Mar 292011

As has been in the news lately, some big time drugs in the Pharma industry are approaching the end of their patents. The revenue these companies stand to lose highlights the importance in this industry of getting every last drop of life out of patents. One way to do this is to make sure that the term of the patent is adjusted correctly by the USPTO to make up for any delays. Reading about the patent term adjustment in 35 U.S.C. § 154(b)(1), I thought the term adjustment determinations were straightforward. But when applying the USPTO rules to particular applications, I really got a sense of the subtleties and complexities that can make this doctrine tricky. I then applied it to one of Google’s most recent patents.

The ABC’s of the statute
There are three kinds of term adjustments, A, B, and C (named such because they fall in subparagraph (a), (b), and (c) respectively).

“A” adjustments are for those where the USPTO failed to promptly respond in a specific instance. These adjustments find support in the statute 35 U.S.C. § 154(b)(1)(A) and are provided with more detail in CFR 1.703(a). An adjustment is appropriate here where the PTO:

  • has not given a first office action within 14 months.
  • has not given a response to an office action response within 4 months of the date that your reply was filed or the appeal was taken.
  • has not acted on a response within 4 months from a BPAI or Federal Circuit decision where your application includes allowable claims.
  • has not issued the patent within 4 months of the issue fee being paid.

Simple enough.

The “B” adjustments are for the total examination taking longer than 3 years. These adjustments find support in 35 U.S.C. § 154(b)(1)(B) and are provided with more detail in CFR 1.703(b). These adjustments do not include certain exceptions:

  • Time that is spent on RCEs (Section 132(b)) do not count
  • Time spent on an interference (Section 135(a)) proceeding.
  • Time spent on an a patent being withheld if determined as detrimental to national security under Section 181
  • Any time spent at the BPAI or Federal Circuit
  • Any delay in the processing of the application requested by the applicant except:
    • Extensions of additional time to respond to a shortened statutory period.

The “C” adjustments apply if there have been interferences, secrecy orders, and appeals. Support for this category is found in the statute 35 U.S.C. § 154(b)(1)(C), with more detail provided in CFR 1.703(c), (d), and (e).

There is one subtle difference between the “B” and “C” adjustments and the “A” adjustments in when each time starts. With the B and C adjustments, these exceptions include the day of the event (for instance, the delay begins accruing time the day your RCE is filed, the day the interference is declared, etc) while the A delays are the day after the event (for instance, if your office action hasn’t been sent within 4 months, the day after is when the clock starts ticking).

The overlap provision
Paragraphs A and B are both subject to the overlap provision of 154(b)(2):

To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.

In Wyeth v. Kappos, the Federal Circuit held that A guarantees do not always overlap when there are B guarantees. You first look to the time the USPTO delayed the issued patent past the 3-year mark, then you look backwards and if there are A guarantees in that time frame, these do not get counted twice.

Another overlap situation is if A guarantees occur during C guarantees.

Applicant delay
If the applicant is at fault for delaying the process, the number of days of delay gets subtracted from the total patent term adjustment. 37 CFR 1.704(a). Applicants fall under this category if they exceed the shortened statutory deadlines. 704(b). Also are the following actions specifically outlined in 37 CFR 1.704(c):

  • If the applicant suspends the application
  • Deferral of issuance
  • Abandonment of the application or late payment of the issue fee
  • Failure to file a petition to withdraw the holding of abandonment or to revive an application within two months from the mailing date of a notice of abandonment
  • Conversion of a provisional application to a non-provisional
  • Submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action
  • Submitting a non-compliant response, which is the time from the original response to the corrected response, no matter how long it takes for the PTO to notice the non-compliance and no matter how long the error is corrected
  • Submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed
  • Submission of an amendment or other paper after a decision by the Board of Patent Appeals and Interferences not including a new rejection response
  • Submission of an amendment under § 1.312 or other paper after a notice of allowance has been given or mailed
  • Further prosecution via a continuing application

Actual application – Google Doodles
In determining how these rules apply in the real world, I found it useful to look at Google’s 7,912,915 patent. This patent had a broad range of issues that made for an interesting analysis. The non-provisional application for this patent was filed on April 30, 2001, almost 10 years ago. This patent would expire only 10 years after the issue date if it weren’t for the patent term adjustment doctrine. In this case, Google was rewarded with 2618 days or 7+ years.


