Feb 222011

Here is question 28 from the April 15, 2003 morning session. There is a catch to this quiz–the answer is not known. All answers were accepted I believe because the date November 8, 2000 should have been November 8, 2002. Updating the question to reflect the change, what is the answer to the following question?

28. A non-final Office action dated Friday, November 8, 2002 set a three month shortened statutory period for reply. The practitioner petitioned for a one-month extension of time on Monday, February 10, 2003 and paid the appropriate one-month extension fee. An amendment responsive to the Office action was filed on Tuesday, March 11, 2003. Each independent claim in the application was revised and two dependent claims were canceled. No claim was added by the amendment. In the Remark’s portion of the amendment, the practitioner expressed his belief that no fees are required by the amendment, but nevertheless authorized charging any necessary fees to the practitioner’s deposit account, including fees for any required extension of time. A duplicate copy of the amendment was filed. No fees were submitted with the amendment.

 Posted by at 5:44 pm
Feb 172011

It’s been a year since the USPTO issued guidelines stating that the claim “computer-readable medium” should not be statutory subject-matter because viewed in its most broad interpretation, the claim includes transitory embodiments such as signals. And since In re Nuijten held that signals do not fit into a statutory class of subject matter, the claim fails. I already made my thoughts known about this here, but today I wanted to give a report of the aftermath. The BPAI has certainly been busy, and especially since Bilski, in striking down patents related to software. Searching through the BPAI decisions, I found 132 cases that have been decided on the merits of subject matter. Interestingly, these cases are coming through the BPAI on a very regular basis. From the time I first performed my search (two weeks ago) to today, 17 more results appeared. This is definitely a hot topic right now. Software patents seem to be very much alive and well, however, a critical element of claiming computer-program related inventions is what you include in your specification.

While conducting this research, a few things struck me. First, the most common rejection was that there was insufficient limitation in the patent or the claim could be interpreted into non-statutory matter. Second, avoid having your claims get pegged with the label “software per se.” It’s bad. Next, RCT v. Microsoft was finally cited in a most recent BPAI decision. Ex Parte Clifford R. Jack & Peter C. Obrien, 2009-015192, 2011 WL 486179 (Bd. Pat. App. & Interf. Feb. 7, 2011). It appears that the BPAI has finally caught up to this recent and very important Federal Circuit case.

Next, initially after Bilski was decided, there was a trend towards rejecting claims that related to software. This trend seems to be going the other direction (although perhaps there has not been sufficient time to tell) since RCT v. Microsoft. Next, your patent, whether in the claims, or in the specification, needs to require that the invention be limited to some embodiment or on some particular apparatus. The limitation just can’t be construed as including a signal or else your claim is toast. Finally, you can claim a “computer-readable medium” if your specification limits the invention to being performed on a non-transitory medium. Otherwise, game over.

I’ve created a document that organizes the cases into one table. It’s interesting so I’ve made it available for download, in case anyone would like to look at the details. Here is the file: [download id=”2″] The document includes the citation to the decision, the claims at issue, the disposition of the claims, and the representative claim language.

Briefly about how I searched, it was difficult to search for “software patents” because of how unpredictable the wording of a claim might be. One of these days, we’re going to come to a point where you send your computer a telepathic vibe of what you want and a query will then return results for you. But we’re not to that point yet, so I conducted a very broad search of all 101 subject matter cases. Then I refined the search manually. Almost all of the subject matter was computer-related, to my satisfaction. Only a couple cases were purely abstract, involving how to play a game. If you want to perform the search for yourself, I used Westlaw:
advanced:(101 & “subject matter”) & DA(after 06-28-2010).

 Posted by at 6:39 pm
Feb 112011

Economics has been a very sexy topic lately.

In the global deflated state we find ourselves in, everyone seems to be focusing on getting back on track economically. One important way to do this  is through innovation. This is the crux of what most people are talking about, at least in the U.S. government: How do we maintain our edge on the rest of the world? How do we encourage businesses to grow? How do we plan for the future generation? President Obama recently answered these questions: “The first step in winning the future is encouraging American innovation.”  The answer is to innovate, now.

Patent Systems can Encourage Innovation.

A country’s patent system can help spur innovation by giving inventors rewards for innovating. But patents translating into innovation is not a guarantee. Finding the right balance for society is key. Relevant questions include: Why does the patent system exist? How long does it have experience? How much participation is there among its citizens? The United States is set up perfectly to have a flourishing patent system. As far back as 1787, the document that would ultimately give Congress the authority to promote the progress of science and useful arts was adopted. The system Congress created shortly thereafter to implement this charge has been fine-tuned for a long time. There are more patents filed in the United States than any other country. The U.S. should be doing very well to spur innovation using patents.

How the U.S. is doing at its center of innovation–the Patent and Trademark Office.

