Freedom-to-Operate analysis is traditionally utilized to clear products prior to release, upon becoming aware of a threatening patent, or upon receipt of a communication or complaint asserting infringement.  However, Freedom-to-Operate analysis is also useful for other purposes, such as with regard to patent pools.

Patent pools are licensing organizations that holders of technology related patents contribute for the purposes of the pool.  The purposes of a pool may be many, but generally include providing a licensing clearinghouse for patents essential to operating or implementing certain technology to simplify the licensing process and thereby encourage adoption of the technology.  Patent pools operate as agreements between patent holders to provide industry access to essential patents on standardized terms.  The most common patent pools are formed rom patents essential to an industry standard, such as the MPEG standards for video compression and encoding.  A patent pool agreement is formed between at least two patent holders to license one or more of their patents to one another or to third parties, typically on standardized terms.  The agreement contemplates how patents essential to the pool are determined and added to the pool and how licensing revenue is to be distributed amongst pool members.

Freedom-to-Operate analysis is useful in at least four ways with regard to patent pools.

1.  Confirming Need for a Pool License
First, a Freedom-to-Operate analysis is useful in determining whether to take a license from a patent pool.  While a patent pool may be directed to a particular area of technology that a product may be related to, it is important to consider whether taking a license is even necessary in view of the patents in the pool.  A pool is likely to take a broad view of the scope of the pooled patents, but due diligence requires that a Freedom-to-Operate analysis be performed to at least confirm the claim breadth.  Just because a patent pool believes the pooled patents are essential to the subject technology does mean the engineers and scientists on your team are not capable of identifying alternative solutions.

2.  Identifying Technology to Utilize in a Product
Second, and earlier in the product development lifecycle, a Free-to-Operate analysis can be helpful in fully identifying technology available for licensing from a patent pool.  In most technology areas where there are patent pools, there will be some technology-related patents held by non-pool members.  Avoiding non-pooled patents may be a goal as the licensing terms and complexity of licensing from multiple parties increases the overall complexity of bringing products to market.  By finding the bounds of the patent protection afforded by a pool license in view of patents held by others can be used as a guide for engineers and scientists in product development.  Further, and prior to direct product development efforts, business-types can be involved to help determine product and market feasibility in view of pool license costs and other factors such as projected manufacturing costs and projected product margins and volume.  Thus, through evaluation of pool scope via Freedom-to-Operate analysis facilitates timely and well informed business decisions.

3.  Identifying Pool Candidates
Third, when a patent related to a growing technology area, knowing where the patent fits within the patent landscape is a very good idea.  Determining where the patent sits in the landscape requires a Freedom-to-Operate type analysis of patents in the particular field.  The result of this analysis provides a broad perspective of not only where the patent sits in the landscape, but the result is also an input for determining whether joining a patent pool would be advantageous.  For example, if the result of the Freedom-to-Operate type analysis is that the patent is quite essential to practicing in the particular technology field, joining a pool may be advantageous so long as the terms of the pool are agreeable.  In such instances, a patent pool may encourage adoption of the technology covered by the patent and thereby increase licensing revenues due to licensing volume.  Further patent pools are typically administered by professional organizations with experience in administering patent pools including revenue collection, accounting, and revenue distribution.  As a result, licensing of the patent is simplified and may result in a new and relatively simple revenue stream.

However, this same result identifying that a patent is quite essential to practicing a particular technology may be used to support a different position with regard to patent pooling.  For example, if a patent is a foundation upon which all or a large number of user of the technology would need to rely and the holder is able to competently operate a patent licensing business, it may be more beneficial to license the patent or the holder’s related patents outside of a patent pool.  In this situation, those desiring to make, use, or sell products relying on the technology foundation of the patent would need to obtain a license.  Thus, by foregoing the patent pool, the patent holder may be in a better position to extract greater licensing revenue from the market.

In either situation, a decision to join or forego a patent pool must be an informed decision that can be made properly after performance of a Freedom-to-Operate type analysis of a patent landscape.

4.  Contributing Patents to a Pool
Fourth, once a decision to join a patent pool has been made, the more difficult the tasks become.  There are two primary goals when contributing patents to a pool.  The first is successfully asserting the essential nature of your own patents to the pool.  The second task is ensuring that patents of others accepted into the pool are truly essential to the technology of the pool, such as an industry standard.  Revenue collected by a pool is typically distributed according to share allocation.  Shares are typically allocated based on a number of patents a party contributed to the pool.  Thus, the more patents you contribute, the greater revenue share you receive.  The more patents contributed by others, the more your shares are diluted and your revenue stream decreases.  This is a balancing act as the goal of the pool is generally to receive contributions of all patents essential to a technology while keeping out non-essential patents.  Regardless, supporting the position that your patents are essential and making informed decisions about the essential nature of the patents of others are enabled through Freedom-to-Operate type analysis.  The outcome of a thorough Freedom-to-Operate type analysis provides insight into claim scope and when considered in view of the technology of a patent pool, such as an industry standard (e.g., Long Term Evolution (LTE), 802.11n, etc.), the essential nature of the patents under study becomes apparent.  Absent such detailed analysis, the essential nature of any patent is not based on a truly informed analysis; rather it is based on mere speculation.

Thus, while traditional Freedom-to-Operate analysis is of course useful in clearing products, the same analysis and the framework of that analysis is very useful when considering patent pools.  For how important such analysis can be, consider my posting to the Patents4Software blog regarding the $4.5 Billion auction of the Nortel portfolio.

