Posts Tagged “Patent Prosecution”

All of us have had the frustrating (and potentially dangerous) experience of trying to get at a purchase encased in those unopenable plastic packages. You know the ones. Heavy plastic bubbles, heat sealed all the way around, that become knife sharp when cut open with heavy shears. I wonder if they are patented… and if they are, do they claim that they are “unopenably sealed”?

If the patents claim “unopenability” then the inventors might have had to fight their patent examiner to get the claim allowed. Patent examiners are supposed to review your claims, taking the broadest reasonable interpretation of what they cover, to see if they are obvious or anticipated. Sometimes, however, examiners substitute “possible” for “reasonable” and lock up your claims with office actions. Karen Hazzah, in a recent blog post, gives a half a dozen examples of where a patent examiner has essentially taken the position that nothing is unopenable or permanently attached, since, with a big enough tool, everything can be opened or detached…even if it means you have to break it.

In Hazzah’s examples the inventors won their claims by appealing to the Board of Patent Appeals – we don’t know how many inventors gave up because they couldn’t afford the on-going expense of an appeal.

For example: in Ex parte Miles (BPAI 2011) the claim terms at issue were “legs adapted to be removably attached” and “legs adapted to be removably secured,” where the removability was needed to differentiate the invention from the prior art. The Examiner took the position that neither phrase was a “positively recited limitation” – that is, the examiner said the phrases were only describing the legs, not limiting what the invention was. The Examiner then stated that “the legs [of the prior art] are capable of being removed, even if it requires a blow torch.” (Emphasis added.) Happily, the Board found for the inventor, pointing out that if you invoke a blow torch, then nothing can be considered permanently attached.

Similarly, in TechPharma Licensing v Novo Nordisk (BPAI 2012) the claim term at issue was “a lock for irreversibly locking the safety shield in its biased position.” The examiner essentially said that any mechanism can be broken, thereby letting the shield move from its biased position.

So what can you do to prevent your removably attached claims from being locked up by the examiner, requiring the expense of an appeal to unlock them? There are two strategies to jailbreak your claims.

First, you can avoid using words that lend themselves to being misconstrued and/or you can include very explicit definitions of how you want those words understood. For example, instead of “lock” you could use “capture mechanism” or you can describe how an “irreversable” lock is one in which the lock cannot be “unlocked” within a typical range of actions or that cannot come apart with damage.

Second, you can write your claims without “non-structural” adverbs, replacing them with clauses that include the structural elements that enable your invention. For example, instead of claiming “legs adapted to be removably attached” you could claim “legs, said legs comprising an attachment interface…” and in the specification you would have described what an attachment interface was and how you use the (exemplary) attachment interface to make your “removable” attachment.

Yes it’s more work for you now; but it is also more likely to avoid dumb office actions.

 

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I was watching some pre-season football this past week and, as usual, the commentators are always big on the two teams’ “game plans”. While the subtleties of a pro football game plan escape me, it occurred to me that dealing with the patent examiner these days seems to require a game plan – a strategy for exploiting his or her weaknesses while capitalizing on our strengths. Having a game plan only makes sense, however, when you are playing a game. What we need to do is take the adversarial gamesmanship out of patent examination. What we need is a “NO Games” plan.

Admittedly, since every game has two competing sides, to reach the state of no-games patent examination we will need the other “team”  – the patent office and its minions, the examiners – to give up their adversarial behavior too. And I’ll admit I don’t know enough about the politics to figure out how to get the PTO to change. But in the interim, I do think we can approach patent examination with a new attitude, one that tones down the adrenaline level, and, achieves our objective.

The number one change that is in our control is to return to the basic idea that the patent should be a teaching document – that the goal of the patent is to teach “society” about your invention. When we teach society, we also teach the patent examiner. If we accept that the patent examiner has very little time to examine our application; that s/he must divide that time between reading our claims, searching for the prior art, reading our specification, and, not insignificantly, writing up an office action that gives an explicit reason, based on evidence, for any claim rejection – if we accept this condition as a fact, then we can understand that the less clear, less succinct, less complete our application is, the poorer job of examination we are going to experience.

So what specifically should we do to stop playing games when we file a patent?

  1. Put some content into the background and summary description sections. Point to specific pieces of prior art, when your invention really builds on that art and use the summary description to explain the principles of operation. The less search time the examiner has to spend the more time s/he can spend actually thinking about the differences between your invention and the prior art.
  2. Don’t make your independent claim(s) over-reachingly broad. All an overly broad independent claim does is put the examiner in a negative (viz., rejecting) frame of mind and make he spend time writing up something that you knew wasn’t going to fly.
  3. Don’t include trivially significant dependent claims. Again, won’t you feel annoyed if you had to examine a bunch of claims that address absolutely trivial elements of the invention. I just read an application with a dependent claim for a table with wheels to support the personal computer used in the invention. Really.
  4. Use plainly understandable language and simple element names. There’s a saying that if you can’t impress someone with your brilliance then you should baffle them with BS. If the examiner can’t read your specification quickly and get a good idea what your invention is, you can be sure s/he will shoot first and ask questions later. The examiner isn’t going to give you the benefit of the doubt, so at best you are going to have an extra round of office actions explaining what you didn’t explain clearly in the first place.
  5. Accept the fact that your invention is an incremental improvement in the state of the art (unless, of course, it is really a game changer!) As the song goes, you gotta know when to hold ’em, you gotta know when to fold ’em. I’ve seen write ups of cases from the Board of Patent Appeals where the examiner is holding on to what seems to be a irrational position over a minor claim term. My first reaction is “what is that examiner thinking” but on second thought I begin to wonder – is the examiner struggling to find a way to get to the right ends (rejecting a lousy patent) by the only means s/he can grab onto, given that there is no way to reject based on “it’s a lousy patent”

