Knowing when to give up on a patent application is one of the most critical questions facing for any patent applicant, whether they be an independent inventor or a large corporation. Resources are finite even for the largest corporations, and throwing good money after bad is not a strategy for success.
When you do not want to give up on a patent application filing an RCE can be an extremely attractive option compared with the cost and delay associated with filing an appeal to the Patent Trial and Appeal Board within the United States Patent and Trademark Office. The filing of the first RCE for a small entity costs $600, and the cost of filing a second or subsequent RCE for a small entity costs $850. These fees are double for large entities, and half as much for those that qualify as micro-entities. Filing an RCE also gives the applicant another two attempts, generally speaking, to convince the examiner that patentable claims are present in the application.
Filing an Appeal is a decision that many applicants simply forego at all costs. The cost of filing a Notice of Appeal is currently $400 for a small entity, double that for a large entity, and half as much for those that qualify as micro-entities. If you want an oral hearing that adds $650 for small entities, $1,300 for large entities and $325 for micro-entities. But the real cost of moving forward on appeal is the attorneys fees that will be encountered. According to the 2013 Economic Survey of the American Intellectual Property Law Association (AIPLA), the median attorney cost for preparing a brief is $4,500, and the median cost for those appeals that include an oral argument raises by another $4,100. Compare this with the filing of an RCE, which depending on the complexity of the technology will vary between about $2,000 to $3,500.
The patent process actually starts well before you file a patent application or seek assistance from a patent attorney. Every patent application starts with an invention, and every invention starts with an idea. While ideas are not patentable, there will be a point in time when the idea you are working on comes into vision with enough detail to cross what I call the idea / invention boundary. To have a protectable invention you have to be able to describe it with enough detail so that someone of skill in the relevant technical field can understand how to both make and use the invention. Once you can do that, or once the patent attorney or patent agent you hire can, you are ready to file a patent application. If you are struggling at the idea phase please see Turning Your Idea into an Invention and Moving from Idea to Patent.
The first step in the patent process should really be a patent search. Doing a patent search is the only way to get a realistic idea about whether the invention is likely able to be protected. There is nothing wrong with inventors doing their own preliminary search, and in fact that is very useful task. SeePatent Searching 101. At some point as your project proceeds you should have a professional patent search done. Only with a professional patent search will you really discover everything that can be found. Just like a novice in your field would make mistakes, as a novice patent searcher won’t find everything that can be found, including many things that really need to be considered during the drafting stage of a patent application. After all, the whole point of a patent application is to articulate how the invention is unique. How can you do that without a comprehensive knowledge of what exists in the prior art?
In many cases, if not most cases, a patent search will suggest that at patent could be obtained. The critical question, however, is not whether a patent can be obtained, but rather whether a useful patent can be obtained. If you layer on enough specifics to any invention you will cross the point where the patent examiner will say your invention is new and non-obvious. But a patent that has such narrow claims is hardly useful for anything other than framing and hanging on the wall.
The United States Patent and Trademark Office (USPTO) was granted fee setting and adjusting authority with respect to patent fees in the Leahy-Smith America Invents Act (AIA), which was signed into law on September 16, 2011. The fee setting (or adjusting) process is not a simple process. As you might expect, there are numerous hoops the agency was required to jump through before making the fees final. Those hoops have been jumped through and the final rules on patent fees will publish in the Federal Register on Friday, January 18, 2013.
Most of this final rules package on fees will go into effect 60 days later, with some portions not becoming effective until January 1, 2014. For example, in response to public comment, small and micro entity fee reductions for international application transmittal, filing, processing and search fees will be effective January 1, 2014 to permit adequate time for operational changes associated with international systems and forms.
One major step in the fee setting process was the publication of proposed fee rules in September 2012. In response to public comments received after those proposed rules were published the USPTO modified some of its revenue and performance targets in the final rule, allowing the agency to reduce certain fees.