Date Action USPTO delay Applicant delay Why the adjustment, according to Trent
4/30/2001 Filing date 0
4/30/2001 Initial Exam Team nn 0
5/9/2001 IFW Scan & PACR Auto Security Review 0
6/20/2001 Correspondence Address Change 0
6/21/2001 Application Dispatched from OIPE 0
6/28/2001 Case Docketed to Examiner in GAU 0
4/30/2001 Information Disclosure Statement (IDS) Filed 0
4/30/2001 Information Disclosure Statement (IDS) Filed 0
10/4/2002 Case Docketed to Examiner in GAU 0
11/12/2002 Case Docketed to Examiner in GAU 0
6/8/2004 IFW TSS Processing by Tech Center Complete 0
6/16/2004 Case Docketed to Examiner in GAU 0
7/12/2004 Case Docketed to Examiner in GAU 0
7/20/2004 Correspondence Address Change 0
8/19/2004 Non-Final Rejection 0
8/23/2004 Mail Non-Final Rejection 785 “A” guarantee. 1.703(a)(1). Fourteen months after the filing date is June 30, 2002. From the next day, July 1st, 2002 to August 23, 2004 is 785 days.
11/22/2004 Workflow incoming amendment IFW 0
11/22/2004 Response after Non-Final Action 0
2/14/2005 Date Forwarded to Examiner 0
4/18/2005 Restriction/Election Requirement 0
4/21/2005 Mail Restriction Requirement 30 “A” guarantee. 1.703(a)(2). Four months after Nov. 22, 2004 is Mar. 22, 2005. From the next day of March23 to Apr. 21 is 30 days.
5/2/2005 Response to Election / Restriction Filed 0
5/17/2005 Date Forwarded to Examiner 0
7/20/2005 Non-Final Rejection 0
7/21/2005 Mail Non-Final Rejection 0
11/22/2005 Request for Extension of Time – Granted 0
11/22/2005 Response after Non-Final Action 32 1.704(b). Three months from the non-final rejection was October 21, 2005. From the next day of Oct. 22 to Nov. 22 is 32 days.
12/8/2005 Date Forwarded to Examiner 0
2/21/2006 Final Rejection 0
2/22/2006 Mail Final Rejection (PTOL – 326) 0
4/12/2006 Examiner Interview Summary Record (PTOL – 413) 0
4/24/2006 Amendment after Final Rejection 0
5/8/2006 Date Forwarded to Examiner 0
4/24/2006 Oath or Declaration Filed (Including Supplemental) 0
5/9/2006 Change in Power of Attorney (May Include Associate POA) 0
5/10/2006 Advisory Action (PTOL-303) 0
5/11/2006 Mail Advisory Action (PTOL – 303) 0
6/13/2006 Disposal for a RCE / CPA / R129 0
5/17/2006 Request for Continued Examination (RCE) 0
6/13/2006 Date Forwarded to Examiner 0
4/24/2006 RCE- AF Processed 0
6/13/2006 Date Forwarded to Examiner 0
8/21/2006 Non-Final Rejection 0
8/23/2006 Mail Non-Final Rejection 0
11/22/2006 Response after Non-Final Action 0
12/1/2006 Date Forwarded to Examiner 0
2/5/2007 Non-Final Rejection 0
2/7/2007 Mail Non-Final Rejection 0
5/8/2007 Request for Extension of Time – Granted 0
5/8/2007 Notice of Appeal Filed 1 1.704(b). Three months from the non-final rejection was May 8, 2007. From the next day to May 9th is 1 day.
7/9/2007 Appeal Brief Filed 0
8/1/2007 Date Forwarded to Examiner 0
8/1/2007 Appeal Brief Review Complete 0
11/13/2007 Examiner’s Answer to Appeal Brief 0
11/16/2007 Mail Examiner’s Answer 7 “A” guarantee. 1.703(a)(4). Four months after the appeal brief was filed (July 9, 2007) is Nov. 9. From the next day of Nov. 10 to Nov. 16, when the examiner answered is 7 days.
12/3/2007 Exam. Ans. Review Complete 0
1/14/2008 Reply Brief Filed 0
1/17/2008 Date Forwarded to Examiner 0
1/17/2008 Reply Brief Noted by Examiner 0
1/18/2008 Mail Reply Brief Noted by Examiner 0
9/29/2008 Appeal Awaiting BPAI Docketing 0
10/6/2008 Case Docketed to Examiner in GAU 0
10/23/2008 Assignment of Appeal Number 0
10/24/2008 Docketing Notice Mailed to Appellant 0
9/22/2010 BPAI Decision – Examiner Affirmed in Part 0
9/23/2010 Mail BPAI Decision on Appeal – Affirmed in Part 1235 “C” guarantee. § 1.703(b)(4). Notice of appeal was filed May 8, 2007. From that day to Sept. 23, 2010 is 1235 days.
11/16/2010 Allowability Notice 0
11/16/2010 Examiner’s Amendment Communication 0
9/16/2010 Document Verification 0
11/16/2010 Notice of Allowance Data Verification Completed 0
11/16/2010 Issue Revision Completed 0
11/17/2010 Mail Notice of Allowance 0
11/19/2010 Export to Initial Data Capture 0
12/10/2010 Finished Initial Data Capture 0
2/15/2011 Issue Fee Payment Received 0
2/15/2011 Issue Fee Payment Verified 0
2/16/2011 Application Is Considered Ready for Issue 0
2/16/2011 Dispatch to FDC 0
2/17/2011 Export to Final Data Capture 0
3/22/2011 Patent Issue Date Used in PTA Calculation 0
5/16/2006 PTA 36 Months 746 “B” guarantee. 1.703(b). Here we start 36 months after the filing date of Apr. 30, 2001, which is Apr. 30, 2004. B-time gets counted until there is a request for continued examination, in which case the clock stops ticking until the issue date. 1.703(b)(1). The day after April 30, 2004 to May 16, 2006 is 746 days. Now we adjust our B-time for overlaps below.

The final adjustment

The above B-time (746 days) is not entirely accurate until overlap is taken into consideration. Since the beginning B-term term is already being counted as “A” delay, we start at Aug. 24, 2004 (the day after the overlap) all the way to the restriction adjustment Mar. 22, 2005 (remember PTO delay overlaps can’t be counted here either!) it is 211 days. From Apr. 21, 2005 when the overlap stops the day before the RCE was filed, May 16, 2006, which is 390 days. Thus the B-time is 601 days.

The above C-term of 1235 days also needs to be adjusted for overlap. Here, there was 7 days of A-time that overlapped with the C-term. This reduces 1235 by 7 days to equal 1228 days.

The grand total

When you add up all the A time, 822 days, the B time, 601 days, and the C time, 1228, you get 2651 days. Subtracting the 33 days of applicant delay equals 2618 days.


