Posts Tagged ‘patent prosecution’

Software Patents – A Question That Will Never Be Answered

Wednesday, 01 August, 2012 08:46 Written by Dan Pierron 0 Comments
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In a recent post on PatentlyO.com, patent law guru Dennis Crouch detailed two recent decisions from the CAFC, Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada and CLS Bank Intern. v. Alice Corp. Pty. Ltd.  Each case involved a patent having its validity challenged under 35 U.S.C. 101 as being directed to unpatentable subject matter, namely software.  Mr. Crouch excerpted a portion of Bancorp, reposted below, which helps illuminate the trend of thinking apparently being adopted by our venerable interpreters of the Patent Law:

In CLS, we reversed the district court and held that method, system, and medium claims directed to a specific application of exchanging obligations between parties using a computer were patent eligible under § 101. In faulting the district court for “ignoring claim limitations in order to abstract a process down to a fundamental truth,” we explained that the asserted claims in CLS were patent eligible because “it [wa]s difficult to conclude that the computer limitations … d[id] not play a significant part in the performance of the invention or that the claims [we]re not limited to a very specific application of the [inventive] concept.” Here, in contrast, the district court evaluated the limitations of the claims as a whole before concluding that they were invalid under § 101. As we explained above, the computer limitations do not play a “significant part” in the performance of the claimed invention. And unlike in CLS, the claims here are not directed to a “very specific application” of the inventive concept; as noted, Bancorp seeks to broadly claim the unpatentable abstract concept of managing a stable value protected life insurance policy.

 Judging from the above, the determination as to whether a claim is directed to patentable subject matter turns on whether it might be difficult to conclude the computer limitation plays a significant part in the performance of the invention.  A nebulous standard to be sure.  If only it were the case that a second qualifying determination provided more concrete guidance, but we are left with that the claim must be “a very specific application” of an inventive concept.
In my own experience, 101 rejections related to software require recitation of a computer with at least one of two types of qualification: specific function or specific form.  Examples have included computers configured to include a user interface that can be manipulated by a user, mobile telephones (having both form and function requirements), and computerized devices configured to communicate across a network.  Examiners appear to have been emboldened by promulgated USPTO guidance, based upon recent case law, to issue more and more 101 rejections on grounds similar to the issues presented in the cases above. Moreover, given the impossibility of getting clarification from the bench, those in the trenches are dealing with the fallout of seemingly arbitrary and capricious decisions making distinctions that are difficult to extrapolate beyond the specific facts of that case.  Perhaps the CAFC is falling prey to its own line of thought; its decisions appear to not be playing a significant part in answering the big questions of the day.

Supplementing A Patent Application Disclosure With Prior Art Uncovered During Prosecution of A Related Patent Application

Sunday, 19 February, 2012 10:13 Written by Mark Malek 0 Comments
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By: Mark R. Malek

I recently posted a couple of articles directed to the duty to disclose prior art to the Patent Office during the prosecution process of your patent application.  The articles can be found here and here.  As we know from these past two articles, the duty of disclosure is vital in the patent application process, and the duty to supplement that disclosure is even more vital.  Simply because new prior art has come to light after the Applicant has already made an initial disclosure to the PTO does not relieve the Applicant from supplementing the disclosure with the newly discovered prior art.

There is a particular case that arises when an Applicant may have more than one patent application pending.  Sometimes, different Examiners may examine multiple related applications.  Of course, each Examiner may have a different search strategy and may uncover different prior art.  The examination of a patent application must be kept completely confidential.  Confidentiality of patent applications is generally outlined in 35 U.S.C. 122.  It is not as though an Examiner on one case will seek out the Examiner of a related case to go over the prior art that they have uncovered and compare notes.

The scenario that we are dealing with here can be laid out with an example.  Suppose Application #1 being examined by Examiner #1 has claims directed to elements A, B, C, D & E, and that Application #2 being examined by Examiner #2 has claims directed to elements A, B, C, F & G.  Now suppose that Examiner #1 issues a notice of allowance and indicates that no prior art reference was found that disclosed element C.  Now also suppose that around the same time, Examiner #2 issues a rejection of Application #2 and provides a prior art references that discloses element C.

