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Robert J. Sayre
Robert J. Sayre
Cambridge, MA,
United States

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Still waiting - 10 expectations for Bilski and patent eligibility

  
  
  
  

by Robert J. Sayre

Sorry for my long absence from this blog. This past month was the busiest that Modern Times Legal has seen since opening shop almost three years ago; and the practice has been non-stop busy since at least December of last year, so count my experience as one small data point for increasing economic recovery. Nevertheless, I will try hard to accelerate my posting, as I still have dozens of ideas for what I think will be interesting posts.

My last post cited rumors that the Supreme Court's decision in the Bilski case was imminent. As the decision still has not issued, those rumors were false. Nevertheless, what can we derive from this remarkably long wait for the Supreme Court's decision?

  1. The Supreme Court Justices may be strongly divided as to the patent eligibility of business methods and, potentially, computer software.
  2. Nevertheles, the Supreme Court's decision will almost certainly issue within the next month, as the Court's current term wraps to a close.
  3. The Supreme Court very likely will not simply affirm the Federal Circuit's "machine or transformation" test, unless they have four votes to affirm and another justice finally wears down (this strikes me as unlikely). As more time passes, the likelihood that the Court's Bilski decision will shake up the standard increases. In recent patent cases, the Supreme Court has not been shy about reversing and scolding the Federal; and I do not expect that disposition to change here.
  4. Accepting that we will have a new standard, I pin the odds at only slightly more likely than not that the Supreme Court will broaden (or relax) the standard of patent eligibility, as opposed to closing the door even further on the patentability of business methods and software. 
  5. I expect that the Supreme Court is dissatisfied with the Federal Circuit's test but is having a very hard time generating an alternative test (that will satisfy five Justices); consequently, the likelihood of having a full majority opinion may be decreasing, which may result in a more limited decision that can secure the votes of five Justices.
  6. The Supreme Court Justices are a smart group, and they have very smart clerks; so I am optimistic that the expected new standard will be well reasoned, though it may well be controversial.
  7. What the Court lacks, though, is practical experience with patents as well as extensive expertise in science and engineering; so the risk is that they may not appreciate all of the real-world nuances and ramifications, and they may have a hard time appreciating that there is no clear distinction between tangible and intangible ideas (ideas when put to practical use always have some physical manifestation, whether in computer memory or in the human brain); so facile determinations based on concepts of "tangibility," though superficially attractive, are ultimately likely to be highly arbitrary and artificial.
  8. What I expect the Court will find and appreciate, however, is that even if one takes a static view toward the standards patent eligibility over time, largely abstract processes have long been patentable, as evidenced by Samuel Morse's patent for Morse Code issued more than a century and a half ago, a point the majority of the Federal Circuit appeared to conveniently ignore.
  9. The Court will appreciate the increasing importance of software and other more-abstract concepts to the American economy, and they will appreciate the risks and dangers of disrupting existing expectations too much; so I think it unlikely that most software, for example, will be barred from patent eligibility.
  10. Finally, to the extent that a safe harbor can be counted on, the integral tie-in of actors, elements and/or phenomena outside of a computer and outside the human mind are likely to be the safest bet in terms of providing solid footing for patent eligibility.
My advice to clients with pending business-method and software-related applications has mostly been to wait for the decision before responding to outstanding Office Actions where feasible and, for those who are planning to file, to just file a provisional application now and wait for the Bilski decision before filing the non-provisional, though these decisions always hinge upon a host of considerations based on the client's particular circumstances.

I will certainly provide my thoughts when the decision issues. Subscribe to the RSS or email feed for this blog to receive notice when that post goes up.

Supreme Court Bilski decision imminent?

  
  
  
  

by Robert J. Sayre

"Gossip is that the Supreme Court will be issuing its Bilski decision this
week," reported patent commentator Greg Aharonian in his Patent News email newsletter this morning. Similar rumors have been passed along from a number of sources and commentators over the past week. To my knowledge, however, neither Aharonian nor anyone else has cited a source for this rumor, and few would have first-hand knowledge outside the Justices and their clerks.

In its underlying 2008 Bilski decision, The US Court of Appeals for the Federal Circuit dramatically limited the patent eligibility of software and business methods, requiring that such a method either (a) be tied to a particular machine or apparatus (suggesting that a general purpose computer does not qualify as a "particular machine or apparatus") or (b) transform a particular article into a different state or thing.

Whether the Supreme Court's decision comes next week or next month, we likely will not need to wait much longer. The Supreme Court's term closes in less than three months--on June 28th, so we can expect the decision in less than three months in any case; and few patent cases are more important in terms of shaping the contours of patent law in the years ahead.

