Archive for July, 2010

House Passes Supplemental PTO Funding Bill

July 29, 2010

Yesterday, the House passed H.R. 5874 that provides $129 million in additional funding for the PTO during FY2010.  The funds are transferred from the Census Department.  These funds should provide some much needed help to the PTO.  The bill now goes to the Senate.

Thanks to Hal Wegner for providing this information.  There is a lot of speculation as to whether the Senate will try to tack on at least some portions of the Patent Reform Bill, S. 515, to the House funding bill.  Or, if the Senate will try to tack the Patent Reform Bill onto pieces of unrelated legislation.  Or, if Congress will attempt to pass patent reform in a lame duck session after the election.  Stay tuned . . .


PTO Interim Guidance on Bilski

July 28, 2010

Yesterday, the PTO published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. KapposThe Federal Register notice requests public comments on the Guidance by September 27.  Specifically, the PTO requests comments on these questions:

1.  What are examples of claims that do not meet the machine-or-transformation test but nevertheless remain patent-eligible because they do not recite an abstract idea?

2.  What are examples of claims that meet the machine-or-transformation test but nevertheless are not patent-eligible because they recite an abstract idea?

3.  The decision in Bilski suggested that it might be possible to ‘‘defin[e] a narrower category or class of patent applications that claim to instruct how business should be conducted,’’ such that the category itself would be unpatentable as ‘‘an attempt to patent abstract ideas.’’ Bilski slip op. at 12. Do any such ‘‘categories’’ exist? If so, how does the category itself represent an ‘‘attempt to patent abstract ideas?’’

The Guidance still relies heavily on the Federal Circuit’s machine-or-transformation test and seems to be skeptical that there are methods that would be patent eligible that do not meet the test.

To date, no court, presented with a subject matter eligibility issue, has ever ruled that a method claim that lacked a machine or a transformation was patent-eligible.

The Guidance suggests that claims must be considered as a whole and that patent eligibility under § 101 is only a threshold test.  Patent claims must still be examined for compliance with §§ 102, 103, and 112.  Examiners are admonished to state all non-cumulative reasons and bases for rejecting the claims in the first office action and should not treat an application solely on the basis of § 101 except in the most extreme cases.

Factors to Be Considered in an Abstract Idea Determination of a Method Claim

A.  If the method involves or is executed on a particular machine, it is likely patent eligible.

(1) A more particular machine weighs more heavily toward patent eligibility than a general machine.

(2) If the machine implements the steps of the method, it is more likely eligible than if the machine is merely an object on which the method operates.

(3) If the machine’s involvement is mere extrasolution activity or a field-of-use limitation, the claim is likely not patent eligible.

B.  If the method involves or results in transformation of a particular article, it is likely patent eligible.

(1) A more particular transformation weighs more heavily toward patent eligibility than a general transformation.

(2) A more particular article being transformed weighs more heavily toward patent eligibility than transformation of a general article.

(3) A more extensive change toward a different function or use weighs more toward eligibility than a mere change in location.

(4) Transformation of an object or substance weighs more toward eligibility than a contractual obligation or mental judgment.

(5) If the transformation involves mere extrasolution activity (e.g., data gathering) or a field-of-use limitation, the claim is likely not patent eligible.

C.  A method involving application of a law of nature in the absence of a machine or transformation may be patent eligible.

(1) If the application is too general, this weighs against patent eligibility (e.g., the use of electromagnetism in transmitting signals at a distance).

(2) If the method involves subjective determinations, such as a way of thinking about a law of nature, it is likely not patent eligible.

(3) If the application of the law of nature involves mere extrasolution activity (e.g., data gathering) or a field-of-use limitation, the claim is likely not patent eligible.

D.  If a general concept is involved in a method, it is likely drawn to an abstract idea.

(1) If the use of the concept would preempt use in other fields, it is likely an abstract idea.

(2) If the claim covers both known and unknown uses of the concept or can be performed with existing and later-developed apparatus, it is likely patent ineligible.

(3) If the claim is the mere statement of a problem and would cover all possible solutions, it is likely ineligible.

(4) If the claim has been implemented and if there is concrete evidence to support it, it is more likely patent eligible.

(5) If the method steps are observable and verifiable, the method is likely patent eligible.

The Guidance then provides a number of examples of general concepts.

Examiners are instructed to weigh all of the factors in considering the claim as a whole, and also to conduct a complete examination of the claim under the remaining patentability requirements. 

When rejecting a claim under § 101, the examiner is to set forth a prima facie case.  The examiner is to set forth the rationale and the factors considered to reach the conclusion that the method is drawn to an abstract idea.  The applicant will then have the opportunity to respond to the factors as to why the method is not drawn to an abstract idea.


