Mar 122014
 

For the past few months, my side project has been developing a website that mines the Patent Office’s website for troves of PTAB/BPAI decisions data. I’m pleased to welcome this project to the blogosphere as PatentBoardFerret.com.

The premise behind the website is that knowledge is power. Thus, by analyzing Patent Board decisions at each level of authority, in conjunction with other authoritative resources, one can better understand and even predict how the Patent Office will/should apply the patent law. For each decision, the Patent Board Ferret has issue recaps, which display each rejection that the Board panel decided along with which outcome the Board decided on that particular issue. Because the Board’s outcomes (or dispositions) are not as simple as affirmed and reversed (nor should they be), the Ferret keeps in consideration targeted information about the disposition. Table data displays in a user-friendly format all sorts of data corresponding to that decision, such as the Examiner, the art unit, the correspondent, the classification numbers, and many more. The Ferret also has an analysis section where this data can be displayed as graphs.

Why is it called Patent Board Ferret? For those unfamiliar with the verb form of the term ferret, one meaning is to tenaciously search out. I think that this is exactly what the Patent Board Ferret seeks to do: tenaciously search out patent board decisions data. The term is also an animal, which is instantaneously memorable. I hoped that the combination of a play on words with a memorable animal would stick.

I’m really proud of the work that our team has accomplished and where we plan to go in the future. I hope to regularly post on the Ferret’s blog about interesting developments and trends that can be seen by using the Patent Board Ferret. I hope you enjoy the website and blog.

Also, if you are of the social media type, here are some links to like, follow, or +1 social media pages for the Ferret:

LinkedIn: https://www.linkedin.com/company/patent-board-ferret
Twitter: http://www.twitter.com/patboardferret or @patboardferret
Facebook: https://www.facebook.com/patentboardferret
Google+: https://www.google.com/+Patentboardferret

Additionally, you can invite select others to like, follow or +1 the pages.

 Posted by at 6:31 pm
Apr 122013
 

I have some interesting blog post topics marinating in my mind, but they are currently taking a back seat to other things, like spending quality time this baby girl. Belated welcome to the world baby #1!

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 Posted by at 6:52 pm
Sep 152012
 

I love Chess.  You get to command 16 pieces, each type of piece having different rules of movement and attack, to take down the enemy in accordance with a fairly complex set of rules for conquest.  And it’s fun because your opponent has the exact same weapons and defenses as you do (besides the player that gets to go first).  So in terms of strategizing, you end up thinking multiple moves ahead.  It’s an epic game.

In the world of patent prosecution, there are also rules of attack and defense to take down the enemy that prevents your patent application from being issued a Notice of Allowance.  This world requires knowing the rules and thinking moves ahead so that your application doesn’t get checkmated.

One classic move that the Examiner will pull is issuing a “restriction.” The general basis for restriction is that the application as filed includes more than one independent and distinct invention, which are generally not allowed.  See 35 U.S.C. 121; 37 CFR 1.141.  For instance, if you have claims 1-10 related to a machine and then claims 11-20 are related to a method of manufacturing the machine, the Examiner may issue a restriction requirement saying that the application contains two independent and distinct inventions and for the Applicant to choose either claims 1-10 or claims 11-20.  The Applicant will then have to file a divisional application on the claims that are now withdrawn.

Restrictions come in two varieties: Restriction Requirement and Election of Species Requirement.  See MPEP 803.03. Both involve electing a particular group so that the only one independent and distinct invention is contained in the application and both also require a traverse if a right of petition is to be preserved. But what is the difference between the Restriction Requirement and the Election of Species Requirement? The answer to this question will help in the terms sometimes being incorrectly used interchangeably.  This confusion may stem from both requirements falling under the “Restriction” umbrella.  See 37 CFR 1.129(b).  It is helpful to know the difference not only for strategy in whether to traverse, but also in communicating with those in other jurisdictions outside the US that do not have similar Restriction practice.

A restriction requirement is proper when two or more independent and distinct inventions are recited in the claims. 37 CFR 1.141.  If the claims only recite generic claims (claims directed to one independent invention) then you’re not looking at a restriction requirement.  On the other hand, an election of species requirement is proper when there are patentably distinct species that are embraced by a generic claim.  The reasoning here is to avoid situations where the Applicant simply adds new claims that introduce independent and distinct inventions to the claims after the Examiner has not issued a restriction on the claims.  So the Examiner instead issues an election of species, for instance saying that Figs. 1-5 are distinct from Figs. 6-9 and that the Applicant must elect one group.