Though patent applicants who have a tangible, real-world element to their processes are likely to remain on safe ground, the holding established by the Federal Circuit's decision called into question the validity many purer software patents. The Supreme Court, however, has not been shy about reversing and castigating the Federal Circuit' in recent years. Notwithstanding challenging questions posed by some of the Justices in the oral argument for this case back in November, it is hard to predict where the chips will fall when the Justices and their clerks hash out these issues behind closed doors.

Watch for this issue to unfold soon. 

Slideshow: 'Understanding And Obtaining Patents And Managing Costs'

  
  
  
  

by Robert J. Sayre

Below are the slides from a presentation on patents that I made to a joint meeting of the New England Sections of the American Ceramic Society and the International Microelectronics and Packaging Society in Marlborough, Massachusetts on March 24, 2010.

The slides are not entirely self-explanatory, so please feel free to contact me if you wish to further discuss any of these topics. 

Other IP Blogs

  
  
  
  

by Robert J. Sayre

Steve Nipper, long-time patent-attorney blogger at the Invent Blog, recently published an excellent list of IP bloggers. Many on that list are already in my RSS feed, though I have bookmarked his page to further explore some that are new to me.  IP law (patent law in particular) is fast changing and dynamic; and these blogs provide excellent resources for new ideas and staying current.

Fortunately, patent law, particularly among small firms, remains a collegial profession; so I am happy to share the spotlight. Moreover, I by no means attempt to be all-encompassing with this blog; patent law is far to vast a field for such an approach to be practical.  Rather, I tend to pick up shiny stones here and there where I think I have worthwhile insights to contributes by way of a blog post (and my growing list of topics for blogging topics tends to expand far faster than the posting pace I can realistically maintain). And if I can condense my thoughts into 140 characters or less, I tend to instead post to Twitter. So I encourage all readers to check out these other blogs to round out your perspective and sources.

Finally, I thank Steve for the honor of being included in his list.

Understanding Patent Claims

  
  
  
  

by Robert J. Sayre

The aspect of a patent application that I most often need to explain to an inventor is the claim section.  In an issued patent, the claims will appear at the end of the text and are usually preceded with a phrase, such as "I/we claim . . ."  Most patents include a variety of claims.

Those claims that do not refer to another claim (such as claim 1, below) are "independent claims," while those that refer to another claim (reading, for example, "The method of claim 1, wherein . . . " or "The method of claim 1, further comprising . . .") and then specify something more are "dependent claims."  The dependent claims accordingly incorporate the subject matter of the referenced claim and add something else to render the dependent claim at least somewhat narrower than the claim from which it depends.

Let's look at the following example set of claims directed to a brick-making process (please indulge me in accepting that the examiner finds them to novel and non-obvious) to illustrate these points:

I claim:

1.  A method for making a brick, comprising:

a) packing a composition including clay; and

b) heating the packed composition. 

2.  The method of claim 1, wherein the clay includes kaolin.

3.  The method of claim 1, wherein the composition further includes lime.

4.  The method of claim 1, wherein the packed composition is heated to a temperature of at least 1,000 deg. C.

5.  The method of claim 5, further comprising:

c) holding the packed composition at 1,000 deg. C for at least an hour; and then

d) cooling the packed composition at a rate no greater than 50 deg. C per hour.  

Assume we have 15 more claims in the form of additional method claims and product claims.

An inventor's first reaction upon reviewing the claims may be to object that he/she does not want to be limited to using kaolin and wants to cover processes in which the brick is fired at a temperature below 1,000 deg. C. If, for example another party (let's call them Pirate Brick) uses the inventor's process but substitutes another type of clay for kaolin, then Pirate will not literally infringe claim 2. That's a problem, right?  Not necessarily. Assuming the patent issues, Pirate Brick need only infringe one of the claims in the patent to be found liable for patent infringement. Claim 1 does not specify any particular type of clay, so it may well cover Pirate Brick's process even if they use a different type of clay. If Pirate infringes claim 1 (or any of the other claims), they infringe the patent regardless of how many other claims Pirate may circumvent.

So why bother to include all of these narrower dependent claims if claim 1 is going to ensnare the most infringers? The answer is that a claim need not only be infringed by Pirate, the validity of the claim must also be upheld as valid. When the patent issues, the claims have a presumption of validity. Though, when you allege patent infringement against Pirate Brick, you can assume they will pay their lawyers a boatload of money to turn over every leaf to find additional prior art that was not considered by the examiner in an effort to invalidate your claims.

If Pirate Brick finds a good reference that covers a brick-making process closely on point to the inventor's process, Pirate may be able to invalidate claim 1 and some of the other claims. But if the brick was fired at a lower temperature or quenched at a faster rate in the earlier process, then claim 5 may still be upheld; and if Pirate Brick uses the temperature profile specified in claim 5, Pirate may still infringe the patent (via claim 5) even though they can invalidate claim 1.

