Archive for October, 2012

Patent Application Drawings

October 24, 2012

One of the reasons that I tell inventors that we need to begin preparing a patent application well in advance of the deadline is the need for properly prepared drawings.

For provisional applications, just about any drawings will do.  Like other aspects of provisionals, the better prepared the provisional, the better chance of being able to properly rely on the provisional filing date.  Thus, even for provisionals, proper drawings are important.

For non-provisional patent applications, drawings are not an afterthought.  There are a number of very specific PTO rules that must be followed in the drawings.  The drawings must show every feature of the invention specified in the claims.  This means that it is not enough to simply discuss the idea of the invention generally in the specification; the invention must be discussed and the drawings described in detail.

When preparing the specification of a patent application, it is important to provide different levels of specificity.  The invention should be described broadly and generally, but also with increasing levels of detail.  This provides support for claims of varying breadth.

The drawings include reference numerals that point to various parts or elements in the drawings.  These numerals are referred to in the specification to describe the invention, including how it is made and used.  In this way, the drawings are not cluttered with a lot of words that make them difficult to read and understand.

Inventors sometimes think they can save money by preparing their own formal drawings.  There are also a number of specific requirements relating to margins, font size, and lead lines used in the drawings.  The rules for PCT applications are even more specific.  In a typical case, patent draftmen who specialize in preparing patent drawings only charge a couple hundred dollars to prepare the drawings for an application.  When I work with inventors who want to do the drawings themselves, I often go through multiple iterations that require a great deal of my time to correct and explain as the inventor works to comply with the drawing rules.  In these cases, the time involved costs a great deal more than a couple hundred dollars.

Like most aspects of patent preparation and prosecution, a patent attorney can easily provide advice and guidance on the preparation of drawings for a patent application.

PTO Numbers – End of FY2012

October 17, 2012

We have now reached the end of FY2012.  It’s time to review PTO numbers again.

The following is a comparison of the PTO’s numbers from the end of June 2012 (at my last numbers update) with the end of FY2012 (September 2012).  Time to refer again to the PTO’s Data Visualization Center to see how things are going. 

First Action Pendency – 21.9 Months

At the end of FY2011, first action pendency was 28 months.  In June, it dropped to 22.6 months.  The 0.7 month progress since June isn’t huge, but the 6.1 month drop during the year is excellent!  That’s nearly a 22% drop in the course of a single year.

“Traditional” Total Pendency – 32.4 Months

Traditional pendency is down from 33.5 months in June.  The 3.3% reduction of over a month is good.  This number has been trending downward and represents good work by the PTO.

Application Pendency with RCEs – 39.4 Months

This number was at 40.0 months in June.  We’ve finally gotten this number under 40 months, but need to continue to do better.  This represents a 1.5% reduction since June and a drop of 1.5 months since FY2011 (3.7%).  This is progress, but the increasing number of RCE filings (and appeals) makes this number look better than it actually is.

Applications Awaiting First Office Action – 608,283

The PTO continues its steady, impressive performance in working through the backlog.  At the end of June, the backlog of unexamined applications was 632,981.  Since then, the backlog has decreased another 3.9%.  This is a very positive trend for the PTO.   This is where the office seems to be making the most progress.

Patent Application Allowance Rate – 51.4%, 68.1%

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 50.4% and 67.2%, respectively, in June.  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 is making slow, steady progress.  The nearly 17% difference between the two numbers is, however, troubling.  Especially considering the next number

RCE Backlog – 95,200

At the end of FY2010, the PTO reported 40,939 applications with RCE filings that awaited action; at the end of FY2011 that number had crept up to 63,487.  That represents a 50% increase during FY2012 and a 133% increase over the last two years.  Not good . . .

Number of Patent Examiners – 7,837

This number is up from 7,280 in June.  It’s still tough for the PTO to budget properly with no guarantee that fee diversion won’t continue.  This appears to be an all-time high for number of patent examiners.

Pendency from Application Filing to Board Decision – 85.9 Months

The crisis at the Board continues to get worse and shows no signs of abating.   This number continues to climb–from 85.5 months in June.  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.   The Board will have significantly greater responsibilities with the beginning of the new post-grant review proceedings.

At the end of FY2012, the Board had 26,484 pending appeals from ex parte application prosecution, a 0.8% reduction since June!  Unfortunately, that’s still a 10.5% incrase for the year.   12,433 new appeals were filed during the fiscal year, which is down from 13,501 filed during FY2011; that’s a 7.9% drop.  Meanwhile, the Board disposed of 9,912 cases during FY2012, an increase of 35.9% from FY2011’s 7,292 such cases!

In other types of cases before the Board, the number of new interferences was 56 compared to 64 during FY2011.  The Board disposed of 62 cases, while concluding only 51 during FY2011.  The number of new ex parte reexam appeals filed was 115, fewer than the 125 filed during FY2011.  Meanwhile, the Board decided 119 of these cases, as its inventory dropped from 26 to 22 during the year.

The other area of significant increase is inter partes reexams.  While 114 appeals were filed in FY2011, 162 were filed during FY2012, a 42% increase.  The Board has decided 149 cases, after having decided only 86 last year. 


