What to do when the prior art has errors October 24, 2013Posted by Brian Schar in General, Patent prosecution, USPTO.
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Anyone who’s been in the patent profession for any amount of time has run across the situation where the Examiner cites a piece of prior art that is simply wrong. The cited portion may have a typo, may be badly written or translated to mean something different than context would indicate, or may in some other way be inoperative. However, there is little case law concerning this situation.
A recent nonprecedential PTAB case provided excellent guidance to applicant as to how to handle that situation. The appeal in Ex parte Darr centered on Table 3 of an issued patent cited as a prior art reference. The claims at issue had a limitation of a specific length, and the cited Table 3 read on that length. However, Appellants contended that the units of length in Table 3 were obviously in error, and one skilled in the art would immediately know that those units should have been inches, rather than millimeters. Appellants provided a declaration to that effect, as well as argument.
The PTAB noted that the presumption of operability of an issued patent flows from the presumption of validity, and provided some helpful citations. (Lacking Lexis, however, I sadly cannot link you, the reader, to a 1935 D.C. Circuit case relied upon by the PTAB.) However, that presumption is rebuttable by a preponderance of the evidence. Here, the appellants did so, by providing a declaration and pointing out the clear-cut typographical error.
Similarly, if the reference were not an issued patent, I would think the same holding would apply. If the applicant can show by a preponderance of the evidence that there is error in a cited reference, that should overcome a rejection over that reference.
The next time you are faced with this situation, it’s worth taking 5 minutes and reading Ex parte Darr before responding to the Examiner.
Track 1 actually saves you money October 14, 2013Posted by Brian Schar in Patent prosecution, USPTO.
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I was leery of Track 1 accelerated examination at first, particularly given the price tag of $4000 ($2000 for a small entity). However, after a couple of years of experience with Track 1, I have become a big fan of the program.
To make Track 1 worthwhile, write a claim set of moderate breadth that avoids the prior art you know about. An appropriately-scoped claim set can receive a first action notice of allowance in as little as 3-4 months, with issue 6-7 months after your filing date. The first action allowance saves the applicant the cost of responding to a final office action, whether via an RCE or appeal. On top of that, early issue makes the Patent Prosecution Highway much more efficient. When you save money on foreign prosecution, that really adds up.
Especially for small entities, the fee for entering Track 1 accelerated prosecution will pay for itself.
Don’t be a jerk October 2, 2013Posted by Brian Schar in General.
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NDAs are common IP-oriented documents that we all handle. Invariably a few items get negotiated between the parties, especially for unusual situations. For that reason, it’s not helpful to send the other side a PDF or a locked Word document of your NDA. When I get one of those, I have a variety of creative measures I use to extract the text and paste it (unformatted) into an unlocked Word document. Worst case, I will redline the hell out of it with actual red pen, scan it, and send it back. A party that thinks they can force the other party into a take-it-or-leave-it situation with their form NDA is just wrong. Sending locked/scanned documents as if that prevents editing is acting like a jerk. It just makes the other party mad and generates ill will, making it harder to get the document signed and hurting your client. So, don’t be a jerk!
Obviousness, technical reasoning and inherency September 25, 2013Posted by Brian Schar in Patent prosecution, USPTO.
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A recent PTAB case, Ex parte Nishida, provides an excellent illustration of a fundamental mistake made with some regularity by examiners, and also provides a roadmap for correcting that mistake on appeal.
An obviousness rejection requires a finding that the prior art contains all the elements of the claim, across one or more references, and requires technical reasoning for combining those references. Where the prior art does not include all of the elements of the claim, the examiner can find that one or more of those elements is inherent, but to do so he or she must provide technical reasoning as to how that purportedly inherent element “necessarily flows” from the teachings of the prior art.
In Ex parte Nishida, the Examiner found that the combination of four cited prior art references “fails to explicitly disclose the gaps/trenches to have different depths as recited in claim 1.” This sentence or a variant thereof signals the fundamental mistake I wrote about above. Whenever you receive an Office Action that includes the words “fails to explicitly disclose” or similar, your internal Winning Appeal Detector should start beeping or ringing or doing whatever it does.
