Archive for January, 2010

PTO BPAI Roundtable

January 28, 2010

BNA (subscription service) is reporting on the BPAI Roundtable held on January 20.  The primary discussion concerned the new appeal brief rules.  PTO Deputy Director Sharon Barner and the BPAI’s Chief Administrative Patent Judge Michael Fleming represented the PTO, along with initial comments from Director Kappos.

The participants were generally positive about the new PTO administration’s transparency in the process, but, in the future, requested that the PTO include the purpose behind each new rule in the appeal brief requirements. 

The PTO officials asked if they should institute briefing rules like other appellate tribunals that would include page limits, jurisdictional statements, tables of contents and authorities.  The participants in the discussion reminded the PTO that the BPAI is not an Article III court, but is rather an administrative agency.  Its rules should comply not with those of the courts, but with the Administrative Procedure Act (APA).  Other administrative tribunals have much less onerous rules than those proposed by the PTO.

The largest source of disagreement with the proposed rules was the rule that requires that briefs contain “arguments to explain Examiner error.” 

The “argument” shall explain why the examiner erred as to each ground of rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees. Any finding made or conclusion reached by the examiner that is not challenged will be presumed to be correct.

This is true even if the examiner’s position is contrary to controlling law.  The participants urged the BPAI to instead institute a standard of de novo review where no deference is given to the examiner’s position.  The goal should be to get the decision right, not to penalize applicants who don’t address every point the examiner made.

Appeal Statistics

Barner and Fleming gave some sobering statistics on appeals.  The average pendency from the time of filing a notice of appeal until a decision by the BPAI has risen from 27.5 months at the end of FY2008 to 29.3 months at the end of FY2009 and is expected to rise by several more months by the end of FY2010.  The average pendency from the time an appeal is docketed by the BPAI to a decision rose from 7.7 to 9.9 months from FY2008 to FY2009 and is expected to rise to 14.4 months by the end of FY2010.  The cause of this, of course, is the substantial increase in the number of appeals filed.

Director Kappos stressed that it is necessary to determine the cause of the increased number of appeals and to try to address this issue at the examiner level as part of his overall quality initiative to reduce patent pendency.  He would like to see examiners and applicants work together to find patentable subject matter.  At this stage, it appears that at times the examiners and applicants are not communicating well.  He also recognized several major changes in the law that have contributed to the increased number of appeals.

One of the reasons for the nearly 20 months between the filing of the Notice of Appeal and the docketing of the appeal by the BPAI has been reported by Patently-O:  40% of decided cases included at least one applicant brief that was determined to be defective.  Many of the defective briefs are so-called based on very questionable grounds.  Some briefs did not list the canceled or withdrawn claims, some did not reference a co-pending application, some did not list each ground for rejection under a separate heading.  And the PTO wants to add to the technical requirements of appeal briefs.

What the PTO Should Do

The goal of the PTO needs to be to reduce the number of appeals filed.  Director Kappos has some good suggestions here for getting examiners to work together with applicants.  Supervisory Patent Examiners (SPEs) and primary examiners who sign office actions need to take some responsibility for the documents they are signing.  I have seen way too many office actions recently that were sloppily done and did not comply with the MPEP requirements.  The examiners were not primary examiners so they required a more senior examiner to sign them.  The senior examiners should be required to point out deficiencies in the office actions rather than simply rubber stamping them to get them out.

Next, the PTO needs to get appeals on its docket and have the BPAI make the correct decision quickly and efficiently.  It should not take 20 months to complete the briefing process due to rule technicalities.  I understand that the Board needs certain information in the appeal briefs to decide cases, but sending briefs back based for the reasons cited above is ridiculous.  The Board needs to make sure it is deciding the cases correctly, rather than giving examiners wide berth to make errors that may be overlooked by applicants.

I rarely advise clients to appeal cases because of the state of the BPAI.  Appeals take too long and are too costly to justify in most cases.  There are times, however, when an applicant has a particularly important invention and the examiner is simply being unreasonable and unwilling to consider the arguments being advanced, even if he is wrong on the facts or the law.  In such cases, an appeal may be warranted and necessary.

