Posts Tagged: "Patent Examination"

Lawyers should always be trying to look at things from new and different angles to gain an edge. We owe it to our clients, and honestly, we should do it for ourselves, because it makes practicing more fulfilling. In an effort to spice up my patent law life, I have become especially interested in patent analytics over the past few years—that’s right, I just used “patent analytics” and “spice up” in the same sentence.

After two or more U.S. Patent and Trademark Office (USPTO) office actions on the merits, a patent applicant has the option to appeal the patent examiner’s decision rejecting one or more claims to a higher forum, i.e., the Patent Trial and Appeal Board (PTAB). Since 2005, the USPTO has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal, may also request a pre-appeal brief review. Why make this request? What are the pros and cons? What are the risks? In this article, I will explore these issues from my perspective as a former USPTO patent examiner.

The “interview” during the patent prosecution process is a meeting typically held between a patent examiner and the applicant’s representative (i.e., a patent practitioner). In some cases, the inventor, assignee, or a subject matter expert may also be present. During my time as a United States Patent and Trademark Office (USPTO) patent examiner, I would almost always encourage scheduling an interview with applicant’s representative to discuss the merits. Curiously, many patent practitioners are not proactive in initiating an interview with the examiner. Why is an interview so important? When and how should it be held? How does an applicant’s representative conduct an effective interview?

In the United States Patent and Trademark Office’s (USPTO’s ) patent academy (or today’s version of such), patent examiners are taught that the objective of the patent examiner is to “issue valid patents promptly.” In pursuing this institutional interest, each examiner conducts examinations that they independently manage. Although patent prosecutors cannot control an examiner’s decisions, they can establish a context that encourages a favorable outcome. If first and second application drafters each drafted applications to cover the same invention (that met all of the requirements of 35 USC 112) the presentation of the content in the respective applications could engender drastically different examination processes. This is because there is a relationship between the manner in which the content of a patent application is presented and the character of the examination process that follows.

Successful patent strategies for business are inexorably tied to the quality of the patents upon which the patent strategies depend. The quality of a patent depends upon the capacity of a patent prosecutor to resolve a series of non-trivial patent application drafting and/or examination challenges in order to secure the issuance of a valid patent that includes claims that provide a desired scope of protection. Such challenges can involve subjecting complex and/or unwieldy subject matter to patent form in a manner that yields an accurate, clear and complete detailed description of the invention and well-crafted claims. Moreover, they can involve managing difficult patent examiners who require the amendment of claims as a prerequisite to advancing the prosecution of the application. The detailed description and the claims are the parts of the patent that can be employed by the practitioner to imbue a patent with attributes that optimize their support of patent strategies for business.

Accurate and clear patent drawings strengthen and enhance patent applications, helping patent examiners who are already overburdened with applications to understand inventions faster. In this article, we will be covering the essential points on the importance of patent drawings and how we can make the drawings feasible for filing at the USPTO. We will also cover some important guidelines to help you to avoid unwanted office actions.

Companies that have a strong, diversified patent portfolio can establish themselves as key innovators within a particular field and secure a freedom to operate in that field. In some situations, companies may also choose to enforce patent rights granted to them by these patents in a litigation, either offensively against an alleged infringer or as a defense to patent infringement claims against them.

Examiners at the U.S. Patent and Trademark Office (USPTO) can be categorized into three different “types,” namely, green, yellow and red Examiners. Knowing the type of Examiner assigned to a particular U.S. patent application can help in strategizing on prosecution tactics, crafting responses, and anticipating costs and timing needed to obtain a U.S. patent. For each year from 2009 to 2019, data was gathered for Examiners in each of eight non-design Tech Centers at the USPTO from the LexisNexis PatentAdvisor® patent prosecution analytics database. Examiners are categorized into three different types (so-called green, yellow, and red Examiners), and the data show that certain types of Examiners allow and examine disproportionately more U.S. patents each year than other types of Examiners, resulting in few allowing many, and many allowing few.