A great one-day CLE program offered by AIPLA is slated for August 16th, 2011 in St. Paul, Minnesota.  Timely topics and great speakers such as Carl Moy, Jay Erstling, Tim Bianchi, Alan Kasper, Steve Kunin, Q. Todd, among others.  See program information at http://www.aipla.org/events/calendar/show_seminar/Documents/ecplBrochure.pdf

A provisional patent application filing date may be used in rejecting a patent application according to In re Giacomini (Fed. Cir., No. 2009-1400, 7/7/2010).  I did not find this opinion startling as I have been seeing rejections in software cases based on provisional application filing dates for quite some time.  However, I am very pleased to see this case.  The opinion states, “An important limitation is that the provisional application must provide written description support for the claimed invention.”  Id. slip opinion at 6.  While of course this is true, I have run into a few examiners that have provided loose assertions of a later filed, published utility application but based on the earlier filing date of the prior provisional application.  When I traversed the assertion of the provisional application filing date as the provisional application failed to provide sufficient written description support, the examiners essentially ignored the traversal.  Now we have a Federal Circuit decision in our arsenal for citation to force examiners to do more than merely identify an earlier provisional application filing date and actually provide citations to support in a provisional application of their rejections.

(As previously posted on Patents4Life - www.patents4life.com) 

The disposition of Bilski rested on a holding that Bilski’s claims were directed to an abstract idea – hedging. (http://www.supremecourt.gov/opinions/09pdf/08-964.pdf)

The root case for “abstract” is Le Roy v. Tatham, 55 U.S. 156, 174-75, 185-86 (1852) (http://supreme.justia.com/us/55/156/case.html).  This case is cited in Bilski on page five of Justice Kennedy’s majority opinion.  Here are a few excerpts:

The word "principle" is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application as to mislead. It is admitted that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery, a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself under the patent laws. The same may be said of electricity and of any other power in nature, which is alike open to all and may be applied to useful purposes by the use of machinery.  Le Roy, 55 U.S. at 174-75.

That the main merit -- the most important part of the invention -- may consist in the conception of the original idea -- in the discovery of the principle in science or of the law of nature stated in the patent, and little or no pains may have been taken in working out the best mode of the application of the principle to the purpose set forth in the patent. But still, if the principle is stated to be applicable to any special purpose, so as to produce any result previously unknown in the way and for the objects described, the patent is good. It is no longer an abstract principle. It becomes to be a principle turned to account, to a practical object, and applied to a special result. It becomes then not an abstract principle, which means a principle considered apart from any special purpose or practical operation, but the discovery and statement of a principle for a special purpose -- that is, a practical invention, a mode of carrying a principle into effect. That such is the law [he observes] if a well known principle is applied for the first time to produce a practical result for a special purpose has never been disputed, and it would be very strange and unjust to refuse the same legal effect when the inventor has the additional merit of discovering the principle as well as its application to a practical object.  Le Roy, 55 U.S. at 185-86.

Considering that the abstract idea in Bilski is hedging, which in view of Le Roy v. Tatham equates an abstract idea to a law of nature or mathematical formula, hedging is essentially viewed by the Court as equal to a law of nature – a basic principle.  Laws of nature and mathematical formulas are actually not abstract in the sense of being loosely defined, which is how I initially read “abstract ideas” in Bilski.  Instead, the opposite is true.  A claim to an abstract idea is actually very specific, such as a claim to the Pythagorean Theorem, addition, electromagnetism, or even gravity.  Those are very specific things just as hedging is very specific – or concrete, but I will get back to that.  A thesaurus is quite helpful in finding a single word with the same meaning as abstract that is more easily understood.  Conceptual.  An abstract idea is accurately considered to be conceptual as in, “The claim of Bilski was directed at the concept of hedging.”  With this definition in mind, the abstract idea holding makes more sense.  But, it turns out that abstract ideas are not actually abstract at all. 

Nevertheless, I still think the Court took a few mental leaps.  For example, hedging didn’t necessarily always exist.  Hedging is a method developed by man to mitigate risk.  Certainly hedging has been around for centuries.  So it must be that when a basic construct created by man becomes so well known and commonly practiced, the concept becomes principle along the same lines as gravity.  But considering the precedent of Chakrabarty where anything under the son made by man is patent eligible, wouldn’t Bilski have been better, or at least more simply decided under § 102 or § 103?  Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)( http://supreme.justia.com/us/447/303/case.html).  Otherwise it seems there is another test missing in the reasoning of Bilski that can be used to tell us when a construct of man becomes so ingrained that the construct is instead conceptual to a level of being a principle.

So it seems that an abstract idea is simply a conceptual process lacking an application that does not preempt all uses thereof.

In view of the June 28, 2010 memo from Robert Bahr (USPTO Acting Associate Commissioner for Patent Examination Policy) providing post-Bilski process claim examination instructions, when a process claim does not meet the Machine or Transformation test, the claim is to be rejected under § 101 unless there is a clear indication that the claim is not directed to an abstract idea.  (http://www.patentbuddy.com/showPublication?pubId=1704)That leads me to my next point – traversal of an assertion that a claim is directed to an abstract idea.

Traversing an Assertion that a Claim is Directed to an Abstract Idea

To traverse a holding that a process claim is directed to an abstract idea, it seems necessary to be able to show how the claim does not preempt all uses of the process involved in the claim.  Under Flook, the showing must be more than a restriction to a particular field of use and involve more than token post-solution components.  Parker v. Flook, 437 U.S.  584, 590 (1978)(see footnote 11)( http://supreme.justia.com/us/437/584/case.html).

Another possible way to traverse an assertion that a process claim is directed to an abstract idea is to attack the grounds upon which the process is considered to be an abstract idea.  For example, the majority in Bilski cited Judge Rader’s dissenting opinion where he asserted that “[h]edging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”  The tactic here may be to lodge a demurrer as to the asserted facts and traverse the conclusion that the construct of man has reached the point of being an abstract idea, a.k.a. a principle.