It is good to see the PTO working with stake-holders to try to improve its operations.

Kappos on PTO Budget Situation

January 22, 2010

PTO Director David Kappos sent the following letter to PTO employees and other members of the PTO community.

Dear Team:

I wanted to share my thoughts with you about a topic of great import to the USPTO and its mission. As you’ve read in the press, we have been engaged in ongoing discussions with members of Congress and their staff regarding our budget for the current fiscal year, which began on October 1, 2009. In addition, we have been providing technical assistance to Congress in connection with patent reform legislation, which is geared toward placing the USPTO on a sustainable funding model.

Innovation is the engine of our economy, and an efficient USPTO facilitates the timely delivery of innovative goods and services to market. What we do here at the USPTO is therefore of paramount importance to economic recovery and job creation.

As you know, the USPTO has been struggling in the last year to put itself on solid financial footing. Declines in fee revenue during the recession have adversely impacted our budget – and as a consequence forced us to make hard choices – including halting virtually all hiring, limiting overtime, and postponing critical repairs to our information technology infrastructure.

As part of the annual appropriations process, our financial team was asked to provide Congress with projected fee income for the 2010 fiscal year. This information was provided in September based on the data available at that time, when agency collections were at their low point. Congress used that projection of $1.887 billion in setting our budget for the 2010 fiscal year. That budget forces us to maintain operations on a bare-bones basis, but provides insufficient resources for us to replace employees who leave the agency, improve infrastructure or continue some of the improvements we have started to implement.

In addition, in the last two years, Congress had provided the USPTO a buffer of $100 million above our appropriation, which we were authorized to retain and spend to the extent fee income exceeded our appropriation (up to the $100 million buffer amount). That provision was removed from our fiscal year 2010 appropriation, due (we have been advised) to changes in Congressional Budget Office accounting which made it more difficult for our appropriators to provide the $100 million buffer this year.

The good news is that fee collections have begun to increase, and our current FY10 projections are more than $100 million above the $1.887 billion appropriations amount. We are actively working with Congress and the Administration to find ways to retain funds in excess of the $1.887 billion spending cap so that we can begin to backfill departing employees, improve our infrastructure, and continue to implement reforms.

But let me be clear about this: Hiring large numbers of people is not the silver-bullet solution to our problems, and we intend to hire conservatively and smartly. Most of you are aware that we have launched many reforms since I came on board last August, and we are now aggressively implementing them and looking for new ways to be more efficient on a constant basis. However, there is simply no way to get the backlog under control in a reasonable period of time without significant hiring given current attrition rates. You can run the numbers yourselves using the Patent Pendency Model and I would encourage you to do that.

Our infrastructure needs are also dire – so dire that President Obama referenced the USPTO’s antiquated IT systems in his remarks last week on modernizing government. We must improve those systems to become an efficient 21st century agency – and to be able to effectively serve the innovation community and the American economy.

It is therefore imperative that we work with Congress to develop long-term financial solutions that will establish a sustainable budget for USPTO over multiple years. Providing the USPTO with fee-setting authority as included in the pending patent reform legislation would be part of that plan. But, for the current year, we have immediate and urgent funding needs that require short-term assistance.

For your reference, I’ve attached a copy of the letter I sent to the relevant Congressional committee members on January 4, 2010.

Addressing our financial challenges so that the Agency can function effectively is my highest priority. I remain dedicated to working with our stakeholders, the Department of Commerce and members of Congress to ensure that we are able to perform our mission properly in the short-term – and to develop and adopt a sustainable funding model that will allow us to serve this country’s innovators in the future.

I want to thank you for your hard work and dedication during this challenging period for the agency. I very much look forward to hearing any thoughts you might have on this matter. Please share any comments via the Director’s Blog. I will be sure to keep you posted on any significant new developments with respect to our budget.


David Kappos

I have reported a number of times on the PTO budget crisis.  During FY2009, the PTO collected $135.9 million less, or 6.8%, than it had forecast.  FY2010 looks better from a revenue standpoint, but Congress has now hamstrung the agency.