Anyone see the issue yet?  The Applicant now knows of prior art that would cause Examiner #1 to issue a rejection of the invention set forth in Application #1.  If the Applicant does not disclose the prior art that Examiner #2 cited, then Application #1 will likely proceed to issue.  Is it valid?  Well – until someone else challenges it, then it probably is.  This scenario wouldn’t be tested, however, until the Applicant tried to enforce Application #1 against a potential infringer.  You can guarantee that the potential infringer, when faced with an accusation of patent infringement, will do every bit of investigation possible into the prosecution history of the application to ensure that the prosecution was proper.  Upon figuring out that the Applicant failed to disclose prior art from one application in the prosecution of another application, the door to invalidity has been opened.

To summarize, the duty of disclosure of relevant prior art cannot be overstated.  No matter how the prior art was discovered, and no matter when the prior art was discovered, the Applicant MUST fully disclose it to the PTO during prosecution of the application.

 

How Do You Amend Your Patent Application After Allowance?

Friday, 10 February, 2012 09:24 Written by Mark Malek 0 Comments
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By: Mark R. Malek

As has often been the case with some of my articles in the past, I like to introduce little practice tips as something interesting happens in my day to day life of prosecuting patent applications.  This past week brought me something interesting.  I received a call from an Examiner on a case that was already allowed.  This was a great case because I was dealing with an Examiner that really tried to take every possible step to help find allowable subject matter and place the application in condition for allowance.  It was not like some he examinations of the past where I was up against an Examiner that was in a rush to issue a Final Office Action.

Needless to say, however, I was a little tense when I received a call from an examiner on a case that was already allowed. As it turned out, the Examiner noticed that the serial number in the reference to the parent application was incorrect. No, that is not a typo – I am referring to the previous case upon which this case relied.  This application was a continuation-in-part application, which allowed our client to claim the benefit of the previously filed application (another post will follow shortly on continuation and continuation-in-part applications). The serial number that was referenced in the application was off by one digit. The issue, however, was that prosecution of the application was already closed. The Examiner had mailed a notice of allowance. After a notice of allowance is mailed, there can be no more amendments to the application. There is, however, a mechanism to make corrections to an application that has already been allowed, but for which the issue fee has not been paid.

The mechanism that allowed us to amend the application after the notice of allowance has been mailed is found in 37 CFR 1.312.  This section of the regulations allows for the introduction of an amendment to the patent application after the mailing of a notice of allowance.  Section 714.16(d) of the Manual of Patent Examining Procedures (MPEP) which, of course, is the bible of patent prosecution, outlines the steps necessary to amend an application after the notice of allowance has been mailed.  In short, you just have to be sure not to introduce new subject matter.  In this particular case, we were merely correcting the serial number of the parent application, so no new subject matter was added.

If the issue fee had already been paid, there is another mechanism to correct a patent. This is found in Section 1400 of the MPEP.  The only downfall of this section is that the correction is not actually made to the patent itself. Instead, a certificate of correction is attached to the patent indicating the correction that has been made. I will write more about certificates of correction in a later post. In the meantime, I just wanted you have some information regarding another practice that that I came across this past week.

The Duty of Disclosure When Filing A Patent Application

Friday, 20 January, 2012 22:24 Written by Mark Malek 1 Comment
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By: Mark R. Malek

When people think of most areas of law, they generally picture an adversarial process.  In other words, most areas of law involve two parties in a dispute of some sort and each party having their side of the story that they want a judge (and sometimes a jury) to proclaim as being the correct side of the story.  That is not the case in the field of patent prosecution.  Although it may sometimes feel as though the patent Applicant is on one side of the fence fighting with the patent Examiner, it truly is not an adversarial process.  Instead, it can be better described as a cooperative process wherein the patent Examiner is working with the patent Applicant in order to determine the correct level of protection to be granted from the federal government.

In order to achieve this goal, patent law requires that a patent Applicant disclose the best mode of carrying out the invention, and disclose any prior art that they know of.  Many people come to me and indicate that they do not want to disclose everything about their invention, at which point I have a very serious conversation with the Applicant wherein I indicate that they must disclose all that they know about their invention.  The issue that many of the clients have, and I understand where they are coming from, is that they want to maintain some of their invention as a trade secret.  In patent law, that just about equates to having your cake and eating it to.