The adjustment is publicly available as its own tab on PAIR for any patent that qualified for PTA. I found it interesting to learn that the PTO uses a computer program to determine an issued patent’s term adjustment. While the PTO’s efforts to increase efficiency by using such a program are commendable, I see the value in having a patent attorney verify that this value is correct, considering how important your patent life can be. This whole concept of seemingly automated task and human labor makes me think back to Paul Krugman’s piece, Degrees and Dollars, in the NYTimes. In it, Krugman discusses how computers are sabotaging automated jobs, including legal research. I can see this beginning to take place right now with patent term adjustment. However, with the number of errors the PTO usually has, plus with the wide variability of patent term adjustment responses among attorneys, it is easy to see that we are not all the way to a computer-takeover yet. It will be interesting to see the increasing reliance on computers in this area.

Here’s an interesting question to wrap this PTA discussion up, if a patent is issued with more PTA time than deserved, and the attorney knows it, is she under a duty to correct the patent term adjustment? What are the consequences to such a patent? Invalidation? Or just adjustment?

Here is a very useful website for calculating the number of days between two dates:

 Posted by at 10:07 am
Mar 262011

Today I made it up to Concord NH for the IP Cafe, sponsored by the Patent Law Forum and IIPO student organizations. I hadn’t been back at UNH School of Law since December so memories flooded back to me as I walked the halls and sat in classrooms. I also noted the new addition to the school, which will soon be known as the Franklin Pierce Center for Intellectual Property.

It was really good to start off my Saturday in Concord NH at an IP-dedicated symposium with like-minded individuals.

Mary Wong started things off by explaining what the Franklin Pierce Center for Intellectual Property is or will be. The gist of the center will be to maintain global IP prominence.

Mark Solomon and Deirdre Sanders, from Hamilton Brook Smith Reynolds gave the first talk entitled, Top 10 Issues in Patent Law. Their remarks were basic, for the most part, I think because they were addressing a very diverse audience and they didn’t want to overwhelm anyone! But there were some interesting topics that were raised. Here are the issues they addressed, including my thoughts.
1. What forms of IP can build assets?
Trade Secrets
… and more

Three simple questions that a practitioner can ask an inventor to find out what the invention is all about.
What is the problem you’re solving?
How are others solving it?
How are you solving it?

The 3.5 year first installment is due after the 3.5 years for cases that are before the examiner for longer than 3.5 years.

2. How do you document your idea?
A. Notebooks. This section of the talk was interesting because the company I am currently working for is really big into notebooks. Dierdre used her litigation experience to discuss how notebooks can be more credible if they are initialed by someone else. But an interesting question raised was if this really adds to the credibility of the notebook because this witness, who is supposedly removed somewhat from the inventor, may not really understand and appreciate all the notes the researcher is including in his notebook. This is especially the case if there are lots of lab notes and lots of notebooks.
B. Internal invention disclosure form – One question that you may have with regards to these disclosure forms is, “How far upstream do they encourage invention disclosure forms be filled out?” The answer is at conception.

3. How do you determine ownership?
This topic was interesting to me. Some questions the speaker posed was, Who owns patent rights at the time of bankruptcy? What about when the company goes through a merger or acquisition and the inventor says that he didn’t assign the patent to the company? These questions made me think of the upcoming Stanford v. Roche case.
Another question talked about in the assignment portion of this bullet was, What is the value of recording the assignment at the PTO? An assignment doesn’t have to be recorded at the PTO to be a legitimate assignment. But there are benefits. The recordation tells bona fide purchasers that they should be on notice that you have the rights to it.

4. How do you know when to file?
The United States has a one-year period to file your patent. Australia and Canada also have 1 year. Certain European countries have an absolute bar of novelty, meaning that you have to file it before it becomes public. Certain Asian countries are 6 months.
“Disclosure” may be different from one country to another so even if a form of publication has issued, this may not automatically bar you from filing a patent in another country, depending on how they interpret disclosure.

5. How do you assess where to file?
This involves analysis of multiple factors including:
License agreements that may require certain filings
Potential investors
Potential licensees

6. How do you claim the invention?
Sometimes it is best to split up a patent into two to license the technologies to two separate entities: methods on one patent, compositions on the other. But these are business decisions as well, as they may add on additional maintenance fees.

7. How do you describe the invention?
US requirements include enablement, written description, and best mode. Other countries may be different.
Sometimes your parent application can obviate a continuation-in-part. If the parent mentions, but does not enable, blood, for instance, then the continuation in part will be obvious in light of the parent application, but it would not be enabled so you’re “screwed both ways.”

8. How do you navigate the process?
Remarks made on the record can estopp you. You can live with your description for the rest of your patent. If you make assertions to the foreign office too. But it was pointed out that recently the CAFC said that prosecution in other countries is not relevant for estoppel purposes in this country. I don’t know which case the audience member was referring to, but litigators will argue that this should be narrowly construed. Even if you can mention it at all will cause serious problems.
The way that Dierdre described Markman hearings really got me excited to see one in action. I believe Markman hearings are open to the public to sit in on, but I was not sure. I’ll have to look into this because I got excited about seeing one.
Then they talked about duty to disclose. For instance, who is under the duty? CFR 1.56. The lesson learned from McKesson is that you have to cite to the examiner the same case that they have allowed previous. You can’t assume that they know anything. But you always are assumed to know about previous references being the reasonable practitioner.
Try to disclose everything

9. How do you keep your options open?
You can file one patent that is very big or multiple patents with multiple maintenance fees

10. How do you use an issued patent?

Overall, it was a very interesting event. Tom Field was in the back asking questions and laughing as I remember him best. There was also this pretty sharp audience member who had a Russian accent and who every once in a while corrected the speaker.

 Posted by at 10:59 am
Mar 212011

Saturday found me at the local Prometric testing facility taking the USPTO Registration Examination (aka Patent Bar). At the end of the 6 hours of testing, I was disappointed to see that I had missed the 70% mark by only a few questions. On the ensuing ride home, which seemed like an emotional roller-coaster, I realized that I had learned some important lessons.

