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.

Compared sites

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

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:

Canadian Patent Database

This service provides over 2 million patent documents from Canada since 1924. Full document images including cover and abstract are available from 1975 to the present.

The syntax is simple and straightforward.

 

Esp@cenet

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

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.

Google Patents

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

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

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.

Patent Surf

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.

PatSnap

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.

 

Sumo Brain

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.

 

USPTO

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.

WIPO PatentScope

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:

  • FreePatentsOnline
  • PatentLens
  • PatSnap

Conclusion

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.

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.

Conclusion

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: http://www.timeanddate.com/date/duration.html.

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?
Copyrights
Trademarks
Trade Secrets
Patents
… 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:
Markets
Manufacturing
License agreements that may require certain filings
Value
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.

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.


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

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

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

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

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

I’ve created a document that organizes the cases into one table. It’s interesting so I’ve made it available for download, in case anyone would like to look at the details. Here is the file: BPAI Cases (1139) The document includes the citation to the decision, the claims at issue, the disposition of the claims, and the representative claim language.

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

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

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

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

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

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

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

In Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., the defendant failed to disclose that a 2-hour data point was not part of a test protocol and that a correction factor had not been applied to that p-value. This data point was the only one to produce a p-value of less than .05. The invention, however, went on to say that there was statistical support for synergy. In fact, Sturis said in a declaration to the examiner that the evidence “strongly suggests” synergy. However, he did not disclose statements that by his own standards, neither the rat study nor the Moses study established synergy in humans.

The court held that there was clear and convincing evidence that the opinions Sturis offered regarding synergy was material to the patentability of the claim at issue. This, because they refuted or were inconsistent with the opinions expressed in his Declaration in support of patentability. 37 C.F.R. §1.56(b)(2). The examiner would have wanted to know about this negative view on synergism, as this view was inconsistent with a later “strongly suggests synergy” declaration which the examiner most likely relied on to overcome obviousness.

The take-home message here is that you need to disclose what a reasonable examiner would have wanted to consider, be it qualifications or reservations held by the scientists concerning the conclusions he expressed in his Declaration.

Additionally, the Bork statement was also an example of inequitable conduct. After Sturis’ declaration, Bork represented this to the examiner:

Applicant therefore submits that the data presented in the application, in combination with the data presented in the Declaration of Dr. Sturis, provides clear evidence of synergy for the use of the claimed combination of repaglinide and metformin in the treatment of type II diabetes.

The court held that Bork’s representations to the examiners, to get around the final rejection, went beyond aggressive advocacy, in light of what he knew. Sturis’ “strongly suggests” was much more than Bork’s “clear evidence” of synergy.

Bork then got an email from Sturis containing explicit contrary information. The court noted that the duty to disclose to the examiner lasts until the issuance of the patent. 37 C.F.R. §1.56(a).

The take-home message from Bork is a message I learned while in the class Professional Responsibility: you have to stay within the reasonable limit of aggressive advocacy. Even though you may want something very badly for your client, it should never take precedence over the code of ethics that you have agreed to abide by.

In conclusion, Sturis and Bork both had an intent to deceive the Patent Office. Sturis, by withholding his opinions; Bork, by misstating key conclusions by his exaggerations. This inequitable conduct made the patent at issue unenforceable. Basically, this patent was invalidated on two fronts today. Rest in peace ’358 patent, rest in peace.

PLI has put out a very good piece explaining inter-partes reexamination. http://patentlawcenter.pli.edu/wp-content/uploads/2011/01/INTER-PARTES-REEXAMINATION-MECHANICS-AND-RESULTS1.pdf. Here are some key take-homes:

The two types of reexaminations differ in cost and the role the party has after filing the request for reexamination. Ex parte reexaminations cost $2520 while inter-partes are $8800. Once a member of the public files a request for an ex parte reexamination, his role is over while in an inter-partes proceeding, he continues on as a party.

Inter partes requests must be based on patents or publications, not related to other questions of invalidity such as prior use or sale. 35 U.S.C. § 301.

Not all patents qualify for these proceedings. If the patent’s original application was filed before November 29, 1999, the patent is not eligible for inter-partes reexamination. The patent would only be available for ex parte reexamination.

Eight things are required for inter partes reexamination, other than the fee:

(1) An identification of the patent by patent number and every claim for which reexamination is requested.
(2) A citation of the patents and printed publications which are presented to provide a substantial new question of patentability.
(3) A statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.
(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of thissection, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document.
(5) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.
(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy of the request must be supplied to the Office.
(7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination.
(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.

A substantial new question of patentability must be raised.

Special dispatch is the categorization of these types of proceedings in terms of their priority at the USPTO. I don’t know exactly if this has a definite meaning, however, other than more special than not.

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