Archive for December, 2008

Does the Federal Circuit Need a Fresh Viewpoint?

December 20, 2008

The Federal Circuit was originally created to bring more uniformity to patent law and limit forum shopping.  With very few exceptions, the Federal Circuit has exclusive jurisdiction of appeals involving patent law issues from the district courts and the PTO.  In recent years, the U.S. Supreme Court has been taking a number of patent cases and reversing the Federal Circuit, but the U.S. Supreme Court certainly can not take all of the patent law cases where it perceives error.  In other areas of law, the Supreme Court looks to circuit splits as an indication of an issue being ripe for it to declare the law of the land.  In patent law, there are no circuit splits.

Because of this, the Federal Circuit has been criticized for being isolated and for having a sterile jurisprudence.  This is based on its status of effectively being the “supreme court” of patent law.

Recently, the U.S. Supreme Court has been asking for briefs from the United States–either the Department of Justice or the solicitor of the Patent Office–at the cert stage to assist in determining whether to review certain patent law cases.

Professors Craig Nard and John Duffy have called for the creation of at least one additional court of appeals to hear patent cases in order to advance the common law in the area.  This could be a new circuit court, or the addition of some appeals going to the D.C. Circuit.  This would requre a legislative change; patent law reform has long been on Congress’ docket, but seems difficult to pass.

Chief Judge Michel recently called for attorneys in patent cases to request more en banc review, where important decisions are made by all 12 active judges on the court, rather than the typical 3 judge panel.  He called the Federal Circuit’s en banc procedure “underutilized.”

Another way for Federal Circuit judges to get a better idea of what is going on around the country in other courts is the system of “sitting by designation” where one of the judges from the Federal Circuit sits on another court.  In 2007 and 2008, 4 of the active judges on the Federal Circuit and two of its senior judges have sat on 4 different circuit courts around the United States.  In addition, Judge Rader presided over a trial in the Northern District of New York in May 2008.

Similarly, the Federal Circuit has had judges from other courts sit on Federal Circuit panels.  Between September 2006 and November 2008, 29 district court judges from 16 different district courts, along with a judge from the Third Circuit, and a judge from the Court of International Trade have sat by designation on Federal Circuit panels.

The practice of lending judges to and borrowing judges from other courts certainly doesn’t address the problems noted by Professors Nard and Duffy, but it may be the Federal Circuit’s way of doing what it can to gain exposure to other courts, as well as giving district judges who hear patent cases an inside view of the court’s inner workings.

Is this enough to bring a fresh viewpoint to the Federal Circuit?

Federal Circuit Rejects Metabolite-type Claim

December 19, 2008

The Federal Circuit issued a non-precedential opinion today in Classen Immunotherapies, Inc. v. Biogen IDEC.  The Federal Circuit affirmed the invalidity of U.S. Patent No. 5,723,283 as containing unpatentable subject matter.  The entire opinion is recited here:

In light of our decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), we affirm the district court’s grant of summary judgment that these claims are invalid under 35 U.S.C. § 101. Dr. Classen’s claims are neither “tied to a particular machine or apparatus” nor do they “transform[] a particular article into a different state or thing.” Bilski, 545 F.3d at 954. Therefore we affirm.

Claim 1 of the ‘283 patent states:

A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises:

immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and

comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.

This claim is eerily similar to the claim at issue in LabCorp v. Metabolite Labs, dismissed by the Supreme Court on procedural grounds without decision.  Three justices filed a dissent in that case, arguing that the claims were directed to non-patentable subject matter and should be invalid.  Claim 13 of U.S. Patent No. 4,940,658 states:

A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:

assaying a body fluid for an elevated level of total homocysteine; and

correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.

The Federal Circuit had affirmed a ruling in the LabCorp case that claim 13 was valid and infringed.  Apparently, Bilski has changed all of that.

Dennis Crouch of Patently-O noted:  “The question left in my mind is how the step of ‘immunizing mammals’ is properly disqualified.”  The Federal Circuit did not tell us much in its 70 word Classen opinion, so maybe we have to look at the voluminous Bilski opinion, where it provided some possible guidance to this question when it addressed what it characterized as “post-solution” activity.

