Posts Tagged: "patent applications"

Hirshfeld explained to me that he is well aware of all of the portfolio reasons why continuations are very important, but the Office does really want to minimize RCEs, which makes all the sense in the world. An RCE is not a new application, is essentially just payment for additional consideration by an examiner. RCEs, while sometimes necessary can and do become inefficient and attempts to streamline the prosecution process have long tried to make them unnecessary in whole or in part to the extent possible.

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed in this manner but other types of inventions can be defined in terms of a numerical range such as a length as well. In re: Brandt (Fed. Cir. March 27, 2018) explains that very small differences in the respective ranges can support an obviousness rejection unless the inventor shows a meaningful difference exists.

Over the next few years, the most interesting intellectual property trend to watch will be what happens with new patent applications. The number of utility patent applications filed in the United States declined in 2015 (compared with 2014) and again in 2017 (compared with 2016). If the downward slide continues, will this be due to smarter filing strategies, or will it be because less emphasis is being put on patents? Will it be because more emphasis is being placed on trade secrets? Is it because of an unfavorable climate in the United States for certain types of inventions? Filings in other parts of the world are on the rise at a time when U.S. utility applications are either stagnant or in decline. Could it be because patent applicants are moving elsewhere?

As autonomous vehicle and mobility technology continues to make headlines, federal legislation is making its way through Congress with the goal of removing government hurdles for the development, testing, and rollout of innovations in this space. Although this legislation primarily implicates R&D activity, IP portfolio managers at automotive OEMs and suppliers should be aware of several proposals that may ultimately impact patent filing strategies and information compartmentalization best practices in order to reduce risks from disclosure requirements that are part of the current legislation.

In the last several months, lack of a reasonable expectation of success was a major factor in the reversal of two obviousness rulings by the Federal Circuit. One originated from the Patent Trial and Appeals Board (“Board”) (In Re Stepan Company, Aug. 25, 2017) (“In re Stepan”) and the other from a district court Genzyme Corporation v. Dr. Reddy’s Lab., Dec. 18, 2017, (“Genzyme”). In re Stepan emphasizes that reasonable expectation of success requires a motivation to do more than simply vary all parameters or try all possible choices until success is achieved. In Genzyme, the Court explained that a hypothesis presented in passing in a reference, without more, is not enough for an ordinarily skilled person to have a reasonable expectation of success. While In re Stepan has relevance for patent applicants facing conclusory obviousness rejections, Genzyme is cautionary for patent challengers banking too heavily on isolated, unsupported statements as a basis for obviousness.

On January 19th, Facebook CEO and founder Mark Zuckerberg announced that his company would increase its efforts against “fake news” by asking its users to rate the trustworthiness of news sources being posted to the social media platform. Zuckerberg wrote that Facebook will utilize ongoing quality surveys to ask users if they are familiar with a particular news source. Using this data, Facebook will then rate each publication based on the user ratings and prioritize those that are most trusted to surface on news feeds. “There’s too much sensationalism, misinformation and polarization in the world today,” Zuckerberg wrote. “Social media enables people to spread information faster than ever before, and if we don’t specifically tackle these problems, then we end up amplifying them.”

So what is an admission? A statement made during patent prosecution identifying the work of another as prior art is called an admission. Admissions can and will be relied upon by patent examiners for both novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103) determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the express terms of the statute. Admissions should be avoided at all costs, regardless of how innocent they seem to be. This is a lesson that all new patent practitioners and inventors need to take to heart. No matter how innocuous the statement may seem, always remember that no good deed will go unpunished! Everything you do say can and will be used against your patent once it issues — forever.

On the ground, the New York Police Department (NYPD) deployed a team of 14 Labrador retrievers trained to detect explosives worn on the bodies of people in the crowd. This team of powerful pups added an extra layer of security to the event, which attracts more than 3.5 million spectators every year. Such a throng raises many crowd-control and terrorism concerns for its host… These super sniffers are trained using the patented “Vapor Wake” method, which enables dogs to smell body-worn bombs and other illicit substances in large crowds from as far away as the length of a football field.