Remember, these 5 suggestions are not legal advice – instead use them to stimulate a discussion with your patent attorney about what you are trying to accomplish with your patent application and what are the costs and benefits of various approaches to drafting patent applications.

 

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Greg Aharonian of the Internet Patent News Service (patnews@ns1.patenting-art.com) wrote yesterday about a CEO of a reasonably sized technology company who asked of/lamented to his patent attorney about the futility/waste/high-risk of seeking and asserting patents. Here, in a slightly edited form, is that lament.

1. We file a patent application and eventually get it allowed ($5000 to $10000 plus)

2. We sue someone and are subjected to a Markman analysis, which redefines claims and may change the meaning of the words.

  • How can we prevent this from having a significant effect during the patent prosecution?
  • This process redefines the patent claims to mean something different than what we intended.
  • Can we be so specific in the patent specification that removes any latitude from the judge in interpreting the claim language? Define every word in the claim in the specification?

3. Then the claims can be put up for reexamination which seems to disallow most if not all of the claims and takes years to resolve.

  • It is outrageous that you go through the process of getting a patent and assume that it is valid and then after years and extreme expense some idiot in the USPTO says “oh sorry but my colleague should not have allowed the patent”!

4. The patent’s validity is then challenged.

  • How do we prevent our patents from being declared invalid by some non-scientific judge?

5. How do we file a patent that eliminates these and other problems assuming that infringement is taking place?

  • How do we do this at the earliest point in the process?

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These are great questions to discuss with your patent attorney during the patent prosecution process, which is the earliest point in the process where these issues can be forestalled. As a general rule, I suggest instructing him or her to:

  • Do a reasonable prior art search (including non-patent prior art). Re-examinations kill patents when new prior art results in an obviousness or anticipation problem.
  • Don’t try to be too “cute” with the “patentese”. Writing in straight forward language limits misinterpretation.
  • Don’t try to obscure the invention with circumlocutions (see above point). The purpose of the patent specification is to teach; hold up our end of the deal. We’ll live with fact that our competitor understands our invention if it means our patent is strong.
  • Write claims that match the breadth of our invention. And write the specification to match the claim wording.

You patent attorney may object; don’t be intimidated or find someone who can be your interface with the patent attorney.

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I remember a cartoon I saw many years ago. It showed several inventors waiting on a bench outside the patent examiner’s office. Each inventor had an odd-shaped package on his lap, with bulges and protrusions and wrapped in brown paper and string to hide the details of the contents. Two adjacent inventors are holding identical packages and are eyeing each other with great suspicion. Welcome to “first-to-file”.

The United States’ virtually unique “first-to-invent” rule is likely to change if and when patent reform makes its way through Congress. Of the several reforms in the package to argue about, FTF is one that gets my vote without much worry. Some people suggest that FTF favors large companies over small entities, but I don’t see it, except in one very narrow sense.

Arguably, a large company has the resources to “run” to the patent office as soon as an invention is ready for patenting while a small entity has to shepherd its resources. I suppose that’s true, but my experience with both types of companies suggests that big companies, with many more potential patents to evaluate, are no less concerned about budgets than are small companies; have more bureaucratic red-tape to get past; and are less enamoured of any one invention (given the many technology areas they work in). In a large company, getting the okay to patent “your” invention is often one battle in an internecine battle for resources. In a small company the focus is typically on the key technologies supporting one product or product line and management decisions can be made on a dime.

The reality is that patent interferences are relatively rare and, if memory serves, the senior party (the first to file) wins most of the time. Moving to FTF, aside from bringing us into alignment with the rest of the world, would eliminate a rarely used and costly procedure that usually ends up giving the patent to the first to file anyway. Without First-to-Invent, the need for evidence-quality lab notebooks is eliminated and without interferences the potential for a surprise legal expense is eliminated.

The one impact that FTF will have on both large and small businesses is that it increases the pressure to file a provisional application as soon as possible and then finish any improvements and/or market evaluation within the one year lifetime of the provisional application. But even this impact is minimal in its practical application. Under First-to-Invent it is a risky strategy to postpone filing a provisional application as soon as possible since it opens you up to the argument (in an interference proceeding) that you did not file in a timely manner. Our patent system is designed to reward inventors who share their inventions with society with the temporary “patent monopoly”; not filing in a timely manner (i.e., once your invention is reduced to practice) is just another weapon in the senior party’s arsenal.

If you’ve been paying attention to your IP development process and diligent in reducing your inventions to practice under First-to-Invent then you have little to fear from First-to-File. In general, interferences are rare and I see the odds of you losing a patent under FTF compared to winning a patent at just about 50:50.

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