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What to do when the prior art has errors October 24, 2013

Posted 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A recent nonprecedential PTAB case provided excellent guidance to applicant as to how to handle that situation.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, 2013

Posted 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, 2013

Posted 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!