Accordingly, each dependent claim can be viewed as a "fall-back" position in case our independent claim is too broad and accordingly held to be non-patentable or invalid. Pirate Brick may have an easier time invalidating claim 1 because it is so broad, though chances are that we can still distinguish the invention from whatever earlier processes Pirate may uncover based on at least one of the fall-back positions provided by the narrower dependent claims. If so, then the narrower dependent claims may survive; and hopefully Pirate will still infringe one of those surviving claims.

Consequently, I try to draft the claims to cover a range of broad and narrower embodiments, wherein different claims include different features that may help to differentiate the prior art, known or unknown (or satisfy other patentability requirements, such as enablement). Predicting which features will resonate with the examiner and help to establish patentability may also be difficult to forecast. If the examiner, for example, will only allow claims limited to the inclusion of kaolin, then we can evaluate whether to accept claims limited to kaolin or we can continue to argue or appeal in pursuit of broader claims. And that evaluation can be made at each stage of examination.

If the broadest claims are patentable and unassailable, then we may not need to worry about any of the narrower dependent claims (and whether they include very narrow limitations, such as requiring an imprint of Tickle-Me-Elmo riding a bicycle and drinking a bottle of Coca-Cola on a face of the brick), though in most cases, it is advantageous to keep narrower claims (assuming they are not ridiculous like the above Tickle-Me-Elmo example) to provide a second line of defense in case there is prior art (uncovered either during examination or in a post-grant challenge) that would force us to narrow our scope to remain novel and non-obvious over the prior art.

The ultimate compilation of claims will represent a balance of all of these considerations. And, of course, if you wish to discuss how your invention might be claimed, feel free to contact me to explore whether there may be a fit between your company/institution and Modern Times Legal. The above example, of course, is provided only for discussion and any actual legal advice regarding patent claims requires establishment of an attorney-client engagement and familiarity with the particulars of your invention.

USPTO Goes Wiki

  
  
  
  

by Robert J. Sayre

USPTO Director David Kappos is on a role. On his Director's Blog today, he writes about his ideas for taking the Manual of Patent Examination Procedure (i.e., what might be viewed as the bible for US patent examination) open source. Perhaps we all can soon become co-authors of a much more dynamic MPEP.

I provided a couple comments on the blog, in particular advocating for including links for case citations to the actual court decisions, preferably in citation-friendly form to perhaps avoid the need to pay extortionate fees to obtain recognizable citations to the decisions from our nation's courts. I also commented on how I liked the intriguing interplay and juxtaposition both (a) between the proprietary rights of patents and open-sourced knowledge and (b) between the government and the people. Sounds like great fodder for a compelling article in Wired, no?

David Kappos Talks About His Initiatives to Change US Patent Practice

  
  
  
  

by Robert J. Sayre

robert sayre and david kappos

A Surprise Encounter with the USPTO Director

This past Friday, the Boston Patent Law Association provided me (above left) with a special treat--an opportunity to join USPTO Director David Kappos (above right) for breakfast across the street and a few doors down from my office. But what really surprised me was when Director Kappos approached a colleague and me from behind to introduce himself and initiate a friendly chat. We had not previously met; Director Kappos was just being himself--remarkably open and cordial.

While President Obama has been criticized for a number of failings in his first term, I try to reserve my judgment to the areas I know well. The functioning of the USPTO is one such arena, and here Obama hit a home run when he appointed David Kappos as USPTO Director. He clearly knows the patent system from all perspectives, and he is an exceptional listener. He asked to hear our thoughts, and he clearly valued our opinions. He seemed more than happy to chat with us for all the time he had available.

Promoting Uniform and Compact Prosecution 

One of the first questions I asked Director Kappos, after noting the great variability in examination standards across USPTO art groups, was whether he had ideas for promoting better uniformity and consistency across examiners, particularly in some art groups with very low allowance rates. Without pause or prompting, Director Kappos reflected on the story of the examiner who refused to enter an Amendment due to a mistake with a period at the end of a sentence (I urge you to read the story, originally posted by Greg Aharoninan and commented upon here by a USPTO examiner, if you haven't already). In his own words, Director David Kappos emphasized that this type of examiner behavior is "garbage," and he is determined to try to stamp it out.