But Wait a Minute…

My investigation into the rightful meaning of “abstract idea” lead me to a thesaurus as previously mentioned.  I noted that “concrete” is an antonym of “abstract.”  That reminded me of the useful, concrete, and tangible (UCT) test from State Street … the same case the Bilski Court refused to endorse.  Could it be that the reason the UCT test didn’t work well is that the concrete portion of the test was not definitionally understood as the opposite of an abstract idea?  Perhaps with the background of Bilski and a proper definitional context for “concrete,” the best way forward would be for the Federal Circuit to take the Supreme Court up on its challenge for “development of other limiting criteria that further the purpose of the Patent Act” by affirming the UCT test pronounce by Judge Rich (whom by the way Justice Stevens was so quick to quote in his contrarian concurring opinion).

In affirming the Federal Circuit’s en banc decision in Bilski v. Kappos, a 5-4 majority of the Supreme Court found Bilski’s claims ineligible for patent protection under the threshold determination of 35 U.S.C. § 101.  The majority found that the claims were directed to an abstract idea which is a judicial exception to patent eligibility.

Nevertheless, citing Chakrabarty and Thomas Jefferson, the majority acknowledged that Congress plainly contemplated that the patent laws would be given wide scope to ensure that “ingenuity should receive liberal encouragement.”  The majority later continued by acknowledging that “times change” and “[t]echnology and other innovations progress in unexpected ways.”  Importantly, a plurality of the Justices reasserted, citing J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., that “[s]ection 101 is a ‘dynamic provision designed to encompass new and unforeseen inventions.’”  Under this reasoning, the majority did not accept that the “Machine or Transformation” test applied by the Federal Circuit as the only test for patent eligibility, but, the majority failed to articulate any other tests.

In explaining its holding that Bilski’s claims were directed to abstract ideas, a plurality of the Justices realized that “the information age” “puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law.  With ever more people trying to innovate and thus seeking patent protections for their innovations, the patent law faces a great challenge….”  The majority failed to acknowledge that this inventive activity is the type of activity the patent system is intended to promote.  See Constitution, Article 1, § 8, cl. 8.  However it is important to note that the patent examiner of the Bilski patent application was up to the “great challenge.”  The patent examiner rejected Bilski’s application explaining that it merely manipulated an abstract idea – the same grounds upon which the Court unanimously decided the ineligible nature of Bilski’s claims.  This is important to note at a time when the United States Patent and Trademark Office is focused on patent quality.  Here, in a high profile, hotly contested case, the patent examiner made the right decision.

While the Bilski claims to a method of hedging commodities was held to be an abstract idea, the majority did not go so far as to preclude patentability of all business methods.  To the contrary, the majority stated that “[s]ection 101 … precludes the broad contention that the term ‘process’ categorically excludes business methods.”  Thus, in the wake of the Bilski decision, business method patenting still has a breath of life.  However, it is unclear what test(s) for patent eligibility might apply.  It is clear though that a business method claim must be more than an abstract idea, mathematical formula, or law of nature.  Beyond that, there is an abyss of uncertainty.  The majority in Bilski does provide guidance that claims passing the “Machine-or-Transformation” test will pass the threshold question for patent eligibility of Section 101.  This also informs the Patent Bar that method claims of software inventions are still eligible for patent protection under at least the same “Machine-or-Transformation” test being used since the Federal Circuit’s en banc decision in Bilski.  While failing to endorse the “useful, concrete, and tangible” test of the Federal Circuit State Street decision, the majority opinion instructs the Federal Circuit to develop “other limiting criteria that further the purpose of the Patent Act and are not inconsistent with its text.”  Thus, we will anxiously wait to see what other patent eligibility tests applicants will be faced with. 

However, the question in the Mayo petition for certiorari in Mayo v. Prometheus is left unsettled.  In the Prometheus case, the Federal Circuit found compliance with the “Machine-or-Transformation” test inherent in the claims.  But, at times in the Federal Circuit’s Prometheus opinion the inherent compliance with the “Machine-or-Transformation” test seemed tenuous, at best.  Absent compliance with the “Machine-or-Transformation” test, patent eligibility in Prometheus rests on a law of nature – a measured presence of a substance in a patient sample providing insight into patient health – a correlation which is arguably naturally occurring.  Nevertheless, I expect Mayo’s Petition for Cert. to be remanded by the Supreme Court for further consideration in view of today’s decision in Bilski.  (Subsequent to writing this, the Supreme Court granted cert. in Prometheus, vacated, and remanded the case to the Federal Circuit for further consideration).

Also, the USPTO provided the Examining Corps instructions on the Bilski v. Kappos decision on June 28, 2010.  The instructions direct the Examiners to continue use of the Machine or Transformation test with regard to § 101 “using the existing guidance” unless it is clear the claims are directed to more than an abstract idea.  These instructions can be viewed here.

Considering the opinion and the subsequent instructions to the Examining Corps, I don’t think much has been accomplished in the past two or so “Bilski years.”  We have all been modifying our practices, writing claims, and drafting applications differently, and consuming a lot of time all because of Bilski.  However, no real progress has been made.

For example, I believe the majority opinion in Bilski really stand for three principles:

1.     No business method exception;

2.     Claims must positively recite the invention in more than an abstract manner; and

3.     The Machine or Transformation test is an important test, but it is not the exclusive test.

Of these three principles, we already knew there wasn’t a business method exception and that we can’t claim an abstract idea.  Also, most of us knew number three as evidenced by the extensive amicus briefing, but the Federal Circuit was somehow confused.  So yesterday’s opinion really only corrects the confusion at the Federal Circuit, but otherwise seems to restate what we already knew.  So I ask the rhetorical question, “What did this Bilski exercise accomplish?”

