Posts Tagged: "Kip Werking"

Ex Parte Yudoovsky: Petitions Are (Sometimes?) Unnecessary to Traverse Unauthorized New Grounds of Rejection on Appeal

The Board of Patent Appeals and Interferences did something fascinating in Ex Parte Yudoovsky. The Board sua sponte declined to consider an unauthorized new ground of rejection—even though the appellant never filed a petition. In other words, the Board refused to consider a new ground of rejection, because the Examiner failed to designate the ground as “new.”

The Ghost of Lemelson: PTA Consequences of Exelixis v. Kappos

On November 1, 2012, a federal district court (EDVA) issued an order that may have profound consequences for calculations of patent term adjustment (“PTA”). The district court believed that the PTA promised by 35 USC § 154(b)(1)(B)(i), which relates to Requests for Continued Examination, only comes into play if a RCE is filed within the three-year period from the application’s filing date. Before discussing the court’s order, let me review the law and regulations about PTA—which can be complex. In 1994, Congress altered the calculation of U.S. patent terms. Previously, Congress set the patent term as 17 years from patent issuance. After the change, Congress set the patent term as generally 20 years from the filing of the patent application.

Against the Broadest Reasonable Interpretation of Patent Claims

Even if the BRI rule made sense in 1932—and it is not clear to me that it ever made sense—the rule no longer makes sense. Dramatic changes in the field of patents have undermined even the alleged reasons for the BRI rule. The solution to the problem of the BRI rule is to replace it with the only rule that is natural and makes sense. After 80 years of inventors suffering under the BRI rule, it is time for Congress or the Supreme Court to say: regardless of whether the patent application has been granted, the claims mean the exact same thing. Always.

The Illogic of the Algorithm Requirement for Software Patent Claims

Recently, patent scholar Mark Lemley has renewed attention to software claims under 35 U.S.C. 112, sixth paragraph. Lemley encourages strict application of the algorithm requirement to police software patents and resolve these concerns. Unlike Lemley, I am convinced that the algorithm requirement makes no sense. The problem is not that the concern about broad software claims is unjustified. The problem is that, even if the concern is justified, the algorithm requirement does not solve it. At least, the requirement does not solve the problem in an appropriate way.

75% – The Real Rate of Patent Applicant Success on Appeal

The biggest myth about patent appeals is that that the examiner usually wins. The Patent Trial and Appeal Board (“Board”) posts that it reverses examiners only one out of every three decisions —33%. That number is accurate, and reflects the percentage of reversals among Board decisions. But another number is more helpful — 75%. That is the rough percentage of reversals among all appeals—not just Board decisions. The difference arises because not all appeals result in a Board decision. In fact, the vast majority of appeals (80%) never reach the Board. The Board’s 33% number has nothing to say about this invisible sea of patent appeals.