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Category: Patent

US Patent Application Filings Under the Paris Convention

A US patent application may be filed on a number of bases. Most applicants think of directly filing an original, non-provisional patent application in the US. However, roughly half of the patent applications actually are filed by non-US entities and have foreign priority claims. A foreign priority claim allows a later-filed application to adopt the filing date of an earlier-filed application, which can be valuable during examination of the application. A foreign priority claim is proper when the US application is filed under the Paris Convention or as a national phase entry under the Patent Cooperation Treaty.

When an applicant files a US application with a foreign priority claim, a copy of the foreign priority application must be submitted to the US Patent Office. The copy must be a certified copy, which means it has to be reviewed and stamped by the foreign patent office. Foreign priority documents do not need to be provided at the time of the filing, but they do need to be provided. So while timing is not of the essence, compliance is important.

There are two mechanisms for providing the priority documents. The first mechanism is simply filing and submitting the certified document with the US Patent Office. There are fees involved with obtaining a certified priority document, and it takes time to request the document, wait for it to arrive, and then ship it to the office.

The second mechanism uses the Priority Document Exchange program. Some patent offices around the world have subscribed to the PDX program, and if the earlier-filed application was filed in one of the countries, the applicant can request that the office of earlier filing electronically transmit the earlier-filed application to the office of later filing. Provided that foreign filing license and other requirements are complied with at the earlier office, that office will transmit the application. There is no governmental fee for such a request, and it can save considerable time and administrative work.



What is a Notice of Allowance in a Patent Application?

A few posts ago I discussed trademark notices of allowance. On the patent side, a notice of allowance is a different instrument. It indicates that a patent application has been approved. When a patent application is filed, it is initially processed for formalities and then eventually examined by a patent examiner. The applicant works with the examiner to move prosecution of the application toward allowance. If an examiner issues a notice of allowance, that means that prosecution has, for all intents and purposes, ended and that the claims defining the scope of protection are allowable. The applicant and examiner, essentially, agree on the proper scope of protection.

However, a notice of allowance does not naturally result in the issuance of a patent. Rather, it indicates which claims can be allowed and the reasons they are allowable, or how they are different from the prior art. The notice of allowance provides a 3 month window in which the applicant can file final issue paperwork and pay the issue fees. If the paperwork and fees are lodged within that 3 month window, the patent should generally issue; if not, it will not.



Top Reasons a Patent Application Gets Rejected

There are many reasons a patent application can be rejected by the Patent Office.  Below are a few of the main reasons it could be:

