Yesterday I participated in “The TTAB comes to Boston” event at Northeastern University School of Law. I didn’t quite know what to expect from the invitation, but the event turned out to be an actual TTAB proceeding with actual attorneys and actual judges, the only unique aspect was that the arguments were held in Boston. Rather than focus on the case, which was Lockheed Martin v. Raytheon, arguing whether Paveway, a term associated with laser-guided bombs, is generic by virtue of its use, I wanted to talk about some interesting points that were raised in the couple of talks given immediately preceding the hearing.
Prior to the hearing, Pamela Chestek, gave a talk on the trademark issue of ownership. By the way, she has a blog (http://propertyintangible.com). She highlighted that unlike copyright or patent law, where the statute explicitly deals with ownership, the Lanham Act does not have a provision for determining ownership. Consider a group of people using a mark and then individuals within the group going off on their own to use the mark. This happens in family businesses, churches, and entertainment groups, where individuals splinter off from the original entity. How do you analyze the ownership issue? First use? Not really, because both parties were using the mark at the same time originally. Priority? No again. Dilution? Likelihood of confusion? It’s a stretch because both inquiries deal with an original standard from which both parties stemmed from. Trademark law is ill-equipped at handling ownership currently, but it is developing case law at the TTAB. Pamela cited to a few recent cases in particular. Please check out her blog for further information.
The next speaker was one of the judges for the hearing, David Mermelstein. He gave advice for those who would be arguing cases before the TTAB. He then talked about an interesting procedure that the TTAB allows, accelerated case resolution. Through this, parties can agree to certain procedural rules, which speeds up the case, reduces risk and reduces cost for both parties. I do not believe that the BPAI has a similar procedure, but I was really impressed with the program. Maybe the BPAI should look in to something similar.
Overall, it was a great event. Trademarks is an interesting area of IP, that I’d like to get more familiar with.
When contemplating filing a patent application in another country, you may get a single quote that lumps together all of the associated fees (e.g., translation, attorney fees, etc). One of the fees when broken down that has recently interested me is the country’s filing fees. While this fee may appear constant in the country itself, to the outsider the rate fluctuates every single day depending on how his currency is trading against the foreign country. For instance, I compiled a simple list from foreign countries’ patent office websites.
If you are the type of person that really likes to break costs down, this may be a difficult cost to accurately nail down. An interesting idea, that I have yet to come across, is an instant snapshot of all the country’s patent filing fees compared to the currency of your choice. The system could display real-time rates using Forex or Citibank or some other currency platform. Anyone think there would be demand for something like this?
You may have a subscription to a patent mining database that can access all sorts of patent documents, but what if you want to retrieve that document for yourself? Many services allow for retrieving patent documents–whether that includes patent applications, issued patents or file histories. These services can deliver your document to you in physical or electronic form. Some of these services are subscription-based, others are free. There are so many options and here is my list of 28 of them.
Advanced Patent Services – Specializes in obtaining US and Foreign Patent File Histories/Wrappers. (Formerly also known as FileShopper)
Discount Patent Service – Specializes in obtaining both US and non-US patent file histories, authentication, legalization, and certification of documents and all other patent related documents. Available to download via web at a low cost.
EU Pat Register Plus – Allows for patent information including file histories, for European patents.
FreePatentsOnline – provides fast, free patent searching, with powerful features such as PDF downloading, search management functions, collaborative document folders, and more. Like the company name says, it’s free.
GetIPDL – Software that downloads the text and the images from JPO, USPTO, EPO, DEPTATIS, WIPO, IP Australia, CIPO, SIPO of P. R. China, Thai IPIC website and merges and converts to PDF for printing. It includes features, such as SmartTag, which expands the Internet Explorer context menu.
Get The Patent – Patent image downloads from US, EP, WO, GB, DE, FR, JP, CH.
Google Patents – Allows for download of US issued patents and patent applications.
INCOM – Offers patent document delivery and direct access to the INPADOC PFS und PRS data of more than 65 Patent Offices worldwide.
IP Data Corporation – Current and back-year bulk data for most major authorities with Images (TIF or PDF) and full text available in several formats (this includes subscriptions). Download U.S. and foreign patents and applications from our document library. They also publish US IP manuals in soft cover and 3-ring (CFR-37, US Code, TMEP, TBMP & MPEP).
IP-Discover – Free software to search, download, and manage patents and applications from the public patent servers. Demo available.
Matheo Patent – Downloads patents from Espacenet and USPTO automatically according to your request criteria, constitutes and updates your local database, integrates many analysis tools, and generates graphic visualizations and personal printable reports.
MicroPatent – XML and more than 50 million documents from 40+ countries. Electronic file histories available, too.
Minesoft PatentOrder – Instantly download PDF patent documents from over 40 countries (incl. PCT, US, EP on day of publication). Electronic EP Filewrappers, patent family/legal status reports, available via the Web, or either as Intranet or PC Desktop software.