The Examiner then did what many do when inexperienced, or pressed for time. He simply stated, without support, that “one of ordinary skill in the art would know that [the claimed] different gap/trench depths would be required.” However, a bare assertion is not “technical reasoning.” It is akin to what Examiners deride as “mere attorney argument.” (When feeling snarky, in particularly egregious cases I’ve characterized unsupported Examiner statements as “mere Examiner argument.”)
The Board saw right through this, and in an admirable bit of succinct clarity held that “the Examiner provides no support for that argument. The Examiner’s mere speculation is not sufficient for establishing a prima facie case of obviousness.” And with that, the applicant won reversal.
So why do Examiners do this? In my experience, there is an intersection between inherency, “broadest reasonable interpretation” and technical reasoning. Because it is challenging, and an uphill battle, to establish inherency as something that “necessarily flows” from the prior art as required by MPEP 2112, sometimes Office Actions will include some inherency-like hand-waving. I often characterize this as an implicit inherency rejection. If the claims requires A, B, C, and D, and none of the 4 references cited include D, an Examiner can simply state, as in Nishida, that one of ordinary skill in the art would just know that D is required. Or, the interpretation of element D will be twisted like a nose of wax so that something in the prior art can be used to read on element D. Be alert to both of these tactics, and when they come up, take the argument back to what it really is: where an element of the claim isn’t present in the cited art, and the Examiner admits it, he or she bears the burden of making the inherency argument in regard to that element, or at a minimum of setting forth some kind of technical reasoning. Where neither burden has been met, you will win.
Broadest reasonable interpretation September 19, 2013Posted by Brian Schar in General, Patent prosecution, USPTO.
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The PTAB recently issued a succinct decision that sets forth the state of the law for the USPTO’s “broadest reasonable interpretation” standard for patent claim terms. In Ex parte Leidholm, one claim element was a “foil substrate.” The Examiner interpreted that language to read on metal layers sputtered onto a glass substrate, which was disclosed in a prior art reference. The PTAB reversed.
The broadest reasonable interpretation must be consistent with the specification. The PTAB did not cite In re Suitco Surface for this proposition, instead choosing to rely on other precedent that isn’t quite so scathing toward the Examiners: In re Translogic Tech, and In re Hyatt. The applicant’s spec described aluminum foil. The PTAB thus found that the applicants used the claim term “foil” consistent with its ordinary meaning – “a thin, flexible leaf or sheet of metal.” That defined the broadest reasonable interpretation, as a result; the sputtered metal on glass disclosed in the prior art was not prior art.
Challenging the breadth of interpretation of claim terms continues to be a winning strategy at the PTAB, particularly where you aren’t giving up any useful claim breadth when making that argument.
Two things you didn’t expect when you went in-house March 20, 2013Posted by Brian Schar in General.
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A lot of ink has been spilled over the years about the transition from law firm to in-house practice. However, there are two aspects of in-house practice that usually get overlooked.
The first is that you will be the first lawyer that most of your co-workers have ever met, if you are at a small to medium-sized company. All they know about lawyers is what they see on TV or read in the paper – and most of that isn’t particularly positive. A percentage of your co-workers actively will be wary or scared of you at first. Part of your job is to be a good ambassador for the profession. Be nice. Be professional and pleasant. Make conversation. Make jokes. Act like a human being. That will break down the walls and help you fit in to a business environment quickly and effectively.
Second, after they get to know you and realize you are an OK person, you will start to get requests for referrals. As the only lawyer many of your co-workers know – particularly the lower-paid ones – you are their on-ramp onto the chaotic freeway of the legal system. They don’t have any idea how to pick a lawyer. It’s a good idea to connect with friends from law school, or trusted colleagues, and have a few different folks on deck for recommendations. The ones you’ll be asked about most will be personal injury, divorce/family law, criminal law, and immigration. It will behoove you to have a recommendation or two handy for lawyers in at least those specialties.
However, I do recommend not referring your co-workers to employment plaintiff’s counsel!
A mortal wounding of McKesson January 31, 2013Posted by Brian Schar in Federal Circuit, General, Patent prosecution.
