Archive for July, 2011

Federal Circuit Reverses District Court in Gene Patent Case

July 29, 2011

As expected, the Federal Circuit reversed the district court’s determination that Myriad’s gene patents are not patentable, Association for Molecular Pathology v. Myriad Genetics, Inc.  The court did rule that many of the method claims are directed to abstract mental ideas and are thus not patentable.

The three judges on the panel each wrote a separate opinion relating his or her views of the case.  Judge Lourie wrote the opinion of the court.  Judge Moore wrote a lengthy concurring opinion, and Judge Bryson concurred in all parts of the court’s opinion except the portion about isolated genes.  He would hold isolated genes to not be patentable subject matter.


First, the Federal Circuit held that, of all the plaintiffs in the case, only Dr. Harry Ostrer has standing to challenge the patents-in-suit.  Only Dr. Ostrer has indicated that he seeks to undertake specific activities that might fall within the patent claims.  The other plaintiffs merely indicate more hypothetical “some day” intentions to do so.  This is not adequate to confer standing on them to challenge the patents.

Interestingly, only two days ago, plaintiff’s counsel submitted a letter to the court indicating that Dr. Ostrer was leaving his current position at NYU to join a new lab that does not offer, and is not qualified to offer, genetic testing.  Since standing must be maintained throughout litigation, it would seem that this letter would effectively end the case as no other plaintiffs meet the standing requirement.  The court did not address this development in its opinion.

HT:  Hal Wegner

Isolated DNA Molecules

Next, the court addressed whether isolated DNA molecules are patentable subject matter.  After analyzing several Supreme Court decisions, including Chakrabarty and Funk Brothers, the court concluded as follows.

The distinction, therefore, between a product of nature and a human-made invention for purposes of § 101 turns on a change in the claimed composition’s identity compared with what exists in nature. Specifically, the Supreme Court has drawn a line between compositions that, even if combined or altered in a manner not found in nature, have similar characteristics as in nature, and compositions that human intervention has given “markedly different,” or “distinctive,” characteristics.

The court then concluded that the isolated DNA claimed in this case do have markedly different chemical identity and nature from DNA found in the human body.  The court distinguished isolating DNA from purifying it.  Purifying merely removes impurities, but results in an identical molecule.  Isolated DNA, by contrast, has been cleaved from a much larger DNA molecule, resulting in a distinct chemical entity.

In so holding, the court rejected the government’s view that isolated DNA should not be patentable, pejoratively referring to the government’s position as advocating a “magic microscope” test. 

The court also briefly addressed the other hypotheticals raised in various amicus briefs, such as elemental lithium, mining minerals from the earth, atomic particles like electrons, and organs like kidneys.  None of these results in a compound having a distinct chemical identity.  The court dismissed arguments about the claims’ breadth by noting that only the issue of patent eligibility was before the court, not the adequacy of the description.  The PTO has granted patents like these for many years.  Any change in policy should come from Congress, not the courts.

Judge Moore wrote a separate opinion concurring in the court’s judgment.  She goes into much more scientific detail on the various types of DNA and genes in the case as she concludes that isolated DNA has markedly different characteristics and utility than DNA in the body.  Her opinion seems to have been written almost entirely as a rebuttal to Judge Bryson’s opinion dissenting on this issue.

She also cautions courts against adding further judicial exceptions to the law of patentable subject matter.  She cites a number of very old patents claiming isolated molecules and compounds.  The settled expectations of the biotechnology industry must be given deference.

Judge Bryson argues that the only changes to the isolated DNA from those occuring in the body are incidental to their removal from their natural environment.  He does agree with the court that cDNA molecules do not occur naturally in the body and are eligible for patenting. 

Methods of Comparing or Analyzing Sequences

Next, the court turned to the patent eligibility of the method claims in the case.  The court held that the claims to “comparing” or “analyzing” two gene sequences are directed to abstract mental processes and are therefore not patent eligible.

The court distinguished these claims from those at issue in Prometheus because the claims in that case required a transformation step.  The comparison in this case is the result of mere inspection alone.

