Archive for April, 2012

Interviews with Patent Examiners

April 30, 2012

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.  And, many junior examiners are very reluctant to allow patents.

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.


Book Review: Fun IP

April 24, 2012

Fundamentals of Intellectual Property

By Dr. Kalyan C. Kankanala

Dr. Kankanala is an author and contributor to the SiNApSE blog that covers intellectual property news with a particular emphasis on developments in India.

Fun IP is a concise, albeit rather comprehensive, book that provides an introduction to the various aspects of intellectual property law.  It covers the basics of patents, copyrights, trademarks, geographical indications, industrial designs, trade secrets, and traditional knowledge.  For each regime of protection, the book lays out the requirements for obtaining the protection, what would constitute infringement, and various defenses and remedies available.

While the book is applicable to intellectual property generally, its specific focus is on intellectual property in India.  It is interesting to note the differences between the relatively young system of IP in India compared to more mature systems in the US and Europe.  For example, he notes how much more restrictive India is with respect to patentable subject matter and how brand name pharmaceutical companies are not winning infringement suits in India very often.

Trade secrets would seem to provide a particular problem to companies in India.  Dr. Kankanala notes that non-compete agreements that extend beyond the term of employment are invalid and cannot be enforced.  Further, the doctrine of inevitable disclosure permits the former employee to take his knowledge and skill to work for a competitor.  Thus, it would seem to be very difficult to protect trade secrets in India.

There are several aspects of Indian IP law for which there is no counterpart in the US or the counterpart is not of significance.  India includes a type of patent called a petty patent.  Such a patent protects incremental changes or improvements in a product or process that would otherwise be deemed obvious over the existing art.  The improvement need only meet the novelty requirement for approval.

The book includes a chapter on “Traditional Knowlege.”  Traditional knowledge is knowledge or information that is in the possession of indigenous communities and has been passed down from ancestors.  It is understood that this information is often not well documented.  The purpose of protecting the knowledge is to prevent its misuse by other parties, but also to keep others from obtaining IP protection for this information.  The book includes examples where the submission of traditional knowledge was used to oppose patent protection.

The book also includes a brief overview of the business value of IP and how businesses can educate and provide incentives to employees to protect and value IP.  It notes that Indian companies do not yet understand how to value and monetize their IP.  They also need to understand the risks associated with potential infringement of the IP of third parties.

Finally, the book concludes with a look at open source and the creative commons.  It covers various theories and licensing arrangements associated with the free use of intellectual property.

Overall, the book is a good introduction to the various aspects of intellectual property for the uninformed.  It is also a good resource for some of the nuances and variations that are specific to Indian IP law and practice.  Dr. Kankanala is a native of India and there are some awkward and non-traditional phrases in the book.  It could also use a bit more editing for spelling and grammar.  Overall, however, the book is a very good value and is priced very reasonably.  I would recommend the book.

2011 Term Supreme Court Patent Cases

April 19, 2012

The Supreme Court has decided the three high profile cases that it heard this term.  The background of the cases was discussed previously.

In March, the Supreme Court decided Mayo Collaborative Services, Inc. v. Prometheus Labs., Inc.  where the Court again confused patentable subject matter to patentability.

Earlier this week, the Court decided Caraco Pharm. Labs. Ltd. v. Novo Nordisk A/S.  In a unanimous decision, the Court held that in an infringement action brought under the Hatch-Waxman Act, the generic pharmaceutical company accused of infringement can bring a counterclaim against the patent owner that the use code for the patent listed in the FDA’s Orange Book is incorrect and must be corrected.  Overly broad descriptions of the patent claim scope are problematic for getting cheaper pharmaceuticals to market more quickly.

Yesterday, the Court issued its opinion in Kappos v. Hyatt.  In another unanimous opinion, the Court held that where an applicant has had a patent application rejected by the PTO at the Board of Appeals and Interferences and has filed a civil action in district court to obtain his patent, the court must permit the applicant to present new evidence not previously submitted to the PTO and must review the evidence de novo without giving deference to the final PTO decision.  Whether the applicant had the opportunity to present the evidence to the PTO may still be considered by the court when weighing the evidence.

Government Report on IP in the U.S. Economy

April 16, 2012

The Economics and Statistics Administration and the PTO have released a new report entitled:  Intellectual Property and the U.S. Economy:  Industries in Focus

The report recognizes that the entire US economy relies to some extent on IP.  It concludes that direct employment in the most IP intensive fields accounted for 27.1 million jobs in 2010, while indirect activities associated with those jobs provided an additional 12.9 million jobs.  The total of 40 million jobs or 27.7% of the US economy.  IP intensive industries accounted for $5.06 trillion in value added in 2010 or 34.8% of US GDP.

