Posts Tagged: "patent examiner"

In Part I of this article, we examined the top three rejections for design patent applications, which are due to non-enablement, inconsistency, and ambiguousness. The fourth most common reason for rejection of design patents is for objections to the drawing disclosure, which we will discuss here. Objections to the drawings occur when something is incorrectly shown in the drawings, but the drawings are still understood by the Examiner. In the stereo receiver example above, if the bottom plan view was present in the original disclosure but the front elevational view did not show shading on the feet, the Examiner would likely issue an objection, stating that shading was not shown on the front surface of the feet and should be. (If the bottom plan view was not part of the originally filed drawings, then the Examiner would be issuing a Sec. 112 rejection instead of merely an objection since there’s not enough information to understand the shape of the feet and the feet will have to be disclaimed by converting them to broken lines.) Objections to the drawings are usually easy to overcome, but they still must be overcome by submitting replacement sheets. This decreases the efficiency of your operation and increases client costs, so objections are important to minimize by carefully reviewing your drawings before submission.

Several weeks ago, in a non-precedential opinion, the Court of Appeals for the Federal Circuit issued a decision in In re: David Tropp, which vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB). The PTAB decision had affirmed an examiner’s rejection of a patent application covering a luggage inspection technology. The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Raymond Clevenger and Kimberly Moore determined the PTAB erred in its written description analysis by failing to consider all of the language of the specification as filed when determining whether there was sufficient support for the claimed invention. “Even if it is new matter, the language in the ’233 application as filed is relevant to assessing compliance with the written description requirement,” Judge Moore wrote. “The Board’s failure to consider this language was erroneous.”

According to statistics provided by the USPTO, since the beginning of fiscal year 2012, the Office has received a total of only 1,584 third-party submissions of prior art for consideration by patent examiners. The high water mark occurred in 2016, when the office received a total of 329 third-party prior art submissions. This declined to 266 submissions in 2017 and in fiscal year 2018, the USPTO received a total of only 141 prior art submissions.

In an ideal world, your chance of getting a patent allowed is based on the merits of your patent application and independent of the largely random assignment of the patent examiner.  As any patent attorney knows, however, this is not the case.  Some examiners allow patents too easily and others seem predisposed against allowing any patents at all… The patent application grant rate across the USPTO is 66%.  One would expect that a distribution of examiner grant rates would follow a bell-like curve with a reasonably small standard deviation, but that is not what the data shows.

The patent process is long and complex, but well worth the effort if it means protecting your invention and your new company. Key decisions made along the way can help simplify future steps in the process and make obtaining a patent significantly more efficient. Early on, determining a patent scope through patentability searches can help narrow a patent application to the important novel aspects that are most worthwhile to protect. Similarly, preparing a thorough provisional application can make the non-provisional application preparation much simpler and afford better protection against later published works or filings by others. By thinking about these key decisions ahead of time and being aware of the patent process, you can be more prepared when the time comes to seek protection for your invention.

On Friday, June 1st, the Court of Appeals for the Federal Circuit issued a decision in In re: Durance striking down a decision by the Patent Trial and Appeal Board (PTAB) that affirmed a patent examiner’s obviousness rejection of a microwave vacuum-drying apparatus and associated method. The Federal Circuit panel consisting of Judges Alan Lourie, Jimmie Reyna and Raymond Chen…

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the memo recognizes the Federal Circuit’s recent decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and instructs examiners to abide by its holding. Berkheimer itself held that the question of whether certain claim limitations represent well-understood, routine, or conventional activity under Alice Step 2B is a factual issue, with Berkheimer precluding summary judgment that all of the claims at issue were not patent eligible. This principle was then reaffirmed by the Federal Circuit a week later in Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) in the context of a judgment on the pleadings and judgment as a matter of law.

As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply the law to the facts in ex parte appeals should be costing applicants this much money yearly. We should not have 2X higher reversal rates for novelty and obviousness than statutory subject matter. However, until something changes about how the USPTO decides to take cases to the board, it is apparent that patent applicants will continue to have to be patient and pay.

“I think at the end of the day, patents are either valid or invalid as a legal instrument and therefore it’s not very helpful to talk about quality or ‘good’ or ‘bad,” Judge Michel said. “They’re either valid or not valid and with respect to someone practicing the technology, the patent is either infringed as properly construed or it is not infringed.”

In an article published on April 23, 2017, Gene Quinn wrote about President Trump’s workforce reduction plan and his proposal for what it should mean for the United States Patent and Trademark Office. I agree with many of those proposals for reducing the size of the USPTO in accordance with the mandate set forth by President Trump, but believe that concentrating on a reduction in the number of patent examiners is not the only or necessarily the best approach… Review of USPTO middle and upper level management to determine who assigns junior, senior, primary and supervisory patent examiners to specific art units and reassignment of Office personnel is necessary.

In pursuing President Trump’s federal workforce reduction plan the USPTO must target those patent examiners who have long been refusing to do their jobs. Losing these patent examiners to a workforce reduction will cut the “dead weight” from the Office without the Office losing productivity… And another thing that USPTO must do is this: Hire only those fluent in English to be patent examiners. As crazy as it sounds, patent examiners are hired by the USPTO who struggle mightily with the English language. It boggles the mind how a patent examiner who will be required to correspond in writing and speak verbally with applicants and their representatives can be employed for a position when they are not fluent in English, which is the official language of the Office.

Reliance on expert declarations is not per se deficient because the declaration utilizes a legal turn-of-phrase, i.e. “It would have been obvious.” The declaration is sufficient, and reliance is not an error if the declaration incorporates factual determinations that support its legal conclusions….Strava sought Inter Partes Reexamination of several claims of a patent owned by Icon. During reexamination, the Examiner rejected all pending claims as obvious. Icon appealed the Examiner’s findings and the Board affirmed. Icon appealed to the Court and challenged the Board’s reliance on Strava’s expert declarations as improper and its decision as lacking substantial evidence.

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the rejection is called a final rejection all hope is not lost and there are things that can be done to continue to attempt to persuade and ultimately convince the patent examiner you are entitled to a patent… Generally speaking, what you will want to do after you get a final rejection will not be the type of thing you will have the right to do. In that likely situation, the most common thing to do is file what is called a Request for Continued Examination (RCE), which is allowed under 37 CFR 1.114. An applicant request continued examination of an application at any time after prosecution in the application is closed.

From all cases filed in the last 10 years, we filtered for all final dispositions in all of 2015 and 2016. Taking this data, we examine TC-2800 at three levels of detail: the overall statistics; a breakdown of the allowance rate by stage of prosecution; and finally, all the way down to the extremes of variation exhibited by individual examiners. The deepest investigation exposes a range of patterns unobserved in a focus on allowance rates alone. Relatively small changes in allowance rates, for example +/-15%, correlate to a 2x change in the effort and cost of an allowance.