Posts Tagged: "patent prosecution"

On November 4, the U.S. Patent and Trademark Office (USPTO) hosted a webinar regarding the agency’s recent request for comments (RFC) on initiatives that the USPTO is exploring to enhance the robustness and reliability of patent rights issued by the agency. While the USPTO senior legal advisors moderating the webinar indicated that the agency was interested in hearing all viewpoints, the types of initiatives being considered could lead one to believe that ensuring robust and reliable patent rights means encouraging fewer U.S. patent filings.

Without unlimited funds, a constant issue for developing and maintaining a patent portfolio is how to balance between obtaining the highest quality patents and obtaining patents at a lower cost to grow a portfolio. When biasing towards a reduced cost, some aspects of a well-written patent application may also be sacrificed. Some of these items may be more critical to a patent that is likely to be enforced, whereas other items may be more valuable to building a robust patent family based on that disclosure. In any event, there is always an opportunity to pursue a patent with a strategic focus. The below non-exhaustive list includes some common items that may be included in a more comprehensive patent application preparation and prosecution process that aims for higher quality and other items that may be sacrificed in a more cost-sensitive patent application process. Of course, the approach here does not recommend removing or foregoing any items from the patent application process, but these items are available for consideration when there are budgetary constraints.

The U.S. Patent and Trademark Office (USPTO) is currently assessing comments collected pursuant to a pair of requests for public input, one focused on the agency’s subject matter eligibility guidelines for examining patent applications for 35 U.S.C. § 101 issues, and the other seeking feedback on several practices surrounding patent validity trials at the Patent Trial and Appeal Board (PTAB). While the PTAB practices request for comments appears to have spawned a copy-and-paste comment campaign involving thousands of boilerplate comments, about two-dozen comments filed on the Section 101 guidelines featured far more sophisticated views on actions that the USPTO should be taking to improve patent examination practices on patent applications that trigger issues with judicial exceptions to Section 101 eligibility under U.S. Supreme Court case law.

The United States Patent and Trademark Office (USPTO) is overestimating the term of some of the patents it issues. The general rule is that a patent expires 20 years after the priority date of the application. This rule means that the longer the USPTO is processing an application, the fewer days of term the patent will enjoy if granted. To prevent substantial decrease in the term, Congress instructed the USPTO to extend the life of patents that have suffered delays during prosecution. This extension is known as Patent Term Adjustment (PTA). In addition, Congress burdened the agency with telling the patent applicants how much PTA they are entitled to. To tackle the resulting workload, the USPTO designated the task of applying complex PTA rules to a computer software.

It is sometimes said that a lie gets halfway around the world before the truth has a chance to get its pants on. We have found, however, that it is often the slow-and-steady truth that wins the race in our deliberative justice system, which for patents has both administrative and judicial components. Our case-in-point is the Federal Circuit’s recent decision in Cooperative Entertainment, Inc. v. Kollective Technology, Inc., which reversed a Rule 12(b)(6) dismissal on patent ineligibility under 35 U.S.C. § 101. This case demonstrates how an invention that is potentially assailable on eligibility grounds can be given its best chance by a focused, consistent and synergistic patent prosecution and litigation strategy. Thus, it is not coincidental that your authors are a patent litigator and a patent prosecutor, respectively.

Alice Corp v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) sent rejections under 35 U.S.C. § 101 skyrocketing from under 10,000 per year prior to the Alice decision to nearly 35,000 the year the Supreme Court handed down its decision (2014). Peaking at just over 100,000 rejections in 2018, the USPTO’s January 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) helped to stabilize and ultimately lower the number of rejections under Section 101 to just over 20,000 in 2021. Though this number may continue to drop – the data on Section 101 rejections for 2022 is not yet complete – one thing is for sure: The number of rejections under Section 101 post Alice still far outnumber the Section 101 rejections made prior to Alice by at least 10,000 per year. As illustrated in Fig. 1 (data gathered using juristat.com), the majority of rejections under Section 101 made since 2014 are still Alice rejections, which leaves room for this number to decrease further.

The United States Patent and Trademark Office (USPTO) would like public comments on how to update the 2019 Subject Matter Eligibility Guidance. The agency is also seeking comments on how to improve the robustness of the patent system overall. This article/video is in (unofficial) response to both of these requests for comments. The current mess surrounding subject matter eligibility in the United States is an offspring of a much deeper problem in patent law, which is that there is practically no standardization in patent practice. In medicine, U.S. doctors are trained by standardized practices through rotations and residency programs such that when they begin practicing, a doctor graduating in Florida will not practice medicine vastly different from a doctor graduating from medical school in California, for instance. Instead, the idea is that all the graduates will approach medical treatment in a standardized way so that the public has a lot more faith in the medical community.

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.