The Diehr Court also reaffirmed a second corollary to the machine-or-transformation test by stating that “insignificant postsolution activity will not transform an unpatentable principle into a patentable process.”

In footnote 14 of Bilski , the Federal Circuit cites In re Grams, 888 F.2d 835, 839-40 (Fed. Cir. 1989) as holding a pre-solution step of gathering data incapable of imparting patent-eligibility under § 101.  Thus, the corollary regarding post-solution activity would also apply pre-solution.

It may be that the Federal Circuit characterizes the “immunization” step in claim 1 of the ‘283 patent as “insignificant pre-solution activity” and thus would not affect the patentability of the claim.  If this is true, it would be nice if they would provide a bit more explanation, perhaps in the form of a precedential opinion.

What’s a “Small Entity”?

December 17, 2008

A “Small Entity” is a party who is entitled to pay certain PTO fees associated with patent prosecution at a reduced rate, usually 50%.

In the early 1980s, Congress substantially raised many of the PTO fees associated with patent prosecution and introduced some new fees that had not previously been charged, such as issue fees and maintenance fees.  To help off-set the burden this would cause for smaller or non-profit parties, Congress also introduced the Small Entity Status.

PTO rules define a Small Entity as an individual inventor or inventors, a small business concern, or a nonprofit organization.  In order to qualify as one of these three types of entities, none of the rights associated with a patent or patent application may have been assigned or licensed to any party that would not qualify for Small Entity Status, nor must there be any obligation on the part of the small entity to make such an assignment or license.

In other words, IBM cannot set up a small holding company for all of its patents in order to qualify for Small Entity Status if it wishes to retain any rights in the patents.  Nor can IBM pay Small Entity Fees and wait until the patent issues to assign it to the company if the inventor(s) had an obligation to assign the invention to the company at the time of filing.

The rules define a Small Business Concern as a company having fewer than 500 employees.  The rules define a Nonprofit Organization as a university, 501(c)(3) organization, or a scientific or educational organization under any state law or in a foreign country.  If an individual inventor, small business concern, or nonprofit organization licenses the patent or patent application to a company that doesn’t qualify for Small Entity Status, the full price fees must be paid at the PTO.

Previously, the PTO required the applicant or assignee to sign a verification of Small Entity Status.  Now, the simple written assertion of such status or even the payment of Small Entity Fees is sufficient.

If a small entity pays large entity fees, the small entity may request a refund of the overpayment.  Conversely, if Small Entity Fees are paid by an entity that is actually a large entity, it can usually be corrected by simply paying the required deficiency, if the incorrect amount was paid in good faith.  The rules do warn, however, that fraudulently paying Small Entity Fees when the applicant is not entitled payment of such fees can result in the resulting patent being held unenforceable due to inequitable conduct.

The PTO notes applicants have a contiuing duty to conduct a thorough investigation of the facts surrounding a claim of Small Entity Status.  The facts should especially be revisited at the times of paying the issue fee and maintenance fees.  For example, a patent issued to a Small Entity may have been licensed to a non-small entity between the time of its issuance and the time to pay a maintenance fee, or the company itself might have grown to more than 500 employees, making Small Entity Status inappropriate.

Is the Patent Office Against Patent Applicants?

December 16, 2008

As I noted yesterday, the PTO is allowing patent applications at a much lower rate than in prior years.  You’ve probably also heard about the PTO’s attempt to change the rules of patent prosecution by limiting the number of claims and the number of continuation applications that can be filed; as previously reported, the implementation of those rules has been enjoined and the ruling is currently on appeal at the Federal Circuit.  But that’s not all–in the last two years of the Bush administration, several other proposed rule changes have added to the Patent Bar’s frustration with current PTO leadership.

Proposed IDS Rules

In July 2006, the PTO published a new set of proposed rules regarding Information Disclosure Statement (IDS) practice.  Under the PTO’s duty of disclosure rule, patent applicants and related parties have a duty to disclose information to the PTO that is material to the patentability of the claims of a pending application.  The effect of this rule is that applicants often  submit a large number of prior art documents to the patent examiner, especially if the applicant has performed a pre-filing search.  Examiners would often find it burdensome and time-consuming to review a large stack of references.