  1. Invention is Obvious. “Obvious” is a technical term in the patent world. It does not indicate that the invention is obvious in the ordinary sense of the world. The test is slightly more objective than that: It means that a single reference, or the combination of several prior art references, renders the invention obvious. In other words, the invention’s claimed elements can also be found in the prior art and there is some reason to combine those claimed elements together to form or build your invention. This rejection gets made frequently and can be difficult to overcome.
  2. Lack of Novelty. A finding of novelty means there is no single reference – a past patent, application, disclosure, article, product, etc. – which is essentially the same as the claimed invention. Novelty is a problem if an invention is too close to a single something which has been done before. Novelty is different than non-obviousness, because while an obviousness rejection can be built on the combination of several references, a novelty rejection must rely on just one reference.
  3. Claims Written Incorrectly. This can be a big problem for the pro se applicant, an inventor that represents himself or herself. Claims are incredibly difficult and demanding to write – the Supreme Court itself has stated that patent claims represent the most demanding legal instrument to draft. There are a number of pitfalls when writing claims. If the claims are not punctuated correctly, they will be rejected. If the claims discuss elements that aren’t properly introduced, they will get rejected. If the claims are directed to material not discussed in the written description, they will get rejected. If the claims are directed to material not identified in the drawings, they will get rejected. If the claims use terms inconsistently, or refer to features or arrangements in the alternative, they will get rejected. If the claims are not written in a proper dependent form, they will get rejected, or may incur expensive surcharges. The claims are a potential minefield of rejections.
  4. Issues with the Drawings. Patent drawings used to have formal, rigid requirements. Many of those requirements have been loosened, but there are still a number of ways the drawings can create problems. Introduction of shading, greys, or colors will often lead to a rejection. Stray marks, blurry lines, and smudges will cause problems. If a drawing is indicated as having only pure black-and-white marks, but actually contains some grey (even grey that looks entirely black), the drawing quality will be extremely reduced when the application is published, and this can lead to a rejection.
  5. Issues with the Written Description. The written description provides support for the claims. Without adequate support, the claims cannot mature into any grant of protection. A lack of written description support can manifest in a few main ways. First, the written description may not disclose the best mode of the invention. Although this requirement has changed over the past few years, the best embodiment, or best way, of practicing the invention must be disclosed somewhere in the application. Second, the written description may fail to describe how the invention is made and used. The written description has to describe the invention with sufficient specificity such that someone skilled in the relevant industry could make and use the invention. Third, the written description must be of sufficient detail so as to clearly convey to the public that the inventor has actually invented the claimed subject matter and was in possession of the invention.
  6. Invention is for Non-Patentable Subject Matter. This rejection arises infrequently, but when it does, it is difficult to overcome. Most things are patentable. But some just aren’t. For example, you cannot patent the law of gravity, or a mathematical formula, or a method of organizing human behavior. Such rejections frequently arise in the context of software applications; software applications and processes used to be largely patentable, but the Supreme Court eroded much of their eligibility for patenting in the first half of the 2010s.


Information Disclosure Statements in Continuing Patent Applications

When filing a continuing patent application, such as a continuation, continuation-in-part, or a divisional, it may not be necessary to submit a new Information Disclosure Statement.

When a continuing application claims benefit to a U.S. parent application, it is not necessary to submit an IDS that identifies the prior art cited by the Examiner in the parent application. The only reason to do so is if the applicant wishes such prior art information to be printed on the issued patent. The Examiner will consider prior art that was made part of the file history of the parent application regardless of whether it is presented in a new IDS or not.

However, that does not absolve an applicant from ignoring the IDS. A continuation-in-part will present new material, and will claim new material. Such new claimed subject matter could rope in different relevant art, and it would be appropriate to file an IDS that identifies at least that new art. A continuation or divisional application – even though they don’t present new subject matter – could claim subject matter not claimed before, and thus could require submission of a new IDS.

In short, if newly claimed subject matter is presented, an IDS may very well be likely. If the same subject matter is claimed, an IDS might not need be filed. However, caution, and the risks associated with not disclosing information, might direct one to file an IDS in a continuing patent application.



Bicycle Saddle Patent Litigation

bicycle-patent-on-saddle-1 bicycle-patent-on-saddle-2Several bicycle manufacturers around the world have found themselves under attack from an Australian company, Icon-IP, that is suing for infringement of two bicycle saddle patents.

Icon IP had previously twice sued Specialized Bicycle Components, Inc. in 2013 in US courts for its use of a split saddle. Specialized, of course, makes many of the components it uses on its own bicycles, the seat included. Split saddles, those with split noses, or with longitudinal central slots, have become much more popular in the last 5-10 years, with many manufacturers now offering such saddles stock with a new bicycle. Specialized successfully dismissed one of those suits and settled another.

Now Icon IP is suing Merida Industry and well-known saddle manufacturer Selle Royal in Germany for infringement, and has given notice to Giant Bicycles that it may also be receiving a legal complaint.

 

 



Patent Examiners Mostly Accurate in Time

The Office of Inspector General, following up on a report from last year about a patent examiner who had received $25,000 by falsely claiming worked hours, has just released a report on two concurrent studies of about 80% of the 10,000 examiners at the United States Patent and Trademark Office. The study found that while most examiners accurately report their hours and time worked, there is still a large amount of waste in salary, overtime, and bonuses paid out.