The PTO is doing a good job on the front end.  Significant progress is being made on first office action pendency.  The problems begin, however, once an application reaches a final office action.  RCE filings are skyrocketing.  Many or most of these are the result of examiners forcing them on applicants.  This is very inefficient and increases application cost and pendency significantly.

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.  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.  The patent community must continue to pressue congress to keep its hands off the PTO’s money.

Design Patent Considerations

October 17, 2012

Utility patents get all of the publicity in when discussing innovation.  This could be changing with Apple’s $1.05 billion verdict against Samsung, which was based in large part on infringement of Apple’s design patents.

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.

Federal Circuit to Consider Patent Eligibility of Computer-Related Inventions En Banc

October 10, 2012

In July, a divided Federal Circuit panel held a large number of patent claims directed to a computer-related invention to be eligible subject matter under § 101 of the Patent Act.  The court performed a claim construction analysis on the various limitations of the claims to determine the scope and content of the claims.  The court then considered each entire claim as a whole to determine whether the it contained patent eligible subject matter.

At the time of the opinion, I noted that, while I agreed with the opinion, the court seemed to add uncertainty to this area of law.  Judge Prost’s “common sense” approach in the dissent added to the notion that whether an invention is patent eligible seems to depend on the composition of the panel hearing the appeal.

Yesterday, the court ordered the original opinion withdrawn and that it will hear the case again en banc.  Specifically, the court will consider two questions:

a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

Supreme Court to Review Patent Cases

October 9, 2012

The Supreme Court has agreed to hear appeals in two patent cases during the October 2012 term.

Bowman v. Monsanto Co.

This case concerns the doctrine of patent exhaustion where a patent owner is only entitled to compensation from the first sale of a patented invention and not from subsequent authorized sales. 

Monsanto has engineered genetically modified seeds that are resistant to herbicides.  When purchasing the seeds, Monsanto requires farmers to agree that they won’t use the seeds for the next year’s planting.  In this way, Monsanto seeks to ensure that farmers must buy the patented seeds from them each year.

Bowman purchased Monsanto’s patented seeds for the purpose of growing new plants and harvesting the seeds from those plants to use in the following year’s planting.  He argues that the original sale exhausted Monsanto’s patent rights.  Monsanto has rights in the first generation of seeds and not in subsequent generations. 

The Federal Circuit agreed with Monsanto that Bowman had created a newly infringing article.  The opinion seemed to rely in part on the conditional sale doctrine that allows patent owners to continue to assert rights in patented articles even after a sale.  Some argue that this is contrary to the Supreme Court’s 2008 decision in Quanta v. LG Electronics.

The Supreme Court often decides to hear cases based on a split between the lower courts of appeals on particular issues.  Given that all patent appeals are heard by the Federal Circuit, there aren’t really such splits.  Instead, the Court sometimes requests the views of the Administration on whether to hear a particular patent case.  Interestingly, the Court agreed to review this case against the advise of the Administration.

Question presented:

Patent exhaustion delimits rights of patent holders by eliminating the right to control or prohibit use of the invention after an authorized sale. In this case, the

Federal Circuit refused to find exhaustion where a farmer used seeds purchased in an authorized sale for their natural and foreseeable purpose-namely, for planting.

The question presented is:

Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?

Gunn v. Minton

The issue in this case is whether patent malpractice claims should be heard exclusively by Federal Courts and the Federal Circuit or whether they can be decided by state courts.

Attorneys are licensed on a state-by-state basis and malpractice cases against attorneys are generally filed in state court.  The Federal Circuit has held that patent law is an exception to this rule because the issues in such cases involve substantial questions related to patent law.  In particular, the court must decide whether the complainant would have won his infringement case or would have acquired a patent if not for the complained malpractice.

In this case, Minton sued his patent litigation counsel in Texas state court.  The trial court and court of appeals ruled for the attorneys based on lack of proof of the claims.  The Texas supreme court, however, dismissed the case because it lacked subject matter jurisdiction.  The court agreed with the Federal Circuit that the case should have been filed in Federal court.  The attorneys appealed to the Supreme Court.

In recent Federal Circuit cases on this issue, Judge O’Malley has been dissenting from the standard Federal Circuit view.  She has managed to get Judges Wallach and Mayer to join her.

The Supreme Court has finally agreed to determine this issue.  Question presented:

Did the Federal Circuit depart from the standard this Court articulated in Grable & Sons Metal Products, Inc. u. Darue Eng’g & Mfg., 545 U.S. 308 (2005 ), for “arising under” jurisdiction of the federal courts under 28 U.S.C. § 1338, when it held that state law legal malpractice claims against trial lawyers for their handling of underlying patent matters come within the exclusive jurisdiction of the federal courts? Because the Federal Circuit has exclusive jurisdiction over appeals involving patents, are state courts and federal courts strictly following the Federal Circuit’s mistaken standard, thereby magnifying its jurisdictional error and sweeping broad swaths of state law claims – which involve no actual patents and have no impact on actual patent rights – into the federal courts?

These cases will be briefed and argued in the coming months.  Decisions for each are expected by June.

Provisional Patent Applications

October 5, 2012

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 or foreign patent application must be filed within that 12 month period.

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 $1260 ($533 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.

Provisional applications may become even more necessary and important as we transition to first-to-file.

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.