1. Don’t underestimate the exam.

The pass rates of the patent bar are low for a reason. A lot of information gets tested. When you consider that the MPEP by itself is at least 2318 pages, there are 88 pages of patent statutes and 334 pages of patent rules, plus throw in the international rules and it becomes very clear that there’s a lot to wrap your brain around. I gained a humble appreciation for the exam. It’s kind of like summiting a very large mountain. Once you get to the top, sore and depleted, you look down at what you just hiked and realize you appreciate the mountain’s height. That’s what happened to me with the patent bar. I appreciated its depth by hiking its ridges! Just remember to take sufficient time to study for this test, which can mean different things to different people.

2. Don’t think you’re the exception.

I approached the patent bar with the mentality that I would probably pass because I wasn’t the typical patent bar test-taker. (For the record, I don’t even know what the typical patent bar test-taker is, but I envisioned it to be someone who didn’t yet have that much patent experience.) I thought that since I had exposed myself to plenty of patent law material at school and at work, I would be prepared for the exam. This was partially true as the classes, school events and work did prepare me, but it was not enough. The specificity on some of the questions tested is so high that you cannot possibly know the answer without poring over the pages of the MPEP. It will take hard studying for everyone.

3. Get with a study program.

There are a lot of study options for this test. I chose to study for free by using the resources that were available to me. This approach actually worked pretty nicely, I believe. I have always been someone who does well with practice problems so using previous exams helped me learn the material well. Reading through study material takes on a completely different dimension when I am actively seeking the solution to a problem. So I found it extremely helpful to just go through previous exams. Last summer, I made an iPhone app called “Actual Patent Bar Q’s and A’s.” It gives you the questions and answers from 9 tests (1999-2003). The only problem with the app is that many questions and answers contain a lot of text, which doesn’t fit very comfortably in a small screen. An iPad update is in the works.

For those of you who similarly learn through practicing on actual questions, I ran across a very nice product by CATPrep. Their Patent Bar Simulator is a Java applet, which allows for taking previously administered tests (from 2003 to 1999) on a Mac or PC. The simulator quite nicely reflects the software that Prometric uses. I found it very helpful to go through practice sessions. The MPEP link they use is not exactly similar, but CATPrep does provide the individual files for download, allowing you to open the files in a separate PDF viewer. I used Adobe Reader 5.1 and it seemed to be similar to Prometric’s Reader version.

Other available programs can be expensive. I think they have value in that they force you into a regimen of studying on a regular basis. However, I don’t know too much about them. I would recommend that anyone who is looking at taking the patent bar look into the right study program for them.

4. Don’t be stubborn.

The answers to all of the questions are available to you with one click of the MPEP button. The problem is finding it amidst so much material. It is tempting to spend too much time on one question to find the answer–especially if you know you are close. But resist that temptation. Mark the question if you are unsure, maybe even make a guess, and move on.

5. Tests are funny.

The PTO wants to make sure that you know your stuff before it will grant you a license to practice before it. I learned through a friend of mine they used to administer a more diverse exam which included a claim drafting session. However, times have changed into an efficiency-driven exam of multiple choice questions. Like all multiple choice questions, though, it can be hit-or-miss depending on a wide variety of factors you can’t control. You might psyche yourself out in situations where normally you would do well. Even though towards the afternoon session of my exam I felt like I was really in a good rhythm, the morning session felt rocky. It was early, I was in a new environment, and I hit a couple tricky problems at first. I have no advice here. Tests are what they are. You won’t always do well on them, but you can bounce back and take them again. That is what I plan on doing. My next time will be different after April 4, but I am excited as the updated material will prepare me to have a better handle on updated patent law.

 Posted by at 5:19 pm
Mar 042011

There’s an old saying about those who forget history. I don’t remember it, but it’s good. Stephen Colbert

When I took the class Patent Law a couple years ago, our class (probably like all other patent law classes across the country) studied the three iconic cases that dealt with the subject matter of processes: Benson, Flook, and Diehr. There seemed to be no controversy when we went over Benson, the “can’t patent an algorithm” case. The redacted opinion in my textbook had no dissent (Even though the opinion was unanimous, three justices did not participate in the decision). Furthermore, the professor, like Justice Douglas’s opinion, seemed to generalize the invention into an algorithm that converts numbers into binary. This was a very “obviously” unpatentable invention, at least that was my sense at the time.

Now, in revisiting this grandfather of subject matter cases (refer to how much Bilski still deferred to this case), I am noticing that the claims tell a different story. An interesting observation of Benson is that the CCPA in In re Benson, 441 F.2d 682 (C.C.P.A. 1971), which upheld the invention as patent-eligible, specifically cited to and focused on the claims at issue (claims 8 and 13). The Supreme Court did not even cite to the claims in the opinion, but rather attached them in the appendix to the opinion. How could the Supreme Court paint the invention in such clear terms without referring to the actual claims which make up the invention?

The claims at issue are as follows:

Claim 8.

The method of converting signals from binary coded decimal form into binary which comprises the steps of
(1) storing the binary coded decimal signals in a reentrant shift register,
(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position of said register,
(3) masking out said binary ‘1’ in said second position of said register,
(4) adding a binary ‘1’ to the first position of said register,
(5) shifting the signals to the left by two positions,
(6) adding a ‘1’ to said first position, and
(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.”

