UPDATED May 16, 2013 at 8:56pm

EDITOR’S NOTE: An earlier version of the article below contained inaccuracies. It was erroneously stated that SPE Len Tran had not allowed any applications since 2008. As a supervisor he oversaw the work of Junior Patent Examiners and was the decision maker on hundreds of patents since 2008.

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There is a story circulating the Internet over the last few days about an alleged filing with the USPTO. I initially decided to ignore this for several reasons. First, it is impossible for me to believe that a patent attorney actually filed this with the Patent Office, although I could see it being put together for internal use as a cathartic exercise. Second, alleged filing is dated April 24, 2013, but still does not show in Public PAIR. Third, the Art Unit listed in the heading of the alleged filing is Art Unit 4188, which does not coincide with the Art Unit according to the final rejection (i.e., the final rejection comes from Art Unit 3752). Thus, I have my suspicions about the authenticity, but on Monday CBS News published an article discussing this alleged filing under the title The letter to the Patent Office you have to read. So the matter is now out in the open.

Perhaps this really was filed, who knows. If it was filed we will eventually be able to find a copy of the filing on Public PAIR. In the meantime I’m going to continue to refer to this as an alleged filing. Notwithstanding, here the colorful comments from the Remarks section, which seem to be the only thing that makes up the filing.

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.

Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the launch of a permanent Patent Prosecution Highway (PPH) program with the Taiwan Intellectual Property Office (TIPO). The permanent PPH program, which started on September 1, 2012, will continue to permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality.

“This new partnership is further evidence of the growing, global appeal of the PPH and the importance of work sharing to improving the international patent system,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

The America Invents Act (AIA) has now gone through its second phase of implementation.  Initially there were few things that went into effect over the initial 90 days after President Obama signed the legislation into law.  The first major wave of the AIA took effect on September 16, 2012.  See, for example, Citation of Prior Art, Supplemental Examination, Oath/Declaration and Post-Grant Review et al. The most significant of the changes to U.S. patent law, namely the shift from first to invent to first to file, will not take place until March 16, 2013.  This is a monumental change to U.S. patent law so it is never too early to discuss the many issues that will present with this shift.

The first and most obvious place to begin any discussion of the shift to first to file is with a very basic question: What is prior art?  This is anything but an easy, straight forward question even under first to invent laws that we know so well and have been familiar with virtually throughout the entire history of the United States.  The complexity in what seems an otherwise simple question stems from the fact that prior art is defined by statute.  There is no common sense way to conceptualize what is, or what is not, prior art.

WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the October 1, 2012 launch of a new Patent Prosecution Highway (PPH) with the patent office of the Czech Republic, and the planned launch of two additional PPHs with the patent offices of the Philippines and Portugal in January 2013. The expedited examination in each office will allow applicants to obtain corresponding patents faster and more efficiently in each country.

Under the Patent Prosecution Highway, an applicant receiving a ruling from one participating office that at least one claim in the application is patentable may request that the other participating office fast track the examination of corresponding claims in their application filed in the other office.  The PPH will allow applicants to obtain corresponding patents faster and more efficiently.

One of the primary objectives of the America Invents Act (AIA) was to streamline the filing and prosecution of patent applications.  Under the AIA, the oath or declaration requirements for applicants have been substantially modified, with assignees now being permitted to apply for patents effective September 16, 2012.  Provisions of the AIA (35 USC § 118) allow an assignee, or one to which the inventor is obligated to assign the invention, to make an application for patent.  Additionally, a party who has a “sufficient proprietary interest” in the invention may make an application for patent as an agent of the inventor upon “proof of pertinent facts” of such interest.

35 USC § 115(d) permits the “applicant” to make a substitute statement in lieu of an oath/declaration under certain permitted circumstances, such as the death or incapacity of an inventor or an inventor’s refusal to sign an oath/declaration when the inventor is under obligation to assign the invention to the applicant.  Also, an “individual” under obligation to assign can now, in an assignment document, make the required oath/declaration and other requirements as instituted by the Director under §§ 115(b) and 115(c).

On July 19, 2012, I interviewed Bob Stoll, former Commissioner for Patents of the United States Patent and Trademark Office.  The interview took place in a conference room at Drinker Biddleon K Street in Washington, D.C.  After 29 years working for the USPTO and a total of 34 years working for the government, Stoll retired on December 31, 2011.  He then started his new, second career as a private citizen and all around patent specialist at Drinker Biddle in the firm’s Intellectual Property Group.

