The law as it relates to software has been in flux over the last 10 years. Many older patent applications simply do not have enough detail to satisfy the current requirements to obtain a patent, although when drafted they would have been sufficient to satisfy the requirements then in place. Describing software as a pure method claim has not worked for a long time despite the fact that in reality software is really a method. Much more than a cursory description of software as a series of steps is required in order to have hope of obtaining patent protection for software.
Indeed, ever since the Federal Circuit en banc decision in Bilski, claims have been required to be tethered to tangible components, such as data storage devices, processors, databases, controllers, servers and the like. Unfortunately, however, the Patent Trial and Appeals Board at the United States Patent and Trademark Office now has taken the position that they will ignore the tangible components within a computer implemented method claim and then look to see what remains before determining whether the claim is patent eligible. See PTAB Kills Software.
Of course, after you remove or ignore the tangible components what remains is a naked process, which is patent ineligible. Thus, deciding to ignore tangible components leads to the inescapable conclusion that no software is patent eligible. Such disingenuous reasoning has the effect of punishing applicants for writing claims as the Patent Office has mandated ever since the machine-or-transformation test was first announced by the Federal Circuit in Bilski. The test announced in SAP/Versata, which was the first covered business method review decision announced by the PTAB, cannot be the correct test, and ultimately the decision (or at least the rationale) will be reversed. Any test that has the net effect of rendering all software patent ineligible, like the SAP/Versata test, is simply not correct as I will explain more clearly below.
Earlier today Peter Pappas, the Chief of Staff at the United States Patent and Trademark Office, announced to senior management that he will be leaving the Office at the end of June 2013 to pursue other opportunities.
While perhaps not widely known by patent attorneys in the day-to-day trenches, Pappas is well known both at the Patent Office and in Washington, DC more broadly. And although Pappas is not a patent attorney, upon joining the Patent Office in 2009, he became an important and influential player in the patent community.
Pappas is an attorney with a Clinton White House pedigree, spending time in the White House Counsel’s office. He also held various communications, government relations and policy positions at the State Department and at the FCC during the Clinton Administration. He joined the Obama Administration early in the first term, first as Chief Communications Officer at the USPTO and then later as Chief of Staff at the USPTO. He remained as Chief of Staff even after Kappos left the USPTO, working closely with Acting Director Teresa Rea.
As a long time observer of the USPTO, I can attest to the positive impact Pappas has had on the Office, albeit typically behind the scenes. In fact, while David Kappos was Director it was Pappas who was his right-hand man. As such, he was a central figure on the Executive Team at the USPTO long before he became Chief of Staff.
Last week the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modify the After Final Consideration Pilot Program (AFCP) to create an After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. Thus, this can and should be viewed as part of the USPTO effort to continue to try and address the RCE problem.
AFCP 2.0 began on May 19, 2013 and will run through September 30, 2013. The USPTO says that any request for participation in the program must be filed on or before September 30, 2013. Of course, as is always the case, the USPTO left open the possibility that the pilot would be extended beyond that date.
The Patent Office should be estopped from raising a § 112 (a) rejection after raising a § 102 or § 103 rejection in an earlier office action. 35 U.S.C. § 112 (a) states:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention
Logically, if the application does not describe an invention in terms that allows one skilled in the art to make and use it, then the Patent Office should not have sufficient information to suggest that the application is not novel or obvious. In order to determine something is not novel or obvious you first have to know what it is. I have no objection to the Patent Office putting a 35 U.S.C. § 112 (a) and novelty/obviousness rejection in the same Office Action, where the PTO explains that to the best of their understanding of the invention it would not be novel or obvious for the following reasons.
Judge Richard Linn, U.S. Court of Appeals for the Federal Circuit, Feb. 8, 2013.
On Friday, February 8, 2013, I had the honor to interview Judge Richard Linn of the United States Court of Appeals for the Federal Circuit. Those in the industry know that Judge Linn is one of a small group of Judges who are patent attorneys. He is one of us in so many ways. He is a very real and genuine person, he is a great believer in the patent system, and he has long been a friend to patent groups and a mentor to many. Judge Linn started his a career as so many patent professionals have — as the newest patent examiner at the United States Patent and Trademark Office. We learn in the interview that his interest in patent law started well earlier, thanks to his Uncle who was a patent illustrator.
