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Category: Patent

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.



Patent Office Power Outage Shutdown

The Patent Office went down hard on December 22, 2015. A subdued Facebook post initially said: “We are currently experiencing some technical difficulties with some of our online systems, but we are hard at work and intent on having services back on line as soon as possible. Thank you for your patience, and stay tuned for details.” However, very quickly it became clear that the incident was major – catastrophic really. For some time, most (if not all) of the pages at upsto.gov were displaying 404 messages, including even the blog directed toward posting updates about the status of the electronic filing systems.

Apparently, the power supply lines at the USPTO incurred a “malfunction,” causing significant damage to two power filtration systems which otherwise provide power in a regulated form to the USPTO. These filtration systems are huge and could not be replaced quickly or easily.

The outage took out all of trademark and patent filing, searching, payment, and examination capabilities, effectively shutting down nearly everything the Patent and Trademark Office, and patent and trademark lawyers, do. For some of us, it was a nice week-long break when many of are taking holiday. For others, however, it was a stressful nightmare of re-learning Priority Mail Express (formerly Express Mail) rules and trying to get the Post Office – sometimes through horrible weather – to make filing deadlines. Filing by mail was still an option – but very few, if any, practitioners file by paper anymore, and I would guess that most who don’t file by paper have no clue how to file by mail. Another good reason to file early! The Office eventually did declare a few of the down days as federal holidays, purportedly giving applicants until the next (operational) business day to file. However, I cautioned colleagues not observe this PTO-granted grace period, as it was not clear that the PTO had the statutory authority to declare a holiday in this manner to toll both domestic and foreign deadlines. Better to mail it in that to find out years from now in litigation that the PTO “holiday” counted for nothing.

The systems are now up, but I have been warning clients this week to get me everything early because I believe the filing system is extremely fragile right now, given that it will probably be more heavily loaded by backed-up filings from the past week.

While the explanation that the Patent Office providfed is not entirely clear – and few details beyond this have been revealed – I am sure the Office did work tirelessly to get the systems back up. And now they are. What we can learn from this how fragile the filing system is. Yes, it apparently took a major power surge to destroy the electronic systems, but when it did, there was no backup. Or, there was a backup, but the backup was tied to a backbone common to the main system – which really isn’t a backup at all.

Practitioners have complained for years that the electronic filing system is antiquated, but the Office has failed to update it. Perhaps this will instigate a technology change at the office that represents innovation leadership in the world.



Continuing Patent Applications in light of Allowed and Rejected Claims

I’ve written about continuing applications before. I have seen lately in a few cases an unfortunate situation that the Patent Office places applicants. It fulfills the “bird in hand is worth two in the bush” line, and I have begun to advise clients slightly differently because of it.

The situation arises when a case has received an indication that some of the claims are allowable while others are rejected. It can be either in a first office action or a second, typically final office action. It is always great to see allowed claims, but clients typically also want to fight for the rejected claims, too. This is, of course, natural and rational; money was spent on the application, we try to get the broadest claims possible, and fighting for rejected claims gives you a chance at those broader claims.

However, responding to an office action rejection when some of the claims are allowed can jeopardize those allowed claims. When I first began working, I felt fairly comfortable that an indication of allowability meant the allowed claims were fairly safe. Now, though, presenting a response – especially when the response is in the form of an amendment – can cause the Examiner to withdraw the allowance of those claims.

This unfortunate consequence unfolds when the Examiner conducts a new search. If you have present amendments to the rejected claims, the Examiner will (almost) always conduct a new search to see if the newly-introduced elements are present in other prior art. If the Examiner does find other prior art, and thinks that the prior art is relevant to, and destroys the patentability of, the allowed claims, the allowance on those claims will be withdrawn.

You really cannot blame Examiners for doing this. If they find art that is relevant to any of the claims, they are obliged to enter it into the record. For whatever reason however – perhaps there has been new training on it at the Patent Office – I am seeing it more frequently than I used to. That is not to say that I’ve been inundated with such situations, but I have had enough within the last year or year-and-a-half that I have noticed and made a practice change because of it.

