Archive for July, 2013

What Does “Patent Pending” Mean?

July 30, 2013

I’m sure you’ve seen the words “patent pending” or “patent applied for” on a product or package before.  What exactly do these phrases mean?  What legal rights are attached to them?

Marking

Patentees are generally only entitled to infringement damages once an infringer has notice of the infringement.  The patent marking statute permits patentees to provide notice to the public by marking a product or product package that is covered by a patent with the patent number.  This is why it is strongly recommended that patent owners mark their patented products or product packages with the number.

Patent applicants will often mark products or product packages with the phrase “patent pending” or “patent applied for”.  These phrases do not have a legal meaning under US patent law, as they do not indicate that the product is covered by a patent or that someone who copies the product is guilty of patent infringement.  The purpose of these phrases is to inform the public that the product is the subject of a patent application that has been filed and is pending in the Patent Office.  Although in general a patent application cannot be infringed, the public is informed that a patent may issue in the future that covers that product.  In this way, the phrases provide some deterrent effect against infringement.  Even if a patent does not issue for the product, it is believed that the patent applicant may deter some parties from copying the product while a patent application is pending, thus providing the applicant with a competitive advantage.

Patent marking is also used as a marketing technique.  Many consumers believe that a patented product is a cutting edge product–it must be better or an improvement over previous products.  “Patent pending” or “patent applied for” may provide this marketing advantage as well.

PTO Numbers – June 2013

July 25, 2013

How has sequestration affected the PTO’s production?  It’s time to review PTO numbers again.

The following is a comparison of the PTO’s numbers from June 2013 with March 2013 (at my last numbers update).  Time to refer again to the PTO’s Data Visualization Center to see how things are going.

First Action Pendency – 18.3 Months

At the end of March, first action pendency was 19 months, and was 21.9 months at the end of FY2012.  That number is a significant improvement.  That’s a 16.4% drop in the during the fiscal year.  The PTO continues to make significant improvements in this area.

“Traditional” Total Pendency – 29.8 Months

Traditional pendency is down from 31.1 months in March and 32.4 months at the end of FY2013.  This is the first time in recent memory that traditional pendency is under 30 months.  The 8% reduction during the year continues to demonstrate significant progress in this area.

Application Pendency with RCEs – 37.1 Months

This number is down from 38 months in March and 39.4 months in September.  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 – 591,785

This number is down from 607,482 in March and represents the lowest number in recent history.  Even after the huge spike in new filings to beat the first-to-file transition, the PTO has worked to reduce this number.

Patent Application Allowance Rate – 52.1%, 69.4%

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 51.1% and 68.8%, respectively, in March.  The 17+% difference between the two numbers is, however, troubling.  Especially considering the next number.

RCE Backlog – 100,403

Believe it or not, this number is also finally declining.  At the end of march, it was at a near high of 111,274.  At the end of FY2012, however, the PTO reported 95,200 applications with RCE filings that awaited action; at the end of FY2011 that number had crept up to 63,487.  Some progress is being made, and it needs to continue.

Number of Patent Examiners – 7,740

Here’s where sequestration starts to take its toll.  This number is down from 7,842 in March.  The PTO is facing another budget crisis due to sequestration.  This number will probably continue to fall.

Pendency from Application Filing to Board Decision – 87.3 Months

The crisis at the Board continues, although the number is actually down from 87.9 months in March.   That’s only about an 18 day improvement of the course of 7+ years (2,657 days!).  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 now has significantly greater responsibilities with the beginning of the new post-grant review proceedings.

At the end of May, the Board had 26,019 pending appeals from ex parte application prosecution, a drop of 440 since March.  7,333 new appeals were filed since September (a pace for 11,000).  Meanwhile, the Board disposed of 7,798 cases during FY2013 (a pace for 11,697).  They’re keeping pace here, but having a hard time denting the backlog.

In other types of cases, 261 inter partes review cases have been filed, 86 trials instituted and 6 concluded.  28 transitional business method cases were filed with 12 trials instituted.  None of these has yet concluded.  31 new interferences were declared, with 36 concluded, leaving the Board with 48 still to be decided.  68 new ex parte reexamination cases were filed, with 76 being disposed.  14 such cases remain pending.  126 inter partes reexaminations have been filed.  The Board has decided 108, leaving an inventory of 82 cases pending.

Conclusion

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 stabilizing, but at a very high rate.  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 has still not come up with a plan to deal with its crisis at the Board.  Sequestration has really tied its hands.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame.  The PTO was working hard to try to hire more judges and patent attorneys to work on this situation, but Congress added to its workload as well.

