Feb 232013

When my wife’s doctor found out I was going to have an interview at the Patent Office, she asked why I didn’t like my current job. In patent circles, there is no such possible misinterpretation for what an interview is.  Conducting an interview is most often thought of as meeting up face-to-face or over the phone to speak with an Examiner on the merits of the patent application you are advocating for.  Besides personal meetups or scheduled phone calls, interviews can also be broadly interpreted as any personal appearance, phone calls, video conferences or emails that present matters for the examiner’s consideration.  See MPEP 713.

An Interview is Advantageous

A number of big benefits to conducting an interview with the Examiner include (1) a great way to discuss key points about your patent application’s rejections, (2) a way to get the Examiner on your side of the argument, (3) a way to quickly clear up any misunderstandings, and (4) the content of the interview can be off the record, which avoids creating file history estoppel.

Setting up the Interview

An applicant is not entitled to an interview as a matter of right. Whether the Examiner will grant an interview is within the discretion of the Examiner. For example, the MPEP states that “An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.”  See MPEP 713.01(III). The MPEP also states that to arrange an interview, an applicant should send in an Applicant Initiated Request Form.  See id.  The rules requiring a request tends to suggest that getting an interview is no guarantee. Further, it is even more difficult to schedule an interview after a final rejection has been issued  See MPEP 713.09 (explaining that normally only one interview is permitted after final rejection). Thus, it is important to properly set up the interview so that the Examiner acquiesces to the request.

How to Contact the Examiner

The MPEP provides that an interview can be arranged for by letter, facsimile, electronic mail, telegram or telephone call. I don’t know of anyone still using telegrams, but in my experience, a phone call is the best way to reach an Examiner for setting up an interview. Call the Examiner, let him know which application number you’re calling about, and politely request an interview for the matter. As discussed above, as one of the main reasons an examiner will grant an interview is to advance prosecution of the application, it might be helpful in your request to explain how you believe the interview will help move the process forward.

Resistance to the Interview

Some Examiners will try to be resist an interview request. Some may be just acting adversarially, leery of outsiders contacting them. One time, an Examiner told me that I could not interview for the matter because I was not specifically authorized by the client, alleging that I needed to be “of record.” You hear this excuse every once in a while. An old provision of the MPEP (713.05) required that an applicant’s representative show that he had explicit authority from the client to conduct the interview. However, this changed with the August 24, 2010 guideline under Director Kappos, which states that the Applicant Interview Request Form is sufficient indication of authorization since it provides for the representative to sign. Sometimes it is helpful to educate Examiners on recent changes in Patent Office procedures.

Other resistant Examiners may seem convinced that there is no way prosecution can advance and that there’s really no point to an interview. You may try to explain why you think the interview will be helpful (i.e., you have some clarifying amendments to discuss).

Other resisters may just not want to talk people. It is important to know when meeting such resistance that interviews are highly encouraged at the Patent Office. So go set up your interviews with confidence knowing that it is a good thing for your application and for the patent system in general.

 Posted by at 2:21 pm
Feb 092013

Living in the DC area is nice because you’re close to a lot of interesting action. Yesterday, I visited the Court of Appeals for the Federal Circuit for oral arguments of the much-anticipated CLS v. Alice en banc case. Interesting arguments and questioning show that “abstract idea” is being over-used and how the expansion of the §101 patent ineligibility doctrine is bad for the patent system.

An early exchange illustrates how abstract ideas being over-used.  Counsel for CLS (Mark Perry) kicked off the hearing by arguing that Alice patented an abstract idea.  He argued that initially Alice’s patent applications included method claims that were rejected as “abstract ideas” under §101 until Alice amended the claims to recite a computer.  Thus, Perry contended that the patented claims were nothing more than an abstract idea dressed up in machine claim clothing. But Judge Moore intervened as if on behalf of Alice, asking whether a claimed system in an asserted patent that recited a computer and specific hardware limitations qualified as an abstract idea. Perry answered very confidently that this system claim was nothing more than an abstract idea. Judge Moore could not believe it, pointing the Counsel not only to the specification that detailed the hardware, but to the flowcharts that detailed the steps to be performed. To Moore, if there was ever a valid software patent, this was it. But Perry responded that the claim was simply a method claim dressed up as a system claim to overcome 101. Moore rhetorically asked, “But don’t we look at the language of the claims?” Good question. Yes, claim language does matter people. Judge Moore’s next point brought up an example of the first calculator that solely performed addition functions after which someone else comes along and reconfigures the calculator to perform subtraction. If a first-of-its-kind machine or computer is not an abstract idea, why are improvements of it?

This exchange illustrates why it doesn’t make sense to characterize claims directed to computers as abstract ideas. No matter the generality of the steps the computer performs, if a claim claims a computer, then it is no longer an idea. Historically, the only type of claim that has been subject to the abstract idea exception has been method claims.  See, e.g., Benson, Flook, Diehr, Bilski, and Mayo.  This makes sense, especially in light of what an “idea” has long been understood as. An idea is a concept or a principle. You can’t touch it with your hands.  Like a method, an idea is something that you hold in your mind.  See e.g.,Tilghman v. Proctor, 102 U.S. 707 (1881) (“The line between a patentable “process” and an unpatentable “principle” is not always clear. Both are “[conceptions] of the mind, seen only by [their] effects when being executed or performed.”). If a claimed method is recited at such a high-level of generality, such as in Bilski or Mayo, then it is an abstract idea. But it makes little sense to categorize a claimed tangible machine, such as a computer, as an idea. Thus, generic computer claims should not be referred to as “abstract ideas” because it goes against the common usage of the word “idea.” If a judicial exception is going to exclude computer claims on the grounds of patent-ineligibility, another exception should be created, such as an “abstract computer” exception.

But such a new judicial exception is neither necessary nor desirable. The current system does a fine job of remedying abstract ideas from getting patented.  CLS’s counsel argued that it would be a shame for someone to patent the abstract idea of a car that drives itself only to have Google, having spent a billion dollars on actually developing the car, get sued for infringing this abstract idea patent. However, under the current system, such a scenario is unlikely because §112 requires a sufficient disclosure for the claimed invention. Abstract ideas that use computers are also unlikely when an Examiner does the job because they are relatively easy to find prior art against. The Examiner has the right to construe claim language as broadly as reasonably possible consistent with the specification when assessing prior art. See MPEP §2111.  And Examiners are pretty good at finding prior art, especially in their particular areas of technology. So if someone has really claimed something at a high-level of abstraction, it’s likely that an Examiner can find a disclosure that anticipates or would have rendered obvious that concept. CLS’s counsel even admitted that he had arguments for showing that Alice’s patent was invalid under §§102/103. Why not proceed with the already well-developed and relatively objective area of law?

Increasing the focus on §101 discourages a level playing field. A big disadvantage of expanding the §101 doctrine of patent eligibility instead of relying on well established patent code sections is that §101 is highly subjective, and other sections of the patent code can prevent abstract ideas from getting patented. Section 101 has become a lightning rod for anti-patent folk who quickly want a particular patent to go away. It’s scary to see judges experimenting with the §101 doctrine; it’s even scarier to think about patent examiners doing so.

 Posted by at 8:10 pm