For a number of years, the PTO collected more revenue in fees than it needed for its operations.  Instead of permitting the agency to reduce its fees or to retain the extra revenue to invest in its infrastructure, or even to save for a year like FY2009, Congress simply helped itself to the excess revenue diverting it to other government spending programs.  This was rightly opposed by the patent community led by AIPLA.  Finally in the last few years, Congress has permitted the PTO to keep all of its collected fees for its own use.  Until FY2010. 

The PTO is facing its worst budget crisis in a generation.  It has a failing technology infrastructure, it needs to lift the hiring freeze to hire more personnel to reduce the patent backlog, and Congress insists that it cannot keep a penny of its revenue over the amount forecasted in September. 

According to Kappos’ letter, at the low point of the budget crisis, the PTO could only forecast collections of about $1.887 million for FY2010, an increase of only $12.8 million or 0.7% over FY2009.  The good news is that revenue is now anticipated to be significantly higher than the September projections, perhaps topping $2 billion.  Unfortunately, Congress will simply siphon off anything above the $1.887 million projection to the general fund. 

Fee diversion has returned when the PTO can least afford it.  This is completely unacceptable and Congress needs to fix this immediately.

HT:  Patently-O.

Design Patents

January 20, 2010

When one thinks of filing a patent application, one usually thinks of an application for a utility patent.  Another option that an inventor may choose to consider is applying for a design patent.  Utility patents cover functional aspects of an invention, while design patents cover the asthetic features.

Design patents differ from utility patents in a number of basic ways.  A design patent is granted to cover the ornamental design of an object that has practical utility.  For example, a design patent may be obtained for a new shape of a beverage container, the particular shape and features of the tread of a shoe, computer icons, and other items that have practical utility. 

A design patent is not permitted for something that exists for purely asthetic reasons, such as a work of art.  A painting, sculpture, or other work of fine art would be protectable by copyright and possibly other intellectual property rights, but would not be eligible for design patent protection.

An invention may be entitled to both a utility patent and a design patent since a utility patent protects the way an article is used and works and a design patent protects the way an article looks.  If the design–the way the article looks–is dictated primarily by the article’s function, it would not properly be the subject of a design patent.  An example may be the shape of a gear that is designed primarily to fit with other gears and not for asthetic purposes.

The statutory requirements for design patents are similar to that for utility patents.  The design must be novel and non-obvious; the examiner will perform a search of the prior art to be certain that the design meets these requirements.  Furthermore, the drawings must clearly show the features sought to be protected by patent.

Design patent protection lasts for 14 years from the date the patent issues compared to 20 years from the earliest filing date for a utility patent.  No maintenance fees are required for design patents.

Another advantage of design patents over utility patents is that they seem to be much easier to obtain.  Patently-O has been reporting a number of statistics on design patents.  They have an allowance rate of about 90% over the last few years, compared to utility patent allowance rates of under 50%.  Over 80% of design patent applications are allowed without rejection; only 1.2% are rejected based on prior art with a larger number rejected on formality grounds.

In an era of increasing backlog and pendency of utility applications, more than half of design patents are pending for less than a year, with the average pendency being about 16 months.

To be sure, I would still not categorize design patents as providing the same level of protection as utility patents.  For inventions that would be entitled to both utility and design patent protection, a design patent would provide some protection while waiting for a utility patent to issue.  They are also cheap since they don’t involve a great deal of preparation and prosecution.  Inventors should always consider whether their inventions are eligible for design and utility patent protection.

Virginia State Bar Intellectual Property Law Section Student Writing Competition

January 15, 2010

Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition

 The Intellectual Property Section of the Virginia State Bar has a total membership of over 1,400, including both lawyers and members of the judiciary. The Intellectual Property Law Student Writing Competition (the “Competition”) seeks to promote academic debate and the dissemination of ideas and scholarly writing in the field of intellectual property. The Competition is sponsored by the Intellectual Property Section of the Virginia State Bar.


$4,000 cash and publication on the Section’s website.