Method of Screening Potential Cancer Therapeutics

The court held that this claim is directed to patentable subject matter because it includes the step of “growing” the cells prior to their comparison.  This growth results in a transformation of the cells.  Other manipulations are also involved.  Thus, the claim is not directed to abstract ideas.


It will be interesting to see what happens on the standing issue.  The court made clear that only Dr. Ostrer has standing to bring this case.  Therefore, once he no longer has standing, the case should end.  The remaining plaintiffs are asking the court to provide an advisory opinion.  This, federal courts cannot do.

If the standing issue does not end the case, however, the plaintiffs will undoubtedly petition the Supreme Court to review this case.  That was their goal all along.  I can’t see what they would gain by requesting en banc review.  I would expect a cert. petition to be filed soon.


Evan Wallach Nominated to Federal Circuit

July 29, 2011

The news regarding judges on the Federal Circuit continues.  President Obama has nominated Judge Evan Wallach to the seat that Judge Gajarsa will be vacating when he assumes senior status.  Judge Wallach is currently a judge on the Court of International Trade, a position he has held since 1995.  He is a veteran of the Vietnam War and served as Judge Advocate General in the Army and National Guard.

Judge Wallach does not appear to have significant experience in intellectual property matters, but is considered an expert in the law of war.

Federal Circuit Judges Daniel Friedman and Glenn Archer Have Died

July 28, 2011

In recent weeks, the Federal Circuit has lost two of its senior judges.  Judge Daniel Friedman died on July 6 at age 95 and Judge Glenn Archer died yesterday at age 82.

Judge Friedman was the last surviving original member of the court that was founded in 1982.  He served in a number of positions within the Federal government, including at the SEC and the Department of Justice.  He also served in Europe during World War II.  He worked in the Solicitor General’s Office from 1959-1978 when he was appointed to the Court of Claims.  He continued his service on the Federal Circuit at its founding in 1982.  Judge Friedman took senior status in 1989, but continued to serve on many panels of the court after that date.

The Federal Circuit posted this announcement regarding Judge Friedman on its website:

The Honorable Daniel M. Friedman died at his home on Wednesday July 6, 2011.  Chief Judge Rader, in a message to the court announcing Judge Friedman’s death to the court, said: “ Yesterday we lost one of the grandest and best judges to ever grace this court – the last of the original members of the United States Court of Appeals for the Federal Circuit.  Indeed he was instrumental in the creation of our court.  Dan was also the last Chief Judge of the oldest Circuit Court in United States history, the United States Court of Claims.  Dan left us on the day before we open the renovated courtroom that preserves the Court of Claims legacy. Our flag will fly at half mast for three days to honor Dan Friedman. I mourn with you all.”

Judge Friedman was appointed Chief Judge of the Court of Claims by President Jimmy Carter in 1978.  When the Court of Claims merged with the Court of Customs and Patent Appeals to form the U. S. Court of Appeals for the Federal Circuit on October 1, 1982, Judge Friedman was elevated to the newly-established court on which he was deemed the first in seniority just below the Chief Judge.  Judge Friedman assumed the status of senior judge on November 1, 1989, and continued to actively serve on the Federal Circuit and also to sit by designation with other Circuits. Judge Friedman authored over 470 opinions for the Federal Circuit, over seventy opinions for the Court of Claims, and over 160 opinions when sitting by designation with other U. S. circuit courts of appeals.  

Judge Friedman’s legal career spanned almost seven decades, virtually all of it in public service. He began with a position at the Securities and Exchange Commission in the early 1940’s. From 1942 to 1946, he served in the U. S. Army in Europe.  Returning to the SEC at the conclusion of World War II, he worked there for five more years before joining the Antitrust Division of the Department of Justice, working there from 1951 to 1959. In 1959, he joined the Office of the Solicitor General, serving as an Assistant Solicitor and First Deputy Solicitor from 1959 to 1978, where he served twice as Acting Solicitor General and argued eighty cases at the Supreme Court.