The slide deck from a presentation I gave on October 29, 2009 regarding the patents that are actively being asserted by Picture Patents and Papst Licensing is available at this link or by going to the Reference Info tab of this group where the slide deck can be downloaded.  This presentation was the third is a series of presentation about the most frequently litigated patents of 2008.  There are three more presentations in this series and can be viewed over the Internet through a webinar.  If you are interested in this series of presentations and would like an invitation to the next webinar, please contact Jim Hallenbeck at jhallenbeck@slwip.com or 612/373-6938.

Here is a link to an interesting video report on WSJ.com.  The topic is more with regard to copyright licensing, which is quite a bit off the normal topics covered in Tips & Tricks, but the general idea is conceivably applicable to patent licensing as well.  Basically, licensing contract authors failed to contemplate the Internet when they drafted copyright licenses up until 1994 if not later.  Then when Napster and Internet radio hit, the recording industry needed to negotiate additional licenses to cover such Internet transmissions and media.  To avoid such occurrences again in the future, some attorneys, at least according to this video, are drafting licensing agreements to the “Universe” and “in perpetuity.”  Go find a first-year law student to brush up on the rule against perpetuities, and then go read about black holes.  If a black hole has such a high gravitational pull so at to trap all light and energy preventing it from escaping, wouldn’t it be impossible to detect infringement?  Also, if you went to the forum of the defendant to prosecute the litigation, your return trip might be difficult.  Nonetheless, the link for your enjoyment.

Take a look at patent 7,428,095 if you are curious.  You can pull up the file history in Public PAIR, so I am not divulging any secrets from cases either I or my firm worked on.  The application, which is assigned to the United States Navy, was filed on June 1, 1982 and issued September 23, 2008.

I recently spoke with a couple of Examiners from the 3600 Art Unit at the United States Patent and Trademark Office.  We were reviewing a set of claims within an Examiner’s Interview in view of the recent 35 U.S.C. § 101 Examination Guidelines and the Primary Examiner had an interesting observation about the use of the term “processor” within a system claim.  He first noted that a good way to consider the meaning attributed to a term in a patent application is to look at other patents and patent applications similarly classified by the Patent Office.  That sounds fair enough, so long as the term “processor” is not explicitly defined in your own specification.  He then asserted that when you look at other patents and patent applications flowing through the 3600 art unit, you will see that the term “processor” is being defined as including a human mind.  The significance of this is that mental steps are not given patentable weight and that is supported by the recent Prometheus Labs v. Mayo decision from the Federal Circuit that stated mental steps are unpatentable per se.

Whether you agree with the view of this Primary Examiner or not, if you have an application pending before the 3600 art unit or you are drafting an application that has the potential to be classified in the 3600 art unit, keep this in mind.  If you need to claim a processor or foresee a potential need to amend your claims to include a processor, be sure to include support for hardware processors, such as a microprocessor or an application specific integrated circuit.  If you are amending your claims or considering claims that recite “a processor,” you may want to say “a microprocessor” or a “hardware processing unit.”  Something to that effect.

The Federal Circuit today (9/16/2009), in the Prometheus Labs v. Mayo opinion, reversed the Southern District of California’s ruling that claims directed to a method of measuring metabolites are not patent eligible under 35 U.S.C. § 101.  The District Court held that the claims were directed to non-patentable subject matter because the claims involved a correlation between levels of “6-thioguanine” in a blood sample from a patient and “a gastrointestinal disorder” the patient may have.  That correlation was found to be a natural phenomena and the claims wholly preempted the use of the phenomena.  The Federal Circuit reversed the District Court holding stating that the proper inquiry under § 101 is whether these methods meet the Supreme Court’s machine or transformation test articulated in Benson and Diehr, and applied in Bilski, and if so, whether the machine or the transformation is central to the purpose of the claims.  The Federal Circuit held that the methods transform an administered drug into a different state or thing and that the central purpose of the claimed methods was that transformation.  A more complete briefing of the case can be found on Patents4Life and Patently-O, but one thing I find interesting is that the example claim provided in the opinion provides an input of a drug to a subject and making a determination of what amount of the drug to subsequently administer based on how the subject transformed the drug.  That transformation is metabolic.  Thus, the transformation is performed by the organs of the subject involved in the metabolic transformation. 

However, the Federal Circuit also states that mental steps are not patent-eligible per se.  On the surface, this seems a bit odd.  A mental step involves receipt of information in the mind which transforms that information to arrive at a decision.  A decision will typically result in taking an action, or forbearing therefrom.  Resolving how a transformation performed by one bodily-organ is a patent eligible transformation while transformation by another is not is not is difficult.  Does the difference rest in the media of input and output?  Drug in – blood out versus information in – action out?  Or is it more of the court’s perceived value of methods of medical treatment being greater than the value of methods of doing business?

Comically, in view of recent Federal Circuit opinions, it seems the owner of a business method patent may revalidate their invalid patent if they were to consume the patent, take blood samples to measure metabolic changes, and make a determination therefrom.