Although the PTO will continue to rely almost exclusively on the machine-or-transformation test, it does seem to be a bit more open to the idea that the examiner must make a prima facie rejection at the outset than it did in its memo immediately following the Supreme Court decision.  In that memo, the PTO seemed to indicate that the burden was on the applicant to prove patent eligibility instead of the other way around.

I understand that the PTO wants to provide simple guidance to the examiners in making patent eligibility determinations.  Examiners generally don’t like doing this as they find it much easier to apply prior art to patent claims.  The PTO seems be unnecessarily complicating this issue.  It shouldn’t really involve this many factors to determine whether a claim covers an abstract idea.  And, of course, §§ 102, 103, and 112 should provide more help to patentability determinations than restrictions under § 101.

Federal Circuit Nomination Update

July 26, 2010

As the Federal Circuit now sits with only 9 active judges and 3 current vacancies, Judge Kathleen O’Malley will finally get a hearing before the Senate Judiciary Committee on Wednesday afternoon.

Appointments to the Federal Circuit are rarely contentious, but it seems to take the Senate a long time to get around to acting on the nominations.  Judge O’Malley was nominated by President Obama on March 10 to replace Judge Alvin Schall who took senior status October 5, 2009.  Meanwhile, Edward DuMont was nominated on April 14 and has yet to have his hearing date scheduled.  He was nominated to replace Chief Judge Michel who retired May 31, 2010.

It could take several weeks or months after Judge O’Malley’s hearing before the Senate gets around to voting on her confirmation.  Meanwhile, more judges on the Federal Circuit continue to retire or take senior status.  We’re still awaiting a nomination to replace the latest, Judge Mayer who took senior status on June 30.


Judge O’Malley sailed through her hearing on July 28 with few senators even asking her questions.  Sen. Sheldon Whitehouse (D-RI) used the forum as an opportunity to decry the delays that nominees face between the time reported by the Judiciary Committee and getting a vote on the Senate floor.

The next step for Judge O’Malley is getting a vote by the full committee.

Bilski Podcast

July 20, 2010

Here’s a recent podcast that is a debate by Professor John Duffy of George Washington Law School and Professor David Olson of Boston College Law School.  The podcast was sent to me by the moderator, Professor Adam Mossoff of George Mason School of Law.

Plaintiffs Begin Appellate Fight Over Gene Patents

July 19, 2010

As expected, Myriad has appealed the ruling by Judge Sweet that its patents on isolated genes and associated methods were invalid as not directed to patentable subject matter.  IPLaw360 (subscription service) is now reporting that the plaintiffs (the ACLU and others) have filed a motion at the Federal Circuit requesting that new Chief Judge Randall Rader recuse himself from the appeal saying that he has “pre-judged” the case prior to hearing the appeal.

Judge Sweet ruled in March that, because isolated DNA claimed in the patents was not “markedly different” from naturally-0ccuring DNA, the claims to isolated DNA were not patentable.  He made the ruling despite numerous precedent to the contrary by cobbling together some random statements from the Supreme Court’s decisions on patentable subject matter from the late 1970s and early 1980s.  The “markedly different” test for patentability had never been used before and seemed to be pulled out of thin air.

Judge Sweet went on to use the Federal Circuit’s machine-or-transformation test from In re Bilski to invalidate the method claims.  Given that the Supreme Court recently ruled that this is not the only test for patentability of method claims, the ruling on the gene patent method claims is also immediately suspect.

The plaintiffs point to several recent public statements made by Chief Judge Rader to argue that he has pre-judged the case without actually hearing the appeal.  According to the plaintiffs, in remarks at the May 4 Biotechnology Industry Organization annual conference, Judge Rader made these statements.

A troubling point for me is the lack of legal standard for making this decision;

In an obviousness analysis, there are some neutral steps that I can apply. But using Section 101 to say that the subject matter is unpatentable is so blunt a tool that there is no neutral step to allow me to say that there is a line here that must be crossed and that this particular patent claim crosses it or does not;

[T]o be frank, it’s politics. It’s what you believe in your soul, but it isn’t on the law.

The plaintiffs also allege that Judge Rader made comments at another conference that he has applied his own patentable subject matter standard to the facts of the case and reached a conclusion.  This has been done without reading the parties’ briefs or hearing arguments in the case.


Filing a motion to have a judge recuse himself in a case is a drastic measure.  Recusals are generally at the discretion of a particular judge.  Appellate courts (in this case, the Supreme Court) only get involved if there is an extreme case of prejudice or bias.  It is difficult to know how Chief Judge Rader is reacting to the motion, but needless to say, he can’t be pleased.

