relying on that standard. Going forward, petitions to revive could only be filed on the unintentional standard and had to be accompanied by the higher filing fee.



What is an RCE?

An RCE is a Request for Continued Examination. It is a request that can be made in a pending patent application to obtain continued examination on that application, rather than having to file a continuing application. An RCE is a tool that can be used to re-open examination after an application has received a final rejection and examination of the application has been closed. Filing an RCE requires payment of a fee, which is less than the initial filing fee, but still a considerable expense.

An RCE might be advisable if some claims in an application were allowed, and you want to avoid issuing those claims now and then filing a continuing application for the rejected claims, because of the increased fees associated with maintaining two patents. If that is the case, an RCE would be filed to try to argue the rejected claims and have them allowed with the other already-allowed claims. An RCE might be necessary if, after a notice of allowance has been issued and the issue fees have been paid, you become aware of art that must be disclosed in the case. There are other situations still in which an RCE may be appropriate.

To file an RCE, there must be at least several requirements met. First, prosecution must be closed. Prosecution is closed if the application has been appealed, if the most-recently issued Office Action is final, if a notice of allowance has been mailed, or if an advisory action or other type of action has been mailed which otherwise closes prosecution. Second, the RCE fee must be paid. The fee, at the time of this writing, is $1200 for large entities, $600 for small entities, and $300 for micro entities. Third, a submission must be made. The submission can be one of many things, depending on the status of the application. If a final Office Action was mailed last, for instance, a proper submission may be a response to that Office Action. Or if an Advisory Action refused to enter an amendment made after the final Office Action, the amendment could constitute a proper submission. Or, as another alternative, an information disclosure statement could be a proper submission, if for some reasons the normal methods for submitting an IDS are not available to the applicant.

An RCE can be a beneficial way to gain additional examination of an application with remaining issues that need to be cleared up. An RCE must be filed correctly, so it is recommended that you contact a patent attorney if you have questions or are considering filing one.



New Website at US Patent and Trademark Office

Last week the US Patent and Trademark Office rolled out a new website.  So far, I have heard nothing but complaints.  The new website is intended to improve the experience of doing business with the USPTO.

The site is supposed to be easy to use for everyone.  Patent attorneys and agents who frequent the site probably will not have much trouble getting used to it.  I have no issues with the no site yet, as most of my work occurs off the front page, where the majority of the changes seem to have taken place.  The pages I use frequently – Private PAIR, EFS-Web, TESS, TEAS, and TSDR – haven’t changed at all.

For those who don’t frequent the site, there are two primary tabs for Patents and Trademarks near the top, and a helpful QuickLinks button at the top right which includes really just about anything you need to get work done.

Patent Attorney



How Good Do Patent Drawings Have To Be?

Patent drawings have to be good enough to show and describe the invention as is necessary for a skilled artisan in the relevant industry to understand the invention when viewing the drawings together with the written description of the invention. There are few hard-and-fast rules on the quality of the drawing, though. Drawings must include black-and-white lines, and will generally be rejected where they include shading or color. In rare cases, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented. But generally, drawing must be in black-and-white.

Drawings can be produced by hand or by computer. Photographs are not accepted except, again, in very limited situations where a photograph is the only practical medium for disclosing the subject matter, such as when describing cell growth, crystalline structures, electrophoresis gels, and other complicated illustrations. Instead, black and white line drawings are preferred in almost all situations.

Drawings used to be produced by hand. They were human and beautiful. Today, most drawings are done with CAD tools or other computer drawing programs. There is no requirement that the drawings be created by a computer, and no prohibition against hand-drawn drawings. Generally, as long as the drawings are clear and can be reproduced, they are acceptable.

All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.



Supreme Court Sanctions Patent Attorney

Previously, I have described how not to write a claim in a patent application. Now, the Supreme Court has let us all know how not to write a Petition for Writ of Certiorari. Such a petition is a necessary part of having a case argued before the Supreme Court of the United States. Unlike the first level of appellate courts, to which any party can appeal, only some appeals are accepted by the Supreme Court to be heard. This is a necessary mechanism: thousands of trial courts funnel appellate work to a handful of appeals courts, and many of those cases are requested to be reviewed by the Supreme Court. However, the Court has only nine justices and can hear only so many cases a year. Thus, the Court picks and chooses which arguments it will hear, and refuses to hear other cases by denying their petitions for writ of certiorari. It would thus seem obvious, then, that a petition would be written clearly to convey the depth and importance of the question presented in the case.

Well, apparently not always. The Court recently denied a petition in a patent case because the petition was so lacking. The question presented in the petition “focused” on a developing line of precedent in the Supreme Court on subject matter eligibility (what types of inventions can be patented). The Court was not impressed with the question, nor should you be. The petition was long, oddly formatted, asked at the outset:Patent Supreme CourtI can’t make too much sense of it, and neither could the Court. It is now requiring that the attorney explain why he shouldn’t be sanctioned for submitting a petition in this fashion.

 



Public Use of an Invention

The public use of an invention can invalidate patent office 2your ability to obtain a patent in that invention. There are many nuances to the law on public use, and this will explore only one of the nuances. A patent cannot be obtained for an invention if the patent application was filed more than one year after the first date of public use. Thus, whenever a public use has occurred, there is a “critical date” one year later by which a patent application must be filed if patent protection is to be sought.

What is “public use,” though? There is a lot of case law defining this, but unfortunately it is, at the time of this writing, all old case law under the old patent rules.  It is fairly likely, though, that much of the analysis of most aspects of “public use” will be the same under the new patent rules.