Judge Archer served on the Federal Circuit from 1985 until he took senior status in 1997, serving as chief judge from 1994-1997.  He had worked in private practice for a number of years and also served in the Attorney General’s Office prior to his appointment to the court.

The Federal Circuit posted this announcement regarding Judge Archer on its website:

The Honorable Glenn L. Archer, Jr., died at Friendship Village’s Hospice of the Valley in Tempe, Arizona on July 27, 2011. Chief Judge Rader, in a message to the court announcing Judge Archer’s death said: “ Glenn was our third Chief Judge and the first Chief Judge of our court to start his judicial career with the Federal Circuit.  He led our court through some of our most challenging transitional years.  When we recall Glenn, we will speak of his magnificent service including his tenure as our Chief Judge, but we will mostly remember that his heart was grand enough to comprehend the hardships and challenges of every person he encountered.  His great compassion made him a great judge and a great leader.”

Judge Archer was appointed to the Court of Appeals for the Federal Circuit by President Ronald Reagan and assumed duties as Circuit Judge on December 23, 1985.  He became Chief Judge on March 18, 1994, and served in that capacity until December 24, 1997, when he assumed senior status.  While in senior status, Judge Archer continued to serve on the Federal Circuit and often sat by designation with the Ninth Circuit in both Pasadena and San Francisco, California.

Prior to his twenty-five years on the court, Judge Archer served as Assistant Attorney General, Tax Division, United States Department of Justice from 1982 to 1984. During his time in private practice, Judge Archer was an associate in the Washington, DC law firm of Hamel, Park, McCabe and Saunders from 1956 to1960 and a partner from 1960 to 1981.  Judge Archer served as First Lieutenant in the Judge Advocate General’s Office, United States Air Force from 1954 to 1956. He received a B.A. from Yale University in 1951 and a J.D., with honors, from George Washington University Law School in 1954.

Judge Arthur J. Gajarsa to Take Senior Status

July 25, 2011

Judge Gajarsa is becoming the most recent Federal Circuit judge to step down from active duty on the court.  He will take senior status on July 31.  Judge Gajarsa, 70, was appointed to the Federal Circuit in 1997 by President Clinton.

Other Judges and Possible Vacancies

The senior active judge on the court is Pauline Newman.  Judge Newman, 84, was appointed to the court by President Reagan in 1984.  She hasn’t given any indication that she may retire, but at her age you never know.

Judge Alan Lourie, 76, has been on the court since 1990.  He is also eligible for senior status.

Chief Judge Randall Rader, 62, would be eligible for senior status in 2014.

Judge William Bryson, 65, has been a member of the court since 1994.  He is eligible for senior status.

Judge Richard Linn, 67, joined the court in 2000.  Judge Linn will become eligible for senior status in 2013.

Judge Timothy Dyk, 74, has also been on the court since 2000.  He is eligible for senior status.

Judge Sharon Prost, 60, has been on the court since 2001.  She will be eligible for senior status in 2016.

Judges Kimberly Moore, 43, Kathleen O’Malley, 55, and Jimmie Reyna, 58, each have a number of years before they will be eligible for senior status.

There is also another vacancy on the court as Congress has not acted on Edward DuMont’s nomination since April 2010.

There are now two vacancies on the 12 seat court, with 4 additional judges eligible to step down.  In the next 3 years, 2 additional judges could also take senior status.  A near complete transformation of the court is and will be taking place in the near future.

HT:  Hal Wegner

PTO to Match Materiality Standard to Therasense

July 22, 2011

Yesterday, the PTO published a Federal Register notice that it plans to conform its materiality standard for complying with the duty of disclosure to that set forth by the Federal Circuit in Therasense.

The PTO indicated in the notice that it believes having one standard for both patent prosecution and patent litigation will make it easier for applicants and attorneys to comply.  The new standard will require applicants to submit information and references that are clearly material to the patentability of patent claims, but should keep them from dumping references of marginal importance.