The PTO proposed to radically change the IDS rules, as they would:

  • Impose a requirement for the personal review of, and the provision of information about, citations longer than 25 pages or beyond the 20th citation;
  • Eliminate the fees for, but permit only timely, IDS submissions;
  • Only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted;
  • Permit third parties to submit prior art up until the mailing of a notice of allowance after application publication;
  • No longer permit an IDS to meet the submission requirement for a request for continued examination (RCE), although it would permit, after payment of the issue fee, certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and
  • Revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.

The most radical of these changes is the requirement of submitting an explanation of any reference longer than 25 pages and for any reference after the 20th reference submitted.  This would require a detailed explanation of why the reference was being submitted and correlating the prior art to specific claim language.  These requirements would provide tremendous fodder to defendants during litigation and would certainly lead to prosecution history estoppel-type arguments.

The Patent Bar decried the changes and held its breath through 2007 and 2008 awaiting the final version of the rules.  In October 2008, the PTO announced that the new IDS rules would not be made final in the current administration.

Proposed Markush Rulesmarkush_structure

In August 2007, the PTO published a new set of proposed rules regarding the practice of alternative claiming.  The practice is referred to as Markush claiming and is used extensively in the chemical field.  For example, a claim may recite the be to a new compound as shown, where the R, X, Y, Z variables may include a wide number of compounds.  This practice permits a large number of compounds to be claimed in a single claim.  Examiners sometimes find this time-consuming and burdensome to search for the various permutations.

The new PTO rules would require that each claim be limited to a single invention.  The PTO notice indicates that when alternative language is used to define multiple species in a single claim, such claims will be considered to be limited to a single invention when at least one of two conditions is met:

1.  All of the species encompassed by the claim share a substantial feature essential for a common utility.
2.  [A]ll of the species are prima facie obvious over each other.

Otherwise, the single claim may be subject to restriction to a single invention or species.  Also, a claim may not incorporate the specification unless absolutely necessary.  Markush claims must not have alternatives that include further alternatives and must not be difficult to construe.

These rules were, in part, to prevent circumvention of the currently-enjoined claim limitation rules.  In October 2008, the PTO announced that the new Markush rules would not be made final in the current administration.

Proposed Appeal Board Rules

In June 2008, the PTO published a set of final rules regarding appeal practice before the Board of Patent Appeals and Interferences (BPAI).  The new rules had the effect of increasing the number of formalities required in appeal briefs and would significantly increase the time and cost to prepare such briefs.

Specifically, the rules set page limits and font types that may be used in appeal briefs; set the exact headings that must be used in appeal briefs; changed the summary of the invention; required all non-appealable issues to be resolved by petition prior to filing the appeal; and required that technical terms be provided to a stenographer at an oral hearing.  The fee for requesting extensions of time for filing briefs or other papers was also increased.

The new rules were scheduled to take effect on December 10, 2008.  Some members of the Patent Bar led a campaign against implementation of these rules.  On December 5, the PTO published a notice that the effective date for the new rules has been delayed.

Annual Practitioner Maintenance Fee

Finally, in November 2008, a brand new practitioner maintenance fee of $118 sprung out of the blue from the PTO.  The PTO relies on a minor part of  a notice of proposed rulemaking  published in 2003 for this rule.  After keeping a roster of attorneys and agents registered to practice before the PTO for years, the PTO suddenly now requires $118 per practitioner to maintain this list.  This new fee will raise several million dollars for the PTO which it argues that it needs to keep the roster up-to-date.

A Better Future?

Hopefully, the new PTO leadership under an Obama administration will be more patent-friendly and try to maintain a better relationship with the Patent Bar.  The current PTO leadership seems to be going out of its way to antagonize the Patent Bar and develop new rules to raise costs and place unnecessary limits on patent practice.

Patent Allowance Rate Continues to Drop

December 15, 2008

Allowance RateFor quite a few years, the patent application allowance rate at the PTO was around 65%.  Then, in the late 90s, that number began to increase to a high of about 72% in 2000.  This, along with the increased number of patent applications being filed, caused a significant increase in the number of patents being granted each year.  Since 2003, however, the allowance rate has been dropping significantly.  The number for 2008 is 44.2%.  This is the first time the allowance rate has been below 50% for at least the last 30 years.  It is worth noting that how the PTO calculates allowance rate is not exactly clear.  The PTO states that allowance rate is “the percentage of applications that are reviewed by examiners that are approved.”