In part 1 of my interview with Stoll we discussed his adjusting to life in the private sector, the fact that he doesn’t enjoy the billable hour part of private practice (just like every other attorney I know) and we discussed politics a bit, as well as the U.S. economy and innovation policy.  Part 2 of my interview, which appears below, picks up where we left off discussing Presidential politics and the buzz that engulfs D.C. every 4 years.  We then move on to talk about how innovation drives the U.S. economy and I get his thoughts on why we haven’t seen a great new technology that has spawned an entirely new industry as we have coming out of so many recessions in the past. We then finish part 2 discussing changes to the patent examination process and how to streamline the examination process.

I am in the middle of my busy travel season, criss-crossing the country with John White teaching the PLI Patent Bar Review Course.  About every 3 weeks from mid-spring through the end of the first full week of August we are on the road, lecturing all things patent practice to would-be patent attorneys and agents.  Lecturing on a variety of topics relating to patent prosecution keeps me up to date on the latest changes, but also keeps me intimately familiar with some of the — shall we say stranger rules of practice and procedure.  One such peculiar rule set that applies to a relatively simple aspect of the practice are the rules relating to general authorizations.

A general authorization to charge all fees, or only cer­tain fees, to a deposit account containing sufficient funds may be filed in an individual application.  Such an authorization to charge fees can, generally speaking, pertain to the entire pendency of the application or be used with respect to a particular paper filed at any time.  A general authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time that may later become necessary.  Thus, having a general authorization on file with an adequately funded deposit account can be exceptionally helpful.

And round 2 of the implementation of the America Invents Act (AIA) at the United States Patent and Trademark Office (USPTO) has begun.  Earlier today the USPTO published final rules to implement the preissuance submission provisions of the AIA. The preissuance submission final rules appear in the Federal Register and set forth the procedure that a third party must follow to submit patents, published patent applications, or other publications of potential relevance to the examination of another’s pending patent application.

“The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The agency is please to publish the preissuance submission final rules in the Federal Register several weeks before September’s effective date of the provision to give stakeholders ample time to learn the requirements of the final rules.”

On July 9, 2012, the United States Patent and Trademark Office (USPTO) announced that they are extending the First Action Interview (FAI) Pilot Program.  The extension of the program will be in conjunction with a comprehensive review of the program to determine whether any adjustments should be made to the program.  Further inquiry will be made into whether the program should be extended further or made permanent.  During its review, the Office will consider feedback from both internal and external stakeholders. Accordingly, in addition to announcing the extension of the program, the Office is requesting comments on the program.

The FAI Pilot Program is intended to expedite disposition of an application by enhancing communication between an applicant and an examiner at the beginning of the examination process. Specifically, the program allows an applicant to have an interview with an examiner prior to the issuance of an Office action, but after receiving the examiner’s search results and initially identified issues. It is the belief of the USPTO that by fostering this early communication the patent practitioner can bring the patent examiner up to speed quickly on the substance of the invention, while the patent examiner can discuss the prior art with the practitioner in an effort to crystalize issues before work even begins on a First Office Action.

Although a patent application is not a sales pitch per se, most inventors will find it quite helpful to list as many descriptive objectives of the invention as is possible. As a general rule you should, however, stay away from laudatory language and puffery (e.g. “the best gadget known to man” or “the perfect solution” or “using this tool is unquestionably the choice any professional would make”).  When you puff the tendency is to skimp on the descriptive details, which are essential to an appropriate patent application.  Further, is anyone really likely to take your word for it being “the best”?  That is why infomercials demonstrate the functional capabilities of an invention.  In a patent application you need to describe the functionality and leave the selling to the salespeople later.

By way of example, many times inventions are not one of a kind, but rather they are improvements upon existing solutions. In this situation it is common that the advantage of the new invention lies in that it is cheaper to make, easier to use, more efficient, less noisy, easier to clean, more durable, stronger, faster, more resilient, etc. etc. These are things that you should include in your disclosure, but frequently this type of patentably relevant information is not conveyed with as much detail as possible and appropriate.