Director Kappos noted that changing the culture, aligning priorities and establishing consistency across an institution as big as the USPTO were big challenges. While others might gravitate to a top-down approach, his approach is bottom-up. "You start where the action is, and that's with the examiners." Accordingly, Director Kappos regularly meets with examiners face-to-face and often one-to-one. If my conversation with David Kappos is representative, I am confident that each of these conversations produces a wealth of bi-directional sharing of information and understanding. In addition to establishing these personal connections with examiners, Director Kappos indicated that he is working to provide much more training and guidance to examiners. Likewise, Director Kappos reported that his approach with managers is to focus on how they can best help the examiners and to encourage managers to mentor examiners in achieving "compact prosecution" (i.e., quickly and proactively getting to the heart of issues in examination and thereby streamlining prosecution). Moreover, by further increasing the skills of examiners, he believes they are more likely to stay around and not leave the USPTO.

Director Kappos also noted that the feedback that he is receiving from applicants and their attorneys indicate that these efforts are starting to bear fruit. In particular, he noted that he has already received word of appreciation from many attorneys who have surprisingly received telephone calls from examiners proactively reaching out to try to resolve patentability issues. At one point, Director Kappos specifically commented that "it is our job to help." Words like these are refreshing, as we have not seen that level of top-down commitment to customer service at the USPTO in nearly a decade.

Patent-Term Adjustments under Wyeth

The recent decision from the US Court of Appeals for the Federal Circuit in Wyeth v. Kappos changed the way the USPTO calculates patent term adjustments. Professor Dennis Crouch recently outlined the calculation algorithms and the process for requesting recalculation from the USPTO on his PatentlyO blog, so I will not rehash those topics here.

Director Kappos confirmed that the USPTO is accepting requests for patent-term adjustments under Wyeth; and no fee or petition is required, just a worksheet. You need not even calculate the numbers yourself; just ask the USPTO to do it for you. Interestingly, Director Kappos noted that he considers it to be an "open question" as to whether the USPTO can help patentees who did not file a request for adjustment and are now past the 180-day window post grant for requesting adjustment. He suggested that he thinks the USPTO lacks jurisdiction, though some in the audience offered suggestions for different bases of authority for stretching this limit, and Director Kappos indicated that he would continue to review the issue in view of those suggestions. Nevertheless, in view of the doubts as to whether a remedy can be granted by the USPTO more than 180 days after patent issuance, Kappos emphasized that it is critical that you make some sort of filing to request adjustment before expiration of the 180-day window if you want a review and possible adjustment of the term calculation for recently issued patents.

Director Kappos has indicated that he expects that the USPTO software for calculating patent term adjustments will be reconfigured to accord with the Wyeth decision by March 2, 2010. With delays from the time of issue fee payment to grant, patent term may be correctly calculated by the USPTO at the time of grant if you can wait another couple weeks to pay an issue fee (and you may even be in the clear in terms of a correctly calculated patent term adjustment with an issue fee paid today if the lag from issue-fee payment to patent issuance is more than a month). In the end, you need to talk with your counsel to find out if you should file a request for patent term adjustment on any recently issued / soon issuing patents.

A Five-Year Strategic Plan That Will "Actually Get Executed"

Director Kappos also reported that he is working on a new comprehensive five-year strategic plan for the USPTO. He acknowledged that his plan is not very different from the strategic plan of the previous administration, including objectives, such as decreasing pendency, increasing quality, exercising global IP leadership, and engaging with the applicant community. The difference, Kappos reported, is that he intends for it to be executed, as he intends to produce an extremely detailed slate of initiatives and deliverables, which will be made public.

"Coming from industry, I'm used to strategic plans that actually get executed," said Kappos. With accountability built in, he expects his plan will make some people uncomfortable. Names will go on the chart, pegged to scheduled deliverables; and they'll see yellow and red on the chart when dates are not met.

Increasing the US Patent Allowance Rate

I reported previously on this blog about Director Kappos's efforts to change the "rejection mentality" at the USPTO, a mentality that produced the plunging patent allowance rate at the USPTO. Further acknowledging the perverse incentives for examiners under the previous administration, Kappos noted that examination results were naturally skewed under a system in which if you (as an examiner) allow applications "bad things happen"; while if you reject, "nothing bad happens." The early results from Kappos's initiatives, which will include changes to the examiner "count system," already show an increase of multiple percentage points in the US patent allowance rate.

Director Kappos further reported that the increase has been reported to be as high as 5.4%, though it may be closer to 3% if you include Requests for Continued Examination (RCE's). My understanding is that RCE's have previously been counted as non-allowances in calculations of USPTO allowance rates, and I include them when I calculate my own track record. Consequently, I believe that the ~3% increase in allowances is the proper metric. Moreover, Kappos suggested that he believes that the allowance rate "will probably go up more with the new count system," as examiners are incentivized to actively engage with applicants. For the long term, Kappos stated, "I would like to see the allowance rate go up and to see quality go up at the same time."

