EDITOR’S NOTE: I will host a free webinar discussion about the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.
The American Invents Act (AIA) created three new ways to challenge the validity of claims in already issued patents. While the AIA was signed into law on September 16, 2011, the new post grant proceedings did not become effective until one year after the signing, on September 16, 2012. These three new post grant proceedings are post-grant review, inter partes review and covered business method review, which is a variety of post-grant review that is limited to business methods relating to the financial industry. Because post-grant review was specifically limited in applicability to patents that were examined under the new first to file law, only patents that have an effective filing date on or after March 16, 2013, are capable of being reviewed in a post-grant review proceeding. Therefore, so far the USPTO has only seen inter partes review and covered business method cases.
On August, 14, 2012, the United States Patent and Trademark Office promulgated final rules applicable to these new proceedings, and at that time the USPTO said that they anticipated that 420 petitions for inter partes review would be filed in fiscal year 2013. The USPTO also said they anticipated that in fiscal year 2014 there would be 450 petitions for inter partes review filed. See 77 FR 157 (August 14, 2012) 48713. The Patent Office severely under estimated the popularity of post grant proceedings, particularly inter partes review.
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.
Mark Twain wrote that a country without a good patent system is doomed to go only sideways and backwards.
Recently when looking at some new Hewlett-Packard patent applications and patents we stumbled on an interesting patent that issued on April 22, 2014. U.S. Patent No. 8694327, entitled Electronic Warranty System and Method, protects a method of applying a warranty to printer cartridges so that the warranty data is stored within the printer itself. This system offers a major improvement over organizational shortcomings to traditional warranties, or at least it did back when it was filed in 2002.
When reading patents it is not at all unusual for a patent to be issued a number of years after the original patent application was filed, but it isn’t every day that you see a patent issue more than 12 years after it was originally filed. Yet, that was exactly what happened with respect to the ‘327 patent application to HP. Worse yet, after HP successfully prevailed on claims in an appeal to the Board the case goes back to an examiner who for the first time raises a rejection never before made, while still continuing to make additional obviousness rejections. In short, this reads like the story of an application that examiners never wanted to issue in the first place.
Had the applicant been a small entity or individual it wouldn’t have issued. It would have been buried. Once upon a time Directors and Commissioners of the Patent Office used to believe that burying an application that should issue was as bad, if not worse, than allowing an application that shouldn’t have issued. Oh how the times have changed in this anti-patent world in which we live where it is better to not issue patents that should issue as long as we don’t accidentally issue something that might be embarrassing. And we seriously wonder why it feels like a recession never ended?
As has been recognized by many in the Patent Bar as well as by the USPTO itself, the unexamined patent application backlog has been a continual hamstring on the USPTO’s ability to move applications through the Office efficiently. As is evident from Figure 1 below provided by the USPTO, the number of applications filings at the USPTO continues to increase.
The red portions of the bars correspond to new non-provisional filings, and the blue portions of the bars correspond to RCEs.
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.
Arnold & Porter‘s Washington office is seeking a mid-level registered patent associate for the Intellectual Property Practice Group to work on USPTO inter partes matters. Qualified candidates should have a minimum of 3 years’ experience in patent prosecution and preferably exposure to inter partes matters and evidence of excellent writing skills. Candidates must have a PhD in the life sciences, material sciences, or biomedical engineering fields. DC bar or ability to waive into DC bar required.
A PhD in either the life sciences, material sciences, or biomedical engineering fields
A minimum of 3 years experience in patent prosecution
Must have excellent academic credentials
Must have excellent writing skills
Must be able to supply Arnold Porter with excellent references
“It’s never good news when your area of the law is on 60 minutes,” says Courtenay Brinckerhoff, partner at Foley & Lardner LLP at the 2013 AIPLA Annual Meeting. It’s no secret that the Association for Molecular Pathology v. Myriad Genetics case had more than its fair share of media buzz. The decision, holding that isolated DNA was not patent eligible, left many of us wondering how to best address the needs of our biotech clients going forward.
The main claims at issue in this case are the isolated DNA claims. Claim one is broad enough to cover naturally occurring DNA, and claim two is specific to synthetic DNA. In 2010, the district court came out with a decision holding that DNA was not patent eligible subject matter, which was a bit of a shock to us. Most of the rationale was focused on the idea that DNA embodies information, and regardless of what the actual molecule looks like, Myriad’s claim is for that defining characteristic. The case went up to the Federal Circuit where former chemist Judge Lourie held that technically the isolated DNA is different than natural DNA, because you have to break the covalent bonds to isolate the methylated gene. There were, of course, also policy reasons to uphold the claim like the reliance of the biotech industry on the USPTO already having granted these sorts of patents for nearly 20 years.
Many factors can influence prosecution strategies and decisions. For example, take a look at the chart below:
You do not have to look hard to find an example such as the one shown here. Over a period of about a year and a half, the applicant negotiated through a non-final action and then abandoned the application. The patent examiner assigned to the case on average issues a Notice of Allowance at approximately three years and five months. Might the applicant have obtained allowance had they hung on a little longer?
There is no way to know for sure whether the applicant could have achieved an allowance had they hung in, but it would have been helpful to know that the examiner was very experienced and likely had decision making authority. Such an observation would have given great insight into the fact that the examiner in question here has an overall allowance rate of nearly 70%. It no doubt would have also been helpful to know that after an interview in over 50% of cases, the next significant event following the interview was an allowance. In short, the statistical data shows that this was an experienced patent examiner who is interested in working with applicants and their representatives to identify allowable subject matter and issue patents where appropriate.
I have been preparing and processing patent applications for about fourteen years, primarily within the electrical, mechanical and software technologies. From my perspective, the issuance of restriction requirements seems to be somewhat random and inconsistent. It is often the case, in fact, that I do not get a restriction requirement when there might be a relatively good reason for one to be issued.
On the other hand, I have always heard that practitioners in the chemical and biotechnological arts suffer from a higher than average issuance of restriction requirements. I set this week to do a little research to see whether this assumption could be statistically validated using Patent Advisor Search Tool.
Restriction requirements are governed by MPEP § 806.06 . In a nutshell, a restriction requirement is to be issued by an examiner where there are multiple distinctly claimed inventions in one patent application and it would be overly burdensome for the examiner to go forward with one application. For patent prosecutors and their clients, restriction requirements represent a significant cost increase as splitting one patent application into several new applications results in the multiplication of fees and, often, loss of protection due to expense limitations. The pros and cons probably do depend on the technological context, however.
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.