Claim 13.
A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of
(1) testing each binary digit position ‘1,’ beginning with the least significant binary digit position, of the most significant decimal digit representation for a binary ‘0’ or a binary ‘1’;
(2) if a binary ‘0’ is detected, repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;
(3) if a binary ‘1’ is detected, adding a binary ‘1’ at the (i + 1)th and (i + 3)th least significant binary digit positions of the next lesser significant decimal digit representation, and repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;
(4) upon exhausting the binary digit positions of said most significant decimal digit representation, repeating steps (1) through (3) for the next lesser significant decimal digit representation as modified by the previous execution of steps (1) through (3); and
(5) repeating steps (1) through (4) until the second least significant decimal digit representation has been so processed.

Looking at the invention from the claims rather than from what the Supreme Court or a patent law professor tell you provides a different story. If I were the PTO today, I might go ahead and issue Benson’s application today. Let me explain why.

Back in 1968, the board rejected Benson’s application using the “mental processes” and “mathematical steps” doctrines. But when looking at the claims above, I don’t really see how the claims don’t fit within the framework of § 101. I agree with Judge Rich’s analysis: “Would a reasonable interpretation of the claims include coverage of the process implemented by the human mind?” The answer clearly is “No, for claim 8 is for a method to be practiced in part on particular apparatus specified to be a ‘reentrant shift register.’ Claim 8, moreover, refers to the operations of storing, shifting, and masking ‘signals’ which, by a reasonable interpretation in the light of the specification, can only mean signals of the kind upon which the disclosed electronic digital computer hardware operates.” Id. at 1142.

With regards to claim 13, which dealt with converting one representation into another representation, the board rejected it as “mental,” but Judge Rich’s analysis is enlightening. “The process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer.” It makes one wonder how the claim could be interpreted as broader than a digital computer, for instance having the recording medium be pencil and paper or red and blue poker chips, considering the specification makes no mention of other implementations besides a digital computer.

Fast forward 40 years. Today the PTO, the board, and other courts now prefer to use the term “abstract idea” to reject claims like this. But is it possible that the Federal Circuit today is similar to its CCPA predecessor then? Could Judge Rader be the new Judge Rich? The recent RCT v. Microsoft decision seems to imply so. Granted, Benson is different than RCT because RCT had already been issued patents and thus deserved a higher level of validity while Benson, on the other hand, involved the application stage. The RCT court refused to define abstract but said that  “this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter.” The court went on to show that the following claims were patent-eligible:

1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.

11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to per-form said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

1. [not asserted] A machine comprising a computer readable storage device which stores a dither matrix for use in halftoning image information and a comparator responsive to said computer readable storage device, said dither matrix comprising at least one array, said at least one array, when thresholded at a number of levels produces a number of dot profiles, a plurality of said number of dot profiles each having a power spectrum substantially characteristic of a blue noise power spectrum for the level at which such dot profile is produced.

4. The machine of claim 1, wherein substantially all of said number of dot profiles have a power spectrum substantially characteristic of a blue noise power spectrum for the level at which such dot profile is produced.

57. [not asserted] A computer readable memory device comprising a thresholdable halftoning mask, said halftoning mask designed to produce a plurality of visually pleasing dot profiles when thresholded at a number of levels and a comparator responsive to said computer readable memory device.

63. The computer readable memory device of claim 57, wherein said halftoning mask is designed to produce substantially all visually pleasing dot profiles when thresholded at a number of levels.

29. Apparatus for the halftoning of color images comprising a comparator for comparing, on a pixel-by-pixel basis, a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministric, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein an output of said comparator is used to produce a halftoned image.

Like Benson, the claims when read in a vacuum could reasonably be interpreted as “mental” or “mathematical.” But in the context of the specification, it is clear that the invention was tailored to a machine and was not abstract. Indeed the RCT court, without agreeing to define what abstract meant, provided perhaps the best definition to date: “this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter.” Id. at 868. The invention was not that.

In my opinion the PTO, or at least the Federal Circuit, in following its own subject matter jurisprudence, could hold that Benson’s invention is patent-eligible today. The invention sure wouldn’t survive other provisions of the Patent Law today, such as 102, 103, and 112, among others. But it’s useful to revisit Benson’s decision because to me the “unanimous” decision to hold Benson’s invention as non-statutory subject matter was not inevitable. It could have gone the other way.

 Posted by at 8:06 am
Mar 022011

I recently came across a pretty interesting blog As I was reading about Patent Reform, I came across something hilarious: a terms and conditions section for viewing the blog. I thought it was a joke, but then I realized that these people were serious.

Hmmm. A website without any architectural restrictions on accessing content trying to restrict its viewers under such a legal obligation? It sounded fishy to me too. I figured I should probably look into the terms and conditions that I was “bound to,” considering I was using the site, so I clicked on the link. Here is the first paragraph.

So let me get this straight, TacticalIP. As a user, I am granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. If I do something that goes against this agreement, my access becomes terminated. My first thought was, why threaten to terminate access to the website? There is no practical way to implement such a threat. Did they think that they could terminate your use by blocking your IP address? No, because here is a clause that they have later on in the terms.

Not only can IP address information not be used to identify someone, this blog does not register viewers. If I go against the terms, how are they going to know who I am? Unless these people have some advanced way of tracking every possible protocol that I use to receive the web pages they have freely offered on the web, then I don’t see a point in claiming such bold termination. I think it’s interesting to think about how they could architecturally restrict one’s use, but it’s also interesting to think about whether a restriction can be legally enforced. I will defer that topic of conversation for another day.

Back to the terms and conditions, the next paragraph really had me going.

So my use is restricted to only reading the text of this website. Consider this paragraph copyrights on steroids. Basically, you can only use their content for reading. But such a regime should not be encouraged, especially on openly-accessible websites. If I were to provide consideration to a website (user registration or a monthly subscription fee) to access this information, I could understand the legal basis for restricting use. But we’re talking about a blog that is as open as can be. Isn’t the open Internet a medium that is designed for modifying, publishing, transmitting, transferring, and otherwise reproducing content within the framework of the copyright law? I think that it is. I want to know under what law is TacticalIP seeking to create such a seemingly legal obligation. Copyright law? Contract law? These are questions that need to be answered, but I’ll tell you one thing in regards to contract law; there’s no way that I would agree to these terms.