After leaving the Patent Office Judge Linn rose through the ranks to become a prominent patent attorney in Washington, DC. Ultimately, he was in the right place at the right time, and he was fortunate enough to be recognized by the right people. He was appointed to the Federal Circuit to replace the legendary Giles Sutherland Rich. Big shoes to fill no doubt, but in terms of influence on the Court and impact on the profession few can compare to Judge Linn. He has, and continues, to carve out his own legacy as one of the preeminent patent leaders in the United States.
We spent approximately 60 minutes on the record with my iPhone recorder on, meeting in his chambers at the Federal Circuit, which overlooks Lafayette Park. Judge Linn recently took senior status, and lives full-time in Florida. He returns approximately every other month, sometimes more frequent, to hear cases. He will soon be giving up this office once the President’s appointments to the Court are confirmed. Judge Linn assures me he will remain active with the Federal Circuit.
When I sit down to interview someone I sometimes have a sense where things may lead, but inevitably interesting topics arise, sometimes based off a seemingly innocuous question. In Part I, which is below, I asked a familiar question: Do you find that the harder you worked the luckier you got? Judge Linn used this to discuss the importance of practicing law with integrity while managing to be a zealous advocate and without sacrificing civility. This theme carriers over into Part II of the interview and should, in my opinion, be mandatory reading for law students and associates. In fact, it is a good reminder for more senior attorneys who sometimes might lose sight of the forest for the trees.
Washington — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) and the AutoHarvest Foundation today announced the signing of a Memorandum of Understanding (MOU) to work together to spur innovation and generate jobs in advanced manufacturing. The two organizations will collaborate on the creation of an online environment for innovators to exchange information, facilitate technical discussions, and encourage the growth of entrepreneurial activities. The USPTO opened its first-ever satellite office in Detroit in July 2012, and the MOU is part of the agency’s outreach into the community.
Through the MOU, entrepreneurs and corporate executives will have direct access to a centralized online collection of databases, information resources, software and analytical tools designed to help inventors better understand the process of obtaining, maintaining and commercializing their intellectual property (IP). Through a series of actionable interfaces, innovators will also have the ability to view, directly respond to and potentially enter into business transactions to commercialize their IP or provide their technologies to emerging companies seeking advanced manufacturing solutions.
The United States Patent and Trademark Office (USPTO) has made great strides over the last several years, there is no doubt about it, but there is still work to be done. The patent system was collapsing under the crushing weight of an ever increasing demand for U.S. patents, antiquated computer systems and policies that lead to second guessing every allowance. This crippled the Patent Office. The Patent Office is better today than it was at the end of the Bush era, but the USPTO has a problem; a very big problem.
At the end of a patent application proceeding (a process known as “prosecution”) there are a number of possible outcomes. A patent can be granted on all of the claims sought, which is rare but not unprecedented. See Patent Bigfoot: The Mythical First Action Allowances. The applicant can give up and not respond to a final rejection for one reason or another, perhaps because the patent examiner has found strong prior art that will be difficult to overcome. Still further, allowed claims can be accepted, rejected claims canceled and a patent issue. In this last scenario the patent application can pay the issue fee, accept the patent and file a continuation or continuation-in-part pursuant to 37 CFR 1.53(b) in order to seek other claims on the disclosure.
But what if the patent prosecution results in no claims allowed? In this scenario, which is unfortunately far more common than either the patent bar or Patent Office would like, the procedural vehicle of choice is a Request for Continued Examination (RCE) under 37 CFR 1.114. An RCE can be filed in situations where claims are allowed, but they are far more common in the scenario where all claims are rejected because with an RCE, which is not considered a new patent application and will have the same serial number as the previous application, all claims go back into prosecution. That means both allowed claims and rejected claims are back on the table during prosecution. That can be dangerous when claims are allowed because patent examiners are known to reject previously allowed claims in an RCE.