The PTO had previously rejected a pure “but for” standard in 1992 in crafting new rules.  Now, the PTO believes that the court granted a safety net from the straight “but for” test.  The PTO characterizes the Federal Circuit’s test as “but for plus”.  Information is material if the patent claims would not have issued “but for” the withholding of the information from the PTO.  Information is also material if the conduct constitutes “affirmative egregious misconduct.”

Specifically, the PTO proposes to amend 37 C.F.R. § 1.56 as follows:

(b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., ___ F.3d ___ (Fed. Cir. 2011). Information is material to patentability under Therasense if:
(1) The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest
reasonable construction; or
(2) The applicant engages in affirmative egregious misconduct before the Office as to the information.

 The PTO has set a deadline of September 19 for comments to this proposed rule change.  The agency acknowledges that the Supreme Court may still weigh in on the case.  In the event that that happens, it may consider delaying publication of the final rule.  Given how long the rule-making process takes, however, the PTO decided to move ahead simultaneously with Supreme Court consideration.

Considerations About Applying for a Patent

July 21, 2011

You’ve come up with a great new idea for a product that you’ve never seen before.  In fact, you’re sure it’s never been done by anyone before.  Here are some issues to consider when determining whether to apply for a patent.

Who Has Rights in the Invention?

If you have a new idea or invention, you may need to determine who else may have rights in the invention, such as a co-inventor or employer.  For example, as an employee, if you develop a new idea or invention, you may need to discuss it with your employer to determine how best to proceed.  In general, employees retain ownership of their inventions that they invent unless there is an agreement with the employer to assign the invention to the employer, or if the employee was hired to invent.  Even if the employee retains ownership of the invention, the employer may have certain “shop rights” in the invention that may permit the employer to practice the invention.

If technology is or may be important to a company, it is important to have an employment or other type of agreement in place to be certain that rights to any inventions created by your employees are assigned to the company.  Ideally, these agreements are signed upon engagement of employment.  They can, however, with certain restrictions, be used at other times during employment.  An attorney can help prepare such an agreement to make sure that rights would be properly transferred.  This can also create an “obligation of assignment” in the invention to avoid certain obviousness rejections during prosecution of the patent application.

If you determine that you, or you and a co-inventor, have rights in an invention, you may want to determine whether to apply for a patent.  Anyone who is a co-inventor of an invention claimed in a patent application has an undivided right of ownership in the invention.  Each co-inventor has the right to license, assign, sell, or transfer his or her rights in the invention, or any part of the rights, without permission of the other co-inventors.  This is another reason that agreements between co-inventors is so important.

Should You Apply for a Patent?

One approach that can be used to determine how to proceed, that is, to determine whether to apply for a patent, is as follows:

If you have a new idea or if you have ownership rights in a new idea, the first thing you may wish to do is to try to determine whether it would be best protected by a patent or by another type of intellectual property protection, such as whether to keep the idea a trade secret or whether the idea is one best protected by copyright.  If the idea is easily kept secret, it may be better to keep the idea as a trade secret.  Trade secrets may be protected for an indefinite period of time, as long as they remain secret and provide a competitive benefit.  Other factors in this decision include whether it will be difficult to obtain patent protection, or if it will be difficult to detect infringement of the invention.  Such cases may also weigh in favor of trade secret protection.

If you believe the idea would be best protected by a patent, you should document and record any evidence of inventive activities, as these could become important when prosecuting the patent application.

Next, you may want to determine whether your idea is sufficiently developed to pursue patent protection at this time.  While it is not necessary to have made a model or prototype to obtain a patent, a patent application must include sufficient description and drawings of the invention to permit someone skilled in the art to which the invention pertains to make and use the invention.  If you have not yet determined these details, the invention may not yet be ready for patent protection.

The next step that you may wish to take is to determine whether filing a patent application is warranted and develop a business plan.  Is there a market for the invention?  Will you be able to sell or license the invention, or manufacture the product?  Will it be easy to detect infringement?  Does the investment justify the cost?