The Competition is open to all students enrolled and in good standing during the 2009-10 academic year (including December 2009 graduates) at (i) any Virginia law school, or (ii) a law school outside Virginia as a resident of Virginia (with proof of residency). Articles must have been written solely by the entrant while enrolled in law school.

View the complete rules at  

More information:  flyer and rules.

Patent Term Adjustment

January 8, 2010

For many years, the term of a patent was 17 years from its date of issuance.  In 1995, in an effort at international harmonization, the term was changed to 20 years from the earliest effective filing date of the application for patent. 

If the PTO issued the patent in less than 3 years, the effective term would be longer than 17 years; if the PTO took more than 3 years to issue the patent, the effective term would be less.  Provisions were included in the law to adjust the patent term to account for unusual delays such as for interference proceedings, secrecy orders, or appeals.

Needless to say, delays became more and more common at the PTO and more and more patents were taking longer to issue.


In 1999, Congress passed the American Inventors Protection Act (AIPA) which provided distinct guarantees regarding patent term.  Section (A) of the applicable statute provided that the term of the patent would be extended 1 day for each day that the PTO delays action on an application during prosecution after a certain amount of time.  For example, patent term adjustment begins 14 months after a new application is filed if a first office action has not been mailed. 

These periods are to be offset by any delays on the part of the applicant.  Thus, for each day beyond 3 months from the mailing of an office action before a response is filed by the applicant, a day is deducted from the patent term adjustment.  If the PTO mails the first office action 60 days after the 14 month period and the applicant files a response 20 days after the 3 month response period, the applicant is entitled to 40 days of patent term extension.

Section (B) provided that the term of the patent would be extended 1 day for each day after the end of a 3-year period after the application for patent is filed until the patent issues.  Thus, if a patent issues 3 years and 100 days after it was filed, the patent is entitled to 100 days of patent term adjustment.

Due to the PTO delays and backlog, the vast majority of patents are receiving patent term adjustment, with the average being about 14 months.

The statute also contains a provision for situations where periods under section (A) overlap with periods under section (B):  these periods cannot be double counted.  So, if the PTO delays by 30 days after the application has been pending for more than 3 years and the patent issues 3 years and 100 days after it was filed, the period of patent term adjustment for that period is 100 days, not 130 days.

Wyeth v. Kappos

A question arose as to how to deal with situations where there was some delay prior to 3 years after the application was filed and some delay after 3 years.  The PTO interpreted the statute to calculate patent term adjustment by granting the patentee the longer of the delay between the two periods. 

For example, in Wyeth, the ‘892 patent was entitled to 610 days of (A) delay and 345 days of (B) delay.  51 days of the (A) delay occured more than 3 years after the application was filed and thus overlapped with period (B).  The applicant was deemed to cause 148 days of prosecution delay.  The PTO calculated the patent term adjustment at 462 days (610-148), using only the 610 day period because the 610 day period was longer than the 345 day period.  Wyeth argued that it was entitled to 756 days (610+345-148-51 (for the overlap)).

The PTO refused Wyeth’s request for recalculation so Wyeth filed suit against the PTO.  The district court granted summary judgment to Wyeth and the Federal Circuit affirmed.  Both courts found the PTO’s interpretation to be contrary to the plain language of the statute.

The problem with the PTO’s interpretation is that it considers the application delayed under [the B guarantee] during the period before it has delayed.

The PTO considered any delay during prosecution to be an overlap with the delay to issue the patent within 3 years.


The PTO has been vastly undercalculating patent term adjustment.  Many patents will now be entitled to additional patent term.  There are, however, deadlines for filing a request for reconsideration of patent term adjustment with the PTO.  This number should be checked when the applicant receives a notice of allowance and again on the date the patent issues.

Patent term adjustment is meant to compensate the patent owner for PTO delays.  Patent term adjustments are harmful to the public.  They increase uncertainty as to when a patent expires, they extend the limited monopoly, and they keep inventions from passing into the public domain when they should.  More efficient examination is needed to decrease patent term adjustments.

