INVENTIVE STEP

The Board of Patent Appeals and Interferences (BPAI) at the PTO recently issued a decision applying Bilski.  In Ex Parte Halligan, the application included a method claim that recited a “programmed computer method” for identifying trade secrets.  At first glance, this seems like a situation similar to the method of requiring and conducting arbitration from Bilski.  There, the court said that methods of transforming abstract things like legal rights are not patentable.  The twist in Halligan is that the method steps are performed by a “programmed computer.”  This would seem to meet the “machine” portion of the machine or transformation test, right?  The Bilski court specifically declined to decide this issue, so it is up to the BPAI.

The Board was not impressed with the recitation of the method steps being performed by a “programmed computer”.

This recitation fails to impose any meaningful limits on the claim’s scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims.

The BPAI held that to permit an unpatentable method to become patentable by the mere addition to the method steps that they be performed by a programmed computer, this “would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a ‘programmed computer.’”

It did not help the applicants that they also had claims to a programmed computer that were similar to the method claims, but instead included “means within the programmed computer for” performing the steps of the method.  The Board noted that the only structure recited within the application to perform these steps was a general purpose computer having an arithmetic processor.  The application did not include any specific algorithm for performing these steps.  Thus, the programmed computer claims were also unpatentable as they were indefinite.

The bottom line seems to be that applicants should include more details in the description of how these types of methods would be implemented by a computer, such as a specific algorithm or even code.  The mere recitation of a general purpose computer without anything more specific will probably not be enough for patentability.

The Patent Public Advisory Committee (P-PAC) was created by the American Inventors Protection Act of 1999 to advise the Director of the PTO on management of patent operations within the Office.  P-PAC consists of IP attorneys, inventors, law professors, entrepreneurs, consultants and other members of the public who have diverse interests in the US patent system.  P-PAC the policies, goals, performance, budget, and user fees in making its recommendations to the Director.

Application Pendency

P-PAC released its Annual Report on December 1.  In the report, the Committee lists as one of the critical issues facing the PTO the need to reduce patent pendency, that is the time between the filing of a patent application and allowance or final rejection or other disposition by the PTO.  The Report notes that:

The Committee firmly believes that conquering the pendency/backlog problem will not be achieved unless and until the Office makes a very public commitment to reducing average pendency across all applications to 24 months within the next 24 months.

That seems like an extremely difficult goal, but the Report goes even further:

The Committee also desires [] the Office to commit to a longer range (3 year) plan and timeline to drive to an ultimate pendency goal of 18 months from filing to final disposition.

Anybody who is associated with patent prosecution knows that application pendency at the PTO is a problem and that there is a need for reduction.  In the PTO’s 2008 FY Performance and Accountability Report, the Office lists the average time to a first Office Action at 25.6 months and the average total pendency time at 32.2 months.  Some art units are much slower than this.  The average filing date for applications receiving first Office Action in the last 3 months in Art Unit 2680-Business methods is March 21, 2005 (no action for over 3.5 years).

So, the PTO needs to cut 8.2 months off the average pendency in the next 24 months?  That sounds challenging, but might be possible.  The Committee goes further by noting that the PTO’s definition of pendency is from the time the application is filed to the time it is allowed, appealed, or abandoned.  The Committee seeks to change the definition of pendency to the time from filing of the initial application for an invention to the final disposition “where the final disposition means where no further action by the examiner is required such as when the case is finally allowed, appealed or abandoned with no re-filing.”  In other words P-PAC would define pendency as the time between the filing of an initial priority application and the final disposition of an continuation application or RCE.  This, plus the time reduction goals, make the P-PAC’s aim impossible.

Examiner Retention

Putting aside the question of how this would be accomplished with PCT applications which have a 30 month procedure prior to national stage entry, what proposals does P-PAC have to accomplish this task?  Actually, very few.  The only real proposal has to do with examiner hiring and retention.

The Report notes that there are currently 6099 patent examiners, plus a number of supervisors and others involved in the examination process.  The PTO has been and continues to have as a goal hiring 1200 new examiners per year.  The goal is to have an examining corps of 8400 by 2014.  The problem is that the Office has been experiencing an attrition rate of 7-8% for the last few years, which is actually somewhat better than it has been historically.  First year examiners have a much higher attrition rate of 13-18%; the data actually suggest that after year 3, attrition drops to 4%.

One method the PTO has been using to increase examiner retention is its telework/hoteling program.  This program allows examiners to work mostly from home and they are only required to come to the Office once per week.  This reduces commuting time and frees up office space at the PTO.

P-PAC wants to eliminate the weekly office time requirement in order to permit examiners to live anywhere in the US.  The current rules requiring the examiners to report to the Office once per week, to pay for all travel expenses to get there, and to not receive time credit for traveling to the Office have resulted in only 52 examiners living outside of commuting distance of Alexandria.  By eliminating the face-time requirement, examiners could live in California, Idaho, or Texas.  This should make it easier to hire and retain talented individuals and aid the PTO in meeting its retention goals.

This is an interesting idea that the PTO should explore further.  Since many applications are filed by companies and inventors outside of the Washington DC area, it should not be a problem to have patent examiners in other states.  Expanding the talent pool available for potential examiners can only be a good thing.