Before proceeding further, you may want to do any Internet search to determine the closest products that might affect the novelty or obviousness of the invention and also to determine who might be competitors.  This can be done initially using a search engine and also on a website that includes patents, such as  This search may help determine whether applying for a patent is warranted.  Many patents have been issued for products that never made it to the marketplace.  You may have never seen anything like your new invention, but there may be a patent that describes it, which would preclude you from patenting the same invention.  This initial search does not substitute for a search performed by a professional search company, but it is a good start.

You should then bring any search results and a brief description, as well as any drawings or models to a meeting with a patent attorney.  You should also provide any information that may be a statutory bar and any evidence of inventive activities.  The attorney can help advise you further on whether to file a patent application and prepare one for you should you decide to do so.

If the current Patent Reform bills pending in Congress are enacted, these steps will need to be conducted at light speed as the U.S. transitions from a first-to-invent to a first-to-file regime.

Clearance Searches & Opinions

Once you’ve developed a new product or invention, another consideration is whether anybody else has a patent that covers the product or invention that they can enforce against you.  Before undertaking significant investment in filing a patent application or in bringing the product to market, it may be prudent to perform a patent clearance search, sometimes called a “freedom to operate” search.  Otherwise, it may be that you receive a cease and desist letter or are sued for infringement after these investments have already been made and you could be on the hook for infringement damages and/or be prevented from using your invention.  At the very least, you may have to defend an expensive patent infringement lawsuit.

A patent attorney can assist you by having a search performed for a third party’s patents that may pose a risk of infringement for your product or invention.  If there are patents that are close or that may pose a problem, the attorney can work with you to design around the patent or you may abandon the idea and try something else before making significant investment.

What should you do if you have received a letter from a third party that threatens you with a patent infringement suit or asks you to license a patent?  Again, the advice of a patent attorney is invaluable here.  Simply ignoring the letter could potentially lead to your having to pay triple damages to the patentee in an infringement suit and being faced with an injunction.  The patent attorney can help you to decide an appropriate response and potentially give you a non-infringement opinion or an opinion that the patent is invalid.  The opinion could be used as a defense to a charge of willful infringement that may require a payment of triple damages.

Performing a bit of due diligence and spending a bit of time and money performing some background research can be invaluable before undertaking the marketing of a product or filing a patent application.  Spending some money now, could save you from a big lawsuit or failure to obtain good patent protection, or any patent at all, later.

Although the cost of protecting the invention may seem high, it usually pales in comparison to the cost of an infringement suit or the initial investment in getting a new product or service to market.  You generally should not share your invention with anyone, including approaching companies about it, without at least a non-disclosure agreement (NDA) in place, and preferably at least a provisional application.

PTO Numbers After Third Quarter of FY2011

July 14, 2011

June 30, marked the end of the third quarter of FY2011 for the PTO.  Time to refer again to the PTO’s Data Visualization Center to see how things are going.  The numbers below are comparisons of the numbers at the end of June 2011 with March 2011 and September 2010.

First Action Pendency – 27.2 Months

The PTO is either getting really squeezed by the congressional budget crisis or is concentrating all its efforts on clearing the oldest applications because this number is up from 25.3 months in March and 25.7 months in September.  It is taking nearly 2 months longer to get a first office action since March.  This is not good.

“Traditional” Total Pendency – 33.6 Months

The PTO does continue to make some progress on this number, as it is down from 33.9 months in March and 35.3 months in September.  That’s about 18 fewer days of pendency since the March numbers.  It hasn’t been this low since February 2009.

Application Pendency with RCEs – 40.6 Months

This number is encouraging.  The PTO dropped the number from 41.6 months in March and 42.6 months in September.  Hopefully, they can get it under 40 months soon.  While the number is the lowest since July 2009, that still well past 3 years to get a patent.

Applications Awaiting First Office Action – 695,086

Here’s where the PTO is making some real hay.  The agency has now reached its FY2010 goal of a backlog of less than 700,000, and this dispite indications that filings are up 4% this year.  The number is down from 708,912 in March, or nearly 2%.

