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Category: Patent

Patent Office Automated Interview Request

The Patent Office has started a new program called “AIR,” which stands for Automated Interview Request. The program allows patent attorneys, agents, and applicants to file online requests for interviews with Examiners in their cases. Examiners can sometimes be difficult to get hold of, as many of them work non-standard schedules or practice “hoteling,” in which they work from home. They rarely answer the phone, though most are very good about returning calls. The AIR program is designed to improve the communication between patent attorneys and examiners in scheduling interviews. One issue I see with the AIR form is that it does not allow the applicant or applicant’s representative to request an interview with the Examiner and his or her supervisor, which is often desired. For this, I presume one should still call to request the interview.

By submitting this type of interview request, the pending patent application will be in compliance with the written authorization requirement for Internet communication in accordance with MPEP §502.03. This authorization will be in effect until the Applicant provides a written withdrawal of authorization to the Examiner of record.

Certificates of Correction

An issued patent should be reviewed upon receipt for errors. Occasionally, an error will crop up, either because of a minor clerical or typographical error, or because of something the Patent and Trademark Office processed incorrectly. These errors can be corrected if caught soon after issuance of the patent.

If the mistake was the applicant’s fault but occurred in good faith, then a certificate of correction may be requested. A fee must be paid along with this correction request. Once the certificate of correction issues, the certificate and patent together will operate in law as if the patent had originally been issued with the correction.

Two requirements must be met for a certificate of correction to issue. First, the error must be minor: it must be clerical or typographical or equally small in nature. Second, the correction cannot include new matter or anything that would require reexamination. Therefore, substantial changes to the claims, or changes beyond minor clerical or typographical changes, are not proper for such a request. Anything that would affect the scope or meaning of the patent would require reexamination. If a certificate of correction is the not the proper vehicle for the change, then you must try to implement the change through a reissue application.

Direct and Indirect Patent Infringement – Evolving Standards under Akamai v. Limelight

Though I’m not a litigator, infringement concerns are a primary concern for many of my clients. Those concerns evolve with time. Despite decades of case law, the courts are still developing some of the fundamentals of patent infringement. There are two basic types of infringement: direct and indirect (which is further subdivided as contributory infringement and induced infringement. Direct infringement is – generally – infringement that you yourself participate in: you sell something infringing, you make something infringing, you use something infringing, etc. Indirect infringement, on the other hand, occurs when you contribute to another’s infringement, make another’s infringement possible, or benefit from another’s infringement.

Yesterday the Federal Circuit issued an opinion regarding direct infringement after the Supreme Court gave its opinion and told the Federal Circuit to take another look. The case involves the question of whether, when a patent is directed to a method comprising a number of steps, a single party can infringe that patent even if it did not practice every single one of the steps. In another way, the case asked whether a defendant may be liable for inducing patent infringement when no other party has actually directly infringed the patent. As may seem immediately obvious, the Supreme Court said no; induced infringement will not lie unless there is at least a direct infringer first.

The Federal Circuit has now expanded the definition of infringement to include situations where all of the steps, while not necessarily being performed by the defendant, may still be attributed to the defendant. Now, liability can be found where the defendant “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” This broadens the scope of liability beyond the earlier rule which required that the defendant either perform all the steps, use an agent to perform some or all of the steps, or contract with another or enter a joint venture to perform some or all of the steps. This new rule adopts the Supreme Court’s analysis of induced infringement under copyright law, which was used in the seminal case of MGM v. Grokster on internet-based peer-to-peer music file sharing (which happens to have been the subject of this author’s Law Review article).

The ruling indicates that infringement can now be found where a party performs some of the steps of the method claim even if the other steps are performed by another party.

After Final Consideration Pilot 2.0 Program

After a final Office Action has been issued, prosecution of a patent application is considered to be closed. This means that the Examiner will not automatically consider or enter further arguments or amendments. Arguments and amendments can nevertheless be presented, however, if they do not place the application in condition for allowance or would require non-trivial amounts of searching by the Examiner, the Examiner will generally refuse to enter the response. A Request for Continued Examination is then typically used to obtain further examination of the case.

Since 2012, the Patent Office has operated an After Final Consideration Pilot Program (“AFCP”) which allows applicants to obtain continued examination of a case without having to pay for an RCE. The AFCP allows Examiners to take additional time to review cases, and provides for additional interviews for the purpose of moving an application toward allowance.

There is no fee for requesting the AFCP itself, but there may be fees involved if a response is filed beyond the shortened statutory period. AFCPs can only be filed in original, continuation, and divisional patent applications, or for international applications in the national stage, and only after a final rejection has been issued. Argument alone cannot be presented; there must be an amendment to least one of the independent claims, and the applicant or its attorney must be available for interviews with the Examiner regarding the response filed with the AFCP.

The AFCP can provide a helpful means of compacting and expediting examination of a patent application toward issuance without the costs and delays associated with a Request for Continued Examination.

Patent Drawing Requirements

Patent drawings have changed over time. Patent drawings have gradually shifted from being hand-drawn masterpieces to machine-drawn printouts. Hand drawings are a lost art that we probably will never recapture. Many of the formal requirements associated with patent drawings have also changed over time. The Patent Office is much more lax in its acceptance of patent drawings. Nevertheless, there are many requirements which it still reviews drawings for and will occasionally reject just after filing, or which an Examiner will object to later on. This article describes some, but not all, of the things the Patent Office reviews when it comes to drawings, as well as some best practices for drawings.