Pat2PDF – Pat2PDF.com is a service started to convert the native U.S. patent documents into industry standard PDF documents. Since that time, it’s grown to meet other patent viewing and searching needs.
Patent Fetcher – Offers PDFs of all U.S. and most foreign patents and patent applications for a fee of $0.65 per document, regardless of size, via the Web site.
Patentec – Patent documents in paper and electronic form, and electronic file wrappers.
PatentPleeze – With it you can download unlimited full (or partial) patents from most countries (From Esp@cenet, USPTO, CIPO and Depatis). You can analyze downloaded documents (search rank..). You can view documents with text and images side by side and you can create a database of patents, and you can Email patents with one click.
The Patent Supply Co. – Provides low-cost, searchable PDFs for U.S. patents and applications for as low as $0.49 per document. They also offer Enhanced Patent™ document sets that include separate, commenting-enabled patent and drawings PDFs. With the Enhanced Patent document sets, practitioners can add their notes directly to the PDFs, search the text, and view a patent’s text and drawings side-by-side. All of the PDFs are compressed and bookmarked to the major sections. Orders are zipped into a single file for easy downloading. Free trial is available.
Questel-Orbit – Patent Delivery Service gives access to an extensive, growing patent information file that covers more than 30 countries. The Patent Delivery Service is an interactive solution that offers speed, value-for-money and flexibility.
Rapidpat – Document delivery and US data search engine.
Reedfax – Delivering copies of patent & trademark documents since 1992. Patent Images – any issued US patent and most foreign, Certified patent & trademark documents, File Histories/Wrappers, Instant Japanese Patent Machine Translations, Fully certified manual translations and Hand delivery services to the USPTO.
Specialized Patent Services – Patent File wrappers, Large database of imaged files, Issued, Published, Re examinations, Interference. 703-415-1555
The 2010 post-Bilski guidelines seek to provide a comprehensive analysis of determining if an invention is statutory subject matter. However, part of the problem of using these guidelines is that some terms are supercharged with more-than-meets-the-eye meaning. “Practically applied” is one such term, which I found four times in the Guidelines. While the concept that you can only patent an application of an idea is basic to patent law, I wanted to see how this exact term came into existence and the subsequent history of the term for US law. I found that when used with regards to subject matter patent-eligibility, there has been some definite developments. Initially, the term was used in conjunction with all the judicial exceptions to subject matter (e.g., abstract ideas, laws of nature, natural phenomena, mental steps). However, before State Street Bank v. Signature Financial Group, the term was infrequently used. Now, the term is much more frequently used, but with a focus more on laws of nature and abstract ideas.
While the first use of “practical application” was technically in Le Roy v. Tatham, 55 U.S. 156 (1853) (“The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. . . . In the case before us, the court instructed the jury that the invention did not consist “in the novelty of the machinery, but in bringing a newly discovered principle into practical application, by which a useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe.””), the concept started long before. A number of cases set the precedent that you can only patent an applied invention. See Lowell v. Lewis, 15 F.Cas.1018 (Cir. Ct. Mass 1817) (“It has been often decided, that a patent cannot be legally obtained for a mere philosophical or abstract theory; it can only be for such a theory reduced to practice in a particular structure or combination of parts.”); Evans v. Eaton, 16 US 454 (U.S. 1818)(“[A] patent may be for a new and useful art; but it must be practical, it must be applicable and referrable to something by which it may be proved to be useful; a mere abstract principle cannot be appropriated by patent.”); Earle v. Sawyer, 8 F. Cas. 254 (Cir. Ct. Mass 1825) (“The thing to be patented is not a mere elementary principle, or intellectual discovery, but a principle put in practice, and applied to some art, machine, manufacture, or composition of matter.”); Whitney v. Emmett, 29 F Cas 1074 (Circuit Ct. E.D. Penn. 1831) (“Nor is a discovery of some new principle, theory, elementary truth, or an improvement upon it, abstracted from its application, a new invention. But when such discovery is applied to any practical purpose . . . .”). After Le Roy v. Tatham, other notable cases solidified the concept. O’Reilly v. Morse, 56 U.S. 62 (1954) (holding that the use of magnetism as a motive power, without regard to the particular process with which it was connected in the patent, could not be claimed, but that its use in that connection could); In re Henry, 11 F. Cas. 1150 (Cir. Ct. DC 1856) (“A well-known principle or truth of natural science, as well as a newly-discovered one, is patentable to the first applicant of it in the useful arts . . . .”); Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874) (“idea of itself is not patentable, but a new device by which it may be made practically useful is”); Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94, 40 USPQ 199, 202 (1939) (“While a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.”).
More recently, Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) dealt with a claim involving the natural phenomenon exception:
He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.”