Patent Application Allowance Rate – 46.5%, 63.1%

The first number counts RCE filings as abandonments, while the second number does not, but counts them as continuing prosecution.  These numbers are up from 46.2% and 62.9%, respectively, in March.  While these numbers continue to show slow, steady improvement, they also continue to demonstrate that many patents are allowed by forcing applicants to file RCEs that are not allowed initially.  This is another area where the PTO could significantly improve efficiency.

Number of Patent Examiners – 6,775

The budget crisis has stopped the PTO from the hiring that permitted a large influx of new examiners at the beginning of the fiscal year.  Instead, the number has dropped from 6,840 in March, but is still up significantly from the 6,128 in September.

Pendency from Application Filing to Board Decision – 80.3 Months

And here’s where the current crisis at the PTO lies.  This number continues to climb–from 78.6 months in March and 76 months in September.  That’s up 2.2% since March and a 5.7% increase during FY2011 to over 6 1/2 years.  This is not acceptable, as new technologies become obsolete prior to getting a patent or decision by the Board.  The PTO hired a number of additional patent judges and attorneys to deal with this issue, but the sharp increase in the number of appeals filed has made tackling this an impossibility.  Now, Congress wants to assign the Board more work.

At the end of June, the Board had 22,926 pending appeals from ex parte application prosecution, up 29% during FY2011 from 17,754.  So far this year, 10,318 new ex parte appeals have been filed, which is on pace for an 11% increase from last year.  Meanwhile, the Board has disposed of 5,146 such cases which is on pace for 3.8% fewer than FY2010.

In other types of cases before the Board, the number of new interferences is down slightly (from 52 to a pace for 49).  The Board is deciding about the same number each month as are newly docketed.  The number of new ex parte reexam appeals is down (from 158 to 140).  The Board is deciding these cases at a faster rate, cutting its inventory from 74 to 46 such cases. 

The other area of significant increase is inter partes reexams.  While 44 appeals were filed in FY2010, 72 have already been filed during FY2011, a pace for a 118% increase.  After disposing of 30 last year, the Board has already tackled 59 during FY2011, on pace for a 162% increase.  Clearly, inter partes reexamination proceedings are now being more widely used that Congress realizes.


The PTO must come up with a plan to deal with its crisis at the Board.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame, which 80.3 months is not.  The backlog is slowly decreasing; we can only assume that the first action pendency will as well once the PTO clears more of its oldest applications.

To truly fix these issues, Congress must permit the PTO to be fully funded so that it can be fully staffed to meet users’ needs.

Judge Michel on Patent Reform

July 11, 2011

Federal Circuit Judge Paul R. Michel (ret.) retired from the court on May 31, 2010, just over 13 months ago.  Since that time, he has focused his efforts on speaking and writing about patent reform.  I talked to Judge Michel last month at the Virginia State Bar (VSB) Annual Meeting where he was a speaker on an IP panel.  Judge Michel said that he had no plans to retire from the court as he really enjoyed his work there.  He came to realize, however, that he had a lot to say about patent reform and that it would not be appropriate for him to say everything he wanted to say while a member of the Federal Circuit.  Thus, he stepped down to work as a private citizen on this area that is near and dear to him.

Even before he retired from the court, Judge Michel decried the delays in the patent system and the theft of PTO user fees by Congress.  During the era of bailouts for private companies, he even called on Congress to return the nearly $1 billion that it had siphoned from the PTO during the last 10 years.  This would go a long way toward giving the PTO the resources it needs to reduce application pendency and the backlog that currently plagues the sytem.

Echoing his comments made at the VSB Annual meeting, Judge Michel has been writing a number of articles and blog posts that are highly critical of the current reform efforts in Congress.  He co-wrote an article on the Hill’s Congress blog that argued that both parties are working to stifle job growth.  Fee diversion and inadequate funding to the PTO has led to the enormous 1.2 million application backlog that has kept millions of jobs from being created.  Given the fact that H.R. 1249 cut the prohibition against fee diversion from the patent reform bill, several million new jobs will remain uncreated moving into the future.

