Appeal brief practice alert December 30, 2008
Posted by Brian Schar in Patent prosecution, USPTO.2 comments
The USPTO continues to intensify the hypertechnicality of its interpretation of the existing appeal brief rules. Today I received a notice that an application on appeal was abandoned, because the appeal brief was noncompliant with regard to two separate points. The kicker is that I had received a Notice of Non-Compliant Appeal Brief (who doesn’t?), but neither of those points were raised in the Notice.
Due process issues aside, the USPTO complained that I had not referred to the specification by page and line number in the Summary of Claimed Subject Matter. This is an application that I filed with paragraph numbers in the specification instead of line numbers, which has been standard practice for some time now. However, the “gotcha” in MPEP 1205.02(v) is that the Summary of Claimed Subject Matter “must refer to the specification by page and line number.” This requirement is contrary to standard practice and adds no value or clarity whatsoever to the appeal process, and serves solely as yet another way for the USPTO to dispose of appeals other than on their merits.
Nevertheless, in order to prevent the summary rejection of your appeal briefs, make sure that you count your line numbers and use them in your appeal brief. It doesn’t make any sense, but that’s the way it is.
In fact, forcing the Examiners to count line numbers on pages that are not line-numbered creates more work for them than simply pointing to paragraph numbers. Perhaps it would be a good idea to line-number the pages of the specification and also paragraph-number the paragraphs, for those who want to make things easier for the Office.
Alan MacPherson, RIP December 22, 2008
Posted by Brian Schar in General.add a comment
The world lost a great man earlier this month, when Alan MacPherson passed away. Alan was a top-notch attorney well-known in Silicon Valley and further afield, whose zeal and enjoyment of patent law were immediately apparent to anyone who knew him even a little. More importantly, he was a true old-school gentleman of a kind that is sadly hard to find these days. He was very generous to me personally; when I quit the Orange County office of his firm to take a position in-house in the Bay Area, he immediately offered to let me stay at his house in Palo Alto while my wife finished out her contract at her job and while I looked for a place for my wife and I to live. Alan was a friend, and he will be missed.
A memorial service is planned for January 14 at Stanford Memorial Church.
Tin-plated patents December 10, 2008
Posted by Brian Schar in General.add a comment
In an earlier post, I wrote in favor of a registration-based patent track, in which patents would be registered like copyrights and have no presumption of validity. One might call these tin-plated patents, rather than gold-plated patents.
One downside of this system is the potential for abuse by patentees who register patents with absurdly broad claims and then attempt to obtain a license. For example, ignoring the thousands of patents worth of prior art for the sake of discussion, a patent with a claim directed to “a medical device, comprising a stent” is the type of absurdly broad claim that I would expect at least one patentee to register and assert. At a minimum, any law that enabled a registration-based system should prohibit enhanced damages for willful infringement of a registered patent. The law could simply prohibit holders of a registered patent from licensing that patent. But that is a draconian penalty, given that such a claim could not withstand an early motion for summary judgment. Nevertheless, there is an economic penalty in fighting an asserted patent claim, and an unscrupulous patentee could attempt to sell a fully-paid-up license to an absurd claim for an amount equal to or less than the expected cost of litigation up through that early motion for summary judgment.
Despite that example of bad behavior, I would expect most drafters of registered patents to search the prior art and self-examine the claims, or contract that examination out to professional searchers or other law firms, in order to obtain defensible claims.
Perhaps a solution to the problem of potential abuse of registered patents is a “pre-Markman” phase of litigation, prior to discovery of any kind; indeed, discovery should be expressly prohibited during this phase (other than the relatively minor discovery associated with motions to dismiss, change venue, and so forth). During this pre-Markman phase, the court would determine if the claims are anticipated or obvious over the prior art. Of course, the cost of doing so would be significantly greater than the cost of obtaining a standard, examined patent from the USPTO, but the process would be completed significantly faster.
Another possibility is that patentees with registered patents would voluntarily undergo a reissue proceeding in which actual examination would take place by the USPTO for the first time. (The law could also compel such a reissue proceeding for registered patents prior to assertion in court.) In a sense, this is the ultimate in deferred examination, in which examination does not take place until litigation is expected. Such a procedure would also save patentees a lot of money, potentially, because only that small minority of patents that ever goes to litigation would ever be examined.
