It’s not personal. It’s business. February 4, 2009
Posted by Brian Schar in General, Patent prosecution.add a comment
Whether you prefer in-house or law firm practice is a function of your personality, your background, your goals, and a dozen other highly personal factors. I like in-house practice much better than I liked law firm practice, in part because I love being close to the technology, and working with the technical staff right at the conception of cool new inventions. I’ve been at my company for over seven years, because it’s the best job I’ve ever had. The people and the technology are fantastic, and I almost never have a day where I dread coming into the office.
What I didn’t expect to happen, and what’s happened over the last year or so, is that I’ve started to take USPTO actions personally. When you’re a hired gun, and there’s a new file on your desk every day from a different client, it’s easy to stay detached and just respond to office actions, no matter how silly or slapdash they may be at times. Often you don’t even know the client. But when you’re in house, particularly after you’ve been at a company for a long time, you know the client very well. You’re deeply involved in the business and its well being, and you believe in it and its potential. So when you get a bad office action, or some bizarre new USPTO procedure rears its ugly head, it’s not a detached, impersonal letter you can wave around the firm and laugh at with your fellow attorneys. Instead, it’s a threat to the business, and a personal insult.
Except, it’s not. It’s just an Office communication, for better or worse. What in-house lawyers need to remember is that it’s not personal. It’s business. (While I’m not a huge fan of “The Godfather,” it’s unquestionable that film is a huge repository of wisdom.) Being involved with the business rather than an impersonal, ivory-tower in-house lawyer is a good thing; it’s one of the reasons most of us in-house took that career path. But being so involved that you take USPTO communications personally does a disservice to the client and interferes with your ability to represent your client’s interests to the best of your ability.
I’m not a fan of new year’s resolutions; there’s no point in waiting for January 1 to roll around if you want to change something. But I am making a belated new year’s resolution to take a deep breath and say “it’s only business” before I open up one of those brown manila envelopes from the USPTO. If you’re a fellow in-house counsel having the same problem – whether you’re dealing with the USPTO, the SEC, or any other state or federal alphabet agency, I would suggest you do the same.
More on property staging and patent law January 27, 2009
Posted by Brian Schar in Patent prosecution, Television.add a comment
Last night I had the misfortune of watching part of an episode of “The Unsellables” on HGTV, which might be characterized better as “The Unwatchables.” Some poor woman couldn’t sell her house for a variety of reasons, so she had two realtors come into her house and give her some advice. Her kitchen and dining area were painted a cream color, which couldn’t possibly be a problem; all of the home decor and staging shows bray continually that all colors must be neutral to appeal to the mythical “average buyer.” However, the realtors clucked disapprovingly at those walls, saying that “neutral doesn’t mean bland.” What? I thought the two were synonymous. They went ahead and made her paint the walls a darkish shade of green, which I would characterize as uncomfortably close to the standard Avocado Green in which appliances and Formica countertops were available in the 70s.
The property owner and the realtors had a bit of a claim construction problem. The owner interpreted the language “neutral” as being white or cream colored. This interpretation is consistent with what one of ordinary skill in the art would think, as evidenced by this snippet from About.com: “Neutral usually means without color. Neutral colors such as beige, ivory, taupe, black, gray, and white appear to be without color, and yet in many applications these hues often have undertones of color.” Turning to Philips, an online dictionary defines “neutral” as “achromatic”, and “having no hue.” But the realtors who staged their house had a much different idea, interpreting “neutral” as medium/dark green. One could chalk this up to the imprecision of language. Or, more accurately, one could say that the realtors were importing their personal tastes and preferences into the word “neutral,” contrary to the usage of the term in the art. In that sense, they’re like a patent examiner that goes beyond the “broadest reasonable construction” of a claim term to a “broadest possible construction” of a claim term that goes so far as to strip the claim term of all meaning. If there were a Federal Circuit for home staging or bad TV programming, the smart bet would be on the property owner’s construction of the word “neutral.”
The property owner also had magnets on her fridge. For shame. I’m sure that a handful of magnets, and not the deep recession that most of the world is in, was the magic thing that kept her from selling that house.
At some point in February I will publish the next entry in my MPEP 2143 series. Please do not hold your breath.
Hello Estonia! January 6, 2009
Posted by Brian Schar in General.1 comment so far
Upon reviewing the dashboard to this blog, I was surprised to discover that American IPA had been added to the blogroll of IP Estonia, an IP blog relating to Estonian IP law. As they say, “IPEstonia – this is our little hobby corner here – to share intellectual property information and mainly introduce what’s going on in Estonian IP.” So if you need to know about Estonian IP, that sure looks like the place.
How they found my obscure blog, I’ll never know, but I appreciate the link. Thanks, Estonia!
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.
You can’t cover a SarBox with a TARP November 26, 2008
Posted by Brian Schar in General.add a comment
I had a thought this morning with regard to the secrecy with which the Federal Reserve has helicopter-dropped money fresh off the printing press to a variety of publicly-traded companies, and the additional secrecy about the collateral given by those companies to the Fed. I would think a recipient of such funds would be required to file an 8-K, at a minimum, in order to comply with securities laws. Further, the receipt of funds from and transfer of collateral to the Fed would have to be accounted for and audited in some manner, and such accounting and auditing is not possible in an environment of secrecy. I wouldn’t want to be a lawyer at one of the companies accepting funds under the TARP – the compliance risks are enormous. If one of the recipient companies goes belly up anyway, I predict Enron-like outcry and Enron-like prosecutions of the CEO, CFO and GC – the three people who roll over or go to jail.