On November 10, 2010, the United States Patent and Trademark Office  (USPTO) and the United Kingdom Intellectual Property Office (UKIPO) initiated a work sharing arrangement whereby each office would utilize the work product (i.e., search and examination results) of the other office.  By sharing work product and relying, at least in part, on the efforts of another office it was believed that the patent process could be expedited and the growing backlog of patent applications alleviated by not having to re-invent the wheel (so to speak).  Specifically, the program sought to increase the efficiency of the patent application process and improve quality in the examination process.

In order to assess the success of the program the USPTO and UKIPO collaboratively developed an examiner survey designed to empirical data to be used for assessing the impact of work sharing on both efficiency and quality.  Examiners from both the USPTO and UKIPO were asked to complete the survey, and the preliminary report that presents the results from these surveys was released earlier today.

Just over three weeks ago the United States Supreme Court issued a decision in Mayo Collaborative Services v. Prometheus Laboratories, which sent much of the patent world into a whirlwind.  In that decision the Supreme Court unanimously found that the claims at issue did not exhibit patent eligible subject matter because the additional steps that were added to the underlying law of nature were well known in the industry.  A curious ruling for many reasons, and one that will have to be digested over many years as the United States Patent and Trademark Office and the Federal Circuit struggle to figure out how Diamond v. Diehr remains good law (it was not overruled) and remains consistent with a ruling that seems completely inapposite.

To continue to provide a variety of perspectives on this landmark ruling what follows is the reactions of those in the industry. Without further ado…

 

Elizabeth J. Haanes, Ph.D.
Director at Sterne, Kessler, Goldstein & Fox PLLC

A dissection of most any patent claim will reveal, at some level, a law or a product of nature. The holding in Prometheus does not hinge on whether a naked “law of nature,” e.g., gravity, is patent-eligible–clearly it is not. Rather, the question we will be grappling with in the coming years is: what additional elements must be included in the claim to render the claim sufficiently “unconventional” or “inventive” so as to confer patent-eligibility? The claims in Prometheus, included steps in addition to the “law of nature” that were determined by the Federal Circuit to be transformative. The Supreme Court, however, concluded that the steps were insufficiently “unconventional” to confer patent eligibility. In contrast, the Court distinguished a patent-eligible “law of nature” claim in the landmark 1981 Supreme Court case Diamond v. Diehr as “add[ing] to the [law of nature] something that in terms of the patent law’s objectives had significance–they transformed the process into an inventive application of the formula.” (Prometheus. at p. 12).

All too often inventors and entrepreneurs spend so much time creating that they have their head down, plowing forward, focusing only on the day to day operations associated with inventing and growing a business. Almost without fail, inventors know very well what they have invented and what they plan to do, but they have a terrible sense of what their invention could be. Just the other day I had a conversation with an inventor who thought we might not be understanding his invention because the first draft of the patent application seemed to miss the simplicity of his invention. Our job as patent attorneys is to not only try and protect the invention presented, but to work with the inventor to figure out the full glory of what the invention could be and what it could evolve into.

A patent application should certainly protect what the inventor is doing and what they want to do, but remember that in order to get a patent you do not have to produce a working prototype. You just need to be able to explain the invention with sufficient detail so that others skilled in the relevant technology area could both make and use the invention themselves without having to engage in undue experimentation. What is “undue experimentation” is a topic for another day, but suffice it to say that invariably what the “invention” is from a patent perspective is much broader than what an inventor thinks they have, and that is one critical reason (among many) why if you can afford to hire a patent attorney or patent agent you are always going to be better served by doing so and will wind up with much broader protection than doing it yourself.

Memorandum of Understanding on Patent Prosecution Highway (PPH) Program signifies cooperation between the U.S. and Hungary in intellectual property rights.

Washington – The United States Patent and Trademark Office (USPTO) and Hungarian Intellectual Property Office (HIPO) signed a Memorandum of Understanding making permanent the Patent Prosecution Highway (PPH) program between the two offices and setting forth the common desire to implement further developments of the PPH program during a high level event in Budapest honoring Hungarian inventors and innovative companies.

“This Memorandum of Understanding marks a significant milestone of achievement in patent cooperation between our two offices,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “It will promote high quality patents and expedite processing of applications in both offices by avoiding duplicative work and provide greater costs savings to applicants which will help to spur greater innovation and generate greater economic growth and job creation in both countries.”