The motion seems to be a desperate act by parties that realize they have no chance of winning this appeal at the Federal Circuit.  The Chief Judge is one of the more pro-patent members of the court, so the plaintiffs definitely do not want him on the panel that will hear the appeal.  They would also like to make sure that he isn’t involved in any potential en banc hearing should the case make it that far (given the 3 vacancies on the court, that would mean that only 8 judges would hear an en banc appeal).

This case has only been about one thing since the beginning and it’s not to get these particular patents invalidated.  The ACLU is seeking publicity and to inflame the public with misleading rhetoric on gene patents.  Filing a motion like this is simply another way of gaining such publicity.

Provisional Patent Applications

July 16, 2010

A provisional patent application is a patent application that may be filed at the PTO that can be used to establish a filing date or date of invention.  The application expires 12 months from its filing date.  This means that, in order to claim the benefit of the provisional application filing date, a non-provisional application must be filed within that 12 month period.  The PTO has proposed a circuitous method of extending the term to 24 months.

There is no such thing as a “Provisional Patent”, although you may hear that term.  A provisional patent application does not give the inventor any rights to exclude, as an issued patent does.

The PTO does not examine provisional applications, but merely keeps them in its records.  Filing a provisional application does not get the invention examined any more quickly; in fact, the application does not go into the examination queue at all, so it actually takes longer from the initial filing date of the provisional application to begin examination than if a non-provisional application were filed initially.

The public does not get access to a provisional application unless and until a non-provisional application that claims the benefit of the provisional application filing date is published.  A provisional application can delay publication of the invention, even if the applicant will be filing outside the US.

Why File a Provisional Application?

The main reason is actually the delay.  The provisional application gives an additional 12 months to further develop the invention and to see if there is a market for the invention, and it can also delay prosecution costs associated with the application.

First, it often takes a long time to perfect a new product or process.  There are many details to work out and many improvements can be made in the early stages after the initial concept is completed.  To establish an early date of invention, a provisional application can be filed once the initial concept is completed, but prior to the perfection of the invention.  The 12 months before the non-provisional application must be filed can be an aid in this endeavor.  Additional provisional applications can be filed during the 12 month period to establish an invention date for any improvements.  Various strategies exist for which applications should be used for a priority claim.

Second, a provisional application delays some of the expenses associated with obtaining a patent.  For example, the filing fee for a provisional application is currently only $220 ($110 for small entity), while the filing fee for a non-provisional application is $1090 ($467 for small entity filed electronically).  There are additional fees for excess claims, prosecution fees, and issue and publication fees.  It may be advantageous to delay these fees until it is determined that there is a market for the invention.  A provisional application gives the application 12 months to find investors, buyers, or licensees for the product or process.

A provisional application can be a good way to be certain that the inventor’s own activities will not be available for use as prior art.  If there is an imminent publication or product launch of the invention, say in a few days, and there is not time to prepare a complete and thorough application, a quick provisional can be helpful.  A complete non-provisional should be filed as soon as possible thereafter, it is not necessary and can be dangerous to wait the entire 12 months prior to doing so.

Is a Provisional Application Cheaper?

There are ads on Google for $99 or $149 provisional patents.  It can be cheap to file a quick application to protect against public disclosure as noted above.

Many people believe that filing a provisional application is a simple thing.  Some inventors will do it themselves, before going to a patent attorney for a non-provisional application a year later.  Others want their attorney to prepare a bargain application of maybe a few pages or so.  After all, provisional applications don’t even require claims.

Sometimes, it is necessary to file a quick and dirty provisional application, such as where there is going to be an imminent product release or publication that could create a bar to getting a patent in the future.  In general, however, it is not cheaper to prepare a provisional application than a non-provisional application.

In order for a later-filed non-provisional application to obtain the benefit of the filing date of a earlier provisional application, US patent law requires that the claims of the non-provisional application be supported by the provisional application.  What this means is that an applicant must include sufficient detail in the provisional application in order for it to do any good.  Otherwise, you are only entitled to the filing date of the non-provisional application.  In that case, the provisional was a waste of time and money and the delay in filing the non-provisional application may be detrimental to obtaining a patent for the invention.

Applicants should take the time and spend the money to have a good provisional application prepared that includes as much detail as is available at the time of filing the provisional application.