The practical application language was reiterated in Gottschalk v. Benson. Benson’s limitation of his claims to a computer machine environment overcame the rejection bottomed on a “mental steps” theory. Because operation of a formula-solving computer constituted the only practical use of the involved algorithm, however, the Supreme Court deemed unpatentable what it considered claims to an algorithm performed in a computer, i.e., claims to the algorithm itself.
It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. (409 U.S. at 71-72, 93 S.Ct. at 257, 175 USPQ at 676.)
The practical application term was used in reference to the abstract idea exception. In sum, the Court held that you can patent an invention that has an abstract idea in it (or here mathematical algorithm) only when it is practically applied.
The practical application standard was later further expounded upon in the CCPA case of In re De Castelet, 562 F.2d 1236, 1240-41 (C.C.P.A. 1977):
That language is interpreted by the solicitor and the board as foreclosing patentability of the appealed claims because, as de Castelet admitted at oral argument, the only practical application of the involved algorithm (equations) is in the claimed method. But the notion that the “ nutshell” language makes a method nonstatutory whenever it involves mathematical equations having their only practical use in the method is neither impelled by the rationale of Benson nor supported by precedent.
This court, in In re Benson, 441 F.2d 682 (1971), recognized that the only practical use of Benson’s method was in conjunction with a computer, but stated why that fact would not support a “mental steps” rejection:
Realistically, 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 seems beyond question that the machines the computers are in the technological field, are a part of one of our best-known technologies, and are in the “useful arts” rather than the “liberal arts” as are all other types of “business machines,” regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts? (Emphasis in original. 441 F.2d at 688)
In re De Castelet, 562 F.2d 1236, 1241 (C.C.P.A. 1977). Here practical application is used with regards to abstract ideas, mathematical algorithms, and mental steps.
Then in Diamond v. Diehr, the practical application doctrine was used to uphold the machine the invention that contained an abstract idea. Diehr, 450 U.S. at 187, 209 USPQ at 8 (“application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”).
The term practical application continued to be sparsely used until State Street Bank v. Signature Financial Group, which significantly strengthened the doctrine.
In Diehr, the Court explained that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, i.e., “a useful, concrete and tangible result.” Alappat, 33 F.3d at 1544, 31 USPQ2d at 1557.
Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful.” From a practical standpoint, this means that to be patentable an algorithm must be applied in a “useful” way. In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced “a useful, concrete and tangible result”-the smooth waveform.
Similarly, in Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053, 22 USPQ2d 1033 (Fed.Cir.1992), we held that the transformation of electrocardiograph signals from a patient’s heartbeat by a machine through a series of mathematical calculations constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it corresponded to a useful, concrete or tangible thing-the condition of a patient’s heart.
Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces “a useful, concrete and tangible result”
-a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.
State St. Bank & Trust Co. v. Signature Fin. Group, Inc, 149 F.3d 1368, 1373 (Fed. Cir. 1998).
State Street set the practical application doctrine in motion at the BPAI. Prior to 1998, there were no references to practical application regarding subject matter. Since then, there has been 98 decisions. The PTO’s 2005 subject matter guidelines were laced with the term practical application. It is likely that these guidelines steered the Board into further defining the practical application standard. Some recent BPAI decisions are notable in developing the practical application standard.
In In re Gutta, 93 U.S.P.Q.2d 1025, 2009 WL 2563524 (B.P.A.I. 2009), the Board applied the “real world use” test and the “substantially all practical applications” test to the claims at issue. With regard to the real world use test, claim 14 failed to recite any tangible practical application in which the mathematical algorithm is applied that results in a real-world use.
14. A system for identifying one or more mean items for a plurality of items, J, each of the items having at least one symbolic attribute having a symbolic value, the system comprising:
a memory for storing computer readable code; and
a processor operatively coupled to the memory, the processor configured to:
compute a variance of the symbolic values of the plurality of items relative to each of the items; and
select the at least one mean item having a symbolic value that minimizes the variance.
In re Gutta, at *1.
Most recently in Ex Parte Ruby, in addition to practical application, the standard included “real-world-use”:
When we consider these claims as a whole, we find nothing in the language of claims 1 and 17 to support Appellants’ presumption that because “the result is tangible plus the fact that the result is useful (e.g., in the context of video compression) and concrete (e.g., repeatable),” that this suffices “to establish that the claims relate to a practical application of the formula and not to the formula itself.” (Reply Br. 13, ¶2).
To the contrary, we find that merely storing the result of a mathematical operation in a register is insufficient to establish a tangible practical application having real-world use. See Gutta, 93 USPQ2d at 1026-27. Because the information contained in Appellants’ “result register” is not positively recited as being used to perform any function, we find that tangibly transforming the state of Appellants’ “result register” (claims 1 and 17) by storing the result of the combined compare and tally mathematical operations does not perform any tangible practical application that results in a real-world use. Moreover, while Appellants strenuously argue that the result is useful, e.g., in the context of video compression, we find representative claims 1 and 17 are each silent regarding any video compression. (Reply Br. 13, ¶2).
