Last week I was at the Patent Office interviewing a case along with Mark Malek, who was in town from Florida to talk firm business, look for office space and interview some patent agents regarding coming to work with us. The interviews lined up for this trip were all “Bilski-related,” in that the CAFC decision in In re Bilski was creating patentability issues. We learned that the sand is shifting with respect to the way the Patent Office is handling Bilski. What we learned is that things that we were doing in previous months are no longer acceptable. It seems that early last week a memo went out from the powers that be to the examiners handling Bilski-related applications, and in the memo it was explained that merely putting “computer implemented method” in the preamble of the claim is not something that will any longer work to overcome a patentable subject matter rejection under 35 U.S.C. 101. It seems that now you need to have “computer implemented method” in the preamble and there must also be positive recitation of “a computer” in the body of the claim. So the claims will now read something like “a computer implemented method… wherein the above steps are performed on a computer.” As Mark said, “talk about the Department of Redundancy Department!”
We joked about the redundancy required for a while, but if that is what it takes then we are up to the challenge, after all it would be extremely hard to argue after the patent issues that having “computer implemented method” in the preamble did not limit the steps to being performed on a computer. It just seems that the PTO wants “a computer” to be positively recited in the body, perhaps as a bright line rule to prevent any creative patent attorney from later arguing that the preamble is not limiting. Who knows? But what I do know is that we are on the cusp of three more Bilski successes.
The more I see and learn about Bilski the more I think it is not any real impediment to obtaining patents. In fact, I continue to believe that if the patent attorney or agent really understands computer technologies what Bilski does is provide a road-map to follow directly to the issuance of a patent. As odd as it sounds, I am also increasingly of the opinion that the problems surrounding the patenting of computer software are nothing more than attorney/agent problems. I increasingly hear about how some patent attorneys and agents are just not familiar with computer technologies, yet they try and operate in this space. That is extremely dangerous for the inventor though. Based on what I hear from inventors, and from examiners, it is no wonder Bilski is viewed by many to be a closed door. Apparently, there are some in the patent bar that believe printing from a computer is enough to define a computer implemented method. If that is true, I better understand the need for tighter rules. I just hope the Supreme Court doesn’t kill the golden goose. There are really a lot of unique and cool computer related methods that are true innovations.
To many who are uninitiated computer software inventions are quite amorphous and ill defined. When compared with mechanical and electrical inventions that can be touched that is true, but just because you cannot touch it does not mean it is not patentable. Additionally, if you really understand software and describe the invention well, there will be something there that is touchable and many somethings that are concrete and identifable. It unfortunately seems that some who are not knowledgeable in this area take the cases and just simply write the patent explaining the desired function, and not how to obtain that function. It seems to me that we should be handling these issues with enablement, not with patentable subject matter, but that is another topic for another day.
As with everything in life, when you are working on something and a related topic surfaces it always has more meaning. Last week was no exception. As I was just getting done with an interview I received an e-mail from Ron Reardon, the President of the National Association of Patent Practitioners, regarding interviews. This e-mail had this FYI information:
At a personal interview in the PTO yesterday, a SPE informed me that there is a new policy requiring the examiners to enter into the IFW whatever the applicant send the examiner in anticipation of a personal interview. Accordingly, anything sent via facsimile to the examiner’s personal fax number in anticipation of an interview will become part of the public record.
And then this response from another attorney:
We just changed our rules so, in the future, you cannot email or send proposed amendments without them going in the records.
After having what I believe was an extremely fruitful interview, I have to say that in person interviews are definitely the way to go, particularly if everything is going to go into the file. Of course, I am located in Northern Virginia and that does make it easy to get to the USPTO to meet with an examiner in person when necessary. In any event, if you really need to have a frank discussion with an examiner and want to propose some alternatives in writing to jump start the conversation it seems like the telephonic interview is no longer the most desirable way to proceed. We all know what happens when anything candid gets into the file, and there is simply no reason to provide that kind of fodder for litigators down the road. Why go to the expense and effort to get a patent that provides obvious opportunity for it to be picked apart?
Going into the interview last week I was not really sure what to expect. It seemed as if an extremely popular reference for this technology was not considered by the examiner, and it was certainly not a part of the Office Action. This together with certain things that came up during the case rose questions whether the examiner was understanding the invention. It became readily apparent that the examiner was on top of everything, knew about this reference and did not consider it to be relevant for a just reason, but did express willingness to consider the reference so that a patent litigator cannot trick a district court judge later into the erroneous belief that a critical reference was not considered. It was good to see that the examiner was on the ball and knew the invention, and that we were able to figure out exactly what needs to be done in the Request for Continued Examination (RCE).
If you can talk the client into an in person interview, I definitely highly recommend it given the new Office policy regarding faxes and e-mails. Dangling your interest in figuring out what needs to be done so a productive RCE can be filed that will make the case immediately allowable also has benefits as well. At the end of the day all we want are patents for our clients, and if that requires an in person meeting and an RCE, and maybe the addition of some redundant language that does not narrow the claims, sigh me up! I like this more friendly Patent Office that is interested in working together to find language that is allowable, and I like it even more that examiners do not seem troubled by Bilski in the least.