That being said, the PTO is a fairly weak government agency that is resistant to change. The PTO has no substantive rulemaking authority and courts don’t have to give any weight to its policies. See Merck & Co. v. Kessler, 80 F.3d 1543, 1550 (Fed. Cir. 1996) (stating that, because the Patent Act “does not grant the Commissioner the authority to issue substantive rules,” “the rule of controlling deference set forth in Chevron does not apply”). Also, even though there exists a statutory presumption of validity, courts often times don’t give granted patents any deference. E.g., Ass’n for Molecular Pathology, 702 F. Supp. 2d 181, 221 (S.D.N.Y. 2010). It seems likely that structuring the PTO differently could do more to encourage innovation at the PTO. If the courts gave more deference to the expertise of the PTO, the agency could craft better policies and be overall more efficient. The PTO, with David Kappos at the helm, has done a lot of innovating. From introducing multiple pilot-programs to concretely reducing the backlog of patents, the PTO has improved substantially. That being said, could it do more? What grade would you give the PTO? What things would you change?

The world is not very round, especially in China.

Our society is becoming increasingly global just as international protection is becoming crucial. On Wednesday, WIPO released the results of international patent filings for 2010. Overall, there was 4.8% growth from 2009. The number of U.S. fillings declined for the third straight year, but there was remarkable growth in Northeast Asia. China experienced 56% growth in foreign filings. Looking forward, the United States still remains the leader in foreign filings and looks to maintain its lead. That being said, it must increase the number of foreign filings unless it wants China to overtake it the same way China overtook South Korea most recently. With an increase in the number of international patents filed, here’s to hoping that 2011 will continue with growth in innovation.

 Posted by at 10:41 am
Feb 012011

I have been doing research on the scope of a patent’s claims. I’m sure you’ve seen the words on a patent:

While the invention has been described in conjunction with the detailed description thereof, the foregoing description is invented to illustrate and not limit the scope of the invention, which is defined by the scope of the appended claims. Other aspects, advantages, and modifications are within the scope of the following claims.

Even though this language may be used, can an invention really be interpreted so expansively as to include subject material not illustrated in the specification?

In the United States, the answer has been “maybe.” While never being entirely consistent, the Federal Circuit has allowed claims to be applied outside of what is explicitly included in the specification. See Texas Digital Sys Inc v Telegenix Inc (308 F 3d 1193 (Fed Cir 2002) (using a dictionary first to determine the ordinary meaning of claim terms, then looking to the specification); Specialty Composites v Cabot Corp, 845 F 2d 981, 987 (Fed Cir 1988) (“[W]hat is patented is not restricted to the examples [described in the patent specification], but is defined by the words in the claims.”); SRI Int’l v Matsushita Elec. Corp., 775 F 2d 1107, 1121 (Fed Cir. 1985) (“The law . . . does not require that an applicant describe in its specification every conceivable and possible future embodiment of his invention.”). But recently, this approach of looking to claims first and foremost has been abandoned. In Phillips v AWH Corp., the court made clear that the standard is to look first to intrinsic evidence (the specification), and only with ambiguities is expert or dictionary evidence used to interpret the claims. They affirmed the initial panel in that a baffle should be understood from the context that it was outlined in the specification, rather than the plain meaning of the word. This decision has resulted in a clear trend of narrowing claim scope. http://www.buildingipvalue.com/07US_Can/p.96-99%20Darby.pdf. But a recent case shows that the doctrine of emphasizing the claim language rather than the specification is not dead. In Arlington Indus., Inc. v. Bridgeport Fittings, Inc. (Fed. Cir. 2011), Judge Rader and the majority quoted Ariad v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed.Cir.2010) (en banc):  “[Focusing on the specification] devalues the importance of claim language in delimiting the scope of legal protection. ‘Claims define and circumscribe, the written description discloses and teaches.’” Judge Lourie dissenting countered that “the basic mandate is for claims to be interpreted in light of the specification of which they are a part because the specification describes what the inventors invented. . . . The specification is the heart of the patent.  In colloquial terms, you should get what you disclose.”

This debate that some characterize as the contextualist versus the literalist approach still continues. Be that as it may, some practical take-homes are still in order. Claims arguably cover more than what is disclosed in the specification, in the sense that the plain meaning of a word does not have to be limited to how the specification refers to that word. This could change depending on future cases. In practice, it makes sense to include as many examples of your invention as possible, not limiting such examples as the invention. It also makes sense to then couple that disclosure with broad claim construction.

If the United States law in this area is so complicated, what about other countries? Which countries are broad in claim deference? (i.e. which countries don’t require you to include every example of what you would like protection on?) Which countries are narrow (only grant you protection on material that is explicitly in your specification)? I heard that Russia very narrowly applies its claims, only granting protection for specific examples illustrated in the specification, but I am interested in learning more about this topic. Does anyone know where can I find this international information?

 Posted by at 7:03 pm