Ex Parte Lee, APL 2009-003697, 2010 WL 363234 (B.P.A.I. Jan. 29, 2010).
In Ex Parte Talbot, APL 2008-004894, 2010 WL 2157832 (B.P.A.I. May 27, 2010), appellants argued that the claims need not be limited to a particular application, only that a practical application be tied to the claims by way of the specification. Appellants stated the specification noted the decision network is tied to security applications and retail sales tracking. (App. Br. 6) Appellants then asserted the claims recite memory or means for storing, a processing unit or means for processing, or a computer readable medium, stating these limitations clearly constitute patentable subject matter. The Board rejected these arguments and used the Gutta rule that a “claim must be limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use and be limited so as to not encompass substantially all practical applications of the mathematical algorithm.” Id. at *3.
In Ex Parte Yazaki Corp., APL 2009-007532, 2010 WL 3072975 (B.P.A.I. Aug. 4, 2010), the applicant argued that the path plan had a practical application in its use for producing a wire harness. The Board rejected that argument by stating that “even if the step of “outputting the path plan” were interpreted as requiring the production of the plan on a tangible medium, that production constitutes nothing more than mere insignificant post solution activity. Such activity does not transform an unpatentable principle into a patentable process.” Id. at *3.
Most recently, in Ex Parte Sun, 2009-008503, 2011 WL 1211177 (B.P.A.I. Mar. 30, 2011), the applicant argued that claim 1 was directed to practical applications such as assisting a doctor’s investigation to a patient’s situation or a federal agent evaluating a possible terrorist attack. App. Br. 31.1 The Board rejected this by stating that the claims were not directed to anything more than an abstract idea. Id. at *5.
The most recent guidelines from the USPTO require that the invention either subscribe to the machine-or-transformation test, which requires a particular machine or transformation of a particular state or thing. To clarify what this means, these guidelines refer to the 2009 guidelines, where reference to practical application is used. The practical application focus of the 2009 guidelines is directed to abstract ideas that do not satisfy the machine or transformation test. “This ensures that the machine or transformation imposes real world limits on the claimed method by limiting the claim scope to a particular practical application.” The 2010 guidelines use practical application in reference to both abstract ideas and laws of nature:
Factors that weigh in favor of patent-eligibility satisfy the criteria of the machine-or-transformation test or provide evidence that the abstract idea has been practically applied. 75 F.R. 143, 43925 (July 27, 2010).
Law of nature
Factors weighing toward eligibility:
The claim is directed toward applying a law of nature.
Law of nature is practically applied.
Practical application is a term easy to say, harder to apply to an invention. This seems especially true as innovation these days is not always easily distinguishable from an abstract idea. While initially used as a standard fairly infrequently before State Street in the case law, the test has shown a recent surge in popularity because of the focus that the USPTO subject matter guidelines have placed on it. Most recently, this focus has been on the two subject matter exclusions abstract ideas and laws of nature.
The B.P.A.I. recently decided an interesting case, Ex Parte Dwight Williams, 2009-010882, 2011 WL 1131340 (B.P.A.I. Mar. 28, 2011). The patent application at issue involved a system performing certain methods. The examiner had rejected certain claims as non-statutory subject matter because by combining two types of classes (systems and processes) the invention does not fall in any of the statutory classes. The question for the Board became whether the invention was a system or whether it was a method and if you can combine a system with a method. A representative claim is as follows:
1. A fire fighting system comprising:
pumping at least 2000 gpm water from a large water reservoir toward an industrial hazard using a standard pump having a water manifold inlet but no special approximately 2 1/2 inch inlet; and
adding, in an around-the-pump system, at least one water additive from a water additive source to the pumped water through a fitting at least initially separate from the standard pump, the fitting established on a suction side of the pump upstream of the pump water manifold inlet and in fluid communication between a reservoir outlet and the suction side.
The Board used a dictionary definition of system, which included a method: procedure. Because claims 1, 2, 5-8, 13, 16, and 17 only recited method steps, no structure was claimed. Accordingly, claims 1, 2, 5-8, 13, 16, and 17 were not improper hybrid claims. The Board stressed that a system can have methods as long as structure is not claimed. Therefore, it was “clear that these claims are method claims directed to one of the enumerated statutory classes.”
To me, this case highlights that 101 rejections at the PTO appear to be growing in number and scope. I appreciate that the Board set this point straight. The argument that the examiner made with regards to subject matter made little sense to me. If there were two or more statutory classes in one claim, the rejection should have been based on indefiniteness alone. See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (“Because [the claim] recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.”). But 101 should be used to disqualify subject matter when the subject matter does not fit within any class. See In re Nuijten, 515 F.3d 1361 (Fed. Cir. 2008).
My wife introduced me to the TV show Harry’s Law the other night. Before we started watching, she told me that the show involved a patent lawyer. I did a mental double-take. “Huh? How would a show focusing on patent law captivate any normal audience?” But at the same time I thought about how I would quite enjoy such a patent show. Other people may not see why patent law is likable. While I understand the argument, here is one reason patent law wins (if there ever were to be a competition between the two areas of law).
