Over the last year, while building ArchPatent, I have spent a lot of time speaking with inventors and lawyers about various aspects of prior art research, and I learned a few great tricks along the way which I wanted to share. In particular, I wanted to write this article to explain how a key word patent search can be enhanced by filtering the results using US classifications and subclassifications. First, I’ll provide some background about the U.S. Patent Classifications Systems (USPC), discuss how filtering key word search results by US classifications and subclassifications fits within the seven step prior art search strategy outlined by the USPTO and provide specific instructions for how this type of search can be conducted to find highly useful results and save significant time over the current manual process.

Overview of US Classification and Subclassifications

In June of 2011, The USPTO published a helpful 15 page report titled, “Overview of the U.S. Patent Classifications Systems (USPC).” This report provides a very thorough overview for anyone seeking a deep dive into the US Classifications system.

USPTO Publishes Proposed Rules for Supplemental Examination and to Revise Reexamination Fees

Changes will implement provisions of the America Invents Act

Washington – The United States Patent and Trademark Office (USPTO) is proposing rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act. The USPTO is also proposing to adjust the fee for filing a request for ex parte reexamination and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes. The USPTO published these proposed rules in the Federal Register on January 25, 2012.

Last week I wrote an article titled Business Methods by the Numbers, which took a look at the allowance rates for a variety of Art Units assigned to examine patents in class 705, the primary class where business methods and financial data processing inventions are classified in the United States.  The article has raised a few eyebrows and has caused some to question whether there is disparate treatment among Art Units at the United States Patent and Trademark Office.

The fact that there is disparate treatment between and among various Art Units and patent examiners shouldn’t catch anyone by surprise.  Everyone in the industry knows that some patent examiners feel they work for the Patent Granting Authority while others work for the Patent Rejection Office.  Notwithstanding, there are some who are excusing what can only be characterized as truly alarming statistics as having something to do with the various types of patent applications assigned to each Art Unit.  Allow me to call that out for what it is – hogwash!  Class 705, including the applications handled by Art Unit 3689, is dominated by a who’s who of the largest technology and financial companies in the world.  These companies hire some of the best attorneys in the world, they well understand how to write a patent application to articulate allowable subject matter and yet these large, well-funded companies represented by some of the best and brightest legal minds are incapable of obtaining a patent?  If you believe that I have a bridge I want to sell you!

The United States Patent and Trademark Office earlier today welcomed 10 new Administrative Patent Judges of the Board of Patent Appeals and Interferences.

At 10:00am this morning in the North Auditorium of the Madison Building on the campus of the USPTO, Federal Circuit Chief Judge Randall Rader administered the oath of office to Jacqueline Wright Bonilla, Erica Franklin, James Housel, Deborah Katz, Neal Abrams, George Best, Andrew Caldwell, Thomas Giannetti, Andrew Metz and Grace Obermann.

The ceremony lasted approximately 45 minutes.  It was well done, together with several musical numbers.  After USPTO Director David Kappos’ brief opening remarks, Laverne Smith, a Board Supervisory Paralegal, sang “My Country, ‘Tis of Thee.”  The program was then concluded with “God Bless America,” which was sung by April Mosby, a Board Patent Attorney.

Has the economy impacted your foreign filing strategy?   What do you see as the defining IP trend of 2011?

The third annual U.S. IP Trends Survey, sponsored by inovia, is now open for U.S. patentees and your input is needed to make the survey a success. The results of the survey will provide an in-depth look at the global outlook and foreign filing strategy of U.S. companies and universities.  It is anticipated that the survey will take only between five to fifteen minutes to complete, and responses will remain strictly confidential.  Only aggregate, anonymous information will be made public.

Click here to take the survey.

Intellectual Ventures and Invention Law Group, PC seek a Chief Policy Counsel. This position reports to the General Counsel. Working closely with other attorneys, business leaders and outside counsel, the Chief Policy Counsel will manage public policy issues related to invention rights and intellectual property, as well as other areas that significantly impact IV’s business, including tax, energy, science and technology and investment-related issues, in the U.S. and internationally. An ideal candidate will have substantive expertise in several of these areas, a significant understanding of and experience with U.S. legislative, administrative and judicial processes and organizations and international experience.

We say all the time that in a patent application you can define the terms you want to use in the claims to give them the meaning you intend; the meaning that will apply during any claim interpretation.  But what happens when you do not define a term in the specification?  Well, that really all depends.  As a general rule the ordinary plan meaning of the term will be used.  This issue of defined meaning arose recently in a high profile case, giving us a chance to review the ruling and discuss defining terms more generally.

Recently in the ongoing patent war between Apple and Motorola, Judge Richard Posner of the United States Court of Appeals for the Seventh Circuit issued a ruling, while sitting by designation as a trial judge.  See Apple v. Motorola No. 1:11-cv-08540 (N.D. IL., Jan. 17, 2012). Motorola had argued that Apple’s U.S. Patent No. 7,479,949 was invalid because it used the term “heuristic,” thereby rendering the claims invalid as being indefinite and in violation of 35 U.S.C. 112, ¶ 2.

Global Patent Solutions, LLC (GPS) seeks to hire a patent research analyst with prior patent examiner or patent agent experience.

This is not your ordinary, run-of-the-mill research position. Each project is unique and possesses a new challenge for you to tackle. The successful candidate must be able to assess and analyze the best way to approach a project.

If you can manage yourself, as micro-managing is not our style, and you are motivated to get results in a timely manner, this could be a great opportunity for you to learn and grow with a quality-driven company. Please visit our career section on www.globalpatentsolutions.com for complete job postings.

To apply for this position please send a cover letter and resume to gps-jobs@ipwatchdog.com.

The United States Patent Classification System is a system for organizing all U.S. patents into a smaller sub-collection of patents based on common subject matter. Each subject matter division includes a major component, which is called a class, and a minor component, which is called a subclass.  Few classes draw as much attention as class 705.  Class 705 is the generic class for innovations relating to the performing of data processing operations where the apparatus or method is uniquely designed for or utilized in the practice, administration, or management of an enterprise, or in the processing of financial data.  Class 705 was created in 1997 from the business and cost/price sections of computer classes 395 and 364.

The mere designation of an arrangement as a “business machine” or a document as a “business form” or “business chart” without any particular business function will not cause classification within class 705.  There must be significant claim recitation of the data processing system or of a calculating computer while at the same time having only nominal recitation of any external art environment within the claims.  If the claim mentions a particular tangible apparatus in combination with performing data processing or calculation operations then the invention is categorized in the classification that most closely matches the tangible apparatus.  In other words, class 705 relates to business method patents and the processing of financial data.

Fifteen years ago, I started a business that took 12 agonizing years to fail. I invested $10 million of my own money in BeComm (later called Implicit Networks) to develop a media-rich operating system that in many ways anticipated today’s smartphones and tablets. Unfortunately, the hardware and applications needed to make use of such an operating system didn’t yet exist.

Like most failed entrepreneurs, I might have had nothing to show for all my effort but a lousy tee-shirt that says, “I ran a startup, too.” But because I learned some crucial lessons from that failure, I now have the beginnings of a thriving business instead — one that is run very differently from the traditional model for building high-tech startups.