The PTO insists that there is no mandate to lower the allowance rate; they are simply reporting the number.  “We would gladly grant 100 percent if they met [the standards],” says John Doll, commissioner for patents.  So, is Commissioner Doll saying that patent application quality has dropped this dramatically in the last five years?  On the other hand, the PTO has earlier noted that the lower allowance rate is a result of a focus on internal quality control.  The lower allowance rate may be due, in part, to the PTO’s response to the media’s coverage of the issuance of “bad” patents in recent years.

There is also anecdotal evidence that in art units that have higher examiner turnover, the rate is even lower.  New examiners seem to be determined not to allow more patents than are absolutely necessary.  Whether this is from internal pressure from Supervisory Patent Examiners (SPEs) and supervisors or simply a lack of confidence is difficult to determine.  Allowances seem to undergo quality reviews at a higher rate than rejections.  The “count” system of measuring examiner productivity seems to encourage Request for Continued Examination (RCE) practice.  The examiner can get multiple counts and does not have to do multiple searches.

What does this mean for the patent community?

The most obvious result is that it is more difficult to get a patent.  It may now take a lot more time and money to acquire a patent, and it may require the application to be re-filed more than once (through continuation or RCE practice) or it may require an appeal.  On the other hand, the result could also be significantly better quality applications that are more complex and detailed.  This isn’t necessarily a bad thing as more complex applications provide more support for claims.  Applicants, however, need to be aware of this when they are budgeting time and money resources for patents.

Another result is that the PTO will have less money to pay and train examiners and may have a resulting negative impact on patent quality.  In FY 2008, the PTO collected $36 million less than it originally estimated.  This reduction is due to a decrease in issue fees and a decrease in maintenance fees from lower issuance rates over the last few years.  After a patent is allowed, the applicant must pay an issue fee to have the PTO issue the patent.  Maintenance fees are fees a patentee must pay at various intervals after the patent issues in order to keep it in force.  This decrease in revenue will only get worse on the maintenance fee end and could have a significant effect on the PTO’s operating budget.

For years, the patent bar and PTO argued that ending fee diversion, the practice where Congress would divert some of the funds collected by the PTO from patent applicants and transfer them to the general budget, would solve all of the ills afflicting the PTO.  This practice of diverting PTO fees ended about five years ago.  The PTO now sets its budget based on funds it projects to collect.  A lower allowance rate results in shortfalls of this projection.

So, does the lower allowance rate mean that the PTO is issuing fewer “bad” patents?  That’s a difficult question.  Probably so, but it may also be keeping applicants who rightfully deserve a patent for their invention from recouping their investment.

Chief Judge Michel Questions Post-Grant Opposition Proceedings

December 12, 2008

Proposed Opposition Proceedings

Most of the patent reform bills that have been introduced in Congress during the last several years include a provision for a post-grant opposition proceeding.  After a patent is issued by the PTO, it could be challenged by a third party in a proceeding that takes place at the PTO, rather than in Federal court.  Such procedures are already in place in Europe and a few other jurisdictions.

The thought is that proceedings within the PTO are desirable because they would be cheaper than a going to court, they proceed more quickly than lawsuits in many jurisdictions, and there wouldn’t necessarily be a case-or-controversy requirement.  This means that a potential infringer could bring the opposition proceeding without waiting for the threat of a lawsuit by the patentee.

Last week, Paul R. Michel, chief judge of the Federal Circuit, spoke on at a forum on patents at the Federal Trade Commission.  Judge Michel questioned whether these types of proceedings would even work in the PTO.  He wondered whether the administrative judges are qualified and trained to handle discovery and cross-examination procedures.  Are the ALJs able to make factual findings and run a trial?  Perhaps oppositions will not be the boon to solving the perceived patent litigation problem in this country.  It is worth noting that Judge Michel does not perceive such a problem, as he notes that only a very small percentage of patents are litigated each year and a smaller percentage that proceed all the way to an invalidity verdict.

Inter Partes Reexamination

Judge Michel’s point is bolstered when you look to inter partes reexaminations.  Inter partes reexamination is a type of proceeding where a third party can participate at the PTO in a reexamination proceeding.  The challenger to the patent raises a new question of patentability and can then participate by filing comments and arguments in response to the patentee’s arguments.