PTO Responds in Gene Patent Saga

January 6, 2010

In the ongoing saga by the ACLU seeking to invalidate certain gene patents and hold that such patents are unconstitutional, the PTO has filed its brief in opposition to the plaintiffs’ motion for summary judgment.  Instead, the PTO asks the court to enter judgment in its favor.

The PTO’s argument is summarized as follows.

First, the only claims alleged against the PTO are constitutional claims, that the patents were issued in violation of the IP Clause and the First Amendment of the Constitution.  The PTO argues that in order to adjudicate these claims, the court must first determine whether the patents were issued in violation of the patent statute.  If the patents are invalid as not being directed to patentable subject matter, not being novel, being obvious, or violating the enablement or written description requirement of 35 U.S.C. §§ 101, 102, 103, or 112, the court should not adjudicate the constitutional claims unnecessarily.  Only if the court determines that the patents were issued in compliance with the statute should the court determine whether the statutory provisions violate the IP Clause or the First Amendment of the Constitution.

IP Clause

The PTO argues that the statute clearly does not violate the IP Clause of the Constitution.  Initially, the PTO argues that it is unlikely that the IP Clause imposes any limitation on Congress’ power to enact the patent laws. 

Even if there is a limit on Congress’ power, the court would review the patent system to determine whether Congress had a rational basis to enact the patent laws under this provision.  Such a review would be limited to whether Congress used a rational exercise of legislative authority granted by the IP Clause.  Clearly, it did.  The power to issue patents for broad categories of inventions “adds to the general store of knowledge.”  Thus, Congress had a rational basis for enacting the patent laws.

Contrary to plaintiffs’ assertions that patents in the biotechnology field are unnecessary, the PTO argues that the high costs of bringing biotechnology products to market is another reason to permit strong patent protection in this area.  The disclosure requirement of the patent system adds to the knowledge of other researchers in the field.  Thus, Congress had multiple rational bases for permitting gene-based patents.

First Amendment

The PTO also makes a number of arguments against the the plaintiffs’ First Amendment claims.  First, the PTO argues that the First Amendment does not provide a substantive limitation on Congress’ authority to enact the patent laws.  If there is such a limitation, the courts have already interpreted the patent laws to accomodate First Amendment concerns.  Finally, the plaintiffs’ arguments are premised on the incorrect notion that patents on isolated and purified genes are patents on “information.”

The Patent Act promotes rather than inhibits free speech.  The patent laws require disclosure of an invention in order to be granted a limited monopoly.  Without the patent laws, the invention might otherwise be kept secret.  Contrary to the plaintiffs’ assertions regarding the high cost of obtaining rights in patents, the First Amendment does not require that its exercise be cost-free.

Patents might be deemed to be limitations on conduct–the ability to practice someone else’s patent without permission–but they are not limitations on speech.  Thus, the First Amendment should not be implicated.  Patent owners are not able to control knowledge with respect to their discoveries, they may only keep others from infringing their patents.  The plaintiffs’ arguments that patenting “abstract ideas” and “mental processes” are already dealt with by § 101 of the Patent Act.  Congress clearly did not violate the First Amendment by enacting the Patent Act.

The plaintiffs also argue that the patents were issued in violation of the First Amendment because they cannot be designed around.  The PTO argues that no court has ever recognized an absolute right to design around a patent.  Furthermore, the patents in this case would “normally be expected to spur competitors to seek and invent additional ways of determining predispositions to cancer, including by conducting research on other genes.”  The scope of patent protection for inventions that are difficult to design around should be left to Congress.

The isolated, purified genes claimed in the patents are chemicals that can convey information, they are not themselves information.  Because they are chemicals, they would be eligible to be patented, provided they meet the other requirements for patentability.


The PTO’s brief is well-reasoned and provides a solid legal argument.  It should be persuasive if this were a rational argument.  Unfortunately, given that the ACLU is using the media to inflame the debate, it has been emotional, rather than rational.  And given Judge Sweet’s earlier opinion in the case, it is difficult to predict how he will rule.

Patent Docs provides frequent updates on this case and the gene patenting debate in general.