In sum, websites should only use such clauses as TacticalIP’s terms, when they are playing an April Fool’s joke or when they have registered users. I may have violated Tactical’s terms with this post by copying from their website, but I want to see how they are going to terminate my use.


 Posted by at 10:20 am
Mar 012011

If you’re like me, you might be a little bit confused by the patent searching services out there. Not only are there are a lot of company names to be confused by, all these companies seem to use different indexes with confusing acronyms (DWPI, INPADOC, PFS, PRS, etc). Furthermore, it is often difficult to tell which company has merged, been acquired, or resulted in new or discontinued services. I’ve attempted to make sense of the current patent mining landscape by researching the well-known indexes and databases and, because of my good-naturedness, I’ve decided to share that knowledge with you. I have limited my discussion to those services that include patent search functionality, intentionally leaving out services with only patent-ordering or patent-analytics features. For purposes of clarity, I have organized the list alphabetically. Let me know if there are any others you’d like to add to the list.

Patent Searching Services

Aureka – Acquired by Thomson, this service seems to struggle. The website had dead links and, since owned by Thomson, will most likely vanish into the Innovation horizon.

Boliven – Search tool that boasts over 60 million patents and patent applications. With free subscription options, this service integrates the following sources: Patent – USPTO, EPO, PCT, JPO, KIPO, INPADOC; Clinical trials – NIH/NLM/FDA; company reports – SEC; drugs – FDA; grants – NIH, NSF, SBIR, STTR; legal proceedings – PACER; medical devices – FDA; and over 5,500 publications. Boliven limits you to 30 results if you are not a paid subscriber. If you have a very specific query, this should be no problem though. If you would like a free 30-day trial, you can go to this site: You will be prompted to enter some information. Once you submit that, you need to enter a promo code. The promo code you can enter for 30 days of Boliven bliss is TrentOstler3. Try it out.

Decopa (or IPCentury, the parent company behind DECOPA) “IP Analysis”- a neural-net-based artificial intelligence tool/knowledge base that uses latent semantic analysis to search for relevant patent documents. Submitting a query in DECOPA returns a list of related patent numbers ranked by relevancy. Instead of browsing the document content in-system, users are provided with links to view the search results on one of several other major patent search sites: esp@cenet, the USPTO website, or Delphion.

DialogPro (Predictable Research Online) – Created specifically for the small business user. It offers a flat subscription-based pricing structure and unlimited access. Searchers accustomed to more flexible or comprehensive options may be disappointed. US, EP, WO/PCT coverage.

Dialog1 – The simplest of the Dialog suite of products, Dialog1 is a web browser-based search tool that uses a simple “question and answer” format aimed at users who want to find relevant information quickly.

DialogClassic Web – Web browser access to the full power of classic command-mode Dialog.

DialogSelect – Aimed at less experienced end-users rather than professional patent searchers or information professionals.

Dialog Web – A web browser-based search interface that combines two separate and distinctly different modes of searching. The first mode provides the full content and functionality of command-mode Dialog classic, while the second mode is a guided search designed for novice searchers.

Delphion– Full-text search for US, European Patent Office and World Intellectual Property Organization patents. A decent tool for quick or occasional patent searchers; not ideal for full time patent searchers. Databases include US, PCT, EP, Japan and Germany. Eventually Thomson will likely fade this service into Innovation.

EAST (Examiner Automated Search Tool) – The free service is very powerful, especially for searching US data. Lightning-fast image searching is ideal for searchers in the mechanical arts. Full document text may be searched on U.S. patents issued since 1971 and OCR text from 1920 to 1970. U. S. patent images from 1790 to the present may be retrieved for viewing or printing. Some foreign patent documents may be searched using EAST as well as access to DWPI. The only catch is that this service is only accessible in Arlington Va, the USPTO Public Search Facility in Alexandria, VA.

Ei Patents – Contains 9.9 million US patents and 3.5 million patents filed with the EPO. Designed to accommodate novice and expert users alike, with multiple search forms ranging from a simple Google-style search bar, to a complex command line search. Bought by Elsevier.

Esp@cenet – Free source of patent bibliographic data, images, families, and legal status data. The service allows you to search across 80+ countries title and abstracts. It also provides full-text searching for the EP database. Uses the DOCDB bibliographic and legal status data file covering the EP and WO/PCT.

FreePatentsOnline – Free service, useful entry level tool for searching major patent collections. It compares well with other free patent search systems in terms of managing queries, alerts, and saving records. The available data collection that includes US (patents and applications), EP, JP, and WO/PCT data. PDF files are available for all collections except Japan.

GenomeQuest IP – Normalizes, curates, and updates IP information across global databases, including USPTO, EPO, WIPO & PCT, INPADOC, GenBank, EMBL, DDBJ, SIPO, and paper filings from WIPO. Over 265,000 patents — including their sequences and all annotations — are now stored and updated bi-weekly in the GQ-PAT database. Users can also add in-house sequence data to GQ-IP.

Google Patent Search – The relevant results (Google-power) and the very fast search and image load times set this tool apart and make it a must use as a first step. Searches over 7 million published applications and patents, but not very extensive, covering only the US.

illumin8 – Contains 23 million patents from 5 worldwide patent offices as well as millions of scientific articles. Affiliated with Elsevier.

infoapps – Ready-to-use projects at a fixed price. Approximately 67 million patent documents available.

