News and Articles Concerning U.S. Patent Practice

USPTO Fees Increase Today

Today marks the second set of changes to be implemented from the recently enacted Leahy-Smith American Invents Act (the new U.S. patent legislation). The most noticeable change today is the automatic increase of 15% for nearly all USPTO fees.

Additionally, applicants may begin taking advantage of Prioritized Examination for newly filed applications. For a fee, an applicant may now request, upon filing a new application, that the application be examined ahead of most currently pending applications. The USPTO will speed up all processes associated with the search and examination of an application from filing through the first Final Office Action or Allowance. The fee for requesting priority status is $4,800 for large entities and $2,400 for small entities which is in addition to the standard filing fees. In return, the USPTO expects to Allow or Finally Reject the application within 12 months from filing.

For a detailed look at all upcoming changes and their effective dates, please look here
(http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf).

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New US Patent Law

President Obama signed the new U.S. Patent Act (Leahy-Smith America Invents Act H.R. 1249) on Friday, September 16th thereby making it a Law.

In total, the new Law is 152 pages long and contains a vast number of changes to the current U.S. patent system. The most notable change is transitioning the U.S. from a "First-to-File" system to a "First-to-Invent" system. This change will take place on March 16, 2013.

However, many other changes went in to effect on the day of enactment and will continue to go in to effect periodically over the next 18 months. For example, USPTO official fees will raise 15% on Monday, September 26th and a new 9 month "opposition" period will begin September 16, 2012.

A link to the Act and a brief timeline of changes can be found here.

We will be keeping our client's up to date on the important changes and dates over the coming weeks and months. However, if you have specific questions or concerns about how the new U.S. law will affect you or your company, please do not hesitate to contact us.

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Duty of disclosure vs. enforceability of US patent

The past few years has seen a shocking number of inequitable conduct cases in the U.S. which are based on prior art which the applicant was aware of but which was not submitted to the USPTO. This has led to more than a few patents being found unenforceable due to inequitable conduct even though they would otherwise have been patentable. On May 25th, Therasense Inc. v. Becton Dickinson and Co. was decided, en banc, by the Federal Circuit which significantly changes the criteria necessary to find a patent unenforceable in these situations.

While the duty of disclosure statute has not changed, in order for a patent to be held unenforceable there are now required three criteria which must be met:

A) Intent - There must be clear and convincing evidence that the applicant knew of the reference, knew that it was material and made a deliberate decision to withhold it. The fact that an applicant knew of a reference, should have known of its materiality and decided not to submit it does not prove specific intent to deceive.

B) Materiality - Regardless of the intent, there must be a preponderance of the evidence that the PTO would not (or should not) have allowed a claim based on the withheld reference.

C) Even with Intent and Materiality, a patent should only be unenforceable due to inequitable conduct when the patentee's misconduct resulted in the unfair benefit of receiving an unwarranted claim.

The exception to these criteria is only when there is egregious misconduct i.e. when an applicant carefully plans and executes a strategy to deceive the USPTO.

While this ruling does not mean that those involved in the patenting of an innovation should necessarily relax their standard for submitting relevant documents to the USPTO, it should ease Applicants and practitioners minds about possible patent invalidity due to inadvertently missing the citation of a particular reference.

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US Patent Reform Act of 2011, a step towards harmonization?

Over the past 5 to 6 years there has been significant talk of patent reform in the U.S. as well as a number of failed attempts at reforming the patent system by the U.S. Congress. The Patent Reform Act of 2011 (S. 23) has now passed its first hurdle by passing out of the necessary Senate Judiciary Committee with a favorable vote of 15-0. While Patent Reform Acts in past years have also passed this hurdle and then failed to become law, there are several promising factors which suggest that this may be the year for reforming the U.S. patent system.

One factor in the Act's favor is the continued push for harmonization between international patent offices. Not surprisingly, two of the proposed changes are (1) changing the U.S. to a First-to-File system and (2) adding a post-grant review option for third-parties which would be available up to 9 months from the issuance of a patent. Several other proposed changes will be familiar to European applicants and amount to a giant step by the U.S. towards international patent systems such as that of Europe and Japan.

If the Patent Reform Act of 2011 passes this year, thereby closing the gap between how the worlds major patent systems function, then will it be possible for global patent harmonization within this decade? Many more hurdles will have to be overcome for both the Patent Reform Act of 2011 to pass as well as for harmonization to be realized.

For more information about the changes contained in the current Patent Reform Act of 2011 and how they may affect you or your company, please feel free to contact us at any time.

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Pre-Appeal Brief Conference statistics

For many U.S. patent applicants, the words “Final Office Action” are seen more often than they would ideally like. Deciding what to do after a Final Office Action often comes down to choosing the lesser of two evils, filing a Request for Continued Examination (RCE) or an Appeal. In 2005 the USPTO made a new option available to applicants, the Pre-Appeal Brief Conference.