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After the McKesson decision, many patent attorneys, including myself, thought the IDS armageddon would soon arrive. McKesson arguably required the applicant to submit in a particular application references from all related applications, as well as office actions from those cases if the claims therein were sufficiently similar to those in the particular application. At a minimum, related applications would include any case (US or foreign) that claims priority to the particular application at issue.
As time progressed, I was surprised to find that this particular rationale for finding inequitable conduct – failure to submit office actions from related applications – was not applied routinely by the Federal Circuit. My position evolved to one in which McKesson was limited to its facts.
Now, post-Therasense, last fall’s precedential Federal Circuit decision in 1st Media v. Electronic Arts may have slain McKesson without mentioning it by name. In 1st Media, the applicant’s attorney failed to submit art in a US application that had been cited as “Y” art (that is, obviousness art) in the corresponding application pending at the European Patent Office. The attorney also failed to cross-cite art among different pending US applications in the same family. The reason given was that the attorney had recently set up a solo practice out of his home, which was “very active,” and the citations were missed.
The Federal Circuit assumed that the art that was not cross-cited within the family was material. (p. 14). Turning to the second prong of Therasense, the Court then stated:
Knowledge of the reference and knowledge of materiality alone are insufficient after Therasense to show an intent to deceive. Moreover, it is not enough to argue careless-ness, lack of attention, poor docketing or cross-referencing, or anything else that might be considered negligent or even grossly negligent. To sustain a charge of inequitable conduct, ‘clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.’” (pp. 12-13).
Thus, even under facts very similar to those of McKesson, absent proof of a deliberate decision to withhold a known material reference, the failure to cross-cite references and office actions within a family is not inequitable conduct.
While the Federal Circuit did not even mention McKesson, by addressing the second, intent prong of Therasense, 1st Media has declawed the fierce beast that McKesson used to be.
Hindsight is not 20/20 January 16, 2013Posted by Brian Schar in Patent prosecution, USPTO.
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The recently-decided PTAB appeal Ex parte Windsheimer is not precedential. However, at page 3 of the opinion, there is an excellent one-sentence summary of the state of the law as to hindsight and obviousness:
“The fact finder must be aware ‘of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.’ KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue”)).”
I am inclined to cut and paste this very sentence into virtually every appeal brief I write, as I couldn’t have said it better myself.
2012 in review January 3, 2013Posted by Brian Schar in General.
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The WordPress.com stats helper monkeys prepared a 2012 annual report for this blog.
Here’s an excerpt:
600 people reached the top of Mt. Everest in 2012. This blog got about 7,200 views in 2012. If every person who reached the top of Mt. Everest viewed this blog, it would have taken 12 years to get that many views.
How to Respond to an Office Action, Part 1: Should You Respond at All? September 19, 2012Posted by Brian Schar in Patent prosecution.
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Before starting to write a response to an office action, you should consider whether you should respond at all.
In many, if not most, art units the first office action won’t be generated until 2-4 years after the application has been filed. In those 2-4 years, the business of your client will have changed, in some cases substantially. The initial excitement over a new invention will have worn off, and that invention may be no longer within the core business of your client. It may have been researched further, and found to be uneconomic, or hard to produce, or hard to market. That patent application you filed may have been directed to a feature of a product that is no longer part of the product, or directed to a proposed feature of a product that was never implemented. The product itself may have been discontinued or abandoned.
None of these scenarios are uncommon. They are the nature of business, particularly fast-moving innovation-driven business that understands the importance of patents and IP.
Before writing an office action response, ask the following questions of your client; you may already know the answers if you are in-house:
- Do the claims cover a product the client is making? (i.e., do the claims have any defensive value?)
- Do the claims cover a product that a competitor is selling? (i.e., do the claims have any offensive value?)
- Are the claims directed to a product improvement that the client is serious about implementing?
- Are the claims directed to a product improvement that could be used to block a competitor from using that improvement?
If the answers to all of those questions are “no,” then you should have a talk with your client about just letting the application go. That can be hard for a client to hear; the temptation for them is to proceed “just in case.” In addition, if you’re deep into prosecution, a client can focus too much on the sunk costs of prosecution that has already occurred. At the end of the day, it’s the client’s decision whether to proceed or not. However, it’s your job to make sure the client has all of the information needed to make a decision.