Inter partes reexamination is still a relatively new procedure, but it has not been very widely utilized.  Shortcomings cited include the fact that the challenger is estopped from challenging the patent again in Federal court on any prior art cited during the reexamination proceeding and the lack of appeal option by the challenger.  The latter shortcoming was rectified when challengers were given the right to appeal.  In the five years since challengers were given the right to appeal, not a single appeal on the merits of a case has been decided by the PTO.

Questions that are worth asking before implementing an opposition procedure:

  • Is the PTO really equipped to handle a load of mini-patent trials?
  • Are ALJs equipped to conduct such trials?  Could they handle discovery, cross-examination, and factual finding?
  • Would opposition procedures be utilized more widely than inter partes reexamination?
  • Would oppositions really help with perceived problems with patent litigation in the US?

Patent Pending

December 11, 2008

I’m sure you’ve seen the words “patent pending” or “patent applied for” on a product or package before.  What exactly do these phrases mean?  What legal rights are attached to them?

Marking

Patentees are generally only entitled to infringement damages once an infringer has notice of the infringement.  The patent marking statute permits patentees to provide notice to the public by marking a product or product package that is covered by a patent with the patent number.  This is why it is recommended that patentees mark their patented products or product packages with the number.

Patent applicants will often mark products or product packages with the phrase “patent pending” or “patent applied for”.  These phrases do not have a legal meaning under US patent law, as they do not indicate that the product is covered by a patent or that someone who copies the product is guilty of patent infringement.  The purpose of these phrases is to inform the public that the product is the subject of a patent application that has been filed and is pending in the Patent Office.  Although in general a patent application cannot be infringed, the public is informed that a patent may issue in the future that covers that product.  In this way, the phrases provide some deterrent effect against infringement.  Even if a patent does not issue for the product, it is believed that the patent applicant may deter some parties from copying the product while a patent application is pending, thus providing the applicant with a competitive advantage.

Patent marking is also used as a marketing technique.  Many consumers believe that a patented product is a cutting edge product–it must be better or an improvement over previous products.  “Patent pending” or “patent applied for” may provide this marketing advantage as well.

False Marking

US patent law also provides a penalty for falsely marking a product that is not covered by a patent.  This also includes marking the phrase “patent pending” or “patent applied for” on a product if an application has not be filed or is not pending in the PTO.  False marking with intent to deceive the public can result in a fine of up to $500 for each such offense.

Should You File a Provisional Application or a “Regular” Patent Application?

December 10, 2008

This question gets asked of patent attorneys quite often.  The answer, of course, depends on the particular circumstances surrounding an invention, but there are some general guidelines that can be followed.

A provisional patent application is a patent application that may be filed at the PTO that can be used to establish a filing date or date of invention.  The application expires 12 months from its filing date.  This means that, in order to claim the benefit of the provisional application filing date, a non-provisional application must be filed within that 12 month period.  There is no such thing as a “Provisional Patent”, although you may hear that term.  A provisional patent application does not give the inventor any rights to exclude, as an issued patent does.

The PTO does not examine provisional applications, but merely keeps them in its records.  Filing a provisional application does not get the invention examined any more quickly; in fact, the application does not go into the examination queue at all, so it actually takes longer from the initial filing date of the application than if a non-provisional application were filed initially.

The public does not get access to a provisional application unless and until a non-provisional application that claims the benefit of the provisional application filing date is published.  Thus, a provisional application delays publication of the invention, even if the applicant will be filing outside the US.

So, why would anybody want to file a provisional application?

The main reason is actually the delay.  The provisional application gives an additional 12 months to further develop the invention and to see if there is a market for the invention, and it can also delay prosecution costs associated with the application.

First, it often takes a long time to perfect a new product or process.  There are many details to work out and many improvements can be made in the early stages after the initial concept is completed.  To establish an early date of invention, a provisional application can be filed once the initial concept is completed, but prior to the perfection of the invention.  The 12 months before the non-provisional application must be filed can be an aid in this endeavor.  Additional provisional applications can be filed during the 12 month period to establish an invention date for any improvements.  Various strategies exist for which applications should be used for a priority claim.