Federal Circuit Interprets False Marking Statute

January 6, 2010

Last summer, I wrote about several cases involving allegations of false marking.  These posts can be found here and here.  In one of the cases in particular, Judge Brinkema dismissed the case against Solo Cup to “get [the] case teed up for the Federal Circuit” because she did not know what standard to apply for the false marking statute’s “intent to deceive” requirement.

The Federal Circuit provided some guidance in The Forest Group, Inc. v. Bon Tool Co.    The case primarily deals with interpretation of the “per article” penalty provision of the statute.  The court also provided guidance on the other statutory requirements.

Intent to Deceive

The Federal Circuit cited an earlier decision in holding that

[i]ntent to deceive is a state of mind arising when a party acts with sufficient knowledge that what it is saying is not so and consequently that the recipient of its saying will be misled into thinking that the statement is true.

The court went on to provide what a party must show to prove intent to deceive in the false marking context.

A party asserting false marking must show by a preponderance of the evidence that the accused party did not have a reasonable belief that the articles were properly marked.

Penalty to be Applied “Per Article”

Section 292(a) of the Patent Act reads as follows:

Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public . . . Shall be fined not more than $500 for every such offense.

In Forest Group, the district court had interpreted this provision to mean that each decision to falsely mark products constituted an “offense” within the meaning of the statute and fined the patent owner a total of $500 for its decision to continue to falsely mark its products.  The Federal Circuit reversed this part of the district court’s decision.

First, the Federal Circuit noted that the plain language of the statute prohibits false marking of “any unpatented article,” and imposes a fine for “every such offense.”  The court held that each falsely marked article constitutes a separate offense.  Under prior patent statutes, the minimum fine that could be levied was $100 for each offense.  In the 1952 Patent Act, Congress changed this to a maximum of $500 per offense.  This showed congressional intent to charge the fine to a per article basis.

Next, the court noted that charging a single $500 fine would eviscerate the statute.  Such a small fine would hardly be a deterence to falsely marking products.  False marking deters scientific research and causes competitors and the public to make unnecessary investments into the validity and enforceability of patents that do not cover the products upon which they are marked.  The greater the number of articles that are falsely marked, the greater this injury to the public.

Standing to Sue

The patent owner argued that by interpreting the statute to impose a fine of $500 per article “a new cottage industry” may arise where plaintiffs who have suffered no direct injury will simply search for products that are falsely marked and bring lawsuits against the patent owners.  As noted in the earlier posts, we know that this is already happening.

The court held that this is exactly what the plain language of the statute allows.  “Any person” means any person.  Congress clearly intended for members of the public to assist with enforcement of the false marking statute.  Permitting only a $500 fine per decision to falsely mark would not be sufficient motivation for members of the public to provide such assistance.

There may be cases where it is inequitable for the court to fine the patent owner $500 per article, such as when the number of articles is quite large and the balance of the equities would prove to disproportionately harm the patent owner.  The statute provides for such cases as well.  The patent owner shall be fined “not more than $500.”  Thus, the fine need not be $500 for each article.


In the prior cases, district courts seemed to be unclear as to the meaning of the statute and reluctant to enforce its provisions.  This decision by the Federal Circuit should answer most questions concerning false marking so that the cases will not need to be “teed up” for the Federal Circuit in the future.

Using Patent Applications Defensively

January 5, 2010

I sometimes hear from inventors and companies that have come up with a new product and they’re worried that their competitors may get a patent on the product later.  In fact, their competitor has done this in the past.  They believe that they came up with a product first and then their competitor filed a patent application covering the same product.  At a minimum, they have to respond to the competitor’s accusations of infringement by trying to prove an earlier invention date, etc.  At worst, they had to defend an expensive infringement suit.  Plus, the competitor used the patent for marketing purposes and hurt the client’s image in the field.

The first thing I tell such clients is that they should be scrupulously documenting their inventive activities.  The second thing is to file a patent application as soon as possible.  Because the US system remains a first to invent system, if the client can prove it was the first inventor, it should be able to get patent protection (assuming the invention is patentable) and not be subject to a competitor’s patent.