The USPTO recently revised Manual of Patent Examination Procedure (MPEP) Section 706.07(b) to retroactively impose a first action final rejection (FAFR) policy that significantly reduces patent applicants’ options (MPEP, E9R10.2019. Fed. Reg. Vol. 85, No. 133 page 41,571). In Part 1 of this two-part series, we analyzed the final agency decision provided by the USPTO as basis for the FAFR policy change. Here, in Part II, we analyze petition decisions relating to FAFRs made on amended claims filed in continuing applications. We discovered, when determining the propriety of a FAFR, the USPTO has been comparing whether claims are drawn to same invention using two separate legal standards: identical scope or patentably indistinct. The majority of the patent corps apply the 1969 legal standard which limits FAFR to claims of identical scope as previously examined. The results of our analysis indicated the new patentably indistinct standard authorizing FAFR on substantially amended claims originated in one Technology Center (TC), was upheld by the FA Decision (defined below), and then adopted by another TC in 2018. Codifying two alternative FAFR standards in the June 2020 MPEP permits all patent examiners to arbitrarily impose FAFRs on substantively amended claims, if they so wish.

On September 26, the U.S. Patent and Trademark Office filed a motion to dismiss a class action complaint  filed by two inventors alleging violations of the Privacy Act created by the agency’s handling of its Sensitive Application Warning System (SAWS). The USPTO is seeking a Rule 12(b)(6) dismissal for failure to state a claim, arguing that application flags under the SAWS program don’t concern individual patent applicants and that omission of those flags from patent application files isn’t the proximate cause of adverse determinations such as increased scrutiny holding up patent grants. The case was first filed this June in the U.S. District Court for the District of Columbia by Paul Morinville and Gil Hyatt, two inventors who allege that they have filed patent applications on inventions that have been flagged by the SAWS program. Morinville is an inventor on nine patents who has had 26 patent applications pending at the USPTO since February 2000. Hyatt is listed as an inventor on 70 patent applications and has had patent applications pending at the agency since 1990. Hyatt was first informed that he had patent applications flagged by the SAWS system in June 2017, more than two years after the USPTO officially retired the SAWS program.

The Japan Patent Office recently added ten new case examples pertinent to artificial intelligence-related technology to Annex A of its Japanese Patent Examination Handbook. The examples are meant to facilitate understanding of the description requirements and the inventive step requirement in Japan as applied to AI-related inventions. In doing so, they provide a useful preview for how other patent offices might begin treating AI-related inventions. The examples are also very useful for any practitioner with clients in the AI space who intend to file in Japan.

After several years in which the U.S. Patent and Trademark Office (PTO) did not seem to have an official position on the issue, and many Patent Trial and Appeal Board (PTAB) panels took a position that was clearly at variance with the Administrative Procedure Act (APA), the PTO recently seems to be acquiescing to principles that the patent bar has been urging for years: (a) the PTO is subject to the same Administrative Procedure Act obligations as any other agency, and therefore cannot make factual findings without substantial evidence, and (b) there’s no carve-out for factual findings underlying § 101 subject matter eligibility rejections.

Globally, a total of 3.1 million patent applications were filed with patent offices worldwide during 2016, an increase of 8.3 percent over 2015’s filing numbers and the seventh straight year in which saw a year-over-year increase in global patent application filings. About 1.3 million patent applications were filed with China’s State Intellectual Property Office (SIPO), a record number of patent applications received by any patent office in a single year. China’s 2016 patent application total is greater than the combined total of patent applications filed in 2016 in the United States (605,571), Japan (318,381), South Korea (208,830) and Europe (159,358). These five jurisdictions accounted for 84 percent of all patent applications filed during 2016.

One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the courts. But, even this may not be convincing, if argued in the abstract, because, after all, we are dealing with abstract ideas to begin with, and it is all too easy for an examiner to dismiss an abstract argument as “not convincing”. A concrete, bright line test can be constructed, which may sway an examiner (or appeal board, if the rejection is appealed). Articulate a specific technological problem that the claims solve or are directed to solving. Analyze the claim and cite some of the important claim limitations that are not present in the alleged abstract idea, and explain the significance of these claim limitations in terms of the technological problem and technological solution.