Here is your chance to purchase, or at least see, a piece of the fruits of the Jerome Lemelson estate.  The Osprey Estate, built by Mr. Lemelson and his wife Dorthy on Lake Tahoe’s north shore in 1995, is the featured “House of the Day” of the Wall Street Journal.  Take a peek at how your clients’ money has been spent!  I am not sure, but I suspect there may be a submarine in Lake Tahoe that may be included in the $34 million asking price.

http://online.wsj.com/article/SB125302724795512223.html

A scenario that is occurring on a more frequent basis is with regard to powers of attorney that were filed in a parent matter that listed more than ten practitioners.  Under the current rule of 37 CFR 1.32(c)(3) which took effect June 25, 2004 (See 69 FR 29865-29880, published May 18, 2004), a power of attorney can list only ten or fewer patent practitioners to whom power of attorney is granted.  Although powers of attorney filed with applications prior to June 25, 2004 could list more than ten practitioners and were/are completely valid, the USPTO is no longer recognizing such powers of attorney when more than ten practitioners are listed.  This is most likely to arise as an issue in a continuing or divisional application that was filed relying on the power of attorney submitted before the limit of ten practitioners was imposed.  As a result, if you file a terminal disclaimer or other document that explicitly relies on the earlier power of attorney, that document is unlikely to be accepted by the USPTO.  Thus, prior to filing documents such as terminal disclaimers where the power of attorney was prepared prior to June 25, 2004, obtain a new power of attorney to avoid delay in view of 37 CFR 1.32(c)(3).

When electronically filing an application, it is a best practice to download a copy of the application from Private PAIR shortly after filing and reviewing the download to ensure the application was filed properly.  For example, reviewing the application to ensure all pages of the specification and all figures were included in the uploaded document.  If you note an error of omission, you can easily correct the error by filing a preliminary amendment on the same date as the filing date.  See http://www.uspto.gov/ebc/portal/efs/legal.htm at section XXIV which provides:

XXIV. What if the applicant electronically files an application via EFS-Web, and on that same day, realizes that they have inadvertently omitted a document from the application?

One advantage of filing an application via EFS-Web is that the applicant may view the submission in PAIR and file a paper directly into the application on the same day as the filing date of the application.  In certain situations, applicant may correct an error by filing a missing item(s) on the same day as the filing date of the application.  Applicant, however, may wish to file another new application in other certain situations.  For example:

(1) Oath or Declaration - Applicant may file an executed oath or declaration on the same day as the filing date as the application via EFS-Web.  The oath or declaration will not be considered late and thus a surcharge for filing a late oath or declaration will not be required. 

(2) Filing Fees - Applicant may file the filing fees (e.g., the basic filing fee, search and examination fees, application size fee, or excess claims fee) on the same day as the filing date of the application via EFS-Web.  The fees will not be considered late and thus a surcharge for filing the filing fees will not be required.

(3) Non-publication request - Since 37 CFR 1.213(a)(1) requires any non-publication request to be filed with the application, applicant cannot simply file the non-publication request to correct the error.  If applicant does not wish to have the application publish, applicant must file: (a) a new application with a nonpublication request; and (b) file a petition for express abandonment to avoid publication under 37 CFR 1.138(c) and fee under 37 CFR 1.17(h) in sufficient time to permit the appropriate officials in Pre-Grant Publication Division to recognize the abandonment and remove the application from the publication process. 

(4) Drawings - Applicant may file the missing drawings as a preliminary amendment on the same day as the filing date of the application. The drawings will be considered as part of the original disclosure of the application.  See 37 CFR 1.115(a)(2).  If the application, however, were filed with the “wrong drawings,” the “wrong drawings” would still be part of the original disclosure.  A preliminary amendment could be filed on the same day as the filing date of the application adding the correct drawings and deleting the “wrong drawings.”  An amendment adding new drawings and deleting the “wrong drawings,” filed on a day after the filing date of the application, may raise new matter issues.  Certainly, if applicant wishes to have an application without the “wrong drawings” being a part of the original disclosure, applicant should file a totally new application (e.g., new specification including claims(s) and fees) comprising the correct drawings, and, if desired, expressly abandon the original application.

(5) Claims - Applicant may file the claims as a preliminary amendment on the same day that applicant filed the application papers.  Please note that the application will not be entitled to a filing date until applicant files at least one claim in the application.

(6) Part of the specification - Applicant may file the missing portion of the written description as a preliminary amendment on the filing date of the application.  Such amendment will be considered as part of the original disclosure.

If applicant files another new application to correct the error, applicant will have two applications.  Applicant may continue to prosecute the first application that has the error or abandon the first application by filing a declaration of express abandonment.   Please note that any fees paid in the first application will not be refunded or applied to the second application.  Applicant may request refund of the search fee and any excess claims fees (but not the basic filing fee, examination fee, and application size fee) paid in the first application if the application was filed under 35 USC 111(a) on or after December 8, 2004 and the applicant files a declaration of express abandonment in accordance with 37 CFR § 1.138(d). 

Another option is available when the error is not one of omission, but rather one such as having pages out of order in the specification.  A communication identifying the EFS ID number of the original filing with a description of the error and a copy of the specification in the proper order will correct the error.  You may follow up with a phone call to the Electronic Business Center at (866) 217-9197 and request that the erroneous document be removed from the file as well.  The concern about making such a correction is not one of lacking enablement as your pages are most likely numbered along with the paragraphs, but rather to ensure the application is published accurately and avoiding any possible arguments that a clever attorney may raise later in litigation.

43 Briefs filed with regard to Bilski before the Supreme Court plus the petition for cert, brief in opposition to cert, and the petitioners reply to the opposition.  All in a single PDF Portfolio for download here.