The OIG conducted a 9-month study as well as an overlapping 15-month study in looking at time spent. It compared timestamp data from several independent sources within the Patent Office with hours reported by the examiners themselves. The OIG notes that its study was “conservative,” excluded significant amounts of unsupported hours, and thus likely underestimates the number of hours falsely reported, perhaps by as much as half.

The short and long studies were generally consistent in their findings. Approximately 180,000 examiner-hours each year are unsupported by any electronic records, timestamp, or method of verification. It appears therefore, that those hours were wasted, in that compensation was paid for them without any work being performed in return. In the 9-month period, $8.8 million dollars was potentially paid out on unsupported hours; in the 15-month period, $18.3 million was paid out.

Much of the waste comes from a few of the examiners. About 3.5-5% of the examiners accounted for 39-43% of the waste; at least 10% of their hours were unsupported. Of those, many had above-average performance ratings, and about 10% essentially took 3 days off every 80 work hours. One-quarter of the wasted compensation was for overtime work. Further, had the compensation been paid out for actual work, the OIG found that the backlog would have been reduced by 7,500 applications in 9 months and by 16,000 applications in 15 months. This is quite troubling when one considers that most applicants wait 1-2 years for an application to receive examination.

The OIG concluded that there were several reasons for the waste. First, some examiners have realized that they can game the system by falsely reporting time. Second, some examiners are very efficient and get their work done faster than the time allotted yet still report the full time. Other examiners complete more work in the allotted time but then claim overtime. The time allowances and production goals have not been updated since 1976. The OIG recommends enhancing the time-tracking systems and updating production goals within the art units.



Corrected Application Data Sheets

Corrected Application Data Sheets

Occasionally, an Application Data Sheet (“ADS”) needs to be corrected because the information in it is wrong. A corrected ADS is a fairly minor correction. However, submitting a corrected ADS is actually fairly tedious. It requires striking through or bracketing out information to remove it and then underlining newly added information. Not that hard, but the ADS form doesn’t provide a lot of space for those corrections. Some of the boxes are barely big enough for the original material. And where a check-the-box needs to be corrected, it can be difficult to show a change from the previous version of the ADS.

The Patent Office has thus developed a Corrected ADS web filing. It already had a web-based ADS that could be filled out and submitted entirely online. I’ve not been a fan of that because the ADS contains quite a lot of information and thus a lot of opportunity to make an error. I prefer to prepare the ADS in PDF form and then review it before filing. However, if a mistake does get made in the ADS, the Corrected ADS web filing seems like a good option for entering corrections into the record.

The Corrected ADS web filing is access through the Patent Office’s EFS filing system.  After submitting the app number and confirmation number for the case, the information gathered from the original ADS will be displayed. Changes are made easily by simply typing in the new information. The Patent Office software will take care of the rest when generating a Corrected ADS.

Almost all of the fields of the original ADS can be changed. The order of inventors can be changed. Note that you cannot add or remove inventors through a corrected ADS. That is done through another, much more complicated, process, which is beyond the scope of this article. You will also not be able to change publication request information. If you have any questions about submitting a Corrected ADS, it is best to contact a local patent attorney you can visit in person to discuss.



Notice of Non-Compliant Response in a Patent Application

Pro se inventors – inventors trying to write a patent application on their own – should discourage themselves from attempting to write and file without help. I say this not for my own job security, but for the good of the inventor. There are many obvious, and many more unobvious, ways to make a mistake in a patent application, an inventor going on his or her own cannot possibly avoid some of them. Even experienced patent attorneys sometimes commit them.

The Supreme Court quoted its own Topliff v. Topliff, 145 U.S. 156 in Sperry v. Florida, when it said that drafting the specification and claims of a patent application “constitute one of the most difficult legal instruments to draw with accuracy.” To that end, writing a patent application requires considerable attention, care, predictive abilities, creative thinking, and hard work. There are so many substantive areas in which a mistake can be made. Beyond that, however, there are even more technical opportunities for a mistake.