Sometimes the client is not really interested in patent protection, but just wants to be certain that a competitor can’t get a patent that would block the client from marketing its own product.  In that case, the client may want to make the invention public as soon as possible in order to create prior art that would preclude a competitor from later getting a patent on the same product. 

One option is to publish the invention in a journal or other printed publication.  In some scientific fields, this is a good option.  The publication process can be slow, however.  Another option is to publish information about the invention on the Internet.  This has the advantage of being almost instantaneous.  Due to the dynamic nature of the Internet, dating publications on the web can be tricky. 

A Better Option

For each of these options, especially Internet publication, the client may be waiving all rights to patent protection by making such publication, and almost definitely is giving up foreign patent rights.  Even if the client is absolutely certain that it is not interested in patent protection, I still advise another option–filing a patent application.  This option has the advantage of preserving patent rights, including foreign rights, and creates a date certain for the information contained in the application.  Thus, the filing date of the application can be used against the competitor who tries to claim rights in the invention.

Furthermore, unless the applicant specifically requests otherwise, patent applications are published which creates prior art against the competitor’s patenting attempts.  In the US, patent applications are published 18 months after their earliest priority date and are prior art as of their filing date.  For example, a patent application that is filed today would be published around July 5, 2011, but would be prior art as of January 5, 2010.  Thus, even if the competitor files prior to the application becoming public on July 5, 2011, if it is after today’s date, the published application is still prior art.  And applicants can request earlier publication if that is their goal.

It may also be that the client originally says that it does not care about patent protection and merely seeks to protect itself defensively.  A year later, while the patent application is pending but has not yet been examined, the product is highly successful and the client wishes it had applied for a patent.  Without the pending application, patent rights would be be lost after the one year grace period.  Because the defensive patent application was filed, however, the application will be examined and the invention may still gain patent protection.

If the client truly decides that it does not desire a patent, a published patent application can simply be abandoned to avoid further expense.  This can be done either expressly, by filing a notice with the PTO, or by simply not responding to an Office Action.


A patent application can be a good vehicle for defensive purposes due to the publication of patent applications at the PTO.  Published applications become prior art as of their filing dates.  And filing a patent application near the beginning of the process preserves patent rights if their is a change of heart regarding whether such rights are desired.

New BPAI Rules Raised Again

January 4, 2010

Several weeks ago, the PTO published a notice in the Federal Register regarding the previously delayed final rules regarding procedures at the Board of Patent Appeals and Interferences (BPAI).

Many of the most controversial provisions of the previously proposed rules have been changed or deleted.  Specifically, the Notice refers to deleting many of the highly technical requirements that would have added significantly to the cost of filing an appeal brief.  The portions of the rule that would have required that briefs and other papers contain specific headings, that they be filed in specific fonts, that they not exceed a certain page limit, and that they include a glossary of terms for the Board have been deleted.  The requirement that the appellant identify which arguments were presented to the examiner and which are new arguments has also been deleted.

The rules as now proposed would also affect an examiner’s conduct.  The rules would continue to permit new grounds of rejection to be raised in examiner’s answers and also would no longer permit a supplemental examiner’s answer to a reply brief by the appellant.

The Notice cites as the purpose of the rules to “efficiently frame any dispute” between the appellant and the examiner and “to provide the best opportunity for resolution of the dispute without the necessity of proceeding with the appeal.”  Hopefully this means that fewer cases will get to the Board because more of them will be remanded to the examiner to correct poor rejections or issue allowances.

There are still a number of technical requirements being added to appeal brief requirements, including those relating to providing specific specification and drawing support for each claim on appeal.  In general, the worst requirements will be deleted.

The BPAI does need to take steps to reduce the crazy situation involving an appeal docket that is growing at an exponential pace.  It is difficult to tell how much effect these rules would have on that situation.

The Notice refers to a roundtable discussion concerning the rules that the PTO will conduct on January 20.  The PTO solicits public comments on the new rules until February 12 and hopes that the timing of the Roundtable will permit comments before and after that event.  This should permit a more complete public participation than prior PTO procedures have.

It is quite refreshing that the new administration is seeking to work with the patent community in crafting new rules and solutions to its problems, rather than working against them.