  • Orientation of the page – the page is supposed to be oriented with sheet numbering at the top, or if the sheet is turned so that it is in landscape, with the sheet numbering at the right. I don’t believe the Office is strict with this requirement, but it is supposed to be a requirement.
  • Orientation of the numbers – the sheet number is the only number, letter, or other indicia which can have a different orientation than the others. If the sheet is to be read in portrait, then all reference characters should be oriented in that direction. If the sheet is to be read in landscape, then all reference characters should be oriented to facilitate reading in that direction, other than the sheet number. There should never be inconsistent orientation among the reference characters.
  • Words – other than reference characters, there should be no other marks, indicia, or words on a sheet Legends can be used but are subject to the Office’s final approval.
  • Black and white drawings are normally used and are preferred. Only in rare cases can color drawings be used. Photographs are almost never permitted. The exception is when color drawings or photographs are the “only practicable medium for illustrating the claimed invention.”
  • Greyscale drawings can really destroy the quality of your patent drawings once uploaded to the Patent Office. If you scan drawings in as black and white only, and be sure they are not greyscale, do so. The Patent Office pixelates greyscale drawings in a way that can often lead to a drawings rejection a year or two down the road.
  • Margins – each sheet must include a top margin of at least 1 inch, a left side margin of at least 1 inch, a right side margin of at least 5/8 inch, and a bottom margin of at least 3/8 inch.
  • Character of lines, numbers, and letters. 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.
  • English reference characters should be used except where other languages are commonly used (such as Greek alphabet letters to indicate angles)
  • Lead lines. Lead lines are those lines between the reference characters and the elements or structures. They should be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.

I have rarely or never seen the Patent Office enforce these rules. Don’t rely on that, though – they may change their policy any time, or they may decide to pick on your application!

  • The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points (i.e., cross-hairs) printed on two cater-corner margin corners.
  • Orientation of multiple figures on one page. All views of the drawing must be grouped together and arranged on the sheets without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract.
  • Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.

What is an Ex Parte Quayle Action?

Once all claims in a patent application have been allowed, the Examiner can close prosecution of the application on the merits, even though there may be outstanding formal objections which preclude fully closing the prosecution. The Examiner does this by issuing an Ex Parte Quayle Action.

An Ex Parte Quayle Action can be favorable, because it means you are highly likely to obtain a patent. That, of course, depends on whether you accept the scope of the allowed claims. You can attempt to respond to the action with an amendment. This will be a choice driven by your plans for the patent and the claims allowed. If claims were withdrawn, you may choose to try to bring those into the application. Amendments going to the merits of the case are then treated similarly to those made in response to a final rejection, in which the Examiner can either consider the amendments or refuse to enter them.

Frequently, though, an applicant will accept and correct the formal issues raised in the Ex Parte Quayle Action so that the patent application can issue as a patent soon.

Importance of Patent Assignment Dating Practices

The date on which an assignment of an inventor’s patent rights is made can have a significant effect on downstream prosecution and success of the application(s) directed to the invention.

During prosecution, the Examiner will almost always cite prior art against the application. This prior art can come from nearly anywhere. However, commonly-owned prior art can be avoided if it was commonly-owned before the filing date of an application. Thus, the relation of the assignment date and the effective filing date can be a critical factor in the abandonment or allowance of an application.

35 U.S.C. 102(b)(2)(C) states that a disclosure shall not be prior art against a patent if the “subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.” This rule excepts “commonly owned” prior art from being used against a person or company. Common ownership can come about in a number of ways. It can be the result of an explicit assignment agreement, an obligation to assign (such as might arise either explicitly or implicitly in the context of employment), or because of a joint research agreement.

Establishing common ownership can be an effective way to argue against both novelty rejections under 35 U.S.C. 102 and obviousness rejections under 35 U.S.C. 103, because 35 U.S.C. 102(a) defines what is prior art both for purposes of novelty under 35 U.S.C. 102 as well as for purposes of obviousness under 35 U.S.C. 103. If a document qualifies as prior art under AIA 35 U.S.C. 102(a)(1) or (a)(2), and is not subject to an exception under AIA 35 U.S.C. 102(b), it may be applied for what it describes or teaches to those skilled in the art in a rejection under AIA 35 U.S.C. 103. Conversely, if a document is excluded from consideration as prior art under 35 U.S.C. 102(b)(2)(C), it cannot be considered prior art for any novelty or nonobviousness purposes. Nonetheless, the disclosure might still be relied on by the Examiner to make a double-patenting rejection.

Common ownership must exist at the time the application under prosecution was effectively filed. I’ve talked previously about what an effective filing date is, but for short-hand purposes here, it is the earliest date on which a patent application was filed which disclosed the subject matter claimed in the current application. So, if the current patent application stems from a provisional application, and the provisional disclosed the subject matter now claimed, the common ownership must have existed at the time the provisional was filed to be able to invalidate that disclosure as prior art. Therefore, prior to filing, an assignment should be signed and dated (and preferably notarized). As a backup, having employment agreements that create an obligation to assign can help establish ownership should an assignment be forgotten.

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.