I received a notice of non-compliant response recently. This is a notice I received for the first time, and for a very minor oversight. In this case, the notice just pointed out a very small, non-prejudicial, technical error in a response, but one which had to be resolved before the Examiner would consider the response. When a patent application is initially submitted, it presents a list of claims at the end. The claims are numbered, and the numbering helps the Patent Office identify and track claims as they change. Each time you submit a response that amends the claims, the claims must designate their status as original, previously presented, currently amended, new, etc. Failure to designate the status in an amendment will trigger a non-compliant response notice. Fairly easy to get over, but the correction has to be made by a deadline or it will cause the application to be abandon. This is a small mistake I’ll likely never make it again – we made it because we were repeating the original claims and pointing out to the Examiner that she had inappropriately cut and pasted a rejection from an old case with different claims. However, for a pro se application, this could cause a lot of stress and possibly lead to the abandonment of the application if not handled correctly.

I should note that a notice of non-compliant response can be issued for a variety of reasons, not just the one described above. This article is meant to illustrate but one example of such a notice and not to be advice on how to handle any notice. If you receive a notice like this, I strongly recommend you contact a competent patent attorney in your area that you can meet face to face.



Patent Stakeholder Training on Examination Practice and Procedure

The Patent Office has begun offering a Stakeholder Training on Examination Practice and Procedure (“STEPP”), part of its Enhanced Patent Quality Initiative in which it improves quality and communication between the Patent Office and the public. The Patent Office states: “Training delivered through STEPP is designed to provide external stakeholders with a better understanding of how and why an examiner makes decisions while examining a patent application. In person courses are led by USPTO trainers and based on material developed for training employees of the USPTO.”

The STEPP program is intended to increase the transparency by educating the public about examination practice and procedure, provide perspective to attorneys and applicants about how an examiner approaches an application and an office action, and aiding patent attorneys in compact prosecution by showing them how an application is examined under the MPEP.

This program is a good program. I recently attended a presentation by the Silicon Valley Patent Office which serves the west coast on Patent Office operations. It was interesting and helpful, but some of the audience tried to use it as a personal gripe fest about examiners they had faced. That same waste is a concern I have with the program. More importantly, however, one issue with this program is that apparently is only available if you are at the Patent Office, or perhaps one of the regional offices. Expansion to WebEx or other online training should be a goal.



Late Payment Surcharges in Patent Application Filings

Through what feels like a clever loophole, but really is just common sense, there is a way to file a patent application one day and pay the filing, exam, and search fees another day without incurring any surcharges.

Typically, if you pay those filing fees after filing, you’ll have to pay a surcharge of $140 (for large entities as of this writing). Best practices therefore dictate that you pay the filing fees contemporaneously with an initial filing of a patent application. I’ve never been in a situation where I didn’t want to pay the filing fees immediately after filing the application, though I can envision a few very particular situations in which you might strategically do this.

Intentional non-payment aside, sometimes you may not be able to pay the filing fees. The Patent Office’s payment system – Revenue Accounting and Management, or RAM – sometimes goes down for maintenance, and sometimes for unexpected reasons. Extreme caretakers would check to see if RAM was up before lodging an application. However, because you pay for a filing after making the filing, there would still be the possibility that RAM goes down after you check, while you’re filing, and before you’ve paid. In that situation, you’ll likely incur the surcharge. An exception is if you are filing late at night. If you’ve lodged the application in the wee hours in Alexandria (as one on the East Coast can easily do at 9 or 10pm), you can go to sleep, wake up, and pay the fees the next day. Because your application will receive a filing date post-midnight, the filing fees can still be paid on the filing date, even though they weren’t filed contemporaneously.

I called the Patent Office to confirm this, and they agreed. One representative in the Revenue Accounting Department did note, however, that the payment would still need to be received by 1:45pm EST lest it be timestamped the next day. I couldn’t get her to explain why, so if you adopt a strategy as above – which I really can’t recommend – get that payment in early after waking up.