Archive for October, 2011

Provisional Patent Applications

October 31, 2011

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, but foreign applications based on U.S. provisional applications must still be filed within 12 months of the U.S. provisional application’s filing date.

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 $250 ($125 for small entity), while the filing fee for a non-provisional application is $1250 ($530 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.

Design Patents

October 26, 2011

Utility patents get all of the publicity in when discussing innovation.  Another option that an inventor may want to consider is a design patent.  Utility patents cover structural and 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 aesthetic 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 structure of an article and the way it is used and works; 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 aesthetic purposes.

The requirements for obtaining a design patent 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.  The drawings will typically be more detailed than in a utility application as they will often show more views of the invention.  The drawings contitute the claims of the design patent.  Because they don’t require a detailed specification like a utility patent, design patents are also less costly to prepare and file.

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.  In recent years, design patents have had 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.

For an invention where design and utility patent protection are both appropriate, I would not skip the utility patent.  An inventor should at least file a utility application for its broadder scope of coverage and should also consider a design patent.  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.

PTO Numbers at End of FY2011

October 20, 2011

September 30 marked the end 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 September 2011 with June 2011 and September 2010.

First Action Pendency – 28 Months

First action pendency continues to increase at the PTO.  In June, first action pendency was 27.2 months, while at the end of FY2010 it was 25.7 months.  Thus, it is taking 2.3 months longer to get a first office action now than a year ago.  The PTO is working to clear the oldest applications, but it appears to be slipping on numbers like this one.  A nearly 9% increase in time to first action is not a good sign.

“Traditional” Total Pendency – 33.7 Months

Traditional pendency has been fairly flat, up from 33.6 months in June, but down from 35.3 months at the end of FY2010.  Good progress was made early in FY2011, but it has now flattened out.

Application Pendency with RCEs – 40.9 Months

This number, like traditional pendency, saw good progress early in FY2010, but flattened out towards the end.  It was at 42.6 months at the end of FY2010, but at 40.6 months at the end of June.  Since June, the time has increased by 0.3 months.  A short term goal should be to get this number under 40 months; anything over 3 years is too long.

Applications Awaiting First Office Action – 669,625

The PTO continues its impressive performance in working through the backlog.  At the end of FY2010, the backlog of unexamined applications was 708,535 and at the end of June it was 695,086.  That’s a 5.5% reduction for the year and a 3.7% reduction for the quarter.  This comes despite the fact that application filings were up for the year.

Patent Application Allowance Rate – 48%, 64.4%

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 47% and 63.4%, respectively, in June.  At the end of FY2010, the numbers were 45.6% and 61.1%, respectively.  While these numbers continue to show slow, steady improvement from earlier record low numbers, 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 – 6,690

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 been steadily falling from the high of 6,846 in February and from 6,775 in June.  For the year, the number of examiner is up by 562 from 6,128 last September, a 9.2% increase in the size of the examining corps.

Pendency from Application Filing to Board Decision – 81.4 Months

This crisis continues to get worse.   This number continues to climb–from 80.3 months in June and 76 months last September.  That’s up 1.4% since June and a 7.1% increase during FY2011 to over 6 3/4 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. 

At the end of FY2011, the Board had 23,963 pending appeals from ex parte application prosecution, up 35% during FY2011 from 17,754.  During FY2011, 13,501 new ex parte appeals have been filed, a 9% increase from last year.  Meanwhile, the Board has disposed of 7,292 such cases, about 2% more than FY2010.

In other types of cases before the Board, the number of new interferences is also up from 52 to 64, a 23% increase from FY2010.  The Board is 51 cases compared to 50 in FY2010.  The number of new ex parte reexam appeals filed during FY2011 was down from 158 to 125.  Meanwhile, the Board decided 173 of these cases, cutting its inventory from 74 to 26 such cases.  It made good headway here.

The other area of significant increase is inter partes reexams.  While 44 appeals were filed in FY2010, 114 were filed during FY2011, a pace for a 159% increase.  After disposing of 30 last year, the Board decided 86 during FY2011.  Clearly, inter partes reexamination proceedings are now being more widely used that Congress realizes.


The incredibly shrinking PTO backlog is a really good sign, but most other numbers are not keeping pace.  There is no concomitant decrease in pendency to first office action or total pendency.  These numbers will hopefully follows once the PTO gets the oldest cases out of the way.

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 81.4 months is not.  The PTO is working hard to try to hire more judges and patent attorneys to work on this situation, but Congress added to its workload as well.  The Board will soon need to deal with post grant oppositions and other procedures from the America Invents Act.

To truly fix these issues, Congress must end fee diversion permanently and permit the PTO to be fully funded so that it can be fully staffed to meet users’ needs.  Unfortunately, due to partisan politics and budget crises throughout the government, it missed the opportunity to do so this time around.  The patent community should continue to pressue congress to keep its hands off the PTO’s money.

Patentable Subject Matter at the Supreme Court

October 18, 2011

We didn’t really think that the issue of patentable subject matter was settled after Bilski.  The Supreme Court will be hearing another appeal in a patentable subject matter case in the current term.  Several others could be added to the docket as the losing parties will probably file cert. petitions to the Court.