In Harry’s Law, the “patent lawyer” is actually a lawyer who used to be a patent attorney, but has now switched to criminal defense, apparently because she became bored of her patent profession. The former patent attorney heads a rag-tag group of attorneys who have banded together in a rundown shoe store. In the episode I watched, one of the attorneys gives a riveting and passionate speech to a judge to try and save his client’s life from the death penalty. I understand why criminal defense, which involves crime, capital punishment, guilt or innocence, etc, is more interesting to the general public than patent law. But a non-obvious (pun unintended) advantage of patent law is that to me the procedural rules are more extensive and give the attorney more room to keep on learning.
In comparing criminal defense work with patent work, I am not arguing that a patent attorney’s job is more interesting. But to me the procedural rules are more interesting. In criminal law you have the constitution, the rules of evidence, criminal procedure, civil procedure. These make up a great universe of rules, but the laws and rules of patent law kick the pants off of criminal defense. With the Patent Act, all the CFRs and the MPEP, there are so many options that must take into account with timing, business, science and public policy. Procedural-wise, I find it is an area of law where you can ever progress and learn as you piece together all the rules to come up eventually with the big picture for your client. I am done with my rant.
I sometimes take for granted what life would be like without Google. The ability to instantaneously get almost any information for free is simply amazing. A crucial component of practicing patent law in any area involves gathering the right information. What are the related patents? What language is used in similar patents? Does the invention stand apart from the published applications? Recently, I have been on a quest to find the best services that promote Google’s mantra: publicly available, fast, useful and comprehensive. I found that there’s no dominant, one-size-fits-all service; a lot depends on what you want to search for. Here, I compare 12 publicly available services that tailor to the English language. After my analysis of the strengths and weaknesses, I compare the results of actual test queries to come up with a “best of” list of three services. Ironically, my “best of” list does not include Google. Skip to the Best Of here.
Searching for patent information is tricky for a number of reasons. First, different search engines provide different search capabilities. Some allow you to search for terms that are in close proximity. Some allow for complex combined, boolean search logic (and, or, not). Some allow for wildcards so that you can generate a very expansive result list. In addition to all these search factors, there are differing options of searching through different fields. Some allow you to search through only certain fields at a time (title, abstract, specification, etc), while others allow you to combine the fields. This is why it’s difficult to come up with a list of “best of” list because they are all so different. Click on the links below to be redirected to the corresponding analysis below.
Boliven has an extensive database of 60 million patents and patent-applications. It includes these databases: US, EPO, PCT, JPO, KIPO, INPADOC.
I like the interface, as shown above. By default you can search through the entire fields, but if you want to drill down more specifically, you can use the Advanced Search. The big drawback to Boliven is that by trying to make money through subscription service, 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: www.boliven.com/freetrials. You will be prompted to enter some information. Once you submit that, you need to enter a promo code. The code you can enter for 30 days of Boliven bliss is TrentOstler3. Try it out.
Boliven has limited, but good analytical tools for registered users that do not pay the subscription fee. Also, the search syntax allows for proximity, boolean, wildcard, grouping, and even fuzzy searching. Here is a diagram of the advanced searching syntax:
Esp@cenet also has an extensive database of 70 million patent documents. The service offers full text search for EPO and PCT patents and applications. In addition, it includes the English abstracts of INPADOC. You can select and query individual countries in the country’s native language too.
I found the interface straightforward enough. The syntax did not allow for wildcard or complex searching, however.
FreePatentsOnline is great. The database includes US (applications and patents), EPO, Abstracts of Japan, and PCT. Notably, you have the option the ability to download original patent documents. In addition, FreePatentsOnline recently added non-patent literature so that you can now search the contents of several thousand journals concurrently with your patent search. Very nice.
The syntax for search queries is intuitive. They use the forward slash syntax that the PTO uses, which takes some getting used to. But the options for advanced searching, as provided below, give you the ability to do some intense searching.
The database is somewhat limited to only US patents and applications, a little over 7 million of them. Also, a search query does not show how many results were generated. You just get the 1-10 that appear on the initial page, then it’s a matter of clicking “0” after “o” to see how many more results there are. When dealing with a broad search term, this can be frustrating.
But what Google Patents lacks in coverage and results, it makes up for in speed and familiarity. Almost everyone knows how to use Google. It’s fast and gives you relevant results first. I use it to quickly look up filing dates. I also enjoy the “search within this document” feature. Sometimes you need the text of an original claim in a patent or patent application. But PAIR only provides the PDF version. Google allows you to convert any words on the patent to text.
The advanced search options allow for more functional searching, but I couldn’t find proximity, wildcard, or advanced boolean searching capabilities. I understand why regular Google doesn’t use such searching styles, as there may be more advanced ways of providing relevant results, but I think this is a weakness for Google Patents to not include it.