Before spending the time and money to prepare a traditional Appeal, an applicant can file a Notice of Appeal along with a Request for Pre-Appeal Brief Conference. The request includes up to five pages of applicant remarks which the Examiner then presents to their supervisor and an additional supervisor in the Pre-Appeal Conference. The two supervisors then decide if the Examiner is correct and the case should continue to Appeal, or that the Examiner has erred and the claims should be allowed or a new rejection should be issued.

Recently, the USPTO has made statistics about Pre-Appeal Brief Conferences easily available to the public. These statistics can be useful for applicants when determining what to do after a Final Office Action.

Fiscal Year	Decisions to continue to Appeal	Decisions to issue new rejections	Decisions to allow all claims
2009	56%	39%	3%
2010	56%	38%	5%
* 1-2% of the time the request is defective and not considered

The official fee for filing a Notice of Appeal is $540, which is required for any Appeal, and the Request for Pre-Appeal Brief Conference is free. Therefore, requesting a Pre-Appeal Brief Conference reduces costs of Appeals over 40% of the time. Additionally, the added cost when considered against filing an RCE may be justified in that the Pre-Appeal Brief Conferences are successful over 40% of the time in at least “un-stalling” prosecution which may not be achieved solely by filing an RCE.

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Is Obviousness Obvious

As a U.S. Patent Examiner, the U.S. patent system was relatively straight forward to me. I examined claims, conducted a search of the prior art, and decided in my opinion if the claims were patentable. Since my opinion of patentability was generally based on my own knowledge of the art, determining patentability often came down to what was obvious or not to me. As a practitioner, dealing with the U.S. patent system is far more complex. Unlike an examiner, a practitioner cannot rely solely on his or her knowledge of an art to argue non-obviousness.

Who decides what inventions are obvious and what are non-obvious? U.S. courts say that it is “one of ordinary skill in the art”. So, are patent examiners one of ordinary skill in the art? Patent examiners, by definition of their job title, determine if inventions are patentable. Therefore, they determine if each invention meets the three basic components of patentability in the U.S.; utility, novelty and non-obviousness. Since it is “one of ordinary skill in the art” who determines non-obviousness, a patent examiner should be one of ordinary skill in the art which they are determining patentability. Anyone who has dealt with patents will quickly realize this is not normally the case.

When trying to decipher rejections from U.S. examiners based on obviousness a real question becomes, ‘of what skill level is this patent examiner?’ The logical follow-up question becomes ‘how does the level of skill of the patent examiner affect the patent prosecution?’ The following will provide some tools to answer these questions and hopefully make obviousness more obvious.

Putting aside for the moment what ordinary skill is, an examiner’s skill level can fall into one of three groups: that of ordinary skill, that of less than ordinary skill and that of more than ordinary skill in an art. Looking at the United States Patent and Trademark Office, there are over 6000 patent examiners. Consider that patents in the U.S. are organized in to well over 100,000 different categories or class/subclasses. Each examiner is therefore responsible for numerous different categories or arts. Therefore, not only does the level of skill vary between the 6000+ patent examiners, but it also varies for each examiner depending on the specific art in question. If an examiner is one of ordinary skill in the art of any given application, then they should easily be capable of determine what is obvious and what is not. If something is obvious to them then it is inherently obvious to one of ordinary skill in the art. When prosecuting an application in front of an examiner of ordinary skill in the art, then any obviousness rejection made should be valid. In this scenario, often times the only way to proceed is to amend the claims or abandon the application. However, patent examiners normally fall into the other categories of less or more than ordinary skill in the art.

Dealing with examiners having less than ordinary skill in an art

Examiners having less than ordinary skill in a particular art will commonly put forward combining two things as obvious when someone of ordinary skill would know otherwise. Many times the combination will be from two entirely different arts. This is one clue an examiner is not of ordinary skill. When handled properly though, this scenario can have several unique benefits.

It is helpful to begin by laying out what the level of ordinary skill was in the particular art when the application was filed. This will often be informative to the examiner and can increase that examiners own level of skill in the art. The key is that it allows the practitioner to define the skill in the art in a way favorable for the applicant. This also preempts the examiner from define the level of ordinary skill in a detrimental way. Follow up by pointing out how those of ordinary skill have gotten around using the new invention or why one of ordinary skill would not have found the claims obvious.

While this approach will seem counter intuitive to those who wish to keep prosecution history as short as possible, it has its advantages. Examiners of less than ordinary skill can be thought of as loose cannons. They are prone to put repeated opinions on record that are not valid and which require lengthy argumentation and possible documentation to overcome. Being proactive and preventing these invalid opinions in fact often reduce the overall potential prosecution history.