Since April 2011, the United States Patent Bar Examination has been a moving target. For many years the exam was static, largely remaining the same. Numerous repeat questions would be asked from administration to administration and changes to the law not tested. In fact, it was nearly 5 years before the USPTO started testing changes to the law of obviousness mandated by the U.S. Supreme Court in KSR v. Teleflex, which was difficult to imagine since the law fundamentally changed and impacts nearly ever application filed.
Enter David Kappos. As Kappos was setting out to redefine the USPTO he also made time to have his team update the stale patent bar exam. The first updates of the patent bar examination in some time were unveiled in April 2011, and with every new Federal Register Notice the exam is being updated to test the latest law and newest rules.
There does, however, remain a problem associated with studying for the patent bar exam. The Manual of Patent Examining Procedures is not up to date, and in places it is significantly out of date. That can make studying for the patent bar a daunting task for those who attempt to do it on their own. Without the guidance of a course that can pull everything together it is quite possible that a student will study the wrong material out of the MPEP, even believing they are about to get a question correct because the answer is included in the MPEP. A case in point will illustrate.
PTAB Vice-Chief Judge Moore at recent swearing in ceremony.
This is the final segment of my three-part interview with Chief Judge James Smith and Vice-Chief Judge James Moore of the Patent Trial and Appeal Board of the United States Patent and Trademark Office.
In Part I of the interview we talk about their daily roles, USPTO leadership, the battle to get funded to expand the Board and much more. Part II of the interview picked up with a comparison between the operation of the PTAB and the Federal Circuit, and then goes on to discuss the working relationship between Chief and Vice-Chief.
In the finale, Part III (which is below), we talk about how cases are assigned to various panels, and we spend time chatting about how and why a case might be a good candidate for an expanded board. We also discussed when PTAB jurisdiction attaches. A light-bulb went off for me during that discussion with respect to the so-called mediation program that has as its goal the short-circuiting of appeals that ought to be unnecessary for the Board to consider.
Seth Waxman, the 41st Solicitor General of the United States (1997-2001).
This is the final installment of my interview with Seth Waxman. In the finale Waxman goes through the process that the Supreme Court goes through to determine whether to accept a case and grant certiorari. As a former Solicitor General of the United States Waxman focuses on the interplay between the Supreme Court and the Solicitor’s Office, particularly detailing what is known as a Call for the Views of the Solicitor General, which Waxman explains comes in the form of an invitation to participate and share the U.S. government view of the issues. Of course, “[a]s a practical matter you cannot RSVP your regrets,” Waxman says jokingly.
Without further ado, here is the final installment of my interview with Seth Waxman.
WAXMAN: [Y]our first question was what does the Supreme Court look to in deciding what kinds of cases to take… [T]hey are looking for either a court that has incorrectly decided an unquestionably important issue. The paradigm would be a court has declared an act of Congress unconstitutional. The Supreme Court is going to review that. It may wait until a couple of other circuits have weighed in, but maybe not.
The other paradigm is there’s a split in the circuits. The same legal question with the same set of facts will definitely be decided differently in different jurisdictions. Then the Supreme Court has to step in because that can’t be in a national judicial system.
Have you ever wondered why the Supreme Court is taking so many patent cases over the last few years? In Part I of my interview with Seth Waxmanwe learned that while he was the Solicitor General of the United States, and even before ascending to that position, he advocated within the Department of Justice for at least occasionally seeking Supreme Court review of Federal Circuit cases. That lead from a trickle of cases to what has become a handful of cases year after year.
Personally I think there are plenty of cases that the Federal Circuit gets wrong and should be taken by the Supreme Court to get things correct. But that is now what the Supreme Court does. They are looking for meaty issues, not just to get some esoteric point of patent law correct. In fact, it is my observation that the more esoteric and the more incorrect the Federal Circuit the less likely the Supreme Court will get involved. But that is just my view from the sidelines.
Waxman, steeped in the rules, procedures and art of Supreme Court advocacy drills down deeper.