KIPRIS includes 4.5 million patent documents. In addition to patents, KIPRIS houses IPR applications, legal status information and trial information. Plus since 1996, KIPRIS has been run on behalf of KIPO.
The interface is simple and intuitive. The advanced searching also provides a lot of options. Here is the syntax:
Patent Lens is another great service. Boasting 10,870,431 patent documents, Patent Lens covers US, EPO, PCT and Australia jurisdictions. I like the ability to analyze particular results to see what the patent family is. For instance, if I’m looking at a US application, I can see where else in the world it was filed. Also of interest to me is the Patent Lens Sequence Project, which allows you to search through 80 million DNA and protein sequences disclosed in patents.
The advanced searching is also robust, with boolean logic and proximity searching capabilities.
An interesting service, Patent Surf primarily focuses its search engine on natural language, rather than use boolean syntax. You can enter a word, phrase, paragraph, or even page and the search engine will generate the most relevant results using relationships that are stored in their database.
The syntax is simple, use natural language! If you want to emphasize a particular word, you can do so with an asterisk–even multiple times.
Great service! This neat and organized interface reminds me of Google. Not only is the interface sleek, it provides additional features that allow for analytics. You can organize your results by assignee, inventor, filing years, patent family. You can also easily export your results, downloading multiple patents. You can also subscribe to receive RSS feeds for particular queries. The database is extensive, including US, EPO, and PCT patents. It is even more extensive, adding Norway, China, Korea, and Japan, if you wish to subscribe to the monthly subscription.
The searching syntax is user-friendly when using the field search, as you can input queries for particular patent sections. The “command line” is a little different, but looks powerful.
SumoBrain is a useful tool for searching major patent collections. The database includes US (applications and patents), EPO documents, PCT, and JP abstracts. It compares well with other free patent search services in terms of managing queries and saving records.
The search syntax is straightforward, using the slash syntax for particular section searching. The weighting operators are worth checking out as a different way to hone searches. The search syntax they provide is the same as FreePatentsOnline’s document.
The PTO provides two services, PatFT which searches the issued patents and AppFT, which searches the published applications. PatFt provides full text patents since 1976. AppFT provides the full-text applications published since March 2001.
The USPTO’s website is still kind of 1990s in its design. It’s not fancy, doesn’t have analytical options, just provides the results in bare form.
Both services operate using a basic search engine. You have to get the hang of using the syntax.
Great service. PatentScope is made of two databases, each with its own search interface–the International Applications search, and the National Collections search. The National Collections includes additional breadth in that it includes the international document (PCT) plus individual countries. The full-text searching capabilities include PCT, African Regional Intellectual Property Organization (ARIPO), Brazil (BR), Cuba (CU), Europe (EP), Israel (IL), Mexico (MX), Morocco (MC), Singapore (SG), South Africa (ZA), Spain (ES) and Vietnam (VN). Less than full text for many other countries Argentina (AR), Chile, Columbia, Costa Rica, Ecuador, El Salvador, Guatemala, Honduras, Nicaragua, Panama, Peru, Republic of Korea, Singapore, Uruguay, Vietnam. This adds up to a total of 7,752,536 patent documents, as noted on their website.
The syntax is straightforward and allows for powerful querying. Below are some syntax examples.
My “Best Of” list
I performed three queries and the results are shown below. To the right of the public patent search services are some proprietary comparisons.
Three services really caught my eye in terms of the interface and the results, effectively making my best of list. They are:
As noted in the above graphs, free search services are very good, but I believe can get even better. I’m going to make a prediction–this area of patent law will experience significant growth and change in information mining. Gone will be the days of paid-for database services. The Google model will become the norm. In sum, the more advanced our society becomes, the more information we will get. Our task is to optimize the tools for gathering such data because there is a demand out there that frankly demands it.
You’ve probably heard the news that the PTO will rely on its own funding to sustain itself for up to six days in the event of a government shutdown. I ran into an interesting post on Patently-O about this potentially going against the Constitution. “No Money shall be drawn from the Treasury, but in Consequence of Appropriations made by Law.” I guess the question would boil down to whether money is being drawn from the treasury. I did a quick search back to the last government shutdowns of the 1990s and I realized that blogs did not exist back then! So instead I found a couple Washington Post articles mentioning that the PTO (in 1995) was not going to shut down because of the fees it collects. I don’t know if the constitutional question was not raised back then, but the question is certainly an interesting one: whether a completely self-sustaining agency can operate without Congress’ appropriations. But what makes it even more interesting is how the Framers likely viewed this clause in relation to their vision of the PTO at the time the Constitution was ratified. Back then, there weren’t agencies as we know them today. But a look to the humble beginnings of the patent agency shows that the Framers likely did not design the patent agency to use the Treasury’s monies.