UPDATE: Hughes Nomination Approved by Committee

July 18, 2013

This morning, the Senate Judiciary Committee approved the nomination of Todd Hughes to the Federal Circuit.  He now awaits confirmation by the full Senate.  He joins Raymond Chen, whom the Committee approved in May.

Sen. Dick Durbin (D-IL), who presided over Hughes’s confirmation hearing in June, noted the “historic nature” of the Hughes nomination.  If confirmed, Hughes would be the first openly gay federal appellate court judge.

The confirmation would also give the Federal Circuit its full complement of 12 active judges.

HT:  Hal Wegner.

Myriad Saga Continues

July 16, 2013

Just when you thought that last month’s Supreme Court ruling in Association for Molecular Pathology v. Myriad Genetics, Inc. might be the end of the gene patent debate, new developments are changing that theory.

Shortly after the Supreme Court ruled that Myriad’s patent claims to isolated DNA were not patent eligible subject matter because they occur naturally in the human body, Ambry Genetics Corp. and Gene by Gene Ltd. announced they would make the breast cancer-testing products available at a lower cost.

Unfortunately for them, they apparently forgot that Myriad’s patent claims to complimentary DNA (cDNA) were specifically upheld by the Court and that the plaintiffs did not challenge the method claims to the Supreme Court.  Using the still valid claims, Myriad sued each company for infringement.  Myriad Genetics v. Ambry Genetics; Myriad Genetics v. Gene by Gene Ltd.

It’s not surprising that there would be confusion as to the actual outcome of the case given that both the ACLU and PUBPAT trumpeted the case as a victory.  These entities effectively filed the lawsuit on behalf of the named plantiffs.  The ACLU stated that “the court’s ruling lifted the patent obstacle to offering genetic diagnostic testing,” while PUBPAT noted that “[b]ottom line, diagnostic genetic testing is now free from any patent threat, forever, and the poor can now have their genes tested as freely as the rich.”

Myriad clearly does not agree with these assessments.

patrickleahySenator Patrick Leahy (D-VT) has decided to step into the fray.  On Friday, he sent a letter to the National Institutes of Health (NIH) urging them to exercise “march-in rights” to license its patent on reasonable terms.  Under a provision of the Bayh-Dole Act, government agencies can require the patentee to license the patent if the research behind it was federally funded.

Although not the first request made that it do so, the government has never exercised these rights under Bayh-Dole.  Leahy asserts that the $3,000-4,000 price tag for the genetic tests is too expensive.  Other companies can perform the tests at much lower cost, thereby increasing access to a greater number of potentially affected women.

Patent Application Costs

July 9, 2013

There are a large number of inventors and companies out there now that want patent work done as cheaply as possible.  Especially since the economy has tanked, many inventors and companies are attempting to low-ball fees for preparing patent applications.  I have seen ads for $1,400 patent applications.  There is simply no way to have a quality patent application prepared for this price.

Another case is where an inventor has prepared his own patent application and has asked me to simply review it to make sure that there are no obvious mistakes.  The reason for preparing the application himself is that the inventor believes that this will save money on preparation costs.  Unfortunately, this is usually not the case, and I tell these clients this fact up front.  Unless the inventor has significant experience with preparing and prosecuting patent applications, the application will undoubtedly need a lot of work on my part.

First, the application may be very brief, perhaps 8-10 pages with a drawing or two.  The invention will often be described in very general terms because the inventor is afraid that specific descriptions will unduly limit the invention.  In this case, I generally have to start over.  One cannot get a patent on a general idea.  One must describe specific implementations of the invention.  This does not mean that the invention must be very specifically claimed.

Otherwise, the inventor may have an application of adequate length for the complexity of the invention, say 30 or so pages, with 10 or so pages of drawings.  In fact, sometimes these inventors don’t understand the difference between a patent application and a research paper, so they will include large amounts of extraneous details ont the background or theory of the invention.  In this situation, it will probably take me just as long or longer to adequately review the entire application, discuss the details with the inventor to fully appreciate and understand the invention, and then make corrections and changes based on my experience in patent law and my adequate understanding of the invention.  This does not save the inventor money.

Another typical situation that I encounter is where an inventor or company sends me a pending patent application and asks me to take over the prosecution because they are dissatisfied with their current counsel.  They believed that the invention would be patentable and that the examiner should be able to be persuaded of this fact quickly.  They have also had commercial success with the invention, but are afraid that if they don’t get a patent, knock-offs will appear that will undercut their prices and knock them out of the market.

