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Category: Patent

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.

Petitions to Make Special Based on Age

Patent applications generally take quite a long time to prosecute. From the day they are filed, they can easily take two years before issuance, and often take much longer. Much of this time is usually consumed by initial waiting – the Patent Office assigns an examiner to the case, and you simply wait for the examiner to work through all the cases in front of yours. Sometimes this takes a year to two years. I’ve had a few cases that have received initial examination in as little as six months, but it is by far the exception to the rule.

There are ways to expedite examination of an application. When one of the inventors is older, a patent application can be expedited through what is known as a petition to make special based on age. As of this writing, the inventor must be at least 65 years old. A statement must also be made swearing that the inventor is at least 65 years. Only one of the inventors need be 65 or older – the fact that the other inventors may be younger does not destroy the opportunity.

When such a petition is submitted in an application, especially at the initial filing, it can significantly decrease the time to examination. I’ve had some cases that have been examined in as little as three months.   Just this morning, I received a notice of allowance in a case that was filed merely four months ago with a petition to make special based on age.

Getting Patent Declarations Signed

A declaration is a required part of a patent application. It states a number of things about the inventor and the invention. Before the American Invents Act, a declaration stated that the inventor had authorized the application, that he/she was the original inventor, that he understood not make false statements, that he understood the duty to disclose information material to patentability, and that he had read and reviewed the application filed. After the AIA, only the first three of these have been mandated, however, there are several reasons for still including the statements despite the lessened requirement.

Generally, an application is initially filed with the declarations. However, this is not always possible. In some cases, some inventors may not be willing to sign – perhaps they were a contracted engineer who designed an element and never got paid, and now doesn’t want to help with the patent application. Or they have moved away and are no longer in contact. Or they may have even died. Whatever the reason, the inventor may not be able to sign the declaration. What can be done?

When the inventor is unavailable or refuses to sign, you can sign on their behalf with a Substitute Statement. There are a whole host of rules qualifying this and specifying what has to be done, however. This article won’t describe them in detail, because only a qualified attorney should submit a document like that, but I will describe some basic guidelines. The unavailability threshold is quite high. If the inventor is out of town or on vacation in a foreign country, the standard is not met. And an inventor in the hospital doesn’t count, even if he is in a coma. Facts have to be presented when you sign for the other inventor, and the Patent Office will consider whether those facts are sufficient. If not, the declaration will not be accepted.

If an inventor can‘t be reached right away, you can always file the declaration late. In fact, the declaration just has to be filed before the application is allowed. However, you will have to pay a surcharge for the late-filed declaration. Examination will not begin until you pay this surcharge.

Trademarks in Patent Claims

Can I use a trademark in a patent claim?

The quick answer is yes, but the follow-up question is why? Is there a specific reason that a particular type of product needs to be named – can the generic name for the product itself not be identified? Patent examination rules do permit the use a trade name or a registered trademark in the claim of a patent, however, it will likely spark a rejection.

First, it is important that, if a trademark is used in a claim, it must be used correctly. As is well-established under trademark law, a trademark should be used as an adjective, not a noun; it describes and identifies the source of a product, it does not describe and identify the product itself. Therefore, using a trademark in isolation will almost certainly solicit a rejection for failing to particularly point out and distinctly claim the inventive subject matter.

So, if a trademark has to be used, it should be used properly. Nonetheless, if a trademark does appear in a claim, the Examiner will probably still question why it is necessary, and may issue a rejection to raise that question. If you don’t address that question successfully, the application will never grant as a patent.