So in sum, in a Restriction Requirement, you have to elect claims for further examination.  In contrast, in an Election of Species Requirement, you elect an invention and then indicate which claims you believe read on that species.

One strategy tip to keep in mind. There is a temptation to view the Examiner as the opponent and to try and do the opposite of what he says.  For instance, if he comes in and takes your pawn, take it back. Therein lies the danger. Sometimes taking the bait is actually facilitating your opponent thinking a couple moves ahead.  Applied to this topic, in a Restriction Requirement, it makes a lot of sense to traverse a restriction requirement because 1) restrictions are overused and they get annoying after a while; 2) the Examiner’s probably not correct in asserting that the claims recite more than one independent and distinct invention; and 3) money is being wasted in electing claims and filing divisional applications when a search probably could be done without serious burden by the Examiner anyway.  See MPEP 806.05(d).

On the other hand, traversing an Election of Species might box yourself in later down the road. In an election of species, any traversal is saying that the species are the same and therefore if the Examiner later finds art on one species, it automatically can apply to the other species that you argued was the same. Something to keep in mind when you think you are scoring a small victory, you may be walking into a trap.

Apr 172012
 

My 5-year period of living in New England is coming to a close. I will be joining Oliff & Berridge, an IP law firm based in Alexandria Va, this month. I’m really looking forward to it! Posts may accordingly be either more sporadic or more regular. It just all depends.

 Posted by at 8:04 am
Mar 212012
 

Yesterday, a unanimous (9–0) Supreme Court reversed the Federal Circuit and held that a company’s personalized medicine dosing process was not eligible for patent protection because the process was an unpatentable law of nature. Rather than get in to the specifics, I’m just going to include a couple of thoughts.

It’s interesting that the Federal Circuit would twice (and unanimously) uphold Prometheus’s patent under the established subject matter framework only to have the Supreme Court reverse the Federal Circuit decision unanimously. Is it just me or doesn’t that seem like a very stark contrast? Wouldn’t you expect at least a couple of Supremes to side with the lower court’s reasoning? No, instead it’s as if there was not a doubt on the Supreme Court bench that the Federal Circuit did not know what it was doing. But to me it looks like the Federal Circuit panels did know what they were doing when they applied the machine-or-transformation test.

Next, subject matter eligibility appears to be a doctrine that will continue to grow rather than go away. In MySpace, Inc. v. GraphOn Corp., the Federal Circuit sought to avoid the murky morass of 101. There was hope that this pattern of looking to 101 as a very last resort would continue. However, with this most recent case by the Supreme Court this hope has dimmed. Instead the morass will likely be clarified and refined. Hopefully too, because as it is right now, it’s kind of confusing: abstract idea, law of nature, mental step, mental process, insignificant post-solution activity, no machine or transformation, nominally tied to apparatus, not embodied in a tangible medium, not limited to tangible practical application, can be performed by a human using pen and paper, does not constitute functional descriptive material, field of use limitation insufficient, mathematical algorithm, logic per se, only data elements, no structural components, physicality lacking, etc., etc., etc. What does it all mean? It kind of looks like if the court doesn’t subjectively like the patent, it fails 101.

 Posted by at 6:08 am
Jan 292012
 

It is difficult to say how much patent practitioners charge on average for filing a provisional patent application. It depends on a number of factors including the technology, the geographical locale, and the experience of the practitioner. But I have seen estimates between $1500-$3500 not including the USPTO filing fees. Some people inexperienced with the patent system may think this amount is too much money. “There’s got to be a cheaper alternative,” they insist. They might then get online and Google around. After looking through the results, these bargain hunter entrepreneurs may then choose a cheap provisional-filing alternative. To get a sense of what I am talking about, click here or Google “provisional patent filing” and you will see that there are services that charge as little as $97 to file. This sounds too good to be true, especially for the entrepreneur who is just starting out and wants to save every cent money possible. The problem is that these ultra cheap services are too good to be true. They are actually ripping you off if your goal is to eventually get a non-provisional out of this provisional application. Since the PTO does not evaluate the provisional application, a practitioner could technically file a load of jumbled and garbled text in a provisional application and the inventor could still have the coveted “Patent pending” status. But consider doing yourself a favor and using that money elsewhere. Because if you decide to go with an ultra cheap patent practitioner, you might as well forget that you ever wanted a patent with your desired filing date. Instead, you could approach someone in financial need, give them $225 (the amount of the $100 they charge plus the $125 filing fee) because you’re not going to get that back.