What follows are the decisions from April and May 2012. In this time period in 2012 at the OED the Office found themselves dealing with a patent attorney that accepted referrals from an invention promotion company, a patent attorney that didn’t notify a client of an abandoned application, a trademark attorney that submitted false statements in three petitions to revive abandoned applications and a reciprocal discipline involving negligence associated with maintaining a Trust Account.
Kappos at the USPTO hosting a public meeting on Patents End2End (12/14/2012).
On January 15, 2013, I had the privilege to interview David Kappos one last time in his role as Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office. What follows is my exit interview with Director Kappos, where we reflect on his time at the USPTO, all that he has accomplished and the legacy that he will leave behind.
When conducting interviews I sometimes get a sense for whether the interview will be a good one once transcribed. Those who have helped me transcribe the interview and review it prior to publication (as we do with all interviews) tell me that this is a good interview. You will have to be the judge of that. I confess to being incapable of being objective.
Although I do write what I believe to be objective news articles from time to time, I am an opinion columnist. I am also an ardent believer in the patent system. The Kappos era at the USPTO also largely coincides with the time frame where I started to write daily (sometimes more). I attend public events at the USPTO and have interviewed Director Kappos several times and most of his top lieutenants. I have gotten to know Director Kappos and have seen first hand what his leadership has meant to not only the USPTO, but to the larger patent system in general. He has been a friend to the patent system and in my opinion is leaving the Patent Office far better than he found it. He will be sorely missed when he leaves at the end of the month, although he will leave with an excellent management team in place to carry forward the work for which he has laid the foundation.
In addition to discussing the impact of the America Invents Act on ethics, specifically from a malpractice standpoint, I will also discuss the enforcement efforts of the Office of Enrollment and Discipline (OED) during 2012.
So far I have written the following articles in Ethics & OED series:
An odd order sequencing I know, but with great energy and certainty that I wouldn’t run out of time I set out to ambitiously review the 48 disciplinary actions taken by OED during 2o12. Then as the calendar started to no longer be an alley I thought that perhaps I should work my way backwards.
With this in mind, what follows is discussion of the two disciplinary proceedings undertaken by the USPTO during the months of July and August 2012. There were no OED disciplinary decisions from September 2012.
Last year marked the fifth anniversary of the Supreme Court landmark decision in KSR v. Teleflex (April 30, 2007), when the United States Supreme Court addressed the obviousness of patents under 35 U.S.C. § 103 for the first time since Graham v. John Deere in 1966.
A few trends in the law of obviousness as pertaining to chemical innovations were readily apparent in 2012. Pharmaceutical patent holders in litigation fared well at the Federal Circuit, while patent holders appealing decisions from the Board of Patent Appeals and Interferences fared poorly, and a third more subtle trend suggests chemical patents in district court litigation may be less susceptible to invalidation for obviousness post-KSR.
In Part I of this article we explored the trends in pharmaceutical litigation during 2012. In this second and final segment we focus on PTO Board decisions and appeals from non-pharmaceutical litigation relating to chemical patents.
bI will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute live from New York City on February 4-5, 2013, and live from San Francisco, CA on March 18-19, 2013, with the San Francisco location also being webcast. My topic this year is ethics, and those who attend my presentation live or via webcast will earn 1 ethics CLE credit. In addition to discussing the impact of the America Invents Act on ethics, specifically from a malpractice standpoint, I will also discuss the enforcement efforts of the Office of Enrollment and Discipline (OED) during 2012.
What follows is discussion of the two disciplinary proceedings undertaken by the USPTO during the month of October 2012. First up is a situation where the USPTO went after an attorney in California who engaged in representation of trademark clients. Richard Gibson was not a patent practitioner, yet OED went after him for violation of various ethical rules, which is something recently new for the USPTO to do. The second case is a case where a patent practitioner was caught up in a sting operation. The sting was searching for adults soliciting sex from minors in Seattle, Washington.