WAXMAN: Well, I think it’s a combination of several different things. When you’re talking about patent decisions of the Federal Circuit, for purposes of answering this question it’s useful to distinguish between rulings about litigation procedure in patent cases and rulings about the meaning of substantive patent law. With respect to the former, it’s easy to see why the Supreme Court’s interest would be piqued if a petitioner says, as it did for example in Medimmune, “there’s a general rule that applies across all the regional circuits with respect to standing in declaratory judgment actions. But the Federal Circuit applies a different rule in patent cases.” That is just the kind of disuniformity the Supreme Court is looking for. It’s proverbial “split in the circuits” that the Court feels it needs to address — where a particular law or set of procedures is being interpreted or applied differently in one part of the country than another.
Seth Waxman was the 41st Solicitor General of the United States, in that position from November 1997 until January 2001. Since the time he left the Department of Justice and put representing the United States behind him he has become one of the most sought after appellate advocates in the country. Waxman, who practices at WilmerHale in Washington, DC, has also become quite in demand in the patent community, both as a counselor during patent litigation and then as litigation turns into appeals he takes center stage.
Waxman has become one of America’s super lawyers, specializing in all kinds of appeals before the Supreme Court of the United States. He is in such demand in patent matters because the Supreme Court has never been known to be a warm and welcoming place for patent owners, but Waxman has achieved notable victory where many in the industry suspected certain defeat.
I spoke with Waxman in August 2012 on the record. What follows is Part II of my interview with Seth Waxman. In Part I we discussed the path to becoming Solicitor General and how and why Waxman decided to leave private practice. Part III (forthcoming) will discuss why the Supreme Court is so interested in patent cases, and the finale, Part IV (also forthcoming), will discuss the mechanics of a Supreme Court grant of certiorari, so stay tuned!
Seth Waxman is not your ordinary appellate attorney. He has an undergraduate degree from Harvard, a law school degree from Yale and early in his life he spent a year in Africa doing humanitarian work. Indeed, Waxman is committed to the cause of pro bono representation, which is far more than a polite nicety or done to score political points with the bar. One of America’s “super lawyers” devotes as much as 20% of his practice life to pro bono causes.
Waxman rose from law clerk to the Honorable Gerhard A. Gessell, to be a successful attorney in private practice for 17 years. Ultimately Waxman would be invited to work at the Department of Justice, where he became Associate Deputy Attorney General and finally Solicitor General during President Bill Clinton’s second term.
All of these accomplishments would be more than enough to fill out a lifetime spent in the law, but upon leaving the Department of Justice, Waxman has become nationally recognized and highly sought after as one of the preeminent appellate attorneys in America. He has also developed a particular niche in the area of patent law and litigation.
When the weight of the Supreme Court fist seemed poised to come down upon the presumption of validity enjoyed by patents it was Waxman who argued the case and prevailed. Such a victory was no small feat. This case presented a substantial uphill battle given the presumption of validity was so universally applied by the Federal Circuit. The only reason the Supreme Court would have taken the case would be to change the law, but thankfully that did not happen.
Justice Sonia Sotomayor delivered the opinion of the U.S. Supreme Court in i4i v. Microsoft.
This month I have been running a series of articles on the United States Supreme Court, which is now back in session as they open ever October with a new term. So far we have looked at Supreme Court Copyright Fair Use Cases and Supreme Court Trademark Cases. Today we switch things up a little and talk patents, focusing on one of the most important decisions the Supreme Court has made over the last generation — i4i v. Microsoft.
Some would argue that i4i v. Microsoft was not such an important case, and I suppose that is one way to look at this. The Supreme Court got the decision correct, so it just managed to keep the status quo in place. But if the Supreme Court had chipped away at the presumption of validity of a patent the way the Microsoft and many amici asked the patent system would be far worse off today. In fact, patents would almost not be worth the effort if they could so easily be challenged.
With this in mind I recently chatted with Michael Cannata, who is a Partner with NW Patent Funding Corporation. Through a joint venture with NW Patent Funding Corporation, Michael is an advisor and manager to the Northwater Intellectual Property Fund, which was established in 2005 as one of the 1st funds involved in patent litigation financing.