Examiner Interviews

Director Kappos reported that the USPTO's Pre-First-Action Interview Pilot Program has thus far worked "extremely well." Kappos further stated that "first-action allowance is up something like 600%" under this pilot program. Accordingly, you can use these pre-first-action interviews to obtain patents much more quickly and efficiently. The Pilot Program is still only offered in a very limited number of art units at the USPTO; however, Kappos's pride over the success of the program suggests that it may eventually become available to all applicants (if and when that happens, I will certainly report it on this blog).

Director Kappos also wants examiners to reach out to applicants at all times in the process, including before first actions, after "final" actions, after notices of appeal, etc. Further regarding interviews, Director Kappos directed us to a resource of which I was not previously aware: the USPTO Examiner Interview Training Course Materials, which are available on the USPTO website and which I believe will be likewise quite helpful to prosecuting attorneys. Director Kappos indicated that he intends to post all examiner training materials to the public. Bravo! Part of the USPTO's mission is to disseminate knowledge; so it is great to see Director Kappos finally advancing this goal (unfortunately, I forgot to ask him why the USPTO still does not provide downloadable PDF copies of US patents, though he answered that question indirectly when he discussed not being able to upgrade the USPTO's IT infrastructure due to insufficient funding from Congress, as is further discussed below).

Green Technology Accelerated Examination

I posted earlier on the USPTO's accelerated patent examination program for "green" technologies, so I will not rehash the details here. Though Director Kappos indicated that about 600 requests for participation have thus far been filed against a cap of 3,000. Director Kappos also explained that the cap was imposed because the examiners' union was concerned that examiners might be overloaded if there was a flood of participants.

I asked Director Kappos whether he expected the program to be renewed so that applicants who file now could be eligible to participate. Director Kappos noted that the reason why the program was targeted only to already-filed applications was that he was concerned about changing applicant behavior, which I interpret to mean that he suspected that applicants may shift the target or focus of patent applications toward green applications to bolster their likelihood of being accepted into the program. That suspicion seems not unreasonable given the comparative risks and burden of the standard accelerated examination program requiring an Examination Support Document. Nevertheless, Director Kappos indicated that if they reach the 3,000-participant cap, then a forward extension of the program (accepting later filed applications) is certainly possible.

"Bump and Dump"

Commenting on the USPTO's "Bump and Dump" program, officially cited under the less-catchy moniker, "Patent Application Backlog Reduction Stimulus Plan," Director Kappos indicated that he was positively surprised that about "fifty-ish" small-entity applicants have thus far abandoned a patent application to subject another of their applications to accelerated examination under "bump and dump." This comment suggests that the USPTO never expected this program to have a particularly significant impact. And if you search "bump and dump," you will find some off-color definitions (I am not sure who first associated it with the USPTO's program), though it appears the name has firmly attached to this USPTO initiative both outside and inside the USPTO.

Ideas for Delayed Examination and Different Examination Tracks 

Director Kappos pointed out that a delayed examination framework (as is available, for example, in Japan and Canada) would present an effective means of weeding out patent applications that are no longer of interest when examination begins without wasting examination resources. Currently, a US applicant pays filing, search and examination fess up front at or near the time the application is filed, so there typically is little motivation for an applicant to proactively abandon an application. If the applicant can wait until a later date (two years perhaps?) to pay the search and examination fee, Director Kappos indicated that 10-20% of filed patent applications would go abandoned on account of applicants' failure to later pay those fees. Director Kappos noted, however, that a delayed examination procedure was no more than an idea at this point and is not (yet) being pursued by way of USPTO rule-making.

Additionally, Director Kappos pitched the idea of establishing a three-track examination structure, wherein "queue one" would be for applicants who want a patent within a year and who are willing to pay higher fees; "queue three" would be super slow--like the PCT he said (though this comment confused me as a PCT Search Report is at least supposed to be issued 18 months after the earliest filing date, which is often faster than the USPTO issues a first action on US applications); finally, applications in the middle track would be processed just like the bulk of applications now are processed. Again, Director Kappos indicated that this framework was only an idea at this stage, though he commented that it "would not be that hard to do."

Patent Prosecution Highway and Cooperation Between Patent Offices

The Patent Prosecution Highway (PPH) refers to a series of agreements between the USPTO and foreign patent offices for fast-track examination (in my limited experience, the PPH track has not been particularly fast and one can obtain most of the same benefits via the filing of Information Disclosure Statements citing foreign prosecution). Director Kappos indicated that the average number of Office Actions for an application in the PPH is 1.7, while the average among all applications is 2.7 office actions, though I think it is reasonable to expect such a difference based simply on the fact that another examiner already held the claims to be allowable (i.e., the claims are more likely to be objectively patentable merely by virtue of the allowance of a foreign counterpart application).

