To the Blogosphere, And Beyond

Posted on October 28, 2007 by Brian Wm. Higgins

New PTO Rules

Patent practitioners and others are keenly aware of the looming effective date for the new "claims and continuation" practice rules (November 1st, in case you forgot). Here are what people are saying about the pending rules.

    • Peter Weissman at Blank Rome suggests that "[i]t may be prudent to describe patentably “distinct” subject matter in separate applications rather than combining common subject matter in a single application. This could support an argument that the claims are truly patentably distinct"

    • Dr. Charles F. Louis, Vice Chancellor for Research, University of California, Riverside said in testimony before the Senate Judiciary Committe "any rules promulgated by the U.S. Patent and Trademark Office that make it more burdensome and expensive for universities to obtain patents on their inventions, such as the new claims and continuation rules, would be detrimental to university technology transfer." (Source: IPWatchdog)

    • Hal Wegman at Foley notes that "[i]f cloture is voted by the Senate on patent reform and ultimately patent reform includes the House-passed version on delegation of rulemaking authority, whatever happens in the near term on Continuation Rules will be superseded by the new law. Yet, the great bulk of the focus of the patent community is on the sideshow in Alexandria." (Source: PatentHawk)

    • That "sideshow" includes GlaxoSmithKline's Motion for Temporary Restraining Order and Preliminary Injunction to halt implementation of the new PTO rules. A hearing on GSK's motion is set for October 31, 2007.

Favorable Patent Lawsuit Forums

Move over Eastern District of Texas, more and more other districts are being eyed as the place to file patent lawsuits, especially since patent reform will make it harder to go forum shopping. Take the Western District of Wisconsin, for example, mention of which continues to be linked with terms like "speedy justice."  The Wisconsin court boasts a filing-to-trial time of 11.3 months, which compares to a pokey 12 months at the Eastern District of Virginia (the average, in case you're wondering, is about 22 months, so says Dewey Ballentine co-authors last year in an IPToday article).

Patent Reform

It's no secret that the bio industry is against patent reform. At last week's 2007 Mid-Atlantic Bio Conference, held in Bethesda, MD, a representative from the Biotechnology Industry Organization (BIO) made the organization's views plainly clear in a presentation about patent reform legislation. Saying that bio was being thrown in front of the bus to save the IT industry, BIO urged member organizations to call their Senators to fight passage of the legislation.

Tired of Trademark Oppositions? Call Your Senator

In an opinion issued last week relating to a lawsuit against the PTO, the Fourth Circuit Court of Appeals overturned an Eastern District of Virginia decision, effectively sanctioning the practice used by Montana Congressmen of using the political appropriations process to halt the registration of the trademark THE LAST BEST PLACE, which was being sought by a Nevada company. Hopefully, I'll have more on this later (here's a preview: "Senate approves ‘Last Best' measure").

 

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New Patent Application Rules Affect Transition to New System

Posted on October 16, 2007 by Brian Wm. Higgins

Summary:  The U.S. Patent Office issues guidance and revisions to its "claims and continuations" practice rules.


  • Revised rule permits filing "one more" continuing application on or after Nov. 1, 2007, without a petition or showing, in certain circumstances.

  • For certain CIP applications, depending upon filing date and issuance or not of a first office action on the merits (FAOM), the requirement of 37 C.F.R. 1.78(d)(3) than applicant identify the claim or claims in the CIP for which the subject matter is disclosed in the manner provided by 35 U.S.C. § 112, first paragraph, in the prior-filed application is either waived or postponed until Feb. 1, 2008 (a three-month compliance deadline extension).

  • Disclosing the identify of other pending or patented applications is not required for certain applications filed before Nov. 1, 2007, depending on the filing dates and priority filing dates for the other applications. Disclosure is not required for applications filed on or after Nov. 1, 2007, in limited enumerated circumstances.

     The complete requirements are found in the guidance document "Clarification of the Transitional Provisional Relating to Continuing Applications and Applications Containing Patentably Indistrinct Claims," which is available here.

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U.S. Patent Office Publishes Examination Guidelines for Determining Obviousness of Inventions in Wake of KSR

Posted on October 10, 2007 by Brian Wm. Higgins

Summary:  The U.S. Patent & Trademark Office today issued a press release concerning long-awaited Examination Guidelines to help Examiners make appropriate decisions regarding the obviousness of claimed inventions in light of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc.


