Archive for January, 2014

Patent Deadlines

January 30, 2014

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 has changed 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.

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First Quarter FY2014 PTO Numbers

January 21, 2014

The following is a comparison of the PTO’s numbers from December 2013 with September 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 – 17.4 Months

At the end of FY2013, first action pendency was 18.2 months, and has been steadily dropping during the last two fiscal years.  That number is a significant improvement. The PTO continues to make significant improvements in this area.

“Traditional” Total Pendency – 28.6 Months

Traditional pendency is down from 29.1 months in September and over 35 months at the beginning of FY2011.  Again, the PTO is making significant progress in this area.

Application Pendency with RCEs – 37.6 Months

This number is up from 37.1 months in September, but is down from 39.4 months at the end of FY2012.  While the PTO is making significant progress on the front end with reducing first action pendency, the back end of applications requiring RCEs or appeals seems to be where the problem is being shifted.

Applications Awaiting First Office Action – 595,361

This number is up from 584,998 in September.  The PTO generally makes a big push to reduce this number at the end of each fiscal year and since then it has risen 1.8%.  It is a good reduction from 608,283 at the end of FY2012.

Patent Application Allowance Rate – 51.0%, 69.6%

The first number counts RCE filings as abandonments, while the second number does not, but counts them as continuing prosecution.  These numbers are down from 53.5% and 70.7%, respectively, in September.  The 18.5+% difference between the two numbers is, however, troubling.  It seems that RCEs are still being forced; especially considering the next number.

RCE Backlog – 79,120

This number is up from 78,282 at the end of FY2013, a relatively modest 1% increase.  Believe it or not, at the end of June, it was at 100,403.  Hopefully, progress in this area is not being stalled as it needs to continue.  The After Final Pilot Program is supposed to prevent examiners from churning RCE filings.

Number of Patent Examiners – 8,013

This number is up from 7,931 in September.  In November, the PTO passed 8,000 examiners for the first time ever.  Although improving examiner efficiency is a solid goal, as long as filings continue to increase, so should the number of examiners.

Pendency from Application Filing to Board Decision – 87.3 Months

The crisis at the Board continues, as the pendency is down from 88.5 months in September, but is merely back to June levels.   Pendencies of over 7  years from filing to Board decision are not acceptable.  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 November (the Board doesn’t have its December numbers available yet), the Board had 25,151 pending appeals from ex parte application prosecution, a drop of 546 since August.  1,423 new appeals were filed since September (a pace for 8,538).  This is down significantly from the 10,758 in FY2013 and from FY2012 when 12,433 new appeals were filed.  Meanwhile, the Board disposed of 1,580 cases during FY2014 (a pace for 9,480).  This is down significantly from the 11,934 during FY2013.  They’re keeping pace here, but having a hard time denting the backlog.

In other types of cases, 166 inter partes review cases have been filed, 50 trials instituted and 23 concluded.  599 of these cases remain pending.  37 transitional business method cases were filed with 6 trials instituted.  1 of these have been concluded.  No post grant review petitions were filed in October or November.  3 derivation petitions were filed in November, giving the Board 4 such pending cases.  7 new interferences were declared, with 11 concluded, leaving the Board with 47 still to be decided.  3 new ex parte reexamination appeals were filed, with 14 being disposed.  13 such cases remain pending.  32 inter partes reexaminations have been filed.  The Board has decided 33, leaving an inventory of 104 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 seem to be dropping somewhat, but the rate is still pretty high.  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.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame.  The Board’s added workload with numerous types of proceedings for it to decide has made things more congested.  Presumably, if the proceedings work well, there may be many more filed in the coming months and years.  This could make things even worse.  Appeals must be decided more quickly.

Supreme Court to Hear Several Patent Cases

January 10, 2014

USSupremeCourtWestFacadeThe Supreme Court has agreed to hear two patent cases before the end of the current term.

Limelight Networks, Inc. v. Akamai Techs., Inc.

In 2012, a divided en banc Federal Circuit permitted divided infringement, where it takes more than one party to perform all of the steps of a claimed process, but only for induced infringement.  The court held that infringement can be found in cases where (1) a party performs some of the steps of a patented method and induces another party to perform the remaining steps; and (2) where a party induces multiple third parties to collectively perform the steps of a patented method, but no single party has performed all of the steps itself.   The knowledge requirement for inducement to infringe a patent claim means that collaborating parties cannot “accidentally” infringe.  A significant minority of the court argued that the statute requires a single entity to perform all of the steps for there to be infringement.

Nautilus, Inc. v. Biosig Instruments, Inc.

This case relates to the statutory requirement that applicants particularly point out and distinctly claim their invention.  This is referred to as the “definiteness” requirement of claims.

Sometimes the words used in a patent claim can be subject to multiple reasonable interpretations.  The Federal Circuit has ruled that such claims are only indefinite under the statute if they are “not amenable to construction” or are “insolubly ambiguous.”  This means that a patent claim is only ambiguous if one of skill in the art would read the claim and not know what the boundaries of the claim are based on review of the specification and prosecution history.

In Nautilus, the question is whether one of skill in the art can determine the meaning of the claim requirement that electrodes be in a “spaced relationship”.  The Federal Circuit, applying its standard, ruled that the term can be sufficiently understood and the claim is not indefinite.

The Supreme Court will address whether the Federal Circuit is using the correct standard for this determination.

The cases will probably be argued in April with decisions expected by the end of the term in June.

USPTO Reduces Patent-Related Fees

January 9, 2014

On January 1, the USPTO reduced or eliminated several of the fees it charges patent applicants.  This is fairly unusual in recent years, as most fees have only gone up.  There was discussion that when the PTO started setting its own fees that it would make them more commensurate with the scope of work involved.  In that regard, these reductions make sense.

The PTO eliminated the Publication Fee that was charged to applicants when they paid the Issue Fee.  The Issue Fee itself was reduced from $1,780 to $960.  There is some cost to the PTO with issuing the patent, but the new fees are more in line with the actual costs.  In effect, the fees due upon receiving a Notice of Allowance were reduced by about 54% ($2,080 to $960).  The Issue Fee is subject to discounts for small and micro entities of 50% and 75%, respectively.

The PTO also eliminated the $40 fee for assignment recordation, provided the assignment is recorded electronically.  This has been standard practice for patent practitioners for a number of years, so this will be a savings for virtually all applicants.

Finally, fees charged under the Patent Cooperation Treaty (PCT) are now subject to discounts for small and micro entity status.  Previously, all applicants paid the same fees for PCT filings.

Patent Application Drawings

January 3, 2014

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.