Second, a provisional application delays some of the expenses associated with obtaining a patent.  For example, the filing fee for a provisional application is currently only $220 ($110 for small entity), while the filing fee for a non-provisional application is $1090 ($467 for small entity filed electronically).  There are additional fees for excess claims, prosecution fees, and issue and publication fees.  It may be advantageous to delay these fees until it is determined that there is a market for the invention.  A provisional application gives the application 12 months to find investors, buyers, or licensees for the product or process.

It’s a lot cheaper to prepare a provisional application, right?

Many people believe that filing a provisional application is a simple thing.  Some inventors will do it themselves, before going to a patent attorney for a non-provisional application a year later.  Others want their attorney to prepare a bargain application of maybe a few pages or so.  After all, provisional applications don’t even require claims.

Sometimes, it is necessary to file a quick and dirty provisional application, such as where there is going to be an imminent product release or publication that could create a bar to getting a patent in the future.  For the most part, however, it is not cheaper to prepare a provisional application than a non-provisional application.

In order for a later-filed non-provisional application to obtain the benefit of the filing date of a earlier provisional application, US patent law requires that the claims of the non-provisional application be supported by the provisional application.  What this means is that an applicant must include sufficient detail in the provisional application in order for it to do any good.  Otherwise, you are only entitled to the filing date of the non-provisional application.  In that case, the provisional was a waste of time and money and the delay in filing the non-provisional application may be detrimental to obtaining a patent for the invention.

Applicants should take the time and spend the money to have a good provisional application prepared that includes as much detail as is available at the time of filing the provisional application.

In summary, a few points are worth mentioning or repeating:

  • A provisional application can be a good idea to establish an early filing date and to give additional time to perfect the invention or work on improvements, as well as to determine whether there is a market for the product or process.
  • A provisional application can also be a good way to delay filing and prosecution costs until a later date.
  • A provisional application should not be filed until the invention includes sufficient details to reduce the invention to practice.
  • Provisional patent applications should include sufficient detail to support claims in a later-filed non-provisional application.
  • A provisional patent application permits the applicant to mark a product as “patent pending.”

Lower Standard Applies for Indefiniteness Rejection During Prosecution

December 8, 2008

image2The Board of Patent Appeals and Interferences (BPAI) has ruled that a lower standard applies for indefiniteness rejection under 35 USC § 112, second paragraph, during prosecution of a patent application than during litigation of an issued patent.  The first paragraph of section 112 requires that the claims of a patent application not be indefinite to those of skill in the art.  In other words, when one reads the claims of a patent, the words in the claims should not be unclear.

The Federal Circuit has held that claims are indefinite only if they are “not amenable to contruction” or are “insolubly ambiguous.”  Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations omitted).  The court based this rule in part on the presumption of validity of issued patents.

The BPAI notes that just as two different standards are applied during claim construction, so also different standards should apply for indefiniteness.  Post-issuance claim construction attempts to determine the meaning of the claims based on the specification and prosecution history.  During prosecution, however, the PTO gives claims their broadest reasonable interpretation consistent with the specification.  This is because, during prosecution, the applicant has the ability to amend the claims.  The BPAI thus propounded the following standard for pre-issuance indefiniteness:

if a claim is amenable to two or more plausible constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.

In Ex Parte Miyazaki, the claims were directed to a large printer having a” paper feeding unit located at a height that enables a user, who is approximately 170 cm tall, standing in front of the printer to execute the paper feeding process.”  The Board held the claims to be indefinite because they fail to specify a positional relationship of the user and the printer to each other.  The claim does not recite whether the printer is located on the ground or a table or whether the user is standing on the ground or a stool or something else.

This case is another example of the courts or the PTO telling applicants to include more detail and more precision in their patent applications and claims.  When issued patents and claims are unclear, they can cause a great deal of uncertainty.  Many of the Federal Circuit’s opinions over the last ten years that seem to be cutting back on the scope of patents, are actually the court’s way of imploring applicant to include additional detail and precision.  In most cases, as much detail as possible should be included in the application.

Tafas v. Dudas Update

December 5, 2008

You can listen to audio of the oral argument here.  IP Watchdog has a great summary of the argument here.


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