Employment in IP intensive fields has lagged behind other fields due to the historic loss of manufacturing jobs during the last two decades.  Between 2010 and 2011, copyright and patent-intensive industries have increased by over 2% in leading the economic recovery.  IP intensive jobs command a 42% premium over jobs in non-IP intensive fields.  In 1990, this premium was only 22%.

The report specifically does not provide any policy suggestions or recommendations.  It does, however, appear to be a political document noting that Pres. Obama has emphasized innovation in a number of speeches in the last few years.

It is interesting, as Hal Wegner notes, that this report emphasizes the importance of IP and patents to the economy.  It is co-authored by the PTO’s Chief Economist Stuart Graham.  Graham also co-authored a 2008 study that appeared in the Berkeley Technology Law Journal that argued that patents are not important and provide weak incentives for innovation, and a 2010 Commerce Department White Paper that argued that patent reform would provide incredible benefits for the economy.

PTO Seeks to Expand After Final Practice

April 3, 2012

After an applicant files a patent application, he receives an Office Action from the patent examiner.  The applicant generally responds to any rejections by filing an Amendment with claim amendments and arguments.  He may also cancel claims or add new claims to the application, provided that the new claims are supported by the original disclosure in the application and do not add “new matter.”

The examiner will then review the Amendment and issue a Notice of Allowance or a Final Office Action.  A Final Office Action would include the examiner’s response to the claim amendments and arguments.  It would indicate which rejections are still applicable and which have been overcome.

After a Final Office Action, an applicants options are more limited.  He can always file a Notice of Appeal, file a continuing application, or file a Request for Continued Examination (RCE).  The first option is very expensive and time-consuming given the backlog at the Board of Appeals, while the latter options abandon the application (in the PTO’s view) in favor of the continued prosecution.  It can mean that the application is sent back into the examination queue meaning that it could be a year or more before the examiner considers the case again.

There are limited prosecution options available to an applicant after a Final Office Action.  He could cancel any rejected claims and permit allowed claims to issue.  He can usually amend an independent claim to add limitations from allowable dependent claims.  Examiners, however, have broad latitude to refuse to consider most amendments made after a Final Office Action on the grounds that the amendment “raises new issues” or “requires additional search.”  As in all aspects of patent prosecution, some examiners are reasonable about this and others are not.

Thus, applicants are sometimes forced into filing RCEs, which creates the current problem of a huge RCE backlog.

Examiners are not all to blame for these problems.  The system provides them with incentives to not consider amendments made after a Final Office Action.  Examiners get credit for initially examining an application, for issuing a Final Office Action, and for a Notice of Allowance or an abandonment by the applicant.  As noted above, a continuation or RCE filing are considered abandonments by the PTO.  Thus, requiring applicants to file RCEs gives the examiner more credit toward examination goals.

Further, patent applications and claims are sometimes not ready or in good shape at the time of the initial Office Action.  This means that only after filing an Amendment are the claims placed in good shape by the applicant.  In that case, the first Office Action is not helpful to advancing the case and can cause the delay in prosecution.  Sometimes applicants are a bit intransigent until after receiving a Final Office Action.  Applicants are sometimes to blame for delays in prosecution.

The PTO is now proposing an After Final Consideration Pilot program during the third quarter of FY2012 (April-June).  After a Final Office Action, the PTO will give examiners up to 3 hours of non-production time to consider issues and perform searches for utility and plant applications and up to 1 hour for design applications.  Examiners are encouraged to use their professional judgment to determine whether the nature and extent of amendments and arguments can be fully considered within this time period.  This should encourage a bit more flexibility and negotiation between examiners and applicants after a Final Office Action. 

The goal is to provide more compact prosecution and to reduce the number of RCE filings.  This seems to be a good way to attempt to solve this issue.

HT:  IP Watchdog.

UPDATE: Judiciary Committee Approves Taranto

April 2, 2012

Last week, the Senate Judiciary Committee approved the appointment of Richard Taranto to the Federal Circuit.  The vote was unanimous but for Sen. Mike Lee (R-UT) who has committed to vote against all of President Obama’s nominees as a protest to several recess appointments made during a two-day congressional break in January.

It seems that Taranto should sail through a confirmation vote from the entire Senate.  The question is simply a matter of when that body will get around to it.  The Federal Circuit has not had its full complement of 12 judges since October 2009 when Judge Schall took Senior Status.