In the recent Blackboard, Inc. v. Desire2Learn, Inc. (Fed. Cir. 2009) decision, the Federal Circuit contemplated means-plus-function claims under Section 112, paragraph 6, in view of what is required to support such claims under Section 112, second paragraph to avoid indefiniteness.  Page 20 of the opinion states, “If the specification does not contain adequate disclosure of the structure that corresponds to the claimed function, the patentee will have ‘failed to particularly point out and distinctly claim the invention….” (Citing In re Donaldson Co., 16 F. 3d 1189, 1195 (Fed. Cir. 1994)(en banc)).

To very briefly provide a bit of background, Blackboard, the patent holder, described a function and asserted that a general purpose computer was the structure that performed the function.  The question is whether or not a general purpose computer is sufficient structure under Section 112, paragraph 2 to provide sufficient disclosure to be considered definite when ascertaining the scope of the means-plus element of the claim.  The Court found that a general purpose computer is not sufficient structure to meet the requirements of Section 112, paragraph 2 when ascertaining the scope of a means-plus element of a claim stating, “’any general purpose computer must be programmed’ and … relying on such general structure is equivalent to saying ‘that the function is performed by a computer that is capable of performing the function.’” (Citing Aristocrat Technologies Australia Pty Ltd. V. International Game Technology, 521 F.3d 1328, 1331 (Fed. Cir. 2008)).  The Court stated that, “[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.” Page 23.  Citing the Finisar Corp. v. DireTV Group, Inc. (523 F. 3d 1323, 1340-41 (Fed. Cir. 2008)) decision, the Court also provided that, “Simply reciting ‘software’ without providing some detail about the means to accomplish the function is not enough.”

Blackboard argued that the description was sufficient so that a person having ordinary skill in the art, based on what has been around for a long time in the field, could construct the invention claimed in the means-plus format.  The court replied by stating that this argument goes to enablement under the first paragraph of Section 112 and not the second paragraph to allow a person to ascertain the scope of the claim.  The Court more accurately framed the question as whether the specification contains a sufficiently precise description of the corresponding structure to satisfy Section 112, paragraph 6 (i.e., also paragraph 2), not whether a person of skill in the art could devise some means to carry out the recited function.

A patentee cannot avoid providing specificity as to the structure because someone of ordinary skill in the art would be able to devise a means to perform the claimed function.  To allow that form of claiming under Section 112, paragraph 6, would allow the patentee to claim all possible means of achieving a function.

This portion of the Blackboard opinion is Section 3 on pages 19 – 26.  The Opinion can be downloaded under the Reference Info tab of this group.

My take away from this case is

1.       If you include mean-plus claims under Section 112, paragraph 6, include embodiments of algorithms including great detail.

2.       Describe the algorithms connected to structural elements, such as processors, specific processors if possible, various hardware components and potential interconnections, etc.

3.       If a specific algorithm, or portion thereof, can be embedded as firmware or as specific chip-logic, describe it as such.

4.       Tie your means-plus claims to specific portions of the specification so it is clear later on where the support is.  Double check this support to ensure it is sufficient to render the claim clear not only to the Examiner, but also to a court should the claim ever be enforced.  If there is potential for ambiguity, tighten it up or describe another embodiment.

At the same time, really think through including a means-plus-function claim.  Remember if you appeal a means-plus-function claim to the Board of Patent Appeals and Interferences, you have to cite each portion of the specification providing support for the means.  This requirement presents a “great” opportunity for you to create claim-limiting estoppel should you fail to cite a portion of the specification that does actually provide support.

I am not very bullish on means-plus-function claims for computer implemented inventions.  Means plus function claims present claims with additional burdens for enforcement, create additional burdens on appeal while providing an opportunity to create estoppel, and, in view of the Blackboard decision, impose what is seemingly greater burden on applicants to file an adequate specification.

Although means-plus-function claims for computer implemented inventions can be useful and I am sure you can find a situation where such a claim makes perfect sense, be extra careful….  Doing so may be equivalent to playing with fire, all in return for a claim having limited scope.

Occasionally in patent prosecution we are presented with tough situations.  One such situation is receipt of a § 102 rejection of an independent claim based on a patent owned by the assignee of the application you are prosecuting.  Arguing against the teachings of the commonly owned reference is usually not an option as you are likely to create estoppel and risk misstating the teachings of the commonly owned reference that you may be attributed advanced knowledge of, raising inequitable conduct concerns.  However, abandoning the application is usually not an option either.

Along with the independent claims rejected under § 102, you will probably also have dependent claims.  If the dependent claim(s) are rejected under § 103 based on the commonly owned reference and another reference, your job is usually pretty straight forward.  When at least one dependent claim is not rejected under § 103 based in part on another reference, your job is a bit harder.  Nevertheless, the approach is the same.  Your goal is to amend the independent claim(s) so as to be rejected under § 103 instead of § 102 and then attack the non-commonly owned reference.  This is common practice and probably isn’t that helpful of a tip.

However, the tip here is to check the commonly owned reference in view of the language of § 102 to verify the Examiner’s assertion of the reference under at least § 102(a) or (b).  It is not uncommon for a reference to be asserted under § 102(a) or (b), but to actually be a § 102(e) reference.  When faced with a § 102(e) rejection, amending the claims so as to be rejected under § 103 based in part on the commonly owned reference will win the day in view of §103(c), which removes references available as prior art only under § 102(e), (f), or (g) that were owned by the same person or subject to an obligation of assignment to the same person.  Thus, by merely amending the independent claims so as to be rejectable based on the commonly owned reference only under § 103, the commonly owned reference falls away, and you have overcome the rejection.  Particularly note that you overcome the rejection based on the commonly owned reference without having to make a single comment as to the content of that reference.  Merely establishing common ownership is all that is necessary.