     Mention "KSR" and "obviousness" to patent practitioners and you'll get a wide range of responses, with some claiming the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. __, 82 USPQ2d 1385 (2007) will lead to fewer inventions being patented, and others predicting the opinion will eventually jeopardize the validity of many previously-issued patents.

     One thing most practitioners will agree upon, however, is that uniform and concrete guidance is needed from the PTO (and eventually the courts) to remove the guesswork out of predicting how the PTO and courts will deal with inventions under the KSR standard. After all, when it can cost upwards of $50,000 to $100,000 to prosecute a patent application (U.S. and internationally), inventors and their employers are understandably wary about making the investment in today's uncertain environment. 

     The PTO took steps today to alleviate some of that concern. Today, the PTO issued its long-awaited PTO Examination Guidelines concerning KSR, which had been tied up in the Office of Management and Budget (OMB) through much of the summer and early fall (see related post here). Below is a summary of the Guidelines.

   As stated in the PTO's press release:

“The Guidelines stress that the familiar factual inquiries announced by the Supreme Court in its much earlier decision, Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), remain the basis for every decision regarding obviousness,” noted Commissioner for Patents John Doll. “That is, patent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.”

The Guidelines also note that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground. The reasoning may still include the established Court of Appeals for the Federal Circuit standard that a claimed invention may be obvious if the examiner identifies a prior art teaching, suggestion, or motivation (TSM) to make it. However, in keeping with the KSR decision, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious.

To help patent examiners make obviousness rejections that are supported by appropriate facts and reasoning, the Guidelines identify a number of rationales suggested by the Supreme Court in the KSR decision. For each rationale, the Guidelines explain the underlying factual findings, and provide guidance about how to reason from the facts to the legal conclusion of obviousness. The Guidelines emphasize, however, that the identified rationales are only examples, and that any explanation of facts and reasoning based on the Graham inquiries may be used to support a rejection for obviousness."

     Below is a list of the "rationale" mentioned above, each of which is explained in detail in the Guidelines:

  • Combining prior art elements according to known methods to yield predictable results; 


  • Simple substitution of one known element for another to obtain predictable results;


  • Use of known technique to improve similar devices (methods, or products) in the same way;


  • Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;


  • ‘‘Obvious to try’’—choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;


  • Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;

  • Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

     The Guidelines, as noted above, emphasizes that the so-called "teaching, suggestion, and motivation" test (the last bullet) is available to Examiners, but that Examiners shouldn't rely on that test to the exclusion of one or more of the other enumerated rationale for rejecting claims set forth in KSR. That is, if the TSM test comes up negative (i.e., no prima facie case of obviousness), the Examiner shouldn't stop there because one of the other rationale may suggest that the invention is obvious despite the lack of a teaching, suggestion, or motivation to modify or combine prior art.

     More on the Guidelines latter, but like the rest of you, I need to read through the Notice and sort through the document to see how it will impact my practice and the clients I work with. Between these Guidelines and the new "claims and continuation" rules effective November 1, 2007, there certainly is a lot to digest.
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Patent Reform Act of 2007 - Update (Part 7)

Posted on September 23, 2007 by Brian Wm. Higgins

Summary: The House version of the Patent Reform Act of 2007 would bar submission of search reports prepared by non-U.S. citizens.


     H.R.1908, the Patent Reform Act of 2007, was introduced in the House of Representatives on April 18, 2007. As proposed, the Bill did not include Section 12, entitled "Additional Information," which made its way into the legislation when the House debated, and eventually passed, H.R.1908 on September 7, 2007. The table below, left column (after the jump), shows the original language of the provision, which would add a new Sec. 123 to Title 35 U.S.C. and grant the PTO authority to require prior art search reports. House Report 110-314 describes the measure as follows:

"The USPTO has discussed the need for some sort of examination support document [ESD] or applicant quality submission to improve the examination process. It may include a thorough search of the art in the field of the invention and in related fields in which one skilled in the art pertaining to the invention would expect to find information applicable to the invention. It is also expected that the information discovered by the search that is material to the patentability of the claimed invention be disclosed to the USPTO along with an analysis of how the information relates to the claimed invention and how the claimed invention is distinguished over the prior art information."

 

 

     During the House debate over H.R.1908, Section 12 was apparently amended, as shown in the table above, right column, to include a new provision that would limit prior art searches requested by the PTO to those conducted by U.S. citizens.