The public use bar arises where the invention is in public use before the critical date and is ready for patenting. The test for public use includes consideration of many factors, such as evidence relevant to experimentation, the nature of the activity that occurred in public, whether and to what extent there was public access to the use, the existence of confidentiality obligations with members of the public who witnessed the use, and any commercial exploitation of the invention. Importantly, wide, public knowledge is not necessary for “public use” to have occurred. In some cases, hidden use of a device can be public us; if a new type of suspension is used in a truck that is driven around town for an afternoon, this may be public use even if no one sees the suspension. On the other hand, an inventor’s private use of the invention, for his or her own enjoyment is not a public use.

“Public use” of a claimed invention occurs when the inventor allows another person to use the invention without limitation, restriction or obligation of secrecy to the inventor. The existence of such controls can indicate that a use was not public, but is not necessarily dispositive of the issue.

It is important to understand that the above description is not at all a complete treatment of public use law or patentability requirements.  Every situation is a little bit different, and may be analyzed under these or other areas of patent law.  For that reason, each situation must be addressed on its own facts with the advice of competent counsel.



Patent Searching and the Duty of Disclosure

I frequently get asked about the necessity of patent searching.  Some clients question why they should run a search before filing an application when the Patent Office will always perform one in your application.

A patent search is never required before an application (well, almost never – there are some very rare situations).  But there are a lot of reasons why a patent search should be conducted beforehand.  First of all, the USPTO does not perform a search “for you.”  If anything, they are performing a search for the American public against you.  The USPTO Examiner’s job is to review an application and ensure that the applicant is awarded a patent only on that which he or she has invented and which has not already been disclosed, so that the applicant is not able to claim something which the public has properly come to believe is available for all.

A patent search is helpful to determine: 1) whether the invention is patentable at all, and 2) what aspects of the invention are patentable.  Regardless of your method of filing, you are going to spend considerable time and money chasing a patent, and if the idea is patentable at all, it is better to know that from the outset – you’ll have saved yourself considerable aggravation.  If the invention is patentable, you still want to make sure that the work that is required in preparing and prosecuting an application through to issuance is justified by the potential scope of the patent.  If the only protection that the patent may ever yield is far too narrow or specific to have any value, you may choose to drop the idea or, perhaps, change it to make it broader.

When a patent search is performed, it also helps the attorney immensely in drafting the application.  Without knowing the prior art, an attorney can’t draft claims which are precisely tailored to the patentable subject matter.  The attorney will be forced to either write claims that are overbroad (and likely far overbroad) or write claims that too narrow, and thus leave missed protection on the floor.

Whenever a patent search is performed, the results should always be disclosed to the Patent Office.  An applicant has a duty to disclose material relevant to patentability.  Failure to disclose such information can eventually become the basis for the patent being invalidated.



Patent Derivation Proceedings FAQ

Derivation proceedings are administrative patent officeproceedings conducted at the Patent Office to determine who should be able to pursue a patent application. The patent reform that was enacted over several years and concluded on March 16, 2013, instituted derivations proceedings, which are most similar – though certainly not identical – to the old inteference proceedings which attempted to ferret which inventor had invented an idea first. Derivation proceedings can be brought by an inventor who believes that an earlier-filed application may have been derived from his own inventive activity. Here are a few basic questions and answers about the proceedings:

Q: What are the requirements for seeking a derivation proceeding?

A: A patent applicant must file a petition to being the proceeding. The petition must establish the basis for finding that an inventor named in an earlier application actually derived the claimed invention from the petitioner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within one year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.

Q: What statutory requirements must a petitioner meet in a petition for a derivation proceeding?

A: In a petition for a derivation proceeding, the petitioner must both: (1) identify which application or patent is disputed; and (2) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

Q: What is the standard for instituting a derivation proceeding, and who decides whether that standard is met?

A: A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition. The Patent Trial and Appeal Board decides petitions for derivation and conducts any proceeding arising therefrom.

Q: How will the Board conclude a derivation proceeding?

A: The AIA provides that where a derivation proceeding is instituted and not dismissed, the Board shall issue a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application without authorization.

Q: Are there possibilities for appeal from an unfavorable decision by the Board?

A: Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit.

Q: In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way?

A: Yes, the parties to a derivation proceeding may resort to binding arbitration to determine inventorship.

Q: What about settlement?

A: Yes, the AIA permits the parties to a derivation proceeding to settle. A settlement in a derivation proceeding will be accepted by the Board unless inconsistent with the evidence of record.



Patent Office Launches Glossary Pilot Program

Today, the United States Patent and Trademark Office announced the launch of a new Glossary Pilot Program as part of a White House Executive Action designed to enhance claim clarity in the specification of software-related patent applications.  The pilot program will run for six months from the start date of June 2, 2014.  The program is limited in scope: only computer-related inventions are eligible.

Participation in the pilot program requires an applicant to include a glossary section in the patent application specification to define terms used in the patent claim.  The goal is to increase the clarity of the terms in the claims, which, while they are required to be definite, can still sometimes be vague, or at least, confusing.  Applications accepted into the pilot will get expedited processing, be placed on an examiner’s special docket prior to the first office action and have special status up to issuance of a first office action.

It is my opinion that this program will not likely be used by many applicants, or at least, not by many applicants represented by an attorney.  Providing a crisp definition of a claim element is too likely to result in prior art complications during examination of the application or in a claim being narrowly construed in litigation, while providing a vague definition will run afoul of the rules and subvert the purpose of the program.