Director Kappos stated that he wanted to "back up" from the PPH focus on allowances in foreign counterpart applications. Director Kappos indicated that he is not as interested in allowances as he is in the initial search report and office action. As is to be expected, the USPTO will conduct its own examination, though US examiners can surely benefit in many cases from seeing a foreign examiner's search report and interpretations. I agree with this assessment (analogously, if a new client transfers in a case to me for which the previous attorney provided at least an initial draft of the application, I certainly want to see what ideas the other attorney had for claims and leverage as much of his/her work as I can use to fit within my own framework). That approach just makes sense from an efficiency perspective.

To facilitate taking advantage of the efficiencies of leveraging the work of foreign examiners on counterpart applications, Director Kappos signaled an intent to build the familiarity and trust between US examiners and European and Japanese examiners that will facilitate information sharing between examiners in the different offices and the resulting examination efficiencies and potential quality enhancements.

Patent Reform Legislation

Commenting on Senate Bill 515, the Patent Reform Act of 2009, Director Kappos indicated that, in his opinion, the bill--while not a panacea and not his favorite piece of legislation--is good legislation, on balance. Kappos indicated that he believes it resolves some major harmonization issues, including first-to-file. He also likes the "rationalized" post-grant reexamination provisions, and he thinks the damages language is the best compromise we are going to get.

From the audience, however, David Boundy pointed out that the redefinitions of prior art under the amendments to 35 U.S.C. 102 to accord with a first-to-file priority framework would significantly weaken existing prior-art grace periods with respect to pre-filing disclosures made by anyone other than the inventors. Director Kappos indicated that he had not heard this concern before but indicated that he would reread the text from this perspective.

The Bad News:  USPTO Funding

The "really bad news" according to Kappos, however, is the USPTO's dire funding situation. With congressional appropriations capped to match last year's reduced revenues, the USPTO now faces expropriation of excess applicant fees and an inability to use those fees to pay for much-needed upgrades in IT infrastructure and examiner hiring. Due to this lack of funding, Kappos is now scrambling to put the brakes on new USPTO programs.

Kappos indicated that the appropriators and the administration "get" that this is a serious problem and want to help, though securing a funding increase through the legislative molasses is not easy. Meanwhile, the USPTO is losing 35 people per month and cannot replace them. As a consequence, US patent pendency is going to increase again this year for those who do not /cannot take advantage of the various accelerated examination platforms.

Finally, I encourage any of you with an interest in US patent practice (and surely you have a strong interest if you read this far) to take advantage of any opportunity you may find to meet or listen to David Kappos. As long as this post was, I only captured a smattering of the wealth of ideas and insights he so graciously shared. My own patent practice will certainly be smarter for having benefited from those insights.

Great Tool for Improving the Quality of Patent Applications

  
  
  
  

by Robert J. Sayre

ClaimMasterIn my patent practice, I focus intensely on optimizing the quality of patent applications that I draft. In large part, I define quality in terms of being well-written and free of errors and compromising language. If these objectives ring true for you, as well, imagine the value if you could stuff an expert patent proofreader into your laptop.

With the ClaimMaster software program, you can do just that. ClaimMaster is an add-on for Microsoft Word with a wealth of features ranging from checking consistent use of reference numbers and terminology, evaluating claim format, identifying potentially compromising language, etc. I first started using ClaimMaster in September of 2009, soon after it was released, and I have consistently found it to be a great value at a price that is less than one hour of an experienced patent attorney's time.

Of course, it is still up to the patent attorney to draft a compelling patent application with well-crafted claims. I view ClaimMaster as a safety net that can reliably save me from many potential missteps. I have practiced long enough to be confident in my work, though, of course, my first draft, in particular, is not likely to be ideal. I will still proofread my work, though ClaimMaster can do a great job cleaning up my application starting with the first draft.

ClaimMaster benefits the client as much as the attorney. The client benefits because he/she can obtain a more-polished patent application in a shorter period of time (translating into lower cost). A more-polished application at the time of filing can also result in a stronger, more-quickly issued patent.

In addition, when I have run into problems with ClaimMaster, Dmitry at ClaimMaster has been very responsive in providing fixes. It is rare to find that level of responsiveness, service, quality and value in a tool for attorneys, though ClaimMaster provides it. With better-quality patent applications, everyone wins, particularly the client.

I received no incentives and have no stake in praising this product. My only motivation is to share this tool the same way I share any tool or tactic for optimal patent prosecution on this blog. If, as an applicant or attorney, you want an optimal patent (who doesn't?), I think your patent applications will surely benefit if they are parsed by ClaimMaster before being filed.