Innography – Over 70 million global patent documents updated weekly. Databases include US Grants, US Applications, EU Grants, EU Applications, World Patent Office Applications, Japan Applications, and INPADOC bibliographic data from 40 jurisdictions and 70 countries. Also, includes patent analysis software, notable for the integration of business and legal data into its patent database, including Dun & Bradstreet financial information, and the PACER database of US litigation.

IPQuester – Bibliographic data (back-files plus updates) of patent, trademark, utility model and design as it is published by official sources from Argentina, Brazil, Chile, Colombia, Greece, Mexico, Panama, Paraguay, Peru, Portugal, Uruguay, United States and Venezuela. Full-text Brazilian patents and utility models (back-files plus updates), including bibliographic, claims and drawings. Couldn’t get this to work properly.

JPDS (Japan Patent Data Service) – provides web-based English language search engine “JP-NETe” for Japanese unexamined patents after 1989 including legal status information, and Japanese search engine “JP-NET” for Japanese patents, utility models, designs and trademarks including legal status information, together with US patent data after 1985. Flat rate for 5,000 Japanese yen per month without any additional charge.

JP-NETe – Auxiliary tool for users looking for a source of Japanese data, especially complete patent drawing sets and legal status. $750/yr.

KIPRIS – internet-based patent document search service which is available to the public free of charge. It covers publications of Korean IPR applications, legal status information and trial information, etc. Korea Institute of Patent Information has been providing KIPRIS since 1996 on behalf of KIPO.

MicroPatent PatentWeb – Uses two databases: MPI-INPADOC Plus (a bibliographic database), and PatSearch FullText. Scope of search includes US, EP, WO/PCT, DE, FR, GB coverage. Although the system is still a strong tool for searching in important full text collections, both its user interface and data coverage now lag behind other commercial search engines. Thomson will most likely fade this product into the Innovation horizon also.

Minesoft – database coves over 28 million patent families, 75+ patent-issuing authorities, English abstracts, bibliographic details, also integrated legal status, full text display, PDF patent document ordering using PatBase (joint product with RWS Group), PatBase Express, PatentOrder, PatentArchive, PatentViewer, Patent Tracker, and/or Patent Family Portal. Updated each week.

Pantros IP – Utilizes Latent Semantic Analysis for analytics, semantic, guided and advanced search technology, and portfolio quality analysis. Natural language and artificial intelligence serve as the core foundation in our IP solutions greatly improving research, analytics, and evaluation precision, speed and results.

PatBase – provides functionality that is easy for beginners to learn, and coverage is large for a system with such a simple interface: full text records for the US, PCT/WO including original non-Latin language documents, EP, GB, DE, FR, JP, KR, IN, TW and CN, as well as title, abstract and claims for Canadian (CA) documents. The tool purposely lacks functionality needed by advanced and commercial searchers.

PatBase Express – Quick and easy to use interface for beginners; access to the majority of the commercial PatBase data; faceted “Optimise search” sidebar can allow quick refining of results. Coverage: US, EP, WO/PCT, JP, CN, DE, FR, GB, KR, IN, TW.

Patent Cafe Prosearch – Has since been purchased by Pantros IP and entirely integrated into the Pantros IP suite of products.

Patent Lens – Well rounded, free, data coverage, including US patents and applications, EP patents, PCT applications, and Australian patents and applications. Good secondary tool for accessing Australian full text data or doing quick and uncomplicated searches. Lacks in-depth search options or record handling to do extensive searches.

Patent Integration – Provides patent search, analysis, visualization, and collaboration composed of a worldwide patent database and special multi-platform client software. Includes over 20 million patent gazettes from Japan, America, Europe, China and Taiwan. Download the application and register to get a userid and password to explore the application.

PriorSmart – Free, low-frills, all-in-one international search portal. “meta search engine.” Also includes fee-based patent-monitoring service. – Free search of US and EP patent collections. Over 12 million patents available. – Free “discovery engine” that doesn’t focus on keywords. –PatSnap includes good search interface and analytics tools. Free coverage includes US (applications, utility patents and design patents), EP (applications and patents), WO/PCT. Other available databases include KR, JP, NO, and CN. As of today, the service touts 31,841,190 patents.

QPat – A spin-off of Questel-Orbit’s command environment QWeb, QPAT is a web-based search tool that accesses Questel’s full text patent files, as well as its unique FamPat family and bibliographic database. The tool is one of the only systems to offer the unique FamPat file, with its exclusive definition of patent families. Although the actual data coverage should be similar to INPADOC, this family database is divided into much smaller family units.

Qweb – Web-based command line interface based on the Questel-Orbit database system. Powerful system designed for powerful users comfortable with the connect hour fee structure. The usual patent coverage is presently: US, EP, WO/PCT, as well as other major national collections DE, GB, FR, JP, and other national collections AT, IN, FI, ES, RU, BR, CA, DK, SE, SU, CN, CH, TW and BE.

Raytec PAT-LIST-CN/WEB – JP patents, utility model, design, foreign patents using the INPADOC, DWPI, and CLAIMS databases.

Search4IP – Free. Database consists of over 70 million patent documents from over 70 countries. The patent data is updated once a week.

STN® – CAS – USA – Allows users to use all three databases CAplus, DWPI, and INPADOCDB simultaneously. Operated jointly by CAS (Chemical Abstracts Service) and FIZ Karlsruhe worldwide and is represented in Japan by JAICI.

STN International – FIZ-Karlsruhe – Europe – online database service that provides global access to published research, journal literature, patents, structures, sequences, properties, and other data.

SumoBrain – Free service, useful entry level tool for searching major patent collections. It compares well with other free patent search systems in terms of managing queries and saving records. The weighting operators are worth checking out as a different way to hone searches. Coverage includes US, PCT, EP, and JP.

