Archive for September, 2010

How to Keep Patent Costs Down and to Get Better Patents

September 29, 2010

One thing that inventors often do not realize is that simply getting a patent on a product or service does not mean that the inventor will make money.  Even if you get a patent for your invention, this does not mean that you will be able to successfully commercialize or market the invention.  There are numerous inventions that have been patented that have never seen the light of day.  Spend a bit of time going through patents at the PTO website,  www.uspto.gov, and you will see that this is true. 

There are many patents on obscure inventions that do not make it to market.  There are many reasons for this, such as a lack of funding or ability to take the invention to market, a lack of understanding of the market, the availability of cheaper alternative products, or simply that nobody is interested in what the inventor has invented.

The cost of obtaining patent protection is likely to be a small part of the overall cost of commercializing and marketing the invention.  If funding is not available to obtain a patent, chances are that it will be difficult to secure funding to market the invention.  Below are some strategies for reducing patent costs and obtaining better patent protection.

Prior Art Search

If an inventor plans to develop and market a product, it is important that a clearance search be performed prior to his doing so.  This will help determine whether the product or service the inventor seeks to market may run into infringement issues with patents owned by third parties.  In trying to save cost, it would be better to know that the product can be developed and commercialized without running into these other patents.  Otherwise, a great deal of time and money could be spent to develop the product and file a patent application that the inventor can not even practice.

A search also provides the benefit of determining whether it is worthwhile to file a patent application and what type of protection may be available.  Most inventors are not skilled at searching the PTO databases or foreign patent resources.  It is not cost-effective to have an attorney perform such a search.  A company that specializes in such searches can perform such searches efficiently and can save a great deal of time and money down the road.  Depending on the complexity of the invention and search, the cost is generally less than $2,000 and usually less than $1,500.

This is not to say that inventors should not spend time searching on the internet.  A few hours on Google can certainly save time and money as well.  And the inventor should let the attorney know about the products and patents of which he becomes aware that are closest to his invention.  For one thing, the PTO requires disclosure of material information of which the inventor may be aware, but this also assists in the preparation of a patent application by knowing what the inventor considers the closest competitive product or patent.

Provide the Best Description and Drawings that You Can

Inventors should take some time to review other patents to see the level of detail that is generally required in such a document.  The more the inventor can prepare, the less time the patent attorney will need to spend on the application.  Try to include as many alternative ways of practicing the invention as you can think of.  Again, other patents can be found on the PTO website, Google Patents or other sources.

If you’ve been following this blog, you know that the courts (especially the Federal Circuit), the PTO, and even Congress are making preparing patent applications more difficult and expensive.  One of the take-away lessons from this trend is that the more detail and information that is included in the description of the invention and the more alternatives that are described, the greater the chance of obtaining a strong patent.

Conclusion

And then, you have to be patient.  Once the application is filed, it will take over a year and potentially several years before the PTO will examine the application.  And no, a provisional application will not be significantly cheaper than preparing a non-provisional application.  I covered this issue in an earlier post.

Remember, the inventor knows a great deal more about the invention and related technology than the patent attorney does.  The more help and assistance the inventor can provide, the more efficiently the patent attorney can do his part.

Patent Reform Not Dead Yet

September 16, 2010

Just when it appeared that there would be no patent reform for yet another Congress, 25 senators have sent a letter to majority leader Harry Reid (D-NV) asking him to bring the Manager’s Amendment, S. 515, to the Senate floor for consideration “as soon as possible.” 

Does this mean that the bill will be debated soon?  Who knows.  The letter certainly makes it more likely.  Does it mean that all 25 senators support the bill and will vote for its passage?  Not necessarily, although the letter is full of praise for the bill.  It would seem a bit incongruous to sign such a letter and then vote against the bill the letter praises.