     Ostensibly, Section 12 could curtail the practice of outsourcing prior art search work to India, China, and other countries, a practice that seems to be gaining acceptance by U.S. law firms who are increasingly feeling pressure to reduce costs associated with patent legal services. However, it is not clear whether Section 12, if enacted, would be relied upon by the PTO to require that prior art searches, prepared in accordance with the PTO's new "Claims and Continuations Practice - Final Rule," effective November 1, 2007, be done by U.S. citizens. Currently, the PTO's "Guidelines For Examination Support Documents Under 37 C.F.R. § 1.265" does not mandate that prior art searches, conducted as part of ESD submissions, be performed only by U.S. citizens.
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Countdown to the New PTO Patent Rules - Part 2 of 2

Posted on September 18, 2007 by Brian Wm. Higgins

     Yesterday, Part 1 of this post identified issues of potential concern regarding the impacts of the new U.S. Patent & Trademark Office (PTO) rules on the number of continuation, continuation-in-part (CIP), and Request for Continued Examination (RCE) applications being prosecuted at the PTO for an invention. Below are some suggestions for dealing with the rule's limitations on the number of claims permitted in those patent applications, as suggested by Peter Weissman, a Partner at Blank Rome LLP.  In particular, patent applicants and their representatives should:

  • Carefully consider all claims in an application to ensure they add benefit to the application;

  • Review pending unexamined applications that exceed the 5/25 number of claims limitation in preparation to limit the number of claims or conduct a search prior to receiving a notification from the PTO; 

  • Be mindful of disclosed but unclaimed embodiments in the specification;

  • Consider conducting a search prior to filing an application, because a search could be used for the combined purpose of accelerating examination in one application and requesting additional claims beyond the allotted 5/25 limit in another application. But remember that these procedures could have a substantial negative impact on the scope of claims.

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Countdown to the New PTO Patent Rules - Part 1 of 2

Posted on September 17, 2007 by Brian Wm. Higgins

     Although there are 45 days remaining before the new U.S. Patent & Trademark Office (PTO) patent rules take effect November 1, 2007, the number of visitors to this blog looking for information about the rules suggests that patent applicants and their representatives are actively looking for the best ways to comply with the rules today. That’s not a bad idea, considering how the new rules will substantially limit how patent applications are prosecuted at the PTO, and may require applicants to modify their patent filing strategies for both prospective as well as pending patent applications. According to Peter Weissman, a Partner at Blank Rome LLP, applicants should begin considering strategies for complying with the new rules.  In particular, Peter says, given the limited number of continuations, continuation-in-part (CIP), and Request for Continued Examination (RCE) applications allowed under the new rules, applicants should:

  • Consider relying more on interviews with Examiners, particularly personal interviews, which tend to substantially advance prosecution and reduce the need for filing continuations and RCEs;

  • Carefully review all claims, including dependent claims, after a first action on the merits (FAOM) to ensure that the case is in condition for an appeal; all “formal” matters should be resolved at that stage as well;
  • Give appeals and petitions greater consideration, because a successful appeal or petition may avoid the necessity of filing a continuation or RCE. An appeal may be especially prudent, for instance, to fight for broad rejected claims rather than taking narrower allowed claims and continuing prosecution of the broader claims in a continuation or RCE. Petition to remove the finality of Office Actions where possible. File a petition with the first requested RCE to further substantiate the need for any further RCEs;

  • Consider filing “divisional” applications as soon as the PTO issues a restriction requirement, in the event the PTO later reconsiders the restriction;

  • Consider filing provisional applications, because provisionals are not counted as a continuation, CIP or RCE, and they also give additional time to conduct a search and to perfect the claims;

  • Consider deferring examination under Rule 1.103(d);

  • Be cognizant of the duty of disclosure, which requires that all material information be submitted to the PTO. Once an RCE and two continuation applications have been filed, the applicant will not be permitted to file another RCE or continuation application to submit information which could have been submitted earlier. Accordingly, it is even more important now that applicants notify their patent attorney of prior art as soon as they become aware of it;

  • Consider describing patentably “distinct” subject matter in separate applications rather than combining common subject matter in a single application, as this could support an argument that the claims are truly patentably distinct;

  • Consider describing various embodiments of the invention in a manner that supports those embodiments as patentably “distinct” and deserving of separate applications;

  • Consider waiting more than two months between filing applications containing at least one similar inventor to avoid the presumption that claims are patentably indistinct; 

  • Consider filing continuations and CIPs in a serial fashion, as parallel continuations and CIPs will be subject to the requirement to combine patentably indistinct claims.

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