Last week, Judge Michel wrote an article that appeared on Patently-O where he decried the special section of H.R. 1249 that permits specialized challenges to business method patents.  This provision favors the financial services sector and is characterized as a big bank bailout.  He also decries the section of the bill that declares all patents on tax planning strategies to be invalid.  Special interests continue to rule Congress and have even been able to invade patent law.

Yesterday, Judge Michel wrote a piece for IP Watchdog where he argues that H.R. 1249 will torpedo patent rights.  The post-grant opposition procedure that is praised for its speed by advocates will do nothing to speed up the process of challenging a patent given the inevitable appeals and unenforceability of the time guarantees.  The bill adds unneeded complexity to patent challenges by adding post-grant oppositions while retaining both ex parte reexamination and inter partes review.  Serial challenges could tie up a patent for nearly its entire enforceable life thereby casting a cloud of doubt over the patent and reducing its value.

The PTO will be overwelmed by these new procedures given the fact that the Board of Patent Appeals already has a staggering backlog of undecided cases.  Add to that the complexity of new patent challenges that will require skills that the administrative patent judges currently are not trained for, make it highly likely that these challenges will bring the proceedings to a near standstill.  The premise for post-grant review proceedings no longer exists.  In 2000, when post-grant oppositions were first proposed, very few inter partes reexamination proceedings were filed.  Now, these proceedings are used regularly to challenge patents.

Judge Michel has regularly spoken out about and has testified about patent reform in the past.  He is not anti-patent reform (few are), but he is anti-H.R. 1249.

Examiner Interviews

July 6, 2011

Oral communication is often more effective than written communication.

Once I’ve been through a round of written responses with a patent examiner, if I feel that the examiner is not being receptive to my position, I will conduct an interview with the examiner.  Often, the examiner will indicate that he or she had not fully grasped the position before and now better understands the distinctions between the claimed invention and the prior art.  Even in cases where I don’t get the examiner to agree with me, we usually understand each other’s position better which enables me to better advise my client on how to proceed with the case.

It is often easy for an examiner to cut-and-paste language from previous office actions when responding to an applicant’s amendment.  Sometimes this is because the examiner doesn’t fully appreciate the applicant’s position, sometimes this is because the applicant and examiner are talking past each other.  An interview can often resolve these issues as the examiner must listen and consider the applicant’s postion without resorting to cut-and-paste.

This isn’t to say that all interviews are successful.  Many examiners are not used to oral communication and will be non-committal.  This is especially true for junior examiners.  Junior examiners do not have authority to allow claims without review by a senior examiner or supervisor.  Thus, examiner interviews with junior examiners require a senior examiner with such authority to also be present.  The problem is that the senior examiner has his or her own docket and often is not familiar with the application and issues or is not prepared for the interview.  Such interviews can be frustrating and maybe even unhelpful.

In any event, even if the interview does not result in allowance of the claims, I have more information about the application and the examiner’s position than I did prior to the interview.  I can advise my client that the examiner will not be persuaded.  Perhaps we are more likely to get a positive result through appeal rather than another round of responses.

Interviews are not a way to avoid making comments on the record that become part of the prosecution file.  If there is an outstanding office action, most examiners will require the applicant to send in a proposed amendment or set of arguments that will become a part of the record.  This can sometimes be avoided if the interview is conducted after a response has been filed.  After the interview, a written summary is prepared by both the examiner and the applicant that becomes part of the file. 

Nonetheless, if I determine during an interview that a particular argument is clearly not going to persuade the examiner, and I don’t think the argument is vital to the case, I may omit it from my next response, thereby keeping it out of the record.

Director Kappos has recently touted the PTO’s increased use and emphasis of the examiner interview program.  He noted that interviews are up about 50% over the number conducted 2 fiscal years ago.  Applicants speak positively about their reactions.

In sum, I applaud Director Kappos for increasing emphasis on examiner interviews as a way to advance prosecution.  The pre-exam interview program should also be of great help in this regard.