The following senators signed the letter:

  1. Patrick Leahy (D-VT), chair of the Judiciary Committee that passed the bill and primary sponsor of the bill;
  2. Jeff Sessions (R-AL), ranking member of the Judiciary Committee;
  3. Herb Kohl (D-WI), member of the Judiciary Committee;
  4. Orrin Hatch (R-UT), member of the Judiciary Committee who voted against the bill in committee and original co-sponsor of the bill;
  5. Arlen Specter (D-PA), member of the Judiciary Committee and original co-sponsor of the bill;
  6. Jon Kyl (R-AZ), member of the Judiciary Committee who voted against the bill in committee;
  7. Sheldon Whitehouse (D-RI), member of the Judiciary Committee;
  8. Richard Lugar (R-IN);
  9. Amy Klobuchar (D-MN), member of the Judiciary Committee and original co-sponsor of the bill;
  10. Thad Cochran (R-MS);
  11. Edward Kaufman (D-DE), member of the Judiciary Committee and original co-sponsor of the bill;
  12. Christopher Bond (R-MO);
  13. Joseph Lieberman (I-CT);
  14. Sam Brownback (R-KS);
  15. Bill Nelson (D-FL);
  16. Richard Burr (R-NC);
  17. Frank Lautenberg (D-NJ);
  18. Roger Wicker (R-MS);
  19. Robert Menendez (D-NJ);
  20. George LeMieux (R-FL);
  21. Sherrod Brown (D-OH);
  22. Robert Casey (D-PA);
  23. Claire McCaskill (D-MO);
  24. Roland Burris (D-IL);
  25. Kirsten Gillibrand (D-NY), original co-sponsor of the bill.

Notably, original co-sponsors John Cornyn (R-TX), Mike Crapo (R-ID), Dianne Feinstein (D-CA), Mark Pryor (D-AR), Jim Risch (R-ID), Bernie Sanders (I-VT), and Chuck Schumer (D-NY) did not sign the letter.  Does this mean they no longer support the bill in its amended form?

Even if the bill does get to the Senate floor and even if it passes the Senate, it still has to be passed by the House.  The House Judiciary Committee has not voted on the bill and seemed disinclined to do so last year.

So, back to the original question.  Will we see patent reform this year in the 111th Congress?  If we do, it will have to pass quickly with little or no significant debate.  I realize that this is often the way it happens in politics, but this is not the way it should be done on a bill to significantly overhaul the patent system that could have an enormous impact on the economy.

Stay tuned . . .

Thanks to Hal Wegner for sending around the letter.

When is the Preamble a Limitation of the Claim?

September 15, 2010

On Monday, the Federal Circuit decided American Medical Systems, Inc. v. Biolitec, Inc.  The issue in this case was the construction of claim 31 of U.S. Patent No. 6,986,764.  The particular issue was whether the preamble limited the claim.

A method for photoselective vaporization of tissue, comprising:

delivering laser radiation to a treatment area on the tissue, the laser radiation having a wave-length and having irradiance in the treatment area sufficient to cause vaporization of a substantially greater volume of tissue than a volume of residual coagulated tissue caused by the laser radiation, wherein the delivered laser radiation has an average irradiance in the treatment area greater than 10 kiloWatts/cm2 in a spot size at least 0.05 mm2.

The defendant in this case asserted that it did not perform “photoselective vaporization” of tissue as recited in the preamble.  The district court agreed and entered summary judgment of non-infringement.  The court held that the term “photoselective vaporization” referred to a specific wavelength for the laser radiation.  The Federal Circuit reversed, holding that the preamble did not limit the claim.

The court began with the standard statements that there is no hard and fast rule as to when the preamble limits the claims, but that it is to be determined based on the facts of the particular invention described in the patent.  Generally, however, a claim’s preamble does not limit the claim unless it recites essential structure or steps or is “necessary to give life, meaning, and vitality” to the claim.  Whatever that means.

Based on the court’s standard jurisprudence on claim preambles, it reversed the district court and held that the preamble did not limit claim 31.  All of the necessary steps to practice the invention are contained within the claims such that resorting to the preamble is not necessary.

Judge Dyk dissented in this case as he would hold that the preamble is a limitation of the claim.  He suggests that the Federal Circuit’s claim preamble jurisprudence is a mess and that it is difficult to determine whether the preamble is limiting in any particular case.  He further suggests that the court should revisit this issue en banc to make a clear rule that claim preambles are always limiting.

Judge Dyk presents a good point.  What is the purpose of a claim preamble if it does not limit the claim?  Due to the confusion on this issue, many practitioners do not use a claim preamble.  Thus, you will see claims that simply recite “A method comprising: . . .” or “An apparatus comprising: . . .”  Given that it is a bit of a crap shoot as to whether the preamble will be construed as a claim limitation, this seems to be a prudent course of action.    If the description in the preamble is necessary for patentability of the claim, it should be placed in the body of the claim.