One of the big problems with these ultra cheap practitioners is that the provisional application they file is super bare bones. I encountered a situation where the specification was literally one paragraph. You might still be able to get a patent on such minimal amount of detail if your invention is very unique in its field. However, you might run up against a reference that is slightly similar to your invention and you have to rely on a particular nuance that sets your invention apart from the reference. With a one-paragraph specification, you do not have that good of a shot of dodging any prior art bullets.

One of the biggest sources of value that a patent practitioner can provide is ways for you to consider alternative embodiments of your invention so you’re not stuck when a generic reference appears to stand in your way. A good practitioner will also help you expand your invention’s scope.

So in sum, remember to beware of the ultra cheap patent practitioner.

 Posted by at 7:10 pm
Dec 092011
 

I have been interested in § 101 cases for a number of reasons. First, as I’ve taken on clients, inevitably questions come up that relate back to § 101. I like to look at the Board of Patent Appeals and Interferences (BPAI) decisions because of the sheer volume of cases. From a practical perspective, studying decisions that involve subject matter patent-eligibility is a great way to improve your claim and specification drafting skills because you can learn from applicants’ brilliant or not-so-brilliant moments.

I have also been interested in BPAI § 101 out of sheer academic curiosity. In law school, I spent a considerable amount of time researching claim drafting for my law review note. I found that § 101 is increasingly becoming a volatile area of law, which is bad for predictability. Indeed, section 101 has recently been called the substantive due process clause of patent law and I’ve kind of wanted to figure it out. Like higher courts, I find it interesting when there appears to be contradictory holdings, that some decisions perhaps might have gone the other way if a different panel of judges had been assigned the case.

Section 101 has been in flux for awhile now, arguably since the Benson, Flook, Diehr cases starting in the 1970s. This flux has been highlighted within the last few years, with the Supreme Court “solidifying” § 101 law in Bilski v. Kappos. But since then, the lower courts including the BPAI have struggled to consistently apply precedent.

I have created a website devoted to making sense of § 101 patent-eligibility since Bilski v. Kappos by looking at the BPAI’s decisions that have been decided on the merits of subject matter patent-eligibility. The website is called BPAI101.com. It’s meant for both the practitioner who would like to keep up on current cases at the BPAI and also the academic who is interested in trends at the BPAI.

I decided to create this website because there is no site like it anywhere. The closest site is the BPAI’s ReadingRoom, but in trying to mine the BPAI’s decisions for interesting and relevant information, the website struggles for a number of reasons. Part of the reason for its struggles lies in the 1990s-style BPAI website itself. Each decision is only available by viewing its PDF file. Who wants to deal with a bunch of PDFs? Also, there is only one full-text search field, meaning that you have to search very broadly. If you are interested in a particular art unit and don’t want to sift through other numbers that happen to also appear in the entire document, you are out of luck. Next, only the precedential decisions have been OCR’d, meaning that content on the front page of each decision that are non-precedential will not show up. I don’t mean to diminish the BPAI’s site, but the website administrator simply told me that they don’t have the resources to add additional functionality.

BPAI101.com is designed to overcome many of these shortcomings. The site already starts with only those decisions that have been decided on the merits of subject matter 101. By going to the decisions page, you can view in tabular format a listing of all the decisions, which you can sort by clicking on the relevant column. You can also refine the results on a wide variety of filters. For instance, if you are interested in a particular time frame of decisions, you can select before, after, or in between values. You can also export these results into either CSV, Word, Excel, or XML format.

Another interesting feature of BPAI101.com is its unique use of tags. Each decision is made up of multiple tags that allow for more interesting information about it to be analyzed. For instance, in every decision, certain cases or guidelines can be used to support the decision. Each of these make up a “Support” tag. By looking at the tags, you can see which cases the Board uses to either affirm or reverse a particular rejection. Similarly, the Arguments tags lets you see how the Board articulates its reasoning for affirming or reversing a rejection. Examples of this include “Abstract idea” or “Mental steps” or “Fails the machine or transformation test.” Other tags include art unit, examiner, correspondent (applicant), authoring judge, and participating judge. At the very least, these tags will give you interesting conversation starters for the upcoming holidays: “So, did you know that Hubert C. Lorin and Jean R. Homere have each authored the most BPAI decisions on 101 subject matter?” “Hey, I don’t know if you knew this, but art unit 2166 has the most activity with regards to subject matter 101 appeals.” “Have you heard that Wilbert L. Starks is the examiner who has been appealed the most with regards to § 101?” The possibilities for interesting conversation are really endless.