Now, I advise clients of this risk, and let them know that it may be “safer” to proceed with cancelling the rejected claims, issuing the allowed claims, and pursuing the rejected claims with a continuing application. I do not always advise this, however; whether I do or do not depends on a wide variety of factors including the client, the examiner, my experience with both, the nature of the prior art, the reputation of the art unit, the strength of the claims, the difficulty of the prosecution, and other factors. For this reason, I strongly recommend against adopting one strategy or another every time, and I discourage any unrepresented applicant from adopting this strategy without first speaking with an experienced patent attorney. Canceling claims, issuing claims, and filing continuing applications involves a lot of experience, strategy, and know how, and missteps here can cost you valuable protection that may not be recoverable.



Patent Appeals

An appeal at the Patent Office is an administrative process providing for substantive review of some action taken by the patent examiner in a patent application. Where a patent examiner has twice rejected a patent application, such as for novelty or obviousness issues, an appeal can be filed to have the case reviewed by the Patent Trial and Appeal Board. PTAB appeals should not be lightly entered, and the below discussion only very quickly touches on the major phases of an appeal. Please consult an experienced patent attorney if you have particular questions about the process or about a pending patent application.

Notice of Appeal
A notice of appeal must first be filed to institute an appeal. This involves filing the Notice of Appeal paperwork and paying the appeal fee, which at the time of this writing was $400.00 for small entities. The Notice of Appeal filing tolls the period for responding to the last office action. Instead, it initiates a 2 month period for filing the Appeal Brief.

Appeal Brief
The Appeal Brief sets forth the Appellant’s argument. It must present arguments responsive to every ground of rejection stated by the examiner in the Office action from which the appeal has been taken. If any ground of rejection is not addressed, argument or challenge to that ground is waived. An appeal brief should be filed within 2 months of the Notice of Appeal. However, 1-month extensions can be obtained through payment of a surcharge.

Examiner’s Answer
After the Appeal Brief is filed, the Examiner may respond with a formal Answer. The Answer is simply the Examiner’s response supporting his or her previous rejections and addressing the Appellant’s argument. The Answer is deemed to include all the rejections presented in the Office Action from which the Appellant has appealed, and the Answer may also present new grounds for rejection. If the Answer presents a new ground of rejection, the Appellant is given two months to either reopen prosecution or maintain the appeal and present a Reply Brief that addresses the new grounds. The Examiner, together with a Supervisory Patent Examiner and another experienced examiner, will then conduct an appeal conference to discuss the state of the appeal.

Oral Hearing
Oral argument can be requested. It should be requested only in those circumstances in which the Appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.

Board Decision
After quite some time (several years, often) the Board will consider the appeal, the briefs submitted, the facts, and the law, and establish a decision. The decision will generally either affirm, reverse, partially affirm, or remand the decision of the Examiner. After decision, jurisdiction of the application returns to the Examiner for further review consistent with the decision of the Board. The Appellant may also request a rehearing within 2 months of the decision to raise new arguments in light of new law or new rejections.



Reissue Patents

A patent can be reissued under a limited patent office 3set of circumstances. Generally, if an error is discovered which renders the patent wholly or partly inoperative, reissue may be the vehicle to correct the error. The Patent Office will reissue the patent to correct the error. You must pay a fee to reissue an application, and you must agree to surrender the original patent being corrected; you cannot have two concurrent patents on the same invention. The term of the reissued patent is limited by the unexpired term of the original patent.

New matter cannot be introduced into a reissue, but the scope of the claims can be enlarged to include broader subject matter when filed within two years of the grant of the patent. This is a common reason to file a reissue. Other reasons include correcting inventorship or adding narrower claims that should have been incorporated into the original patent. Some things, however, cannot be cured with a reissue. For instance, if a divisional was not filed during the pendency of the original application (after a restriction requirement was made), a reissue cannot be used to file the claims that would have been in the divisional application. Somewhat similarly, a reissue cannot be used to “recapture” claimed subject matter which was canceled from the original application, because such subject matter is considered to have been surrendered to the public.