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Tag: patent

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.


patent kind code

Patent Document Kind Codes

Each patent is published with a patent number upon issuance.  The patent number is frequently followed with a kind code, which conveys information about the patent or its prosecution history.  Other patent documents include kind codes as well.  In 2001, the USPTO began including kind codes that aligned with the World Intellectual Property Organization’s standards.
patent kind code
The US uses many kind codes to designate different information on a patent document.  The list below shows a few of the more frequently-used codes.

  • A1 – Patent Application Publication
  • A2 – Republished Patent Application Publication
  • B1 – Patent (having no pre-grant publication)
  • B2 – Patent (having a pre-grant publication)
  • C1, C2, C3… – Reexamination Certificate
  • E – Reissue Patent
  • P1, P2, P3 – Plant Patent
  • P4, P – Plant Patent Application Publication
  • S – Design Patent

As you can see, the letter indicates the type or substance of the document, and the trailing number, if any, informs the history.  A 1 frequently indicates that this publication is the first publication in the prosecution history, while a 2 means that at some previous point, the application was published.  Now what drives me crazy about this list is that a design patent is identified with an “S.”  I imagine this a result of a translation of the word “design” somewhere at WIPO, but it does seem that a design patent should carry a “D” rather than an “S.”  But, then again, design patents are unique in that the patent number carries a leading “D.”  Which makes inclusion of the S a bit redundant.

Obviousness Standards under Joint Inventorship

How is obviousness of a patent claim considered when several individuals contribute to the claimed subject matter?  Much analysis in patent law focuses on a person having ordinary skill in the art, or a “PHOSITA.”  The PHOSITA is the touchstone for many patentability questions, such as whether an invention is obvious in light of prior art.  US patent law has, to my knowledge, always constructed PHOSITA considerations around a single person.

Dennis Crouch writes in his latest Patently-O article that a UK court has just applied a “THOSITA” analysis to obviousness – would the claimed invention be obvious from the standpoint of a “skilled team?”  This change raises the question in the US whether the PHOSITA analysis applies equally to a team as it does to a person, or whether a new framework for team-invented patent material is needed.  After all, the number of patents invented by teams of people, rather than sole inventors, is steadily rising.  Joint inventorship is very common, especially in the corporate assignee context.

If a THOSITA standard were adopted, what would its effect be on obviousness?  It seems that it would inevitably raise the obviousness threshold on subject matter contributed to by more than one person beyond that which is applied to single inventor subject matter. It may not even be necessary, though.  Crouch posits that US patent law already implicitly includes team-based inventive activity by its inclusive construct of the word “person.”  Example: 17 USC 102 states that “A person shall be entitled to a patent unless…” – teams  of people are granted patents, and so “person” is meant to include “team.”

Inventor’s Eye Features Prosthetic Patents

Inventor’s Eye, the Patent Office’s monthly online publication, features the intersection of technology and sport, a nexus of particular interest to me.  It frames the conversation in light of the recently-completed London Olympic and Paralympic Games, in both of which South African runner Oscar Pistorius was prominent.  The articles makes interesting points regarding the role of adaptive technology in removing the effects of disability and highlighting the beauty of motion.  Read more here.

Patentable Subject Matter – Mayo v. Prometheus

An invention must be of the appropriate subject matter to be eligible for a patent.  Appropriate subject matter includes, by statutory definition, a machine, article of manufacture, composition of matter, or process.  For most inventions, the determination regarding whether the invention is patent eligible is generally an easy one.  However, in some areas of technology, this questions becomes extremely difficult.

The Supreme Court is currently tackling a case whose core issue is the patentability of a process of applying a drug containing an active ingredient and subsequently measuring that ingredient’s levels in the patient.  Patentable subject matter is an issue the Supreme Court does not often take up, one reason simply being that it is a difficult issue.  Oral argument was yesterday, and Justice Breyer, at least, revealed some frustration around the issue (via Patently-O):

JUSTICE BREYER: Suppose I discover that if … someone takes aspirin … for a headache and, you know, I see an amazing thing: if you look at a person’s little finger, and you notice the color [indicates that] you need a little more, unless it’s a different color, you need a little less. Now, I’ve discovered a law of nature and I may have spent millions on that. And I can’t patent that law of nature, but I say: I didn’t; I said apply it. I said: Look at his little finger.


JUSTICE BREYER: Okay? Is that a good patent or isn’t it?

MR. SHAPIRO: No … Well, because you — you’ve added to a law of nature [to] just a simple observation of the man’s little finger.