BPAI101.com also allows for you to get connected to these decisions in the format that’s best for you. Equipped with an RSS feed to subscribe to, BPAI101 also has a Twitter account, Facebook page, Google+ page, and LinkedIn Group. With the help of BPAI101.com, you will hear about new 101 BPAI decisions before most people.

 Posted by at 8:05 am
Nov 222011
 

The Manual of Patent Examining Procedure is the reference for patent agents and patent attorneys. In the MPEP, the PTO outlines established patent law and guidelines into this one reference, the result of which is a manual of literally thousands of pages. The MPEP also importantly provides guidance for PTO employees and applicants in areas of patent law that are somewhat in flux. Since the first edition in 1949, new editions to the MPEP have been relatively slow going.

First Edition, November 1949
Second Edition, November 1953
Third Edition, November 1961
Fourth Edition, June 1979
Fifth Edition, August 1983
Sixth Edition, January 1995
Seventh Edition, July 1998
Eighth Edition, August 2001

However, since 2001, the PTO has accelerated updates through revisions on almost a yearly basis. 

Revision 1, February 2003
Revision 2, May 2004
Revision 3, August 2005
Revision 4, October 2005
Revision 5, August 2006
Revision 6, September 2007
Revision 7, July 2008
Revision 8, July 2010

Not too long ago, I passed the PTO registration examination. Studying for the exam involved me becoming very familiar with the MPEP. I found that the MPEP needs some updating. You see, the latest revision of the 8th edition of the MPEP was released July 2010. However, since that time a lot has changed that warrants another revision, or even edition. Besides the most obvious updates including the post-KSR guidelines, the America Invents Act additions, and additional pilot programs, it appears as if Section 2106 needs a complete revamp.

Section 2106 includes the 2005 interim guidelines of Subject Matter Eligibility. Since this time, we’ve seen a lot of activity with regards to § 101. For instance, the 2009 Guidelines in light of In re Bilski, Bilski v. Kappos, and the 2010 Guidelines. As you’ll see, this section focuses a lot on utility.

In section I.A., the guidance is to: “Identify and Understand Any Utility . . .”

However, isn’t the utility section of 101 another inquiry than subject matter eligibility?

The section continues: “The claimed invention as a whole must be useful and accomplish a practical application. That is, it must produce a “useful, concrete and tangible result.” State Street Bank & Trust Co. v. Signature Financial Group Inc.

But In re Bilski pretty decisively took care of this State Street doctrine, which Bilski v. Kappos did not overturn.

Next, “USPTO personnel should review the application to identify any asserted use. The applicant is in the best position to explain why an invention is believed useful.”

Again, utility is an inquiry in a different section 2107.

Finally, section III.C.2. refers to the “Useful Result, Tangible Result, Concrete Result.”

This entire section is State Street, which was overturned by In re Bilski. Outdated.

It is perhaps only a matter of time before outdated sections like 2106 become updated. However, it is too early to tell when this will happen. Part of me wants to predict that it will take quite some time. A lot of the America Invents Act provisions (some of which don’t become law until a couple years later) are still being planned and thought-through, which means that it may be a while before we actually see an update with these new provisions.

 

 

 Posted by at 1:27 pm
Dec 292009
 

After just finishing my third semester at Franklin Pierce Law Center, it’s strange to think that I am half-way through law school. I’ve discovered that I really like Patent law, especially the transactional aspect. As you can probably tell by my posts, I’m particularly interested in applying my computer knowledge to the law.

I’m on the lookout to get work experience this summer that matches those interests. If anyone is looking for a qualified 2L, or knows of someone who is, I would appreciate any leads. My newly designed website http://trentostler.com has additional information about me including my resume.

 Posted by at 5:27 pm
Jul 122009
 

At the moment, I have multiple personalities. There’s the true Trent, the computer geeky Trent, and the budding lawyer Trent. I have already captured each of these personalities on Twitter with multiple accounts. Now with the creation of this blog, I will be able to capture my insights as a law school student and soon-to-be attorney. Stay tuned for some interesting posts.

 Posted by at 2:58 pm