The Brazilian Government is considering the adoption of an emergency measure to eliminate the Patent Office chronic backlog problem by automatically granting, without examination, 230,000 pending applications until 2020. The emergency measure has been labelled by the Government as an “extraordinary solution” and a draft of the plan was introduced for public discussion. Companies may soon need to deploy a strategy within a time-frame as short as 90 days to take full advantage of the new system while minimizing potential risks… For the past 15 years, Brazil has been enduring one of the world’s most severe patent backlogs. The problem has grown considerably after the enactment of the 1996 Patent Statute, which was adopted to make the country TRIPS compliant.

When a rule becomes a target, it ceases to be a good rule.  In the three years since the Supreme Court issued its opinion in Alice, there have been positive changes to patent applications, but there remains a long-term risk that patent practitioners will use tricks to beat the Alice test.  Here, we focus on the changes to patent applications by drafters, as well as changes to patent applications that have issued since Alice… Previous analyses have reported that patent specification length has been increasing since long before 2010. As shown in Figure 3, from 2010 to 2013, the average patent application length was approximately 12,417 words. However, from 2015 and 2017, the average patent application length increased to over 14,700 words… Alice appears to have resulted in positive developments, such as narrowing the scope of claims and increasing disclosure of technical benefits of inventions in the specification.

The purpose of the written description requirement is broader than to merely explain how to make and use the invention, which is the subject of the enablement requirement. Rather, to satisfy the written description requirement the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention… While the written description is just that – written – having multiple drawings that show the invention and various aspects of the invention from a variety of viewpoints can be extremely helpful. This is because every figure should be described with at lease one paragraph of text, frequently more.

One of the most valuable benefits of Open Prosecution is when a patentee is forced to enforce a patent. If the patentee filed for a Continuation, it could file for an additional patent with new Claims but the same Priority Date as the original patent, and add it to the lawsuit. And, of course, before that second patent is issued, the patentee files for yet another Continuation. The plaintiff in a patent infringement lawsuit can use an Open Prosecution model to continue to introduce new patents as a counter-strategy to the IPRs filed by the defendant. More than a few patent infringement lawsuits ended in favorable settlements once the defendant realized it had a formidable opponents with additional patents up its prosecution sleeve.

The enablement requirement is specifically aimed at ensuring the claimed invention is described with sufficient detail so the relevant person of skill in the art or technology area will understand both how to make and use what has been actually claimed in the patent… While there is no particularly concrete and useful definition for what specifically constitutes undue experimentation, the requirement generally mandates that the description explain the invention so that it could be made and used without individuals having to go through a trial and error process in order to figure it out for themselves. In other words, the invention must actually teach so the invention can be achieved.

When drafting a patent application it is always the best policy to never assume anything. It is dangerous to assume that the reader will fill in any ambiguous holes in the manner you desire, and as here, if what you literally say is clear you run the very real possibility that an assumption on your part will wind up meaning something very different than you intended because you did not take the time to go the extra step to remove all doubt.

Today’s environment demands an agile approach, one that involves substantial up-front planning, followed by continuously learning from both the client and the marketplace, using a strategy that involves constructing a defensive and offensive patent portfolio from a collection of laser-focused patents, rather than a single overarching patent intended to cover the invention in one fell swoop… More concretely, the strategy that we typically follow nearly always avoids the need to appeal, and therefore avoids the pitfalls of the PTAB, as follows. The foundation is to write a solid and comprehensive patent specification, one that is intended to cover the invention both broadly and deeply, in an effort to enable as many embodiments as possible for as long into the future as possible, encompassing both the client’s and competitors’ technologies. The first patent application that we file, however, typically has relatively narrow claims for a variety of strategic reasons…