Often times, when prior art searching for non-patent literature, you work at the mercy of your favorite search engine.  However, you are likely missing a lot in your search and you are presented with redundant links to sites that fail to provide the information you are seeking.  HarvestIP is attempting to fill this gap in non-patent literature prior art searching.  A presention by HarvestIP about their capabilities and offerings is posted under Reference Info for this group.

Managing costs associated with foreign filing of patent applications is an important service practitioners must provide to clients.  With the costs of filing, prosecuting, and maintaining protection in multiple foreign jurisdictions being quite high, one place to help manage costs is in translation of applications.  Joe Karcinell of Park IP Translations provided an article posted under reference infor of this group for consideration.

The British Library has made images available online of a notebook belonging to Leonardo de Vinci in what appears to be some sort of 16th century version of an inventor's notebook.  On pages 3 and 4, it appears Mr. de Vinci was exploring the workings of a plumb-bob where he notes “The centre of gravity of a body suspended on one cord always lies beneath the centre line of that cord."

On pages 5 and 6 he offers the following riddles:

Riddle 'There will be many which will increase their destruction.'
Answer 'The ball of snow rolling over the snow.'

Riddle ' Those who give light for divine service will be destroyed.'
Answer 'The bees who make the wax for candles.'

Riddle 'The dead will come from underground and by their fierce movements will send numberless human beings out of the world.'
Answer 'Iron, which comes from under the ground, is dead, but the weapons are made of it which kill so many men.'

On pages 7-16 he was exploring mirrors and reflectance angle from convex and concave mirrors of different curvatures as well as the optical properties of the moon.

On pages 27-28 he included a question from Dante’s Paradiso, XIII, 101-102:

O se d'un mezo circol far si pote triangol si ch'un recto non avessi e che gli altri due un retto non faciessi

Or if your Italian is a bit rusty:

Translation: 'Is it possible for a triangle contained within a semi-circle not to include a right angle?'

To this mathematical question, Leonardo adds the corollary 'or for the other two angles not to add up to 90 degrees.'

You can view images of these pages at:

http://www.bl.uk/onlinegallery/ttp/leonardo/accessible/introduction.html

I am afraid to say though that Mr. de Vinci failed to have his notebook witnessed.  Therefore it seems this notebook will not be useful as evidence to prove up a date of conception or reduction to practice unless some form of carbon dating is performed.  Sorry Leo.

BMC Resources v. Paymentech, 498 F.3d 1373 (Fed. Cir. 2007)

Joint patent infringement is a bit of a hot topic in litigation right now.  Probably the most important Federal Circuit opinion on this topic in recent years is the BMC Resources v. Paymentech case.  There is explicit instruction from the Court in this opinion regarding “proper claim drafting.”

“The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party. See Mark A. Lemley et al., Divided Infringement Claims, 33 AIPLA Q.J. 255, 272-75 (2005). In this case, for example, BMC could have drafted its claims to focus on one entity. The steps of the claim might have featured references to a single party’s supplying or receiving each element of the claimed process. However, BMC chose instead to have four different parties perform different acts within one claim. BMC correctly notes the difficulty of proving infringement of this claim format. Nonetheless, this court will not unilaterally restructure the claim or the standards for joint infringement to remedy these ill-conceived claims. See Sage Prods. Inc. v. Devon Indus. Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997) (“[A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure.”)”

To ensure you capture an infringer, remember to keep in mind who might infringe the claim you are drafting.  Although there are theories of indirect infringement and joint infringement, these theories carry a heavier burden of proof for the plaintiff.  Thus, when drafting claims, keep in mind that you are drafting claims for the plaintiff for assertion in litigation.  The lesser burden of proof required to enforce the claim, the better.

The opinion is posted in this group under Reference Info.

NOTE:  At the AIPLA Spring Meeting on Wednesday next week, Morning Concurrent Track #2 will include a 20 minute presentation on Joint Patent Infringement.

According to the BPAI in Ex parte Kelly, Appeal No. 2008-4996 (B.P.A.I. Apr. 9, 2009), in making out a prima facie case for rejecting claims as drawn to non-statutory subject matter, the Examiner must:

·         explain findings regarding the nature of the claimed subject matter in comparison to the four enumerated categories of statutory subject matter, (i.e., machine, article of manufacture, process, or composition of matter); and

·         explain analysis regarding how the claimed subject matter falls within one or more, if any, of the judicially recognized categories (i.e., laws of nature, scientific principals, and abstract ideas) of subject matter that are excluded from patent protection.

In Kelly, the Examiner made unsupported, conclusory statements and the Board held that this was insufficient to sustain § 101 rejections.

The Ex parte Kelly opinion is posted under Reference Info in the In re Bilski group.

This is a tip from an attorney at SLW.

A nice quote from MPEP Section 706(II) brought to my attention by another patent attorney:


"When an application discloses patentable subject matter and it is apparent from the claims and the applicant"s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner's action should be constructive in nature and when possible should offer a definite suggestion for correction."

This is a note borrowed from the "Patent Analysis Tools" group posted by Patent Attorney Tom Marlow.

Interesting article from the NY Times regarding just how much is overlooked through Google searches.  Googles engine indexes over a trillion web pages, and although that number may seem staggering, it does not represent the entirety of the "web".  The writer of this article sumbitted that these one trillion or more google indexed sites represent "only a fraction of the entire Web".  What does that meand for PA searching?  There is potentially a lot more out there that can be touched.  Certainly some patent databases and journal databases may not necessarily be accessible through Google, especially the pay sites, but those probably still do not fully close the gap.