The United States Patent and Trademark Office (USPTO) announced today that it is seeking comment from the public on “proposed initiatives directed at bolstering the robustness and reliability of patents to incentivize and protect new and nonobvious inventions while facilitating the broader dissemination of public knowledge to promote innovation and competition.” During IPWatchdog’s LIVE event in Dallas, Texas, in September, USPTO Texas Regional Office Director Hope Shimabuku explained that issuing “robust and reliable patents”—which seems to have replaced the oft-maligned term, “patent quality,”—is a key focus for USPTO Director Kathi Vidal. The request for comment (RFC) tackles this problem from a number of angles, from fee-setting to terminal disclaimer and continuation practices, to improving prior art searches. The RFC stems in part from a July letter sent by the USPTO to the Food and Drug Administration (FDA) outlining the USPTO’s planned initiatives to help combat perceived links between patents and drug pricing problems.

In Part I of this series, we discussed  the importance of identifying and avoiding patentability-blocking ambiguities in a patent application. It is equally important that the patent application drafter bring a sensibility to the drafting of the application that recognizes that conceptually the application must not  simply be seen as a document whose job is to describe an invention but must also be understood to be a document that must have a descriptive capability that enables it to distinguish patent worthy subject matter from prior art. Thus, when the patentability of patent worthy subject matter disclosed by the application is challenged, the application can speak—it is able to defend its patentability. This capability is essential in both pre and post grant forums.

Patent claims define the boundaries of an invention and are meant to state with clarity what the patent protects. Having clearly constructed claims also proves valuable during infringement assertions. These well-known guidelines should be at the forefront of the patent practitioner’s mind when drafting solid-form claims. Patent attorneys practicing in the chemical arts use two primary methods of claiming chemical compounds. The first method relies on chemical nomenclature to describe a claimed chemical compound. Take for example, the drug Wakix® (U.S. Patent No. 7,169,928), in which the active ingredient, pitolisant, is claimed to reference its chemical name without drawing a corresponding structure. The second method claims the drawn chemical structure of a compound. Of course, there are intermediate ways to claim chemical compounds where both names and structure are used to define the scope — especially with genus and sub-genus claims.

Inventors and practitioners alike are continually trying to push the bounds of protection on innovations. Whether it’s describing a telegraph as a means for communication or a lightbulb as a means for lighting an environment, using broad language, like “means for” language, to cover all the possible workarounds might seem more advantageous than disadvantageous, at first glance. In patent law, this broad language or “means for” phraseology is called functional language because it describes the device or system in terms of what it accomplishes rather than the actual structure. However, using functional language has lost favor over time. For example, a blog published by Patently-O in 2011 shows that the use of “means for” language has dropped precipitously from about 1990 to present day. What has turned this seemingly advantageous practice into a disadvantageous one?In this episode of Patently Strategic, the panel walks through several court cases that either: invalidated a patent for failing to define structures in the specification for the all the means-plus-function claim terms or maintained validity of the patent because the specification provided sufficient structure for all the means-plus-function claim terms.

Patents that are expected to protect a company’s most valuable innovations must stake a claim to that innovation and be equipped to defend it. This is because being worthy of patent protection doesn’t guarantee that an application’s claims to an innovation will not be rejected and rights to that innovation jeopardized. A major reason for this is that an examiner’s interpretation of a claim drawn to an innovation that may be worthy of patent protection may cause them to determine that the subject matter as claimed is not patentably distinct from the prior art. Such an interpretation can block the patentability of the claim in the absence of evidence that the examiner’s interpretation of the claim is not reasonable. Structural weaknesses of the detailed description that may or may not be addressed by patent drafting orthodoxy can result in a lack of a capacity to successfully manage challenges presented by an examiner’s interpretations of subject matter set forth in claims. An unorganized capacity to respond to such rejection challenges often leaves the practitioner with very little alternative but to amend claims in a manner that narrows protection to less than what the applicant’s invention should have received.

Inventor Gilbert Hyatt, who has been embroiled in litigation with the United States Patent and Trademark Office (USPTO) for decades, lost his latest case at the U.S. Court of Appeals for the Federal Circuit (CAFC) when the court ruled today that an examiner’s restriction requirement was permitted under 37 C.F.R. § 1.129 (“Rule 129”). The case relates to Hyatt’s U.S. Patent Application No. 08/435,938, which was filed on May 5, 1995, and falls within the so-called “GATT Bubble.” The GATT Bubble is the term applied to patent applications filed but not yet granted before the Uruguay Round Agreements Act (URAA), which amended the U.S. patent term to 20 years from the effective filing date, took effect on June 8, 1995.

In a June 20, 2022, article on IPWatchdog, I addressed a portion of the June 8, 2022, letter from Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun  to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal requesting the USPTO to issue a notice of rulemaking or request for comments in the Federal Register by September 1, 2022, on curbing continuation practice as a means to address “patent thickets.”  As of the date of this article, the USPTO has not issued the notice. In this article, I, along with co-author Anthony Prosser, address the other issue raised in the Senators’ June 8 letter—whether elimination of terminal disclaimers that “allow” patents to issue that are “obvious variations of each other” would increase patent quality and whether patents that are tied by a terminal disclaimer should be considered an admission of obviousness and stand or fall together in litigation.