Because of the patent office’s long history, it is difficult to say which statute definitively created a Patent agency rather than a patent system. The Patent Act of 1790 allowed an inventor to file a “petition for patent” through the Secretary of State. The Secretary of State, the Secretary of War, and the Attorney General would determine jointly if they, or any two of them, thought “the invention or discovery sufficiently useful and important” to merit a patent. But assigning three cabinet officers the duties of determining what patents should be issued did not establish an office dedicated to granting patents. Nor did it begin with the Act of 1793, under which various State Department clerks shared the work of engrossing patents between their diplomatic duties. But on June 1, 1802, with the appointment of a clerk by the name of Dr. Thornton whose entire and full-time job was superintending the issuance of patents, it is arguable that the Patent agency began. It appears from the early history of the primitive patent agency that the funding system was self-sufficient as well. At this time, the amount of money coming in through “patent receipts” was $1400 per year so Secretary Madison offered Dr. Thornton that amount as salary, probably around May 12, 1802. The first record of him getting paid in the State Department was June 1, 1802 to December 31, 1802. This shows that the Framers likely had in mind a system that relied on its own funding, rather than dipping into the Treasury.
Later in 1836, the establishment of a Patent Office became official: “Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That there shall be established and attached to the Department of State, an office to be denominated the Patent Office . . . .” In addition to administering the Patent Act of 1952, the PTO is also charged with administering the Trademark Act of 1946. In 1975, the Patent Office was renamed to the Patent and Trademark Office. This organic statute is codified today in 35 U.S.C. § 1: “The United States Patent and Trademark Office is established as an agency of the United States, within the Department of Commerce.” But the PTO has since maintained its core spirit of self-sufficiency.
Last September, I studied and helped write an Amicus brief for the Federal Circuit case Ass’n for Molecular Pathology v. PTO. As I reviewed Judge Sweet’s opinion, it struck me how sweeping and nonconforming to patent law his opinion was. In that light, I’ve been interested in knowing how this case will be decided because with the lower court’s opinion, there seems to be a lot of directions that the court could go in straightening the edges. I just listened to the oral arguments at the Federal Circuit and here are some thoughts. Judges Bryson, Lourie and Moore made up the panel.
First oralist, Myriad
Representing Myriad, Greg Castanias first talked about jurisdiction. He stressed how there was no immediate threat to the plaintiffs. Plaintiffs who would carry out tests (could or would engage in competitive activities), but there were no real consequences. Courts require actions or meaningful preparations by the declaratory plaintiffs AND affirmative acts taken. One letter was sent out since in 1998. This is against MedImmune’s immediate threat. But is it still a continuing threat? It wasn’t sufficient, according to Castanias.
Next, Castanias made an interesting and new redressability argument. The plaintiffs perceived the threat from the patents as a whole and not individual claims. Why? They wanted to invalidate the whole patents, even though some of the claims were valid.
Next, the debate that garnered the most attention, the composition claims. Isolated DNA never exists in nature, Castanias powerfully articulated. Product of human ingenuity, should be the test. Then there was a discussion on rocks and of course covalent bond breaking. I think that Castanias’ test is a good one that fits the court’s precedent cases. Before the Patent Act of 1952, and indeed even after, courts would kick out inventions as not patentable, but confuse it with terminology of obvious, not useful, or not novel. These cases probably should have used subject matter as their argument, but now that they didn’t, we are stuck with trying to make sense of a couple centuries of patent law.
On to the method claims, a little bit of time was spent on how sequences is not information. I agree with this. The specification, for instance, talked about specific technological methods that can be used to compare and analyze. I agree that this might pass the same analysis as Prometheus.
It was funny when in a hypothetical, Judge Moore referred to how God made her product, not man. I thought that the ACLU crowd might not be too pleased with this analysis!
Second up? ACLU
The ACLU’s Christopher Hansen was next. He first spoke about how Myriad has all but conceded the first half of standing for a declaratory judgment, which I got the sense as well from listening to Castanias. But does Myriad meet the second part of being willing? One declaration says that they will consider. Hmm. To me, this is not enough.
In response to the redressability argument, Hansen said that Myriad doesn’t identify claims that get in the way. Probe and primer claims aren’t identified specifically.
I wished there was more time spent on the merits of the case (my background makes such topics quite interesting to me), but Hansen did discuss how isolating is not purifying. All Myriad does is snip the gene out of the body. It should not matter what instrument is used, if the product is the same as its natural state, it should not be patent-eligible. Applying this to the case at hand, a kidney should not be patent-eligible in much the same way as an isolated DNA is patent-eligible. Whether the method is using tweezers, scalpels, or genomic methodologies.
Solicitor General Neal Katyal on behalf of the US government
The test articulated is the now-famous magical microscope test. If you could see the exact claim in nature, then that is a product of nature. CDNAs are fine because the magical microscope won’t find it.