In summary, a few points are worth mentioning or repeating:

  • A provisional application can be a good idea to establish an early filing date and to give additional time to perfect the invention or work on improvements, as well as to determine whether there is a market for the product or process.
  • A provisional application can also be a good way to delay filing and prosecution costs until a later date.
  • A provisional application should not be filed until the invention includes sufficient details to reduce the invention to practice.
  • Provisional patent applications should include sufficient detail to support claims in a later-filed non-provisional application.
  • A provisional patent application permits the applicant to mark a product as “patent pending.”
  • A quick provisional application can be filed to protect against public disclosure provided that a complete non-provisional application is filed shortly thereafter.

Patently-O is conducting a study on provisional applications.

Conception and Reduction to Practice

July 13, 2010

In patent law, we often refer to the concepts of “coneption” and “reduction to practice.”  “Conception” refers to “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied to practice.”  In other words, conception is the mental act of thinking of the idea of the invention and how it would be implemented. 

“Reduction to practice” refers to the act of actually making the invention work for its intended purpose.  Alternatively, constructive reduction to practice occurs when an inventor files a patent application for the invention.  In some instances, such as the discovery of certain genes or chemicals, an inventor is not able to complete the step of conception until the invention has been reduced to practice.

Some people are surprised that a patent application can constitute constructive reduction to practice; i.e., that a patent application can be filed for an invention that has not be made or actually reduced to practice.  Patent law does not require that an inventor actually make the invention or a model thereof prior to filing a patent application.  In many instances, due to time and financial constraints, it would not be practicable to do so.

Reasons to Develop and Preserve Evidence of Conception

There are a number of important reasons to develop and preserve evidence of this conception.  First, it may be important to prove accurate inventorship in case a question arises at a later date.  In the US, each inventor has an ownership right in a patent application and has the right to license, assign, or transfer his interest in the application without respect to the rights of the other inventors.  This right is often restricted by contract, such as an obligation to assign the invention to an employer.  Inaccurate inventorship may cause a patent to be unenforceable or invalid.

Although there has been some push in the patent reform bills to change the US to a file-to-file (“first inventor to file”) regime, the US, in contrast to much of the rest of the world, a patent is granted to the first person to invent an invention.  If two or more patent applicants file separate patent applications at the PTO for the same invention, the PTO conducts what is called an “interference.”  An interference is basically a mini-trial to determine which inventor invented first and is thus entitled to the patent.  Like trials in court, evidence is what wins the day.  One applicant may have come up with the idea before the other, but if he cannot prove it, he will not win the interference.  That being said, the junior filer (the inventor who files second) in an interference proceeding rarely wins.

The US has a one year grace period for filing a patent application after certain activities, such as sales or public disclosures.  If a patent application is rejected by a prior art reference that is dated within one year of the application’s filing date, the inventor may use evidence of prior conception to remove the reference as prior art to overcome the rejection.  Again, it is important to have such evidence to submit.

There are also certain circumstances when evidence of prior conception may be used to prove non-infringement or invalidity of a patent that one is accused of infringing, such as the prior use defense to an infringement allegation of a business method patent.

How to Develop and Preserve Evidence of Conception

It is important to remember that what counts is what can be proved.

Inventors should keep detailed records of their inventive activity.  This can be in the form of notebooks or other documents and should include as much of the following as possible:

  • facts or circumstances leading to the invention;
  • purpose of the invention or problem the invention is attempting to solve;
  • description of the structure and function of the invention or the steps of any process that comprises the invention;
  • sketches, drawings, pictures, or other graphical details of the invention;
  • any and all known or possible applications of the invention;
  • advantages of the invention over what is already known, perhaps how the invention differs from a competitors product or patent; and
  • any other information that might be relevant to a future proceeding.

The evidence should be signed and dated and preferably witnessed by someone who understands the evidence.  As the invention is further developed and refined, additional evidence should be developed at each step of the process to continue to show conception.

Evidence that is contemporaneously developed is almost always better than evidence that is developed at some later date.  This is because memories fade and documents or other evidence can be lost.  Contemporaneously developed evidence also tends to be more credible because it is not subject to possible taint of a later proceeding.  Courts and the PTO tend to be skeptical of evidence developed for the sole purpose of winning a dispute over the invention.

Evidence of conception will aid a patent attorney in preparing a patent application for the invention, as well as being useful for reasons above.

Reduction to Practice

If a prototype or working model of the invention can be prepared, this will usually aid in preparing and filing a patent application and is certainly evidence of prior invention.  As noted above, however, sometimes it is inpracticable to create such a prototype or model prior to filing a patent application.

An inventor who knows how his invention works should not delay filing a patent application, even if only a provisional application, in order to create a prototype or working model.  Once the conception is complete, any delay can be detrimental to obtaining a valid patent.  A competitor may file an application or additional prior art may be developed in the meantime that may prevent the attainment of a patent.  The clock may begin to run on public disclosure or offers for sale.  And foreign patent rights may be lost.