Welcome 2010: Challenges and Opportunities in Patent Practice

  
  
  
  

by Robert J. Sayre

Barack and Michelle Obama

Barack and Michelle Obama celebrating the holidays at the White House with Edith Childs, via the White House photostream on Flickr.

What a year 2009 was.  Let's take a quick look back.

Economic Crisis 

First, the world economy crashed due in part to "financial engineers" who took on too much risk and left the public holding the bag. That said, chaos always creates opportunity. The bottoming out of the financial markets in March presented what may have been a once-in-a-lifetime opportunity for cool-headed, disciplined investors to snap up extraordinary bargains in the face of a mass, popular exodus from the markets by the herd. Savvy, rational opportunists, which characterizes many inventors, capitalized on the panic of the masses.

Likewise, the financial crisis created opportunities for nimble and disciplined businesses (both among law firms and technology companies) to capture more market share.  Modern Times Legal saw a bit of a slowdown in the first half of the year, though business has bounced back strongly the past couple months, as the firm recently added at least three value-conscious clients who have transferred their work to Modern Times Legal from much higher-priced firms in the city.

Likewise, I see lots of companies who were not over-extended staying focused and capturing market share as competitors floundered. Here at Modern Times Legal, I will add no more than an approximately inflation-matched adjustment to my billing rate for the coming year as I recognize that budgets remain tight, and I have found some new ways to further reduce expenses so as to allow clients to maintain their own fiscal discipline.

Changes at the USPTO

I have tracked positive changes at the USPTO, largely attributed to the appointment of new USPTO Director David Kappos earlier this year, via a series of posts on this site (in particular, those titled, "Changes are Coming to the USPTO").  Operations at the USPTO are now gradually rising from a low point that left many applicants in despair, and I am very optimistic that we will see continued improvement at the USPTO in terms of transparency, efficiency, and fairness.

Key takeaways are that skilled legal advocacy (particularly with respect to establishing non-obviousness), interviews with USPTO examiners and the establishment of personal rapport are of increasingly critical importance and value in terms of improving your likelihood of securing an allowance in a chaotic and ever-shifting environment; and applications, as filed, now need to be more skillfully drafted than ever before.

While the patent allowance rate at the USPTO still remains plunged below the depth of 50%, I was proud to achieve an allowance rate over 80% (i.e., of the patent applications that I drafted and prosecuted for clients, over 80% of those that reached a final disposition were allowed, which has helped those clients to advance their business; and, in some cases, has even helped to bring life-saving technologies to the market).  We will need to wait at least for the Bilski decision from the Supreme Court to learn how software and business methods will be treated at the USPTO (including the troubling innovations of financial engineers who contributed to our plunge into a deep recession); though for most technologies, I am confident that fewer applicants will face unreasonable rejections at the USPTO if prosecution is managed proactively--for example, by taking advantage of opportunities to make it easier for an examiner to confidently allow claims.

Challenges Ahead

We still face plenty of challenges--from righting our economy and combating climate change to continuing to boost the quality of operations at the USPTO back to an acceptable level, though I think we now have substantially more reasons to be optimistic than we did at the start of 2009; and all of these challenges likewise present opportunity.

A Successful Year for Modern Times Legal

No longer a fledgling new practice, Modern Times Legal crossed a threshold as it entered its third year. Modern Times Legal received a boost in this downturn, picking up at least a dozen new clients ranging from massive multi-national corporations to solo inventors (thanks to all of you, new and old). As the firm maintains a low overhead, I was able to resist any rate increases, and Modern Times Legal was accordingly able to adapt to and ease the pinch felt by fiscally conscious clients; and in some cases, limiting my rates and charges allowed Modern Times Legal to increase the share of work received from large clients who distribute their work among a multitude of firms. Nevertheless, I still have some extra bandwidth, and I welcome and very much appreciate the referrals for new business that many of you provide.

Modern Times Legal also continued to cement its international footprint, as I returned as an instructor for the World Intellectual Property Organization to teach another patent-drafting workshop for participants from across Africa at the headquarters of the African Regional Intellectual Property Office in Harare, Zimbabwe in October (watch for a new video coming soon on this site). Moreover, I accepted an appointment as Pro Bono Chair of the Boston Patent Law Association; and I am proud to join the leadership ranks of this esteemed organization within the patent law community.

I also upgraded my office space--as I moved to the "Inman Square" sector on the 14th floor of the Cambridge Innovation Center; and I am now in the office nearly every day versus previously splitting time between the CIC and my home office over the past two years. With a near-paperless practice, I still maintain a small and modest footprint (no sprawling marble floors or huge oak desks), though I am now more readily available, even on short notice, for a face-to-face meeting at or near the office whenever needed.