Often, I find out that they are correct–certain aspects of the invention are patentable.  When I review the specification, however, I realized that it is only 8 or 10 pages long.  They didn’t want to spend much money when they had their application prepared and filed (often a couple years earlier), so they went with the low-ball price for its preparation.  Now, many of the features that seem to make the invention patentable are not sufficiently described in the specification; I cannot add them to the claims because they would constitute new matter.  I do the best that I can to salvage something from the application for them, but there is a lesson here.  If the description contained more details and was say 15 or even 20 pages long, these aspects of the invention could be added to the claims.  This is not to say that longer applications are always better, but in general this is the case.

What to Do

The best practice is for each invention should be treated as a million dollar invention when the application is being prepared.  At that time, who knows which ones will be?  I always tell clients that patents are speculative investments.  You can’t tell from the start which inventions will be successful and worth the investment; you can’t be certain which will be granted broad patent protection; and, perhaps most importantly, getting a patent doesn’t mean the product will be successful in the marketplace.  If you don’t spend the time and money to prepare an adequate patent application, it doesn’t matter.  The resulting patent, if any, will only be worth what you paid for it.

With a down economy many or most patent attorneys either didn’t raise their rates or even lowered them slightly the past few years, and rightfully so.  The market dictated this event.  When comparing the services of an attorney who charges $800 per hour with one who charges $50 per hour, however, one must realize that the attorney with the low-ball rate would undoubtedly charge a higher rate if the market demanded it.  If he can be just as busy charging $200 or $300 per hour, why would he continue to charge $50 and make less money?

This isn’t to say that a higher rate always gives you a better product.  One should also take referrals and other factors into account when comparison shopping for patent services.  Sometimes a better patent attorney may choose to work for a smaller firm or in a smaller market where rates are lower than those in the big city at the big firm.  His or her work may be just as good or better than the big-firm attorney in New York or DC.  When a price is too good to be true, however, it probably is.

On the point of whether to begin a patent application by preparing the claims or the specification, I have done it both ways.  I generally find, however, that preparing the claims first is advantageous.  In this way, I can confirm with the inventor his or her understanding of what the invention actually is.  I then prepare the written description.  I try to make it as detailed as possible and get the inventor to provide me with as many different implemenations, embodiments, and optional features as I can.  It is indeed an iterative process:  when preparing the description, it is inevitable that I will discover features that that should be claimed, and vice versa.  And yes, all of this takes time; more than $1,400 worth of time.

I will often discover during prosecution that there are features of the invention that I need to add to the claims or that are patentable that were not included in the original claims.  By having an adequate disclosure from the beginning, adding such claims is easy.  If the description is too terse, however, this can’t be done.  New matter cannot be added to a pending application during prosecution.

When a client comes to me with a new idea for a patent application, I try to get all of the details of the invention from them and then provide what I believe to be a fair and realistic estimate of the cost to them based on the time it should take to adequately describe and claim the invention.  Sometimes my estimate is too high and the actual cost is lower; sometimes things happen that raise the costs.  I previously provided some tips and strategies to keep costs down and get better patents.

The bottom line is that in patent preparation and prosecution, like most everything else, you get what you pay for.

Deadlines

July 3, 2013

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 is 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.

PATENT Jobs Bill Introduced in House

July 1, 2013

Reps. Anna Eshoo (D-CA), Mike Honda (D-CA), and Zoe Lofgren (D-CA) introduced the Patents and Trademarks Encourage New Technology (PATENT) Jobs Act that seeks to exempt the PTO from $150 million in sequestered funds.

The sponsors argue that because the PTO is user fee driven and does not rely on tax funding, the agency should be exempt from sequestration.  The sequestration is hurting the PTO’s ability to open five regional offices and to cut into the backlog of unexamined patent applications.  The PTO should be added to the list of agencies exempted from sequestration orders under the Pay-As-You-Go Act of 2010.

Earlier last week, a delegation of 17 members of Congress from California wrote a letter to Reps. Frank Wolf (R-VA) and Chaka Fattah (D-PA), Chairman and Ranking Member of the House Committee on Appropriations’ Commerce, Justice, and Science Subcommittee requesting assistance with unfreezing the $150 million of user fees for the PTO’s use.  The Office of Management and Budget (OMB) has frozen these fees, finding that the PTO is not exempt from sequestration.

Update: Pritzker Confirmed at Secretary of Commerce

July 1, 2013

Penny Pritzker has been confirmed as Secretary of Commerce by a vote of 97-1.  Sen. Bernard Sanders (I-VT) cast the lone dissenting vote.

Now we await Pres. Obama’s pick for the new Undersecretary and Director of the PTO.