Mayo v. Prometheus

The Court will hear argument in Mayo v. Prometheus on December 7.  This case concerns patent claims directed to methods of calibrating drug dosages.  The original district court opinion found the patent claims to be invalid as not directed to patentable subject matter.  In 2009, a Federal Circuit panel reversed the decision.  After the Supreme Court’s decision in Bilski, the Court ordered the Federal Circuit to reconsider this case.  The Federal Circuit did so and again confirmed the patentability of the claims.  The Supreme Court has again agreed to hear the case, presumably because the Federal Circuit disregarded the district court’s and Mayo’s extreme reliance on Justice Breyer’s dissent from the dismissal order in LabCorp.

Classen v. Biogen

Classen is a case that is similar to Mayo in that the claims are directed to immunization methods.  The Federal Circuit originally held that the claims did not meet Bilski‘s machine-or-transformation test.  After the Supreme Court’s decision in that case, the Federal Circuit had to reconsider its earlier opinion.  The court that included a largely reconstituted panel changed its position, holding that the claims are patent eligible.  Judge Newman and Chief Judge Rader held the claims to be patent eligible, while Judge Moore wrote an extensive dissent.  The opinions totaled 57 pages, potentially signalling that the case may be headed back to the Supreme Court.

A cert. petition is due in late November.  The Supreme Court may hold the petition until it decides the Mayo case since the cases are similar.  It could then tell the Federal Circuit to reconsider its opinion again.

Association for Molecular Pathology v. Myriad

After the district court held that Myriad’s patent to isolated genes were not patent eligible, the Federal Circuit reversed.  The court did hold that several claims to methods of comparing and analyzing gene sequences were not eligible since they are directed to abstract mental processes.  Another big issue in this case, ignored by the Federal Circuit, is that none of the plaintiffs have standing in the case anymore.  This could be a problem for Supreme Court review.

A cert. petition is due in December.  The ACLU originally filed this case with the expectation of High Court review, so a petition is expected to be filed.

CyberSource v. Retail Decisions

In CyberSource, the Federal Circuit repudiated tens of thousands of patents in holding that Beauregard-type claims may be considered as methods directed to abstract ideas.  Beuregard-type claims are claims that are directed to computer-readable media that include program instructions for performing a particular method.  The Patent Office has been granting such patents for years with the understanding that a computer-readable medium is a tangible object and not an abstract method.

If no rehearing petitions are filed in this case, a cert. petition would be due in December.

America Invents Act: New Section 102

October 12, 2011

One of the major changes to US patent law in the America Invents Act is the change to § 102.  The new subsection (a) reads as follows:

(a) A person shall be entitled to a patent unless:

(1)  the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2)  the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

This new subsection greatly expands the prior art available for use against a patent or application.  First, subsection (1) eliminates the grace period (subject to subsection (b)’s limited exceptions).  A patent is not availabe if the invention was patented, described in a publication, in public use, on sale, or otherwise available to the public before the effective filing date of the application.  No longer is there a distinction between activities conducted “in this country” or “in this or a foreign country.”  Any public disclosure anywhere will negate the ability to obtain a patent.

Subsection (2) switches the US to a “first-to-file” regime by noting that a patent is not available if an earlier-filed application that “names another inventor” describes the claimed invention.  Does this mean a completely different inventive entity or merely a single change in inventorship?  If the later-filed application adds or eliminates one of the inventors from the earlier-filed application, is that a “different inventor”?

Under current US law, US patents and published applications are prior art as of their US effective filing date, regardless of foreign priority claim.  Subsection (2) precludes a patent if the earlier application was “effectively filed” before the later-filed application.  This would suggest that they will now be prior art as of their earliest priority date even if filed outside the US.

Subsection (b) provides some exceptions to subsection (a) for activities of the inventor.


(1)  DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–

(A)  the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B)  the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2)  DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–

(A)  the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B)  the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C)  the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

Subsection (b)(1)(A) provides an exception for a “disclosure” made by the inventor or one who obtained the subject matter disclosed directly or indirectly from the inventor within one year prior to the application’s filing date.  Subsection (B) even insulates subsequent “disclosures” made by third parties during that year, provided that the inventor made an initial disclosure of the invention.

This subsection seems to encourage inventors to disclose their inventions early so as to insulate themselves from later disclosures by third parties.  Inventors should publish their inventions early.  Provided a patent application is filed within one year of this disclosure, he should be insulated from third party disclosures occurring within that year.

This does not mean that inventors should simply put every new idea they have up on a website as a “disclosure” to insulate them from third party disclosures for a year.  The disclosure by the inventor will probably need to be an enabling disclosure that provides sufficient details to enable one of ordinary skill in the art to make and use the invention.  If an inventor makes a non-enabling disclosure of an idea and a third party then makes an enabling disclosure or files a patent application that includes an enabling disclosure of the invention, the inventor will probably be precluded from obtaining a patent on the original idea.  Ideas cannot be patented, only inventions can.