Even though this oral argument went pretty smoothly for the most part, the government’s position was kind of awkward. This wasn’t really pointed out until the end, but I found it kind of funny. I love Judge Moore’s “you’re not changing anything with this theory of yours? What about the last 35 years buddy? What you are advocating goes against what’s on the PTO’s website right now.”
I got the sense that this case will be decided on jurisdiction from Judge Moore’s question next: Why not Congress? The Federal Circuit doesn’t need to make policy on such a controversial issue as gene patenting. The smartest thing for them to do is kick it out on jurisdiction and have Congress or the PTO make policy on it. Katyal answered that this is a pure question of law, but I don’t really agree. I think that a lot of research should go into deciding whether genes should be patent-eligible.
Finally, I love how Judge Hand made it in to this case. It’s been 100 years and he’s still a legend.
I got the sense that Judge Moore didn’t understand probes and primers. Correct me if I’m wrong, but you can use a non-CDNA nucleotide as a probe, can’t you? The way she was questioning at this point made it appear that only CDNAs are probe and primer material. Castanias answered that the definition of isolated answers the question that it’s not the entire sequenced genome.
A funny aside, I thought it was funny how everyone seemed to pronounce BRCA differently. When I studied this gene in college, I always went with how Greg Castanias pronounced the acronym, which I think is how Myriad prefers to pronounce it too: Bracka. But Judge Moore used Bricka-1, Judge Bryson used Berca-1 and attorney Hansen decided to not risk it at all, by just spelling it out B-R-C-A.
A good presentation by all parties, overall. I got the sense that the judges were leaning toward standing as the most important issue, even though the ACLU and government wished to talk about other things. That may not be a good thing for their case! I think jurisdiction will prove to be the most powerful argument in favor of Myriad.
Today I had a phone call with Bank of America about a fee they assessed me. Despite a great case, the person I was speaking with would not budge in my favor. I even spoke with the representative’s supervisor with the same result. While talking, I made my way to the nearest BOA branch location. After my unsuccessful efforts on the phone, I talked with the a customer service representative at the branch. This guy understood my arguments and agreed with me! We came to a prompt resolution with me grinning ear to ear. I immediately thought to how this experience related to the PTO and their pre-appeal brief conference program.
How many times have you had a great case before the PTO only to be frustrated by an unsympathetic examiner. You try and file Office actions only to get nowhere. You wish you could get inside the brain of this examiner, but often times conclude that maybe you’ll never know why the examiner just isn’t “getting it.” Much like the representative I spoke with, you conclude that maybe there is some influence from above that you can’t change. Rather than thinking about the time and money that you have already invested with the current examiner, you want to move on so that your case can be properly decided.
As noted in the MPEP, normally, every applicant has the option of appealing any claims that have been twice rejected to the BPAI. You file a notice of appeal and then within a couple months file the appeal brief. But compiling a brief takes a lot of time and resources. Plus the decision often takes years, with the current backlog. As noted in the Official Notice, in 2005, the PTO issued forth a pilot program called Pre-Appeal Brief Conference available to anyone who has filed a notice of appeal. Through it, the applicant can request a review of identified matters on appeal employing an appeal conference currently employed in the Office, but prior to the filing of an appeal brief. The goals of the program are (1) to identify the presence or absence of clearly improper rejections based upon error(s) in facts, or (2) to identify the omission or presence of essential elements required to establish a prima facie rejection. After 6 months of “pilot” status, the PTO has continued it indefinitely.
This program allows you to get your argument heard by people other than your examiner (although in this program, your examiner is included on the panel so it isn’t as removed as a straight-up appeal to the BPAI). The plus of this program is that you don’t have to file a brief. Instead of a brief, you must submit in 5 pages or less a succinct, concise and focused set of arguments for which the review is being requested. The request should specify-
clear errors in the examiner’s rejections; or
the examiner’s omissions of one or more essential elements needed for a prima facie rejection.
In other words, your reason for going through a pre-appeal brief conference should be based upon a clear legal or factual deficiency in the rejections rather than an interpretation of the claims or prior art teachings.
A Technology Center Art Unit supervisor will designate a panel of examiners experienced in the field of technology to review the applicant’s remarks and the examiner’s rejections. This panel includes at least the examiner of record and his supervisor. The panel will then decide if an issue for appeal is, in fact, present in the record. The Office should mail a decision within 45 days of receipt of a properly filed request. There are four possibilities:
Finding 1: The application remains under appeal because there is at least one actual issue for appeal.
Finding 2: Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel’s decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
Finding 3: The application is allowed on the existing claims and prosecution remains closed.
Finding 4: The request fails to comply with the submission requirements and is dismissed.
One interesting note is that a decision by this panel to withdraw any rejections is not a decision by the board and hence does not qualify for patent term adjustment.
What if all of your efforts to participate in this sleek sounding program fail? According to the notice, the appeal brief can then be filed, but the time frame must be within either the two-month period set in CFR 41.37(a) or one month from the mail date of the decision on the request.