An inventor may not have the financial resources to prepare a prototype or model.  Often, outside investment is needed to work toward commercialization of an invention.  It is usually advantageous to tell potential investors that a patent application has been filed for the invention.  And there is less risk of the invention being stolen by another party.


The bottom line is that conception is the activity of primary importance in patent law.  Evidence that can be used to prove conception can be very important in the patent process.  Filing a patent application sooner is almost always the best course of action.

Federal Circuit Expands Secret Prior Art

July 8, 2010

Yesterday, the Federal Circuit opinion in In re Giacomini expanded the scope of prior art available under 35 U.S.C. § 102(e).

Giacomini filed a patent application November 29, 2000.  Certain claims of the application were rejected under U.S. Patent No. 7,039,683 filed December 29, 2000.  The ‘683 patent claimed priority to a provisional application filed September 25, 2000.

The Federal Circuit sought to interpret § 102(e) which states (emphasis in the court’s opinion):

[A] person shall be entitled to a patent unless . . . the invention was described in . . . (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.

The court turned to § 111(d) of the Patent Act to determine that the provisions of the Act apply to provisional applications unless otherwise provided.  Since § 102(e) does not appear to preclude provisional applications, the plain language of the statute suggests that it applies to provisional applications.

The court noted that a patent that simply claims priority to a provisional application is not entitled to the provisional application’s filing date for prior art or priority purposes unless the patent is adequately disclosed and enabled by the provisional application under § 112.

The court also distinguished the case of priority to a foreign application which was deemed not to be the effective prior art date in In re Hilmer (CCPA 1966) on the grounds that the priority statute has been amended to provide for provisional applications that did not exist in 1966 and that § 102(e) applies to applications “filed in the United States.”


This opinion seems straight forward and follows from statutory interpretation.  Its implications, however, are rather large.  By permitting the use of provisional filing dates, it extends back by up to a year the effective filing date for prior art purposes of many patents.  This greatly expands the amount of “secret prior art” available.

“Secret prior art” is prior art that the patent applicant has no ability to be aware of before filing his application.  This includes patent applications that are published or that issue after an applicant’s filing date but were filed before.

Secret prior art is more of a problem when used in an obviousness rejection because again, the inventor is unaware of this information on his filing date.  In most foreign jurisdictions, secret prior art is expressly excluded from use in obviousness or inventive step rejections.

Given the PTO’s current backlog, the problem of secret prior art in the US is getting worse with some applications issuing years after they are filed.  They then spring up as prior art with an early filing date to defeat a number of later filed applications and patents.  The Federal Circuit’s decision has now extended these dates back even further.

PTO Reaction to Bilski

July 7, 2010

Many have already publicized the PTO’s same-day memo to patent examiners regarding how to examine applications in the wake of the Supreme Court’s opinion in Bilski v. Kappos

On the one hand, it is interesting to note that the Supreme Court basically followed the government’s lead in rendering a very narrow decision.  The PTO was also proactive in providing examiners preliminary guidance in the form of the memo.

Hal Wegner provides a different perspective.

The memo came from Robert Bahr, Acting Associate Commissioner for Patent Examination Policy.  The memo recaps the Supreme Court’s opinion, noting that there are four categories of statutory subject matter under § 101, that the Court noted that § 101 is broad but not limitless, that Bilski sought to patent abstract ideas, that the machine-or-transformation test was cited as helpful but not the sole test for patent eligibility, that business methods may sometimes be patentable subject matter, and that claims must meet the other requirements for patentability as well (novelty, utility, non-obviousness, etc.).

Wegner notes, however, the the next section of the memo turns patent examination on its head and places the burden on the applicant to prove that its claims are directed to patentable subject matter.

Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.

Thus, contrary to the Supreme Court’s opinion, the PTO will continue to presume that claims that don’t meet the machine-or-transformation test are patent ineligible until the applicant meets the burden of proving that the claim is not directed to an abstract idea.  I have no idea where Bahr gets that from the Supreme Court opinion. 

Wegner also points out that the patent statute and judicial precedent suggest that the burden for rejecting claims in patent applications rests on the examiner.  He also characterizes all this discuss about eligible subject matter as simply the PTO’s way of avoiding examination on the merits.  This sounds like AIPLA’s amicus brief in Bilski and  Kristen Osenga, Ants, Elephant Guns, and Statutory Subject Matter, 39 ARIZONA STATE LAW JOURNAL 1087 (Winter 2007).