Some companies like Kosmix.com and HarvestIP.com offer deep web searching solutions.  May be worth the look for the right case.

http://www.nytimes.com/2009/02/23/technology/internet/23search.html?_r=4&ref=business

On January 8, 2009, the Korean National Assembly passed a revision to the Korean Patent Act and Utility Model Act.  The revisions will take effect on July 1, 2009.  An overview of these changes is included in a newsletter from Lee International IP & Law Group of Seoul, Korea which is available for download under Reference Info of this group.  (www.leeinternational.com).  Other topics are covered in this newsletter as well.

You have probably received a question like this from your clients on several occassions.  The following was received from our friends at the Unitalen firm of Beijing.  Apparently this patent is worth 157.50 million RMB which is about $23 million US.

On April 16, Zhejiang High People’s Court declared that the patent infringement dispute between Chint Group and Schneider Electric Group Co., Ltd. and Schneider Electric Low Voltage (Tianjin) Co., Ltd. is settled with Tianjin Schneider paying more than RMB 150 million to Chint Group. Moreover, Chint Group and Schneider Electric Group reached a series of compromise agreements worldwide. 

Chint Group lodged a lawsuit against Tianjin Schneider to Wenzhou Intermediate People’s Court in July, 2006, alleging the circuit breaker products manufactured by the latter infringes its utility mode patent No. 97248479.5 and asking the latter to stop infringing actions and compensate it with RMB 50 million. In February, 2007, Chint Group increased the compensation to RMB 3,350 million based on the presumed profits of Tianjin Schneider with reference to its sales volume of previous years. Tianjin Schneider lost the case in the first instance and was ordered to pay damages of more than RMB 330 million to the plaintiff and to stop manufacturing the infringing products. Tianjin Schneider then launched an appeal to Zhejiang High People’s Court.  

Following Chint Group’s litigation, Tianjin Schneider filed an invalidation request with the Patent Reexamination Board of the State Intellectual Property Office. The Board decided the patent of Chint Group is valid. The decision was appealed to Beijing No. 1 Intermediate People’s Court, and the judgment of the latter was appealed to Beijing High People’s Court. On March 26, 2009, Beijing High People’s Court rendered the final decision, maintaining the validity of the patent.

Based on the worldwide compromise agreements concluded by Tianjin Schneider, Schneider Electric Group and Chint Group, Tianjin Schneider and Chint Group achieved the following agreements: Tianjin Schneider compensates Chint Group with RMB 157.50 million wihin15 days, and Chint Group has the right to apply for execution the judgment of Wenzhou Intermediate People’s Court if Tianjin Schneider fails to make full and due payment.

Deshan Li, Ph.D

Vice President，Partner

Patent Attorney, Attorney at Law

UNITALEN ATTORNEYS AT LAW

7th Floor, Scitech Place

22 Jian Guo Men Wai Ave.

Beijing 100004, China

TEL: +86-10-5920-8888

FAX: +86-10-5920-8588

www.unitalen.com

Watch the public service announcement by following the link below and ask your self, “In view of the KSR decision, should an octopus be submitted in an IDS as prior art?”

http://patentbook.tumblr.com/

Tips for saving your clients money and getting more comprehensive searching in Europe when an application potentially includes more than one invention.

From of e-ip.com

The Old Law

Previously, the provisions of the PCT and EPC provided two opportunities for an applicant of a PCT application designating the EPO to select the invention or inventions to be searched in their application: a first during the international phase, and a second after the international phase when the application has entered the European regional phase. If a particular invention was not searched during the international phase it was still possible to have it searched by the EPO (in the form of a ‘supplementary search’) during the European regional phase, regardless of the International Searching Authority (ISA) that carried out the International Search.

The New Law

Under the new provisions of EPC 2000, if an international application was searched by the EPO during the international phase, the applicant may select only the invention or inventions searched by the EPO in the international phase for further prosecution in the European regional phase. Thus, it is no longer possible to request additional searches during the European regional phase on inventions which were not searched by the EPO during the international phase.

Therefore, it is no longer possible to switch from a searched invention to an unsearched invention during the European regional phase, without filing a divisional application.

As to the filing of a divisional application, this necessarily incurs further filing and renewal fees and would thus be an expensive means of obtaining an additional search.

If the international application is searched by an ISA other than the EPO, for example, the United States Patent and Trademark Office (USPTO), it is still possible to have the EPO perform a supplementary search during the European regional phase on one of the unsearched inventions. This can be done by listing the unsearched invention as the first invention appearing in the claims, so that the supplementary European search is carried out on that invention.

Our Comment

The official fees for filing a further search request in the international phase before the EPO are currently several hundred Euro less than the official fees for filing a divisional application and having the divisional application searched and examined before the EPO. Therefore, having an additional search carried out in the international phase rather than via a European divisional application has the advantage of reduced official fees and also provides a measure of patentability at an earlier stage which can assist in making key strategic decisions as to how to focus the initially filed patent application and in formulating a further filings strategy.

Applicants of PCT applications for which the EPO is designated as the ISA are, therefore, advised to consider carefully whether or not they should pay additional search fees in the international phase as they will not have a later opportunity to request a further search in the European regional phase. For those applicants who can select an ISA other than the EPO, thought should be given to doing so in the case of applications containing multiple inventions.

This search tool lets you search for Venture Capital, Angel Investors, Business Incubators, and the like with various filters.

It also allows companies to promote themselves.  Perhaps you have a client that might find it useful?

http://angelsoft.net/startup-tools/investor-search

A flow chart of the appeal process before the Board of Patent Appeals and Interferences has been posted under "Reference Info" of the Patent Prosecution Tips & Tricks group and is available for download.

A flow chart of the appeal process before the Board of Patent Appeals and Interferences has been posted under "Reference Info" of the Patent Prosecution Tips & Tricks group and is available for download.