Subsection (b)(2) is an exception to the first-to-file provisions:  if a disclosure in a patent or patent application was obtained directly or indirectly from the inventor; if the inventor had disclosed the invention within a year of filing his application; or if the claimed invention and the disclosure were owned by the same entity or subject to an assignment obligation to the same entity, as of the effective filing date, an earlier filed application will not necessarily preclude a patent on a later-filed application by the inventor.

Notably, there is no grace period for public use or commercial activities such as sales or offers for sale.

Section 102(c) defines common ownership under a joint research agreement.  Under current law, § 103(c) excludes prior art for obviousness purposes that is commonly owned or subject to a joint research agreement.  New § 102(c) expands this to exclude such prior art disclosures within a year of the application’s filing date for novelty purposes as well.

These provisions go into effect for applications filed 18 months after the effective date of the Act or March 16, 2013.

Patent Docs provides additional details, including a description of “derivation” under the Act.

Judiciary Committee Approves Judge Wallach

October 10, 2011

Last week, the Senate Judiciary Committee voted to recommend confirmation of the nomination of Court of International Trade Judge Evan Wallach fill Judge Arthur Gajarsa’s seet on the Federal Circuit.  The nomination was approved by voice vote without significant discussion and now moves to the Senate floor for confirmation by the entire Senate.

The Federal Circuit is currently short by two active judges.  Edward DuMont was nominated by President Obama to fill Judge Paul Michel’s seat, but DuMont’s nomination appears to be stalled.  In the 18 months since the nomination, the Judiciary Committee has yet to schedule a hearing on his nomination.

Discussion of Supreme Court’s Patent Jurisprudence at SCOTUSblog

October 6, 2011

I am participating in a discussion on SCOTUSblog regarding the Supreme Court’s patent jurisprudence.  Many other distinguished patent and intellectual property scholars are also participating.

Check it out.

Patent Deadlines

October 3, 2011

Many new inventors and start-ups attempt to nagivate the patent system on their own to save money.  This is understandable to a certain extent because obtaining a strong patent portfolio is not a cheap endeavor.  Aside from problems with not being familiar with PTO practice and procedure or with Federal Circuit caselaw on how certain language used in patent applications and claims can affect patent strength (or the ability to obtain a patent at all), the most dangerous aspect of “going it alone” is the potential loss of patent rights due to missed deadlines.

Currently, under U.S. patent law, an inventor can publicly disclose his invention without losing patent rights, provided that he files a patent application within one year of that disclosure.  To a certain extent, this rule will be changing in a rather significant way as the America Invents Act goes into effect.

Problems can arise, however, when the inventors are advertising the new invention for sale, such as on a website, or even if they disclose the invention to potential investors.  A website publication is quite obviously public, but what about a disclosure to potential investors?  Provided that the investors are required to sign a non-disclosure agreement, this can be OK.  Many investors, however, won’t sign these agreements.  In this case, the inventors should disclose as little as possible regarding the invention.  If too much is disclosed, this could have a significant negative effect on patent rights.  Even if the complete invention is not disclosed, the amount of the disclosure may cause the invention to be adjudged obvious in light of other prior art.

One potential solution is to file a provisional application prior to disclosure to investors.  If the inventors don’t have the money for such a filing, this may not work either.

Foreign Patent Rights

Another problem arises when new inventors and start-ups begin patenting on their own without realizing that there are deadlines for foreign patent filings, or realizing the significance of not obtaining foreign patent protection.  Maybe they think they will file outside the US once they make a few sales of the invention and get more funding.  Or, they don’t consider foreign markets, focusing initially only on the US market.

Under the Paris Convention, a patent application that is filed within one year of the filing date of a first patent application is effective as if filed in that country on the filing date of the first application.  For example, if an applicant files first in the US and then files in Japan within 12 months of the US filing date, the Japanese application is effective as if filed in Japan on the same date as the US application.  This generally includes provisional applications as well.  If the first filed application is a provisional application, any applications filed within 12 months and claiming priority are effective as if filed on the date of the provisional application.

Conversely, if the one year deadline is missed, the application is treated by the foreign patent office as if filed on its actual filing date and not on the date of the earlier filing.  Thus, a “wait until we have money” or a “I didn’t think about foreign markets” approach can result in loss of rights.  One way to extend the time required to deal with these decisions is to use the Patent Cooperation Treaty.

The risk with waiting more than one year after the earliest application’s filing date to file in foreign countries is that most countries have an absolute novelty requirement.  Thus, any type of public disclosure, use, publication, or offer for sale destroys patent rights in those countries.  If an inventor files a US patent application, then discloses his invention to get more funding, and waits more than one year from the public disclosure to file for foreign patent protection, he will not be entitled to any foreign patent rights in absolute novelty countries.  Furthermore, even if the inventor doesn’t disclose his invention, the PTO publishes most patent applications 18 months after their earliest priority date, unless the inventor requests otherwise.  This also results in loss of foreign patent rights.

The bottom line is that patent deadlines that can result in loss of patent rights are another reason that inventors should work with a patent attorney who can guide them through the various deadlines and provide advice regarding US and foreign patent filings.  Saving a bit of money up front often results in the loss of patent rights in the end.