Thank you to all subscribers to this blog; at present, I do not track the identity of RSS subscribers, so I lamentably do not know who all of you are, though I invite you to please post comments (or send me an email) and let me know what you think.  I currently have a list of about twenty topics on which I want to post, so there is no shortage of ideas; I just need to continue to find the time, and I am committed to posting regularly, though the comments provide encouragement, and I love to hear the perspectives and insights of others.

Emily Henry Bob

On a personal note, 2009 was also extremely enriching, as my wife, Emily, and I added our first child, Henry (see family portrait from last month at right). He is six months old now, and I am already so proud of him.

Happy new year to all of you!


You May Now Obtain a "Green" Patent Via Accelerated Examination

  
  
  
  

by Robert J. Sayre

Finse NorwayUnder a new United States Patent and Trademark Office pilot accelerated examination program, "green" patents can now receive a boost in examination at the United States Patent and Trademark Office. According to the USPTO, green patent applications that are accepted into the program and that are ultimately allowed will be issued by the USPTO about a year faster than without the program. The average pendency in green technology areas is approximately 30 months to a first action and 40 months to a final decision.

"By ensuring that many new products will receive patent protection more quickly, we can encourage our brightest innovators to invest needed resources in developing new technologies and help bring those technologies to market more quickly," explained U.S. Commerce Secretary Gary Locke. Adding to Locke's comments, USPTO Director David Kappos further explained why this program is needed. "Every day an important green tech innovation is hindered from coming to market is another day we harm our planet and another day lost in creating green businesses and green jobs."

Only the first 3,000 petitions will be accepted into the pilot program (and, unless extended, the program will expire no later than December 7, 2010). Director Kappos estimates that about 25,000 applications are eligible, so act fast.  Unlike the USPTO's previously existing accelerated examination program, this pilot program for green technologies does not require a dreaded "examination support document" and no separate petition fee is required.

Applications accepted into the accelerated pilot program will be placed on an examiner's accelerated docket (i.e., the examiner's "special docket") prior to issuance of a first Office Action, which should shorten the delay between filing and substantive examination, and the application will have special (accelerated) status on Appeal, if Appeal is needed.

Principal Requirements:

  1. Your application must be a US non-reissue, non-provisional utility patent application filed before December 8, 2009, or the national stage of a PCT application that enters the US before that date.
  2. Your petition must be filed before the examiner issues a first Office Action.
  3. Your petition must be among the first 3,000 filed at the United States Patent and Trademark Office.
  4. Your application must include no more than three independent claims, 20 claims total and no claims in multiple-independent format. You can amend your claims via preliminary amendment to meet these requirements.
  5. Your application must be directed to a single invention that falls within one of the categories listed below, and your application must be classified in one of the 79 green technology classifications listed on pages 3 and 4 the Federal Register Notice.

Green Categories:

  1. Inventions that materially enhance the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements; or
  2. Inventions that materially contribute to (a) the discovery or development of renewable energy resources [including hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources]; (b) the more efficient utilization and conservation of energy resources (in combustion systems, industrial equipment, and household appliances); or (c) greenhouse gas emission reduction [including, but not limited to, inventions that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies)].

Additionally, in your petition, you must pledge that, if the USPTO determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), you will agree to make an election without traverse in a telephonic interview. Your petition must also be filed via the United States Patent and Trademark Office's Electronic Filing System, and the petition to make special must be accompanied by a request for early publication (and payment of the $300 publication fee). Further still, If the application does not clearly disclose that the claimed invention falls within one of the above green categories, the petition must be accompanied by a statement signed by the applicant, assignee, or a patent attorney/agent explaining how the materiality standard is met.

The petition form provided by the United States Patent and Trademark Office is a simple one-page document.

Beyond the advantage of potentially obtaining an issued patent much faster, I see at least a couple other less obvious advantage of taking advantage of this program.  If your application is accepted into this green technology accelerated examination program, it (a) tells the examiner that you are serious about getting your green technology on the market to help save our environment and that you are anxious to obtain your patent, which can help establish a favorable rapport and (b) provides an imprimatur from the USPTO that your invention is a green technology worthy of accelerated attention to serve the nation's key goals in protecting our environment, which may impress judges, juries, investors, licensees, customers, etc.

Robert J. Sayre of Modern Times Legal has a keen interest in sustainability and green technologies and has experience in many of these fields.  Joining the USPTO in promoting green technologies, Modern Times is offering a corollary special deal for green patent applications:  Bob will gladly offer a free consultation for existing and potential new clients alike to help you evaluate whether to file a Petition for Accelerated Examination.  Contact Bob now to find out if your patent application may be eligible.

Above author's photo shows clean air and water in Finse, Norway (2008), accessible via train from Oslo to Bergen. 

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