Dealing with examiners having more than ordinary skill in an art

Take a look at the theory several centuries ago that the earth was flat. For a long time, one of ordinary skill in the art knew that there were two unproven theories. Scriptures and common belief pointed towards a flat world while mathematics and observation pointed towards a spherical earth. Therefore, to one of only ordinary skill, neither theory would be obvious over the other. However someone of less than ordinary skill, one who only knew about scripture and common belief, would tell you it is obvious the earth is flat. On the other hand, one of expert skill who had made observations and calculations would tell you the world is obviously a sphere.

It is easy to show the man having less than ordinary skill about the alternate theory. By increasing his level of skill he will soon realize that neither theory is as obvious as originally thought. Convincing the man that is an expert they are wrong is much more difficult, and often impossible considering that they may in fact be right.

If an examiner is an expert in the art, then many times they will believe deeply that something is obvious. In many cases, as with the second theorist, they may even be correct. Telling this examiner they are wrong will most likely result in an unnecessarily long prosecution. Additionally, unlike with an examiner of less than ordinary skill, educating an expert in the art is not beneficial.

In this scenario, a long prosecution history is often times extremely damaging. An expert examiner can present reasons why the invention is obvious but which is not obvious to one of ordinary skill. These rejections will often be well formulated and may even be along the lines which the inventor used in the first place. The key to this situation is presenting the facts in as compact a manner as possible.

Remember, the only opinion that matters is that of “one of ordinary skill in the art.” It is essential to focus only on what knowledge one of ordinary skill is limited to and why that limited knowledge renders the invention non-obvious. Pointing out to an examiner that their opinion of obviousness appears to be based on that of a person with expert skill in the art can be beneficial. This is especially true when an examiner uses obscure non-patent literature references which can be shown to be outside the realm of one of ordinary skill.

The greatest tool to determine the level of skill of any particular examiner is the internet. Putting an examiners name into a search engine will quickly provide you with statistics such as how long they have been an examiner, how many patents they have issued and in what art. Going a little further will undoubtedly show when they graduated university, with what degree and what work experience they had prior to becoming an examiner. This information, along with the content of their rejection should provide a clear idea of their level of skill in the particular art.

Although the U.S. concept of obviousness appears far from obvious, it is still easily manageable. In reality each patent application is prosecuted in front of an individual examiner and not the USPTO as a whole. Therefore, it is important to use the tools available to prosecute each application the most effective way for each examiner based on their level of skill in the particular art. Dealing with each individual examiners concept of obviousness then becomes much more obvious than considering the system as a whole.

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The New Ombudsman Program of USPTO

Applicants and their representatives have been complaining for years that the U.S. patent system is confusing and often contradictory. Additionally, when problems or issues arise during patent prosecution it is often difficult to find out whom at the USPTO is responsible for dealing with them. Even when it is clear who should deal with something it can be difficult to actually get a hold of them.

The USPTO has recognized these problems and has announced the implementation of an Ombudsman program. An Ombudsman is typically someone who helps remove organizational roadblocks and acts as an intermediary, which is what the USPTO hopes this program will achieve. The program is not meant to help with general patent and trademark problems but when specific issues arise during prosecution of an application.

Conceivably, if there is only a procedural issue holding a patent from allowance this program can alleviate the need for filing a petition or RCE. If an examiner is difficult to get hold of for scheduling an interview or is prolonging prosecution, the Ombudsman of the program can act as an intermediary to help reconnect the applicant and examiner. Numerous other situations have the potential to be eased by this program which will hopefully reduce some of the strain and stress currently associated with the USPTO.

Please see the link below for further details about contacting and use of the Ombudsman program.

http://www.uspto.gov/patents/ombudsman_faqs.jsp

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Patent Prosecution Highway based on PCT search (PCT-PPH)

As of January 29th 2010, Applicants who have a favorable search report from a PCT application may be able to have the national stage case examined quickly. For the last several years, Patent Offices around the globe have been trying so-called Patent Prosecution Highway (PPH) programs. These PPH programs are designed for Applicants who file patent applications with the same claims in multiple Patent Offices around the world. Specifically, the programs are useful in cases where one Patent Office indicates the invention is patentable. Applicants can then use the PPH program to request the other Patent Offices to review their related applications quicker than normal.

Several conditions determine if an Applicant’s request for early examination will be accepted, based off of the PCT-PPH program. Most importantly, each claim in the national stage application must be practically identical to the “allowable” claim in the PCT application. Therefore, to receive both the quick prosecution offered by the PCT-PPH as well as a broader scope in the claims, it will require filing more than one national stage application. One application must be filed with the scope of the “allowable” claim(s), to be examined quickly and another application containing the broader scope.

To view the specific requirements for the PCT-PPH program you can view the announcement on the EPO’s website.

Also, to view a list of other PPH programs available, you can view the PPH page on the USPTO’s website.

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