During patent prosecution, there is a trade off.  Essentially, the federal government will agree to grant you a right to exclude others from making, using, selling or offering to sell you invention in exchange for you disclosing everything you know about your invention, and also working with the patent office to ensure that the patent Examiner has all the relevant information in order to make a decision as to whether or not your invention is patentable.  This includes informing the patent Examiner of any prior art that you may know of.  That is regardless of whether or not the patent Examiner would have found the prior art during the search that is conducted during prosecution.

This article very much so simplifies the process, as well as the duty to disclose prior art, but there is one thing that I want to leave you with.  That is – your attorney is your ally in this process.  Your patent attorney should walk you through the process and should instruct you to disclose any information that could be considered prior art.  The risk you run of not disclosing relevant information is, in the worst case, invalidity of your patent and, in extreme circumstances, the possibility that a court finds that you engaged in inequitable conduct before the patent office, exposing you to potential liability.  The moral of the story is that you should never think it is a good idea to keep something from your attorney regarding your invention.  I will post additional articles about the importance of your relationship with your attorney and how the attorney-client privilege should encourage you to let your attorney in on everything that you know about your invention.

The Patent Office Is Not Ready For The Java Update – Don’t Do It!

Friday, 11 November, 2011 09:58 Written by Mark Malek 5 Comments
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By: Mark R. Malek

Consider the title of this article a very mild way of stating my frustration with the Patent Office.  Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on.  I could not figure it out.  I know that my digital certificate is up to date and I know that I had the right password.  What in the world could possibly be wrong?

Maybe it was because I was using Google Chrome.  My paralegal that does most of the filing uses Internet Explorer.  That had to be the problem, right?  Mind you that I am no 20 minutes into this frustrating process, all to file a document that took me 4 minutes to draft!  So, I open up IE and try to log on.  Guess what?  Authentication error again.  Now the mild cursing begins (if you know me, you know that this is when spectators start giggling).  I know what to do, I’ll delete the digital certificate from my computer and ask my paralegal to email me another one.  You guessed it – that didn’t work either.  How frustrating do you think it is that someone is able to log onto the PTO Electronic Filing System using my digital certificate just 10 feet from me???

No problem – I’ll just call the PTO.  After navigating through about four operators and explaining the problem, I finally get a very helpful technician on the phone.  I explain the problem to her and her first reaction was the following: “Did you update Java?”  Well, not intentionally.  I do remember that when I got into the office on Wednesday, my computer was restarted and I received the indication that Windows had performed some updates.  That’s when it must have happened.  To my surprise, the technician explained to me that the PTO system was not compatible with the Java update and that I would have to uninstall the update, and reinstall an old version of Java.  Really?  The United States Patent Office?  The forefront of technology was not ready for the?

Here’s my single biggest gripe.  I receive an update from the PTO every couple of days via email.  It is some sort of breaking news, or some story about happenings within the PTO.  Would it have killed you to let me know about this problem that way?  How hard would it have been to send a quick email blast to every patent practioner out there about this issue?  I was humored when the technician told me that about 80% of the calls she received lately were for this very issue.  By the way, I had about 1 hour of my day into this disaster by that point.

As promised by the technician, uninstalling the update and reinstalling the old version of Java did the trick.  I can’t say that the Oracle site is the easiest thing that I have ever navigated, but, with a little help, I was able to find the old Java update 27 and install it.  I haven’t even told you the good part yet.  Once I got everything working, and once I was able to log onto the PTO Electronic Filing System, I was presented with a notice in big bold letters – something along the lines of “the Java update 29 is not compatible with the PTO Electronic Filing System.”  What the heck kind of government operation was this?  When I saw that notice, a string of profanity flowed from my mouth that was unmatched, even by the standards of Ralphie’s Dad from A Christmas Story. I sometimes refer to these types of meltdowns as an “Egyptian Conniption.”  Present me with a government issue like this again, and you are sure to witness it.

To my friends at Patently-O that posted a story about this issue today, I am here to confirm that it is an issue.  A little note to Director Kappos – I have been very pleased with all that has been accomplished by you as the PTO Director, but I can’t believe this one got by the IT folks at the PTO.

 

 

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