MPEP 2143.01(VI) November 26, 2008
Posted by Brian Schar in Patent prosecution, USPTO.1 comment so far
MPEP 2143.01 tells you exactly how to overcome a 103 rejection, setting out a number of different reasons that an applicant can use to rebut an alleged prima facie case of obviousness set forth by the Examiner. A post below discusses MPEP 2143.01(V), which requires that a proposed modification of a prior art invention cannot render that invention “unsatisfactory for its intended purpose.” This is a powerful tool for addressing an obviousness rejection, because Examiners often simply pick out claim elements in the prior art without considering how those elements would or could work together for an intended purpose, or any purpose at all.
Another powerful tool is MPEP 2143.01(VI), which cautions Examiners that “[i]f the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” Summarizing In re Ratti, 270 F.2d 810 (CCPA 1959), this section of the MPEP provides an example of an oil seal that included a “bore engaging portion” having resilient fingers inserted in a resilient sealing member. In re Ratti itself specifies that a shaft is located in the bore. The primary reference disclosed a rigid bore engaging portion “reinforced by a cylindrical sheet metal casing.” The primary reference “taught the device required rigidity for operation, whereas the claimed invention required resiliency.” Turning to In re Raffi itself, the secondary references taught resilient gaskets and the like in a variety of arts. Combining such resilient gaskets with the rigid sealing member of the primary reference “would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate,” according to MPEP 2143(VI). That is, if the primary reference describes a claim element having a particular limitation, and the secondary reference or references describe the same claim element having the opposite limitation, or a different limitation, the principle of operation of the primary reference would have to be changed in order to combine the references, in violation of MPEP 2143(VI).
Like its sibling MPEP 2143.01(V), MPEP 2143.01(VI) is particularly useful in dealing with cafeteria-style pick-and-choose rejections. An Office Action may reject a claim that includes element A on the grounds that the primary reference discloses an element similar to A and a secondary reference discloses element A as claimed, and the primary reference could be modified according to the secondary reference. However, the Examiner likely did not consider how the two references could be physically combined. If the proposed combination of the references would cause a change in the principle of operation of element A, the rejection is improper and no prima facie case of obviousness has been made. This argument obviously will be more successful the more different that element A is between the references; the situation as in In re Ratti where element A is exactly the opposite in the secondary reference as in the primary reference exemplifies that.
An Office Action also may reject a claim that claims the combination A+B under a primary reference on the grounds that the primary reference describes element A and the secondary reference describes element B. The incorporation of element B into the particular device or method of the primary reference also may change the principle of operation of that primary reference in violation of MPEP 2143.01(VI). As the number of references and their unrelatedness increases, the greater the chances that the proposed modification of the primary reference requires a change to its principle of operation.
If one is inclined to submit a declaration from one skilled in the art in response to an obviousness rejection, this may be a useful situation in which to do so.
Next up: MPEP 2143.01(IV).
Property staging and patent law November 5, 2008
Posted by Brian Schar in Federal Circuit, Television, USPTO.2 comments
I end up watching a lot of HGTV, for reasons irrelevant to this blog. One of my least favorite shows is “The Stagers.” Property stagers purportedly redecorate the seller’s home to make it appeal to the Average Buyer, theoretically causing the home to sell faster and for a higher price. However, the end of “The Stagers” puts the lie to its own premise, by showing the list price of the home, the cost of staging, and the final sales price. I’ve never seen one of the staged homes sell for more than the list price plus the staging cost, so staging was a waste in every case.
I started thinking about the concept of the Average Buyer a few weeks ago. The reality is there is no such person. All buyers have different tastes, different needs and different wants. Being a patent attorney, I also started thinking about the similarity between the mythical Average Buyer and the mythical Person Having Ordinary Skill in the Art (PHOSITA). The PHOSITA is constructed out of thin air by lawyers and judges. Projected onto the PHOSITA are the arguments and thoughts of each party – the fictional PHOSITA does not have a mind of his own. The Average Buyer of real estate is similar – a fictional entity onto which the subjective tastes of the stager and the seller’s agent are projected.
What can you do with this information? Nothing at all, really – other than think very carefully before you decide to stage your house if you’re a seller, and to remember that you’re not buying the furniture and that paint is cheap, if you’re a buyer.
I’ve been promising it forever, but a blog update regarding MPEP 2143 is on the way. Maybe next week.
Update: Check your MPEP October 21, 2008
Posted by Brian Schar in Patent prosecution, USPTO.add a comment
I received an email from Patent Publishing LLC this afternoon, explaining the MPEP misprint:
“The PTO had originally posted the incorrect file for the data transfer when we received the data. It has been corrected online and now the Editor of the MPEP has informed us that they are expecting to do another release in November.”
They will be replacing this misprinted batch after the November release. Until then, the prudent practitioner will bookmark or print out section 2100 of the MPEP from the USPTO website.
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