Kappos Says PTO Making Progress on Backlog

September 9, 2010

Although the Data Visualization numbers posted yesterday show that the backlog  and that time to first Office Action have been stagnant during the current fiscal year, PTO Director David Kappos says the agency is on pace to reach its goal of cutting the backlog to 700,000 by the end of the fiscal year September 30.

He reported that PTO filings are up 4% this year as a 2.3% drop during FY2009.  The long term goal is to reduce the backlog to 325,000 applications by FY2015.

He believes that further use of the Patent Prosecution Highway, a program where the PTO coordinates prosecution with foreign patent offices, will greatly assist in reaching this goal.  Four thousand applications were processed on the PPH this year with the plan for 8,000 during FY2011.

Kappos still believes in the revised count system as a means of reducing RCE filings.  These filings had increased at a rate of 29% during FY2008.  The increase in FY2010 is only 9%.  He believes that the trend will eventually head downward.

He also plans to hire about 1,000 new examiners during each of FY2011 and 2012.

The bleak numbers, along with the bleak economy of the last several years, demonstrate that things were worse at the PTO than was originally thought when Kappos became the new director.  Kappos appears to be implementing a number of measures from the business world.  These have stopped the numbers from getting appreciably worse. 

It’s always easier to go from terrible to bad than it is from bad to mediocre or from mediocre to good.  We’ll see if he can take the agency on the next step.

PTO Data Visualization Center

September 8, 2010

The PTO has a new Data Visualization Center to make it easier to see information regarding pendency and other data.  Here is a summary of some of the data of note as of August 2010.

First Action Pendency – 26.2 months

The PTO has a goal of 10 months to first Office Action by 2015.  At the beginning of FY2010, the pendency was 26.1 months.  As of August, the pendency is virtually unchanged at 26.2 months.  This number is down slightly from recent months.

“Traditional” Total Pendency – 35.4 months

“Traditional” total pendency does not take into account RCEs or other means of refiling an application.  It merely measures from the application’s or RCE filing date to final disposal.  The PTO has a goal of 20 month average pendency by 2015.  As of August, pendency has risen to 35.4 months, up nearly a year from 34.5 months at the start of FY2010.

Application Pendency with RCEs – 42.8 months

Pendency that includes Requests for Continued Examination and does not count them as abandonments is at an all-time high of 42.8 months, up from 41.2 months at the start of FY2010.

The average pendency for only applications where an RCE is filed is over 5 years at 60.7 months.  This is still better than the nearly 6 years required from the parent application filing date for a continuation applications at 71.6 months or for divisional applications 69.4 months.

Applications Awaiting First Office Action – 728,055

The number of patent applications that have been filed that have not yet received a first PTO Office Action is up 0.7% from 722,835 at the start of FY2010 to 728,055.  The PTO has brought this number down from early FY2009 numbers where it was over 760,000.

Patent Application Allowance Rate – 45%, 60.2%

The PTO is calculating the allowance rate in two ways.  The “traditional” allowance rate counts an RCE as an abandonment.  The rate when including RCEs is currently 45%.   When not including RCEs as abandonments, the allowance rate is 60.2%.  As suspected, the allowance rate has been increasing during FY2010, but is still at a level that is quite low historically.  The chart shows the trend for allowance rate during FY2009 and FY2010.

Average Pendency for Applications Receiving a Decision by the BPAI – 76.1 months

A decision that many patent applicants are required to make is whether to appeal a case to the BPAI.  For applications getting a final decision on appeal, the average time from application filing date to decision is 76.1 months–closing in on 6 1/2 years!  This number is up from 71.7 months at the start of FY2010.  The incredible number of appeals being filed is contribuing to this crisis situation.

Number of Patent Examiners – 6,038

The hiring freeze at the PTO dropped the number of examiners from a high of 6,240 in February 2009 to a low of 6,009 in July 2010.  The PTO has recently started hiring a few examiners again, focusing on former examiners that have left the office.

Average Actions Per Disposal – 2.4

The PTO is measuring the number of Office Actions per application.  Each Office Action (non-final and final) counts as an action, as does an allowance and an abandonment, including abandonments for RCE filings.  Thus, an application with a first Office Action, a final Office Action, and an allowance counts as three actions.  The PTO has brought this number down from 2.91 in FY2008.