SureChem – Highly effective chemical structure searching tool with valuable chemical indexing. Is not a substitute for more complex tools such as STN which can do more detailed chemical searching. Covers US, EP, WO/PCT, and JP databases.

Surf-IP – Free service, sponsored by the Intellectual Property Office of Singapore covering a wide range of patent databases including a significant portion of Asian databases. A good tool for searching US documents, as well as Asian collections. Databases cover US (applications and patents), WO/PCT, SG, EPO, UK, CN, CA, KR, TH, and TW. However, the features are not robust enough to replace a good commercial search tool.

TotalPatent – This system offers impressive foreign coverage and a friendly user interface; however, some impediments to workflow efficiency remain. The semantic search option is a unique offering. Coverage: at least US, EP, WO/PCT, AT, AU, BE, BR, CA, CH, CN, DD, DE, DK, EA, ES, FI, FR, GB, IE, IN, IT, LU, MC, NL, PT, RU, SE, SU. May also include small or developing collections for BG, CU, CZ, EE, GR, HR, LV, MX, NO, NZ, RO, SK, UA, ZA. Full text original language collections for JP are available for display only.

Thomson Innovation – Thomson’s “best of” service. A worthy all-in-one patent and literature search tool. Frequent product updates in the period after launch have resolved some initial bugs in system stability. Coverage: US, EP, WO/PCT, JP, DE, GB, FR, KR.

Treparel PatentPilot – Online patent information and monitoring service with integrated search engine, automatic patent document delivery service, and sophisticated tool for filing and distributing patent documents.

USPTO PatFT – Full text patents since 1976. Pretty basic search engine once you get the hang of the searching syntax.

USPTO AppFT – Full text applications published, since March 2001.
Westlaw – Basic patent search.

WIPO PATENTSCOPE – Free search service offered by the World Intellectual Property Organization (WIPO). It is made up of two databases, each with its own search interface: the International Applications search, and the National Collections search. As of November 2010, PATENTSCOPE’s searchable national patent collections include the African Regional Intellectual Property Organization (ARIPO), Argentina (AR), Brazil (BR), Cuba (CU), Israel (IL), Mexico (MX), Morocco (MC), Republic of Korea (KR), Singapore (SG), South Africa (ZA), Spain (ES) and Vietnam (VN). The International Applications search service offers full text searching of its collection of Patent Cooperation treaty (WO/PCT) applications, and supports searching in both Latin and non-Latin text languages. The service currently supports full-text data search in the following languages: English, French, German, Japanese, Korean, Russian and Spanish.

World Intellectual Property Search (WIPS) Global – Korean Patent Index (KPI) coverage is current and updated weekly, but with the exception of Korea, the system’s coverage is lacking compared to other search engines. The user interface lags behind other commercial search engines.

Xyggy Patent – Pretty cool item-based search engine. Didn’t work on Firefox, but IE, Opera, and Chrome all worked. The database does not seem to be as comprehensive, but it was unclear which index this site uses.

Foreign Country Websites

In addition, here are some individual foreign countries’ sites. I have not provided a list to each link, but they are out there. Here is a link:

Canadian Patent Databases – (1924 – present, free searching and display) The CIPO Canadian Patent Database contains all Canadian patents (both applications and granted patents) since 1924. For patent documents which are either laid-open applications (an application that has been made available for public viewing but has not yet been granted) or are patents granted since August 15, 1978, the database contains bibliographic data, textual data (titles, abstracts and claims) and image data. For patents granted prior to August 15, 1978, the database contains bibliographic data, the text of titles only (no text of abstracts and claims) and image data.

Chinese patent database (1985 – present, in Chinese, free searching and abstract display) The Chinese patent database is provided by SIPO — State Intellectual Property Office of the People’s Republic of China. The database contains abstracts of all the Chinese patents, including patent applications and granted patents since 1985 and the images since 1996. There are 11 fields can be searched in: IPC (International Patent Classification), Title, Application number, Application date, Patent number, Inventor, Abstract, etc. The IPC in Chinese is available from this site.

Italian patent database (recent 1 year only, free searching and brief display) – The Italian patent database is provided by FILDATA , an Italian patent information company offers documentation services at the Italian Patent and Trademark office. The database contains recent one year of Italian patent applications. Searching by Italian patent applications or title keywords in Italian. The search results only the title, application number, application date and applicant will be displayed.

Japanese Patent Office (JPO) Japan, PAJ – Patent Abstracts of Japan (1993 – present, free searching and display) The PAJ – Patent Abstracts of Japan which is part of Industrial Property Digital Library. The PAJ is a searchable database of Japanese patent applications abstracts and legal status, published by the JPO. The date range covers from 1993.1.1 (publication date) and it takes about 3 months from the publication of the applications to the database. The database can be searched by Keywords, Applicant, Title of invention, Date of publication of application, IPC (International Patent Classification), Application number, Publication number, Patent number, and so on. Available data include front page and drawings of the patents.

The PAJ database of PATON contains the textual information from the CD-ROM-Series “Patent Abstracts of Japan (PAJ)”, which is published monthly by the JPO. It contains bibliographic data and the English translation of the edited version of Japanese patent applications without foreign priority.

New Zealand patents (free searching & title display) – The New Zealand patents database is provided by the Intellectual Property Office of New Zealand (IPONZ), a business unit in the Ministry of Commerce. Information contained in the database accessible through this site has been taken from files held at the Intellectual Property Office of New Zealand. The official trade marks, patents and designs registers are available from IPONZ..

The area of patent mining is quickly evolving, much like other areas in the information age. It looks like the future for these services looks good as innovation continues to create better products with better analytical tools.
Special thanks to,, and


 Posted by at 8:30 am