Conclusion

The good news is that the PTO is finally being transparent about its numbers and giving us real data on patent pendency rather than the “traditional” pendency data.  The bad news is that these numbers paint a bleak picture.  The allowance rate is still extremely low, average pendency is very high at over 3 1/2 years, and it takes nearly 6 1/2 years to get a decision on appeal.

It’s going to take some time for Director Kappos’s intiatives to yield results, but at this point things are not improving.  They are getting worse.  Lifting the hiring freeze was a first step with several others needed.

What Joint Inventors Need to Know

September 3, 2010

I am often approached by an individual or group of individuals that have worked together to develop a new invention for which they would like to file a patent application.  They could be friends, neighbors, college buddies, or maybe just acquaintances.  They almost never have any type of agreement, written or otherwise, regarding rights or ownership in the invention.

Sometimes, one of the inventors asks me to represent him, but that it is not necessary for me to represent them both.  Maybe the second inventor is not available to talk to me or does not have time to review documents or some other reason.  As I always explain to the one inventor who requests my representation, this creates a number of problems.

The primary complication is that any communication I have with the inventor who is my client is protected by attorney-client privilege.  I cannot, however, discuss the matter with the non-client inventor because of the privilege.  If the inventor who is my client shares our conversations with the non-client inventor, the attorney-client privilege may be waived.  This could result in serious consequences if the inventors seek to license or assert the patent at a later date.

I typically prevail on the joint inventors that I need to represent all of them in order to keep our communications protected by the privilege.  Even the case of representing all of the inventors individually can present problems. 

First, if the inventors have a disagreement or falling out, I would not be permitted to represent any of them.  This represents a situation where there would be a conflict of interest in the representation.  If I previously represented inventors A and B on a matter and they have a disagreement, I cannot then represent only inventor A or only inventor B in the matter that is now potentially adverse to the interests of the other inventor.  In such a case, I would be forced to withdraw from the representation and the inventors would each be required to get new attorneys to handle the matter.  This results in needless duplication of efforts, delays, and added expense.

Second, as I detailed in an earlier post, there is the problem of “secret prior art.”  Inventor A conceives of an invention and files a patent application for it on September 3, 2010.  Later, Inventor A and Inventor B conceive of an improvement to Inventor A’s invention and file a patent application for it on October 3, 2010.  The jointly-filed application may be rejected over Inventor A’s earlier application if the improvement would have been obvious in light of Inventor A’s initial invention to one of ordinary skill in the art.  This is even true whether Inventor B is aware of Inventor A’s earlier application or not.

35 U.S.C. § 103(c)

Congress saw this as a potential problem and enacted a solution.

(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if -

(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

Subsection (1) refers to the situation where the invention and the improvement are owned by the same entity or that the inventors are both obligated to assign to the same entity.  So, as above, if both Inventor A and Inventor B had an obligation to assign their inventions to a corporation or a jointly-formed entity, such as an LLC, this section precludes the use of Inventor A’s application as prior art for obviousness purposes against the application filed for the later improvement.

Subsection (2) refers to the situation where there is no single entity for assignment or obligation of assignment, but there is a joint research endeavor.  If there is a written agreement, and the improvement is invented as part of the agreement, then the original application cannot be used in an obviousness rejection of the application filed for the improvement.  Thus, if Inventors A and B had a written agreement signifying a joint research endeavor, this provision would provide them with a shelter from an obviousness rejection.

Inventors Should Have an Agreement to Take Advantage of 103(c)

What does all this mean?  When inventors get together with the idea of inventing or creating a new product, they should at least have at least a written joint research agreement.  In that case, none of the individual inventors’ prior inventions that might otherwise qualify as “secret prior art” can be used to reject any new inventions as obvious.  I understand that this may seem onerous, but at least a written agreement that states that the individuals intend to work together to develop a new product or invention is better than nothing.

An even better scenario is when the inventors form a common entity, such as an LLC, to which they obligate themselves to assign the inventions.  This permits the inventors to use the safe harbor provisions of § 103(c) and to avoid potential conflicts of interest when the inventors approach an attorney to represent them individually with respect to the inventions.  The attorney can represent the LLC rather than the inventors individually.


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